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 § 102
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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CA 3135252 (hereinafter RIGOULAY). RIGOULAY was made of record on applicant’s information disclosure statement filed October 8, 2025.
Regarding claim 1, RIGOULAY discloses a reconstituted plant sheet for devices that heat tobacco without burning it where the sheet has a high density (abstract). RIGOULAY discloses a tobacco sheet for a non-combustion heating-type flavor inhaler, the tobacco sheet containing a fibrous material, having a density of 1.0 g/cm3 or less (¶8). RIGOULAY discloses a reconstituted plant sheet (¶8). RIGOULAY discloses that reconstituted tobacco is more suitable for heating devices because it is possible to generate a large amount of aerosol having advantageous organoleptic properties (¶5). RIGOULAY discloses that the refined fibers of the plant are created by a papermaking process producing reconstituted papermaking tobacco (¶23). RIGOULAY discloses that the density of the sheet is between 0.65 g/cm3 and 1 g/cm3 (¶20). This is a range that anticipates the recited range of the instant application.
Regarding claim 3, RIGOULAY discloses the sheet according to claim 1 as discussed above. RIGOULAY further discloses a press-formed sheet. RIGOULAY discloses the steps for making the sheet (¶11). RIGOULAY discloses that the plant fibers are passed through a papermaking machine (¶67). RIGOULAY discloses that the sheet is impregnated by pressing plant extract into the sheet (¶88). Further this claim is a product-by-process claim (See MPEP 2113, I). The patentability of the product does not depend on its method of production where the structure is anticipated by the prior art.
Claims 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CA 3135252 (hereinafter RIGOULAY) as evidenced by WO 2016207407 A1 (hereinafter NAUGHTON) and WO 2016026810 A1 (hereinafter FERNANDO). These references, NAUGHTON and FERNANDO) were incorporated by reference in prior art document RIGOULAY.
Regarding claim 6, RIGOULAY discloses the sheet according to claim 1 as discussed above. RIGOULAY further 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. RIGOULAY discloses that many devices have been developed for heating tobacco without burning to avoid the formation of the harmful constituents during tobacco combustion (¶2). RIGOULAY incorporates by reference several patent documents by reference (¶2) including both NAUGHTON and FERNANDO both of which illustrate a heating device with a solid tobacco containing segment wrapped and heated by the device.
Regarding claim 7, RIGOULAY discloses the sheet according to claim 1 as discussed above. RIGOULAY further 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. RIGOULAY discloses that many devices have been developed for heating tobacco without burning to avoid the formation of the harmful constituents during tobacco combustion (¶2). RIGOULAY incorporates several patent documents by reference (¶2) including both NAUGHTON and FERNANDO both of which illustrate a heating device with a solid tobacco containing segment wrapped and heated by the device.
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 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over RIGOULAY as applied to claim1 above, and further in view of US 20230025403 A1 (hereinafter GRISHCHENKO).
Regarding claim 4, RIGOULAY discloses the sheet according to claim 1 as discussed above. RIGOULAY further discloses a humectant (¶29). RIGOULAY discloses that the sheet includes sorbitol which the instant application has disclosed to be a humectant (PG Pub of instant application ¶43). RIGOULAY further discloses a binder (¶63-¶65). RIGOULAY discloses that the sheet has a mixture of cellulose based fibers to improve the mechanical strength properties of the sheet (¶65). The instant application has disclosed cellulose to be a binder (PG Pub of instant application ¶80). RIGOULAY further discloses an optional flavoring and taste agent (¶31). RIGOULAY discloses the inclusion of aromatic compounds to confer aromas from the plant onto the aerosol. This is considered to read on flavoring and taste agents. It is noted however that this is an “optional” limitation and is not needed to be found in the prior art.
RIGOULAY does not disclose 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 RIGOULAY 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, RIGOULAY 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 RIGOULAY 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 3-7 of copending Application No. 18621155 (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, ‘155 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). ‘155 further discloses the tobacco sheet containing a fibrous material. ‘155 discloses that the tobacco sheet has a reinforcing fibrous material (¶24).
Regarding claim 3, ‘155 discloses a press-formed sheet (claim 3).
Regarding claim 4, ‘155 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, ‘155 discloses wherein the air permeability is 500 CORESTA Units or more (claim 5).
Regarding claim 6, ‘155 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, ‘155 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.
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). ‘155 further discloses the tobacco sheet containing a fibrous material. ‘155 discloses that the tobacco sheet has a reinforcing fibrous material (¶24).
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 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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