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
This action is in response to applicant’s amendments and arguments filed on 3/13/2026. Claims 1-9 and 11-13 are pending for examination.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 6, 8, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe (US 2021/0112855 A1 – of Record).
Regarding claim 1, Watanabe teaches a flavoring sheet (Para. [0182]) comprising a hydrocolloid material (Para. [0068]) configured for form a sheet (Para. [0182), a flavoring (Para. [0081]), and a plasticizer (Para. [0099]). Watanabe also teaches a powder-type material that remains on the surface of the flavoring sheet (Para. [0311]) and the powder-type material includes a bulking agent (Para. [0075]).
Regarding claim 2, Watanabe teaches that the hydrocolloid material includes modified cellulose (Para. [0068]).
Regarding claim 3, Watanabe teaches that the modified cellulose includes carboxylmethyl cellulose (Para. [0068]).
Regarding claim 4, Watanabe teaches the plasticizer includes glycerin (Para. [0099]).
Regarding claim 6, Watanabe teaches that the plasticizer (glycerin) is 30 parts by mass (Para. [0286]).
Regarding claim 8, Watanabe teaches the flavoring sheet is produced from sheet composition including a hydrocolloid material (Para. [0068]), a flavoring (Para. [0081]), a plasticizer (Para. [0099]), a solvent (Para. [0080]), and a powder material (Para. [0080]).
Regarding claim 13, Watanabe teaches that the flavoring sheet comprising a hydrocolloid material (Para. [0068]), a flavoring (Para. [0081]), a plasticizer (Para. [0099]), and a solvent (Para. [0080]). The sheet is manufactured by spraying a powder-type material that remains on the surface of the flavoring sheet (Para. [0311]) so that it is applied to the surface.
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.
Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (US 2021/0112855 A1).
Regarding claim 5, Watanabe teaches that the flavoring sheet will be cut (Para. [0129]), but does not say whether an amount of fine powder generated having a particle size of less than 600 µm is less than 2 wt% of the flavoring sheet. Since the flavoring sheet of Watanabe has the same structure has the flavoring sheet of the claim, it would be obvious to one of ordinary skill in the art that the yield when cut will have an amount of fine powder generated having a particle size of less than 600 µm is less than 2 wt% of the flavoring sheet.
Regarding claim 7, Watanabe teaches that the moisture content is less than 50 parts by weight (Para. [0055]), which overlaps with the claimed range of 5 to 20 parts by mass.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (US 2021/0112855 A1) as applied to claim 9, and as evidenced by Calcium_Carbonate_ChemicalBook (ChemicalBook).
Regarding claim 9, Watanabe teaches that the solvent includes distilled water (Para. [0049]), but does not discuss the solubility of the calcium carbonate (Para. [0311]) as the powder-type material. As Watanabe uses calcium carbonate and a skilled artisan would know that calcium carbonate is insoluble in water as evidenced by ChemicalBook, which is less than 160 g/L, it is reasonably expected that the powder type material of the Watanabe would have a solubility in distilled water of 20 g/l at 25 degrees C which meets the claim limitations.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (US 2021/0112855 A1) further in view of Takahashi (JP 2000-041648 - of Record).
Regarding claim 11, Watanabe teaches that the hydrocolloid material contains pectin (Para. [0068]), but does not describe the specific type of pectin.
In an analogous art, Takahashi teaches using pectin that is low methoxyl pectin (Para. [0022]) that has a carboxyl group percentage of 25% to 45% (Para. [0022]) and does not get gelated when cooled.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Watanabe with Takahashi to use low methoxyl pectin. This is as low methoxyl pectin is preferred in the art for flavoring sheets (Takahashi; Para. [0022]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (US 2021/0112855 A1) further in view of Tanaka (KR 2019-0077434 – of Record).
Regarding claim 12, Watanabe does not teach the flavoring sheet being used in a smoking article.
In an analogous art, Tanaka teaches a smoking article comprising a smoking material of cut pieces of a flavoring sheet and shredded tobacco (Para. [0063]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Watanabe with Tanaka to used the flavoring sheet in a smoking article mixed with shredded tobacco-type material as this is a known way in the art to use flavoring sheets in smoking articles.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/N.J.W./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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