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, 5-7 and 12-17 are pending.
Claims 16-17 are new.
Claims 2-4 have been cancelled.
Claims 1, 6 and 13-15 have been amended.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 6 states that the heat sensitive material is added from 0.007 mg/cm2 to 0.7 mg/cm2. However, there is no support in the specification for that range. The specification states, “Regarding the content of the heat sensitive material in the wrapping paper according to the embodiment of the present invention, the content in the section in which the heat sensitive material is added can be 0.007 mg/cm2 or more and is preferably 0.07 mg/cm2 or more. On the other hand, regarding the upper limit value of the content of the heat sensitive material, the content in the section in which the heat sensitive material is added can be, for example, 7 mg/cm2 or less, and can be 6 mg/cm2 or less in another example, and 5 mg/cm2 or less in still another example,” ([0013]).
For purposes of examination, it is interpreted that 0.7 mg/cm2 or less is 7 mg/cm2 or less.
Response to Arguments
Applicant’s arguments, filed 12/3/2025, with respect to the rejection(s) of claim(s) the claimed content of the heat sensitive material (as recited in (current) claims 1 and 6) under Counts (US 5388594) in view of Besso (US 20170215475) and further in view of Sprinkel (EP 0409566) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Counts (US 5388594) in view of Besso (US 20170215475) in view of Sprinkel (EP 0409566) and further in view of Borschke (US 20050066985).
Applicant's remaining arguments filed 12/3/2025 have been fully considered but they are not persuasive.
Applicant Argument A:
Sprinkel et al. EP 566 fails to disclose the claimed heat-sensitive materials, as explained above. Thus, Sprinkel et al. EP 566 neither teaches nor suggests that the unpleasant discoloration occurring upon heating does not become noticeable when a wrapping paper of a non-combustion-heating-type smoking product includes any of these materials at a certain amount. In addition, Sprinkel et al. EP 566 merely indicates the concentrations of organic acid and sugar in solutions, but does not teach the concentration with respect to the wrapping paper.
Therefore, the effect of the present invention is unexpected from Counts et al. US '594, even in view of Sprinkel et al. EP 566 (and the other cited art), and the claimed electric-heating- type smoking system would not have been conceivable from the cited prior art references, even in combination.
Examiner Response A:
The Examiner respectfully disagrees. The unpleasant discoloration occurring upon heating that does not become noticeable when a wrapping paper of a non-combustion-heating-type smoking product includes any of the claimed heat-sensitive materials at a certain amount is not a claimed limitation.
The burden is upon the Applicant to demonstrate that the claimed concentration of the heat sensitive material in the section in which the heat sensitive material is added is critical and has unexpected results. In the present invention, one would have been motivated to optimize the concentration of the heat sensitive material in the section in which the heat sensitive material is added motivated by the desire to regulate the indicator color, and control the appearance of the cigarette wrapper (Sprinkel, col. 5, lines 7-22).
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.
Claim(s) 1, 5-7 and 12-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Counts (US 5388594) in view of Besso (US 20170215475) in view of Sprinkel (EP 0409566) and further in view of Borschke (US 20050066985).
Regarding claims 1, 13, 15 and 16 Counts teaches an electric-heating-type smoking system, comprising: an electric heating device including a heater member (39), a heat transfer member that transfers heat from the heater member (43), a battery unit serving as a power source of the heater member (col. 5, lines 25-30), and a control unit for controlling the heater member (col. 5, lines 10-15); and
Counts teaches a non-combustion-heating-type smoking product including a tobacco rod part (57) which includes glycerin or propylene glycol (col. 9, lines 45-50), wrapped with a first wrapping paper (69) that wraps the filler, and a mouthpiece part (71) constituting an end on an opposite side to the tobacco rod part, the tobacco rod part and the mouthpiece part being connected using a second wrapping paper (75) which is different from the wrapping paper that wraps the filler (69). Counts teaches that the second wrapping paper (75) is fitted so as to come in contact with the heat transfer member and the heat transfer member transfer heat from the heater member to a part of an outer surface of the second wrapping paper (Figs. 16 and 17).
Counts does not expressly teach that the tobacco rod part comprises a filler containing shredded tobacco.
Besso teaches a smoking article which includes a tobacco filler (20) which is heated by an electric heating device (Fig. 2) wherein the tobacco in the tobacco rod is shredded ([0016]). It would have been obvious for one of ordinary skill in the art at the time of the invention to have modified the smoking article of Counts to include shredded tobacco in the tobacco rod, which is taught by Besso, in addition to or instead of the tobacco web in the tobacco rod part of Counts with a reasonable expectation of success and predictable results as both Counts and Besso teach variations of cigarettes.
Modified Counts does not expressly teach that the wrapping paper has a section in which a heat sensitive material is added to a surface that serves as an outer surface of the smoking product.
Sprinkel teaches a wrapping paper for a non-combustion-heating-type smoking product (abstract), the wrapping paper having a section in which a heat sensitive material is added to a surface (16) that serves as an outer surface of the non-combustion-heating-type smoking product (abstract and Fig. 1). It would have been obvious for one of ordinary skill in the art at the time of filing to have been obvious to one of ordinary skill in the art at the time of filing to have placed the heat sensitive material of Sprinkel to the outer surface of the second wrapper of Modified Counts with a reasonable expectation of success and predictable results, namely to show the thermal status of the smoking product along its length ([0006]).
Regarding the limitation, “the section in which the heat sensitive material is added is provided at least in a section which comes in contact with the heat transfer member”, Sprinkel teaches that the heat sensitive material is added to the part of the non-combustion smoking article (the section of the article 10 which does not include filter 12) which would be heated by electrical means (col. 1, lines 11-14), thus the section as a whole comes in contact with the heat transfer member.
Regarding the limitation, “a proportion of an area of the section in which the heat sensitive material is added relative to a total area of the wrapping paper is 40% to 50%,” Sprinkel teaches that the heat sensitive material is added as lines or letters, or in any of a variety of patterns (col. 3, lines 39-42). This establishes the pattern, and thus the area of the heat sensitive material with respect to the total area of the wrapping paper, as a result effective variable which it would have been obvious for one of ordinary skill in the art to have optimized. See MPEP 2144.05 II B. Also, the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04 IV A.
Regarding the limitation, “in the wrapping paper a color difference ΔE* between a color of the section in which the heat sensitive material is added before heating the wrapping paper and a color of the section in which the heat sensitive material is added after heating the wrapping paper at 200°C for 5 minutes is 15 or greater,” this is a property of the claimed product. It is therefore inherent that this limitation is met since such a property is evidently dependent upon the nature of the composition used, which is taught by Sprinkel. Sprinkel teaches adding the same materials such as organic acids to a similar wrapping material for the same purpose as providing a color changing effect. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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.
NOTE: Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Regarding the limitation, “the section in which the heat sensitive material is added is provided at least in a section which is heated by the electric heating device,” this limitation is met because the entire smoking product, and thus all sections, are heated by the electric heating device.
Modified Counts does not expressly teach that, in the wrapping paper, a content of the heat sensitive material in the section in which the heat sensitive material is added is 0.007 mg/cm2 or more.
However, Sprinkel does teach that “ Solutions of between five percent and 85 percent organic acids by weight may be used. As the concentration of organic acids is increased, the color intensity upon heating is increased. Thus, the indicator color can be regulated, and the appearance of the cigarette wrapper can be controlled…Although color intensity generally increases as the indicator solutions become more concentrated, solutions of 50 percent organic acid produce color indications substantially similar to solutions of greater concentrations. It is there-fore more cost effective to use solutions of 50 percent concentration. In an alternative embodi-ment, the indicator is a slurry of an organic acid in water,” (col. 5, lines 7-22). Thus, the concentration of the heat sensitive material in the section in which the heat sensitive material is added is established as a result effective variable which it would have been obvious for one of ordinary skill in the art at the time of filing to have optimized with a reasonable expectation of success and predictable results. See MPEP 2144.05 II A-B. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed concentration of the heat sensitive material in the section in which the heat sensitive material is added is critical and has unexpected results. In the present invention, one would have been motivated to optimize the concentration of the heat sensitive material in the section in which the heat sensitive material is added motivated by the desire to regulate the indicator color, and control the appearance of the cigarette wrapper (Sprinkel, col. 5, lines 7-22).
Modified Counts teaches that the heat sensitive material is organic acids, for example citric acid or ascorbic acid (Sprinkel, col. 5, lines 4-26).
Modified Counts only provides two examples of organic acids, and does not expressly mention acetic acid as an organic acid.
Borschke teaches a smokeable rod for a smoking article (abstract). Borschke teaches organic acids include citric acid, acetic acid and ascorbic acid ([0077]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to applied acetic acid, an organic acid as taught by Borschke, as the heat sensitive material in modified Counts with a reasonable expectation of success and predictable results because acetic acid is an organic acid as taught by Borschke.
Regarding claim 5, Modified Counts teaches that the heat sensitive material is colorless (Sprinkel, col. 4, lines 52-55).
Regarding claims 6 and 17, Modified Counts does not expressly teach that, in the wrapping paper, a content of the heat sensitive material in the section in which the heat sensitive material is added is 0.007 mg/cm2 to 7 mg/cm2.
However, Sprinkel does teach that “ Solutions of between five percent and 85 percent organic acids by weight may be used. As the concentration of organic acids is increased, the color intensity upon heating is increased. Thus, the indicator color can be regulated, and the appearance of the cigarette wrapper can be controlled…Although color intensity generally increases as the indicator solutions become more concentrated, solutions of 50 percent organic acid produce color indications substantially similar to solutions of greater concentrations. It is there-fore more cost effective to use solutions of 50 percent concentration. In an alternative embodi-ment, the indicator is a slurry of an organic acid in water,” (col. 5, lines 7-22). Thus, the concentration of the heat sensitive material in the section in which the heat sensitive material is added is established as a result effective variable which it would have been obvious for one of ordinary skill in the art at the time of filing to have optimized with a reasonable expectation of success and predictable results. See MPEP 2144.05 II A-B.
Regarding claim 7, regarding the limitation, “wherein the section in which the heat sensitive material is added includes a section that is heated at 150°C to 250°C” this is a functional limitation in a product claim. See MPEP 2114. Since the section in which the heat sensitive material is added is constructed to be heated to 40 C to 220 C (col. 6, lines 40-44), the section is capable of being heated at 150°C to 250°C.
Regarding claim 12, modified Counts teaches that the non-combustion-heating-type smoking product is fitted to said electric heating device (Counts, Fig. 16 and 17), the outer surface of the tobacco rod (Counts, 57) and a part of the outer surface of the second wrapping paper (Counts, 75) that connects the tobacco rod to a paper tube part comes in contact with the heat transfer member inside the electric heating device (Counts, Fig. 16 and 17).
Regarding claim 14, Modified Counts teaches that the heat sensitive material is asparagine combined with fructose (Sprinkel, [0028]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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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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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755