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 1-15 are cancelled. Claim 30 is withdrawn. Claims 16-29 are presently examined.
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 16 are rejected under 35 U.S.C. 103 as being unpatentable over Buehler (US 2018/0360101) in view of Fujisawa (US 2016/0360780).
Regarding claims 16 and 26, Buehler discloses a process to obtain tobacco flavor extracts (abstract) in which a plurality of tobacco types are supplied to form a blend [0032] that is heated to between 30 °C and 90 °C for 30 seconds to 1 hour [0046] and sprayed while it is exposed to the heat [0057]. Emissions from the tobacco, which are considered to meet the claim limitation of volatile compounds, are condensed to form a flavor extract [0037] that is removed in liquid form [0038]. The mixture is held in a direct conditioning cylinder ([0057], figure 2, reference numeral 10), which is considered to meet the claim limitation of an extraction chamber. Buehler does not explicitly disclose heating the tobacco for the claimed length of time.
Fujisawa teaches an extraction method of a flavor constituent of tobacco raw material (abstract) in which the tobacco raw material is heated to 80 °C-150 °C so that more flavor constituent is sufficiently released [0068]. The extraction occurs over 120-300 minutes [0129].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the process of Buehler with the temperature and length of Fujisawa. One would have been motivated to do so since Fujisawa teaches conditions that results in more flavor constituent being released from tobacco.
Regarding claim 17, Buehler discloses that the steam and hot water are sprayed on the tobacco in a counter current manner [0057], indicating that turbulent gas flow would occur since the two flows would collide.
Regarding claim 18, Buehler discloses that the steam and hot water are sprayed on the tobacco in a counter current manner [0057], indicating that the water is sprayed continuously during heating since the heating itself is provided by the steam [0043].
Regarding claim 20, modified Buehler teaches all the claim limitations as set forth above. Modified Buehler does not explicitly a relative flow rate of water and tobacco.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to scale the spraying and tobacco flow to have the claimed relative flow rates. A change in size or proportion 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 24, applicant’s specification discloses that 2 grams of nicotine is extracted per kg of dry tobacco due to the water spraying step of the claimed invention (page 11, line 16-21). The claimed amount of nicotine must therefore be extracted by the process of modified Buehler since Buehler discloses a water spraying step [0057].
Regarding claim 27, modified Buehler teaches all the claim limitations as set forth above. Fujisawa additionally teaches that the tobacco raw material is sprayed with an alkaline substance to efficiently release a flavor constituent from the tobacco material [0042]. Modified Buehler does not explicitly teach an alkali treatment.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the process of modified Buehler with the alkali treatment of Fujisawa. One would have been motivated to do so since Fujisawa teaches that alkali treatment of tobacco results in more efficient flavor release from the tobacco.
Regarding claim 29, Buehler discloses that the tobacco flavor extracts are collected in a tank [0041].
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Buehler (US 2018/0360101) in view of Fujisawa (US 2016/0360780) as applied to claim 16 above, and further in view of Nanasaki (WO 2022/024307, English language equivalent EP 4190175 relied upon).
Regarding claim 19, modified Buehler teaches all the claim limitations as set forth above. Modified Buehler does not explicitly teach a flow rate of water during the spraying.
Nanasaki teaches a method of extracting a flavor component from tobacco leaves in which water is applied to the leaves during heating [0008] in which the water is sprayed at a velocity of 55 g/min [0101].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the spraying of modified Buehler with the flow rate of Nanasaki. One would have been motivated to do so since Nanasaki teaches a suitable flow rate for applying water to tobacco leaves.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Buehler (US 2018/0360101) in view of Fujisawa (US 2016/0360780) as applied to claim 16 above, and further in view of Sato (US 4,881,986).
Regarding claim 21, modified Buehler teaches all the claim limitations as set forth above. Modified Buehler does not explicitly teach atomizing the water using a flow of compressed inert gas.
Sato teaches a method in which a liquid alloy is atomized by application of compressed argon gas into a spraying nozzle to produce atomized particles in a well known method (column 17, lines 67-68, column 18, lines 1-14).
It would therefore have been obvious to combine the flow of compressed argon of Sato with the water spraying of modified Buehler. One would have been motivated to do so since Sato teaches a well known method to atomize a liquid. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See MPEP § 2143, C.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Buehler (US 2018/0360101) in view of Fujisawa (US 2016/0360780) as applied to claim 16 above, and further in view of de la Burde (US 4,202,357).
Regarding claim 22, modified Buehler teaches all the claim limitations as set forth above. Modified Buehler does not explicitly teach a spraying pressure of the water.
de la Burde teaches a method of spraying water onto cigarette filler at 40 psig to produce an average droplet size of 40 microns (column 7, lines 15-36).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the spraying of modified Buehler with the water pressure of de la Burde. One would have been motivated to do so since de la Burde teaches a suitable pressure to produce atomized droplets of a controlled size.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Buehler (US 2018/0360101) in view of Fujisawa (US 2016/0360780) as applied to claim 16 above, and further in view of Beeson (US 2013/0206153).
Regarding claim 23, modified Buehler teaches all the claim limitations as set forth above. Modified Buehler does not explicitly teach continuously circulating the tobacco material during heating.
Beeson teaches a method of preparing a tobacco material in which tobacco material is extracted (abstract) in which the tobacco material is stirred while undergoing heating so that the composition is mixed [0062].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the cylinder of modified Buehler with the stirring of Beeson. One would have been motivated to do so since Beeson teaches stirring a composition so that it can be mixed.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Buehler (US 2018/0360101) in view of Fujisawa (US 2016/0360780) as applied to claim 16 above, and further in view of Fredrickson (US 3,524,451).
Regarding claim 25, modified Buehler teaches all the claim limitations as set forth above. Buehler additionally discloses that the heating is performed by steam [0043]. Modified Buehler does not explicitly teach using nitrogen instead of steam.
Fredrickson teaches using either steam or nitrogen to heat tobacco (column 6, lines 11-18).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the steam of modified Buehler for the nitrogen of Fredrickson. One would have been motivated to do so since Fredrickson teaches that steam or nitrogen are equivalent gases to heat tobacco. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP § 2143, B.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Buehler (US 2018/0360101) in view of Fujisawa (US 2016/0360780) as applied to claim 16 above, and further in view of Kindvall (US 2018/00640159).
Regarding claim 28, modified Buehler teaches all the claim limitations as set forth above. Modified Buehler does not explicitly teach microwave heating.
Kindvall teaches a method for producing tobacco products (abstract) in which a tobacco preparation is heated by either steam of microwave treatment [0083].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the microwave heating of Kindvall in place of the steam heating of modified Buehler. One would have been motivated to do so since Kindvall teaches that steam and microwave are equivalents for heating tobacco products. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP § 2143, B.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 16, 24-27 and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15, 20-21, 24, 26, 28-29 and 32 of copending Application No. 18/255,389 (hereafter referred to as Lanaspeze).
Regarding claims 16 and 26, Lanaspeze claims a method of producing a liquid tobacco abstract in which a tobacco material is prepared, the tobacco material is heated for at least 30 minutes and sprayed with water, and a condensate of volatile compounds released from the tobacco during heating is collected and formed into a liquid tobacco extract (claim 15). The water is atomized (claim 30), and the extraction temperature is between 135 °C and 150 °C (claim 29). Lanaspeze does not explicitly claim the instantly claimed heating duration range.
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 heating duration 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, Lanaspeze claims an amount of nicotine extracted from the tobacco material corresponding to at least 10 grams per kg of dry tobacco material (claim 28).
Regarding claim 25, Lanaspeze claims the tobacco being heated in a flow of inert gas (claim 15).
Regarding claim 27, Lanaspeze claims the tobacco being subjected to an alkali treatment prior to heating (claim 15).
Regarding claim 29, Lanaspeze claims the extract being dried or collected (claim 32).
Claims 16, 24-27 and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-19, 22-23, 25, 27, 31 and 33 of copending Application No. 18/255,389 (hereafter referred to as Lanaspeze).
Regarding claims 16 and 26, Lanaspeze claims a method of producing a liquid extract comprising steps of preparing a tobacco material, heating alkalized tobacco material at an extraction temperature of between 100 °C and 160 °C, collecting volatile compounds released from the tobacco material during the heating step, and forming a second liquid tobacco extract comprising the collected volatile compounds (claim 16). Atomized water is sprayed into an extraction chamber during the heating step (claim 31). Lanaspeze does not explicitly claim the extraction temperature being between 120 °C and 160 °C.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that claimed range 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, applicant’s specification discloses that 2 grams of nicotine is extracted per kg of dry tobacco due to the water spraying step of the claimed invention (page 11, line 16-21). The claimed amount of nicotine must therefore be extracted by the process of modified Lanaspeze since Lanaspeze discloses a water spraying step [0057].
Regarding claim 25, Lanaspeze claims the tobacco material being heated in a flow of inert gas during the heating step (claim 19).
Regarding claim 27, Lanaspeze claims that the tobacco is subjected to an alkali treatment prior to the heating with water (claim 16).
Regarding claim 29, Lanaspeze claims drying or concentrating the collected volatile compounds (claim 33).
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that changing the extraction conditions of Buehler would result in the remaining tobacco being unsuitable for use in a smoking device, (b) that the Office action is invalid for various reasons cited as additional remarks, and (c) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), while Buehler may disclose a lower extraction temperature than Fujisawa, there is no disclosure in Buehler that higher temperatures would render the tobacco unsuitable for further use or would result in an extract having unacceptable flavor properties. Furthermore, Fujisawa explicitly teaches returning the extracted flavor to the tobacco raw material [0093] and washed so that a tobacco raw material that inhibits loss of flavor constituent is produced [0094]. One of ordinary skill in the art would recognize that this tobacco is being prepared for further use, not discarded as one would expect if it had been rendered unsuitable by the extraction process.
Regarding (b), applicant recites several principles of patent law. While these principles are not in dispute, applicant does not specifically connect these general principles to any alleged deficiencies of the prior art. The Examiner there acknowledges the recitation but does not conclude that any of these principles negate the rejections as set forth above.
Regarding (c), all examined claims, including the examined independent claim, are rejected as set forth above.
Conclusion
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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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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