DETAILED ACTION
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 17, 18, 22, 23, and 27 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Gary (US 3,046,996).
Regarding claims 17, 22, 23, 31, and 35, Gary discloses making a smoking article (i.e. cigarette) using sorbtive material of natural or synthetic origin, slurried with glycerol (an aerosol forming agent (i.e. humectant) and diluent applied directly, and uniformly, to tobacco and forming a tobacco rod and cigarette (Col. 1, 32—55, col. 2, line 46—col. 3, line 75).
Gary does not disclose attaching a filter (cellulose acetate) to the tobacco rod. It is notoriously well known in the art, as well as to ordinary consumers, to add a filter to the tobacco rod when making cigarettes. Most cigarettes contain a cellulose acetate filters.
Regarding claim 18, Gary defines the term “mineral-type” as referring to:
any particulated solid comingled with tobacco for any purpose and includes also those true minerals of natural origin, clays including mineral constituents, those synthetically prepared inorganic materials such as alumina gel, treated mineral materials, and the like. The term encompasses also acid-activated kaolin clay hereafter described as well as other materials of the type used as catalysts in hydrocarbon conversion processes, such as are produced synthetically from silica and metallic oxides or by acid activation of bentonite clays or even activation of kaolin clay with leaching of soluble salts. (col. 1, 41-51)
In defining the term Gary does not explicitly indicate that silica gel is among the synthetically prepared inorganic materials such as alumina gel. However, Gary discloses that silica gel has been used in the prior art:
Other finely- divided materials which has been suggested in the prior art to eliminate deleterious substances such as certain alkaloids from the main stream of tobacco smoke include certain sorptive material of natural or synthetic origin, such as for example, silica gel, certain naturally occurring clays, either in their raw state or heat or acid-treated, alumina gel, etc. (col 1, 32-40).
One of ordinary skill in the art would have understood that silica gel is a sorptive material and that silica gel is a synthetic inorganic material. The inclusion in the list would have led one of ordinary skill in the art to understand that silica gel would meet the definition disclosed by Gary. In addition, it would have been obvious to one of ordinary skill in the art at the time of invention/filing to use silica gel as the synthetic inorganic sorbtive material in the invention of Gary, because it has been used to eliminate deleterious substances from mainstream smoke in the prior art (as disclosed by Gary).
Regarding claim 27, Gary discloses that the mineral type particles should have a particle size of 100 microns or less (0.1. mm), which significantly overlaps the claimed range (0.5-2.0 mm).
Regarding claims 31-33, Gary discloses using humectants like glycerin and sorbitol, in combination with water (col. 2, 52-60).
Claims 18, 19, 20, 21, and 30, are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Gary (US 3,046,996) as applied to claim to claim 17 above, and further in view of Xu et al. (Removing nitrosamines from mainstream smoke of cigarettes by zeolites, 2003).
Regarding claims 18, 20, 21, and 36, Gary discloses adding natural and synthetic “mineral-type” sorptive materials to tobacco to remove unwanted compounds from smoke but does disclose the specific materials and does not indicate the mineral’s surface area or pore volume. Xu et al. disclose that zeolites (i.e. molecular sieves) have been applied to tobacco to reduce levels of tobacco specific nitroimines (page 125, paragraph 1). Xu et al. disclose the properties of several zeolites as well as other porous absorbents such as silica and activated carbon. As shown in the table below, all of the materials listed by Xu et al. have surface areas greater than 50 m2/g, and have pore volumes between 0.1 and 1.5.
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425
527
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It would have been obvious to one of ordinary skill in the art at the time of invention to use the materials disclosed by Xu et al. in the invention of Gary in order to remove nitrosamines and other unwanted smoke constituents (as taught by both Xu et al. and Gary). Using the materials of Xu et al. as the mineral type sorptive materials in Gary would have produced predictable results.
Regarding claim 30, it is notoriously well known in the art at the time of invention/filing that zeolites have micropores (i.e. are microporous materials). As disclosed by Xu et al., some zeolites also have mesopores (i.e. mesoporous materials). In particular, the article by Xu et al. appears in the journal “Microporous and Mesoporous Materials”.
Regarding claims 19 and 34, Gary does not disclose that the glycerin or propylene glycol is absorbed or adsorbed in the sorbent in an amount from 60 to 120 wt% based on the weight of the sorbent. Gary and Xu et al. teach the same components as the instantly claimed invention, including an absorbent with the same surface area, pore volume, particle size (i.e. zeolites and silica), as well as an aerosol forming agent (i.e. glycerin and/or propylene glycol). Therefore, it would have been inherent that the absorbent would absorb the same amount of glycerin and/or propylene glycol as the claimed invention because the ingredients are the same.
Claims 28 and 29, are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Gary (US 3,046,996) and Xu et al. (Removing nitrosamines from mainstream smoke of cigarettes by zeolites, 2003) as applied to claim to claims 18, 20, and 21 above, and further in view of Green (GB 2,122,473).
Regarding claims 28 and 29, Gary and Xu et al. teach the use of sorbents such as zeolites on tobacco to remove unwanted constituents from smoke. The references are silent to adding flavor to the sorbent. Green discloses that zeolite granules can be impregnated with volatile smoke-flavoring or modifying agents such as menthol (page 1, 64-67). It would have been obvious to one of ordinary skill in the art to impregnate the zeolite of modified Gary (as discussed in the rejection of claim 18 above) to provide controlled release of the volatile flavorant menthol as disclosed by Green. The results of such a combination would have been predictable (i.e. improved retention of menthol).
Claims 24, 25, and 26, are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Gary (US 3,046,996) as applied to claim to claim 17 above, and further in view of Shi (US 2005/0000531).
Regarding claims 24, 25, and 26, Gary does not disclose a cigarette filter with a second sorbent. However, it is well known in the art to use sorbents in cigarette filters. For instance, Shi discloses a cigarette filter with activated carbon but that can also have other sorbent materials such silica gel, natural and synthetic zeolites and molecular sieves ([0145]-[0149]). It would have been obvious to one of ordinary skill in the art at the time of invention to use the cigarette of Shi with the cigarette of Gary to reduce unwanted smoke constituents as disclosed by Shi.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached on Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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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/Michael J Felton/Primary Examiner, Art Unit 1747