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, 3-7, and 9-11 are pending and are subject to this office action. This is the first Office Action on the merits of the claims.
Claim Objections
Claim 3-6 and 9-11 are objected to because of the following informalities:
Claim 1 recites, “a tobacco sheet” whereas claims 3-4, 6, 9-11 recites “the sheet” and claim 5 recites, “the dry tobacco sheet.” The preamble for all claims should use the same term for the sheet.
Appropriate correction is required.
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.
Claims 1, 3, 6, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Frobisher (US 20200178591 A1).
Regarding claim 1, Frobisher discloses a laminate (10, i.e. a sheet, Fig. 1, [0044-0046]), comprising:
A layer of tobacco material (14) having a water content (i.e. moisture content) of 5 to 20 wt% ([0030,0046]). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
The layer of tobacco material (14) comprises a fibrous material ([0014, 0028]) and a humectant (“aerosol generating agent”, [0008, 0032]).
In regards to the limitation requiring the tobacco sheet is for a non-combustion-heating-type flavor inhalator, Frobisher discloses the laminate (10) may be used in a smoking article (20). The Examiner notes that the claim is directed to a tobacco sheet and is limited to the positively recited elements of the tobacco sheet. The limitation, “a non-combustion-heating-type flavor inhalator” is claimed as intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the laminate (10) disclosed by Frobisher is capable of being used in a smoking article (20) that is capable of generating an aerosol when heated without combustion.
Regarding claim 3, Frobisher discloses the humectant is glycerol and propylene glycol (claim 6, [0008, 0032]).
Regarding claim 6, Frobisher discloses a smoking article (20, “non-combustion-heating-type flavor inhalator”, Fig. 2, [0045-0046), comprising a laminate (10 i.e. a sheet, Fig. 1, [0044-0046]), the laminate (10), comprising:
A layer of tobacco material (14) having a water content (i.e. moisture content) of 5 to 20 wt% ([0030,0046]). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
The layer of tobacco material (14) comprising a fibrous material ([0014, 0028]) and a humectant (“aerosol generating agent”, [0008, 0032]).
In regards to the limitation requiring a non-combustion-heating-type flavor inhalator, Frobisher discloses a smoking article (20, Fig. 2). The Examiner notes that the claim is directed to a flavor inhalator and is limited to the positively recited elements of the flavor inhalator. The limitation, “a non-combustion-heating-type flavor inhalator” is claimed as intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the smoking article (20) disclosed by Frobisher is capable of generating an aerosol when heated without combustion.
Regarding claim 9, Frobisher discloses a smoking article (20, “non-combustion-heating-type flavor inhalator”, Fig. 2, [0045-0046), comprising a laminate (10 i.e. a sheet, Fig. 1, [0044-0046]), the laminate (10), comprising:
A layer of tobacco material (14) having a water content (i.e. moisture content) of 5 to 20 wt% ([0030,0046]). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
The layer of tobacco material (14) comprising a fibrous material ([0014, 0028]) and a humectant comprising glycerol and propylene glycol (“aerosol generating agent”, [0008, 0032]).
In regards to the limitation requiring a non-combustion-heating-type flavor inhalator, Frobisher discloses a smoking article (20, Fig. 2). The Examiner notes that the claim is directed to a flavor inhalator and is limited to the positively recited elements of the flavor inhalator. The limitation, “a non-combustion-heating-type flavor inhalator” is claimed as intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the smoking article (20) disclosed by Frobisher is capable of generating an aerosol when heated without combustion.
Claims 4-5, 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Frobisher (US 20200178591 A1) in view of Ibrahim (US 20180360099 A1).
Regarding claim 4, Frobisher discloses the tobacco layer (14) in the laminate (10, “sheet”) may comprise a humectant of glycerol and propylene glycol ([0008, 0032]).
Frobisher is silent to the amount of humectant in the sheet.
However, Ibrahim, directed to a tobacco composition (abstract), discloses:
A tobacco composition containing an aerosol generating agent comprising 10-20 wt% glycerol and 0.1-0.3 wt% propylene glycol ([0030-0032]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Frobisher by including 10-20 wt% glycerol and 0.1-0.3 wt% propylene glycol for the humectant as taught by Ibrahim because both Frobisher and Ibrahim are directed to tobacco compositions for smoking, Frobisher discloses a tobacco layer comprising glycerol and propylene glycol but is silent to the amount used, Ibrahmim discloses a similar tobacco composition comprising known amount of glycerol and propylene glycol, one having ordinary skill in the art would be motivated to look to similar tobacco compositions for suitable ranges of humectant amount, and this involves applying a known amount of humectant to a similar tobacco composition to yield predictable results.
Frobisher discloses a laminate (10) comprising a support sheet (12) and tobacco layer (14, Fig. 1, [0044-0046]. Frobisher is silent to the inclusion of humectant in the support sheet (12) and therefore the support sheet (12) is considered to be free of humectant. Frobisher, in view of Ibrahim, does not explicitly disclose the amount of humectant in the overall laminate/sheet. However, the tobacco layer (14) of the laminate (10) comprising by 10-20 wt% glycerol and 0.1-0.3 wt% propylene glycol and the support sheet (12) comprising no humectant would result in the total humectant in the overall laminate (10) being in a range that overlaps with the range of less than 20 wt% of the laminate (10) and is therefore is considered prima facie obvious.
Regarding claim 5, Frobisher discloses the humectant is glycerol and propylene glycol (claim 6, [0008, 0032]).
Regarding claim 10, Frobisher discloses a smoking article (20, “non-combustion-heating-type flavor inhalator”, Fig. 2, [0045-0046), comprising a laminate (10 i.e. a sheet, Fig. 1, [0044-0046]), the laminate (10), comprising:
A layer of tobacco material (14) having a water content (i.e. moisture content) of 5 to 20 wt% ([0030,0046]). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
The layer of tobacco material (14) comprising a fibrous material ([0014, 0028]) and a humectant (“aerosol generating agent”, [0008, 0032]).
In regards to the limitation requiring a non-combustion-heating-type flavor inhalator, Frobisher discloses a smoking article (20, Fig. 2). The Examiner notes that the claim is directed to a flavor inhalator and is limited to the positively recited elements of the flavor inhalator. The limitation, “a non-combustion-heating-type flavor inhalator” is claimed as intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the smoking article (20) disclosed by Frobisher is capable of generating an aerosol when heated without combustion.
Frobisher is silent to the amount of humectant in the sheet.
However, Ibrahim, directed to a tobacco composition (abstract), discloses:
A tobacco composition containing an aerosol generating agent comprising 10-20 wt% glycerol and 0.1-0.3 wt% propylene glycol ([0030-0032]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Frobisher by including 10-20 wt% glycerol and 0.1-0.3 wt% propylene glycol for the humectant as taught by Ibrahim because both Frobisher and Ibrahim are directed to tobacco compositions for smoking, Frobisher discloses a tobacco layer comprising glycerol and propylene glycol but is silent to the amount used, Ibrahmim discloses a similar tobacco composition comprising known amount of glycerol and propylene glycol, one having ordinary skill in the art would be motivated to look to similar tobacco compositions for suitable ranges of humectant amount, and this involves applying a known amount of humectant to a similar tobacco composition to yield predictable results.
Frobisher discloses a laminate (10) comprising a support sheet (12) and tobacco layer (14, Fig. 1, [0044-0046]. Frobisher is silent to the inclusion of humectant in the support sheet (12) and therefore the support sheet (12) is considered to be free of humectant. Frobisher, in view of Ibrahim, does not explicitly disclose the amount of humectant in the overall laminate/sheet. However, the tobacco layer (14) of the laminate (10) comprising by 10-20 wt% glycerol and 0.1-0.3 wt% propylene glycol and the support sheet (12) comprising no humectant would result in the total humectant in the overall laminate (10) being in a range that overlaps with the range of less than 20 wt% of the laminate (10) and is therefore is considered prima facie obvious.
Regarding claim 11, Frobisher discloses a smoking article (20, “non-combustion-heating-type flavor inhalator”, Fig. 2, [0045-0046), comprising a laminate (10 i.e. a sheet, Fig. 1, [0044-0046]), the laminate (10), comprising:
A layer of tobacco material (14) having a water content (i.e. moisture content) of 5 to 20 wt% ([0030,0046]). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
The layer of tobacco material (14) comprising a fibrous material ([0014, 0028]) and a humectant comprising glycerol and propylene glycol (“aerosol generating agent”, [0008, 0032]).
In regards to the limitation requiring a non-combustion-heating-type flavor inhalator, Frobisher discloses a smoking article (20, Fig. 2). The Examiner notes that the claim is directed to a flavor inhalator and is limited to the positively recited elements of the flavor inhalator. The limitation, “a non-combustion-heating-type flavor inhalator” is claimed as intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the smoking article (20) disclosed by Frobisher is capable of generating an aerosol when heated without combustion.
Frobisher is silent to the amount of humectant in the sheet.
However, Ibrahim, directed to a tobacco composition (abstract), discloses:
A tobacco composition containing an aerosol generating agent comprising 10-20 wt% glycerol and 0.1-0.3 wt% propylene glycol ([0030-0032]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Frobisher by including 10-20 wt% glycerol and 0.1-0.3 wt% propylene glycol for the humectant as taught by Ibrahim because both Frobisher and Ibrahim are directed to tobacco compositions for smoking, Frobisher discloses a tobacco layer comprising glycerol and propylene glycol but is silent to the amount used, Ibrahmim discloses a similar tobacco composition comprising known amount of glycerol and propylene glycol, one having ordinary skill in the art would be motivated to look to similar tobacco compositions for suitable ranges of humectant amount, and this involves applying a known amount of humectant to a similar tobacco composition to yield predictable results.
Frobisher discloses a laminate (10) comprising a support sheet (12) and tobacco layer (14, Fig. 1, [0044-0046]. Frobisher is silent to the inclusion of humectant in the support sheet (12) and therefore the support sheet (12) is considered to be free of humectant. Frobisher, in view of Ibrahim, does not explicitly disclose the amount of humectant in the overall laminate/sheet. However, the tobacco layer (14) of the laminate (10) comprising by 10-20 wt% glycerol and 0.1-0.3 wt% propylene glycol and the support sheet (12) comprising no humectant would result in the total humectant in the overall laminate (10) being in a range that overlaps with the range of less than 20 wt% of the laminate (10) and is therefore is considered prima facie obvious.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lu (US 20230329342 A1) in view of Frobisher (US 20200178591 A1).
Regarding claim 7, Lu discloses a vapor generation device (Fig. 1, [0044]), comprising
An aerosol forming article (A) and a tubular heater (30) for receiving and heating the aerosol forming article (A, Fig. 4, [0044, 0056]).
The vapor generation device is configured to heat but not burn the aerosol forming article ([0041]) and therefore is considered a non-combustion-heating-type flavor inhalation system.
Lu does not explicitly disclose the aerosol forming article comprises a tobacco sheet comprising a fibrous material, aerosol forming agent, and dry tobacco.
However, Frobisher directed to a smoking article (20, “non-combustion-heating-type flavor inhalator”, Fig. 2, [0045-0046), discloses:
A smoking article (20, “non-combustion-heating-type flavor inhalator”, Fig. 2, [0045-0046) comprising a laminate (10 i.e. a sheet, Fig. 1, [0044-0046]), the laminate (10) comprising:
A layer of tobacco material (14) having a water content (i.e. moisture content) of 5 to 20 wt% ([0030,0046]). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
The layer of tobacco material (14) comprising a fibrous material ([0014, 0028]) and a humectant (“aerosol generating agent”, [0008, 0032]).
In regards to the limitation requiring a non-combustion-heating-type flavor inhalator, Frobisher discloses a smoking article (20, Fig. 2). The Examiner notes that the claim is directed to a flavor inhalator and is limited to the positively recited elements of the flavor inhalator. The limitation, “a non-combustion-heating-type flavor inhalator” is claimed as intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the smoking article (20) disclosed by Frobisher is capable of generating an aerosol when heated without combustion.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify by Lu by substituting the smoking article with the smoking article disclosed by Frobisher, because both Lu and Frobisher are directed to smoking apparatuses, Lu discloses a smoking article used with a vaporization device but is silent to the contents of the smoking article, Frobisher discloses a known smoking article comprising dry tobacco, a fibrous material and aerosol generating agent, and this involves substituting one known smoking article for another to yield predictable results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-7, and 9-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3-7, and 10-12 of copending Application No. 18/591,757. Although the claims at issue are not identical, they are not patentably distinct from each other. The co-pending claims and rejected claims differ in that claim 1 of the co-pending claims additionally requires that a cross section of the tobacco sheet in a thickness direction has a corrugated shape.
Therefore, all of the elements of provisionally rejected 1, 3-7, and 9-11 are present and obvious over conflicting 1, 3-7, and 10-12 of co-pending Application No. 18/591,757.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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