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
Claims 8-10 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventio, there being no allowable generic or linking claim.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.
Response to Arguments
Applicant’s arguments filed 08/05/2026 have been fully considered. The rejection of claims 1 and 3–7 over Deforel in view of Oglesby are moot in view of the amendment to claim 1 and the new grounds of rejection set forth herein. Claim 1 has been amended to recite that the fructan is included in an amount of 0.1% to 5% by mass based on the tobacco powder, and the previous rejection relying on Oglesby has been superseded.
The present rejection instead relies on Deforel in view of Ozaki, which teaches fructooligosaccharide as a suitable saccharide for a pullulan/saccharide binder and teaches incorporating the binder into powdered tobacco in proportions that provide approximately 1.2% to 2.8% by mass fructooligosaccharide based on the powdered tobacco, within the presently claimed range.
Accordingly, Applicant’s arguments directed to the teachings of Oglesby and the rationale for combining Oglesby with Deforel do not address the present rejection and are therefore moot.
Likewise, to the extent Applicant’s arguments regarding dependent claims 3–7 rely on the alleged deficiencies of the previous Deforel/Oglesby combination as applied to claim 1, those arguments are also moot because the underlying rejection of claim 1 has been replaced by the new rejection set forth herein.
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, 3 and 12—14 are rejected under 35 U.S.C. § 103 as being unpatentable over Deforel et al. (WO 2020/074535) in view of Ozaki et al. (EP 0 559 450 A2) cited in the IDS.
Regarding claim 1, Deforel teaches a tobacco sheet for a non-combustion heating-type flavor inhaler (an aerosol-generating substrate for a heated aerosol-generating article comprising homogenised plant material formed as a sheet; p. 3, ll. 8–13); comprising a tobacco powder (particulate plant material comprising tobacco particles used to form the homogenised sheet; p. 2, ll. 15–23); having a 90% cumulative particle size D90 (a particle-size distribution expressed as D90, defined as the diameter below which 90% of the particles fall; p. 5, ll. 5–9); and wherein the tobacco powder has a D90 of 200 μm or more (Deforel teaches a D90 of less than or equal to 300 μm, thereby overlapping the claimed range over 200–300 μm; p. 5, ll. 9–11).
Regarding in a volume-based particle size distribution measured by dry laser diffractometry, the recited measurement method defines how the particle size is determined and does not impart a further structural distinction to the claimed tobacco sheet.
Deforel does not expressly teach a fructan, wherein the fructan is included in an amount of 0.1% to 5% by mass, based on the tobacco powder.
However, Ozaki teaches a binder comprising pullulan and a saccharide and expressly identifies fructooligosaccharide as a suitable oligosaccharide for the binder (p. 3, ll. 4–10).
Ozaki further teaches forming a tobacco product from 50 parts by weight of powdered tobacco material mixed with 200 parts by weight of a 2% aqueous solution of a powdery binder (p. 10, ll. 29–39).
Ozaki teaches a pullulan-to-saccharide dry-weight ratio of 85:15 to 65:35 (p. 3, ll. 13–18). Thus, when fructooligosaccharide is selected as the saccharide, the disclosed proportions provide approximately 1.2% to 2.8% by mass fructooligosaccharide based on the powdered tobacco, which falls within the claimed range of 0.1% to 5%.
Deforel teaches incorporating polysaccharide binders and additives into its homogenised tobacco sheet to provide cohesion and structural integrity (p. 8, ll. 14–24), while Ozaki teaches that the saccharide-containing pullulan binder provides satisfactory binding capacity and adhesiveness (p. 3, ll. 34–42).
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 fructooligosaccharide-containing binder of Ozaki in order to provide satisfactory binding capacity and adhesiveness. Such modification would have amounted to the simple substitution of one known saccharide for another known saccharide expressly taught by Ozaki for use in the same binder system, yielding predictable results (MPEP § 2143).
Regarding claim 3, modified Deforel in view of Ozaki teaches the tobacco sheet of claim 1 as set forth above. Ozaki further teaches wherein the fructan is selected from the group consisting of inulin-type fructans, levan-type fructans, branched fructans, fructo-oligosaccharides, and mixtures thereof, specifically fructooligosaccharide (p. 3, ll. 4–10).
Regarding claim 12, modified Deforel in view of Ozaki teaches the tobacco sheet of claim 1 as set forth above, wherein the tobacco powder has a D90 of 300 μm or more (Deforel teaches a D90 of less than or equal to 300 μm, thereby overlapping the claimed range at 300 μm; p. 5, ll. 9–11). It has been held that overlapping ranges are prima facie evidence of obviousness (MPEP § 2144.05). Therefore, it would have been obvious to select a D90 of 300 μm.
Regarding claim 13, modified Deforel in view of Ozaki teaches the tobacco sheet of claim 1 as set forth above, wherein the tobacco powder has a D90 of 200 μm or more and 2,000 μm or less (Deforel teaches a D90 of less than or equal to 300 μm, thereby overlapping the claimed range over 200–300 μm; Deforel, p. 5, ll. 9–11). It has been held that overlapping ranges are prima facie evidence of obviousness (MPEP § 2144.05). Therefore, it would have been obvious to select a D90 within the overlapping range of 200–300 μm.
Regarding claim 14, modified Deforel in view of Ozaki teaches the tobacco sheet of claim 1 as set forth above. Deforel explains that a D-value represents the particle diameter below which the stated percentage of particles fall, and specifically teaches particulate tobacco having D90 values up to 300 μm (Deforel, p. 5, ll. 1–20). Thus, for any such particle-size distribution, the D50 must be less than or equal to the D90 because the diameter below which 50% of the particles fall cannot exceed the diameter below which 90% of the particles fall.
Accordingly, where Deforel teaches a D90 of 300 μm, the corresponding D50 must fall somewhere at or below 300 μm. This mathematically required D50 range overlaps the claimed D50 range of 40–1,000 μm over 40–300 μm.
It has been held that overlapping ranges are prima facie evidence of obviousness (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 D50 within the overlapping range.
Claims 4–5 are rejected under 35 U.S.C. § 103 as being unpatentable over Deforel et al. (WO 2020/074535) in view of Ozaki et al. (EP 0 559 450 A2) cited in the IDS, and further in view of Stevens et al. (US 3,729,009)
Regarding claim 4, modified Deforel in view of Ozaki teaches the tobacco sheet of claim 1 as set forth above.
Modified Deforel does not expressly teach further comprising a saturated fatty acid-based additive, wherein the additive is selected from the group consisting of a saturated fatty acid having a molar mass of 200 to 350 g/mol, an ester of the saturated fatty acid, and 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 introducing a fatty acid into a sheeted tobacco product prior to drying (col. 3, ll. 5–10), and specifically teaches palmitic acid as a preferred saturated fatty acid (col. 3, l. 65–col. 4, l. 1). Palmitic acid has a molar mass within the claimed range of 200–350 g/mol.
Stevens further teaches introducing the fatty acid in an amount of 1.0% to 4.0% by weight of the sheet (col. 3, ll. 19–31), which overlaps the claimed range of 0.01% to 3% over 1.0–3.0%. It has been held that overlapping ranges are prima facie evidence of obviousness (MPEP § 2144.05).
Deforel teaches incorporating additives into homogenised tobacco sheets (p. 8, ll. 13–18), while Stevens teaches incorporating saturated fatty acids into sheeted tobacco material to improve smoking characteristics.
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 taught by Stevens in an amount within the overlapping range in order to obtain the smoking characteristics taught by Stevens. Such modification would have been a predictable use of a known additive according to its established function (MPEP § 2143).
Regarding claim 5, modified Deforel in view of Ozaki and Stevens teaches the tobacco sheet of claim 4 as set forth above. Stevens further teaches wherein each of the saturated fatty acid and the ester of the saturated fatty acid is a single compound, by teaching commercially “pure” palmitic acid as the saturated fatty acid additive (col. 4, ll. 1–4).
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Deforel et al. (WO 2020/074535) in view of Ozaki et al. (EP 0 559 450 A2), and further in view of Asikainen et al. (US 2015/0225901 A1)
Regarding claim 6, modified Deforel in view of Ozaki teaches a tobacco-containing segment, comprising, as fillers, the tobacco sheet according to claim 1 (an aerosol-generating substrate comprising homogenised tobacco material formed as a sheet for use in a heated aerosol-generating article; p. 3, ll. 8–13).
Modified Deforel does not expressly teach paper, wherein a total amount of lignin and hemicellulose contained in the paper is 0.1% to 10% by mass.
However, Asikainen teaches a fibrous paper material having a total lignin and hemicellulose content within the claimed range. In particular, Asikainen’s treated fine-paper material contains about 0.2 wt.% lignin, 4.8 wt.% xylan, and 4.3 wt.% glucomannan, corresponding to a combined lignin and hemicellulose content of about 9.3 wt.% (¶ [0080], Table 7).
Asikainen further teaches that the treated fibrous material is suitable for producing regenerated cellulose products and provides reduced lignin and hemicellulose content with improved purity and material properties (¶¶ [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 modify the tobacco-containing segment of modified Deforel to include the paper material taught by Asikainen in order to provide a fibrous paper component having controlled lignin and hemicellulose content and improved material properties. Such modification would have been a predictable use of a known fibrous material according to its established properties (MPEP § 2143).
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Deforel et al. (WO 2020/074535) in view of Ozaki et al. (EP 0 559 450 A2) cited in the IDS, and further in view of Casey, III et al. (US 5,396,911).
Regarding claim 7, modified Deforel in view of Ozaki teaches a tobacco-containing segment comprising, as fillers, the tobacco sheet according to claim 1 (an aerosol-generating substrate comprising homogenised plant material formed as a sheet and usable as a tobacco-containing segment; p. 3, ll. 12–20).
Modified Deforel does not expressly teach paper containing an aerosol-generating agent.
However, Casey teaches a sheet or web substrate having a film or coating of aerosol-forming material applied thereto (col. 3, ll. 39–48), wherein the sheet material may comprise paper including wood pulp or other filler materials (col. 3, ll. 55–60).
Casey further teaches tobacco paper coated by spraying or printing with a composition comprising glycerin, an aerosol-forming agent (col. 4, ll. 14–28), and teaches forming such treated sheet material into filler rods for smoking articles (col. 4, ll. 29–36).
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 modified Deforel to include the paper containing an aerosol-generating agent taught by Casey in order to provide a known paper filler capable of generating aerosol. Such modification would have been a predictable use of prior art elements according to their established functions (MPEP § 2143).
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Deforel et al. (WO 2020/074535) in view of Ozaki et al. (EP 0 559 450 A2) cited in the IDS, and further in view of Zhang (CN104138027A).
Regarding claim 11, modified Deforel in view of Ozaki teaches the tobacco sheet of claim 1 as set forth above.
Modified Deforel does not expressly teach wherein the fructan is selected from the group consisting of levan-type fructans, branched fructans, and mixtures thereof.
However, Zhang teaches levan, expressly identifying levan as a fructan and as a polymer of β-D-fructofuranose containing predominantly β-(2,6) glycosidic bonds (¶¶ [0006], [0011]). Zhang further teaches using the levan-containing composition in the preparation of tobacco sheets and expressly teaches that the composition is applicable to reconstituted tobacco (¶¶ [0014], [0016]). Zhang teaches that levan provides moisture retention, low viscosity, and suitability for tobacco aroma and aftertaste (¶ [0016]).
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 fructan-containing tobacco sheet of modified Deforel to employ levan as the fructan, as taught by Zhang, in order to provide the known moisture-retention properties and tobacco compatibility taught by Zhang. Such modification would have been a predictable use of a known fructan in tobacco material according to its established function (MPEP § 2143).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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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.
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/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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