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 20170181465 A1 (hereinafter YANG).
Regarding claim 1, YANG discloses reconstituted tobacco sheets and methods for making (abstract). YANG discloses that the tobacco products of the invention are suitable for use in a smoking article in which an aerosol is generated by electrical heating (¶11). YANG discloses a tobacco sheet (¶1) for a non-combustion heating-type flavor inhaler (11), wherein the tobacco sheet contains a tobacco raw material (¶2).
YANG further discloses that the sheet has a wavy shape in a cross-section in a thickness direction (¶32). YANG discloses that the reconstituted tobacco sheets have a wavy surface to increase the filling power (¶32).
YANG teaches wherein at least one of an arcuate curved surface present on a front surface and an arcuate curved surface present on a back surface of the sheet has a surface arithmetic mean surface roughness Sa in the range of 5 to 30 μm.
YANG teaches that higher content of fibrous materials may result in a rough texture (¶32). YANG teaches that this rough texture results in increased filling power of the tobacco (¶32). A person of ordinary skill in the art would immediately recognize that formation of a rough surface area is advantageous to improve tobacco filling power. YANG is silent as to how the surface roughness is measured. However, given that the tobacco sheet taught by YANG are the same as those disclosed in the instant specification to result in a sheet having the claimed surface roughness, the surface roughness of the sheet taught by YANG is expected inherently to be the same.
Since YANG discloses that increasing the surface roughness is desired to improve filling power, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify surface roughness as a matter of routine optimization since it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05.II.A). Though YANG does not disclose the recited measurement for surface roughness, surface arithmetic mean surface roughness Sa, YANG does disclose optimization of the surface roughness as a method to improve the filling power. Therefore the claimed recitation is met.
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 3, YANG teaches the sheet according to claim 1 as discussed above. YANG further discloses that the sheet is a press-formed sheet (¶4).
Regarding claim 6, YANG teaches the sheet according to claim 1 as discussed above. YANG 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 (¶11). YANG discloses that the tobacco products of the invention are used in combination with tobacco rods and used in a smoking article that has electric heating (¶11). Further the art is replete with heating devices for heating a tobacco-containing segment and a tobacco sheet including CA 3 132 886, WO 2021/25540 A1, WO 2020/025730 A1 provided on applicant’s information disclosure statement filed October 8, 2025.
Regarding claim 7, YANG teaches the sheet according to claim 6 as discussed above. YANG further discloses and a heating device for heating the tobacco-containing segment (¶11). YANG discloses that the tobacco products of the invention are used in combination with tobacco rods and used in a smoking article that has electric heating (¶11). Further the art is replete with heating devices for heating a tobacco-containing segment and a tobacco sheet including CA 3 132 886, WO 2021/25540 A1, WO 2020/025730 A1 provided on applicant’s information disclosure statement filed October 8, 2025.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over YANG as applied to claim 1 above and in further view of US 20210244088 A1 (hereinafter COMBS).
Regarding claims 4-5, YANG teaches the sheet according to claim 1 as discussed above. YANG does not teach or disclose a cellulose derivative with a degree of substitution of 0.65 or more nor wherein the degree of substitution is 0.7 or more.
COMBS teaches a degradable cellulose ester to be formed into tow for use in cigarettes including an enzymatic material to promote degradation (abstract). COMBS teaches a degradable cellulose that is formed to have degree of substitution greater than 1.3 (¶8). 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). In this case, a person of ordinary skill in the art would obviously use the cellulose derivative with a degree of substitution of more than 1.3 (which overlaps with the recited ranges that include any number above 0.7) because doing so would promote degradation in the environment and reduce man-made litter (COMBS ¶3).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over YANG as applied to claim 1 above and in further view of US 20150272203 A1 (hereinafter HOLFORD).
Regarding claim 8, YANG teaches the sheet according to claim 1 as discussed above. YANG further discloses a method for manufacturing the tobacco sheet (¶7). YANG discloses preparing a mixture containing the tobacco raw material (¶7), an aerosol generator (¶30, humectants are considered to be aerosol generators) a first shaping agent (¶3, cellulose fibers), and a second shaping agent (¶17, guar).
YANG does not disclose rolling the mixture to form a rolled product; and pressing a rotary roll blade against the rolled product to cut the rolled product into a strip while imparting a wavy shape to the strip.
HOLFORD teaches a smoking wrapper and method of making a smoking article (abstract). HOLFORD teaches feeding the web from one of the rolls to a curling station (¶90). HOLFORD teaches that the web is formed with an embossed pattern of facets through use of a rotary cutting roller (¶90, ¶94).
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 the method of YANG to include rolling the mixture to form a rolled product; and pressing a rotary roll blade against the rolled product to cut the rolled product into a strip while imparting a wavy shape to the strip as taught in HOLFORD. Using a rotary cutting roller would impart texture and embossing on a cast web. A person of ordinary skill in the art would obviously use this method of embossing to provide a pattern of facets that is continuous and without discontinuity that can be felt on the finger of the user (¶75).
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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