DETAILED ACTION
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.
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 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over US 20210329964 A1 (hereinafter DEFOREL) as evidenced by “Understanding Particle Size Distribution: D10, D50, and D90” by Zero Instrument.
Regarding claim 1, DEFOREL discloses an aerosol-generating article including a substrate formed from tobacco particulate and plant particulate (abstract). DEFOREL discloses a homogenized plant material formed as a sheet (¶43). DEFOREL discloses that the sheet comprises a tobacco powder (¶8, table 2, ¶170, ¶174). DEFOREL further teaches tobacco powder with a cumulative 90% particle diameter (D90) of 200 µm or more in a volume-based particle size distribution (¶18-¶19). DEFOREL further teaches the sheet having a density of 1.0 g/cm3 or less (¶46). 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).
Regarding the limitation as measured by a dry laser diffraction method, recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430. In this case, DEFOREL does not recite the method for determining cumulative particle diameter (D90), however it is known in the art, as evidenced by the article by Zero measurement, to measure particle size distribution through a dry laser diffraction method and that this method is most commonly applied to bulk powders such as industrial sized tobacco particulate.
Regarding claim 3, DEFOREL discloses the sheet according to claim 1 as discussed above. DEFOREL further discloses that the sheet is a press-formed sheet (¶13, ¶52).
Regarding claim 6, DEFOREL discloses the tobacco sheet according to claim 1 as discussed above. DEFOREL further discloses a non-combustion heating-type flavor inhaler (¶31, ¶42) comprising a tobacco-containing segment (Fig. 1, aerosol generating substrate 1020, ¶125) containing the tobacco sheet (¶127) for a non-combustion heating-type flavor inhaler according to claim 1.
Regarding claim 7, DEFOREL discloses the tobacco sheet according to claim 6 as discussed above. DEFOREL further discloses a heating device for heating the tobacco-containing segment (¶133).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over DEFOREL as applied to claim1 above, and further in view of US 20230025403 A1 (hereinafter GRISHCHENKO).
Regarding claim 4, DEFOREL discloses the sheet according to claim 1 as discussed above. DEFOREL further discloses the sheet further comprising: a humectant (¶68); a binder(¶81); and one or both of a flavoring (¶35) and taste agent (¶86). Regarding the recitation a shaping aid the recitation of a plasticizer is considered to read upon the limitation of shaping aid (¶35). Further given the claim recitation of “or”, the DEFOREL reads upon this limitation without the need to recite all of the items in the list.
DEFOREL does not disclose wherein the sheet has an air permeability of more than 0 CORESTA units.
GRISHCHENKO teaches an article for use in a non-combustible aerosol provision system (abstract). GRISHCHENKO teaches that a wrapper is used with a level of permeability greater than about 2000 Coresta units (¶68). GRISHCHENKO teaches that relatively high permeability increase the amount of heat that is transferred from the aerosol and thus reduces the temperature of the aerosol (¶150). GRISHCHENKO teaches that controlling the permeability can also increase the moisture transferred which has been found to improve the feel of the aerosol in the user’s mouth (¶150).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified DEFOREL to provide the sheet has an air permeability of more than 0 CORESTA units as taught in GRISHCHENKO. A person of ordinary skill in the art would obviously control the air permeability of the sheet. Doing so would increase the amount of heat transferred and improve the mouth feel of the aerosol delivered to the user (GRISHCHENKO ¶68, ¶150). 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). Finally, DEFOREL is silent as to the property of CORESTA units, however, recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Regarding claim 5, modified DEFOREL discloses the sheet according to claim 4 as discussed above. The limitation the air permeability is 500 CORESTA Units or more is rejected for the same reasons detailed in the rejection of claim 4 with respect to CORESTA units and is not repeated here.
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.
Claim 1 and 3-7 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 3-9 of copending Application No. 18623365 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because in light of the claims and the specification as a dictionary, the claims encompass the same scope and invention.
Regarding claim 1, ‘365 discloses A tobacco sheet for a non-combustion heating-type flavor inhaler, having a density of 1.0 g/cm.sup.3 or less (claim 1). ‘365 further discloses a tobacco powder with a cumulative 90% particle diameter (D90) of 200 µm or more in a volume-based particle size distribution (¶14).
Regarding claim 3, ‘365 discloses a press-formed sheet (claim 3)
Regarding claim 4, ‘365 discloses comprising: a humectant; a binder; and an optional flavoring and taste agent, wherein the sheet has an air permeability of more than 0 CORESTA units (claim 4).
Regarding claim 5, ‘365 discloses wherein the air permeability is 500 CORESTA Units or more (claim 5).
Regarding claim 6, ‘365 discloses A non-combustion heating-type flavor inhaler comprising a tobacco-containing segment containing the tobacco sheet for a non-combustion heating-type flavor inhaler according to claim 1 (claim 6).
Regarding claim 7, ‘365 discloses A non-combustion heating-type flavor inhaling system comprising: the non-combustion heating-type flavor inhaler according to claim 6; and a heating device for heating the tobacco-containing segment (claim 7).
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 and 3-7 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 3-7 of copending Application No. 18623051 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because in light of the claims and the specification as a dictionary, the claims encompass the same scope and invention.
Regarding claim 1, ‘051 discloses A tobacco sheet for a non-combustion heating-type flavor inhaler (claim 1), having a density of 1.0 g/cm.sup.3 or less (claim 2). ‘051 further discloses a tobacco powder with a cumulative 90% particle diameter (D90) of 200 µm or more in a volume-based particle size distribution (¶14).
Regarding claim 3, ‘051 discloses a press-formed sheet (claim 3)
Regarding claim 4, ‘051 discloses comprising: a humectant; a binder; and an optional flavoring and taste agent, wherein the sheet has an air permeability of more than 0 CORESTA units (claim 4).
Regarding claim 5, ‘051 discloses wherein the air permeability is 500 CORESTA Units or more (claim 5).
Regarding claim 6, ‘051 discloses A non-combustion heating-type flavor inhaler comprising a tobacco-containing segment containing the tobacco sheet for a non-combustion heating-type flavor inhaler according to claim 1 (claim 6).
Regarding claim 7, ‘051 discloses A non-combustion heating-type flavor inhaling system comprising: the non-combustion heating-type flavor inhaler according to claim 6; and a heating device for heating the tobacco-containing segment (claim 7).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE L MOORE whose telephone number is (313)446-6537. The examiner can normally be reached Mon - Thurs 9 am to 5 pm.
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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