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 .
Response to Amendment
Amendment filed 3/31/2026 has been entered and fully considered. Claims 1-13 are pending. Claims 1, 7, 9 and 13 are amended. No new matter is added.
Response to Arguments
Applicant notes that all 112 rejections are overcome.
Examiner agrees. The indefinite issues that were previously outlined have been overcome.
Applicant argues that the ODP rejections are overcome by the amendments.
Examiner agrees. The Obviousness Double Patenting rejections are overcome.
Applicant argues that the art does not teach that the tobacco material is free of binders, and that the core is grown by agglomeration.
Examiner notes that these features were not previously presented and will be addressed hereinafter.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1- 5, 8, 9, 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over SUN et al. (US 2010/0170522) in view of ZHUANG et al. (US 2007/0000505) .
With respect to claim 1, SUN et al. discloses tobacco granules (Abstract; Title) comprising a core, 12, comprising a flavorant and first tobacco material in a matrix (e.g., tobacco mixture) (Paragraph [0026]; Figures 1A-1D) and a shell, 14, formed around the core and comprising second tobacco particles and flavorants and binders in a mixture (Paragraphs [0028] and [0032]; Figures 1A-1D).
SUN et al. does not explicitly disclose that the mixture is free of binders. ZHUANG et al. discloses tobacco particles having a coating thereon (Abstract; Paragraphs [0002], [0042]). The composition may have binders, but is preferably held together without the addition of a binder (Paragraph [0042]) and results in enhanced tape in the tobacco (Paragraph [0070]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to hold the tobacco together without the use of binders in SUN et al., as taught by ZHUANG et al. so that the resulting beads can have enhanced flavor.
With respect to claim 2, ZHUANG et al. discloses that the moisture content is between about 8 wt% of the tobacco material (Paragraph [0070])
With respect to claim 3, SUN et al. discloses that the second tobacco mixture comprises a second flavor material (Paragraphs [0028], [0032).
With respect to claim 4¸ ZHUANG et al. discloses that the flavors are present in an amount of up to 50 wt% (Paragraph [0069])
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 8, 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.
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]) by growing in a fluid bed reactor (Paragraphs [0050]-[0053]) to form the desired size and a second operation of forming the shell surrounding the core (Paragraph [0016]).
SUN et al. does not explicitly disclose the formation of the tobacco through agglomeration. ZHUANG et al. discloses that the tobacco particles were formed by mixing the ingredients and extruding them to form large irregularly shape tobacco agglomerates (Paragraph [0087]). 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 form agglomerates of tobacco particles as taught by ZHUANG et al. so that better flavor release can be obtained (Paragraph [0081]).
With respect to claim 12¸ SUN et al. discloses that the core materials (e.g., first composition) comprises flavorants that may be adjusted to give a desired flavor release profile (Paragraphs [0037] and [0054]). The flavor profile can be controlled by the concentration of flavorant (Paragraph [0055]) and the profiles and properties are nearly limitless (Paragraphs [0058]-[0059]). Very high concentrations of flavorant create a flavor spike (Paragraph [0056]; Figures 2A and 2B .
While the volume concentration of the flavoring is unknown in SUN et al., the courts have generally held that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05, II, A.
In the instant case, SUN et al. recognizes the concentration of flavorant as a result effective variable for controlling the spike in flavor, as seen in figures 2A and 2B. 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 a lower concentration through routine optimization, such as between 0.1% and 20% by volume as claimed, so as to provide a lower flavor spike a more subtle flavor tones.
With respect to claim 13, SUN et al. discloses a third operation of adding a second flavor to the shell (Paragraphs [0050]-[0056]).
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Claim(s) 6, 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over SUN et al. (US 2010/0170522) in view of ZHUANG et al. (US 2007/0000505) as applied to claims 1- 5, 8, 9, 12 and 13 above, and further in view of STRICKLAND et al. (US 2006/0191548)
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.
With respect to claim 10, SUN et al. does not explicitly disclose the claimed chamber and processing temperature and pressure.
STRICKLAND et al. discloses placing the ingredients of the core in a chamber and grown to a desired size (Paragraphs [0162]-[0168) in a chamber (Paragraphs [0164]-[0167]) under 22 psi and a temperature of 43 degrees Celsius (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, growing 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.
With respect to claim 11, SUN et al. discloses that the core is formed in a fluid bed processor and then the coatings are sprayed onto the core (Paragraphs [0015], [0016]) at a temperature of between 10 and 80 degrees (Paragraph [0083]) but does not explicitly disclose the claimed chamber and processing pressure.
STRICKLAND et al. discloses spraying of a tobacco composition that takes place in a chamber and under a pressure of 22 psi (e.g., about 1.5 bar) and a temperature of about 43 degrees Celsius (Paragraphs [0162]-[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, spray the coating of SUN et al. in a 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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over SUN et al. (US 2010/0170522) in view of ZHUANG et al. (US 2007/0000505) as applied to claims 1- 5, 8, 9, 12 and 13 above, and further in view of ROJO-CALDERON et al. (US 2018/0295885) and ONNO (US 2012/0167901)
With respect to claim 7, 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 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 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.
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 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
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