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 09/14/2026.
Claims 1, 5-7 and 10-11 are pending and are subject to this Office Action.
Claim 1 is amended.
Claims 2-4 and 8-9 are previously cancelled.
Response to Arguments
Applicant's arguments, see pages 5-7, filed 09/04/2026, with respect to the 103 rejection of claim 1 have been fully considered and are persuasive. Claim 1 is amended to require a composition ratio of the flavor sheet. Prior art of record Gonterman does not disclose a composition ratio of the sheet-type material. Therefore, the rejection has been withdrawn. However, upon further consideration, a new obviousness ground(s) of rejection is made in view of Ergle et al. (US 20090038629 A1) in view of Tanaka.
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 Ergle et al. (WO 2019197817 A1) in view of Tanaka (US 20130319430 A1).
Regarding claim 1, Ergle teaches a smoking article (cigarette) comprising:
a smoking material portion comprising a tobacco material (tobacco column; [0015], [0053]);
a filter portion ([0015], [0054-0055]);
and a wrapper configured to wrap around at least a portion of the smoking material portion ([0053-0054]),
wherein a sheet-type material (flavor-bearing sheets; [0015]) including a flavorant (menthol; [0014], [0042]) is applied to the smoking material portion ([0015], [0053]), and
wherein the sheet-type material includes, with respect to a total of 100 parts by weight, about 2 to about 15 parts by weight of moisture ([0046] teaches that the moisture content may be, for example, 10% or 15%, which anticipates the claimed range), about 25 to about 90 parts by weight of the modified cellulose material ([0014], [0033] teaches 50-80%, which anticipates the claimed range), and about 0.1 to about 60 parts by weight of the plant extract ([0014], [0035] teaches 15-50%, which anticipates the claimed range).
Ergle further teaches that the flavorant may comprise a plant extract such as menthol or any art-recognized flavorant such as cocoa ([0042]).
Ergle does not explicitly teach that the flavorant is a plant extract including at least any one of a cocoa extract, a carob bean extract, a fenugreek extract, a chamomile extract, an alfalfa extract, an angelica root extract, a benzoin extract, a chicory extract, a coffee 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, directed to a method for preparing a flavored sheet-type material for use in a smoking article ([0017]), the flavored sheet comprising a flavor comprising a plant extract ([0042]) and a polysaccharide ([0020]) (e.g., CMC), 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 Ergle by using a cocoa extract in the flavorant as taught by Tanaka because both Ergle and Tanaka are directed to flavored sheet-type materials for smoking articles, Tanaka teaches that cocoa extract is a known flavorant applied to sheet materials, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 5, Ergle teaches that the sheet-type material does not include a nicotine component (Ergle does not require the presence of tobacco or nicotine in the sheet material. One having ordinary skill in the art would understand this to mean that there is no nicotine component).
Regarding claim 10, Ergle teaches that the sheet-type material is included in a cut form in the smoking material portion ([0048]).
Regarding claim 11, Tanaka teaches that a flavored sheet plant extract includes at least any one of a cocoa extract and a prune extract ([0042]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ergle and Tanaka as applied to claim 1 above, and further in view of Rousseau (US 20200253267 A1).
Regarding claim 6, Ergle teaches that the flavorant may additionally comprise any art-recognized flavorant ([0042]).
Ergle 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 flavorant applied to the smoking material portion ([005-087]), teaches that the sheet-type material may use a cannabinoid as a flavorant ([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 Ergle by additionally using a cannabinoid plant extract in the sheet-type material as taught by Rousseau because both Ergle and Rousseau are directed to smoking articles comprising a flavored sheet-type material, Rousseau teaches that a cannabinoid is a known flavorant used in sheet-type materials that may provide therapeutic benefits, and this involves applying a known teaching to a similar product to yield predictable results.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ergle and Tanaka as applied to claim 1 above, and further in view of Shi (US 20050000531 A1).
Regarding claim 7, Ergle teaches the smoking material portion includes a tobacco material of any type ([0051]).
Ergle does not explicitly teach that the smoking material portion 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 Ergle 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 Ergle 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
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/C.D./ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
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