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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 5, 7, 11-12, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Lisauskas et al. US 2015/0374030 (hereafter Lisauskas) and further in view of Roggenstein et al. US 2015/0329707 (hereafter Roggenstein).
Regarding claim 1, Lisauskas teaches a paper sheet (¶13) comprising cellulose fibers (hemp, abaca, sisal, and/or wood pulp/fiber, ¶22) and fibers (regenerated cellulose fiber, ¶22, ¶12), wherein the cellulose fibers represent 0% to 100% by weight of the dry matter of the paper sheet (¶22), the fibers represent 0% to 50% by weight of the dry matter of the paper sheet (viscose fiber, ¶12), and the cellulose fibers and the fibers represent 0-100% by weight of the dry matter of the paper sheet wherein the fibers comprise viscose fibers (¶12, ¶22).
Lisauskas does not teach where the fibers are hydrophobic fibers, wherein the cellulose fibers represent 40% to 60% by weight of the dry matter of the paper sheet, the fibers represent 40% to 60% by weight of the dry matter of the paper sheet; the cellulose fibers and the fibers represent at least 85% by weight of the dry matter of the paper sheet wherein the fibers comprise viscose fibers.
MPEP §2144.05 I states that where the claimed and prior art ranges overlap, a prima facie case of obviousness exists to choose the overlapping portion of the ranges.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cellulose fibers representing 0% to 100% by weight of the dry matter of the paper sheet (¶22) of Lisauskas to represent 40% to 60% by weight of the dry matter of the paper sheet as a matter of prima facie case of obvious overlapping ranges.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the fibers representing 0% to 50% by weight of the dry matter of the paper sheet (¶22) of Lisauskas to represent 40% to 50% by weight of the dry matter of the paper sheet as a matter of prima facie case of obvious overlapping ranges.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the celluslose fibers and fibers representing 0% to 100% by weight of the dry matter of the paper sheet (¶22) of Lisauskas to represent at least 85% by weight of the dry matter of the paper sheet as a matter of prima facie case of obvious overlapping ranges.
Roggenstein teaches a paper sheet (¶27) where viscose/rayon fibers can be treated to be hydrophobic (¶17-22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the viscose/rayon fibers (¶12, ¶22) of Lisauskas to by hydrophobic viscose/rayon fibers (¶17-22) as taught by Roggenstein in order to repel water (¶17-22). The modification would have resulted in where the hydrophobic fibers comprise hydrophobic viscose fibers.
Regarding claim 5, Lisauskas view of Roggenstein teaches all the limitations of claim 1.
Lisauskas not teach wherein the hydrophobic viscose fiber is a resulting mixture of a viscose fiber and a hydrophobic substance selected from the group consisting of alkyl ketene dimers, alkenyl ketene dimers, alkyl succinic anhydrides, alkenyl succinic anhydrides, alkyl glutaric acid anhydrides, alkenyl glutaric acid anhydrides, alkyl isocyanates, alkenyl isocyanates, fatty acid an hydrides, and mixtures thereof, and the content of the hydrophobic substance in the hydrophobic viscose fiber is 0.1 % by weight to 13% by weight based on viscose fiber.
Roggenstein teaches wherein the hydrophobic viscose fiber is a resulting mixture of a viscose fiber and a hydrophobic substance selected from the group consisting of alkyl ketene dimers, alkenyl ketene dimers, alkyl succinic anhydrides, alkenyl succinic anhydrides, alkyl glutaric acid anhydrides, alkenyl glutaric acid anhydrides, alkyl isocyanates, alkenyl isocyanates, fatty acid an hydrides, and mixtures thereof (¶18), and the content of the hydrophobic substance in the hydrophobic viscose fiber is 0.1 % by weight to 13% by weight based on viscose fiber (¶22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the viscose/rayon fibers (¶12, ¶22) of Lisauskas be hydrophobic viscose/rayon fibers (¶17-22) as taught by Roggenstein in order to repel water (¶17-22).
The modification would have resulted in wherein the hydrophobic viscose fiber is a resulting mixture of a viscose fiber and a hydrophobic substance selected from the group consisting of alkyl ketene dimers, alkenyl ketene dimers, alkyl succinic anhydrides, alkenyl succinic anhydrides, alkyl glutaric acid anhydrides, alkenyl glutaric acid anhydrides, alkyl isocyanates, alkenyl isocyanates, fatty acid an hydrides, and mixtures thereof, and the content of the hydrophobic substance in the hydrophobic viscose fiber is 0.1 % by weight to 13% by weight based on viscose fiber.
Regarding claim 7, Lisauskas view of Roggenstein teaches all the limitations of claim 1. Lisauskas further teaches a binding agent (¶22, binder).
Regarding claim 11, Lisauskas view of Roggenstein teaches all the limitations of claim 1.
Lisauskas further teaches where the basis weight (areal density) affects the cigarette performance such as pressure drop and retention properties (¶21).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the basis weight (¶21, areal density) of Lisauskas, such as to be 15 g.m-2 to 60 g.m-2 in order to affect the cigarette performance such as pressure drop and retention properties (¶21) and as a matter of obvious optimization of a result effective variable (MPEP 2144.05 II).
Regarding claim 12, Lisauskas view of Roggenstein teaches all the limitations of claim 1. Lisauskas further teaches an additive (¶22, such as binder).
Regarding claim 20, Lisauskas view of Roggenstein teaches all the limitations of claim 1. Lisauskas further teaches an wherein the length of the hydrophobic fibers is less than 20 mm (claim 18).
Regarding claim 21, Lisauskas in view of Roggenstein teaches all the limitations of claim 1. Lisauskas further teaches the fibers represent 0% to 50% by weight of the dry matter of the paper sheet (¶12, ¶22).
Lisauskas does not teach where the fibers represent 45% to 60% by weight of the dry matter of the paper sheet.
MPEP §2144.05 I states that where the claimed and prior art ranges overlap, a prima facie case of obviousness exists to choose the overlapping portion of the ranges.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hydrophobic fibers representing 0% to 50% by weight of the dry matter of the paper sheet (¶12) of Lisauskas to represent 45% to 50% by weight of the dry matter of the paper sheet as a matter of prima facie case of obvious overlapping ranges.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Lisauskas in view of Roggenstein as applied to claim 7 above, and further in view of Browne US 4,821,750 (hereafter Browne) and Kizer et al. US 2014/0261502 (hereafter Kizer).
Regarding claim 8, Lisauskas in view of Roggenstein teaches all the limitations of claim 7.
Lisauskas does not teach wherein the binding agent has a shape of fiber and is chosen from polyvinyl alcohol fibers, polyvinyl acetate fibers, polyethylene fibers, polypropylene fibers, polyester fibers, cellulose acetate fibers, nylon, cellulose ester fiber and mixture thereof.
Browne teaches wherein the binding agent has a shape of fiber (col 19 lines 35-55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the binding agent (¶22) of Lisauskas by incorporating the fiber binding agent (col 19 lines 35-55) of Browne in order to bond the fibers (col 19 lines 35-55).
Kizer teaches a paper sheet wherein binding agent is nylon (¶14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the binding agent (¶22) of Lisauskas to be the nylon binding agent (¶14) of Kizer in order to bind the paper, where binders of various compositions are well known in the art.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lisauskas in view of Roggenstein as applied to claim 1 above, and further in view of Papakyrillou US 2017/0360087 published 21 Dec. 2017 and filed 15 Dec. 2015 (hereafter Papakyrillou).
Regarding claim 9, Lisauskas in view of Roggenstein and Douglas teaches all the limitations of claim 1.
Lisauskas does not teach having a water contact angle higher than 70°.
Papakyrillou teaches a paper sheet (abstract) having a water contact angle higher than 70° in order to be hydrophobic (¶7, ¶19, ¶24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the water contact angle of Lisauskas to be at higher than 70° of Papakyrillou in order to be hydrophobic (¶7, ¶19, ¶24).
Regarding claim 10, Lisauskas in view of Roggenstein and Douglas teaches all the limitations of claim 1.
Lisauskas does not teach having a capillary rise according to ISO 8787:1986 below 10 mm/10 min.
Papakyrillou teaches a paper sheet (abstract) having a water contact angle at least about 90 degrees, at least about 95 degrees, at least about 100 degrees, at least about 110 degrees, at least about 120 degrees, at least about 130 degrees at least about 140 degrees, at least about 150 degrees, at least about 160 degrees, or at least about 170 degrees in order to be hydrophobic (¶7, ¶19, ¶24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the water contact angle of Lisauskas to have the water contact angle(s) of Papakyrillou in order to be hydrophobic (¶7, ¶19, ¶24). The modification would be expected to result in a hydrophobic paper sheet which would exhibit the property of having a capillary rise according to ISO 8787:1986 below 10 mm/10 min.
Claims 23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Lisauskas in view of Roggenstein as applied to claim 1 above, and further in view of Tarora et al. US 2010/0242977 (hereafter Tarora), Lecoultre et al. US 7243659 (hereafter Lecoultre), and Nestor et al. WO2005032285 published 14 Apr. 2005 (hereafter Nestor).
Regarding claim 23, Lisauskas in view of Roggenstein teaches all the limitations of claim 1.
Lisauskas further teaches where the air permeability affects the cigarette performance such as pressure drop and retention properties (¶21).
Lisauskas does not teach wherein the paper sheet has a porosity of from 1000 CORESTA units to 50000 CORESTA units.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the air permeability/porosity (¶21) of Lisauskas, such as to from 1000 to 50000 coresta units, in order to affect the cigarette performance such as pressure drop and retention properties (¶21) and as a matter of obvious optimization of a result effective variable (MPEP 2144.05 II).
Tarora teaches a paper used in cigarettes where the air permeability is 1000 coresta or greater in order to have a high air permeability (¶14).
Lecoultre teaches a paper used in cigarettes where the air permeability is 1000 coresta or greater in order to have a high air permeability (col 4 line 40 – col 5 line 24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porosity/permeability of the Lisauskas paper to be the at least 1000 coresta (¶14) of Tarora in order to have a high air permeability (¶14).
MPEP §2144.05 I states that where the claimed and prior art ranges overlap, a prima facie case of obviousness exists to choose the overlapping portion of the ranges.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porosity/permeability of the Lisauskas/Tarora combination to be wherein at least 1000 to 50000 coresta as a matter of prima facie case of obvious overlapping ranges.
Lecoultre teaches a paper used in cigarettes where the air permeability is 1000 coresta or greater in order to have a high air permeability (col 4 line 40 – col 5 line 24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porosity/permeability of the Lisauskas paper to be the 1000 coresta (col 4 line 40 – col 5 line 24) of Lecoultre in order to have a high air permeability (col 4 line 40 – col 5 line 24).
MPEP §2144.05 I states that where the claimed and prior art ranges overlap, a prima facie case of obviousness exists to choose the overlapping portion of the ranges.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porosity/permeability of the Lisauskas/Lecoultre combination to be wherein at least 1000 to 50000 coresta as a matter of prima facie case of obvious overlapping ranges.
Nestor teaches a paper used in cigarettes where the air permeability is 10,000 coresta in order to have a high air permeability (page 41 lines 5-19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porosity/permeability of the Lisauskas paper to be the 10,000 coresta (page 41 lines 5-19) of Nestor in order to have a high air permeability (page 41 lines 5-19).
Regarding claim 26, Lisauskas in view of Roggenstein teaches all the limitations of claim 1.
Lisauskas further teaches wherein the cellulose fibers and the hydrophobic fibers represent from 0-100% by weight of the dry matter of the paper sheet (¶22).
Lisauskas further teaches where the air permeability affects the cigarette performance such as pressure drop and retention properties (¶21).
Lisauskas does not teach wherein the cellulose fibers and the hydrophobic fibers represent at least 90% by weight of the dry matter of the paper sheet; wherein the paper sheet has a porosity of from 5000 CORESTA units to 40000 CORESTA units.
MPEP §2144.05 I states that where the claimed and prior art ranges overlap, a prima facie case of obviousness exists to choose the overlapping portion of the ranges.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cellulose fibers and the hydrophobic fibers representing 0% to 100% by weight of the dry matter of the paper sheet (¶22) of Lisauskas to represent at least 90% % by weight of the dry matter of the paper sheet as a matter of prima facie case of obvious overlapping ranges.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the air permeability/porosity (¶21) of Lisauskas, such as to from 1000 to 50000 coresta units, in order to affect the cigarette performance such as pressure drop and retention properties (¶21) and as a matter of obvious optimization of a result effective variable (MPEP 2144.05 II).
Tarora teaches a paper used in cigarettes where the air permeability is 1000 coresta or greater in order to have a high air permeability (¶14).
Lecoultre teaches a paper used in cigarettes where the air permeability is 1000 coresta or greater in order to have a high air permeability (col 4 line 40 – col 5 line 24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porosity/permeability of the Lisauskas paper to be the at least 1000 coresta (¶14) of Tarora in order to have a high air permeability (¶14).
MPEP §2144.05 I states that where the claimed and prior art ranges overlap, a prima facie case of obviousness exists to choose the overlapping portion of the ranges.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porosity/permeability of the Lisauskas/Tarora combination to be wherein at least 5000 to 40000 coresta as a matter of prima facie case of obvious overlapping ranges.
Lecoultre teaches a paper used in cigarettes where the air permeability is 1000 coresta or greater in order to have a high air permeability (col 4 line 40 – col 5 line 24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porosity/permeability of the Lisauskas paper to be the 1000 coresta (col 4 line 40 – col 5 line 24) of Lecoultre in order to have a high air permeability (col 4 line 40 – col 5 line 24).
MPEP §2144.05 I states that where the claimed and prior art ranges overlap, a prima facie case of obviousness exists to choose the overlapping portion of the ranges.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porosity/permeability of the Lisauskas/Lecoultre combination to be wherein at least 5000 to 40000 coresta as a matter of prima facie case of obvious overlapping ranges.
Nestor teaches a paper used in cigarettes where the air permeability is 10,000 coresta in order to have a high air permeability (page 41 lines 5-19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porosity/permeability of the Lisauskas paper to be the 10,000 coresta (page 41 lines 5-19) of Nestor in order to have a high air permeability (page 41 lines 5-19).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Lisauskas in view of Roggenstein as applied to claim 1 above, and further in view of Matsumura et al. US 5,678,577 (hereafter Matsumura).
Regarding claim 25, Lisauskas in view of Roggenstein teaches all the limitations of claim 1.
Lisauskas does not teach wherein the cellulose fibers are refined and have a Shopper-Riegler degree (SR degree) of 9°SR to 90°SR.
Matsumura teaches a paper filter sheet (abstract) wherein the
the cellulose fibers are refined and have a Shopper-Riegler degree (SR degree) of 10°SR to 90°SR in order to ensure freeness (col 7 line 63 – col 8 line 11).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the refined cellulose fibers fibers (¶22) of Lisauskas by having a Shopper-Riegler degree (SR degree) of 10°SR to 90°SR in order to ensure freeness (col 7 line 63 – col 8 line 11).
Response to Arguments
The following is a response to Applicant’s arguments filed 27 Jul. 2026:
Applicant argues that the 112d rejection is overcome by amendment.
Examiner agrees and the rejection is withdrawn.
Applicant argues that 103 rejection is improper because the effective filing date of the instant application is before the publication date of CN111996832.
Examiner agrees and the rejection is withdrawn.
However, upon further search and/or consideration, claim 1 is rejected in view of Lisauskas and Roggenstein.
Conclusion
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/STEPHEN HOBSON/Examiner, Art Unit 1776
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