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 .
Status of the Claims
Claims 29-43 are pending.
Claims 42-43 are withdrawn.
Election/Restrictions
Claims 42-43 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/12/2026.
Applicant's election with traverse of Group I, Claims 29-41 and Species 1B in the reply filed on 3/12/2026 is acknowledged. The traversal is on the ground(s) that the Markush claim is directed to a single invention, the Examiner has not justified maintaining a species election requirement because the Examiner does not identify any serious search or examination burden associated with examining claim 35 across the full scope of the recited Markush group and the Examiner did not explain that the selected subsets correspond to disclosed species, technical categories or other distinctions reflected in the Specification. This is not found persuasive because “When examining a Markush claim, the examiner may generally choose to require a provisional election of species from among patentably indistinct species or patentably indistinct groups of species. See subsection III, below. The applicant’s election serves as a starting point for the search and examination of the claim”. MPEP 803.02 (I). The plant materials, which include cannabis, dill seed and many others are not closely related and large in number, which results in a serious search and examination burden to the Examiner. The Examiner narrowed the species in claim 35 into two groups, plant materials that are tea materials and plant materials that are spices.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim(s) 29-31, 33, 34, 39 and 40 is/are rejected under 35 U.S.C. 103 as obvious over Ajithkumar (WO 2016156598).
Regarding claims 29 and 31, Ajithkumar teaches an aerosol-generating article (page 1, lines 18-20), comprising: an aerosol-generating substrate (page 1, line 18), the aerosol-generating substrate comprising homogenized tobacco material (page 1, lines 18-20).
Ajithkumar teaches the homogenized tobacco material comprising:
between about 50 percent and about 93 percent by weight of cured tobacco material (page 7, lines 5-7 and page 7, lines 13-14),
an aerosol former, wherein the homogenized tobacco material has an aerosol former content of between about 5 percent and about 30 percent by weight on a dry weight basis (page 10, lines 16-20), and
an exogenous binder (page 4, lines 10-11).
Ajithkumar does not expressly teach that the aerosol-generating substrate is in rod form. However, typical aerosol-generating articles, both cigarette and “heat-not-burn” articles are usually rod shaped and thus it is inherent that the aerosol-generating substrate is in rod form, or in the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the aerosol-generating substrate in rod form to be able to fit the aerosol-generating substrate into typical aerosol-generating articles, both cigarette and “heat-not-burn” articles, which are usually rod shaped.
Additionally, the courts have held that changes in shape are a matter of design choice which a person of ordinary skill in the art would have found obvious in the absence of new or unexpected results that the particular shape was significant. See MPEP 2144.04. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to have made the aerosol-generating substrate in rod form with a reasonable expectation of success and predictable results.
Regarding claim 30, Ajithkumar does not expressly teach that the homogenized tobacco material comprises no more than 2.5 milligrams of asparagine per gram, on a dry weight basis.
Ajithkumar teaches that the homogenized tobacco material comprises asparaginase in an amount between about 0.0012 percent and about 0.02 percent per weight on a dry weight basis of said homogenized tobacco material (page 13, lines 26-27). Ajithkumar teaches that the amount of asparaginase to be added preferably depends on the amount of asparagine, which in term depends on the amount of tobacco present in the homogenized tobacco material. The amount of asparaginase is also selected to minimize possible side effects of the asparaginase itself and costs (page 13, lines 29-page 14, line 2). Ajithkumar teaches that asparagine is reduced to a very low level by asparaginase (page 9, lines 25-27). Ajithkumar teaches that when there is a high concentration of tobacco, and therefore of asparagine, it has been surprisingly found that adding asparaginase to the homogenized tobacco material, and preferably the addition of asparaginase during the slurry formation as described according to the method of the invention, could decrease the amount of acrylamide present in the aerosol formed heating a portion of the homogenized tobacco material (page 7, lines 8-12).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of asparagine in the homogenized tobacco material since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount of asparagine in the homogenized tobacco material is critical and has unexpected results. In the present invention, one would have been motivated to optimize the amount of asparagine in the homogenized tobacco material motivated by the desire to reduce the amount of asparagine in the homogenized tobacco material (Ajithkumar, page 6, lines 15-17 and page 13, lines 29-page 14, line 2).
Regarding claim 33, Ajithkumar teaches that the homogenized tobacco material further comprises between 1 percent by weight and 5 percent by weight of the exogenous binder, on a dry weight basis (page 4, lines 10-13).
Regarding claim 34, Ajithkumar teaches that the homogenized tobacco material is in the form of cast leaf (page 1, lines 10-14 and page 14, lines 22-25).
Regarding claim 39, Ajithkumar teaches that the homogenized tobacco material further comprises between about 1 percent and about 7 percent in dry weight basis of cellulose fibers (page 5, lines 26-28).
Regarding claim 40, Ajithkumar teaches that the aerosol-generating substrate comprises one or more sheets of homogenized tobacco material (page 12, lines 13-15).
Claim(s) 32 and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ajithkumar as applied to claims 31 and 29, respectively, above, and further in view of O’Donnell (US5845647).
Regarding claim 32, Ajithkumar does not expressly teach the inclusion of dried green tobacco material to the cured tobacco material in the homogenized tobacco material in a ratio of no more than 1:1.
O’Donnell teaches smoking tobacco products improved by the use of uncured, green tobacco in addition to cured tobacco (abstract and col. 2, lines 11-21). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included dried green tobacco material in the homogenized tobacco material of Ajithkumar because O’Donnell teaches that the inclusion of dried green tobacco material results in a tobacco product that has reduced carcinogenic nitrosamine content (O’Donnell, col. 2, lines 11-15).
Modified Ajithkumar fails to teach the amount of the dried green tobacco material relative to the amount of cured tobacco in the tobacco product.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the concentration of dried green tobacco material since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed concentration of dried green tobacco material is critical and has unexpected results. In the present invention, one would have been motivated to optimize the concentration of dried green tobacco material motivated by the desire to minimize the bitter, unpleasant flavor of uncured (green) tobacco with the potential for lower nitrosamine levels that uncured (green) tobacco provides (O’Donnell, col. 4, lines 40-46).
Regarding claim 38, modified Ajithkumar teaches that the dried green tobacco material is in the form of dried green tobacco particles (O’Donnell, claim 29, “finely divided tobacco”).
Claim(s) 36 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ajithkumar as applied to claim 29, respectively, above, and in view of O’Donnell and further in view of Mua (US20180160723).
Regarding claims 36 and 37, Ajithkumar does not expressly teach the inclusion of dried green tobacco material to the cured tobacco material in the homogenized tobacco material.
O’Donnell teaches smoking tobacco products improved by the use of uncured, green tobacco in addition to cured tobacco (abstract and col. 2, lines 11-21). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included dried green tobacco material in the homogenized tobacco material of Ajithkumar because O’Donnell teaches that the inclusion of dried green tobacco material results in a tobacco product that has reduced carcinogenic nitrosamine content (O’Donnell, col. 2, lines 11-15).
Modified Ajithkumar does not expressly teach that the dried green tobacco material has a moisture content of between 10 percent and 13 percent by weight.
Mua teaches smoking articles including dehydrated tobacco materials (abstract). Mua teaches that the dried green tobacco material has a moisture content of preferably about 5% to about 30% ([0032]) and the dried green tobacco material is from tobacco lamina ([0069]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the dehydrated green tobacco material of Mua as the dried green tobacco material of modified Ajithkumar with a reasonable expectation of success and predictable results.
Claim(s) 35 and 41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ajithkumar as applied to claims 29 and 40, respectively, above, and further in view of Arndt (WO2020074494).
Regarding claim 35, Ajithkumar does not expressly teach including in the homogenized tobacco material a claimed aerosol-generating plant material.
Arndt teaches an aerosol-generating article comprising an aerosol-generating substrate, wherein the substrate comprises a homogenized plant material including clove particles and tobacco material (abstract and page 4, lines 29-35). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included clove particles in the homogenized tobacco material of Ajithkumar because it has been surprisingly found that the inclusion of clove particles in an aerosol-generating substrate provides a significant reduction in certain undesirable aerosol compounds compared to an aerosol produced from an aerosol-generating substrate comprising 100 percent tobacco particles without clove particles (page 5, lines 24-27).
Regarding claim 41, Ajithkumar does not expressly teach that the one or more sheets of homogenized tobacco material are gathered and crimped.
Arndt teaches that the one or more sheets of homogenized plant material are preferably crimped prior to gathering, such that the homogenized plant material may be in the form of a crimped sheet, more preferably in the form of a gathered crimped sheet (page 27, lines 8-12). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the homogenized tobacco material of Ajithkumar gathered and crimped, as taught by Arndt, because it makes it easier to form the homogenized material into a rod form (page 25, lines 28- page 35 and page 27, lines 19-23).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights