OC 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/23/25 has been entered.
Status of the Claims
Claims 1, 3-4, 7-15, 17, 19-20, and 22-24 are pending and are subject to this office action. This office action is in response to Applicant's amendment filed on 10/23/25.
Claims 1 and 24 are amended.
Claims 6, 16, and 18 are cancelled
Response to Arguments
Applicant's arguments (filed 10/23/25, pages 5-10) have been fully considered but are not persuasive. Applicant argues: (1) the tobacco pulp of Byrd cannot comprise more than about 90% of fibers or particles having a length greater than 0.025 inch, (2) the claimed particle size distribution provides significant advantages not contemplated or suggested by the cited references, (3) a person having ordinary skill in the art, in view of the asserted average tobacco fiber lengths between 0.629 mm and 0.866 mm of Byrd, and in the absence of hindsight bias, would not have motivation to specifically select tobacco particles and the tobacco fibers of a tobacco material having a largest dimension of greater than about 0.025 inch and less than about 0.05 inch, (4) the cited paragraphs of Byrd merely disclose that the tobacco pulp fibers may be bleached, and are entirely silent with respect to a web comprising a tobacco material in combination with bleached pulp fibers obtained from flax, softwood, or hardwood, (5) Byrd does not disclose or suggest that the filler represents from about 10% to about 30% by weight of the web, and (6) it is not inherent to Byrd that at least one side of the wrapping material possesses a white color having an L value greater than about 65.
Regarding (1), Applicant’s argument with regard to the application of the prior rejection in view of Byrd over the amended Claim 1 limitation “90% of the tobacco particles and the tobacco fibers have a largest dimension of greater than 0.025 inch” has been fully considered and is persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Byrd.
Regarding (2), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Moreover, it is well settled that evidence must be presented to rebut a prima facie case of obviousness and that such evidence must be commensurate in scope with the claims to which it pertains and may not be considerably narrower in scope than claimed subject matter. In re Dill, 604 F.2d 1356, 1361, 202 USPQ805, 808 (CCPA 1979). Also see In re Boesch, 617 F.2d at 276, 205 USPQ at 219; In re Lindner, 457 F.2d 506, 508,173 USPQ 356, 358 (CCPA 1972) and In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). As discussed below regarding the modified rejection to amended Claim 1, the amended claimed range would be obvious to one having ordinary skill in the art. Applicant has not provided data supporting the argument of significant advantages not contemplated or suggested by the prior art and has not clearly demonstrated the criticality of the limitation “the tobacco material has having a particle size distribution such that greater than 90% of the tobacco particles and the tobacco fibers of the tobacco material have a largest dimension of greater than about 0.025 inch and such that greater than about 90% of the tobacco particles and the tobacco fibers of the tobacco material have a greatest dimension of less than about 0.05 inch.” Thus, absent further evidence demonstrating the criticality of the claimed range and demonstrating the argued advantages of the claimed range over the prior art, amended Claim 1 would have been obvious to one having ordinary skill in the art.
Regarding (3), in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here, the determination of obviousness identifies the known features of fibrous materials utilized in general papermaking and smoking article wrappers as disclosed in the prior art, and utilizes the similar features of the disclosures to determine the state of the art and the knowledge of one having ordinary skill in the art at the time of filing. Thus, the determination of obviousness does not utilize or rely on any teachings of the Applicant’s disclosure.
Regarding (4), Applicant’s argument with regard to the application of the prior rejection in view of Byrd over the amended Claim 1 limitation “wherein the bleached pulp fibers are obtained from flax, softwood, or hardwood” has been fully considered and is persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Byrd.
Regarding (5), the Applicant argues that, where Byrd discloses that fillers may comprise 0 to 45% of the composition of the paper, Byrd does not disclose or suggest that the filler represents from about 10% to about 30% by weight of the web because the claimed range is narrower and more specific. However, as discussed above in regard to argument (2), evidence must be presented to rebut a prima facie case of obviousness and such evidence must be commensurate in scope with the claims to which it pertains and may not be considerably narrower in scope than the claimed subject matter. Applicant has not clearly demonstrated the criticality of the claimed range of the filler from about 10% to about 30% by weight of the web. Thus, absent further evidence demonstrating the criticality of the claimed range, amended Claim 1 would have been obvious to one having ordinary skill in the art.
Regarding (6), while applicant argues that the prior art must make clear that a missing descriptive matter is necessarily present and that it would be so recognized by persons of ordinary skill, one of ordinary skill in the art need not necessarily predict the exact result of the claimed elements. The court has held that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191 (Fed. Cir. 2019); see also MPEP §2112(IV). Here, it would have been obvious to one having ordinary skill in the art that the claimed elements would have resulted in a paper with an L value, such that the L value would be observable and measurable upon the combination of the prior art elements. However, a specific L value, such as the claimed L value of greater than 65, would be the natural result of the combined prior art elements. Thus, while the specific L value of greater than 65 is the missing descriptive matter, the L value of greater than 65 is the natural result of the combination of the prior art element, absent evidence of further components or methods of combining the claimed components which are necessary to obtain the specific L value of greater than 65 as claimed.
The following rejections are maintained and modified where necessary based on Applicant’s amendments.
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, 3, 7, 13-5, 17, 19-20, and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Byrd (US 20160208440 A1, previously cited).
Regarding Claim 1, Byrd discloses a wrapping material for smoking articles ("The paper material can be suitable for use in a smoking article in the form of at least one of a tipping material, a plug wrap and a wrapping material." Abstract) comprising:
a web containing at least 10% by weight tobacco material ("The paper material can comprise about 50-90 dry weight percent of fibrous material. The fibrous material can comprise about 5-100 dry weight percent of fibers derived from a plant of the Nicotiana species." [0011]),
the tobacco material being blended with bleached pulp fibers (The pulp may comprise bleached pulp. [0022], [0059]-[0061]) and
a filler ("fillers (e.g., chalk or china clay) can be added to the pulp to improve printing and/or writing characteristics of the final paper product." [0068]),
wherein the tobacco material comprises tobacco particles or tobacco fibers (The fibers utilized are derived from tobacco plants. [0009]-[0011]),
the tobacco material has a particle size distribution such that greater than 80% of the tobacco material has a greatest dimension of greater than about 0.025 inches (Tests performed on stalk and root pulps were performed to determine the strength and qualities of produced fibers; the tobacco produced fibers with average lengths between 0.629-0.866 mm and the fibers consist of up to about 85% of the tobacco material. [0105]-[0115], Tables 1 & 2. Where the mean size of the tobacco fibers is between 0.629-0.866mm, between 50 to 100% of the tobacco fibers have a dimension greater than 0.025in. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. See MPEP §2144.05(I). Therefore, Byrd discloses a tobacco particle composition which includes a size distribution such that greater than 80% of the material may have a largest dimension of greater than about 0.635mm (0.025 inch)),
the bleached pulp fibers being present in the web in an amount from about 20% to about 50% by weight (Bleached tobacco pulp fibers may be combined with other fibrous pulp such as wood based pulp. [0059]-[0061], [0087]. Thus, the tobacco fibers may be bleached, unbleached, or a combination thereof, up to at least 50-100% of the fibrous material may contain the at least partially bleached pulp, and it would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. [0011], see MPEP § 2144.05(I)),
wherein the filler is present in an amount from about 10% to about 30% by weight ("Papermaking additives can be combined with the pulp such that the plug wrap paper comprises about 55-90 dry weight percent fiber materials, the balance being papermaking additives known in the art such as binders, fillers, etc." [0087]. Thus, the web may contain a filler in an amount from 10% to about 30% by weight; and selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.0(I)).
the filler comprising white particles ("..other agents can be used to increase the whiteness of the fibrous material" [0101]. Fillers added may also include chalk. [0068]).
Byrd does not appear to explicitly disclose that at least one side of the wrapping material has a white color such that the color of the side of the wrapping material has an L value of greater than 65. However, given that the white color is dependent on the composition, specifically the white particles and bleached fibers, it follows that Byrd having overlapping amounts of bleached pulp fibers and filler comprising white particles as claimed would reasonably have a white color having an L value of greater than 65 similarly as claimed, absent evidence to the contrary.
Byrd does not appear to disclose a tobacco material having a particle size distribution such that greater than 90% of the tobacco material has a greatest dimension of greater than about 0.025 inches and/or a greatest dimension of less than about 0.05 inch. However, the ranges of fiber distribution disclosed in samples tested in Byrd are similar to the claimed invention and the courts have held that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” See MPEP §2144.05(I); Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).
Moreover, given that the tobacco fiber length directly effects the tensile strength and tearing resistance of the paper material, a person having ordinary skill in the art would be motivated to perform routine optimization ([0073]-[0075]). See MPEP §2144.05(II). A person having ordinary skill in the art would have a reasonable expectation of success through experimentation of identifying and determining a preferred user range of fiber length and fiber length distribution ([0108]-[0111], [0123]). Therefore, it follows that a person having ordinary skill in the art, through routine optimization of fiber length and fiber length distribution as disclosed in Byrd, would arrive at a tobacco material having a particle size distribution such that greater than 90% of the tobacco material has a greatest dimension of greater than about 0.025 inches and/or a greatest dimension of less than about 0.05 inch similarly as claimed, absent evidence to the contrary.
Byrd does not appear to explicitly disclose wherein the bleached pulp fibers are obtained from flax, softwood, or hardwood. However, Byrd teaches that wood pulp may be combined with the tobacco pulp to improve characteristics of a finished paper product ([0068], [0086]) and Byrd discusses the comparable advantages/disadvantages of bleached hardwood and softwood pulps to tobacco pulps ([0122]). Thus, it would be obvious to one having ordinary skill in the art that, where Byrd generally teaches that wood pulp may be combined with tobacco pulp, the wood pulp may be selected from a group of pulps comprising bleached hardwood and softwood pulps.
Regarding Claim 3, Byrd further discloses a wrapping material wherein the web contains the tobacco material in an amount from about 10% to about 60% by weight ("The paper material can comprise about 50-90 dry weight percent of fibrous material. The fibrous material can comprise about 5-100 dry weight percent of fibers derived from a plant of the Nicotiana species." [0011]. Thus, the web may contain tobacco material in an amount from about 10% to about 60% by weight; and selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.0(I)).
Regarding Claim 7, Byrd further discloses a wrapping material wherein the filler comprises calcium carbonate particles (Chalk (calcium carbonate) may be added to the pulp. [0068]).
Regarding Claim 13, Byrd further discloses a wrapping material wherein:
the web has a porosity of from about 30 Coresta to about 80 Coresta (Wrapping material may have a CORESTA Porosity from about 5 to about 130 CU's. [0088]. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. MPEP §2144.05(I)), and
the web has a basis weight of from about 30 gsm to about 50 gsm (Wrapping material basis weights can range from about 10 to about 75 g/m.sup.2 [0088]. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. MPEP §2144.05(I)).
Regarding Claim 14, Byrd further discloses a wrapping material wherein the web has a tensile strength of greater than about 1500 cN/15 mm ("Wrapping material basis weights can range from about 10 to about 75 g/m.sup.2” [0075]. Given that the porosity and basis weight are dependent on the composition, specifically the composition and dimensions of pulp fibers and filler particles, it follows that Byrd having overlapping amounts of similarly sized pulp fibers and filler particles as claimed would reasonably have a tensile strength of greater than about 1500 cN/15 mm similarly as claimed, absent evidence to the contrary.).
Regarding Claim 15, Byrd further discloses a wrapping material wherein the web has been calendered (The wrapping paper may be produced on conventional paper machines. [0068]-[0070]).
Regarding Claim 17, Byrd further discloses a wrapping material wherein the web has been treated with tobacco solubles extracted from the tobacco material by an aqueous solvent, the tobacco solubles having been topically applied to the web ("The aqueous tobacco extract is applied to the mat of insoluble pulp, and the overall resulting mixture is dried to provide a reconstituted tobacco sheet incorporating the tobacco components from which that sheet can be derived." [0003]. The tobacco stalks and roots utilized in the processed may be derived from the water soluble extraction method. [0042]).
Regarding Claim 19, Byrd does not appear to explicitly disclose that at least one side of the wrapping material has a white color such that the color of the side of the wrapping material has an L-value of greater than 70. However, given that the white color is dependent on the composition, specifically the white particles and bleached fibers, it follows that Byrd having overlapping amounts of bleached pulp fibers and filler comprising white particles as claimed would reasonably have a white color having an L value of greater than 70 similarly as claimed, absent evidence to the contrary.
Regarding Claim 20, Byrd further discloses a wrapping material wherein the web comprises a wetlaid web (The wrapping paper may be produced on conventional paper machines which creates a web of pulp fibers. [0068]-[0070]).
Regarding Claim 22, Byrd further discloses a wrapping material comprising a web containing at least 20% by weight tobacco material ("The paper material can comprise about 50-90 dry weight percent of fibrous material. The fibrous material can comprise about 5-100 dry weight percent of fibers derived from a plant of the Nicotiana species." [0011]. Thus, the web may contain at least 20% by weight tobacco material; and selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.0(I)).
Regarding Claim 23, Byrd further discloses a wrapping material wherein the weight ratio between the tobacco material and the bleached pulp fibers is greater than about 2:5. (Wherein the paper material can comprise about 50-90 dry weight percent of fibrous material and fibrous material may comprise bleached and unbleached tobacco fibers, it would be obvious to one of ordinary skill in the art that the weight ratio between the tobacco material and the bleached pulp fibers may comprise of a range greater than about 2:5. [0011], [0061], [0087]. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. see MPEP § 2144.05(I)).
Claims 4 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Byrd as applied to Claim 1 above, and further in view of Nicholl (US 3840024 A).
Regarding Claim 4, Byrd discloses a wrapping material for smoking articles comprising a web containing at least 10% by weight tobacco material as discussed above in Claim 1 but does not explicitly disclose a wrapping material wherein greater than 50% by weight of the tobacco material comprises flue cured stems.
Nicholl teaches a similar wrapping material wherein the paper comprises greater than 50% of the tobacco material comprises flue cured stems (“In practice it is found that, in order to achieve economic operation of a paper machine for tobacco reconstitution, it is necessary to have a stem to lamina ratio of at least 1:1 and preferably at least 2:1.” Column 1, lines 35-39). 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 tobacco fiber composition of Byrd with a tobacco fiber composition derived from at least 50% flue cured tobacco stems as taught by Nicholl because Byrd and Nicholl are both directed to reconstituted tobacco fibers, Nicholl teaches the use of reconstituted tobacco with at least 50% stem derived fibers, and this merely involves applying a known composition of reconstituted tobacco fibers to a similar tobacco containing paper to yield predictable results.
Regarding Claim 24, Byrd discloses a wrapping material for smoking articles ("The paper material can be suitable for use in a smoking article in the form of at least one of a tipping material, a plug wrap and a wrapping material." Abstract) comprising:
a web containing at least 10% by weight tobacco material ("The paper material can comprise about 50-90 dry weight percent of fibrous material. The fibrous material can comprise about 5-100 dry weight percent of fibers derived from a plant of the Nicotiana species." [0011]),
the tobacco material being blended with bleached pulp fibers (The pulp may comprise bleached pulp. [0022], [0059]-[0061]) and
a filler ("fillers (e.g., chalk or china clay) can be added to the pulp to improve printing and/or writing characteristics of the final paper product." [0068]),
wherein the tobacco material comprises tobacco particles or tobacco fibers (The fibers utilized are derived from tobacco plants. [0009]-[0011]), and
the tobacco material has a particle size distribution such that greater than 80% of the tobacco material has a greatest dimension of greater than about 0.025 inches (Tests performed on stalk and root pulps were performed to determine the strength and qualities of produced fibers; the fibers produced fibers with average lengths between 0.629-0.866 mm and consist of up to about 85% of the tobacco material. [0105]-[0115], Tables 1 & 2. Where the mean size of the tobacco fibers is between 0.629-0.866mm, between 50 to 100% of the tobacco fibers have a dimension greater than 0.025in. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. See MPEP §2144.05(I). Therefore, Byrd discloses a tobacco particle composition which includes a size distribution such that greater than 80% of the material may have a largest dimension of greater than about 0.635mm (0.025 inch)),
the bleached pulp fibers being present in the web in an amount from about 20% to about 50% by weight (Bleached tobacco pulp fibers may be combined with other fibrous pulp such as wood based pulp. [0059]-[0061], [0087]. Thus, the tobacco fibers may be bleached, unbleached, or a combination thereof, up to at least 50-100% of the fibrous material may contain the at least partially bleached pulp, and it would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. [0011], see MPEP § 2144.05(I)),
wherein the filler is present in an amount from about 10% to about 30% by weight ("Papermaking additives can be combined with the pulp such that the plug wrap paper comprises about 55-90 dry weight percent fiber materials, the balance being papermaking additives known in the art such as binders, fillers, etc." [0087]. Thus, the web may contain a filler in an amount from 10% to about 30% by weight; and selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.0(I)).
the filler comprising white particles ("..other agents can be used to increase the whiteness of the fibrous material" [0101]. Fillers added may also include chalk. [0068]).
Byrd does not appear to explicitly disclose that at least one side of the wrapping material has a white color such that the color of the side of the wrapping material has an L value of greater than 65. However, given that the white color is dependent on the composition, specifically the white particles and bleached fibers, it follows that Byrd having overlapping amounts of bleached pulp fibers and filler comprising white particles as claimed would reasonably have a white color having an L value of greater than 65 similarly as claimed, absent evidence to the contrary.
Byrd does not appear to disclose a tobacco material having a particle size distribution such that greater than 90% of the tobacco material has a greatest dimension of greater than about 0.025 inches and/or a greatest dimension of less than about 0.05 inch. However, the ranges of fiber distribution disclosed in samples test in Byrd are similar to the claimed invention and the courts have held that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” See MPEP §2144.05(I); Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).
Moreover, given that the tobacco fiber length directly effects the tensile strength and tearing resistance of the paper material, a person having ordinary skill in the art would be motivated to perform routine optimization ([0073]-[0075]). See MPEP §2144.05(II). A person having ordinary skill in the art would have a reasonable expectation of success through experimentation of identifying and determining a preferred user range of fiber length and fiber length distribution ([0108]-[0111], [0123]). Therefore, it follows that a person having ordinary skill in the art, through routine optimization of fiber length and fiber length distribution as disclosed in Byrd, would arrive at the a tobacco material having a particle size distribution such that greater than 90% of the tobacco material has a greatest dimension of greater than about 0.025 inches and/or a greatest dimension of less than about 0.05 inch as claimed, absent evidence to the contrary.
Byrd does not disclose wherein the bleached pulp fibers are obtained from flax, softwood, or hardwood. However, Byrd teaches that wood pulp may be combined with the tobacco pulp to improve characteristics of a finished paper product ([0068], [0086]) and Byrd discusses the comparable advantages/disadvantages of bleached hardwood and softwood pulps to tobacco pulps ([0122]). Thus, it would be obvious to one having ordinary skill in the art that, where Byrd generally teaches that wood pulp may be combined with tobacco pulp, the wood pulp may be selected from a group of pulps comprising bleached hardwood and softwood pulps.
Byrd does not explicitly disclose a wrapping material wherein greater than 50% by weight of the tobacco material comprises flue cured stems. However, Nicholl teaches a wrapping material wherein the paper comprises greater than 50% of the tobacco material comprises flue cured stems (“In practice it is found that, in order to achieve economic operation of a paper machine for tobacco reconstitution, it is necessary to have a stem to lamina ratio of at least 1:1 and preferably at least 2:1.” Column 1, lines 35-39). 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 tobacco fiber composition of Byrd with a tobacco fiber composition derived from at least 50% flue cured tobacco stems as taught by Nicholl because Byrd and Nicholl are both directed to reconstituted tobacco fibers, Nicholl teaches the use of reconstituted tobacco with at least 50% stem derived fibers, and this merely involves applying a known composition of reconstituted tobacco fibers to a similar tobacco containing paper to yield predictable results.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Byrd as applied to Claim 1 above, and further in view of Bajpai (Pulp and Paper Industry - Chemicals - 3.2 Bleaching Chemicals. (2015). Pages 49-50 & 104-6).
Regarding Claim 8, Byrd teaches a wrapping material for smoking articles wherein the filler contained in the wrapper may be chalk particles as discussed above in Claim 1 ([0068]) but does not explicitly disclose a filler which has a particle size from about 0.1 micron to about 2 microns.
Bajpai teaches that chalk particles utilized as a filler have a particle size from about 0.1 micron to about 2 microns (precipitated calcium carbonate chalk particle sizes range from 0.3 - 2.2 microns. (Page 105)). Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to utilize chalk particles as filler according to Byrd wherein the chalk particles range from 0.3 – 2.2 microns as taught by Bajpai because Byrd and Bajpai are both directed to paper products, Bajpai teaches the use of chalk particles for filler in paper, and this merely involves adding a known paper filler material of a particular known size to a paper making process to yield predictable results.
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Byrd as applied to Claim 1 above, and further in view of Volgger (US 20140326262 A1).
Regarding Claims 9 and 10, Byrd teaches that additives can be used to increase the water repellency of the fibers ([0067]) but does not explicitly disclose wherein the wrapping material further comprises a humectant and/or wherein the humectant comprises glycerol, propylene glycol, or mixtures thereof and the like.
Volgger teaches a paper material for smoking articles wherein the material further comprises a humectant additive and/or wherein the humectant comprises glycerol, propylene glycol, or mixtures thereof and the like ("Alternatively or additionally to this extract, aromatic substances known from tobacco processing or humectants, such as glycerin or propylene glycol, can be applied to the paper" [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 paper composition of Byrd with a humectant additive such as glycerol as taught by Volgger because Byrd and Volgger are both directed to tobacco containing paper compositions, Volgger teaches the use of humectants to control the moisture content in a tobacco containing paper product, and this merely involves applying a known tobacco paper additive to a similar paper product to yield predictable results.
Regarding Claim 11 and 12, Byrd teaches that additives other than moisture control additives are known in the art and can be used to alter characteristics of the pulp fibers ([0067]-[0068]) but does not explicitly disclose wherein the wrapping material further comprises a burn control agent and/or wherein the burn control agent comprises a citrate.
Volgger teaches a paper material for smoking articles wherein the material further comprises a burn control agent additive and/or wherein the burn control agent comprises a citrate (“the cigarette paper can contain substances which control the smoldering behavior of a cigarette. Examples are sodium and potassium citrates” [0009]).
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 paper composition of Byrd with a burn control additive such as citrate as taught by Volgger because Byrd and Volgger are both directed to tobacco containing paper compositions, Volgger teaches the use of burn control additives to modify the burn rate of the paper used in tobacco products, and this merely involves applying a known tobacco paper additive to a similar paper product 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 8:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755