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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
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Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 5-11 of copending Application No. 18/283,139 in view of STRICKLAND et al. (US 2006/0191548).
With respect to claim 1¸ copending Application No. 18/283,139 claims A tobacco material comprising: a core comprising a first tobacco mixture; and a shell formed around the core and comprising a second tobacco mixture, wherein the first tobacco mixture comprises first tobacco particles and a first flavor material, and the second tobacco mixture comprises second tobacco particles (Claim 1), wherein the tobacco material comprises 5.0 to 8.0 parts by weight of moisture with respect to 100 parts by weight of the tobacco material (Claim 2)
Copending Application No. 18/283,139 does not explicitly claim a natural flavor in the core. STRICKLAND et al. discloses tobacco compositions (Abstract) that includes flavor components (Paragraphs [0003], [0004]). The flavor components include natural flavor extracts (Paragraphs [0053]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide natural flavors in the tobacco material of copending Application No. 18/283,139, as taught by STRICKLAND et al. so that the user can be provided with natural, organic materials in the tobacco material, rather than synthetic ones.
With respect to claim 2, STRICKLAND et al. discloses that the flavors are derived from plants (Paragraph [0053]).
With respect to claim 3¸ STRICKLAND et al. discloses that the flavors include oils extracted from plants (e.g., natural oils) (Paragraph [0004]).
With respect to claim 4, copending Application No. 18/283,139 claims wherein the tobacco material comprises 5.0 to 8.0 parts by weight of moisture with respect to 100 parts by weight of the tobacco material (Claim 2).
With respect to claim 5, copending Application No. 18/283,139 claims a core diameter of between 0.1 and 0.5 mm, while the shell has a diameter of 0.4 to 1.2 mm (Claim 5).
With respect to claim 6, copending Application No. 18/283,139 claims a tobacco material viscosity of 5 to 200 cps (Claim 6).
With respect to claim 7, copending Application No. 18/283,139 claims wherein the tobacco material has a surface roughness of 0.1 to 10.0 (Claim 7).
With respect to claim 8¸ copending Application No. 18/283,139 claims a smoking article comprising: a tobacco rod comprising the tobacco material according to claim 1; and a filter segment (Claim 8).
With respect to claim 9, copending Application No. 18/283,139 claims a method of preparing a tobacco material, the method comprising: a first operation of forming a core by growing a first composition; and a second operation of forming a shell surrounding the core (Claim 9). Copending Application No. 18/283,139 does not explicitly claim a natural flavor in the core. STRICKLAND et al. discloses tobacco compositions (Abstract) that includes flavor components (Paragraphs [0003], [0004]). The flavor components include natural flavor extracts (Paragraphs [0053]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide natural flavors in the tobacco material of copending Application No. 18/283,139, as taught by STRICKLAND et al. so that the user can be provided with natural, organic materials in the tobacco material, rather than synthetic ones.
With respect to claim 10¸ copending Application No. 18/283,139 claims The method of claim 9, wherein the first operation comprises: introducing the first composition into a chamber; and growing the first composition at a temperature in a range of about 30 *C to about 60 *C, and under an air pressure less than or equal to about 1.5 bar (Claim 10) and placing the core in a chamber; introducing a second composition into the chamber; and growing the second composition around the core in the chamber under conditions of a temperature in a range of about 50 *C to about 90 *C, and an air pressure less than or equal to about 1.5 bar (Claim 11).
This is a provisional nonstatutory double patenting rejection.
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Claims 1-4 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 5 and 8 of copending Application No. 18/282,618 in view of STRICKLAND et al. (US 2006/0191548).
With respect to claim 1, copending Application No. 18/282,618 claims a tobacco material comprising: a core comprising a first tobacco mixture; and a shell surrounding at least a portion of the core and comprising a second tobacco mixture, wherein the first tobacco mixture comprises first tobacco particles and a flavor substance, the second tobacco mixture comprises second tobacco particles, and the shell has a surface roughness (Ra) of about 5.0 to about 10.0 (Claim 1) and tobacco material comprises about 5.0 wt% to about 8.0 wt% of moisture, based on a total weight of the tobacco material (Claim 5).
Copending Application No. 18/282,618 does not explicitly claim a natural flavor in the core. STRICKLAND et al. discloses tobacco compositions (Abstract) that includes flavor components (Paragraphs [0003], [0004]). The flavor components include natural flavor extracts (Paragraphs [0053]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide natural flavors in the tobacco material of copending Application No. 18/282,618, as taught by STRICKLAND et al. so that the user can be provided with natural, organic materials in the tobacco material, rather than synthetic ones.
With respect to claim 2, STRICKLAND et al. discloses that the flavors are derived from plants (Paragraph [0053]).
With respect to claim 3¸ STRICKLAND et al. discloses that the flavors include oils extracted from plants (e.g., natural oils) (Paragraph [0004]).
With respect to claim 4, copending Application No. 18/282,618 wherein the tobacco material comprises 5.0 to 8.0 parts by weight of moisture with respect to 100 parts by weight of the tobacco material (Claim 5).
With respect to claim 9, copending Application No. 18/282,618 claims a method of manufacturing a tobacco material, the method comprising: a first operation of manufacturing a core by using a first composition comprising a flavor substance; and a second operation of forming a shell surrounding at least a portion of the core (Claim 8) Copending Application No. 18/282,618 does not explicitly claim a natural flavor in the core. STRICKLAND et al. discloses tobacco compositions (Abstract) that includes flavor components (Paragraphs [0003], [0004]). The flavor components include natural flavor extracts (Paragraphs [0053]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide natural flavors in the tobacco material of copending Application No. 18/282,618, as taught by STRICKLAND et al. so that the user can be provided with natural, organic materials in the tobacco material, rather than synthetic ones.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 is indefinite because there isn’t a unit recited with the range of “0.01 to 10”.
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.
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.
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Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over SUN et al. (US 2010/0170522) in view of LIU et al. (US 2012/0024305) and STRICKLAND et al. (US 2006/0191548).
With respect to claim 1, SUN et al. discloses tobacco granules (Abstract; Title) comprising a core, 12, comprising a flavorant (Paragraph [0026]; Figures 1A-1D) and a shell, 14, formed around the core and comprising tobacco particles (Paragraph [0028]; Figures 1A-1D).
SUN et al. does not explicitly disclose that the shell comprises moisture. LIU et al. discloses tobacco material (Paragraphs [0046]-[0048]) having core/shell structures (Abstract; Title). The shells, when dried, are dried to remove excess moisture from the shells in order to leave them less tacky (Paragraph [0033], [0037]) so that they are highly storage stable (Paragraph [0038]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide a reduced moisture content in the shell of SUN et al., as taught by LIU et al., so that the tobacco material can be highly storage stable.
The scope of “reduced moisture content” includes values of zero and greater than zero moisture content, and thus overlaps with the claimed moisture in the shell.
SUN et al. does not explicitly disclose that the flavors are natural flavors. STRICKLAND et al. discloses tobacco compositions (Abstract) that includes flavor components (Paragraphs [0003], [0004]). The flavor components include natural flavor extracts (Paragraphs [0053]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide natural flavors in the tobacco material of SUN et al., as taught by STRICKLAND et al. so that the user can be provided with natural, organic materials in the tobacco material, rather than synthetic ones.
With respect to claim 2, STRICKLAND et al. discloses that the flavors are derived from plants (Paragraph [0053]).
With respect to claim 3¸ STRICKLAND et al. discloses that the flavors include oils extracted from plants (e.g., natural oils) (Paragraph [0004]).
With respect to claim 4, SUN et al. does not explicitly disclose that the moisture content is 5-10 parts by weight to 100 parts of the tobacco material. STRICKLAND et al. discloses that a moisture content of 2-50 % of the final product (Paragraph [0208]) so that the products are sufficiently rigid so as to be easily handled. It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the coating of SUN et al. with a moisture content of between 2 and 50 percent of the weight of the tobacco product, as taught by STRICKLAND et al., so that it can be easily handled.
With respect to claim 5¸ SUN et al. discloses that the core has a diameter of 300 microns (e.g., 0.3 mm) (Paragraph [0007]) and the shell has a diameter of 500 microns (e.g., 0.5 mm) (Paragraph [0010]). Specifically, the overall diameter is 500 microns, and since the shell is the outer component of the granule, the shell also has this diameter.
With respect to claim 6¸ SUN et al. discloses that the formulations forming the granules can be sprayed (Paragraphs [0015], [0016]) but does not explicitly disclose the viscosity of the tobacco material. STRICKLAND et al. discloses that spraying is performed with a liquid having a viscosity of 50 cPs (Paragraph [0335]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the tobacco material with a viscosity of 50 cPs, as taught by STRICKLAND et al. so that it can be sprayed.
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Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over SUN et al. (US 2010/0170522) in view of LIU et al. (US 2012/0024305) and STRICKLAND et al. (US 2006/0191548) as applied to claims 1-6 above, and further in view of ROJO-CALDERON et al. (US 2018/0295885) and ONNO (US 2012/0167901).
With respect to claim 7, modified SUN et al. does not explicitly disclose the surface roughness of the tobacco material.
ROJO-CALDERON et al. discloses an aerosol generating article comprising aerosol pellets (Abstract; Title). The particles may be provided with a desired rough or smooth surface finish (Paragraphs [0039], [0041], [0083], [0127]) to form compacted particles. It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the particles of modified SUN et al. with a rough surface, as taught by ROJO-CALDERON et al. so as to provide the desired compacting properties.
ONNO discloses a tobacco product (Abstract). The surface of the tobacco layer has a roughness, Ra, of below about 0.002 microns (Paragraph [0047]) to provide a smooth surface. Thus, it would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the roughness of the coating surface of modified SUN et al. with a roughness, Ra, of greater than 0.002 microns, as taught by ONNO so as to provide a rough surface.
The courts have generally held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05, I. Thus, a surface roughness of greater than 0.002 microns implicitly overlaps with the claimed range of 0.1 to 10.
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Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over SUN et al. (US 2010/0170522) in view of LIU et al. (US 2012/0024305) and STRICKLAND et al. (US 2006/0191548) as applied to claims 1-6 above, and further in view of ZHUANG et al. (US 2007/0000505).
With respect to claim 8, modified SUN et al. does not explicitly disclose the claimed smoking article comprising the tobacco material of claim 1 (See rejection of claim 1).
ZHUANG et al. discloses a smoking article with tobacco beads (e.g., tobacco material) (Abstract; Title). The smoking article comprises a tobacco rod having the tobacco material therein ((Paragraphs [0002], [0020], [0027], [0050]-[0052]) and a filter segment (Paragraphs [0019]-[0021]). Such a configuration allows the flavor of the cigarette to be enhanced (Paragraph [0043]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide a tobacco rod, having the tobacco particles of modified SUN et al. therein, and a filter segment to form a smoking article, as taught by ZHUANG et al. so that the flavor of a cigarette can be enhanced.
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Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over SUN et al. (US 2010/0170522) in view of STRICKLAND et al. (US 2006/0191548).
With respect to claim 9¸ SUN et al. discloses tobacco granules (Abstract; Title) comprising a core, 12, comprising a flavorant (Paragraph [0026]; Figures 1A-1D) and a shell, 14, formed around the core and comprising tobacco particles (Paragraph [0028]; Figures 1A-1D).
SUN et al. further discloses a method (Paragraph [0017]) for forming said granules. The method comprises a first operation of forming the core (Paragraph [0015]) and a second operation of forming the shell surrounding the core (Paragraph [0016]).
SUN et al. does not explicitly disclose that the flavors are natural flavors. STRICKLAND et al. discloses tobacco compositions (Abstract) that includes flavor components (Paragraphs [0003], [0004]). The flavor components include natural flavor extracts (Paragraphs [0053]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide natural flavors in the tobacco material of SUN et al., as taught by STRICKLAND et al. so that the user can be provided with natural, organic materials in the tobacco material, rather than synthetic ones.
With respect to claim 10, SUN et al. does not explicitly disclose the claimed chamber, temperature and pressure.
STRICKLAND et al. discloses placing the core in a chamber and then introducing the coating material (e.g., tobacco composition of SUN et al.) into the chamber to coat the core (Paragraphs [0164]-[0167]) under 22 psi and a temperature of 43 degrees Celsius, to form the granulated material of a desired size (Paragraph [0168]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide a chamber, placing the core of SUN et al. in the chamber, introducing the tobacco material coating into the chamber at a temperature of 43 degrees Celsius and a pressure of 22 psi (e.g., about 1.5 bar), as taught by STRICKLAND et al., so that the granules can be produced having the desired size.
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Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over SUN et al. (US 2010/0170522) in view of STRICKLAND et al. (US 2006/0191548) as applied to claim 9 above, and further in view of ATCHLEY et al. (US 2003/0070687).
With respect to claim 11¸ modified SUN et al. discloses that the moisture content of a “dry” tobacco product is about 8 vol% (SUN et al.; Paragraph [0004]), and the tobacco powder comprises about 0 to 99 wt% (SUN et al. Paragraph [0033]). The amount of water depends on the properties of the desired finished product (SUN et al.; Paragraph [0027]), but modified SUN et al. does not explicitly disclose that the water is about 30 to 60 vol% water.
ATCHLEY et al. discloses that soft tobacco includes a moisture content of greater than 15 vol% (Paragraph [0005]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to include greater than 15 vol% in the tobacco composition of modified SUN et al., as taught by ATCHLEY et al., so that the feel of the particles to the user can be in the form of a “soft” and “moist” particle.
The courts have generally held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art, to provide greater than 15 vol% water, and up to and including 60 vol%, so as to provide the desired moist and soft feel of the particles.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745