COMMISSIONER'S DECISION
UNOBVIOUS : In View of Applied Prior Art.
INSUFFICIENCY : Essential characteristic not defined in
claims.
Final Action erred on fact that the prior art disclosed tobacco
substitution mixtures comprising proteins and thermally degraded
carbohydrates. Proposed new claims fail to specify that the
composition comprises protein added to the modified carbohydrates.
FINAL ACTION : Modified.
-------------------
This decision deals with a request for review by the Commission-
er of Patents of the Examiner's Final Action dated September 13,
1973 on application 108,536 (Class 131-15). The application was
filed on March 23, 1971 in the name of Robert C. Anderson and
Robert A. Hall and is entitled "Improved Smoking Mixture."
This application relates to a tobacco substitute composed of a
modified carbohydrate as smoke-producing fuel combined with pro-
tein in which the weight ratio of protein to smoke-producing fuel
is in the range of 1:1 to 1:60.
In the prosecution terminated by the Final Action the Examiner
rejected all the claims as unpatentable over the following
references:
United States Patents
2,576,021 Nov. 21, 1951 Koree
3,369,551 Feb. 20, 1968 Carroll
In the Final Action the Examiner stated (in part):
Claim 1 is rejected as unpatentable in view of either the
Koree or Carroll disclosure of a tobacco substitute con-
taining a smoke producing fuel such as bagasse, processed
lettuce etc. and protein up to 5% in Koree and 9 to 22%
in Carroll by weight of the fuel. The fuel as taught by
Koree, contains gums, fats and waxes admixed in proportions
very close to proportions of these ingredients in the dried
tobacco plant.
The feature of a "modified carbohydrate" fuel now claimed
in claim 1 is not deemed to provide a patentable difference
in view of the Carroll disclosure of a carbohydrate base,
modified by a treatment such as water and solvent extraction.
The features set forth in the dependent claims 2 to 6 and 10,
relating to the combustible material and claims 7 to 9,
relating to the proteins are not deemed to bestow patent-
ability on the subject matter of claim 1 in view of the state
of the already known art exemplified by the cited references
and acknowledged in the preamble to the application.
The selection of specific compositions set forth in claims 2
to 10 is not deemed to be inventive, but rather within
means and possibilities of a man skilled in the art and
knowing tobacco substitute fuels such as degraded cellulose
or condensation products described in applicant's earlier
British patent 1,113,979 and Canadian 907,452, both
acknowledged on page 3 of the specification
The applicant in his response dated Nov. 20, 1973 stated (in part):
Of the two citations, Koree can be readily dismissed. The
patent fails to mention protein at all. The limiting figure
of "up to 5%" is applied to amino acids (e. g. glycine)
which are much simpler compounds than proteins, amino acids
being the units of which protein molecules are constructed.
However, proteins and amino acids are not equivalent in their
effect on smoke flavour. Finally, Koree does not disclose
any of the modified carbohydrates now found in amended
Claim 1. The Examiner is referred in this respect to the foot
of column 1 of the patent.
The Carroll patent also does not disclose the modified carbo-
hydrates of amended Claim 1. The Examiner is referred to
column 1, lines 62-70 of the patent. The treatment given
by Carroll to lettuce leaves, etc. is merely on extraction to
remove soluble matter and leave a residue of cellulose and nitrogen
compounds.
Thus, neither the Carroll nor Koree references describes the
smoking mixture of amended Claim l and the Examiner's
objection to Claim 1 on the ground of anticipation would appear to
fail. As Claim 1 is novel and all the subsequent claims are
dependent thereon, it follows that all of these claims are
also novel.
Turning now to the objection based on lack of invention,
Applicant considers that the Koree reference is not directly
relevant, because it does not disclose smoking mixtures
comprising carbohydrate and protein.
Thus, Applicant will consider the objection with reference
to the Carroll U.S. Patent No. 3,369,551, only.
...
The mixtures claimed in the amended Claims are not the
equivalent of the mixtures disclosed in U.S. Patent
No. 3,369,551 because they have to be made by quite
different methods. They are not obtainable by extraction
of any naturally occurring material. Instead it is
necessary to carry out a chemical reaction upon a pure
carbohydrate, giving a product which is no longer a
carbohydrate, and then to mix the product with pure
protein.
...
Thus the cigarette containing the thermally degraded
cellulose was technically superior to that containing
cellulose, thus justifying the Applicant's contention that
the amended claims define a patentable invention. The
prior art fails to suggest any reason why protein should
be mixed with the modified carbohydrates and the technical
advance is totally unexpected.
It is also noteworthy that the inclusion of small amounts
of protein in smoking mixtures based on the modified carbo-
hydrates does not significantly affect the smoke yield of
chemicals which are known to have an adverse effect on
health. Thus a comparative analysis of cigarette smoke from
a smoking mixture comprising thermally degraded cellulose and
from an otherwise identical mixture containing fat-free
casein showed that the yields of hydrogen sulphide, carbon
dioxide, carbon monoxide, total volatile matter, phenols,
formic acid, acetic acid and acetaldehyde were not significant-
ly different. There was a slight increase in hydrogen cyanide
and acrolein in the smoke from the casein-containing mixture,
but this was insignificant compared with the larger amounts
of these chemicals in tobacco smoke.
On this basis Applicant contends that the smoking mixtures
presently claimed, being undoubtedly novel, are also inventive
since the prior art fails to suggest them and their properties
are advantageous compared with the prior art type of mixture.
We note that in the art cited, the Koree patent relates to a tobacco
substitute comprising bagasse fibres. The use of a sugar cane bagasse
is preferred because it simulates the taste, aroma and burning
characteristics of natural tobacco. It has a chemical composition in
respect of such non-volatile ingredients as cellulose, gums, fats and
waxes which is very close to the proportion of these ingredients in
the tobacco plant. After extraction of the sugar cane juice the
bagasse is processed by washing, disintegrating, digesting, beating
and finally sheeting. At the sheeting stage a composition to simulate
taste, aroma and colour of natural tobacco is added.
The Carroll patent relates to a tobacco substitute manufactured from
a residue of treated leafy plants such as lettuce, cabbage, broccoli
etc. These are treated with appropriate additives to provide taste,
aroma and flavour. In order to obtain this residue the leaves are
subjected to a water extraction phase for leaching out salts and other
water soluble ingredients. This is followed by a drying stage to
attain the desired moisture content, and the dried produce is then
placed in a controlled humidity atmosphere. The nitrogen content of
the product can be increased by applying anhydrous ammonia to the
extracted leaves prior to the drying operation. Next a two phase organic
solvent extraction process is used to remove the oily and oil soluble
constituents from the leaves. Heat is then applied to remove the
residual solvent and the dried material is then toasted to a golden
brown color. Treatment with appropriate additives such as flavoring,
humectants, aroma and burning aids is done at this time.
The question to be decided by the Board is whether the applicant has
mane a patentable advance in the art. As previously mentioned this
application relates to a substitute smoking mixture suitable for cigars,
cigarettes and smoke pipes. It is composed of an organic combustible
material to which is added a protein constituent in the ratio of 1:1
to 1:60. Other ingredients which are normally used in smoking mixtures
to impart desired physical properties and burning characteristics are
also added. Claim 1 as now proposed by the applicant reads:
A tobacco substitute-based smoking mixture comprising
protein and, as smoke-producing fuel, a modified
carbohydrate selected from thermally degraded carbo-
hydrates oxidised carbohydrates, carbohydrate ethers
and solid condensates produced by acid- or base-
catalysed condensation of a compound of the formula
R1COCH2-CH2-COR2(I) (or a precursor thereof), wherein
R1 and R2, which may be the same or different, each
represents a hydrogen atom, or an alkyl, hydroxyalkyl or
formyl group, the amount of protein to smoke-producing
fuel being in the weight ratio range of from 1:1 to
1:60.
In the Koree process the bagasse fibres are digested with sodium
hydroxide or sodium sulfide for about 2 hours at 100øC. This places
it in the category of a "modified carbohydrate selected from the
group including thermally degraded carbohydrates" as specified in
applicants claim 1. Koree shows that the additive composition for
imparting taste, color, aroma etc. to the bagasse constructed leaf
does contain up to 5% amino acid (glycine). While amino acids are
fundamental structural units in complex protein molecules, the two are
not equivalent. Therefore we conclude that a protein is not shown in
the Koree patent, and for that reason it is inadequate as a reference.
In Carroll the toasting of the dried material to a golden brown
color does produce a "modified carbohydrate" which is a "thermally
modified carbohydrate." Carroll states that treating the water
extracted leaves with anhydrous ammonia prior to drying increases
the nitrogen content of the product. Proteins however are "compounds
of large molecular weights and contain carbon, hydrogen, nitrogen
and with few exceptions sulphur also." The addition of anhydrous
ammonia is not the same as the addition of protein to the product.
In column 6, lines 64 to 75, the Carroll patent states:.
There is thus described specific extraction procedures
and additive compositions whereby the principles of
the present invention are effected, to produce from
leafy vegetation a tobacco substitute for smoking and
chewing products. As has been indicated previously,
on following these procedures, the base material,
prior to treatment with the additives, is composed
essentially of protein and related nitrogen compounds,
and carbohydrates. Analysis of typical products
produced in accordance with these procedures shows
a composition of 9%-22% protein and related nitrogen
compounds, 76%-90% carbohydrates, and 1%-2% plant
acids and salts.
This shows that the proportion of protein to carbohydrates (1:5 to
1:10) is in a range similar to that proposed by the applicant. However
the applicant adds protein to the carbohydrates after modification
in order to obtain the desired features of filling power, taste and
after taste. In his example #26 the applicant shows the use of
enzymatically hydrolysed lettuce leaf sprayed with 0.2 parts of casien
protein in 10 parts of aqueous ammonia to provide his improved product.
One important factor in the economics of cigarette manufacture is the
"filling" power of the mixture. Applicants disclosure indicates that
the addition of protein to the mixture after modification gives a
better "filling" power than mixtures not so treated. Neither reference
shows the addition of protein to the mixture contemplated by the
applicant. This addition, according to the applicant, gives a new
and improved result which is superior to that previously used. There is
no reason apparent why we should disagree with the applicant on this
point.
Another important factor is flavour. As the flavour of the product is
an elusive quality unpredictable in advance, it may well be that the
addition of protein to certain modified carbohydrates after modification
imparts special properties making them acceptable as tobacco
substitutes. On this point too, we feel we should take the applicant
at his word.
It will, of course, be necessary for the applicant to restrict his claims
to such compositions as he has properly disclosed which produce such
improvement, and also to avoid the prior art disclosed in Carroll. In
doing so it kill be essential to limit the smoking mixture to those
compositions recited in proposed claim 1. It will also be necessary to
indicate that the protein is added to the smoking mixture after the
carbohydrates have been modified (in order to avoid the Carroll reference).
We agree that the rejection of the claims presently on file as made
by the examiner was proper, since those claims do not contain such
limitations. We are also satisfied that the proposed amendments do
not go far enough. If, however, the applicant adds to them the
further limitations indicated above, the application should be allowed
to proceed. The broadest claim would be acceptable if it read:
A tobacco substitute smoking mixture comprising as smoke-
producing fuel a modified carbohydrate selected from
thermally degraded carbohydrates, oxidised carbohydrates,
carbohydrate ethers and solid consendates produced by acid
or base-catalysed condensation of a compound of the
formula R1COCH2CH2-CDR2 (or a precursor thereof) wherein
R1and R2, which may be the same or different, each represents
a hydrogen atom, or an alkyl, hydroxyalkyl or formyl group,
to which is added a protein in the weight ratio of from
1:1 to 1:60.
We recommend that the claims on file and the claims now proposed by
the applicant be refused, but that if the applicant amends the claims
as we have suggested the application be allowed to proceed.
Gordon A. Asher,
Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and refuse all
the claims. The applicant has six months with which to submit the
proposed amendment, or to appeal this decision under the provisions
of Section 44 of the Patent Act.
Decision accordingly,
A.M.Laidlaw,
Commissioner of Patents.
Dated at Hull, Quebec
this 27th day of
November, 1974.
Agent for Applicant
J.M. Noonan
c/o Canadian Industries Limited
Box 10
Montreal 101, Quebec.