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 of group I claims 1 – 11 in the reply filed on 8/10/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 12 – 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claim(s) 1 – 2 and 6 – 11 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2021165372 A1 (Rigoulay, cited in the IDS dated 12/14/2023).
Regarding claim 1, Rigoulay teaches a high-density reconstituted plant sheet obtained by a papermaking process (paragraph 1), where the plant sheet is contained by an external envelope which is made of cigarette paper, cigarette rolling paper, paper, plant fiber or metal such as aluminum, but in particular cigarette paper (paragraph 134). The envelope comprises an internal volume wherein the reconstituted plant sheet is received (paragraph 132). Rigoulay further teaches that the reconstituted plant sheet comprises: two fibrous supports, each fibrous support comprising refined plant fibers and a plant extract, a plant extract composition between the two fibrous supports, and an aerosol-generating agent (paragraph 8).
Regarding claim 2, Rigoulay teaches a consumable as described by claim 1. Rigoulay further teaches that the ratio between the mass of the reconstituted plant sheet of the invention and the internal volume of the consumable may be between 300mg/mL and 500mg/mL (paragraph 138). Considering that 1mL = 1cm3 and 300mg and 500mg = 0.3g and 0.5g respectively, a range of 300mg/mL – 500mg/mL is within the claimed range of 0.3g/cm3 – 1.5g/cm3. If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I)
Regarding claim 6, Rigoulay teaches a consumable as described by claim 1. Rigoulay further teaches that the external envelope can be made of cigarette paper, of cigarette rolling paper, of paper, of plant fiber, of metal such as aluminum, but in particular cigarette paper (paragraph 134).
Regarding claim 7, Rigoulay teaches a consumable as described by claim 1. Rigoulay further teaches that the total content by weight of solids of the aerosol-generating agent included in the reconstituted plant sheet of the present invention is between 15% and 21.5% which is within the claimed range of 10% - 30% (paragraph 43). If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I)
Regarding claim 8, Rigoulay teaches a consumable as described by claim 1. Rigoulay further teaches that the concentration of solids of plant extract in the plant extract composition is between 50% and 70%, which is within the claimed range of 30% - 70% (paragraph 36). If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I)
Regarding claim 9, Rigoulay teaches a consumable as described by claim 1. Rigoulay further teaches that the aerosol-generating agent is a polyol, a non-polyol, or a mixture thereof. An aerosol-generating agent that is a polyol may be sorbitol, glycerol, propylene glycol, erythritol, propanediol or mixtures thereof. An aerosol-generating agent that is a non-polyol may be lactic acid, benzyl benzoate, glyceryl diacetate, glyceryl triacetate, triethyl citrate, isopropyl myristate or mixtures thereof (paragraph 45).
Regarding claims 10, Rigoulay teaches a consumable as described by claim 1. Rigoulay further teaches that the plant of the reconstituted plant sheet is the tobacco plant (paragraph 81)
Regarding claim 11, Rigoulay teaches a consumable as described by claim 1. Rigoulay further teaches that the reconstituted plant sheet may have a density between 0.71g/cm3 and 0.9g/cm3. This range is within the claimed range of lower than 0.6g/cm3 – 1.5g/cm3. If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I)
Regarding claim 15, Rigoulay teaches a consumable as described by claim 1. Rigoulay further teaches that when the heating device is used, air is sucked into the heating device via the air inlet by the user; the air sucked in then passes through the heated portion so as to obtain heated air; on contact with the reconstituted plant sheet of the invention comprising the aerosol-generating agent, held in the lodging, an aerosol is formed by the heated air and is then inhaled by the user. If the plant is a medicinal plant, then the aerosol formed has therapeutic properties (paragraph 144). The medicinal plants are those indicated in the document list A of traditionally used medicinal plants or plants known to comprise compounds which have therapeutic properties. Typically, the medicinal plants listed are ginkgo, ginseng, sour cherry, peppermint, willow and red vine. Typically, eucalyptus is among the medicinal plants known to comprise compounds which have therapeutic properties (paragraphs 72 – 73).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021165372 A1 (Rigoulay, cited in the IDS dated 12/14/2023) as applied to claim 1 above, and further in view of US 9180988 B2 (Rinehart, cited in the IDS dated 12/14/2023).
Regarding claim 3, Rigoulay teaches a consumable as described by claim 1. Rigoulay does not teach that the pouch has two sealed ends and a third seal connecting the two sealed ends. Rinehart teaches an apparatus for forming and filling a tobacco pouch. The longitudinal edge portions of the tobacco pouch (24, 26) are brought into an overlapping, web-to-web relation and sealed to form the longitudinal seam (12), which is preferably about 3mm wide in the exemplary form. A packet of pouched tobacco (10) is achieved by introduction of tobacco (20) into the tubular form (28), and also sealing and cutting the tubular formation (28) at locations A and B (paragraph 19; figure 5). Figure 5 shows the longitudinal seam (12) connecting the two sealed ends (A & B).
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 consumable of Rigoulay with the three seals of Rinehart, with reasonable expectation of success, because the seals ensure that the reconstituted plant sheet does not escape the pouch during loading or use of the vape or electronic cigarette.
Regarding claim 4, Rigoulay modified by Rinehart teaches a consumable as described by claim 3. Rinehart further teaches a heated knurled disc (125) that seals the overlapping longitudinal edge portions (24, 26) of the web (22) by pressing and heating the seam as the web (22) is drawn along the apparatus (110) (paragraph 20; figures 3 & 5).
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 consumable of Rigoulay with a knurled seal of Rinehart, with reasonable expectation of success, because the knurled seal ensures the reconstituted plant sheets remain in their pouch. Additionally, knurled seals do not degrade over time due to temperature or humidity and do not require any extra components such as adhesives.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2021165372 A1 (Rigoulay) and US 9180988 B2 (Rinehart) as applied to claim 4, and further in view of US 20040154630 A1 (Tabuchi).
Regarding claim 5, Rigoulay modified by Rinehart teaches a consumable as described by claim 4. Rigoulay modified by Rinehart does not teach a glued seal wherein the glue is selected from a starch-based glue, an animal glue, a latex glue, acrylics, a dispersion of polyurethane, and ethylene vinyl acetate-based glue, a polyvinyl acetate-based glue, a polyvinyl alcohol-based glue and mixtures thereof. Tabuchi teaches a double wrapped cigarette in which the opposite side edges of the outer wrapper (8) are overlapped and joined with seam glue, while the opposite side edges of the inner wrapper (6) are not overlapped (paragraph 29; figure 2). It is favorable that the glue is polyvinyl acetate glue (paragraph 11).
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 consumable knurled seal of Rigoulay modified by Rinehart, with the glued seal of Tabuchi, with reasonable expectation of success, because Tabuchi indicates that side stream smoke can be weakened by adding a perfume material to a cigarette. Specifically perfume material can be added to the filler of a cigarette or seam glue applied on a wrapper (paragraph 4). As a carrier, polyvinyl acetate glue is better in the capability of retaining the perfume material than ethylene vinyl acetate and carboxy methyl cellulose glue, and can emit the perfume into side stream smoke better (paragraph 49).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1 – 3, 5 – 10 and 15 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 – 2, 5, 7 – 12 and 15 of copending Application No. 18/540,231. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 1 of the instant application recites the same claim limitations of claim 1 of application 18/540,231.
Claim 2 of the instant application recites the same claim limitations of claim 2 of application 18/540,231.
Claim 3 of the instant application recites a pouch with two sealed ends and a third seal connecting the two sealed ends. Claim 5 of 18/540,231 teaches one sheet of paper folded on one side and sealed on the remaining sides. While the two claims are not recited identically, they both require one sheet of paper folded on itself with three sealed sides.
Claim 5 of the instant application recites the same claim limitations of claim 7 of application 18/540,231.
Claim 6 of the instant application recites the same claim limitations of claim 8 of application 18/540,231.
Claim 7 of the instant application recites the same claim limitations of claim 9 of application 18/540,231.
Claim 8 of the instant application recites the same claim limitations of claim 10 of application 18/540,231.
Claim 9 of the instant application recites the same claim limitations of claim 11 of application 18/540,231.
Claim 10 of the instant application recites the same claim limitations of claim 12 of application 18/540,231.
Claim 15 of the instant application recites the same claim limitations of claim 15 of application 18/540,231.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brendon Juengst whose telephone number is (571)272-8750. The examiner can normally be reached Mon-Fri 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENDON THOMAS JUENGST/Examiner, Art Unit 1749 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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