DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Claims 1, 3-4, 9-10, 14, 16-17, 19, 22, 24, 26, 28, 30 and 32-37 are amended. Claims 2, 5-8, 11-13, 15, 18, 20-21, 23, 25, 27, 29, 31, 41-47 and 49 are cancelled. Claims 38-40, 48 and 50-57 are withdrawn. Claims 1, 3-4, 9-10, 14, 16-17, 19, 22, 24, 26, 28, 30 and 32-37 are presently examined.
Applicant’s arguments regarding the objections to the specification have been fully considered and are persuasive. The objections of 10/31/2025 are withdrawn. It is noted, however, that the Office action of 10/31/2025 did not object to any allegedly improper use of trade names and/or marks used in commerce, but merely indicated instances in which applicant permissibly and properly used such names and/or marks.
Applicant’s arguments regarding the rejection under 35 USC 112(d) have been fully considered and are persuasive. The rejection of 10/31/2025 is overcome.
Specification
The use of the terms Bialetti (page 36, line 11), and Drambuie (page 44, line 8), which are trade names or marks used in commerce, have been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-4, 9-10, 14, 16-17, 19, 22, 24, 26, 28, 30, and 32-37 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, it is unclear what steps are required by the limitation “setting the initial material to predefined increased moisture content” since there are many ways the moisture content could be increased, and it is unclear which of them is required by “setting.” The claim is therefore indefinite. For the purposes of this Office action, the limitation will be interpreted as if it required the moisture content to be increased by any method. Claims 3-4, 9-10, 14, 16-17, 19, 22, 24, 26, 28, 30, and 32-37 are indefinite by dependence.
Regarding claim 16, it is unclear what steps are required by the limitation “setting the initial material to a moisture content” since there are many ways the moisture content could be increased, and it is unclear which of them is required by “setting.” The claim is therefore indefinite. For the purposes of this Office action, the limitation will be interpreted as if it required the moisture content to be increased by any method.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-4, 9-10, 14, 17, 19, 22, 24, 28, 30, 32, 34 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Ehling (US 8,820,328) in view of Shadurin (US 2020/0108018).
Regarding claims 1, 3-4, 30, 32 and 34, Ehling discloses a tobacco initial material made from tobacco stem fibers and other tobacco small particles that have particle sizes of less than 2 mm (column 3, lines 13-20), which are considered to meet the claim limitation of tobacco fines. The moisture content of the tobacco material is increased (column 3, lines 43-63) and then the tobacco initial material is heated and placed under pressure (column 3, lines 26-32). Applicant’s specification discloses that the application of pressure and heat causes tobacco material to bind (page 17, lines 11-15), indicating that binding occurs in the process of Ehling. The pressure and temperature are increased in a conveyor formed by a screw (column 8, lines 7-38, figure 3, reference numeral 3) that leads to a shearing gap (column 8, lines 56-63, figure 3, reference numeral 9). The shearing gap is defined by cooperating inner (figure 3, reference numeral 8) and outer cones (column 7, lines 44-60, figure 3, reference numeral 8) that both have grooved surfaces that are arranged in any manner so that a more homogenous end product is produced (column 8, lines 64-67, column 9, lines 1-7). The outer cone is rotated so that blockages are reduced (column 8, lines 64-67, column 9, lines 1-7), and is therefore considered to meet the claim limitation of a shearing member. The gap defibrates the tobacco (abstract). The defibration takes place by expansion (column 6, lines 43-52). Ehling does not explicitly disclose (a) the size of tobacco stem having the claimed distribution, (b) the operating throughput of the conveyor, (c) the outer cone having at least 140 grooves, and (d) the grooves each having a maximum width of 0.7 mm and 1 mm.
Regarding (a), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide tobacco particles having the claimed size distribution. One would have been motivated to do so since Ehling discloses that tobacco particles having sizes of less than 2 mm can be used. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding (b), Shadurin teaches an industrial method for production (abstract) that produces a homogenous composition at a rate of 100 kg/hr [0065].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to operate the process of Ehling at the rate of Shadurin. One would have been motivated to do so since Shadurin teaches a suitable rate for industrial production of a homogenous mixture.
Regarding (c), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a cone with the claimed number of grooves. One would have been motivated to do so since Ehling discloses that the grooves can be provided in any arrangement to produce a homogenous end product. The mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See MPEP § 2144.04 VI B.
Regarding (d), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the claimed groove size is obvious. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 9, Ehling discloses that the bind occurs mechanically (column 3, lines 33-41).
Regarding claim 10, Ehling discloses that the process operates continuously (column 2, lines 48-63).
Regarding claim 14, Ehling discloses that the tobacco initial material is heated to 100 °C to 140 °C (column 3, lines 26-32), and that the mixture of tobacco stem material and small leaf particles can also include tobacco winnowings (column 3, lines 13-20).
Regarding claim 17, Ehling discloses that the tobacco initial material is heated to 100 °C to 140 °C (column 3, lines 26-32).
Regarding claim 19, the defibrated tobacco following the process of Ehling is considered to be a fibrous material.
Regarding claim 22, modified Ehling teaches all the claim limitations as set forth above. Ehling additionally discloses that the mixture of tobacco stem material and small leaf particles can also include tobacco winnowings (column 3, lines 13-20), which is considered to define ranges between 0% and 100% of the mass of the composition for each component. Modified Ehling does not explicitly teach the mass of winnowings being at least 5%.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the claimed winnowings percentage is obvious. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 24, modified Ehling teaches all the claim limitations as set forth above. The mixture of tobacco stem material and small leaf particles of Ehling is considered to define ranges between 0% and 100% of the mass of the composition for each component. Modified Ehling does not explicitly teach the amount of stem material being at least 40%.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the claimed stem material percentage is obvious. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 28, Ehling discloses that the tobacco is exposed to flash evaporation after leaving the shearing gap (column 6, liens 53-67).
Regarding claim 37, modified Ehling teaches both the claimed process steps and the claimed tobacco composition. The claimed density index is therefore considered to be an inherent property of the final material at the end of the process of modified Ehling.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Ehling (US 8,820,328) in view of Shadurin (US 2020/0108018) as applied to claim 1 above, as evidenced by Keritsis (US 4,936,920).
Regarding claim 16, modified Ehling teaches all the claim limitations as set forth above. Ehling additionally discloses that the moisture content of the tobacco material is increased to 20 to 30% (column 3, lines 47-63). Modified Ehling does not explicitly teach the moisture content of the tobacco being equivalent to the oven volatiles level of the tobacco.
Keritsis teaches that the oven volatiles content of tobacco, as determined by mass, is approximately equivalent to the moisture content of the tobacco since less than 1% of tobacco weight is volatiles other than water (column 3, lines 5-15), indicating to one of ordinary skill in the art that the moisture content of Ehling falls within the claimed oven volatiles content.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Ehling (US 8,820,328) in view of Shadurin (US 2020/0108018) as applied to claim 1 above, and further in view of Hayden (US 595,474).
Regarding claim 26, modified Ehling teaches all the claim limitations as set forth above. Ehling additionally discloses that the small leaf tobacco particles are tobacco scraps (column 3, lines 13-20). Modified Ehling does not explicitly teach the small tobacco particles being tobacco factory dust.
Hayden teaches a cigarette machine (title) that collects tobacco dust so that it can be used again (page 5, lines 66-74). The machine operates in a continuous manner to produce cigarettes (page 1, liens 21-50), which is considered to define a factory.
It would therefore have been obvious to one of ordinary skill in the art to use particles collected from the machine of Hayden as the tobacco scraps of modified Ehling. One would have been motivated to do so since Hayden teaches collecting tobacco dust to use it again.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Ehling (US 8,820,328) in view of Shadurin (US 2020/0108018) as applied to claim 1 above, and further in view of Banzashi (US 11,702,532).
Regarding claim 35, modified Ehling teaches all the claim limitations as set forth above. Modified Ehling does not explicitly teach a rotation speed of the shearing member.
Banzashi teaches a micro fibrous cellulose aggregate (abstract) that is made by defibration of a cellulose material using a fibrillation treatment device that operates at 21,500 rmp (column 4, lines 5-14).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to operate the defibrator of modified Ehling at the rpm of Banzashi. One would have been motivated to do so since Banzashi teaches a suitable speed for operating a defibrator to obtain a cellulose aggregate.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Ehling (US 8,820,328) in view of Shadurin (US 2020/0108018) as applied to claim 1 above, and further in view of Chita (WO 2021/221120, English language equivalent EP 4144229 relied upon).
Regarding claim 36, modified Ehling teaches all the claim limitations as set forth above. Modified Ehling does not explicitly teach an average fiber diameter of the produced tobacco.
Chita teaches a sheet for a smoking article [0001] having fibers made of microfibrillated cellulose having an average diameter of between 500 microns and 1500 microns [0040]. Chita additionally teaches that these fibers form a sheet with excellent mechanical strength [0038].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the defibrated tobacco of modified Ehling have the average diameter of Chita. One would have been motivated to do so since Chita teaches fibers that form a sheet having excellent mechanical strength. The Courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP § 2144.05 (I).
Response to Arguments
Regarding the rejections under 35 USC 112(b), applicant’s arguments regarding the rejections of claims 1, 16 and 34 have been fully considered but they are not persuasive. Applicant argues that one of ordinary skill in the art would understand the limitation of “setting” due to the explanation in applicant’s specification and (b) that claim 34 limits claim 1.
Applicant’s specification continues to use the term “setting.” This term itself is the issue. What is a setting step? Does it mean increasing the moisture content? Decreasing it? Adjusting it in general? Allowing the material to sit until a certain moisture content is reached? The claim is indefinite since the term “setting” does not indicate to one of ordinary skill in the art which steps, specifically, are required to be performed in the claimed method.
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues that the claimed features function together as an integrated combination that produces an unexpected and synergistic result, however, there is no objective evidence supporting this statement as required by MPEP § 716.01(a).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755