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 .
Status of the Claims
Claims 1-8 and 14-25 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
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.
Claims 1-8, 19, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Lauenstein (US 20240008523 A1).
Regarding Claim 1, Lauenstein discloses a production method for a tobacco flavored liquid for use in an aerosol-generating flavor inhaler ([0001], [0025]), the method comprising:
heating a tobacco material to vaporize flavor components from the tobacco material (Tobacco material is heated in an extraction chamber to release volatile compounds from the material. [0014]);
dissolving a gas containing the flavor components in a first liquid which serves as an aerosol source to obtain a flavor component-containing liquid (The volatile compounds released from the tobacco material during heating are collected in a collecting step. [0014]. In the collecting step, an inert gas flow containing the volatile compounds may be directed into a non-aqueous extraction liquid solvent to form a liquid tobacco extract. [0099]); and
distilling the flavor component-containing liquid to obtain the tobacco flavored liquid (The water content in the liquid tobacco extract may be reduced using distillation. [0115]).
Lauenstein does not explicitly disclose wherein the flavor component-containing liquid is distilled at a temperature below a boiling point of the first liquid. However, wherein distillation is performed to reduce the water content of the liquid tobacco extract ([0115]), it would be obvious to one having ordinary skill in the art that the distillation would be conducted at a temperature above the boiling point of water and below the boiling point of the non-aqueous solvent, such as one or more of the non-aqueous solvents disclosed by Lauenstein (In the step of collecting the volatile compounds, a non-aqueous solvent may be used, such as: glycerin, propylene glycol or a combination thereof. [0099]). It is reasonably expected that the distillation would operate at below a boiling point of the first liquid in order to retain the liquid in a liquid state and vaporize the water for removal from the liquid tobacco extract.
Regarding Claim 2, Lauenstein discloses a production method for a tobacco flavored liquid but does not explicitly disclose wherein distilling is conducted at a temperature higher than 100 °C. However, as discussed above, wherein distillation is performed to reduce the water content of the liquid tobacco extract ([0115]), it would be obvious to one having ordinary skill in the art that the distillation would be conducted at a temperature above the boiling point of water and below the boiling point of the non-aqueous solvent, such as one or more of the non-aqueous solvents disclosed by Lauenstein (The non-aqueous solvent may be: glycerin, propylene glycol or a combination thereof. [0099]). Moreover, wherein the boiling temperature of water at atmospheric conditions is 100 °C, it would be obvious to one having ordinary skill in the art that the distilling would be conducted at a temperature higher than 100 °C.
Regarding Claim 3, Lauenstein discloses a production method for a tobacco flavored liquid but does not disclose wherein the distilling is conducted at a temperature equal to or above the boiling point of the first liquid minus 40 °C. However, given that the distillation temperature directly effects the efficiency of the distillation process and thereby the final water content of the tobacco flavored liquid, a person having ordinary skill in the art would be motivated to perform routine optimization. Moreover, a person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred distillation temperature and efficiency of the distillation process. Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the distillation process disclosed in Lauenstein, would arrive at the distillation temperature as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
Regarding Claim 4, Lauenstein discloses a production method for a tobacco flavored liquid wherein the first liquid is propylene glycol, glycerin, or a mixture of propylene glycol and glycerin (In the step of collecting the volatile compounds, a non-aqueous extraction liquid may be used, such as: glycerin, propylene glycol or a combination thereof. [0099]).
Regarding Claim 5, Lauenstein discloses a production method for a tobacco flavored liquid but does not disclose wherein the distilling is conducted at a temperature in a range of 150 to 180 °C. However, given that the distillation temperature directly effects the efficiency of the distillation process and thereby the final water content of the tobacco flavored liquid, a person having ordinary skill in the art would be motivated to perform routine optimization. Moreover, a person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred distillation temperature and efficiency of the distillation process. Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the distillation process disclosed in Lauenstein, would arrive at the range of distillation temperatures as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
Regarding Claim 6, Lauenstein discloses a production method for a tobacco flavored liquid further comprising adding a second liquid which serves as an aerosol source to the tobacco material before the heating (In the step of collecting the volatile compounds, a non-aqueous extraction liquid may be used, such as a combination of glycerin and propylene glycol. [0099]. "The use of an aerosol former as the liquid solvent is potentially beneficial because the aerosol former can be retained as a diluting agent in the final liquid tobacco extract" [0099]).
Regarding Claim 7, Lauenstein discloses a production method for a tobacco flavored liquid wherein the second liquid is propylene glycol, glycerin, or a mixture of propylene glycol and glycerin (In the step of collecting the volatile compounds, a non-aqueous extraction liquid may be used, such as a combination of glycerin and propylene glycol. [0099]).
Regarding Claim 8, Lauenstein discloses a production method for a tobacco flavored liquid wherein the heating is conducted at a temperature of 150 to 400 °C (The tobacco material is heated in the extraction chamber at a temperature of between about 120 and 160 °C. [0014]). A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I).
Regarding Claim 19, Lauenstein discloses a production method for a tobacco flavored liquid wherein the dissolving is conducted by causing the gas containing the flavor components to bubble through the first liquid (Wherein during the collection step the inert gas flow containing the volatile compounds is directed into a container of the non-aqueous extraction liquid, such that the dissolving would be caused by the gas bubbling through the first liquid. [0099]).
Regarding Claim 22, Lauenstein discloses a production method for a tobacco flavored liquid wherein the tobacco material is cut tobacco (The tobacco material may be cut tobacco. [0075]).
Regarding Claim 23, Lauenstein discloses a production method for a tobacco flavored liquid wherein the heating is conducted while controlling an oxygen concentration in air supplied to the tobacco material (Heating may occur while the concentration of oxygen in the heating chamber is controlled. [0068], [0072]).
Claims 15-18, 20, 21 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Lauenstein as applied to Claim 1 above, and further in view of Karles (US 20170245543 A1).
Regarding Claim 15, Lauenstein discloses the production method for a tobacco flavored liquid as disclosed in Claim 8, but does not explicitly disclose wherein the heating is conducted at a temperature of 160 to 230 °C. However, Karles teaches a similar production method for a tobacco flavored liquid ([0003]), comprising:
heating a tobacco material to vaporize flavor components from the tobacco material (Tobacco material is heated to generate volatiles. [0004]);
dissolving a gas containing the flavor components in a first liquid which serves as an aerosol source to obtain a flavor component-containing liquid (A collecting step may comprise condensing the volatiles in a solvent, or absorbing the volatiles in a sorbent material and desorbing the volatiles in a solvent. [0006]-[0007], [0066]-[0069], [0073]); and
wherein the heating is conducted at a temperature of 160 to 230 °C (The heating step includes heating tobacco material to a temperature between about 50 and 250 °C. [0034]). A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the method of Lauenstein such that the heating step includes heating the tobacco material to a temperature between about 50 and 250 °C as taught by Karles because Lauenstein and Karles are both directed to production methods for a tobacco flavored liquid, Karles teaches that a broader range of temperatures may be used such that the temperature of the heating step may vary from 50 to 250 °C depending on the amount, nature, and age of the tobacco heated ([0034]), and this merely involves applying a known method step to a similar method to yield predictable results.
Regarding Claim 16, Lauenstein discloses the production method for a tobacco flavored liquid as disclosed in Claim 1, but does not explicitly disclose wherein the heating is conducted for a period of 5 to 60 minutes. However, Karles teaches a similar production method for a tobacco flavored liquid ([0003]), comprising:
heating a tobacco material to vaporize flavor components from the tobacco material (Tobacco material is heated to generate volatiles. [0004]);
dissolving a gas containing the flavor components in a first liquid which serves as an aerosol source to obtain a flavor component-containing liquid (A collecting step may comprise condensing the volatiles in a solvent, or absorbing the volatiles in a sorbent material and desorbing the volatiles in a solvent. [0006]-[0007], [0066]-[0069], [0073]); and
wherein the heating is conducted for a period of 5 to 60 minutes (The heating may be carried out for up to 60 minutes. [0034]). A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the method of Lauenstein such that the heating step includes heating the tobacco material for up to 60 minutes as taught by Karles because Lauenstein and Karles are both directed to production methods for a tobacco flavored liquid, Karles teaches that the time of the heating step may vary up to 60 minutes depending on the amount, nature, and age of the tobacco heated and the temperature at which the tobacco is heated ([0034]), and this merely involves applying a known method step to a similar method to yield predictable results.
Regarding Claim 17, Lauenstein discloses the production method for a tobacco flavored liquid according to Claim 1, wherein the heating is conducted by any suitable method known to a skilled person ([0048]) and may be conducted in the presence of steam and an inert gas ([0064]), but does not explicitly disclose wherein the heating is conducted by supplying heated air to the tobacco material. However, Karles teaches a similar production method for a tobacco flavored liquid ([0003]), comprising:
heating a tobacco material to vaporize flavor components from the tobacco material (Tobacco material is heated to generate volatiles. [0004]);
dissolving a gas containing the flavor components in a first liquid which serves as an aerosol source to obtain a flavor component-containing liquid (A collecting step may comprise condensing the volatiles in a solvent, or absorbing the volatiles in a sorbent material and desorbing the volatiles in a solvent. [0006]-[0007], [0066]-[0069], [0073]); and
wherein the heating is conducted by supplying heated air to the tobacco material (Heating may be conducted by treating the tobacco to steam or a mixture of steam with air. [0031]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the method of Lauenstein such that the steam supplied during the heating step of Lauenstein is utilized to heat the tobacco material as taught by Karles because Lauenstein and Karles are both directed to production methods for a tobacco flavored liquid, Karles teaches that heating may be conducted by supplying heated air and/or steam to the tobacco material ([0031]), and this merely involves applying a known method step to a similar method to yield predictable results.
Regarding Claim 18, Lauenstein further discloses wherein:
the heating step may be carried out in an inert atmosphere using a flow of inert gas and water and/or steam ([0064]);
water may be atomized in a flow of compressed inert gas to be sprayed into the extraction chamber ([0060]-[0063]); and
the spray of atomized water may be generated from a plurality of spray nozzles ([0051]).
Therefore, where the steam supplied during the heating step of Lauenstein is used to heat the tobacco material as taught by Karles ([0031]), and the steam is supplied by the plurality of spray nozzles as taught by Lauenstein, the plurality of spray nozzles comprises a porous member such that the heating is conducted by supplying the heated air to the tobacco material via a porous member.
Regarding Claim 20, Lauenstein discloses the production method for a tobacco flavored liquid as disclosed in Claim 19, but does not explicitly disclose wherein the bubbling is conducted via a porous member. However, Karles teaches a similar production method for a tobacco flavored liquid ([0003]), comprising:
heating a tobacco material to vaporize flavor components from the tobacco material (Tobacco material is heated to generate volatiles. [0004]);
dissolving a gas containing the flavor components in a first liquid which serves as an aerosol source to obtain a flavor component-containing liquid (A collecting step may comprise condensing the volatiles in a solvent, or absorbing the volatiles in a sorbent material and desorbing the volatiles in a solvent. [0006]-[0007], [0066]-[0069], [0073]); and
wherein the dissolving is conducted by causing the gas containing the flavor components to bubble through the first liquid (The collecting step may include bubbling the volatiles through a solvent. [0069], [0073]),
wherein the bubbling is conducted via a porous member (The collecting step may include bubbling the volatiles through a solvent trap and filter. [0069], [0073]. The volatiles may also be absorbed by a sorbent which may comprise a porous material. [0028], [0063]. The volatiles may be desorbed from the porous material using a solvent and bubbling the volatiles through a solvent. [0069]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the method of Lauenstein such that the bubbling is conducted via a porous member as taught by Karles because Lauenstein and Karles are both directed to production methods for a tobacco flavored liquid, Karles teaches that the collection step may include bubbling the gas via a porous member ([0069], [0073]), and this merely involves applying a known method step to a similar method to yield predictable results.
Regarding Claim 21, Lauenstein discloses the production method for a tobacco flavored liquid as disclosed in Claim 19, but does not explicitly disclose wherein the bubbling is conducted with a plurality of beads dispersed in the first liquid. However, Karles teaches a similar production method for a tobacco flavored liquid ([0003]), comprising:
heating a tobacco material to vaporize flavor components from the tobacco material (Tobacco material is heated to generate volatiles. [0004]);
dissolving a gas containing the flavor components in a first liquid which serves as an aerosol source to obtain a flavor component-containing liquid (A collecting step may comprise condensing the volatiles in a solvent, or absorbing the volatiles in a sorbent material and desorbing the volatiles in a solvent. [0006]-[0007], [0066]-[0069], [0073]); and
wherein the dissolving is conducted by causing the gas containing the flavor components to bubble through the first liquid (The collecting step may include bubbling the volatiles through a solvent. [0069], [0073]),
wherein the bubbling is conducted with a plurality of beads dispersed in the first liquid (The volatiles may be absorbed by a sorbent which may comprise a plurality of beads. [0028], [0063]. The volatiles may be desorbed from the beads using a solvent and bubbling the volatiles through a solvent. [0069]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the method of Lauenstein such that the bubbling is conducted with a plurality of beads as taught by Karles because Lauenstein and Karles are both directed to production methods for a tobacco flavored liquid, Karles teaches that the collection step may include a plurality of beads ([0069], [0073]), and this merely involves applying a known method step to a similar method to yield predictable results.
Regarding Claim 24, Lauenstein discloses a production method for a tobacco flavored liquid for use in an aerosol-generating flavor inhaler ([0001], [0025]), the method comprising:
adding a second liquid which serves as an aerosol source to a tobacco material (An aerosol former may be added to the tobacco material before the material is heated. [0081]);
heating the tobacco material to vaporize flavor components from the tobacco material (Tobacco material is heated in an extraction chamber to release volatile compounds from the material. [0014]);
dissolving a gas containing the flavor components in a first liquid which serves as an aerosol source to obtain a flavor component-containing liquid (Volatile compounds released from the tobacco material during heating are collected in a collecting step. [0014]. In the collecting step, an inert gas flow containing the volatile compounds may be directed into a non-aqueous extraction liquid solvent. [0099])
wherein the dissolving is conducted by causing the gas containing the flavor components to bubble through the first liquid (Wherein during the collection step the inert gas flow containing the volatile compounds is directed into a container of the non-aqueous extraction liquid, the dissolving is caused by the gas bubbling through the first liquid. [0099]),
the first liquid being propylene glycol, glycerin, or a mixture of propylene glycol and glycerin and serving as an aerosol source (In the step of collecting the volatile compounds, a non-aqueous extraction liquid may be used, such as: glycerin, propylene glycol or a combination thereof. [0099]); and
distilling the flavor component-containing liquid to obtain the tobacco flavored liquid (The water content in the liquid tobacco extract may be reduced using distillation. [0115]).
Lauenstein does not explicitly disclose heating the tobacco material at a temperature of 160 to 230 °C or wherein the volatiles are bubbled via a porous member. However, Karles teaches a similar production method for a tobacco flavored liquid ([0003]), comprising:
adding a second liquid which serves as an aerosol source to a tobacco material (A solvent may be added to the tobacco material prior to the heating step, such as glycerine or propylene glycol. [0005]);
heating a tobacco material to vaporize flavor components from the tobacco material (Tobacco material is heated to generate volatiles. [0004]);
dissolving a gas containing the flavor components in a first liquid which serves as an aerosol source to obtain a flavor component-containing liquid (A collecting step may comprise condensing the volatiles in a solvent, or absorbing the volatiles in a sorbent material and desorbing the volatiles in a solvent. [0006]-[0007], [0066]-[0069], [0073])
wherein the bubbling is conducted via a porous member (The collecting step may include bubbling the volatiles through a solvent trap and filter. [0069], [0073]. The volatiles may also be absorbed by a sorbent which may comprise a porous material. [0028], [0063]. The volatiles may be desorbed from the porous material using a solvent and bubbling the volatiles through a solvent. [0069]); and
the first liquid being propylene glycol, glycerin, or a mixture of propylene glycol and glycerin and serving as an aerosol source (The solvent may include glycerin, propylene glycol, or a combination thereof. [0028]); and
wherein the heating is conducted at a temperature of 160 to 230 °C (The heating step includes heating tobacco material to a temperature between about 50 and 250 °C. [0034]). A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the method of Lauenstein such that the heating step includes heating the tobacco material to a temperature between about 50 and 250 °C and bubbling is conducted via a porous member as taught by Karles because Lauenstein and Karles are both directed to production methods for a tobacco flavored liquid, Karles teaches that a broader range of temperatures may be used such that the temperature of the heating step may vary from 50 to 250 °C depending on the amount, nature, and age of the tobacco heated ([0034]), Karles teaches that the collection step may include bubbling the gas via a porous member ([0069], [0073]), and this merely involves applying known method steps to a similar method to yield predictable results.
Lauenstein does not explicitly disclose distilling the flavor component-containing liquid at a temperature in a range of 150 to 180 °C. However, given that the distillation temperature directly effects the efficiency of the distillation process and thereby the final water content of the tobacco flavored liquid, a person having ordinary skill in the art would be motivated to perform routine optimization. Moreover, a person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred distillation temperature and efficiency of the distillation process. Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the distillation process disclosed in Lauenstein, would arrive at the range of distillation temperatures as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Lauenstein in view of Fagg (US 5065775 A).
Regarding Claim 25, Lauenstein discloses a method of producing a tobacco product ([0001]), the method comprising:
heating a tobacco material to vaporize flavor components from the tobacco material, leaving a post-heating tobacco material (Tobacco material is heated in an extraction chamber to release volatile compounds from the material, leaving a devolatilized tobacco material. [0014]);
dissolving a gas containing the flavor components in a first liquid which serves as an aerosol source to obtain a flavor component-containing liquid (Volatile compounds released from the tobacco material during heating are collected in a collecting step. [0014]. In the collecting step, an inert gas flow containing the volatile compounds may be directed into a non-aqueous extraction liquid solvent. [0099]);
distilling the flavor component-containing liquid to obtain the tobacco flavored liquid (The water content in the liquid tobacco extract may be reduced using distillation. [0115]); and
combining the post-heating tobacco material with a composition (The liquid tobacco extract can be used as an additive to add a nicotine to a composition. [0026]).
Lauenstein does not explicitly disclose wherein the flavor component-containing liquid is distilled at a temperature below a boiling point of the first liquid. However, wherein distillation is performed to reduce the water content of the liquid tobacco extract ([0115]), it would be obvious to one having ordinary skill in the art that the distillation would be conducted at a temperature above the boiling point of water and below the boiling point of the non-aqueous solvent, such as one or more of the non-aqueous solvents disclosed by Lauenstein (In the step of collecting the volatile compounds, a non-aqueous solvent may be used, such as: glycerin, propylene glycol or a combination thereof. [0099]).
Lauenstein does not explicitly disclose combining the post-heating tobacco material with the tobacco flavored liquid to form the reconstituted tobacco material. However, Fagg teaches a method of controlling the chemical composition of a tobacco material product (col 1, lines 39-40) by:
extracting compounds from tobacco material (col 1, lines 50-58), such as nicotine (col 2, lines 56-68),
processing the extracted compounds (col 1, lines 58-64), and
combining the extracted tobacco material with the processed extracted compounds to form a tobacco material product comprising a controlled chemical composition (col 1, lines 64-68; col 2, lines 1-23).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the method of Lauenstein such that the post-heating tobacco material is combined with the tobacco flavored liquid to form a reconstituted tobacco material product as taught by Fagg because Lauenstein and Fagg are both directed to production methods utilizing a tobacco flavored liquid, Fagg teaches that a reconstituted tobacco material comprising a controlled chemical composition may be formed by combining a post-heating tobacco material with an extracted tobacco flavored liquid (col 1, lines 50-68; col 2, lines 1-23), and this merely involves applying a known method step to a similar method to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 9:00-4:00.
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/JEFFREY A. BUCKMAN/ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
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