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 .
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.
Response to Amendment
Claims 1 and 10 are amended. Claims 1-12 are pending and presently examined.
Response to Arguments
Applicant’s remarks filed May 20, 2026 with respect to the §102 and §103 claim rejections concern amendments to the claims which are addressed in the rejections below.
Applicant’s remarks filed May 20, 2026 with respect to the nonstatutory double patenting rejection has been fully considered and are persuasive in overcoming the double patenting rejection of record. Said rejection has been withdrawn.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 8, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sun et al. (US 2010/0170522, cited on 10/03/2023 IDS).
Regarding claim 1, Sun discloses a tobacco material (10) (Abstract; [0025]; tobacco granules); comprising: a center portion (12) comprising a flavor material (Figures 1A-1D; [0026]; a core includes a flavorant); and an outer portion (14) including a tobacco mixture (22) and surrounding the center portion ([0028]; at least one layer surrounding the core and comprising tobacco particles).
Sun additionally discloses a fluid bed rotor processor that allows for efficient drying of the coating solution or suspension to form each layer on the core 12 ([0053] but does not explicitly disclose a water content for core 12 or layers 14. One of ordinary in the art would be reasonably suggested the layers surrounding the core would have less water or moisture than the core as the layers have more surface area for the evaporation of water than does the core. Therefore, when tested properly, one of ordinary skill in the art is reasonably suggested layer 14 (Sun’s outer portion) must have less water content as compared to the core (Sun’s center portion). This anticipates claim 1.
Regarding claim 2, Sun discloses the center portion further includes tobacco particles (22) (Fig. 1D; [0026]; In other embodiments, the core can include tobacco particles within a matrix of other constituents), and the flavor material includes menthol ([0038]; Flavorants used within the granules 10 can be any flavorant known in the art. For example, suitable flavorants include wintergreen, cherry, ..., menthol, ..., and mint oils from a species of the genus Mentha.) This anticipates claim 2.
Regarding claim 8, Sun discloses wherein the tobacco material has a spherical shape (Figs. 1A-1D; [0010] the granule can be generally spherical). This anticipates claim 8.
Regarding claim 10, Sun discloses a tobacco material (10) (Abstract; [0025]; tobacco granules); comprising: a center portion (12) comprising a flavor material (Figures 1A-1D; [0026]; a core includes a flavorant) (this anticipates a first composition); and an outer portion (14) including a tobacco mixture (22) and surrounding the center portion ([0028]; at least one layer surrounding the core and comprising tobacco particles).
Sun further discloses a method ([0017]) for forming said granules. The method comprises forming a center portion by growing a first composition ([0015] by growing the cores in a fluid bed processor ([0050]-[0053] to form to the desired size and forming the outer portion surrounding the center portion ([0016]; coating the core by spraying a second binder solution or suspension into the fluidized bed to produce at least two concentric layers after spraying said first binding solution.)
Sun additionally discloses a fluid bed rotor processor that allows for efficient drying of the coating solution or suspension to form each layer on the core 12 ([0053] but does not explicitly disclose a water content for core 12 or layers 14. One of ordinary in the art would be reasonably suggested the layers surrounding the core would have less water or moisture than the core as the layers have more surface area for the evaporation of water than does the core. Therefore, when tested properly, one of ordinary skill in the art is reasonably suggested layer 14 (Sun’s outer portion) must have less water content as compared to the core (Sun’s center portion). This anticipates the method of claim 10.
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 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2010/0170522, cited on 10/03/2023 IDS).
Regarding claim 4, Sun discloses that the core includes a flavorant ([0026]). Sun further discloses granules (10) flavor profile can also be controlled by the concentration and/or intensity of each flavorant in each layer, but does not explicitly specify the concentration of the flavorant in the core. The ordinarily skilled artisan would have further understood the granules (10) flavor profile can also be controlled by the concentration and/or intensity of the flavorant included in the core (12).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the core of Sun to include about 96% flavor to control the flavor profile of the granules (10) since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 5, Sun discloses all the limitations as set forth above. Sun further discloses the center portion has a diameter of about 0.01 mm to about 0.3 mm, and the outer portion has a diameter of about 0.5 mm to about 1.99 mm ([0026]; the core has a diameter of between 300 microns (e.g., about 0.3 mm) and 2 mm and in some embodiments the cores have a diameter of between 500 microns (e.g., about 0.5 mm) and 1 mm). Specifically, the overall diameter is between 500 microns and 1 mm, and as the outer portion is the outer component of the granule, the outer portion also has this diameter.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the center portion and the outer portion diameter ranges as taught by Sun as the claimed ranges overlap the prior art diameter ranges.
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. This reads over claim 5.
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2010/0170522, cited on 10/03/2023 IDS) as applied to claim 1 above, in view of Strickland et al. (US 2006/0191548).
Sun discloses all the claim limitations as set forth above.
Regarding claim 3, Sun does not explicitly disclose the tobacco material includes about 5.0 wt% to about 8.0 wt% of water, with respect to a total weight of the tobacco material.
Strickland teaches tobacco compositions based on technologies that may include films, tabs, shaped parts, gels, consumable units, insoluble matrices, and hollow shapes (Abstract) that a moisture content of 2-50 % of the final product ([0208]) so that the products are sufficiently rigid so as to be easily handled.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the tobacco material of Sun with a moisture content of between 2 and 50 percent of the weight of the tobacco product, as taught by Strickland, so that it can be easily handled.
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. This reads over claim 3.
Regarding claim 6, Sun discloses that the formulations forming the granules can be sprayed ([0015]-[0016]) but does not explicitly disclose the viscosity of the tobacco material.
Strickland teaches that liquid spraying are prepared with a liquid having a viscosity of <50 cP ([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 cP, as taught by Strickland so that it can be sprayed.
In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See 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), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) and MPEP § 2144.05 (I). This reads over claim 6.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2010/0170522, cited on 10/03/2023 IDS) in view of Rainer et al. (US 4,485,829) and Onno (US 2012/0167901).
Regarding claim 7, Sun does not explicitly disclose the surface roughness of the tobacco material.
Rainer teaches a process for increasing the filling power of tobacco (Abstract). A high filling power indicates a lower weight of tobacco is required to produce a cigarette rod of a given circumference and length than is required with a tobacco of low filling power. Filling power is increased by stiffening tobacco, by expanding tobacco, and by increasing the surface roughness of the tobacco so as to increase interparticle friction (col 2, l. 20-29). Rainer further teaches without wishing to be bound by theoretical explanations, it is felt the increase in the equilibrium cylinder volume (CVeq) produced by the process of the invention is attributable to either the stiffening of the tobacco, caused by a reaction of the basic calcium compound with acidic species occurring naturally in the tobacco, or to an increase in surface roughness, or a combination of both these factors.
It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to increase the surface roughness of the tobacco material particles of Sun as taught by Rainer so as to provide the increased tobacco filling power as Rainer is ultimately filling tobacco rods.
Onno teaches a tobacco product (Abstract). The surface of the tobacco layer has a roughness, Ra, of below about 0.005 µm ([0047]) provides a smooth tobacco layer surface which reasonably suggests a surface Ra above 0.005 µm is considered a rough surface to one having ordinary skill in the art.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the tobacco material of Sun with a rough surface which increases the tobacco filling power as taught by Rainer and to further provide a surface roughness above 0.005 µm as Onno reasonably suggests a surface Ra above 0.005 µm is considered a rough surface in the art.
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. Therefore, a surface roughness of greater than 0.005 µm overlaps with the claimed range of 0.1 to 10.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2010/0170522, cited on 10/03/2023 IDS) in view of Strickland et al. (US 2006/0191548) as applied to claim 1 above, and further in view of Zhuang et al. (US 2007/0000505, cited on 7/23/2025 IDS).
Regarding claim 9, modified Sun does not explicitly disclose the claimed smoking article comprising the tobacco material of claim 1 (See rejection of claim 1).
Zhuang teaches a smoking article with tobacco beads (reads over tobacco material) (Abstract). The smoking article comprises a tobacco rod containing the tobacco material ([0002], [00045], [0051]-[0052]) and a filter segment ([0002], [0019]-[0020]). Such a configuration allows the flavor of the cigarette to be enhanced with tobacco character and reduced “carbon taste” where preferably the flavors from the tobacco particulates and/or flavor components are released into the mainstream tobacco smoke ([0043]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a tobacco rod containing the tobacco particles of modified Sun and a filter segment to form a smoking article, as taught by Zhuang so that the flavor of a cigarette can be enhanced when the flavors from the tobacco particulates and/or flavor components are released into the mainstream tobacco smoke.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2010/0170522, cited on 10/03/2023 IDS) as applied to claim 10 above, in view of Strickland et al. (US 2006/0191548).
Sun discloses all the claim limitations as set forth above.
Regarding claim 11, Sun does not explicitly disclose the chamber, temperature and pressure.
Strickland teaches placing the ingredients of the core in a chamber and growing said ingredients to a desired size ([0162]-[0168]) in a chamber under a pressure of 22 psi (e.g., about 1.5 bar) and a temperature of 43 degrees Celsius ([0167]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a chamber, spray the tobacco material of Sun in 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, so that the granules can be produced with the desired size. This reads over claim 11.
Regarding claim 12, Sun discloses the core is formed in a fluid bed processor and then the coating is sprayed onto the core ([0015]-[0016]) at a temperature of between 10o C and 80o C ([0053]) but does not explicitly disclose the chamber and spraying pressure.
Strickland teaches spraying of a tobacco composition is performed in a chamber (reads over fluidizing the positioned center portion) and at a pressure of 22 psi (e.g., about 1.5 bar) and a temperature of 43 degrees Celsius ([0162]-[0168]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a chamber, spray the tobacco composition of Sun in a chamber at a pressure of 22 psi (e.g., about 1.5 bar) and a temperature of 43 degrees Celsius as taught by Strickland, so that the granules can be produced with the desired size. This reads over claim 12.
Terminal Disclaimer
The terminal disclaimer filed on May 20, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on U.S. Patent Application 18/279,511 and of any patent granted on U.S. Patent Application 18/286,139 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONNIE KIRBY JORDAN whose telephone number is 571-272-5214. The examiner can normally be reached M-F 8AM - 4PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/Christopher M Rodd/Primary Examiner, Art Unit 1766
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