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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/06/2026 has been entered.
Status of the Claims
This Office Action is in response to Applicant’s amendments filed on 01/06/2026.
Claims 1, 5-7 and 10 are pending and are subject to this Office Action.
Claim 1 is amended.
Claim 10 is newly added.
Claims 2-4 and 8-9 are cancelled.
Response to Arguments
Applicant's arguments, see page 4, filed 01/06/2026, with respect to the 102 rejection of claim 1 have been fully considered and they are persuasive. Claim 1 is amended to include the subject matter of previously presented claims 3-4 and 8 and to further require both that the sheet-type material include modified cellulose and that the sheet-type material be included in the smoking material portion. Prior art of record Rousseau teaches that the sheet-type material may be included in the smoking material portion ([0079-0081]) or comprise a modified cellulose ([0106]), however, does not teach or suggest these components in combination such that the modified cellulose is included in the smoking material. Therefore, the rejection has been withdrawn. However, upon further consideration, a new obviousness ground(s) of rejection is made in view of Brookbank et al. (WO 2019197817 A1), Gonterman et al. (US 20060021624 A1) and Tanaka (US 20130319430 A1).
The following is a modified rejection based on amendments to the claims.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 10, “lavage extract” should read “lovage extract”.
Appropriate correction is required.
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 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);
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.
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 including the sheet-type material in the smoking material portion as taught by Tanaka 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]).
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 teaches that the smoking material portion 2 may further comprise tobacco (page 5, lines 25-26).
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
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755