DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
Claims 1-5, 7-16 and 18 are pending.
Claims 1 and 5 have been amended.
Claims 6 and 17 have been cancelled.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities: “about” should be included before “85oC” in line 10 and line 8, respectively. Appropriate correction is required.
Response to Arguments
Applicant's arguments filed 8/12/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
Li provides at paragraph [0171] that an "aqueous starch solution [is] used for application the base web or wrapper" and also, as relied upon by the Office, that the aqueous starch solution is "applied to a base web using any of a multitude of printing techniques . . . ." There is no suggestion in Li that a gel is prepared and applied to the base web. As Office will appreciate that a gel is not a solution, and of course, a solution is not a gel. Rather, gels are generally considered a type of colloid. It is unclear why the skilled artisan would modify the temperature as suggested by the Office when there is no demonstrated desire to prepare a gel. Accordingly, it is uncertain, absent the impermissible guises of hindsight, why the skilled artisan would combine the teachings of Li and Fagg in the claimed manner.
Examiner Response A:
The Examiner respectfully disagrees. The Applicant is suggesting that the motivation to combine references needs to be provided in the primary reference. Generally, the secondary reference provides motivation to modify the primary reference.
In this instance, the secondary reference provides motivation to modify the primary reference. Li does not expressly teach that the mixture temperature is maintained from 82 C to 85 C. Fagg teaches a very similar mixture and teaches mixing the composition and maintaining the composition about 190 F (87.77 C) to about 200 F (93.33 C) for about 30 minutes. Fagg teaches that cooking is continued at least until the slurry reaches a temperature at which the starch-based material undergoes hydration, and hence commences to behave as a gel. Thus, Fagg provides the mixing temperature and motivation to apply that mixing temperature, namely that continued cooking at that temperature causes the starch-based composition to undergo hydration, and hence commences to behave as a gel.
Applicant Argument B:
Second, as noted by the Office at page 6 of the current Office Action, "Fagg teaches methods for manufacturing cigarettes (abstract), including a formulation for an additive material for a paper web that is applied as an adhesive ([0245]) and is starch-based ([0246])." As discussed at paragraph [0245] of Fagg, the adhesive formulation is "used as a cigarette seam adhesive." It is unclear why a skilled artisan would choose to apply an adhesive to form bands (see, e.g., Li at FIGS. 2, 13-16, 22-32, 39, 41) as the manner suggested by the Office of Li. Accordingly, for this further reason, it is uncertain absent the impermissible guises of hindsight, why the skilled artisan would combine the teachings of Li and Fagg in the claimed manner.
Examiner Response B:
The Examiner respectfully disagrees. Li does not use the term “adhesive” but Li teaches that each banded region 126 may be formed by applying one or more “layers” 150, 152 of an aqueous film-forming composition to the base web 140 of the wrapper to reduce the permeability of the paper in the corresponding banded region ([0106] and Fig. 3). This suggests that the composition of Li can be applied as an adhesive.
Regardless, the claims are directed to preparing the solution, not how the solution is used. Both Fagg and Li teaches preparing very similar solutions.
Applicant Argument C:
Third, the Office submits at page 7 of the current Office Action that "it further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the mixture temperature since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to disclosure the optimum or workable ranges by routine experiment." The Office continues at page 7 of the current Office Action to submit that "[t]he burden is upon the Applicant to demonstrate that the claimed mixture temperature is critical and has unexpected results." As the Office is aware, a parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618 (CCPA 1977). As discussed above, there is not suggestion in Li that a gel is prepared and applied to the base web. Rather, Li is directed to applying an aqueous starch solution.
Examiner Response C:
The Examiner respectfully disagrees. The result effective variable is the speed of mixing. Li teaches mixing the mixture continuously or substantially continuously, but does not expressly teach the speed of mixing.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the mixing speed since 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 mixing speed is critical and has unexpected results. In the present invention, one would have been motivated to optimize the mixing speed motivated by the desire to optimize properties, including viscosity, of the solution.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 1-5, 7-16 and 18 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Li (US 20080295854 as cited in IDS dated 6/14/2021) in view of Fagg (US 20050076925) and further in view of Ashcraft (US 20030131860 as cited in IDS dated 6/14/2021).
Regarding claim 1, Li teaches a method of achieving ignition propensity performance in a smoking article together with statistically fewer self-extinguishments in such smoking articles ([0009]), the method comprising:
preparing an aqueous oxidized solution ([0171]) by adding starch, preferably oxidized starch ([0170]), to water that has been heated to about 25 C; mixing the mixture continuously or substantially continuously ([0171]); and maintaining the mixture at an elevated sub-boiling temperature for about 30 minutes ([0171]); and
printing the aqueous oxidized solution on the wrapper ([0172]) and then placing on a wrapper of the smoking article (140) a plurality of crenellated bands (126), the crenellated bands arranged in circumferentially extending, longitudinally spaced- apart relation (Fig. 49), the crenellated bands including a leading edge (500) and an opposing trailing edge (502),
the smoking article having an ignition propensity performance of no greater than 25%; and an average self-extinguishments value less than about 50% ([0144]).
Li fails to teach that the speed of the mixing step is about 15 rpm. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the mixing speed since 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 mixing speed is critical and has unexpected results. In the present invention, one would have been motivated to optimize the mixing speed motivated by the desire to optimize properties, including viscosity, of the solution.
Li does not expressly teach that the mixture temperature is maintained from 82 C to 85 C.
Fagg teaches methods for manufacturing cigarettes (abstract), including a formulation for an additive material for a paper web that is applied as an adhesive ([0245]) and is starch-based ([0246]). Making this starch-based additive material involves adding starch to heated water, mixing the composition and maintaining the composition about 190 F (87.77 C) to about 200 F (93.33 C) for about 30 minutes. Cooking is continued at least until the slurry reaches a temperature at which the starch-based material undergoes hydration, and hence commences to behave as a gel. The temperature at which the starch-based material undergoes hydration can vary depending upon factors such as the selection of the particular starch-based material; but typically the slurry is heated to a temperature of at least about 150 F (65.55 C), and frequently the slurry is not heated to a temperature of above about 200 F (93.33 C) ([0249]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have maintained the mixture of Li at an elevated, sub-boiling temperature (Li, [0171]), specifically one in the range of at least about 150F to about 200F, as suggested by Fagg, depending on when the specific mixture undergoes hydration and commences to behave as a gel (Fagg, [0249]). While “about 190 F” reads on “85 C” (see Ortho-McNeil Pharm, Inc. v. Caraco Pharm Labs, Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007) (construing “about 1:5” to encompass a range of ratios of at least 1:3.6 to 1:7.1) ), it further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the mixture temperature since 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 mixture temperature is critical and has unexpected results. In the present invention, one would have been motivated to optimize the mixture temperature motivated by the desire to ensure the mixture reaches a temperature at which the starch-based material undergoes hydration (Fagg, [0249]).
Modified Li does not expressly teach that each of the crenellated bands extending from a first side edge of a base web of the wrapper to a second side edge of the base web at an oblique angle with respect to a transverse direction of the base web, opposite ends of the respective bands overlapping at a seam when the wrapper is disposed about a column of material.
Ashcraft teaches smokable rods of cigarettes that are manufactured using wrapping materials that possess coatings in the form of a series of spaced apart bands (abstract). Ashcraft teaches that the patterns composed of printed regions can be longitudinally extending bands that are generally “V” shaped ([0085]). It would have been obvious for one of ordinary skill in the art at the time of invention to have made the rows of bands applied to the base web in a longitudinally extending generally “V” shape, with a reasonable expectation of success and predictable results, specifically that Ashcraft teaches that the relative sizes or dimensions of the various shapes and designs can be selected as desired. Ashcraft teaches that, for example, shapes of coated regions, compositions of the coating formulations, or amounts or concentrations of coating materials, can change over the length of the wrapping material and the relative positioning of the printed regions can be selected as desired ([0086]). This establishes the shape 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 in the absence of new or unexpected results. This configuration meets the limitations regarding that, “each of the crenellated bands extending from a first side edge of a base web of the wrapper to a second side edge of the base web at an oblique angle with respect to a transverse direction of the base web, opposite ends of the respective bands overlapping at a seam when the wrapper is disposed about a column of material.”
Regarding claim 5, Li teaches a process of making a wrapper for a smoking article ([0009]) comprising:
preparing an aqueous oxidized solution ([0171]) by adding starch, preferably oxidized starch ([0170]), to water that has been heated to about 25 C; mixing the mixture continuously or substantially continuously ([0171]); maintaining the mixture at an elevated sub-boiling temperature for about 30 minutes ([0171]); and adding calcium carbonate to the mixture ([0171]).
Li teaches disposing an add-on material on a base web (140) to form a plurality of crenellated bands (126) ([0164] and Figs. 49), the crenellated bands including a leading edge (500) and an opposing trailing edge (502),
the crenellated bands having diffusivity values in a range of 0 cm/sec to about 0.2 cm/sec.
Li fails to teach that the speed of the mixing step is about 15 rpm. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the mixing speed since 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 mixing speed is critical and has unexpected results. In the present invention, one would have been motivated to optimize the mixing speed motivated by the desire to optimize properties, including viscosity, of the solution.
Li does not expressly teach that the mixture temperature is maintained from 82 C to 85 C.
Fagg teaches methods for manufacturing cigarettes (abstract), including a formulation for an additive material for a paper web that is applied as an adhesive ([0245]) and is starch-based ([0246]). Making this starch-based additive material involves adding starch to heated water, mixing the composition and maintaining the composition about 190 F (87.77 C) to about 200 F (93.33 C) for about 30 minutes. Cooking is continued at least until the slurry reaches a temperature at which the starch-based material undergoes hydration, and hence commences to behave as a gel. The temperature at which the starch-based material undergoes hydration can vary depending upon factors such as the selection of the particular starch-based material; but typically the slurry is heated to a temperature of at least about 150 F (65.55 C), and frequently the slurry is not heated to a temperature of above about 200 F (93.33 C) ([0249]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have maintained the mixture of Li at an elevated, sub-boiling temperature (Li, [0171]), specifically one in the range of at least about 150F to about 200F, as suggested by Fagg, depending on when the specific mixture undergoes hydration and commences to behave as a gel (Fagg, [0249]). While “about 190 F” reads on “85 C” (see Ortho-McNeil Pharm, Inc. v. Caraco Pharm Labs, Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007) (construing “about 1:5” to encompass a range of ratios of at least 1:3.6 to 1:7.1) ), it further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the mixture temperature since 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 mixture temperature is critical and has unexpected results. In the present invention, one would have been motivated to optimize the mixture temperature motivated by the desire to ensure the mixture reaches a temperature at which the starch-based material undergoes hydration (Fagg, [0249]).Modified Li does not expressly teach that each of the crenellated bands extending from a first side edge of a base web of the wrapper to a second side edge of the base web at an oblique angle with respect to a transverse direction of the base web, opposite ends of the respective bands overlapping at a seam when the wrapper is disposed about a column of material.
Ashcraft teaches smokable rods of cigarettes that are manufactured using wrapping materials that possess coatings in the form of a series of spaced apart bands (abstract). Ashcraft teaches that the patterns composed of printed regions can be longitudinally extending bands that are generally “V” shaped ([0085]). It would have been obvious for one of ordinary skill in the art at the time of invention to have made the rows of bands applied to the base web in a longitudinally extending generally “V” shape, with a reasonable expectation of success and predictable results, specifically that Ashcraft teaches that the relative sizes or dimensions of the various shapes and designs can be selected as desired. Ashcraft teaches that, for example, shapes of coated regions, compositions of the coating formulations, or amounts or concentrations of coating materials, can change over the length of the wrapping material and the relative positioning of the printed regions can be selected as desired ([0086]). This establishes the shape 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 in the absence of new or unexpected results. This configuration meets the limitations regarding that, “each of the crenellated bands extending from a first side edge of a base web of the wrapper to a second side edge of the base web at an oblique angle with respect to a transverse direction of the base web, opposite ends of the respective bands overlapping at a seam when the wrapper is disposed about a column of material.”
Regarding claim 2, the instant specification states the claimed diffusivity value of the crenellated bands is a result of using the preferred add-on solutions, base webs and application techniques ([0059]). Since modified Li teaches all of these factors, the diffusivity is inherently within the claimed range.
Regarding claims 3, 13 and 14, modified Li teaches that the establishing includes single-pass printing (Li, [0197] and [0290]) of the aqueous oxidized solution containing starch, calcium carbonate, and 1,2 propylene glycol, an anti- wrinkling agent (Li, [0132] and [0146]), wherein the starch is preferably an oxidized starch ([0170]).
Regarding claims 4, 8 and 9, modified Li does that the patterns composed of printed regions can be longitudinally extending bands that are generally “V” shaped (Ashcraft,[0085]), which meets the limitation for a chevron pattern.
Regarding claim 7, modified Li teaches further including slitting the base web to form bobbins (Li, [0096]).
Regarding claim 11, modified Li teaches that the crenellated bands have a width in a range of about 5 mm to about 10 mm (Li, [0164]).
Regarding claim 12, modified Li teaches that each crenellated bands of the plurality of crenellated bands are spaced in a range of about 12 mm to about 40 mm (Li, [0164]).
Regarding claims 15 and 18, modified Li teaches the crenellated bands include crenels (504) disposed between merlons (506) (Li, Fig. 53).
Regarding claim 16, modified Li teaches that an average height of the merlons, which is about 2 mm to about 5 mm, preferably about 3 mm (Li, [0274]), is less than a central portion of the respective crenellated band, which is about 2.5 mm to about 5 mm, based on the width being about 5 mm to about 10 mm (Li, [0164]).
Regarding claim 10, regarding the limitation “wherein the chevron pattern includes an angle in a range of about 0.5 degrees to about 5 degrees relative to the transverse direction of the base web” the “about 0.5 degrees” encompasses an angle of 0 degrees or very close to 0 degrees, which would make the chevron pattern a transverse band. Modified Li teaches transverse bands (Li, 126 in Fig. 50).
Alternatively, modified Li teaches that the relative sizes or dimensions of the various shapes and designs, including the rows of bands in chevron form, can be selected as desired (Ashcraft, [0086]). Thus, the relative size and dimension of the chevrons are established as result effective variables which it would have been obvious for one of ordinary skill in the art at the time of the invention to have optimized with predictable results and a reasonable expectation of success. See MPEP 2144.05 II B.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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YANA BELYAEV
Examiner
Art Unit 1755
/YANA BELYAEV/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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