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 with traverse of Species A (Claim 3) in the reply filed on 6/11/2026 is acknowledged. Applicant does not offer arguments or rationale for why this election is made with traverse, such that the rationale laid out for the species restriction dated 5/7/2026 is still found applicable.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/11/2026.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 1/10/2024 and 8/4/2025 has been considered by the Examiner.
Specification
The abstract of the disclosure is objected to because it is over 150 words. The abstract should preferably not exceed 150 words in length and should be checked to see that it is as concise as the disclosure permits. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 1-3 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 “…the tobacco material after being extracted in the extracted step, is cleaned by means of an acidic cleaning liquid having a pH of 7.0 or less…”. From this limitation, pH values up to 7.0 are included for the acidic cleaning liquid. However, a pH of 7.0 is neutral and it not acidic (as only materials with a pH of less than 7.0 are considered acidic). It is thus not clear from this combination of limitations whether the cleaning liquid must truly be “acidic” (as in a pH of less than 7) or whether the cleaning liquid may include a neutral pH and not be an acid (as in a pH equal to or less than 7) which would contradict the liquid being “acidic”. Applicant is asked to amend and clarify without the addition of new matter. Claims 2-3 are rejected for relying upon a rejected claim. The claims will be examined as if claim 1 reads “…an acidic cleaning liquid having a pH of less than 7.0…”.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Osuga (US2019/0045835A1), optionally in view of Shi (CN109602066A), and in view of Ito (WO2019097641A1, citing to English Equivalent EP3711494A1)
Regarding claim 1, Osuga teaches a method for manufacturing an atomization unit of a suction tool (Fig. 4 showing method, and Fig. 3 showing the flavor inhaling tool "100"), the atomization unit includes a liquid storage section that stores an aerosol liquid and an electrical load that atomizes the aerosol liquid introduced from the liquid storage section and generates an aerosol (the flavor tool includes a flavor source "130" that is stored in the device and a heat source "120" which heats the flavor [0062-0063]), wherein the method comprises,
An extraction step in which a tobacco material subjected to an alkali treatment is heated to extract a flavor component from the tobacco material (in step S20 [Fig. 4], the tobacco raw material added with the basic substance [0068] is heated, so as to separate the inhaling flavor component from the tobacco raw material in the vapor phase [0069+], such that the tobacco residue is separated out. The tobacco residue goes to step S50 while the tobacco flavor component goes to step S30 [Fig. 4]),
A molding step in which a tobacco residue is cleaned by means of an acidic cleaning liquid having a pH of 7 or less to cause a pH of the tobacco residue to become less than 8, and the tobacco residue after cleaning is solidified and molded into a shape and produced a molded body (in step S50, the tobacco residue is washed with a washing solvent [0085]. An acidic solvent may be used as the washing solvent, such as carboxylic acid, acetic acid, or malic acid [0091]. Because each of these are acids, they would clearly have a pH below 7. As a result of the washing solvent interacting with the tobacco residue, the basic substance (potassium carbonate or the like) in the tobacco raw material can be efficiently neutralized and remove the basic substance [0088-0089]. While Shi does not explicitly state that this step results in the tobacco residue having a pH of less than 8, the teachings of Osuga stating that the tobacco residue would be "neutralized" and have the basic substance removed [0088-0089] clearly suggests that the pH of the tobacco residue would be substantially near a pH of 7 and well below a basic pH of 8. Such a cleaning process reasonably conveys to the person of ordinary skill in the art that the tobacco residue would have a pH of less than 8, as a result of the neutralization of the tobacco residue by the addition of the acidic washing solvent. The tobacco residue may then further be crushed and cut after washing to form a plurality of granules by extrusion molding and sizing treatment [0091, 0096, 0109], such that the residue is clearly solidified and molded into a predetermined shape).
Optionally applied, Shi teaches tobacco sheets in cigarettes [abstract], wherein the pH value of the tobacco sheet is controlled to stay in the range of 6-8 [abstract, pg. 3 of machine translation]. One of ordinary skill in the art would have found it obvious for the tobacco residue of Osuga to be controlled to a pH in the range of 6-8 as suggested by Shi. One would have been motivated so as to ensure the nicotine is fully volatized and atomized, and to improve suction satisfaction and taste [abstract, pg. 3 of machine translation].
Osuga does not explicitly disclose the aerosol liquid and molded body being stored in the liquid storage section. However, such a type of structure is common and well-known within the tobacco art, and the modification to utilize an aerosol liquid and molded body in the liquid storage section would have been an obvious design choice. Ito, for example, discloses a heating type flavor inhaler and method of manufacturing said inhaler [title, abstract]. The method of processing the tobacco material similarly involves extracting out the tobacco residue and the tobacco extraction liquid for processing [see Fig. 1], wherein the mixture may be dried or not [0063-0066]. The mixture is combined at the end of the process to have a solid tobacco reside and a tobacco extraction liquid [Fig. 1]. Fig. 3 provides a view of the heating type flavor inhaler "10", and Fig. 4 provides a zoomed in view of the molded body of the tobacco residue and the liquid aerosol source being both located in the liquid storage section.
One of ordinary skill in the art would have found it obvious to modify the method of Osuga to have the molded body and aerosol liquid stored in the liquid storage section, as suggested by Ito. One would have been motivated so as to provide a known alternative with common, expected results, that being providing a suction tool capable of providing vapor to a user in the demonstrated manner of Ito. See MPEP 2143. And one would have expected the modification to provide sufficient flavor to the user over a prolonged period and to have excellent storage and release properties [0004, 0008, 0115-0121, 0205-0209].
Regarding claim 3, modified Osuga makes obvious a method further comprising an extracted liquid preparation step in which the flavor component extracted in the extraction step is added to a solvent to prepare a tobacco material extracted liquid (as in step S30 [Fig. 4], the inhaling flavor component is trapped by trap solvent 70, such that the flavor component is clearly added to the solvent and thus forming a tobacco material extracted liquid [0077-0080, 0107]), and wherein the aerosol liquid stored in the liquid storage section contains the extracted liquid prepared in this step (the material from step S30 may be used as the aerosol source from which aerosol is generated [0104], such that as modified this would clearly be stored in a liquid storage section with the molded body).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Osuga (US2019/0045835A1), optionally in view of Shi (CN109602066A) or Chon (KR20060025486A), and in view of Ito (WO2019097641A1, citing to English Equivalent EP3711494A1), as applied to claim 1 above, and further in view of Wu (CN112089086A).
Regarding claim 2, Osuga does not explicitly include a coating step with the claimed substances. However, it is common within the art to coat molded bodies of tobacco residue in the manner claimed. Wu teaches a method for preparing tobacco, wherein the method includes the steps of preparing a coating liquid and coating the coating liquid over the tobacco substrate [pg. 1, 3 of machine translation]. The coating formulation includes water and an adhesive which can include chitosan or agar, and other water soluble components [pg. 3 of machine translation]. One of ordinary skill in the art would have found it obvious to modify the method of Osuga so as to coat the molded body as suggested by Wu. One would have been motivated so as to ensure good product density, moisture-proof performance, sufficient smoke amounts and stable release [pgs. 3-4].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS F SCHNEIDER whose telephone number is (571)272-4857. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm.
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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