DETAILED ACTION
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.
Claims 1, 2, 4, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beringer (US 3,929,141).
Regarding claim 1, Beringer teaches a regenerated tobacco (aerosol generating material) comprising: a reconstituted cocoa husk material comprising (1) extracted cocoa husk fibers [col. 1, l. 37-44] combined with (2) structure-forming fibers (web building fibers) [col. 5, l. 38-40]; and flavor-improving components (aerosol delivery composition containing an aerosol delivery agent) applied to the reconstituted cocoa husk material [col. 5, l. 47-51].
Regarding claim 2, Beringer teaches the reconstituted cocoa husk material further comprises glycerine plasticizer (humectant) [col. 5, l. 41-42].
Regarding claim 4, Beringer teaches tobacco is included [col. 2, l. 17-27], which comprises nicotine.
Regarding claim 14, Beringer teaches the material contains calcium carbonate filler (particles) [col. 5, l. 57-60].
Regarding claim 15, Beringer teaches the material comprises ribbons (filler material comprised of strips) [col. 4, l. 20-22].
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 16-17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Beringer.
Beringer discloses the filler material having the same structure as claimed with respect to claim 15 and the same composition as claimed with respect to claim 1, the filler of Beringer is expected to have a static burn rate of greater than 4 mm/min and have a filling power of greater than 4 cm³/g and less than about 10 cm³/g. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
Claims 3, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Beringer.
Regarding claim 3, Beringer does not specify the claimed amount of humectant. However, Beringer does teach the glycerine acts as plasticizer to make the product hygroscopic [col. 4, l. 13-15]. It would have been obvious to one of ordinary skill in the art to optimize the amount of glycerine humectant through routine experimentation to achieve the desired effects of acting as plasticizer to make the product hygroscopic.
Regarding claim 9, Beringer does not specify the claimed amount of flavor-improving components. However, it would have been obvious to one of ordinary skill in the art to optimize the amount of flavor-improving components (aerosol delivery composition) present on the material through routine experimentation to achieve the flavoring effects on the product.
Regarding claim 11, Beringer teaches 10-60 parts of web-building fibers out of a total of 150-340 parts [col. 2, l. 4-9], for a range of 3% to 40% by weight. 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).
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Beringer as applied to claim 1 above, and further in view of Greenbaum (US 2019/0022158).
Beringer is silent to the claimed additives. Greenbaum teaches tobacco product comprising CBD or THC, which have shown a variety of significant biological effects including but not limited to pain relief, anti-cancer, anti-inflammatory, anti-emetic, anti-convulsant, and several others [0014-0016], as well as the addition of terpenes [0020]. It would have been obvious to one of ordinary skill in the art to include these compounds in the material of Beringer to achieve the benefits associated with their use suggested by Greenbaum.
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Beringer as applied to claim 1 above, and further in view of Ajithkumar (US 2020/0054064).
Beringer teaches cellulose fibers but does not specify delignified cellulose fibers or a combination of softwood fibers and hardwood fibers. Ajithkumar teaches an aerosol-generating material comprising pulped (delignified) softwood and hardwood fibers for increasing tensile strength [0117-0123]. It would have been obvious to one of ordinary skill in the art to use these fibers as the structure-forming cellulose fibers of Beringer for increasing tensile strength as suggested by Ajithkumar.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Beringer as applied to claim 1 above, and further in view of Pesendorfer (US 2017/0035095).
Beringer does not teach the claimed degree of refined fibers. Pesendorfer teaches a cigarette paper wherein the degree of refinement influences tensile strength and cost of production [0026]. As degree of refinement is recognized as a result effective variable, it would have been obvious to one of ordinary skill in the art to optimize through routine experimentation to achieve the desired results.
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Beringer as applied to claim 1 above, and further in view of Snow (US 2014/0103099).
Beringer teaches the material of claim 1 comprises ribbons that can be smoked [col. 4, l. 20-40] but does not teach a smoking article comprising an outer wrapper surrounding a smokable rod, the smokable rod comprising the material. Snow teaches a smoking article comprising an outer wrapper surrounding a smokable rod, the smokable rod comprising shredded tobacco [0067-0069]. It would have been obvious to one of ordinary skill in the art to apply such an article to the material of Beringer to achieve the predictable result of providing the material in a form suitable for smoking. Furthermore, Snow teaches the wrapper includes a plurality of discrete reduced ignition areas being spaced along an axial direction of the smoking article, the reduced ignition areas having a diffusivity of less than about 0.5 cm/s at 23° C [0015], and would have been obvious to one of ordinary skill in the art to apply to the wrapper of modified Beringer for reduced ignition proclivity.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Beringer as applied to claim 1 above, and further in view of Abramov (US 2014/0338680).
Beringer does not teach the claimed smoking article. Abramov teaches a smoking article comprising a heating device and a chamber, the chamber containing an aerosol generating material, the heating device being positioned so as to heat the aerosol generating material for producing an inhalable aerosol without burning the aerosol generating material [0039]. It would have been obvious to one of ordinary skill in the art to include this smoking article with the aerosol generating material of Beringer to produce an aerosol while avoiding the negative effects associated with smoking.
Conclusion
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/ERIC YAARY/Examiner, Art Unit 1755
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