Final Rejection
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 .
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3, 5-13, 15, 16, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 103703116 to Fujita et al. (hereinafter Fujita), as evidenced by Lecipro.
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With respect to claims 1, 5, 6, 15, and 19, Fujita teaches a flavorant-carrying constituent member (filter particles) 541 of a tobacco product 50, comprising: a constituent member 541 of a tobacco product; and a flavorant composition carried on the constituent member (para [0012]), and containing an emulsifier (lecithin; paras [0035, 0059-0062] and a flavorant, the emulsifier having an HLB in a range of 1 to 7. Lecipro evidences that standard soy lecithin has an intrinsic HLB of 4-7, which overlaps the range of 2-4 in claim 1 and encompasses the claimed range of 3.7-4.5 in claim 5. It would have been obvious to a person of skill in the art to choose a known and readily available form of lecithin, such as standard lecithin, which would have intrinsically had an HLB within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to claim 2, a POSITA would have found it obvious to optimize the ratio of flavorant and emulsifier dependent upon the flavorant chosen, particularly as the range is not disclosed to be critical and is very large. An optimized ratio is readily determined through routine experimentation.
With respect to claim 3, the flavorant composition contains a solvent (water). See paras [0035, 0040].
As to claims 7 and 8, the flavorant may include inter alia flavor and/or taste-presenting materials or a plant material. See para [0033]. Additionally, it may include a fatty acid ester. See para [0035].
With respect to claims 9-11, the constituent member includes a glucan coating. See paras [0034, 0039]. Because the type of glucan used has not been disclosed to be critical to the invention, it would have been obvious for a POSITA to choose a glucan known to form a film having the desired properties.
As to claim 12, the composition may contain hydroxypropyl cellulose as a film former. See para [0034].
With respect to claim 13, the composition contains adsorbent particles. See para [0036].
As to claim 16, the filter 541 is tubular in shape.
With respect to claim 24, Fujita does not teach the viscosity of the flavorant composition at 20 °C but does teach that the composition comprises a “film-forming material” and the flavorant is added such that it is a part of the film. See para [0034]. Film-forming solutions of hydroxypropyl cellulose would have been expected to exhibit very high viscosity at 20 °C, and a POSITA would have found it obvious to optimize composition viscosity to ensure sufficient coverage of the particles of Fujita while avoiding dripping/waste of the composition.
As to claim 25, Fujita discloses the same emulsifiers as claimed. Thus, the produced film will necessarily exhibit the same network structure.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujita as evidenced by Lecipro as applied to claim 3 above, and further in view of WO 2020/115898 to Sakurai et al. (hereinafter Sakurai).
Fujita discloses a solvent but does not teach a monohydric alcohol. Like Fujita, Sakurai teaches a flavored tobacco material wherein a fragrance component may be dispersed in a solvent such as ethyl alcohol. Sakurai favors “a fragrance which easily forms a dispersed state in a solvent by adding an emulsifier,” such as hydrophobic or oil-soluble fragrances. Fujita also teaches that hydrophobic fragrances may be used (para [0040]) that have been dissolved such that they become hydrophilic. It would have been obvious to a POSITA to use a monohydric alcohol, such as ethyl alcohol, to dissolve the hydrophobic fragrances of Fujita, as one would have had an expectation of success when doing so.
Claim(s) 14 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujita as evidenced by Lecipro as applied to claim 1 above, and further in view of US 2018/0132522 to Li et al. (hereinafter Li).
Fujita is silent to the constituent member being a tobacco filler or cut pieces of a base member. Li discloses applying a flavorant to tobacco filler (i.e. cut pieces of tobacco base material). See Abstract; paras [0022-0023]. It would have been obvious for a POSITA to add the flavorant composition of Fujita to cut tobacco filler, as shown by Li to be conventional in the art for improving the flavor of a cigarette and as one would have had an expectation of success when doing so.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujita as evidenced by Lecipro as applied to claim 1 above, and further in view of US 2019/0116871 to Beck (hereinafter Beck).
Fujita does not teach the constituent member is paper. However, Beck discloses that it was known in the art to place a flavor component on a rolling paper for tobacco. See Abstract. It would have been obvious for a POSITA to add the flavorant composition of Fujita to a cigarette paper, as shown by Beck to be conventional in the art for improving the flavor of a cigarette and as one would have had an expectation of success when doing so.
Claim(s) 1, 6, 7, and 20-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0309292 to Andersen (hereinafter Andersen).
Andersen teaches a chewing gum containing tobacco alkaloid. The gum base of Andersen is the flavorant-carrying constituent member of a tobacco product (nicotine-releasing chewing gum). The constituent member (gum base) has a flavorant composition carried thereon, the composition including an emulsifier and a flavorant. See paras [0073-0077, 0136, 0143, 0142]. The emulsifier may be propylene glycol monostearate (para [0127]), which is a glycerin fatty acid ester, and the emulsifier has an HLB of below 5. See para [0030]. It would have been obvious to one of ordinary skill in the art to choose propylene glycol monostearate from the limited list of preferred emulsifiers because where a POSITA has a finite, small number of alternatives to explore, and they all lead to predictable results with a reasonable expectation of success, choosing one of those limited options is obvious.
Response to Arguments
Applicant's arguments filed 11 June 2026 have been fully considered but they are not persuasive.
On page 7 of the Remarks, Patent Owner argues properties that are not found in the independent claims and most of the dependent claims, such as a high viscosity flavorant composition, a non-fluid flavorant composition, or an emulsifier that forms a network structure in the flavorant composition. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As to the dependent claims which recite the referenced limitations, as set forth in the rejection, Fujita teaches film forming compositions containing the claimed emulsifiers.
Patent Owner further submits that an absorbent particle is an optional member of the flavorant composition and the flavorant is not retained in the constituent member. However, the instant claims use the open language “comprising” and thus, do not exclude the presence of an absorbent particle. Furthermore, Fujita discloses that the flavorant is retained within a film that is applied to the absorbent particle.
On page 8 Patent Owner argues that there is no motivation for a POSITA to choose a low HLB emulsifier “such that the flavorant composition is carried on the constituent member…but does not exude to the constituent member.” Only dependent claim 25 recites a network structure “so that the flavorant composition does not exude to the constituent member.” Regardless, the film forming composition of Fujita is disclosed to be “supported on” the particles, not “in” them.
While Patent Owner alleges “unexpected” properties, the specification does not support such properties. While the specification does teach the properties are advantageous, these properties are the natural result of using known emulsifiers in Fujita, such as the lecithin of Lecipro.
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.
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/ELIZABETH L MCKANE/Primary Examiner, Art Unit 3991
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