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 .
This office action is in response to applicant’s request for continued examination filed November 11, 2025. Claims 1 has been amended. Claims 2, 16, 18, 20, and 32 have been cancelled. Claims 22-29 were previously withdrawn. Claims 36 is new. Claims 1, 3-15, 17, 19, 21, 30-31, and 33-36 are pending and stand rejected.
Response to Arguments
Applicant’s amendments and arguments, filed November 11, 2025, with respect to the rejections of claims 1, 3-19, 21, 30-31, and 33-35 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of CARPENTER as evidenced by SIGMA in view of TANASHEVA and ZHANG .
Applicant argues,
Carpenter discloses in paragraphs [0033] and [0092] that the filter element 26 is circumscribed by a layer of outer plug wrap 28 which has a paper weight of about 24 gsm.
The technical advantage of the presently claimed plug wrap which has a significantly higher basis weight of at least 60 gsm is that the plug wrap can withstand rolling between the fingers of the user to rupture the capsules, as described in lines 18-35 of page 12 of the published PCT application.
The Examiner is of the view that a plug wrap having such a basis weight is obvious based on the teachings of Tanasheva, which discloses basis weights of at least 60 gsm in paragraph [0011] for example. Tanasheva teaches "it is advantageous to use stiffer wrapper material than for conventional smoking articles to reduce the possibility of the mouth end cavity collapsing upon smoking the smoking article".
However, Tanasheva is directed towards a different problem - that of reducing collapse of the mouth end cavity (which would go inside the mouth) upon smoking, rather than withstanding rolling between fingers whilst rupturing capsules - and does not teach the technical advantage of the presently claimed invention.
Also, the plug wrap in Tanasheva does not circumscribe a cavity comprising additive capsules and particles and is not configured for the application of an external force to the wall of the tobacco industry product component by a user in order to break the additive capsules, hence it is clearly configured for a different purpose.
Therefore, it would not have been obvious to combine the teachings of Tanasheva with those of Carpenter as suggested by the Examiner.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, a person of ordinary skill in the art would combine the teachings of TANASHEVA to use a higher paper weight because doing so would prevent collapse of the cavity. Whether the cavity is collapsed by the mouth, as in TANASHEVA or the fingers in CARPENTER, premature or collapse that occurs is undesirable when consuming a tobacco product. Applicant has argued against a reason to combine by focusing on a single example, CARPENTER example 1 (¶90-¶93). However, taken as a whole, the cavity is selectively deformable by pressure applied by a user. Therefore, one of ordinary skill in the art would be contemplate other gsm papers for the plug wrap including any wrapping used in the tobacco industry to provide protection for the capsules in shipping and to selectively release during smoking (¶34, ¶15).
Applicant argues,
The Examiner has acknowledged that Carpenter does not disclose the feature "wherein the cellulose acetate particles comprise a plasticizer in the range of 15 to 40% by weight of the particles". (See Office Action, page 16). With regard to this feature, the Examiner has pointed towards Zhang which teaches a polymer material production process for cellulose acetate comprising a step of adding plasticizer. Zhang teaches that plasticizer is added to increase material flexibility and make the material easier to process; and that changing the ratio of the cellulose acetate and the plasticizer can affect the colour appearance of the granule, soft and hard degree, and use effect. Zhang teaches that the plasticizer is in a range of 25-32 parts of plasticizer. (See Office Action, pages 16 and 17)
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, motivation is found in the prior art of record ZHANG that adding plasticizer to the known material of cellulose acetate makes the material easier to process. A person of ordinary skill in the art working with cellulose acetate in a production environment would appreciate the complications associated with solids handling and immediately recognize that adding a plasticizer would both ease production challenges and improve efficiencies. Further ZHANG teaches that adding plasticizer can stabilize the product and improve color which would result in aesthetic improvements to the product of CARPENTER. As stated in this paragraph motivation can be found in either the references (plural references), so since there is motivation in ZHANG, a relevant prior art, the motivation is found in the prior art.
In response to applicant's argument that ZHANG which is not in the field of smoking articles is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, ZHANG is reasonably pertinent to field of endeavor because improved use and production of cellulose acetate is pertinent to the final quality and appearance of the smoking article that is disclosed in CARPENTER. A person of ordinary skill in the art constructing any product, including a smoking article, would look to ZHANG for production efficiencies and aesthetic improvements.
Applicant argues that, “…just because Zhang teaches the possibility that plasticizer can be added to cellulose acetate more generally, this does not amount to a disclosure or suggestion specifically of using plasticizer in cellulose acetate material in a tobacco product. Applicants therefore refute the Examiner's assertion that "A person of ordinary skill in the art would obviously include a plasticizer in a material to be used in a tobacco product." ZHANG is not the only reference that contemplates the use of a plasticizer in the tobacco product. The primary reference, CARPENTER, discloses the use of a plasticizer, and even plasticized cellulose acetate, in the tobacco product filter (CARPENTER ¶2, ¶32). Therefore given that CARPENTER provides for the use of a plasticizer in the smoking article, there is teaching, suggestion, and motivation to use plasticizer in the cellulose acetate particles as taught in ZHANG.
Applicant argues, “Claim 33 specifically requires that the plasticizer is "in the range of 15 to 40% by weight of the particles". The Examiner has not provided any explanation as to where Zhang allegedly discloses plasticizer in such a range. The Examiner has merely mentioned that Zhang "teaches that the plasticizer is in a range of 25-32 parts of plasticizer". (See Office Action, page 17). There is no disclosure in % by weight, nor of the specific range defined in independent claim 33.” It is well known that 25-32 parts is accepted to be parts of a whole, which is a percentage.
Applicant argues,:
The Examiner's reasoning as to why it would have allegedly been obvious to apply the teachings of Zhang to Carpenter is based on the assertion that including a plasticizer in a material to be used in a tobacco product "would increase material flexibility and make the material easier to process". However, lines 23-30 of page 7 of the PCT application teach that conversely, a plasticiser is included in the cellulose acetate particles in order to harden the particles, to make them harder and help promote breakage. This is a completely different technical goal to increase flexibility as referred to by the Examiner. This passage recites:"The cellulose acetate particles 12 comprise cellulose acetate that has been hardened by a plasticiser, for example, triacetin. The plasticiser helps to prevent the cellulose acetate particles 12 from breaking down when the user applies a force to the smoking article component 3 to break the additive capsules 11. Furthermore, the increased hardness of the additive capsules 11 due to the plasticiser helps to promote breakage of the additive capsules 11.
Flexible and hard are not mutually exclusive characteristics. ZHANG teaches that plasticizer is added to do both: increase flexibility for processing (page 3, lines 7-8) while simultaneously maintaining a proper hardness (page 4, lines 22-24). The product of ZHANG is able to be both flexible enough to process and properly hard enough the rupture the beads of CARPENTER.
Election/Restrictions
Claims 22-29 were previously withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 9, 2023.
Claim Interpretation
The term “loose” in claim 30 not defined by the specification. In the arguments filed August 7, 2025, applicant argues that the term loose would be understood by a person of ordinary skill in the art. Applicant has not argued against the examiner’s interpretation of the term “loose”. Therefore, for purposes of examination "loose" is determined to mean not firmly or tightly fixed in place; detached or able to be detached. In the response filed August 7, 2025, applicant has provided a definition for loose to be, “non-fixed, freely-disposed arrangement”. The claims will be interpreted in light of this definition.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the "wall" must be shown or the feature canceled from the claim. No new matter should be entered.
For purposes of examination, the “wall” is considered to be, as informed by the specification, either the combination of the plug wrap 16 and tipping paper 4 (PG Pub of instant application ¶67). In light of the amendment to claim 1, the wall cannot be the tipping paper only and the plug wrap omitted as disclosed in ¶67 because in amended claim 1, the wall comprises a plug wrap.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 34 and 35 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.
Claims 34 and 35 recite the limitation “a plug wrap that circumscribes the cavity”, however this limitation was already recited in claim 1 upon which both claims 34 and 35 depend. Therefore it is unclear if this is the same plug wrap or a new plug wrap. For purposes of examination, it will be considered to be the same plug wrap that comprises the wall.
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.
Claims 1, 3-4, 6-7, 10-15, 17, 19, 21, 30-31, 34, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over US 20110271968 A1 (hereinafter CARPENTER) as evidenced by “Cellulose Acetate Acetylcellulose” (hereinafter SIGMA) in view of US 20140238427 A1 (hereinafter TANASHEVA) and CN 105504359 A (hereinafter ZHANG) foreign translation relied upon for citations.
Regarding claim 1, CARPENTER discloses a tobacco industry product component (Fig. 1, filter element 26, ¶30) comprising: a wall (Fig. 2, combination of plug wrap 28 and tipping material 46, ¶33) circumscribing a cavity (Fig. 2, cavity 34, ¶32), wherein the wall comprises a plug wrap (Fig. 2, plug wrap 28) that circumscribes the cavity. CARPENTER discloses that the filter segments 32 and 36 define the cavity in combination with the plug wrap (¶32). CARPENTER further discloses a plurality of additive capsules (Fig. 2, flavor capsules 44, ¶32) disposed in the cavity. CARPENTER further discloses a plurality of particles (¶45) disposed in the cavity and configured such that, in use, the particles promote breaking of the additive capsules upon the application of an external force to the wall of the tobacco industry product component by a user. CARPENTER discloses an embodiment wherein the flavor capsules are mixed within the filter cavity with a particulate material that can act to assist in the rupture of the capsules due to frictional contact with the capsules or other physical interaction between the particles (¶45).
CARPENTER does not disclose the plug wrap has a basis weight of at least 60 gsm.
TANASHEVA teaches a smoking article with a wrapper circumscribing segments of the article (abstract). TANASHEVA teaches that the wrapper is to be thick with a gsm at least about 40 and more preferably between about 40 gsm, and about 80 gsm (¶11, ¶28). TANASHEVA teaches that the wrapper is to be stiffer to reduce the possibility of the cavity collapsing upon the smoking of the smoking article (¶11).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified CARPENTER to provide the plug wrap has a basis weight of between about 40 and about 80 gsm as taught in TANASHEVA. A person of ordinary skill would obviously provide a higher gsm around the cavity because doing so would prevent the cavity collapsing upon smoking (TANASHEVA ¶11). Further, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
CARPENTER does not disclose wherein the particles comprise a material having a particle density of at least 1 g/cc.
CARPENTER teaches that the particles include, “Exemplary particulate materials include cellulose acetate tow beads or pellets, polyvinyl acetate beads, polyethylene beads, polypropylene beads, sepiolite particles, menthol crystals, rock salt crystals, crystalline sugar, cyclodextran particles, corundum particles, quartz crystals, metal beads (e.g., copper or stainless steel), pumice, agglomerated calcium carbonate, microcrystalline cellulose particles, and the like” (¶45). These materials overlap with the material of the instant application (PG Pub ¶5, ¶29), especially cellulose acetate and other plastic beads like polyvinyl acetate beads, polyethylene beads, polypropylene beads.
As evidenced by SIGMA, the density of cellulose acetate is 1.3 g/mL.
Therefore the cellulose acetate particles in CARPENTER inherently have particle density property within the density range recited in the instant claim. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Additionally, applicant states the claimed limitation of the 1 g/cc particle size is “not essential” (PG Pub ¶30).
CARPENTER does not disclose wherein the cellulose acetate particles comprise a plasticizer.
ZHANG teaches a polymer material production process for cellulose acetate comprising a step of adding plasticizer (abstract). ZHANG teaches that the preparation method includes the following steps (page 2):
A, crushing the cellulose acetate flakes to cellulose acetate particle with particle size of 50-400 microns;
B, the obtained in the step A cellulose acetate particles and plasticizer, stabilizing agent to cellulose acetate particles absorbing a plasticizer, stabilizer;
C, ripening cellulose acetate particles obtained in step B;
D, extruding obtained in step C ripening cellulose acetate particles, to obtain cellulose acetate;
E, the step D to obtain cellulose acetate into cellulose acetate particles to obtain the product
ZHANG further teaches that the plasticizer is added to increase material flexibility, make the material easier to process (page 3). ZHANG further teaches that changing the ratio of the cellulose acetate and the plasticizer can affect color appearance of the granule, soft and hard degree and use effect (page 6).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified CARPENTER to provide wherein the cellulose acetate particles comprise a plasticizer as taught in ZHANG. A person of ordinary skill in the art would obviously include a plasticizer in a material to be used in a tobacco product. Doing so would increase material flexibility and make the material easier to process (ZHANG, page 3). Further adjusting the ratio of cellulose acetate and the plasticizer would provide customization of the color appearance and the soft and hard degree (ZHANG, page 6).
Regarding claim 3, modified CARPENTER discloses the tobacco industry product component according to claim 1 as discussed above. CARPENTER further discloses wherein the particles comprise a polymeric material and plastic (¶45). CARPENTER discloses that the particulate material may be cellulose acetate tow beads or pellets, polyvinyl acetate beads, polyethylene beads, polypropylene beads. These are plastic beads.
Regarding claim 4, modified CARPENTER discloses the tobacco industry product component according to claim 3 as discussed above. CARPENTER further discloses wherein the particles comprise cellulose acetate (¶45). CARPENTER discloses cellulose acetate tow beads or pellets (¶45).
Regarding claim 6, modified CARPENTER discloses the tobacco industry product component according to claim 1 as discussed above. CARPENTER further discloses wherein the particles comprise one or more surface formations configured to promote breaking of the additive capsules. CARPENTER discloses that the particles can vary in their shapes to be irregular shapes to facilitate capsule rupture (¶45).
Regarding claim 7, modified CARPENTER discloses the tobacco industry product component according to claim 1 as discussed above. CARPENTER further discloses that the particles have the same general size range as that for the capsules (¶45) which size range is 0.75 mm to 2.5 mm (¶14). As explained in the rejection of claim 1 above, CARPENTER teaches that the particles include, “Exemplary particulate materials include cellulose acetate tow beads or pellets, polyvinyl acetate beads, polyethylene beads, polypropylene beads, sepiolite particles, menthol crystals, rock salt crystals, crystalline sugar, cyclodextran particles, corundum particles, quartz crystals, metal beads (e.g., copper or stainless steel), pumice, agglomerated calcium carbonate, microcrystalline cellulose particles, and the like” (¶45). These materials overlap with the material of the instant application (PG Pub ¶5, ¶29), especially cellulose acetate and other plastic beads like polyvinyl acetate beads, polyethylene beads, polypropylene beads. Therefore the particles in CARPENTER have overlapping surface area properties with the surface area recited in the instant claim of average surface area of less than 50 square meters per gram. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 10, modified CARPENTER discloses the tobacco industry product component according to claim 1 as discussed above. CARPENTER further teaches wherein the additive capsules have a diameter of between 0.6 and 1.4 mm (¶14). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Though the lower range of the instant claim is not encompassed by the disclosure of CARPENTER, there is overlap in the range and A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 11, CARPENTER discloses that the particles are of the same general size range as the capsules (¶45) and discloses that the capsules have wherein the particles have a particle size of between 1 and 2.4 mm (¶14). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 12, CARPENTER discloses the tobacco industry product component according to claim 1 as discussed above. CARPENTER further discloses between 20 and 100 additive capsules (¶14). CARPENTER discloses between 20 to 120 spherical capsules (¶14). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 13, modified CARPENTER discloses the tobacco industry product component according to claim 1 as discussed above. CARPENTER further discloses wherein the additive capsules have an average burst strength of between 3 N and 5 N (¶15). CARPENTER discloses that the capsules should have a crush strength range of about 0.1 to about 4.0 kilopond (kp) (¶15). This converts to 0.98 N to 39.23 N. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 14, CARPENTER discloses the tobacco industry product component according to claim 1 as discussed above. CARPENTER further teaches the cavity has a length of between 4 and 12 mm (¶17). CARPENTER teaches that the length of the cavity is about 5 mm to about 8 mm (¶17). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 15, modified CARPENTER discloses the tobacco industry product component according to claim 1 as discussed above. CARPENTER further discloses a body of filtration material (Fig. 2, combination of 32, 34, and 36) that comprises the cavity (cavity 34) and, wherein the body comprises first (segment 36) and second (segment 32) sections of filtration material (¶32, ¶75) and the cavity is disposed between the first and second sections (See annotated Fig. 2, ¶10).
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Regarding claim 17, modified CARPENTER discloses the tobacco industry product component according to claim 16 as discussed above. CARPENTER further discloses wherein the plug wrap comprises an impermeable coating. CARPENTER disclose that the tipping material circumscribes the entire length of the filter element and the tobacco rod and is affixed with adhesive (¶33). CARPENTER further discloses that the wrapping materials comprise a fibrous material and one filler material imbedded within the material (¶69). CARPENTER discloses that thee wrapping material may be treated (¶70). Additionally, CARPENTER teaches that the wrapping may comprise a band as a printed coating with a film-forming agent such as starch (¶29). A person of ordinary skill in the art would immediately recognize that bands around cigarettes are impermeable coatings for preventing burning.
Regarding claim 19, modified CARPENTER discloses the tobacco industry product component according to claim 16 as discussed above. CARPENTER does not disclose the plug wrap has a thickness of at least 35 micrometers.
TANASHEVA teaches a smoking article with a wrapper circumscribing segments of the article (abstract). TANASHEVA teaches that the wrapper is to be thick with thickness of at least about 25 micrometers, more preferably at least about 35 micrometers (¶28). TANASHEVA teaches that the wrapper is to be stiffer to reduce the possibility of the cavity collapsing upon the smoking of the smoking article (¶28).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified CARPENTER to provide the plug wrap has a thickness of at least 35 micrometers as taught in TANASHEVA. A person of ordinary skill would obviously provide a thicker wrap around the cavity because doing so would prevent the cavity collapsing upon smoking (TANASHEVA ¶11). Further, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 21, modified CARPENTER discloses the tobacco industry product component according to claim 1. CARPENTER discloses a tobacco industry product (Fig. 1, smoking article 10, ¶29) comprising a tobacco industry product component according to claim 1.
Regarding claim 30, modified CARPENTER discloses the tobacco industry product component according to claim 1 as discussed above. CARPENTER further discloses wherein the additive capsules and particles are provided loose in the cavity. As shown in Fig. 2, the additive capsules 44 are in the cavity (¶32).
Regarding claim 31, modified CARPENTER discloses the tobacco industry product component according to claim 1. CARPENTER further discloses wherein the particles are configured to abut the additive capsules to promote rupture of the additive capsules (¶45).
Regarding claim 34, modified CARPENTER discloses the tobacco industry product component according to claim 1. CARPENTER further discloses wherein the tobacco industry product component further comprises a plug wrap that circumscribes the cavity ((Fig. 2, plug wrap 28). CARPENTER further teaches wherein the plug wrap comprises a sealing layer that overlies the cavity. CARPENTER disclose that the tipping material circumscribes the entire length of the filter element and the tobacco rod and is affixed with adhesive (¶33). CARPENTER further discloses that the wrapping materials comprise a fibrous material and one filler material imbedded within the material (¶69). CARPENTER discloses that thee wrapping material may be treated (¶70). Additionally, CARPENTER teaches that the wrapping may comprise a band as a printed coating with a film-forming agent such as starch (¶29). A person of ordinary skill in the art would immediately recognize that bands around cigarettes are impermeable coatings and would be used with predictable results to seal the cavity.
Regarding claim 36, modified CARPENTER discloses the tobacco industry product component according to claim 1. CARPENTER further discloses between 20 and 100 additive capsules (¶14). CARPENTER discloses between 20 to 120 spherical capsules (¶14). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In this case CARPENTER discloses between 20 to 120 capsules. The disclosed range of CARPENTER fully captures the claimed range such that the claimed range is anticipated by CARPENTER.
CARPENTER further discloses wherein the additive capsules have a diameter of between 0.8 and 1.2 mm (¶14). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In this case CARPENTER discloses diameters between 0.75 mm and 2.5 mm. The disclosed range of CARPENTER fully captures the claimed range such that the claimed range is anticipated by CARPENTER.
CARPENTER further discloses the particles have a particle size of between 1.4 to 2 mm. CARPENTER discloses that the particles are of the same general size range as the capsules (¶45) and discloses that the capsules have diameter of between 0.75 and 2.5 mm (¶14). Thus the particles can have a particle size of between 1.4 and 2 mm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over CARPENTER, TANASHEVA, and ZHANG as evidenced by SIGMA as applied to claims 1, 3-4, 6-7, 10-15, 17, 19, 21, 30-31, 34, and 36 above, and further in view of US 20010011132 A1 (hereinafter YAMAKAWA).
Regarding claim 5, modified CARPENTER discloses the tobacco industry product component according to claim 4 as discussed above. CARPENTER does not disclose the particles comprise cellulose acetate chips.
YAMAKAWA teaches a process for producing cellulose acetate (abstract). YAMAKAWA teaches that cellulose acetate is used for a variety of purposes including tobacco filter chips (¶2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified CARPENTER to provide the particles comprise cellulose acetate chips as taught in YAMAKAWA. A person of ordinary skill in the art would obviously use cellulose acetate chips because doing so is a notoriously well-known material for filters in tobacco products (YAMAKAWA ¶2).
Claims 8, 33, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over CARPENTER, TANASHEVA, and ZHANG as evidenced by SIGMA as applied to claims 1, 3-4, 6-7, 10-15, 17, 19, 21, 30-31, 34, and 36 above and as further evidenced by “Cellulose Acetate Resin Compound” (hereinafter KINGSFIELD) .
Regarding claim 8, modified CARPENTER discloses the tobacco industry product component according to claim 1 as discussed above. CARPENTER does not disclose the particles are formed from a material having a Rockwell hardness of at least 25 on the R-Scale.
KINGSFIELD discloses the Rockwell hardness of cellulose acetate solid granules is 47.
Further, given that the smoking article particles of the instant application are made from the same cellulose acetate material as the smoking article particles disclosed by CARPENTER to result in a smoking article having the claimed Rockwell hardness of at least 25 on the R-Scale, the Rockwell hardness of the cellulose acetate particles taught by CARPENTER is expected inherently to be the same. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Regarding claim 33, CARPENTER discloses a tobacco industry product component (Fig. 1, filter element 26, ¶30) comprising: a wall (Fig. 2, combination of plug wrap 28 and tipping material 46, ¶33) circumscribing a cavity (Fig. 2, cavity 34, ¶32). CARPENTER discloses that the filter segments 32 and 36 define the cavity in combination with the plug wrap (¶32). CARPENTER further discloses a plurality of additive capsules (Fig. 2, flavor capsules 44, ¶32) disposed in the cavity. CARPENTER further discloses a plurality of particles (¶45) disposed in the cavity and configured such that, in use, the particles promote breaking of the additive capsules upon the application of an external force to the wall of the tobacco industry product component by a user. CARPENTER discloses an embodiment wherein the flavor capsules are mixed within the filter cavity with a particulate material that can act to assist in the rupture of the capsules due to frictional contact with the capsules or other physical interaction between the particles (¶45).
CARPENTER does not disclose wherein the particles comprise a material having a particle density of at least 1 g/cc.
CARPENTER teaches that the particles include, “Exemplary particulate materials include cellulose acetate tow beads or pellets, polyvinyl acetate beads, polyethylene beads, polypropylene beads, sepiolite particles, menthol crystals, rock salt crystals, crystalline sugar, cyclodextran particles, corundum particles, quartz crystals, metal beads (e.g., copper or stainless steel), pumice, agglomerated calcium carbonate, microcrystalline cellulose particles, and the like” (¶45). These materials overlap with the material of the instant application (PG Pub ¶5, ¶29), especially cellulose acetate and other plastic beads like polyvinyl acetate beads, polyethylene beads, polypropylene beads.
As evidenced by SIGMA, the density of cellulose acetate is 1.3 g/mL.
Therefore the cellulose acetate particles in CARPENTER inherently have particle density property within the density range recited in the instant claim. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Additionally, applicant states the claimed limitation of the 1 g/cc particle size is “not essential” (PG Pub ¶30).
CARPENTER does not disclose wherein the cellulose acetate particles comprise a plasticizer in the range of 15 to 40% by weight of the particles.
ZHANG teaches a polymer material production process for cellulose acetate comprising a step of adding plasticizer (abstract). ZHANG teaches that the preparation method includes the following steps (page 2):
A, crushing the cellulose acetate flakes to cellulose acetate particle with particle size of 50-400 microns;
B, the obtained in the step A cellulose acetate particles and plasticizer, stabilizing agent to cellulose acetate particles absorbing a plasticizer, stabilizer;
C, ripening cellulose acetate particles obtained in step B;
D, extruding obtained in step C ripening cellulose acetate particles, to obtain cellulose acetate;
E, the step D to obtain cellulose acetate into cellulose acetate particles to obtain the product
ZHANG further teaches that the plasticizer is added to increase material flexibility, make the material easier to process (page 3). ZHANG further teaches that changing the ratio of the cellulose acetate and the plasticizer can affect color appearance of the granule, soft and hard degree and use effect (page 6). ZHANG further teaches that the plasticizer is in a range of 25-32 parts of plasticizer.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified CARPENTER to provide wherein the cellulose acetate particles comprise a plasticizer as taught in ZHANG. A person of ordinary skill in the art would obviously include a plasticizer in a material to be used in a tobacco product. Doing so would increase material flexibility and make the material easier to process (ZHANG, page 3). Further adjusting the ratio of cellulose acetate and the plasticizer would provide customization of the color appearance and the soft and hard degree (ZHANG, page 6). Finally, a person of ordinary skill in the art would obviously provide plasticizer within the range of the instant application. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
CARPENTER teaches filter elements comprising a tow and a plasticizer wherein the plasticizer comprises at least one of: triacetin, Diacetin, triethyl citrate or PEG. (¶32). CARPENTER teaches that a tow material is impregnated with a plasticizer such as triacetin. A person of ordinary skill in the art would obviously use triacetin as the plasicister in the cellulose acetate. Doing so would make use of a known material in the art, triacetin, to realize the benefits taught in ZHANG for plasticizing the cellulose acetate with predictable results.
Neither CARPENTER nor ZHANG disclose wherein the particles have a Rockwell hardness of at least 25 on the R-Scale.
KINGSFIELD discloses the Rockwell hardness of cellulose acetate solid granules is 47.
Further, given that the smoking article particles of the instant application are made from the same cellulose acetate material as the smoking article particles disclosed by CARPENTER to result in a smoking article having the claimed Rockwell hardness of at least 25 on the R-Scale, the Rockwell hardness of the cellulose acetate particles taught by CARPENTER is expected inherently to be the same. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Regarding claim 35, modified CARPENTER discloses the tobacco industry product component according to claim 33. CARPENTER further discloses wherein the tobacco industry product component further comprises a plug wrap that circumscribes the cavity (Fig. 2, plug wrap 28). CARPENTER further teaches wherein the plug wrap comprises a sealing layer that overlies the cavity. CARPENTER disclose that the tipping material circumscribes the entire length of the filter element and the tobacco rod and is affixed with adhesive (¶33). CARPENTER further discloses that the wrapping materials comprise a fibrous material and one filler material imbedded within the material (¶69). CARPENTER discloses that thee wrapping material may be treated (¶70). Additionally, CARPENTER teaches that the wrapping may comprise a band as a printed coating with a film-forming agent such as starch (¶29). A person of ordinary skill in the art would immediately recognize that bands around cigarettes are impermeable coatings and would be used with predictable results to seal the cavity.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over CARPENTER, TANASHEVA, and ZHANG as evidenced by SIGMA as applied to claims 1, 3-4, 6-7, 10-15, 17, 19, 21, 30-31, and 34 above and in further view of US 20160295914 A1 (hereinafter JORDIL).
Regarding claim 9, modified CARPENTER discloses the tobacco industry product component according to claim 1 as discussed above. CARPENTER does not disclose the particles have a ball-pan hardness of greater than 95%.
JORDIL teaches a smoking article having a cavity with a particulate material and a breakable capsule (abstract). JORDIL teaches that the particulate material has a ball pan hardness of about 80%, or more preferable at least about 90% (¶23). JORDIL teaches that this increased hardness can help to reduce the force required to break the capsule (¶23)
Given that the smoking article particles of the instant application are made from the same material as the smoking article particles disclosed by CARPENTER to result in a smoking article having the claimed ball-pan hardness of greater than 95%, the Rockwell hardness of the particles taught by CARPENTER is expected inherently to be the same. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430. Further, JORDIL teaches that increased hardness of greater than 90% helps to reduce the force required to break the capsule (JORDIL ¶23). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747