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 15-34 are pending.
Claims 15, 20, 21, 24, 26, 28-30, 32 and 34 are withdrawn.
Election/Restrictions
Applicant’s election of Group 1 (claims 15-33) and Species 1B in the reply filed on 1/16/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 15, 20, 21, 24, 26, 28-30, 32 and 34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.
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) 16-19, 22, 23, 25, 27, 31 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Digard (WO2018210680) in view of Fujisawa (US20160360781), as evidenced by Grubbs (US5018540).
Regarding claim 16, Digard teaches a method of producing a liquid tobacco extract (abstract), the method comprising the steps of:
preparing a tobacco material (“pre-treatment of tobacco” on page 9, lines 15-28);
heating the tobacco material at a first extraction temperature of between 308-473K ( 34.85C- 199.85 C) (page 14, claim 5);
collecting volatile compounds released from the tobacco material during the heating step;
forming a first liquid tobacco extract comprising the collected volatile compounds from the tobacco material (page 2, steps (a)-(c) and page 6, lines 14-16);
applying a extraction solvent to the residual tobacco material from the heating step; heating the residual tobacco material at a second extraction temperature; collecting volatile compounds released from the residual tobacco material during the heating step; and forming a second liquid tobacco extract comprising the collected volatile compounds from the residual tobacco material (page 2, steps (d)-(f) and page 6, lines 14-16).
Digard fails to teach that the first extraction temperature is held for at least 90 minutes. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the heating time 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 heating time is critical and has unexpected results. In the present invention, one would have been motivated to optimize the heating time motivated by the desire to optimize the tobacco extract composition and/or the physical properties of the tobacco extract composition (page 3, lines 4-6).
Digard does not expressly teach applying an alkaline solution to the residual tobacco material from the heating step to produce an alkalized residual tobacco material and the second extraction temperature.
Fujisawa teaches a method of forming a liquid extract that contains nicotine ([0002],[0044],[0045]) which comprises applying an alkaline solution to tobacco material to produce an alkalized tobacco material ([0067]), heating the alkalized tobacco material at a temperature in the range from 80 C to 150 C ([0068]), collecting volatile compounds released from the alkalized tobacco material during the heating step; and forming a second liquid tobacco extract comprising the collected volatile compounds from the alkalized tobacco material ([0075]), which includes nicotine ([0044]-[0045]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the method of forming the second liquid tobacco extract from which nicotine is isolated disclosed in Digard for the method of forming the liquid tobacco extract from which nicotine is isolated which includes pretreatment with an alkaline solution as disclosed by Fujisawa, because, as evidenced by Grubbs, pretreatment of tobacco with an alkaline compound is effective in increasing the amount of extractable nicotine under the conditions of the extraction process (col. 2, lines 25-30).
Regarding claims 17 and 18, modified Digard teaches further comprising the step of isolating nicotine from the second liquid tobacco extract (Digard, page 2, lines 14-17 and page 3, lines 19-20) and combining at least a portion of the isolated nicotine from the second liquid tobacco extract with the first liquid tobacco extract (Digard, page 3, lines 22-25).
Regarding claim 19, modified Digard teaches that the tobacco material is heated in a flow of inert gas during at least one of the heating steps, specifically Fujisawa teaches inert gas during the heating of the residual tobacco after addition of an alkaline solution (Fujisawa, [0074]).
Regarding claims 22 and 23, modified Digard teaches that a pH of the alkalized tobacco material is from 8.9 to 9.7 (Fujisawa, [0066]).
Regarding claim 25, modified Digard teaches that the alkaline solution is sprayed onto the tobacco material (Digard, [0046]).
Modified Digard does not expressly teach that the tobacco material is continuously agitated during the spraying, however it would have been obvious for one of ordinary skill in the art at the time of filing to have continuously agitated the tobacco material while it was being sprayed with the alkaline solution to ensure that all of the tobacco material had even contact with the alkaline solution.
Regarding claim 27, modified Digard teaches that the water content of the alkalized tobacco material prior to the heating step is between 10 percent and 50 percent by weight (Digard, [0047]).
Regarding claim 31, modified Digard teaches further comprising the step of adding water into an extraction chamber during the heating steps (Digard, [0069]).
Modified Digard fails to teach adding the water by spraying atomized water. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize how the water is added 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 adding the water by spraying atomized water is critical and has unexpected results. In the present invention, one would have been motivated to optimize the method of adding water motivated by the desire to optimize the tobacco extract composition and/or the physical properties of the tobacco extract composition (page 3, lines 4-6).
Regarding claim 33, modified Digard teaches further comprising the step of drying or concentrating the collected volatile compounds (Digard, [0078]).
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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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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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755