DETAILED ACTION
Response to Arguments
Applicant's arguments filed 6/12/2026 have been fully considered but they are not persuasive.
Applicant argues "There is no disclosure, teaching, or suggestion that desirable volatile components from a donor tobacco, including nicotine, could be transferred to a recipient tobacco by simply heating the donor tobacco composition and allowing the volatilized components to condense in the presence of the recipient tobacco." The Examiner disagrees. "A person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 421 (2007). In making an obviousness determination one "can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR, 550 U.S. at 418. Barber teaches volatile components from a donor material could be transferred to a recipient tobacco by heating the donor material and allowing the volatilized components to condense in the presence of the recipient tobacco. One of ordinary skill in the art would recognize, in view of either Niven or Osborne, that tobacco could be used as the donor material and that volatile components from a donor tobacco could be transferred to a recipient tobacco by heating the donor tobacco and allowing the volatilized components to condense in the presence of the recipient tobacco.
Applicant argues the combination with Osborne would not have been obvious to one of ordinary skill in the art because the aim of Osborne is to improve the flavor of the treated tobacco while causing minimal increases in the amount nicotine. The Examiner disagrees. The claimed invention allows for a minimal increase in nicotine as the lower end of the claimed range is only 0.1 wt%.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, from which claim 9 depends, already requires the infused tobacco composition has a nicotine content higher than the starting tobacco composition. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6-7, 9, and 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over Bell (US 2016/0205992) in view of Barber (US 2014/0026907), and further in view of Niven (US 4,727,889) or Osborne (US 4,150,677)
Regarding claims 1-3, 9, and 11-13, Bell teaches method of a treating tobacco, the method comprising: providing a starting tobacco composition that is pH-treated to raise the pH [0028] (treatment has adversely affected the sensory and/or organoleptic qualities of the tobacco composition). Bell does not teach heating a volatile component source to provide volatilized components. Barber teaches heating a volatile component source to provide volatilized components and infusing the starting tobacco composition with the volatilized components by condensing the volatilized components in the presence of the starting tobacco material, thereby retaining at least some volatile components in the starting tobacco composition to provide an infused tobacco composition [0023-0029]. It would have been obvious to one of ordinary skill in the art to incorporate these method steps into the method of Bell, either before or after pH treatment, for superior imparting of an organoleptic quality as suggested by Barber [0094].
Modified Bell teaches various botanical examples for the donor product (volatile component source) [Barber 0005] but does not teach that it comprises tobacco or nicotine. Niven teaches heating cut burley tobacco (volatile component source containing nicotine) to provide volatilized components and infusing flue-cured tobacco (starting tobacco composition) with the volatilized components [Example 1]. It would have been obvious to one of ordinary skill in the art to include tobacco as the volatile component source of modified Bell to improve or enhance the taste characteristics as suggested by Niven [col. 1, I. 24-30]. Alternatively, Osborne teaches heating cut tobacco (volatile component source containing nicotine) to provide volatilized components and infusing flue-cured tobacco (starting tobacco composition) with the volatilized components [page 8, l. 52 to page 9, l. 22]. It would have been obvious to one of ordinary skill in the art to include tobacco as the volatile component source of modified Bell to yield enhanced organoleptic properties as suggested by Osborne [col. 2, l. 65-67].
Bell teaches the nicotine content of the starting tobacco composition is from 0.2% to 4% by dry weight [0040]. Osborne teaches a 29% increase in nicotine content [1.11 mg to 1.43 mg – Table 2]. The range of nicotine content of the infused tobacco composition would thus be 0.3% to 5.1%, also overlapping with the claimed range of 2% to 5.5%, wherein said infusion increases the nicotine content by an amount from 0.1 to 1.1 wt%. Alternatively, Niven teaches the infusion increases the nicotine content by an amount from 1.58 wt% (2.59% to 4.17% - Example 1). The range of nicotine content of the infused tobacco composition would thus be 1.6% to 5.6%, also overlapping with the claimed range. As a further alternative, modified Bell teaches infusion time [Barber 0066] and temperature [Barber 0061] that overlap with the infusion time and temperature of the instant invention [0076-0077 of published application US 2023/0354880]. The infusion of modified Bell, wherein the volatile component source is tobacco containing nicotine, is thus interpreted to inherently result in the claimed increase in nicotine content and the claimed infused tobacco nicotine content.
Regarding claim 4, modified Bell teaches the volatile component source is heated to 40°C or 90°C [Barber 0061].
Regarding claim 6, Bell teaches the starting tobacco composition is a reconstituted tobacco [0038].
Regarding claim 7, Bell teaches the starting tobacco material is granular [0082].
Regarding claims 14-16, modified Bell teaches the volatile component source comprises a botanical comprising coffee or mint [Barber 0061].
Regarding claim 17, Bell teaches treating either the starting tobacco composition or infused tobacco composition to raise the pH comprises addition of a base [0062].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bell, Barber, and Niven or Osborne as applied to claim 1 above, and further in view of Kelly (US 3,968,804).
Bell as disclosed above teaches the starting tobacco composition is a pH-treated tobacco composition. Bell teaches the starting tobacco composition comprised reconstituted tobacco [0038] but does not teach extruding a mixture comprising tobacco, base, and a wetting agent. Kelly teaches preparing reconstituted tobacco comprises extruding a mixture comprising tobacco, calcium carbonate (base), and a humectant (wetting agent) [col. 3, l. 64 to col. 4, l. 23]. As this is a conventional method of forming reconstituted tobacco known in the art, it would have been obvious to one of ordinary skill in the art to apply to the method of Bell to achieve predictable results, i.e. providing a reconstituted tobacco to be infused.
Claims 1-4, 6-7, 9, and 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over Bell in view of Barber and Borschke (US 2013/0319434).
Regarding claims 1-3, 9, and 11-13, Bell teaches method of a treating tobacco, the method comprising: providing a starting tobacco composition that is pH-treated to raise the pH [0028] (treatment has adversely affected the sensory and/or organoleptic qualities of the tobacco composition). Bell does not teach heating a volatile component source to provide volatilized components. Barber teaches heating a volatile component source to provide volatilized components and infusing the starting tobacco composition with the volatilized components by condensing the volatilized components in the presence of the starting tobacco material, thereby retaining at least some volatile components in the starting tobacco composition to provide an infused tobacco composition [0023-0029]. It would have been obvious to one of ordinary skill in the art to incorporate these method steps into the method of Bell, either before or after pH treatment, for superior imparting of an organoleptic quality as suggested by Barber [0094].
Modified Bell teaches various botanical examples for the donor product (volatile component source) [Barber 0005] but does not teach that it comprises tobacco or nicotine. Borschke teaches heating leaf tobacco (volatile component source containing nicotine) to provide volatilized components, condensing the volatilized components [0034], and infusing another tobacco with the condensed components, which includes nicotine [0037 and 0042]. It would have been obvious to one of ordinary skill in the art to include tobacco as the volatile component source of modified Bell to improve the color, aroma, flavor, and other characteristics of tobacco as suggested by Borschke [0043]. Bell teaches the nicotine content of the starting tobacco composition is from 0.2% to 4% by dry weight [0040]. Modified Bell teaches infusion time [Barber 0066] and temperature [Barber 0061] that overlap with the infusion time and temperature of the instant invention [0076-0077 of published application US 2023/0354880]. The infusion of modified Bell, wherein the volatile component source is tobacco containing nicotine, is thus interpreted to inherently result in the claimed increase in nicotine content and the claimed infused tobacco nicotine content.
Regarding claim 4, modified Bell teaches the volatile component source is heated to 40°C or 90°C [Barber 0061].
Regarding claim 6, Bell teaches the starting tobacco composition is a reconstituted tobacco [0038].
Regarding claim 7, Bell teaches the starting tobacco material is granular [0082].
Regarding claims 14-16, modified Bell teaches the volatile component source comprises a botanical comprising coffee or mint [Barber 0061].
Regarding claim 17, Bell teaches treating either the starting tobacco composition or infused tobacco composition to raise the pH comprises addition of a base [0062].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bell, Barber, and Borschke as applied to claim 1 above, and further in view of Kelly (US 3,968,804).
Bell as disclosed above teaches the starting tobacco composition is a pH-treated tobacco composition. Bell teaches the starting tobacco composition comprised reconstituted tobacco [0038] but does not teach extruding a mixture comprising tobacco, base, and a wetting agent. Kelly teaches preparing reconstituted tobacco comprises extruding a mixture comprising tobacco, calcium carbonate (base), and a humectant (wetting agent) [col. 3, l. 64 to col. 4, l. 23]. As this is a conventional method of forming reconstituted tobacco known in the art, it would have been obvious to one of ordinary skill in the art to apply to the method of Bell to achieve predictable results, i.e. providing a reconstituted tobacco to be infused.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC YAARY whose telephone number is (571)272-3273. The examiner can normally be reached M-F 9-5.
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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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/ERIC YAARY/Examiner, Art Unit 1755
Prosecution Insights