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 without traverse of Claims 1 and 3-7 in the reply filed on 03/11/2026 is acknowledged.
Claims 8-10 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventio, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/11/2026.
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.
Claim(s) 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Deforel et al. (WO2020/074535), and further in view of Oglesby (US 2007/0246055).
Regarding claim 1, Deforel teaches:
a tobacco sheet for a non-combustion heating-type flavor inhalerDeforel teaches an aerosol-generating substrate for a heated aerosol-generating article comprising homogenised plant material formed as a sheet (p. 3, lines 8–13; p. 9, line 31).
comprising a tobacco powderDeforel teaches particulate plant material comprising tobacco particles used to form the homogenised sheet (p. 2, lines 15–23; p. 23, lines 20–23).
having a 90% cumulative particle size (D90)Deforel teaches a particle size distribution expressed as D90, defined as the diameter below which 90% of the particles fall (p. 5, lines 5–9).
in a volume-based particle size distribution measured by dry laser diffractometryThe recited measurement method defines how the particle size is determined and does not impose a structural limitation on the claimed tobacco sheet.
wherein the tobacco powder has a D90 of 200 µm or moreDeforel does not expressly teach that the particulate plant material has a D90 of 200 µm or more.
Deforel teaches that the particulate plant material may have a D90 value of less than or equal to 300 microns (p. 5, lines 9–11), which overlaps with that of the claimed invention. It has been held that overlapping ranges are prima facie evidence of obviousness (see MPEP § 2144.05). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a D90 value of 200 µm or more within the range taught by Deforel.
Deforel does not expressly teach: a fructan.
However, Oglesby teaches a smoking article wrapping material having an additive material disposed on at least one surface thereof, wherein the additive material comprises an inulin-type material and a polymeric film-forming agent (¶¶ [0007]–[0012]) .
Oglesby further teaches that inulin-type materials include inulins and modified inulins (¶ [0009]) , and that inulin is a fructo-oligosaccharide (¶ [0034]) .
Thus, Oglesby teaches a fructan (inulin-type material) incorporated into a sheet/paper material used in a smoking article.
Deforel teaches forming a homogenised tobacco sheet from particulate material, which includes binders and additives such as polysaccharides to provide cohesion and structural integrity (p. 8, lines 14–24); and
Oglesby teaches that inulin-type materials are polymeric, film-forming materials incorporated into sheet/paper structures of smoking articles (¶¶ [0007]–[0012]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tobacco sheet of Deforel to include a fructan (inulin-type material) as taught by Oglesby.
Accordingly, one of ordinary skill in the art would have been motivated to include the inulin-type material of Oglesby in the tobacco sheet of Deforel to provide a known polysaccharide additive capable of contributing to sheet formation and structural properties of the homogenised material, resulting in a predictable use of a known material for its known purpose (See MPEP § 2143I).
Regarding claim 3, Deforel teaches the tobacco sheet for a non-combustion heating-type flavor inhaler as set forth in claim 1, including a homogenised plant material formed as one or more sheets and comprising particulate tobacco material (p. 3, lines 8–13; p. 5, lines 1–23).
Deforel does not expressly teach wherein the fructan is selected from the group consisting of inulin-type fructans, levan-type fructans, branched fructans, fructo-oligosaccharides, and mixtures thereof.
However, Oglesby teaches an additive material formulation comprising an inulin-type material (¶ [0012]). Oglesby further teaches that exemplary low viscosity polymeric materials include inulins and modified inulins, and that inulin is a fructo-oligosaccharide (¶ [0034]). Accordingly, Oglesby teaches the claimed fructan selected from the group, namely an inulin-type fructan/fructo-oligosaccharide.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tobacco sheet of Deforel to include the inulin-type fructan/fructo-oligosaccharide taught by Oglesby for the reasons set forth with respect to claim 1, namely to use a known polymeric additive in a sheet material associated with smoking articles to provide known formulation and sheet-forming properties (See MPEP § 2143I).
Claim(s) 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Deforel et al. (WO2020/074535), and further in view of Oglesby (US 2007/0246055) as applied to claim 1 above, and further in view of Stevens et al. (US 3,729,009).
Regarding claim 4, Deforel teaches:
a tobacco sheet for an aerosol-generating article comprising homogenised plant material formed into a sheet (p. 3, lines 12–20); and
the homogenised plant material may comprise additives including lipids, humectants, plasticisers, flavourants, and fillers (p. 8, lines 13–18); and
the sheet is formed from a mixture including particulate plant material and additional components incorporated into the sheet structure (p. 20, lines 1–5).
Deforel in view of Oglesby hereinafter modified Deforel does not expressly teach:
a saturated fatty acid-based additive selected from a saturated fatty acid having a molar mass of 200 to 350 g/mol, an ester of the saturated fatty acid, or a combination thereof; and
wherein the content of the additive is 0.01% to 3% by mass based on dry matter mass of the sheet.
However, Stevens teaches:
an artificial fibrous sheeted tobacco product usable in sheet form (col. 3, lines 1–4);
introducing a fatty acid into the web or sheet prior to drying (col. 3, lines 5–10);
where stems are made into a sheeted product, the fatty acid is introduced in an amount of 1.0% to 4.0% of the sheet by weight (col. 3, lines 19–31); and
palmitic acid as a preferred saturated fatty acid (col. 3, line 65–col. 4, line 1).
A saturated fatty acid such as palmitic acid (C16) has a molar mass within the claimed range of 200–350 g/mol.
The claimed additive content of 0.01% to 3% overlaps with the range taught by Stevens (1.0% to 4.0%). It has been held that overlapping ranges are prima facie evidence of obviousness (MPEP § 2144.05). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select an amount of saturated fatty acid within the overlapping range.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tobacco sheet of modified Deforel to include the saturated fatty acid additive as taught by Stevens because modified Deforel teaches incorporation of additives into a homogenised tobacco sheet, and Stevens teaches incorporating saturated fatty acids into sheeted tobacco materials to improve smoking characteristics. Thus, incorporating the saturated fatty acid of Stevens into the tobacco sheet of Deforel would have been a predictable use of prior art elements according to their established functions (See MPEP § 2143I).
Regarding claim 5, modified Deforel in view of Stevens teaches the tobacco sheet of claim 4 as set forth above.
Claim 5 further recites:
wherein each of the saturated fatty acid and the ester of the saturated fatty acid is a single compound.
Stevens teaches: commercially “pure” palmitic acid (col. 4, lines 1–4), which corresponds to a single saturated fatty acid compound.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a single saturated fatty acid compound, as taught by Stevens, when incorporating the fatty acid additive into the tobacco sheet of Deforel because Stevens teaches that individual fatty acids (e.g., palmitic acid) are suitable additives for improving smoking characteristics. Selecting a single known compound from among known fatty acids represents a predictable selection of a known material for its intended purpose (See MPEP § 2143I).
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Deforel et al. (WO2020/074535), and further in view of Oglesby (US 2007/0246055) as applied to claim 1 above, and further in view of Asikainen et al. (US 2015/0225901).
Regarding claim 6, modified Deforel does not expressly teach:
wherein a total amount of lignin and hemicellulose contained in the paper is 0.1% to 10% by mass.
However, Asikainen teaches:
a fibrous material derived from recycled paper or cardboard products (¶ [0031])
wherein the fibrous material comprises cellulose, lignin, and hemicellulose (¶ [0027])
wherein the fibrous material has a lignin content of 0.1% to 7% (¶ [0027])
and wherein the fibres exhibit a hemicellulose content of 0.1% to 10% by weight (¶ [0057])
and further exemplifies lignin and hemicellulose contents within the claimed range (¶ [0080])
Thus, Asikainen teaches:
paper/fibrous material having a combined lignin and hemicellulose content within 0.1% to 10% by mass.
Deforel employs fibrous sheet and paper materials in an aerosol-generating environment, where the chemical composition of such materials affects aerosol formation and thermal behavior. Asikainen teaches fibrous materials derived from recycled paper/cardboard having controlled and reduced lignin and hemicellulose content, which improves purity and material performance (¶¶ [0048]–[0050]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the paper material of Asikainen as the paper filler in the tobacco-containing segment of Deforel represents the predictable use of a known material property to improve performance of the aerosol-generating substrate. One would have been motivated to select such a known fibrous material having controlled composition for use as the paper component of Deforel to provide a material with improved and predictable properties. The modification represents the predictable selection of a known material for its known characteristics(See MPEP § 2143I).
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Deforel et al. (WO2020/074535), and further in view of Oglesby (US 2007/0246055) as applied to claim 1 above, and further in view of Casey, III et al. (US 5,396,911).
Regarding claim 7, Deforel teaches:
a tobacco-containing segment for an aerosol-generating article (p. 3, lines 12–20; p. 5, lines 1–10)
comprising, as a filler, a homogenised plant material formed into a sheet (p. 3, lines 12–20)
wherein the sheet may include additives such as humectants (p. 8, lines 13–18)
Deforel in view of Oglesby hereinafter modified Deforel does not expressly teach:
paper containing an aerosol-generating agent, as a separate filler from the sheet.
However, Casey, III teaches:
a sheet or web substrate base with a film or coating of an aerosol-forming material applied thereto (Casey, col. 3, lines 39–48);
wherein the sheet material may be paper material comprising tobacco and including wood pulp or other filler materials (Casey, col. 3, lines 55–60);
wherein the sheet is a tobacco sheet or tobacco paper coated by spraying or printing with a composition comprising glycerin (an aerosol-forming agent) and binder (Casey, col. 4, lines 14–28);
and wherein such sheet bearing the aerosol-forming agent is used in smoking articles and formed into filler rods (Casey, col. 4, lines 29–36);
and wherein aerosol-forming materials include glycerin and propylene glycol (Casey, col. 12, lines 5–17).
Thus, Casey teaches paper containing an aerosol-generating agent.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tobacco-containing segment of Deforel to include a paper filler containing an aerosol-generating agent as taught by Casey, because Deforel teaches incorporation of additives (including humectants) into aerosol-generating materials, and Casey teaches that aerosol-generating agents such as glycerin may be incorporated into sheet/paper-like materials used in smoking articles to enhance aerosol generation. Thus, incorporating a paper component containing an aerosol-generating agent into the segment of Deforel would have been a predictable use of prior art elements according to their established functions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
Prosecution Insights