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 1-13 and 15 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Election/Restriction
Applicant’s election of Group I (claim 1-12 and 15) in the reply filed on 08/31/2026 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Claim 13 is withdrawn as being directed to a non-elected invention.
Claim Objections
Claims 9-10 and 15 are objected to because of the following informalities:
Claims 9-10 should read: “is [[of]] from”
Claim 15 should read: “A [[C]]consumable as defined in claim 1”
Appropriate correction is required.
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 9-10 and 15 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 9-10 are indefinite for reciting “the total content by weights of solids” because it is unclear what the total content weight percent is of. Whether it is based on the whole consumable or on the reconstituted plant sheet only. The ranges claimed are open ended and ambiguous and thus indefinite. For purposes of examination the total content by weights of solids is being interpreted as the total weight of solids included in the reconstituted plant sheet.
Claim 15 recites the limitation "the plant" in line 2. There is insufficient antecedent basis for this limitation in the claim. The plant is indefinite because there is no singular “plant” defined in claim 1 and instead there is “reconstituted plant sheet” and “plant extract”, therefore for purposes of examination, “the plant” is being interpreted as the reconstituted plant sheet.
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) 1-2, 8-11, and 15 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Rigoulay et al. (WO-2021165372-A1, as cited in the IDS dated 12/14/2023).
In regards to claim 1, Rigoulay directed to a consumable for a device for heating tobacco without burning ([0017]-[0018]), discloses the consumable comprising:
A container which can comprise an external envelope (i.e., pouch), defining an internal volume ([0138]) and made from a paper ([0140]),
A reconstituted plant sheet ([0013]) contained within an inner volume of the pouch ([0138]), wherein the reconstituted plant sheet comprises:
One or more fibrous supports, each comprising plant fibers ([0014];[0040]-[0041]),
A plant extract ([0014];[0052]), and
An aerosol-generating agent ([0015]).
In regards to claim 2, Rigoulay discloses the ratio between the mass of reconstituted plant sheet material and the internal volume of the consumable may be between 375 and 475 mg/ml, which is 0.375 and 0.475 g/cm³ ([0144]). Rigoulay teaches a ratio within the claimed range of 0.30 to 1.5 g/cm³, and therefore Rigoulay anticipates the claimed range.
In regards to claim 8, Rigoulay discloses the paper of the pouch is preferably a cigarette paper ([0140]).
In regards to claim 9, Rigoulay discloses the total content by weight of solids of the aerosol-generating agent in the reconstituted plant sheet is from 10 to 30% ([0053]).
In regards to claim 10, Rigoulay discloses the total content by weight of solids of the plant extract included in the reconstituted plant sheet is between 30% and 60% ([0063]), which is within the claimed range of 30 to 70%, and therefore anticipates the claimed range.
In regards to claim 11, Rigoulay discloses the aerosol generating argent “ may be a polyol, a non-polyol or a mixture thereof. Typically, an aerosol-generating agent that is a polyol may be sorbitol, glycerol, propylene glycol, triethylene glycol, erythritol, propanediol or mixtures thereof. Typically, 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.” ([0055]).
In regards to claim 12, Rigoulay discloses the reconstituted plant sheet can be tobacco ([0074]-[0076]).
In regards to claim 15, Rigoulay discloses the consumable is used in a heating device and the aerosol released has therapeutic properties (i.e., therapeutic purposes) ([0058]-[0059];[0075]).
Rigoulay further discloses the reconstituted plant sheet is chosen from medicinal plants such as tobacco ([0068]-[0071])
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) 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Rigoulay et al. (WO-2021165372-A1, as cited in the IDS dated 12/14/2023) as applied to claim 1 above, and further in view of Kaufman et al. (US-20170119048-A1).
In regards to claim 3, Rigoulay discloses the pouch creates a cavity and wraps the reconstituted plant sheet ([0138]) and can be in cylindrical form ([0139]) or can be a sachet ([0141]), but does not explicitly disclose the pouch comprising a first and a second layer of paper. However, it would be obvious to one of ordinary skill in the art that an envelope or a sachet would need to have a bottom end and a top end in order to hold the smoking material within it, which would form a first and a second paper layer in accordance with the Applicant’s Specification, and is therefore considered prima facie obvious.
Additionally, Kaufman, directed to an article for use with apparatus for heating smokable material, discloses a heat-not-burn consumable comprising a malleable container 10 (i.e., pouch) comprising a cavity 14 retaining a mass of smokable material 20 (abstract; [0057]).
Kaufman further discloses the pouch can be a sachet wherein the sachet (i.e., pouch) comprises a first wall 11 and a second wall 12 that together define the cavity, the first and second walls being separate components that have been attached to each other (i.e., first and second layers) ([0058]).
Kaufman further discloses that by having separate layers, the pouch is customizable such that both layers can be porous for permitting volatized material generated by heating the smokable material within the cavity to leave the cavity, or only one wall can be porous, or neither wall can be porous to prevent the smokable material from leaving the cavity until it used with a device ([0060]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Rigoulay by making the pouch comprise at least two layers, as taught by Kaufman, because one of ordinary skill in the art would look to a similar reference for a known type of pouch in the art of a similar consumable, especially when the original prior art is silent to how the pouch is formed, both are directed to consumables comprising pouched products, Kaufman teaches the addition of pouched layers allows the pouch to be customizable by applying the same or different properties to each layer ([0060]), and this merely involves applying a known technique of a pouch comprising two layers of a similar product to yield predictable results.
Modified Rigoulay does not explicitly disclose the two layers are paper, however since Rigoulay discloses the pouch is preferably made of a cigarette paper ([0140]), and is merely silent to how the pouch is formed, it would be obvious to one of ordinary skill in the art to select the layers as paper since it is taught that the two pouched layers ideally are cigarette paper.
In regards to claim 4, Modified Rigoulay discloses the pouch may have two separate components, walls 11 and 12, (i.e., first and second layers) which define the cavity and are attached together (i.e., two different sheets sealed on all sides) ([0058]). Rigoulay makes obvious the layers are paper as discussed above (Rigoulay [0140]).
In regards to claim 5, Modified Rigoulay discloses the pouch may have two portions (i.e., first and second layers) made of a single component which can be folded on one side and the other two layers may be attached to each other to define the cavity (i.e., folded on one side and sealed on all remaining sides) (Kaufman [0058]). Rigoulay makes obvious the layers are paper as discussed above (Rigoulay [0140]).
In regards to claim 6, Modified Rigoulay discloses the first and second layers may be attached by heat-sealing by use of an adhesive (i.e., glued seal) (Kaufman [0058]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Rigoulay et al. (WO-2021165372-A1, as cited in the IDS dated 12/14/2023) in view of Kaufman et al. (US-20170119048-A1)as applied to claim 6 above, and further in view of Stahl et al. (US-20210307375-A1).
In regards to claim 7, Modified Rigoulay discloses an adhesive for sealing the two paper layers (Kaufman [0058]), but is silent to the types of adhesives/glues used in sealing and therefore does not explicitly disclose the glue of the glued seal is selected from a starch-based glue, a dextrin-based glue, a casein- based glue, a cellulose-based glue, an animal glue, a latex glue, acrylics, a dispersion of polyurethane, an ethylene vinyl acetate-based glue, a polyvinyl acetate-based glue, a polyvinyl alcohol-based glue and mixtures thereof.
Stahl directed to a nicotine pouch composition, discloses a pouch material that can comprise paper ([0250];[0274]) and includes a cavity comprising a tobacco material ([0139]-[0141]).
Stahl further discloses the fibers of the pouch material may be used in combination with a binder such as an acrylic polymer or one or more copolymers of vinyl acetate (i.e., vinyl acetate-based glue, since ethylene vinyl acetate is a co-polymer of vinyl acetate and a known hot-melt adhesive or “glue”) and acrylic acid ester (i.e., acrylics) to provide heat-sealing of the pouch membrane ([0215]-[0216]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Rigoulay, by making the adhesive of Rigoulay a heat-sealable adhesive such as an acrylic or ethylene vinyl acetate, as taught by Stahl, because both are directed to pouched tobacco products using heat sealing, Stahl teaches it is known in the art to use acrylics in combination with heat-sealable pouches ([0215]-[0216]), and this merely involves applying a known technique of using a known type of adhesive of a similar product, especially when the prior art is merely silent to the types of adhesives used, to yield predictable results.
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.
Claim 1-2, 6-12, and 15 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-2, 4-10, and 15 of copending Application No. 18/540,122 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1-2 of the instant application recites the same claim limitations of claims 1-2 of application 18/540,122.
Claim 6 of the instant application recites the same claim limitations of claim 4 of application 18/540,122.
Claim 7 of the instant application recites the same claim limitations of claim 5 of application 18/540,122.
Claim 8 of the instant application recites the same claim limitations of claim 6 of application 18/540,122.
Claim 9 of the instant application recites the same claim limitations of claim 7 of application 18/540,122.
Claim 10 of the instant application recites the same claim limitations of claim 8 of application 18/540,122.
Claim 11 of the instant application recites the same claim limitations of claim 9 of application 18/540,122.
Claim 12 of the instant application recites the same claim limitations of claim 10 of application 18/540,122.
Claim 15 of the instant application recites the same claim limitations of claim 15 of application 18/540,122.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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