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
This Office Action is in response to Applicant’s amendments filed on 05/15/2026.
Claims 1, 5-7 and 10-11 are pending and are subject to this Office Action.
Claims 1 and 7 are amended.
Claim 11 is newly added.
Claims 2-4 and 8-9 are previously cancelled.
Response to Amendments
The Examiner withdraws the objection to claim 1 for informalities due to amendments to the claims filed 05/15/2026.
Response to Arguments
Applicant's arguments, see pages 5-10, filed 05/15/2026, with respect to the 102 rejection of claim 1 have been fully considered but they are not persuasive. Claim 1 is amended to include subject matter previously presented in claim 7. However, Brookbank still makes obvious that the sheet type material is mixed with a tobacco material, as newly required. Therefore, the rejection is maintained.
On pages 6-7 the Applicant argues that one would not have appropriate motivation to combine the prior art references, and highlights the differences between each reference, specifically the position of each flavor sheet and principle with which flavor is released.
The Examiner disagrees.
The Examiner maintains that appropriate motivation to modify exists. Regarding the modification with Gonterman, Brookbank is silent to the exact composition of the sheet-type material and one with ordinary skill would be motivated to look to Gonterman for a known and suitable flavored sheet composition. Regarding the modification with Tanaka, one having ordinary skill would recognize that the modification of Brookbank with Tanaka would further improve or strengthen the flavor of the smoking article. All references are directed towards similar flavor-producing sheets, regardless of their position within the smoking article. Furthermore, all flavorant sheets taught by the prior art of record are configured to release flavor upon the application of heat. These similarities are sufficient to relate the inventions to the same field. Differences do not necessarily preclude the application of other prior art references to make modifications with sufficient motivations.
On page 7 the Applicant further argues that including the flavor patch of Brookbank into the smoking material portion would render the invention unsatisfactory for its intended purpose, as flavor sheet mixed with tobacco would produce aerosol from direct combustion and not the indirect heating intended by Brookbank.
The Examiner disagrees.
The Applicant’s claim that the flavor patch of Brookbank is only “intended to indirectly release flavor by heat generated by combusion” is not appropriately supported by the specification. Brookbank teaches both that the products of its disclosure may be “not combusted or burnt, but is provided to impart a sensate property to an aerosol stream passed though the material” and that “the first tobacco flavour patch may provide a user with a first tobacco flavour when the burning coal of a lit smoking article is at the first position”. It therefore appears that the flavor patch may be used under multiple heating conditions, including both direct combustion and indirect heating. Brookbank does not explicitly require that the sheet produces flavor by any particular heating method.
Rather, the purpose of Brookbank is to provide flavor to the user upon any form of heating.
Furthermore, Brookbank does not disclose that the sheet may only be applied to the outside of the smoking material portion. Brookbank teaches that in some embodiments the flavor sheet is a distinct layer applied to the outside, but does not require that this is the only way the flavor sheet is provided. While Brookbank teaches that providing the flavorant as a sheet has the advantage that the flavorant is only released on application of heat, it would be expected that the sheet would still behave as such if also included in the smoking material portion. Thus, no teaching of Brookbank is understood to preclude the modification to include the sheet in the smoking material portion.
On pages 8-9 the Applicant argues that the rejection constitutes improper hindsight reasoning, as one having ordinary skill in the art would not have a motivation to look to Tanaka.
The Examiner disagrees.
Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. See MPEP § 2145 (X)(A).
Brookbank teaches a smoking article (smoking article 1; page 12, lines 9-13) comprising a smoking material portion (smokable material 2) wherein a sheet-type material (flavourant patch 10; page 4, lines 32-35) is applied to the smoking material portion.
Tanaka teaches that a flavourant patch may be used as cut filler mixed into the smoking material portion ([0084-0086]).
The prior art appropriately teaches all individual elements of the claimed invention, and those elements are thus considered to be knowledge held by those of ordinary skill in the art at the time of filing.
Furthermore, there is no requirement that an express, written motivation to combine must appear in prior art references before a finding of obviousness. The motivation to modify Brookbank with the teachings of Tanaka to improve or strengthen the flavor of the smoking article, would be an obvious conclusion for those in the art and need not necessarily explicitly appear in the prior art to be an appropriate motivation.
Thus, the modification would be obvious to one having ordinary skill and does not require improper hindsight reasoning.
On page 11 the Applicant further argues that the prior art of record does not teach new claim 11.
The Examiner agrees that primary reference Brookbank, as relied upon in claim 1 to teach plant extracts, does not teach claim 11. However, the combination of prior art references still makes obvious the claim.
Tanaka teaches that it is known in the art to use prune or cocoa extracts in a flavor sheet ([0042]). Thus, it would be obvious for one having ordinary skill in the art to modify Brookbank by making the plant extract a cocoa or a prune extract as taught by Tanaka because both Brookbank and Tanka are directed to flavored sheet-type materials comprising plant extract flavoring, Tanaka teaches that cocoa and prune extracts are also known to be used in a flavoring sheet, and this involves substituting one alternative plant extract flavoring for another to yield predictable results.
The following is a modified rejection based on amendments to the claims.
Claim Rejections - 35 USC § 103
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 1, 5 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Brookbank et al. (WO 2019197817 A1) in view of Gonterman et al. (US 20060021624 A1) and Tanaka (US 20130319430 A1).
Regarding claim 1, Brookbank teaches a smoking article (smoking article 1; Fig. 1; page 12, lines 9-13) comprising:
a smoking material portion (smokeable material 2) comprising a tobacco material (page 5, lines 25-26);
a filter portion (filter unit 4);
and a wrapper configured to wrap around at least a portion of the smoking material portion (wrapper 3),
wherein a sheet-type material (flavourant patch 10; page 4, lines 32-35) including a plant extract is applied to the smoking material portion, wherein the plant extract includes at least any one of a fenugreek extract, a chamomile extract and a coffee extract (page 4, lines 1-13).
Brookbank does not explicitly teach (I) the composition of the sheet-type material or (II) that the sheet-type material is included in the smoking material portion in addition to the existing tobacco material.
Regarding (I), Gonterman, directed to a smoking article (smoking article 10; [0025]) comprising a smoking material portion (tobacco rod 12), a filter portion (filter 14), and a wrapper (cigarette paper wrapper 16), teaches that a flavored sheet-type material (flavored filter plug wrap 13; [0026]) may comprise a flavoring agent and a binding agent such as carboxymethyl cellulose (CMC) ([0011], [0026]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Brookbank by making the sheet-type material from a flavor combined with a binding agent such as CMC as taught by Gonterman because both A and B are directed to flavored sheet-type materials, Brookbank is silent to the exact composition of the sheet-type material and one with ordinary skill would be motivated to look to prior art for a known and suitable flavored sheet composition, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding (II), Tanaka, directed to a method for preparing a flavored sheet-type material for use in a smoking article ([0017]), teaches that a flavored sheet comprising a flavor comprising a plant extract ([0042]) and a polysaccharide ([0020]) (e.g., CMC) may be used in the smoking material portion as a cut filler ([0084-0086]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Brookbank by also mixing the sheet-type material into the smoking material portion as taught by Tanaka in addition to the existing tobacco material of Brookbank because both Brookbank and Tanaka are directed to flavored sheet-type materials, Tanaka teaches that a flavored sheet-type material may be applied to the smoking material portion and one having ordinary skill would recognize that this would further improve the flavor of the smoking article, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 5, Brookbank teaches that the sheet-type material does not include a nicotine component (page 1, lines 14-16 teaches that “said flavourant patch comprises a botanical material other than tobacco”. One having ordinary skill in the art would understand this to mean that there is no nicotine component).
Regarding claim 10, Tanaka teaches that the sheet-type material is included in a cut form in the smoking material portion ([0084-0086]).
Regarding claim 11, Brookbank does not explicitly teach that the plant extract includes at least any one of a cocoa extract, a carob bean extract, an alfalfa extract, an angelica root extract, a benzoin extract, a chicory extract, an immortelle extract, a labdanum extract, a lovage extract, a mate extract, a tea extract, a valerian root extract, a prune extract, and a raisin extract.
Tanaka teaches that a flavored sheet plant extract may be at least one of a cocoa extract and a prune extract ([0042]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Brookbank by making the plant extract a cocoa or a prune extract as taught by Tanaka because both Brookbank and Tanka are directed to flavored sheet-type materials comprising plant extract flavoring, Tanaka teaches that cocoa and prune extracts are also known to be used in a flavoring sheet, and this involves substituting one alternative plant extract flavoring for another to yield predictable results.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Brookbank, Gonterman and Tanaka as applied to claim 1 above, and further in view of Rousseau (US 20200253267 A1).
Regarding claim 6, Brookbank does not explicitly teach that the sheet-type material includes at least one material among caffeine, an alkaloid material, and a cannabinoid material.
Rousseau, directed to a smoking article (smoking article 10; [0096]) comprising a smoking material portion (smokable column 12), a filter portion (filter 26), a wrapper (wrapping material 100), and a sheet-type material including a plant extract applied to the smoking material portion ([005-087]), teaches that the sheet-type material may use a cannabinoid as a plant extract ([0013]; [0091]), which may provide therapeutic benefits ([0088-0089]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Brookbank by using a cannabinoid plant extract as taught by Rousseau because both Brookbank and Rousseau are directed to smoking articles comprising a flavored sheet-type material, Rousseau teaches that a cannabinoid is a known alternative plant extract used in sheet-type materials that may provide therapeutic benefits, and this involves substituting one alternative plant extract for another to yield predictable results.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Brookbank, Gonterman and Tanaka as applied to claim 1 above, and further in view of Shi (US 20050000531 A1).
Regarding claim 7, Brookbank does not explicitly teach that the smoking material portion further includes a tobacco material formed by processing tobacco leaves whose nicotine content is 0.5 wt % or lower.
Shi, directed to a smoking article comprising a smoking material portion ([0175]), a filter portion ([0140]), and a wrapper wrapped around at least a portion of the smoking material portion ([0191]), teaches that the smoking material portion further includes a tobacco material formed by processing tobacco leaves whose nicotine content is 0.5 wt% or lower ([0180]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Brookbank by using the tobacco material formed by processing tobacco leaves whose nicotine content is 0.5 wt% or lower in the smoking material portion as taught by Shi because both Brookbank and Shi are directed to smoking articles comprising tobacco smoking material portions, Shi teaches an equivalent smoking material portion tobacco material, and this involves substituting one alternative tobacco material for another to yield predictable results.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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