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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1 – 7 and 15, in the reply filed on 9/24/26 is acknowledged.
Claims 8 – 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/24/26.
Status of Claims
Claims 1 – 7 and 15 are pending and are the subject of this office action. This is the first office action on the merits of the claims.
Claim Interpretation
Claim 1 requires that the expanded tobacco leaves are prepared by a low temperature expansion process. Low temperature is being interpreted as below 230˚C as suggested by the specification page 3 lines 11 – 14.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1 – 7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 5249588 A (Brown), and further in view of EP 0484899 A1 (Uematsu).
Regarding claims 1 – 3 and 15, Brown teaches a smoking article comprising a tobacco rod, which comprises cut tobacco and a paper wrapper circumscribing said tobacco (column 1 lines 19 – 21). Brown further teaches that the whole or substantial proportion of the cut tobacco of the smoking article should be expanded tobacco, and that at least 65% of the tobacco is expanded tobacco and more suitably 70% is expanded tobacco (column 2 lines 18 – 26).
Brown does not teach that the expanded tobacco leaves are prepared by a low temperature expansion process. Uematsu teaches a method and system for expanding tobacco made by shredding tobacco leaves with an expanding agent such as carbon dioxide, and heating, expanding, and drying the tobacco impregnated with the expanding agent (page 2 lines 1 – 3). Uematsu further teaches that when the expanding agent is carbon dioxide, it is necessary to feed the tobacco into the gas-flow drying pipe having the temperature of 200 - 350˚C (page 2 lines 39 – 41). 200 - 350˚C reads on both the limitation of the low temperature expansion process of claim 1 and the claimed range of claim 2 as it overlaps the claimed range of between 200˚C and 230˚C. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to expand the tobacco leaves of Brown at a low temperature of Uematsu, with reasonable expectation of success, because Uematsu indicates that those temperatures are required to adequately swell the tobacco impregnated with carbon dioxide. And that lower temperatures are preferred as the texture of the tobacco leaves is burnt when the temperature of the tobacco exceeds 140˚C and the aroma and the smoking taste are degraded when the temperature of it exceeds 180˚C because the sugar contained in the tobacco leaves decomposes (page 2 lines 39 – 44).
Regarding claims 4 and 5, Brown modified by Uematsu teaches a smoking material as described by claim 1. Brown further teaches a cut tobacco blend comprising 25% burley tobacco lamina, 40% flue cured lamina, 25% water treated stem, and 10% sun cured oriental lamina (column 4 lines 29 – 31).
Regarding claim 6, Brown modified by Uematsu teaches a smoking material as described by claim 1. Brown further teaches that the humectant is one or more of glycerol, propylene glycol, sorbitol, and diethylene glycol (column 1 lines 32 – 33).
Regarding claim 7, Brown modified by Uematsu teaches smoking material as described by claim 6. Brown further teaches that the tobacco is pre-treated before expansion with a humectant to provide a loading level of the humectant from 4% - 15% by weight (column 1 lines 22 – 23). As Brown also states that the humectant can be any one or more of glycerol, propylene glycol, sorbitol and diethylene glycol, this overlaps the claimed ranges of 0.1 – 10 parts by weight of propylene glycol or 0.01 – 5 parts by weight glycerin. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brendon Juengst whose telephone number is (571)272-8750. The examiner can normally be reached Mon-Fri 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENDON THOMAS JUENGST/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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