DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-13 are pending. Claims 3-4 and 10-13 have been amended.
Claim Objections
Claims objected to because of the following informalities:
In claim 1, “or Reducing Sugars” in line 11 should be “of Reducing Sugars”;
In claim 1, “or asparagine” in line 20 should be “of asparagine”;
In claim 1, “or Glutamine” in lines 21-22 should be “of Glutamine”;
In claim 9, the periods at the ends of lines 5 and 11 should be removed (see MPEP § 608.01(m));
In claim 9, “or Reducing Sugars” in line 7 should be “of Reducing Sugars”;
In claim 9, “or asparagine” in line 17 should be “of asparagine”;
In claim 9, “or Glutamine” in line 19 should be “of Glutamine”;
In claim 13, “a the tobacco material” in line 5 should be “the tobacco material”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are 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.
Regarding claims 1, 4, 6, 7, 8, 9, and 13, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of this Office action:
In claim 1, “the content of Lactic Acid is more than 10 times, preferably more than 20 times, more preferably more than 50 times, more preferably more than 70 times, preferably more than 80 times an initial amount of Lactic Acid in the tobacco material” is interpreted as “the content of Lactic Acid is more than 10 times an initial amount of Lactic Acid in the tobacco material”;
In claim 1, “the content of Reducing Sugars is lower than 0.5, preferably lower than 0.4, more preferably below 0.2, more preferably below 0.1 an initial amount of Reducing Sugars in the tobacco material” is interpreted as “the content of Reducing Sugars is lower than 0.5 an initial amount of Reducing Sugars in the tobacco material”;
In claim 1, “the content of Indole-3 Lactic Acid is more than 5 times, preferably more than 10 times, preferably more than 20 times, an initial amount of Indole-3 Lactic Acid in the tobacco material” is interpreted as “the content of Indole-3 Lactic Acid is more than 5 times an initial amount of Indole-3 Lactic Acid in the tobacco material”;
In claim 1, “the content of caffeic acid is more than 4 times, preferably more than 10 times, preferably more than 20 times, an initial amount of caffeic acid in the tobacco material” is interpreted as “the content of caffeic acid is more than 4 times an initial amount of caffeic acid in the tobacco material”;
In claim 1, “the content of quinic acid is more than 2 times, preferably more than 4 times, an initial amount of quinic acid in the tobacco material” is interpreted as “the content of quinic acid is more than 2 times an initial amount of quinic acid in the tobacco material”;
In claim 1, “the content of asparagine is lower than 0.5, preferably lower than 0.4, preferably lower than 0.3 an initial amount of asparagine in the tobacco material” is interpreted as “the content of asparagine is lower than 0.5 an initial amount of asparagine in the tobacco material”;
In claim 1, “the content of Glutamine is lower than 0.5, preferably lower than 0.4 an initial amount of Glutamine in the tobacco material” is interpreted as “the content of Glutamine is lower than 0.5 an initial amount or Glutamine in the tobacco material”
In claim 1, “the content of L-Ornithine is more than 10 times, preferably more than 20 times, preferably more than 50 times, preferably more than 100 times an initial amount of L-Ornithine in the tobacco material” is interpreted as “the content of L-Ornithine is more than 10 times an initial amount of L-Ornithine in the tobacco material”;
In claim 1, “the content of L-Leucine is more than 2 times, preferably more than 4 times, an initial amount of L-Leucine in the tobacco material” is interpreted as “the content of L-Leucine is more than 2 times an initial amount of L-Leucine in the tobacco material”
In claim 1, “the content of L-Lysine is more than 2 times, preferably more than 6 times, an initial amount of L-Lysine in the tobacco material” is interpreted as “the content of L-Lysine is more than 2 times an initial amount of L-Lysine in the tobacco material”;
In claim 1, “the fermentation index is more than 50, preferably more than 100, more preferably more than 250, more preferably more 400” is interpreted as “the fermentation index is more than 50”;
In claim 4, “the content of 2,3 butanediol is more than 5 times, preferably more than 10 times, an initial amount of 2,3 butanediol in the tobacco material”, is interpreted as “the content of 2,3 butanediol is more than 5 times an initial amount of 2,3 butanediol in the tobacco material”;
In claim 4, “the content of diacetyl is more than 5 times, preferably more than 10 times, an initial amount of diacetyl in the tobacco material” is interpreted as “the content of diacetyl is more than 5 times an initial amount of diacetyl in the tobacco material”;
In claim 6, “wherein during the fermenting step it is provided for applying a pressure to the tobacco material comprised between 1000 kilograms per square meter and 15000 kilograms per square meter, preferably between 3000 kilograms per square meter and 12000 kilograms per square meter, more preferably between 5000 kilograms per square meter and 10000 kilograms per square meter” is interpreted as “wherein during the fermenting step it is provided for applying a pressure to the tobacco material comprised between 1000 kilograms per square meter and 15000 kilograms per square meter”;
In claim 7, “wherein it is provided for continuing the fermenting step for a fermentation time of at least 1 month, preferably at least 2 months, more preferably at least 4 months, more preferably at least 6 months, even more preferably at least 8 months, preferably at least 10 months, more preferably at least 12 months” is interpreted as “wherein it is provided for continuing the fermenting step for a fermentation time of at least 1 month”;
In claim 8, “wherein during the fermenting step it is provided for keeping the temperature of the tobacco material comprised between 21 degrees Celsius and 35 degrees Celsius, preferably between 25 degrees Celsius and 31 degrees Celsius” is interpreted as “wherein during the fermenting step it is provided for keeping the temperature of the tobacco material comprised between 21 degrees Celsius and 35 degrees Celsius”;
In claim 9, “Lactic Acid in an amount that is more than 10 times, preferably more than 20 times, more preferably more than 50 times, more preferably more than 70 times, more preferably more than 80 times, an initial amount of Lactic Acid in the tobacco material” is interpreted as “Lactic Acid in an amount that is more than 10 times an initial amount of Lactic Acid in the tobacco material”;
In claim 9, “Reducing Sugars in an amount that is lower than 0.5, preferably lower than 0.4,more preferably below 0.2, more preferably below 0.1 an initial amount of Reducing Sugars in the tobacco material” is interpreted as “Reducing Sugars in an amount that is lower than 0.5 an initial amount of Reducing Sugars in the tobacco material”;
In claim 9, “Indole-3 Lactic Acid in an amount that is more than 5 times, preferably more than 10 times, preferably more than 20 times, an initial amount of Indole-3 Lactic Acid in the tobacco material” is interpreted as “Indole-3 Lactic Acid in an amount that is more than 5 times an initial amount of Indole-3 Lactic Acid in the tobacco material”;
In claim 9, “caffeic acid in an amount that is more than 4 times, preferably more than 10 times, an initial amount of caffeic acid in the tobacco material” is interpreted as “caffeic acid in an amount that is more than 4 times an initial amount of caffeic acid in the tobacco material”;
In claim 9, “quinic acid in an amount that is more than 2 times, preferably more than 4 times,an initial amount of quinic acid in the tobacco material” is interpreted as “quinic acid in an amount that is more than 2 times an initial amount of quinic acid in the tobacco material”;
In claim 9, “asparagine in an amount that is lower than 0.5, preferably lower than 0.4, preferably lower than 0.3 an initial amount of asparagine in the tobacco material” is interpreted as “asparagine in an amount that is lower than 0.5 an initial amount of asparagine in the tobacco material”;
In claim 9, “Glutamine in an amount that is lower than 0.5, preferably lower than 0.4 an initial amount of Glutamine in the tobacco material” is interpreted as “Glutamine in an amount that is lower than 0.5 an initial amount of Glutamine in the tobacco material”;
In claim 9, “L-Ornithine is more than 10 times, preferably more than 50 times, preferably more than 100 times an initial amount of L-Ornithine in the tobacco material” is interpreted as “L-Ornithine is more than 10 times an initial amount of L-Ornithine in the tobacco material”;
In claim 9, “L-Leucine in an amount that is more than 2 times, preferably more than 4 times, an initial amount of L-Leucine” is interpreted as “L-Leucine in an amount that is more than 2 times an initial amount of L-Leucine”;
In claim 9, “L-Lysine in an amount that is more than 2 times, preferably more than 6 times, an initial amount of L-Lysine” is interpreted as “L-Lysine in an amount that is more than 2 times an initial amount of L-Lysine”;
In claim 9, “a fermentation index is more than 50, preferably more than 100, more preferably more than 250, more preferably more 400” is interpreted as “a fermentation index is more than 50”;
In claim 9, “at least 1 microgram per gram, preferably at least 2 micrograms per gram, more preferably at least 2.5 micrograms per gram of Indole-3 Lactic Acid in total dry weight basis” is interpreted as “at least 1 microgram per gram of Indole-3 Lactic Acid in total dry weight basis”;
In claim 13, “a tobacco material containing between about 2.5 percent by weight in total dry weight basis and 100 percent by weight in total dry weight basis, preferably at least about 4 percent by weight in total dry weight basis , preferably at least about 10 percent by weight in total dry weight basis, preferably at least about 20 percent by weight in total dry weight basis of the tobacco material” is interpreted as “a tobacco material containing between about 2.5 percent by weight in total dry weight basis and 100 percent by weight in total dry weight basis of a the tobacco material”.
Claims 2-8 are indefinite due to their dependence from claim 1. Claim 5 is indefinite due to its dependence from claim 4. Claims 10-13 are indefinite due to their dependence from claim 9.
Further regarding claim 2, the claim states an option for “measuring the initial content of . . . fermentation index”. One having ordinary skill in the art would not understand how to interpret this option as Applicant defined the fermentation index in claim 1, from which claim 2 depends, as a metric based on both initial and final values. As such, there is no “initial content” of fermentation index.
Further regarding claim 9, the limitation “Lactic Acid in an amount that is more than 10 times . . . an initial amount of Lactic Acid in the tobacco material” is indefinite because claim 9 is directed to a product and not a method, so one having ordinary skill in the art would not understand what is intended by “an initial amount” for the claimed product (when presented with a product in its final form, there is no way for one having ordinary skill in the art to conclusively determine what “an initial amount” may have been for that product, in order to determine whether or not it meets the claimed limitation). For the purpose of this Office action, “Lactic Acid in an amount that is more than 10 times . . . an initial amount of Lactic Acid in the tobacco material” is interpreted as “Lactic Acid”.
Further regarding claim 9, the limitation “Reducing Sugars in an amount that is lower than 0.5 . . . an initial amount of Reducing Sugars in the tobacco material” is indefinite because claim 9 is directed to a product and not a method, so one having ordinary skill in the art would not understand what is intended by “an initial amount” for the claimed product (when presented with a product in its final form, there is no way for one having ordinary skill in the art to conclusively determine what “an initial amount” may have been for that product, in order to determine whether or not it meets the claimed limitation). For the purpose of this Office action, “Reducing Sugars in an amount that is lower than 0.5 . . . an initial amount of Reducing Sugars in the tobacco material” is interpreted as “Reducing Sugars”.
Further regarding claim 9, the limitation “Indole-3 Lactic Acid in an amount that is more than 5 times . . . an initial amount of Indole-3 Lactic Acid in the tobacco material” is indefinite because claim 9 is directed to a product and not a method, so one having ordinary skill in the art would not understand what is intended by “an initial amount” for the claimed product (when presented with a product in its final form, there is no way for one having ordinary skill in the art to conclusively determine what “an initial amount” may have been for that product, in order to determine whether or not it meets the claimed limitation). For the purpose of this Office action, “Indole-3 Lactic Acid in an amount that is more than 5 times . . . an initial amount of Indole-3 Lactic Acid in the tobacco material” is interpreted as “Indole-3 Lactic Acid”.
Further regarding claim 9, the limitation “caffeic acid in an amount that is more than 4 times . . . an initial amount of caffeic acid in the tobacco material” is indefinite because claim 9 is directed to a product and not a method, so one having ordinary skill in the art would not understand what is intended by “an initial amount” for the claimed product (when presented with a product in its final form, there is no way for one having ordinary skill in the art to conclusively determine what “an initial amount” may have been for that product, in order to determine whether or not it meets the claimed limitation). For the purpose of this Office action, “caffeic acid in an amount that is more than 4 times . . . an initial amount of caffeic acid in the tobacco material” is interpreted as “caffeic acid”.
Further regarding claim 9, the limitation “quinic acid in an amount that is more than 2 times . . . an initial amount of quinic acid in the tobacco material” is indefinite because claim 9 is directed to a product and not a method, so one having ordinary skill in the art would not understand what is intended by “an initial amount” for the claimed product (when presented with a product in its final form, there is no way for one having ordinary skill in the art to conclusively determine what “an initial amount” may have been for that product, in order to determine whether or not it meets the claimed limitation). For the purpose of this Office action, “quinic acid in an amount that is more than 2 times . . . an initial amount of quinic acid in the tobacco material” is interpreted as “quinic acid”.
Further regarding claim 9, the limitation “asparagine in an amount that is lower than 0.5 . . . an initial amount of asparagine in the tobacco material” is indefinite because claim 9 is directed to a product and not a method, so one having ordinary skill in the art would not understand what is intended by “an initial amount” for the claimed product (when presented with a product in its final form, there is no way for one having ordinary skill in the art to conclusively determine what “an initial amount” may have been for that product, in order to determine whether or not it meets the claimed limitation). For the purpose of this Office action, “asparagine in an amount that is lower than 0.5 . . . an initial amount of asparagine in the tobacco material” is interpreted as “asparagine”.
Further regarding claim 9, the limitation “Glutamine in an amount that is lower than 0.5 . . . an initial amount of Glutamine in the tobacco material” is indefinite because claim 9 is directed to a product and not a method, so one having ordinary skill in the art would not understand what is intended by “an initial amount” for the claimed product (when presented with a product in its final form, there is no way for one having ordinary skill in the art to conclusively determine what “an initial amount” may have been for that product, in order to determine whether or not it meets the claimed limitation). For the purpose of this Office action, “Glutamine in an amount that is lower than 0.5 . . . an initial amount of Glutamine in the tobacco material” is interpreted as “Glutamine”.
Further regarding claim 9, the limitation “L-Ornithine is more than 10 times . . . an initial amount of L-Ornithine in the tobacco material” is indefinite because claim 9 is directed to a product and not a method, so one having ordinary skill in the art would not understand what is intended by “an initial amount” for the claimed product (when presented with a product in its final form, there is no way for one having ordinary skill in the art to conclusively determine what “an initial amount” may have been for that product, in order to determine whether or not it meets the claimed limitation). For the purpose of this Office action, “L-Ornithine is more than 10 times . . . an initial amount of L-Ornithine in the tobacco material” is interpreted as “L-Ornithine”.
Further regarding claim 9, the limitation “L-Leucine in an amount that is more than 2 times . . . an initial amount of L-Leucine” is indefinite because claim 9 is directed to a product and not a method, so one having ordinary skill in the art would not understand what is intended by “an initial amount” for the claimed product (when presented with a product in its final form, there is no way for one having ordinary skill in the art to conclusively determine what “an initial amount” may have been for that product, in order to determine whether or not it meets the claimed limitation). For the purpose of this Office action, “L-Leucine in an amount that is more than 2 times . . . an initial amount of L-Leucine” is interpreted as “L-Leucine”.
Further regarding claim 9, the limitation “L-Lysine in an amount that is more than 2 times . . . an initial amount of L-Lysine” is indefinite because claim 9 is directed to a product and not a method, so one having ordinary skill in the art would not understand what is intended by “an initial amount” for the claimed product (when presented with a product in its final form, there is no way for one having ordinary skill in the art to conclusively determine what “an initial amount” may have been for that product, in order to determine whether or not it meets the claimed limitation). For the purpose of this Office action, “L-Lysine in an amount that is more than 2 times . . . an initial amount of L-Lysine” is interpreted as “L-Lysine”.
Further regarding claim 9, claim 9 recites the limitation "the non-fermented tobacco material" in line. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office action, “wherein the fermentation index is obtained dividing the ratio between the content of Lactic Acid in the tobacco material and the content of Lactic Acid in the non-fermented tobacco material by the ratio between the content of Reducing Sugars in the tobacco material and the content of Reducing Sugars in the non-fermented tobacco material” is interpreted as “wherein the fermentation index is obtained dividing the ratio between the content of Lactic Acid in the tobacco material and the content of Lactic Acid in a non-fermented tobacco material by the ratio between the content of Reducing Sugars in the tobacco material and the content of Reducing Sugars in the non-fermented tobacco material”.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 6, and 7 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 8 and 9 of prior U.S. Patent No. 12,672,666. This is a statutory double patenting rejection.
18/705,216 (Instant Application)
US 12,672,666 B2
Claim 1
Method for treating tobacco material, the method comprising:
providing a tobacco material;
fermenting the tobacco material to obtain fermented tobacco material, the fermenting step including:
incubating the tobacco material under anaerobic conditions;
stopping the fermentation when at least one of the following conditions is satisfied:
the content of asparagine is lower than 0.5 an initial amount or asparagine in the tobacco material.
Claim 8
The method according to claim 1 (A method for treating tobacco material, the method comprising:
fermenting the tobacco material to obtain treated tobacco material, including:
incubating the tobacco material under anaerobic conditions;
applying a pressure to the tobacco material comprised between 1000 kilograms per square meter and 4000 kilograms per square meter;
keeping the moisture content of the tobacco material comprised between 25 percent in weight and 40 percent in weight of the total weight of the tobacco material;
wherein the fermenting lasts at least two months.),
wherein the amount of asparagine in the treated tobacco material becomes at least 50 percent lower than the amount of asparagine contained in the same tobacco material before treatment.
Claim 1
Method for treating tobacco material, the method comprising:
providing a tobacco material;
fermenting the tobacco material to obtain fermented tobacco material, the fermenting step including:
incubating the tobacco material under anaerobic conditions;
stopping the fermentation when at least one of the following conditions is satisfied:
the content of Reducing Sugars is lower than 0.5 an initial amount of Reducing Sugars in the tobacco material.
Claim 9
The method according to claim 1 (A method for treating tobacco material, the method comprising:
fermenting the tobacco material to obtain treated tobacco material, including:
incubating the tobacco material under anaerobic conditions;
applying a pressure to the tobacco material comprised between 1000 kilograms per square meter and 4000 kilograms per square meter;
keeping the moisture content of the tobacco material comprised between 25 percent in weight and 40 percent in weight of the total weight of the tobacco material;
wherein the fermenting lasts at least two months.),
wherein the amount of reducing sugars in the treated tobacco material becomes at least 50 percent lower than the amount of reducing sugars contained in the same tobacco material before treatment.
Claim 6
Method according to claim 1, wherein during the fermenting step it is provided for applying a pressure to the tobacco material comprised between 1000 kilograms per square meter and 15000 kilograms per square meter.
Claim 8
See mapping of the method of claim 1 of the instant application to claim 8 of US 12,672,666 B2 above, where claim 8 also includes:
applying a pressure to the tobacco material comprised between 1000 kilograms per square meter and 4000 kilograms per square meter.
Claim 6
Method according to claim 1, wherein during the fermenting step it is provided for applying a pressure to the tobacco material comprised between 1000 kilograms per square meter and 15000 kilograms per square meter.
Claim 9
See mapping of the method of claim 1 of the instant application to claim 9 of US 12,672,666 B2 above, where claim 9 also includes:
applying a pressure to the tobacco material comprised between 1000 kilograms per square meter and 4000 kilograms per square meter.
Claim 7
Method according to claim 1, wherein it is provided for continuing the fermenting step for a fermentation time of at least 1 month, preferably at least 2 months.
Claim 8
See mapping of the method of claim 1 of the instant application to claim 8 of US 12,672,666 B2 above, where claim 8 also includes:
wherein the fermenting lasts at least two months.
Claim 7
Method according to claim 1, wherein it is provided for continuing the fermenting step for a fermentation time of at least 1 month, preferably at least 2 months.
Claim 9
See mapping of the method of claim 1 of the instant application to claim 9 of US 12,672,666 B2 above, where claim 9 also includes:
wherein the fermenting lasts at least two months.
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 1-4, 9-10, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Di Giacomo et al. (GB 2542623 A, provided by applicant with IDS filed 4/26/2024).
Regarding claim 1, Di Giacomo discloses a method for treating tobacco material, the method comprising:
providing a tobacco material (“Burley tobacco stems”, Page 22, Line 27);
fermenting the tobacco material to obtain fermented tobacco material (“The tobacco stems were left to ferment”, Page 22, Line 32), the fermenting step including:
incubating the tobacco material under anaerobic conditions (“flushed with inert gas and sealed against oxygen ingress”, Page 22, Lines 31-32, which creates “anaerobic conditions”, Page 16, Lines 32-33);
stopping the fermentation when the content of Lactic Acid is more than 10 times an initial amount of Lactic Acid in the tobacco material (“Lactic acid: 0.03% before fermentation 2.22% after fermentation”, Page 23, Line 9).
Regarding claim 2, Di Giacomo discloses the method according to claim 1 as stated above. Di Giacomo further discloses an initial measuring step for measuring the initial content of Lactic Acid in the tobacco material (“Lactic acid: 0.03% before fermentation 2.22% after fermentation”, Page 23, Line 9).
Regarding claim 3, Di Giacomo discloses the method according to claim 1 as stated above. Di Giacomo further discloses a measuring step for measuring the content of Lactic Acid in the tobacco material during the fermenting step (“measuring the level of . . . lactic acid . . . during said fermentation”, Claim 15).
Regarding claim 4, Di Giacomo discloses the method according to claim 1 as stated above. Further, the limitation of claim 4 is a contingent limitation, as the limitation is only required “if the tobacco material contains dark tobacco”. The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met (MPEP § 2111.04(II)). As the tobacco material of Di Giacomo is not a dark tobacco (“Burley tobacco”, Page 22, Line 27, which is a light tobacco1), the condition precedent is not met; therefore, Di Giacomo anticipates claim 4.
Regarding claim 9, Di Giacomo discloses a tobacco material (“Burley tobacco stems”, Page 22, Line 27, where “The tobacco stems were left to ferment”, Page 22, Line 32) comprising:
Lactic Acid (“Lactic acid: 0.03% before fermentation 2.22% after fermentation”, Page 23, Line 9).
Regarding claim 10, Di Giacomo discloses the tobacco material according to claim 9 as stated above. Di Giacomo further discloses wherein said tobacco material is obtained by a process comprising fermenting the tobacco material to obtain treated tobacco material (“The tobacco stems were left to ferment”, Page 22, Line 32), including: incubating the tobacco material under anaerobic conditions (“flushed with inert gas and sealed against oxygen ingress”, Page 22, Lines 31-32, which creates “anaerobic conditions”, Page 16, Lines 32-33).
Regarding claim 13, Di Giacomo discloses the tobacco material according to claim 9 as stated above. Di Giacomo further discloses an aerosol generating article (“‘tobacco product’ includes . . . aerosol-generating products”, Page 22, Lines 15-17) comprising a tobacco material containing between about 2.5 percent by weight in total dry weight basis and 100 percent by weight in total dry weight basis of the tobacco material according to claim 9 (“‘tobacco product’ encompasses compositions . . . consisting essentially of the dried fermented tobacco stem material obtained by the processes of the invention”, Page 22, Lines 12-14)
Claims 9 and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Di Giacomo et al. (GB 2548543 A, provided by applicant with IDS filed 4/26/2024).
Regarding claim 9, Di Giacomo discloses a tobacco material (“slurry made with cured Virginia tobacco”, Page 18, Lines 1-2) comprising:
Lactic Acid (“Lactic acid was the major fermentation product in fermented tobacco, with yields of 140 to 200 g/kg dry matter.”, Page 18, Lines 3-4).
Regarding claim 11, Di Giacomo discloses the tobacco material according to claim 9 as stated above. Di Giacomo further discloses wherein the tobacco material is cured (“cured Virginia tobacco”, Page 18, Line 2).
Regarding claim 12, Di Giacomo discloses the tobacco material according to claim 9 as stated above. Di Giacomo further discloses wherein the tobacco material is grinded (“Tobacco slurry was prepared by suspending ground tobacco”, Page 18, Line 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.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Di Giacomo et al. (GB 2542623 A) as applied to claim 4 above, and further in view of Hallagan (“The use of diacetyl (2,3-butanedione) and related flavoring substances as flavorings added to foods—Workplace safety issues”, John B. Hallagan, Toxicology, Volume 388, 2017, Pages 1-6, https://doi.org/10.1016/j.tox.2017.05.010, a copy of which is provided for reference).
Regarding claim 5, Di Giacomo discloses the method according to claim 4, as stated above.
Di Giacomo does not disclose an initial measurement step for measuring the initial content of 2,3 butanediol or diacetyl in the tobacco material before the fermentation so as to obtain an initial amount respectively of 2,3 butanediol or diacetyl in the tobacco material.
The problem faced by Applicant concerns “a method for treating tobacco . . . by fermentation” (Page 1, Lines 1-2 of Applicant’s Specification) such that the method “does not involve the addition of external flavourings to the tobacco itself” (Page 1, Line 17 of Applicant’s Specification).
Hallagan discloses that diacetyl is a flavoring (“Diacetyl is the individual flavoring substance that most smells and tastes like butter”, § 2. Flavorings added to foods) and that diacetyl is present in fermented tobacco without being an external flavoring to the tobacco (“Diacetyl is a natural product of fermentation, and is present in tobacco smoke”, § 3. Diacetyl and related flavoring substances). As such, Hattagan is reasonably pertinent to the problem faced by the inventor.
Hattagan states that diacetyl exposure may present a health risk (“the association of diacetyl exposure to the presence of severe respiratory illness”, § 4. Respiratory health and safety in flavor and food manufacturing). As such, one of ordinary skill in the art would have understood that there was a benefit to monitoring the amount of diacetyl in tobacco material in order to ensure product sent to consumers does not have unsafe levels of diacetyl. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to measure the initial content of diacetyl in the tobacco material of Di Giacomo before the fermentation so as to obtain an initial amount of diacetyl in the tobacco material in order to obtain this benefit.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Di Giacomo et al. (GB 2542623 A) as applied to claim 1 above.
Regarding claim 6, Di Giacomo discloses the method according to claim 1 as stated above. However, Di Giacomo does not explicitly state the amount of pressure applied to the tobacco material during the fermenting step. One of ordinary skill in the art would have understood that there was a benefit to applying only atmospheric pressure to the tobacco material in that no vacuum systems would need to be provided to achieve pressures lower than atmospheric pressure and no compressor systems would need to be provided to achieve pressures higher than atmospheric pressure. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply only atmospheric pressure to the tobacco material during the fermenting step in order to obtain this benefit. Atmospheric pressure, which corresponds to 10,332 kilograms per square meter (1 atm ≈ 10,332 kg\m2), falls within the claimed range of between 1000 kilograms per square meter and 15000 kilograms per square meter (MPEP § 2131.03).
Regarding claim 7, Di Giacomo discloses the method according to claim 1 as stated above. Di Giacomo further discloses wherein it is provided for continuing the fermenting step for a fermentation time of about 4 days to about 42 days (Page 2, Line 13). Since the range of about 4 days to about 42 days overlaps the claimed range of at least 1 month, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 8, Di Giacomo discloses the method according to claim 1 as stated above. Di Giacomo further discloses wherein during the fermenting step it is provided for keeping the temperature of the tobacco material in a range from about 15 degrees Celsius to about 45 degrees Celsius (“temperature of from about 15°C to about 45°C”, Page 2, Lines 13-14). Since the range of from about 15 degrees Celsius to about 45 degrees Celsius overlaps the claimed range of between 21 degrees Celsius and 35 degrees Celsius, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Conclusion
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/COURTNEY G CULBERT/Examiner, Art Unit 1747
1 “Burley tobacco is a renowned heirloom variety known for its light-colored, thick, and robust leaves that are primarily used in cigarette and pipe tobacco production” (“Burley Tobacco”, Urban Farmer, https://www.ufseeds.com/search?cgid=Burley%20Tobacco).
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