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 and 3-7 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Claim Objections
Claims 3-5 are objected to because of the following informalities:
Claims 3-4 recite the limitation "the sheet according to claim 1" in line 1 and claim 5 recites “the sheet according to claim 4” in line 1. However, Claim 1 recites “a tobacco sheet for a non-combustion heating-type flavor inhaler”. The preambles should recite the “tobacco sheet” for continuity with clam 1. Therefore claims 3-4 should recite “The tobacco sheet for a non-combustion heating-type flavor inhaler according claim 1” and claim 5 should recite “The tobacco sheet for a non-combustion heating-type flavor inhaler according to claim 4”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1, 3, and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deforel (US2021/0329964 ) as evidenced by Jenkins (US2025/0134157).
Regarding claim 1, Deforel teaches:
A tobacco sheet (sheet of homogenized plant material formed comprising tobacco particles, [0127]) for a non-combustion heating-type flavor inhaler (aerosol-generating article 1000, fig. 1, [0128]) comprising a tobacco powder (tobacco particles, [0127]).
Deforel does not appear to explicitly disclose (I) the tobacco powder has a cumulative 90% particle diameter (D90) of 200 um or more, (II) the cumulative 90% particle diameter (D90) is in a volume-based particle size distribution as measured by a dry laser diffraction method, and (III) wherein at least one surface has an arithmetic mean surface roughness Sa in the range of 5 to 30 um.
In regard to (I), Deforel further teaches the particulate plant material has a cumulative 90% particle diameter (D90) of less than or equal to 300 microns ([0013]).
The range taught by the prior art overlaps the claimed range of 200 um or more and is therefore prima facie obvious.
In regard to (II) Deforel is silent to the cumulative 90% particle diameter (D90) is in a volume-based particle size distribution as measured by a dry laser diffraction method. However, the recited measurement method defines how the particle size is determined and does not impose a structural limitation on the claimed tobacco sheet.
In regard to (III), Deforel is silent to the arithmetic mean surface roughness SA of at least one surface.
However, as evidenced by Jenkins, the particle size of the tobacco material influences the roughness of the shredded sheet of aerosol generating material ([0128]).
Therefore, as the tobacco sheet taught by Deforel has a particle size distribution of the tobacco powder that is overlapping with the claimed tobacco sheet, it would be expected that the tobacco sheet of Deforel would have an arithmetic mean surface roughness SA of at least one surface that is within the claimed range or overlapping the claimed range, absent evidence to the contrary. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The surface roughness of the tobacco sheet taught by Deforel is therefore reasonably expected to overlap the claimed surface roughness.
Regarding claim 3, Deforel teaches the tobacco sheet for a non-combustion heating-type flavor inhaler is a press-formed sheet ([0013], pressing with rollers).
Regrading claim 6, Deforel teaches:
A non-combustion heating-type inhaler (heated aerosol-generating article 1000) comprising a tobacco-containing segment containing the tobacco sheet for a non-combustion heating-type flavor inhaler (aerosol-generating substrate 1020 comprising a sheet of homogenized plant material comprising tobacco particles, [0127], fig. 1) according to claim 1 (as shown in claim 1).
Regarding claim 7, Deforel teaches:
A non-combustion heating-type flavor inhaling system (electrically-operated aerosol-generating system 2000) comprising: the non-combustion heating-type flavor inhaler according to claim 6 (aerosol-generating article 1000, fig. 2) and a heating device for heating the tobacco-containing segment (electrically-operated aerosol-generating device 2010, fig. 2, [0130]).
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deforel (US2021/0329964 ) as evidenced by Jenkins (US2025/0134157) as applied to claim 1 above, and further in view of Cherkas (US2022/0079216).
Regarding claims 4-5, Deforel further teaches the tobacco sheet comprising a cellulose derivative (cellulosic binders such as hydroxypropyl cellulose, carboxymethyl cellulose, hydroxyethyl cellulose, methyl cellulose and ethyl cellulose, [0036]).
Deforel is silent to the degree of substitution of the cellulose derivative.
However Cherkas, directed to a filter for smoking or vaping article, teaches:
A binder can be a cellulose derivative ([0043]) chosen from ethyl cellulose, methyl cellulose, hydroxymethyl cellulose, hydroxyethyl cellulose, carboxymethyl cellulose, an alkali metal salt of carboxymethyl cellulose, and mixtures thereof, in particular carboxymethyl cellulose. A carboxymethyl cellulose with a degree of substitution of greater than 0.4 is particularly advantageous. Typically, the degree of substitution will be between 0.6-0.9 ([0045]).
The range taught by the prior art overlaps the claim 4 range of 0.65 or more and the claim 5 range of 0.7 or more and is therefore prima facie obvious.
Therefore, as Deforel is silent to the degree of substitution of the cellulose derivative, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teachings of cellulose derivatives with degrees of substitution that one of ordinary skill could apply to Deforel with a reasonable expectation of success in the cellulose derivative’s degree of substitution being suitable for use with the tobacco sheet of Deforel. As such, it would be obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to make the cellulose derivative of Deforel have a degree of substitution between 0.6 and 0.9 as taught by Cherkas, because both Deforel and Cherkas are directed to smoking articles with binders that are cellulose derivatives, and this merely involves incorporating a known type of degree of substitution to a similar cellulose derivative binder to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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