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
Claim 12 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 recites the limitation "vegetable cereal fibers". There is insufficient antecedent basis for this limitation in the claim.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 9-12, 13, and 16 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mua et al. (US 2023/0051029 A1 (Priority to 17/876,604 filed 2021-07-30).
Regarding claim 9-12, Mua et al. disclose a smoking material composed
Aerosol forming materials such as glycerol (i.e. glycerin) and propylene glycol [0118],
Fibrous support formed of plant fibers other than tobacco (i.e. wood fibers which are inherently cellulosic fibers [0083]) and “cereal grains (e.g. maize, oat, barley, rye, buckwheat, and the like)” [0091], and bran fibers [0091].
Nicotine with a purity greater than about 95% [0139].
Regarding claim 13, Mua et al. disclose the substrates contains 0-15% wood pulp, including 5-15% wood pulp [0094]. Mua et al. present a range that overlaps the claimed range and a preferred range that is wholly within the range claimed and therefore anticipate the claimed range.
Regarding claim 16, Mua et al. disclose that the substrate (i.e. plant fibers) have water content of between 0 and 30% and preferably 3 to 21% water [0158]. Mua et al. present a range that overlaps the claimed range and a preferred range that is wholly within the range claimed and therefore anticipate the claimed range.
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.
Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mua et al. (US 2023/0051029 A1) as applied to claim 9 above, and further in view of Masri (US 20110048438 A1).
Regarding claims 14 and 15, Mua et al. do not disclose that the fiber is cut to a particular size or surface area. However, Masri discloses a similar tobacco substitute that uses tea leaves as the plant material. Masri indicates that the prior art discloses drying green tea leaves and cutting to form particles 1-5 mm in width and 5-15 mm in length. It would have been obvious to one of ordinary skill in the art at the time of invention to use the cut tea leaves disclosed by Masri in the invention of Mua et al. in order to achieve the tea flavor disclosed by Masri. Cut leaves of 1-5 mm wide and 5-15 mm long have a surface area of approximately 10 mm2 and 150 mm, which overlaps the claimed range and makes the range obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Felton/Primary Examiner, Art Unit 1747
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