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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7, in the reply filed on 3/10/2026 is acknowledged. Claims 8-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claims 1-7 are 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 1 recites a surface roughness (Ra) of about 5.0 to about 10.0, but does not provide a unit of measurement. Surface hardness is conventionally expressed in units of distance (e.g., micrometers) and it is unclear what the scale is for the recited surface roughness.
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.
Claims 1 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Karles (US 2011/0232657) in view of Mishra (US 20170295842) and Zheng (CN102835736).
Regarding claim 1, Karles discloses a tobacco material (tobacco beads 10, [0002]) comprising:
a core comprising a first tobacco mixture and a shell surrounding at least a portion of the core (core-shell structure is provided,[0016]),
wherein the first tobacco mixture comprises first tobacco particles and a flavor substance (core comprises tobacco particles and menthol [0019]).
Karles discloses a shell but does not expressly disclose a second tobacco mixture with second tobacco particles; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the shell with tobacco particles since Mishra, similarly directed towards tobacco beads, teaches providing the beads with a core-shell structure wherein the layer surrounding the core includes tobacco/tobacco flavor ([0018]). One would have been motivated to enhance the flavor profile of the tobacco beads.
Karles is silent regarding the surface roughness of the shell. Examiner notes that Karles and Mishra disclose the tobacco beads as being provided in a filter for controlled flavorant delivery (Karles, [0069,0071]; Mishra [0013]). In the same field of endeavor of tobacco articles, Zheng discloses providing particulate material within a filter and teaches that a rough surface structure of the particulate material effectively enhances the binding between the particulates and the filter rod tow, eliminating the phenomenon of material falling off the ends of the filter rod ([0024]). Thus, Zheng discloses surface roughness is an art-recognized result effective variable for controlling particulate binding within a filter rod. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tobacco material of Karles with surface roughness as claimed, since Zheng discloses surface roughness of particulate affects the binding between particulates and filter rod tow and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). Examiner notes that the instant specification discloses surface roughness as providing surface friction to fix the position of the tobacco material between acetate fibers of a filter ([0061]).
Regarding claim 5, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the moisture content as about 5.0 to 8.0 wt% since Karles discloses drying the beads to a moisture level of 0.5% to about 25% ([0053]), said range overlapping the claimed range.
Regarding claims 6 and 7, Karles discloses the tobacco material as being provided in a filter ([0069;0071]). As to claim 7, Karles does not disclose providing the filter comprising a first filter element, a flavor portion, and a second filter portion in sequence; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the filter as claimed since Mishra discloses configuring a filter subassembly with first absorbent member 22, a second absorbent member 24, and a cavity containing flavor beads arranged therebetween ([0029,0048-0049], Figs. 1,2). One would have been motivated to employ the filter construction to contain the tobacco material therein and to control the level of dilution, resistance to flow, and deliver ([0053]).
Claims 2 and 3 is rejected under 35 U.S.C. 103 as being unpatentable over Karles (US 2011/0232657) in view of Mishra (US 20170295842) and Zheng (CN102835736) as applied to claim 1 above, and further in view of Sun (US 2010/0170522).
Regarding claim 2, Karles does not disclose the first tobacco mixture as comprising 90 wt% or more of flavor substance; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tobacco mixture with 90wt% or more flavor substance since Sun, similarly directed towards tobacco granules, teaches that the flavor profile can be controlled by the concentration and/or intensity of flavorant in each layer and discloses providing a flavorant concentration of at least 50wt% (e.g., 90wt%)([0055]). One would have been motivated to configure the first tobacco mixture with 90wt% or more flavorant to enhance the flavor profile of the tobacco material.
Regarding claim 3, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the core and shell size within the claimed ranges since (1) Karles discloses configuring the tobacco beads with diameters in the range of 0.2 to 1.2 mm ([0052]); and (2) Sun, similarly directed towards a tobacco particle having core-shell structure, teaches configuring the core with diameter of 0.3 mm to 2 mm and overall diameter of 0.5 to 5 mm ([0007-0010]), said ranges overlapping the claimed ranges. One would have been motivated to adjust the size of the core and shell to control the flavor profile of the tobacco material. Examiner notes that mesh 30-50mesh is about 0.3 to 0.6 mm while 18-25 mesh is about 0.7 to 1 mm.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Karles (US 2011/0232657) in view of Mishra (US 20170295842) and Zheng (CN102835736) as applied to claim 1 above, and further in view of Lewis (US 20210092994).
Regarding claim 4, Karles does not disclose the hardness of the tobacco material; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tobacco material with hardness as claimed since Lewis, similarly directed towards flavorant particles within tobacco products, teaches configuring the particles with hardness greater than 95% to make the particles more robust and less likely to break during transit ([0018]).
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/283139 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application '139 similarly discloses a tobacco material having core comprising first tobacco mixture and flavor material, a shell comprising a second tobacco mixture and surface roughness of 0.1 to 10.0.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18279511 in view of Sun (US 2010/0170522). Application '511 similarly discloses a tobacco material having core comprising flavor material, a shell comprising a second tobacco mixture, and surface roughness of 0.1 to 10.0. Application '511 does not disclose the core as comprising a tobacco material, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the core with tobacco and flavor material since Sun discloses tobacco granules comprising a flavorant and tobacco material in a core and a shell formed around ([0026,0028,0032], Fig. 1). One would have been motivated to achieve a desired flavor profile.
This is a provisional nonstatutory double patenting rejection.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18285419 in view of Sun (US 2010/0170522). Application '511 similarly discloses a tobacco material having center portion comprising flavor material, an outer portion comprising a second tobacco mixture and surrounding the center portion, and surface roughness of 0.1 to 10.0. Application '419 does not disclose the core as comprising a tobacco material, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the core with tobacco and flavor material since Sun discloses tobacco granules comprising a flavorant and tobacco material in a core and a shell formed around ([0026,0028,0032], Fig. 1). One would have been motivated to achieve a desired flavor profile.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619