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 1-6 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 § 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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McFarlane (US 20170150751 A1).
Regarding Claim 1, McFarlane teaches a method for preparing a tobacco composition ([0026]), comprising:
a heating step of heating a tobacco leaf (Tobacco leaf of any type is provided and heated. [0031]-[0032], [0035])
for not less than 30 minutes (The tobacco material is heated for at least 30 minutes. [0035])
at a temperature of not lower than 80°C (The tobacco material is heated to a temperature of 80°C or more. [0035])
in the presence of water (Water may be added to the tobacco material prior to the heating step or during the heating step by introducing steam. [0051]-[0053]).
Regarding Claim 2, McFarlane teaches a method for preparing a tobacco composition wherein the tobacco leaf is a fresh leaf (Any tobacco may be used, such as shredded leaves or shredded ground tobacco/botanical plant material. [0032]).
Regarding Claim 3, McFarlane teaches a method for preparing a tobacco composition wherein the tobacco leaf is a cured leaf (Any tobacco may be used, such as stem and lamina derived from various sources and curing types. [0032]).
Claim 6 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pontes (US 20200187551 A1, cited in IDS dated 8/16/24).
Regarding Claim 6, Pontes discloses a method for extracting solanone ([0034], [0074]), the method comprising:
a heating step of heating a tobacco leaf (The method of extracting volatile compounds from tobacco material involves subjecting tobacco plant material, such as a tobacco leaf, to a distillation step and an extracting step. [0034], [0039])
for not less than 30 minutes (The distillation step and the extraction step are carried out in a period of time from about 8 to about 15 hours. [0066])
at a temperature of not lower than 80°C (The distillation step is carried out at a temperature of about 100°C to 130°C. [0069])
in the presence of water (The distillation step involves subjecting the product to steam. [0053]); and
an extraction step of extracting solanone from the tobacco leaf which has been subjected to the heating step (The compound extracted from the tobacco material during the extraction step may be solanone. [0034], [0074]).
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over McFarlane.
Regarding Claim 4, McFarlane teaches a method for preparing a tobacco composition as discussed above in Claim 1, wherein:
the heating step includes heating the tobacco leaf at a temperature of not lower than 80°C (The tobacco material is heated to a temperature of 80°C or more. [0035]) and
not higher than 100°C (The tobacco material may be heated to 100°C. [0036]).
McFarlane does not explicitly disclose wherein the heating step occurs under atmospheric pressure. However, McFarlane teaches that the tobacco material is heated in a vessel and any suitable vessel can be used. ([0031]). Wherein any suitable vessel may be used, an open or unsealed vessel may be used such that the heating occurs under atmospheric pressure. Moreover, where McFarlane is silent on the pressure conditions of the vessel during the heating step, one of ordinary skill in the art would assume the tobacco composition is heated under atmospheric pressure.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Woodman (US 20150366262 A1).
Regarding Claim 5, Woodman discloses a method for producing a tobacco material ([0029]), the method comprising:
a heating step of heating a tobacco leaf (In a first step S101, a tobacco bale of unprocessed tobacco leaves is provided. [0030]. A second conditioning step S106 is carried out on the tobacco material, during which the tobacco material is heated. [0035])
for not less than 30 minutes (The second conditioning step may be carried out over a period between 10 minutes and 150 minutes. [0035]. 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))
at a temperature of not lower than 80°C (The second conditioning step may be carried out at a temperature between 28°C and 140°C. [0035]. 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))
in the presence of water (Before the second conditioning step S106, a first conditioning step S103 is carried out in which the tobacco material is exposed to saturated water steam such that added water content would be present during the second conditioning step. [0031]); and
a curing step of subjecting, to a curing treatment, the tobacco leaf which has been subjected to the heating step (Subsequent to the second conditioning step, the tobacco material enters drying stage S109 in which water evaporates and moisture content is reduced. [0045]).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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