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/Restriction
Applicant's election with traverse of Group I (claims 1-7: drawn to a method for producing tobacco flavor liquid) in the reply filed on July 16, 2026 is acknowledged.
Applicant’s traversal states (p.2) “The requirement is traversed because (1) there are overlapping or related technical features among the groups of claims and (2) there would be no undue burden to examine all the groups of claims”.
This is not found persuasive because the criteria for the restriction requirement(s) are stated in MPEP § 806.05(d), (f), and (j). See the restriction requirement mailed June 1, 2026 (p.2 ¶4 to p.4 ¶2). The criteria are different from “overlapping or related technical features among the groups of claims” (p.2). Also, an undue search burden exists for the reasons stated in the restriction requirement (p.4 ¶3 to p.5 ln.3: reasons (a), (b), (c), and (d)) wherein an “overlapping or related technical features among the groups of claims” (p.2) does not negate reasons (a), (b), (c), and (d).
The requirement is still deemed proper and is therefore made final.
Claims 8-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 16, 2026.
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 2-4 and 6-7 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 2 recites passing the tobacco extract liquid through a layer including “an inorganic porous body” (lns.2-3). It is unclear if such is introducing an inorganic porous body different from that recited in claim 1 (ln.3) or if such is actually the inorganic porous body recited in claim 1. The instant specification discusses a layer including inorganic porous body (¶s38-39 ¶41) and does not appear to discuss different inorganic porous bodies (for example: one inorganic porous body and one layer including an inorganic porous body).
Claim 3 recites passing the tobacco extract liquid through a molded body including “an inorganic porous body” (lns.3-4). It is unclear if such is introducing an inorganic porous body different from that recited in claim 1 (ln.3) or if such is actually the inorganic porous body recited in claim 1. The instant specification discusses a molded body including an inorganic porous body (¶39) and does not appear to discuss different inorganic porous bodies (for example: one inorganic porous body and one molded body including an inorganic porous body).
Claim 4 recites passing the tobacco extract liquid through an aggregate of particles including “an inorganic porous body” (lns.3-4). It is unclear if such is introducing an inorganic porous body different from that recited in claim 1 (ln.3) or if such is actually the inorganic porous body recited in claim 1. The instant specification discusses an aggregate of particle including an inorganic porous body (¶41 ¶44) and does not appear to discuss different inorganic porous bodies (for example: one inorganic porous body and one aggregate of particles including an inorganic porous body).
Claim 6 is considered to be indefinite in that it is unclear if the claim remains directed to a single statutory category of invention (i.e. method for producing a tobacco flavor liquid – claim 1, Ln.1) or if the claim is introducing a second category (i.e. a method of producing a tobacco supernatant extract liquid).
Claim 7 is considered to be indefinite in that it is unclear if the claim remains directed to a single statutory category of invention (i.e. method for producing a tobacco flavor liquid – claim 1, Ln.1) or if the claim is introducing a second category (i.e. a method of producing a tobacco useful-component eluate extract liquid).
Claim 7 recites the limitation "the resultant mixture" (ln.13). There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the mixture" (ln.14). There is insufficient antecedent basis for this limitation in the claim.
Claim 7 does not clearly state the antecedent of “the yeast” (ln.13 ln.15) in that previously, in the claim, there is recited a “yeast” (ln.9) and “a yeast-containing culture liquid” (ln.10). It is unclear which yeast is being referenced.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nie (CN101268859(A)).
Claim 1: Nie teaches a method for producing a tobacco flavor liquid, the method comprising treating a tobacco extract liquid (¶13: “tobacco soluble extract”) with a material including an inorganic porous body (¶13: “adsorption material; ¶s13-14: “One or more of activated carbon … maifanite”), thereby removing harmful components from the tobacco extract liquid (¶s15-16). The treated tobacco extract liquid is considered to be a tobacco “flavor” liquid in that tobacco has a flavor. Nie teaches the same method steps as claimed – acting on the same material as claimed and using the same body as claimed – such that Nie’s method is considered to remove microorganisms from the tobacco extract liquid to the same degree as that claimed.
Claim 2: Nie teaches the method according to claim 1, wherein the treatment is performed by passing the tobacco extract liquid through a layer including an inorganic porous body (¶15: “The adsorption of harmful components by adsorbent materials … use the adsorbent material as a packing material for the extract as it flows through the chromatography equipment”).
Claim 3: Nie teaches the method according to claim 1, wherein the treatment is performed by passing the tobacco extract liquid through a molded body including an inorganic porous body (¶15). The instant specification refers to a molded body as compressed particles of the inorganic porous body (¶39 lns.16-17). In paragraph 15, Nie teaches “packing” (i.e. “packed”; “compressed” in instant claim 3). In paragraph 14 Nie teaches the adsorbent material may be – for example activated charcoal or silica gel – which are particulate materials.
Claim 4: Nie teaches the method according to claim 1, wherein the treatment is performed by passing the tobacco extract liquid through an aggregate of particles including an inorganic porous body (¶15). In paragraph 15, Nie teaches packing the adsorbent material. It is submitted that the packing will form an aggregate of the adsorbent material. In paragraph 14 Nie teaches the adsorbent material may be – for example activated charcoal or silica gel – which are particulate materials.
Claim 5: Nie teaches the method according to claim 1, wherein the inorganic porous body is diatomaceous earth or zeolite (¶14).
Claim 6: Nie teaches the method according to claim 1. The limitation of “wherein the tobacco extract liquid is a tobacco supernatant obtainable by extracting, from a tobacco material, a water-soluble component contained in the tobacco material by using an aqueous solvent” is not considered to be a method-step limitation for the claimed method in that “obtainable”, as used in this particular claim, is optional.
Claim 7: Nie teaches the method according to claim 1. The limitation of “wherein the tobacco extract liquid is a useful-component eluate obtainable by a method comprising following steps (a) to (c): (a) extracting, from a tobacco material, a water-soluble component contained in the tobacco material by using an aqueous solvent, thereby obtaining a tobacco supernatant; (b) culturing yeast in the tobacco supernatant, thereby obtaining a yeast-containing culture liquid; and (c) mixing the yeast-containing culture liquid with an elution solvent including an organic solvent, and eluting, from the yeast contained in the resultant mixture and into a liquid portion of the mixture, a useful component included in fungal cells of the yeast, thereby obtaining a useful-component eluate” is not considered to be a method-step limitation for the claimed method in that “obtainable”, as used in this particular claim, is optional.
Prior Art of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: (1) Suhana discusses tobacco having bacterial and fungi; and (2) Bartolomeu discusses cigarette tobacco extract having microorganism toxicity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phil Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA L GRAY/Primary Examiner, Art Unit 1745
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