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 .
Status of the Claims
Claims 1-21 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-13 in the reply filed on 4/28/26 is acknowledged.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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, 6, 7, 10, and 13 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.
Claims 2, 7, 10, and 13 are indefinite for reciting “…contained in 100mass% of the tobacco sheet ranges from [X]mass% to [Y]mass%.” because the phrasing is unclear. The specification appears to suggest the above phrasing is intended to indicate the percent mass quantity of a corresponding component, and thus “… 100mass% of…” is repetitive and may be confusing. ([0033]). Therefore, for purposes of examination, the claim or phrase will be interpreted as: “…contained in
Claim 6 is indefinite because it is drawn to a method which merely recites that the product may be made from “leaf tobacco, leaf midrib, and stalk” without any active, positive steps delineating how the product is actually manufactured. See MPEP 2173.05(q).
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.
Claims 1-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sciboz (US 20180310608 A1).
Regarding Claim 1, Sciboz discloses a tobacco sheet for a heat-not-burn flavor inhaler ([0001]), comprising a fiber material (The sheet of homogenized tobacco comprises tobacco material which comprises tobacco fibers and may further contain additional fiber in the form of reinforcement fiber. [0050]-[0057]).
Regarding Claim 2, Sciboz discloses a tobacco sheet wherein a percentage of the fiber material contained in 100mass% of the tobacco sheet ranges from 5mass% to 50mass% (The sheet of homogenized tobacco may comprise 1wt% to 15wt% of reinforcement fibers. [0050]).
Regarding Claim 3, Sciboz discloses a tobacco sheet wherein the fiber material is at least one selected from the group consisting of fiber pulp, fiber tobacco material, and fiber synthetic cellulose (The reinforcement fibers may comprise cellulose fibers from woods or tobacco fibers which may be refined and pulped. [0052]).
Regarding Claim 4, Sciboz discloses a tobacco sheet wherein the fiber material is a fiber pulp (The reinforcement fibers may comprise pulped fibers. [0052]).
Regarding Claim 5, Sciboz discloses a tobacco sheet further comprising a tobacco raw material (The sheet of homogenized tobacco comprises a tobacco material component. [0041], [0050]).
Regarding Claim 6, Sciboz discloses a manufacturing method for the tobacco sheet for a heat-not-burn flavor inhaler according to claim 5 ([0014]), wherein the tobacco raw material is tobacco powder of at least one type selected from the group consisting of leaf tobacco, leaf midrib, and stalk (The tobacco material component is formed from the powder of one or both of tobacco leaf lamina and tobacco leaf stems. [0014]).
Regarding Claim 7, Sciboz discloses a tobacco sheet wherein a percentage of the tobacco raw material contained in 100mass% of the tobacco sheet ranges from 30mass% to 91mass% (The sheet of homogenized tobacco comprises 60wt% to 80wt% of the tobacco material component. [0041], [0060]).
Regarding Claim 8, Sciboz discloses a tobacco sheet further comprising a forming agent (The homogenized tobacco may further comprise a binder to help during the formation of the homogenized tobacco material during the slurry casting process. [0003], [0047]).
Regarding Claim 9, Sciboz discloses a tobacco sheet wherein the forming agent is at least one selected from the group consisting of polysaccharide, protein, and synthetic polymer (The binder may comprise compounds such as: natural pectins, guar gums, celluloses, and starches, which are polysaccharides. [0048]).
Regarding Claim 10, Sciboz discloses a tobacco sheet wherein a percentage of the forming agent contained in 100mass% of the tobacco sheet ranges from 0.1mass% to 15mass% (The sheet of homogenized tobacco may comprise 1wt% to 5wt% of the binder. [0047]).
Regarding Claim 11, Sciboz discloses a tobacco sheet further comprising an aerosol generator (The sheet of homogenized tobacco may comprise an aerosol-former. [0042]-[0045]).
Regarding Claim 12, Sciboz discloses a tobacco sheet wherein the aerosol generator is at least one selected from the group consisting of glycerin, propylene glycol, and 1,3-butanediol (The aerosol former may comprise of compounds such as: glycerin, propylene glycol, or 1,3-butanediol. [0045]).
Regarding Claim 13, Sciboz discloses a tobacco sheet wherein a percentage of the aerosol generator contained in 100mass% of the tobacco sheet ranges from 5mass% to 50mass% (The sheet of homogenized tobacco may comprise 5wt% to 30wt% of the aerosol-former content. [0045]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Rejection 1
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of copending Application No. 17/529884. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a tobacco sheet comprising fiber. The claims differ in that conflicting Claim 1 further discloses thickness and tensile strength of the sheet. However, Claim 1 of copending Application No. 17/529884 discloses the element(s) of rejected Claim 1. Therefore, all the elements of rejected Claim 1 are present and obvious over the conflicting claims.
Rejection 2
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 6, and 7 of copending Application No. 19/039098. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a tobacco sheet comprising fiber. The claims differ in that rejected Claim 1 recites a tobacco sheet comprising fiber whereas conflicting Claim 1 disclosed a reconstituted tobacco. However, Claim 6 of copending Application No. 19/039098 discloses that the reconstituted tobacco may comprise a fiber material and Claim 7 of copending Application No. 19/039098 discloses that the reconstituted tobacco is a reconstituted tobacco in sheet form. Therefore, all the elements of rejected Claim 1 are present and obvious over the conflicting claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 9:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A. BUCKMAN/ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
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