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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 14 recites a process for obtaining an extract. However, claim 1 is directed to the tobacco material. Thus, it is unclear if the extract is part of the tobacco material, or an intermediate product when forming the tobacco material, or simply a process that the tobacco material is put through to obtain the extract and the extract is not part of the tobacco material.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-3, 5, 6, 9, 10, 11 and 13-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CANTRELL et al. (US 2013/0263870).
With respect to claims 1-3, 5, 6 and 9, CANTRELL et al. discloses a tobacco pastille (e.g., tobacco material) (Abstract; Title) comprising a binder in an amount of 1 to 5 wt% based on dry weight of the composition (Paragraph [0024]). The binder comprises 40-60 dry weight% starch and 5 to 15 dry weight% protein (Paragraph [0022]).
Thus, the total amount of protein to the entire tobacco composition is between about .005 dry weight% to 0.75 dry weight% (e.g., 0.05x0.01 to 0.15x0.05)x100.
This equates to between 0.005 and 0.75 mg/100 mg of dry weight tobacco material.
The starch is present in an amount of 0.4 to 3 dry weight% of the tobacco composition. Or between 0.4 to 3 mg starch/100 mg dry weight of the composition.
With respect to claims 10 and 11, CANTRELL et al. discloses sorbitol (molecular weight of 182.17 ) in an amount of greater than 30 wt% (Paragraph [0011]). Thus, at least about 30 wt% of the composition has a molecular weight of less than 10,000 or less.
With respect to claim 13, CANTRELL et al. discloses that the tobacco material comprises a raw tobacco content of 25 dry weight percentage (Paragraph [0010]) (e.g., 25 mg raw tobacco/100 mg dry weight of tobacco composition).
With respect to claim 14, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). MPEP 2113.
As seen in the rejection of claim 1, CANTRELL et al. discloses the claimed product. Thus, a manner of operating on the product does not impart patentability to the claims.
With respect to claims 15 and 16, CANTRELL et al. discloses a smokeless tobacco product using the tobacco material of claim 1 (Paragraphs [0012], [0013]).
Claim(s) 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by YAMADA et al. (US 2006/0065279).
With respect to claim 17, YAMADA et al. discloses a method for making a tobacco material (Abstract) comprising an extraction step of performing extraction from a raw material tobacco (Paragraphs [0016]-[0021]); a filtration step of obtaining a filtrate by filtering an extract obtained in the extraction step (Paragraph [0021]-[0023]) to obtain an extraction solution and an extraction residue. The method then comprises a processing step of bringing these two components together to form a body (Paragraphs [0057] and [0024]-[0050]). The filtration membrane having an average pore size of 100 to 1000 Da (Paragraph [0024]).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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Claim(s) 4, 7, 8 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over CANTRELL et al. (US 2013/0263870).
With respect to claims 4,7 and 8, CANTRELL et al. discloses a tobacco pastille (e.g., tobacco material) (Abstract; Title) comprising a binder in an amount of 1 to 5 wt% based on dry weight of the composition (Paragraph [0024]). The binder comprises 40-60 dry weight% starch and 5 to 15 dry weight% protein (Paragraph [0022]).
Thus, the total amount of protein to the entire tobacco composition is between about .005 dry weight% to 0.75 dry weight% (e.g., 0.05x0.01 to 0.15x0.05)x100.
This equates to between 0.005 and 0.75 mg/100 mg of dry weight tobacco material.
The starch is present in an amount of 0.4 to 3 dry weight% of the tobacco composition. Or between 0.4 to 3 mg starch/100 mg dry weight of the composition. MPEP 2144.05, I.
With respect to claim 12, CANTRELL et al. discloses sorbitol (molecular weight of 182.17 ) in an amount of greater than 30 wt% (Paragraph [0011]). Thus, at least about 30 wt% of the composition has a molecular weight of less than 10,000 or less. Greater than 30% includes values of 40 wt% or more. MPEP 2144.05, I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745
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