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, 3-5, 7, 8 and 10-14 are pending.
Claims 1, 8, 12 and 14 have been amended.
Specification
The replacement abstract was received on 1/20/2026.
Drawings
The drawings were received on 1/20/2026. These drawings are acceptable.
Response to Arguments
Applicant's arguments filed 1/20/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
The fragrance-containing sheet for smoking articles is manufactured by drying a slurry comprising alcohol, moisture, modified cellulose, and fragrance, and thus does not contain an emulsifier. Consequently, the content of ethanol before drying affects the structure and composition of the sheet.
Specifically, the inclusion of alcohol in amount of 1 wt% 80 wt% in the slurry before drying allows for the exclusion of heating and temperature maintenance processes (see paragraphs 2-3 on page of the specification as filed). As a result, the fragrance contained in the sheet can remain intact without thermal denaturation. Furthermore, the slurry does not contain an emulsifier because it includes distilled water and alcohol within the claimed ranges prior to the drying process. Consequently, the purity of the sheet can be improved, and off-flavors during smoking can be reduced (see last paragraph on page 25 of the specification as filed).
The cited documents neither disclose nor suggest that the exclusion of emulsifiers can be achieved by including alcohol in the claimed proportions in the sheet composition being it is dried (slurry).
Since the slurry of the fragrance-containing sheet for smoking articles of the present claims contains distilled water at a relatively low content and alcohol within the claimed range, the modified cellulose and "fragrance are dissolved at room temperature. This results in the effect of eliminating the need for a separate heating process and the addition of emulsifiers for dissolution.
Examiner Response A:
The Examiner respectfully disagrees. The prior art teaches that the fragrance sheet does not contain an emulsifier (see rejection below). The Applicant is arguing surprising or unexpected process improvements, but the claims are directed to a product. Furthermore, the Applicant argues changes in properties of the product based on the process improvements, but has provided no evidence to support the Applicant’s arguments. Specifically the Applicant argues viscosity characteristics but the claims do not recite any viscosity requirements and there is no evidence shown of the difference in viscosity.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 10: “the fragrance-containing sheet not comprise an emulsifier” should read “the fragrance-containing sheet does not comprise an emulsifier”. Appropriate correction is required.
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.
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.
Claim(s) 1, 4, 5, 7, 8 and 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ergle (US 20090038629).
Regarding claim 1, Ergle teaches a fragrance-containing sheet for smoking articles (abstract), comprising: moisture, specifically a moisture content of 8% to 12% ([0046]); 15 wt% to about 80 wt% cellulose and cellulose derivatives ([0014]) including carboxymethyl cellulose, methyl cellulose and/or ethyl cellulose ([0027] and [0031]); and about 20 wt% to about 75 wt% fragrance ([0014]).
Ergle teaches that it may be useful to employ an emulsifier to improve the stability of resultant emulsions ([0044]); therefore, emulsifiers are optional and also may be absent from the sheet.
Regarding the limitation, “wherein the fragrance-containing sheet contains 1 wt% to 80 wt% of alcohol before being dried,” the steps and parameters for the process for making the sheet do not add patentable details to this invention, as no structural characteristics are associated with the step in the specification. Furthermore, the prior art discloses the same structural characteristics as the instantly claimed invention. As such, this is a “product by process” claim. The courts have held that once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. See MPEP 2113.
Regarding claim 4, Ergle teaches the sheet further comprises a bulking agent, specifically starch ([0031]).
Regarding claim 5, Ergle teaches the sheet further comprises an aerosol former, specifically propylene glycol ([0072]).
Regarding claim 7, Ergle teaches the thickness of the sheet is 2 mil to about 5 mil ([0046]).
Regarding claims 8 and 14, Ergle teaches a smoking article, specifically a cigarette, comprising: a first portion (“tobacco column”) comprising a tobacco material (“shredded tobacco filler”) and a fragrance-containing sheet (“flavor-bearing sheets”); and a second portion comprising a filter element (“filter”), wherein the first portion and the second portion are arranged in series along a longitudinal direction of the cigarette ([0015]), and wherein the fragrance-containing sheet comprises modified cellulose, specifically carboxymethyl cellulose ([0014],[0027] and [0031]).
Ergle teaches a fragrance-containing sheet for smoking articles (abstract), comprising: moisture, specifically a moisture content of 8% to 12% ([0046]); modified cellulose, specifically about 15 wt% to about 80 wt% ([0014]); and about 20 wt% to about 75 wt% fragrance ([0014]).
Ergle teaches that it may be useful to employ an emulsifier to improve the stability of resultant emulsions ([0044]); therefore, emulsifiers are optional and also may be absent from the sheet.
Regarding the limitation, “wherein the fragrance-containing sheet contains 1 wt% to 80 wt% of alcohol before being dried,” the steps and parameters for the process for making the sheet do not add patentable details to this invention, as no structural characteristics are associated with the step in the specification. Furthermore, the prior art discloses the same structural characteristics as the instantly claimed invention. As such, this is a “product by process” claim. The courts have held that once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. See MPEP 2113.
Regarding claim 11, Ergle teaches the sheet further comprises a bulking agent, specifically starch ([0031]).
Regarding claim 12, Ergle teaches the sheet further comprises an emulsifier ([0044]).
Regarding claim 13, Ergle teaches the thickness of the sheet is 2 mil to about 5 mil ([0046]).
Claim(s) 3 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ergle as applied to claims 1 and 8, respectively, above, and further in view of Gonterman (US 20060021624)
Regarding claim 3, Ergle does not expressly teach that the cellulose and cellulose derivatives include hydroxypropyl methyl cellulose.
Gonterman teaches a flavored filter plug wrap of a smoking article (abstract), comprising suspending flavor in cellulose or cellulose derivatives ([0011]). Gonterman teaches that the cellulose or cellulose derivatives includes carboxymethyl cellulose and hydroxypropyl methyl cellulose ([0011]). It would have been obvious for one of ordinary skill in the art at the time of filing to have substituted the carboxymethyl cellulose in Ergle with the hydroxypropyl methyl cellulose as taught by Gonterman because it has been held that the substitution of one known element (i.e. carboxymethyl cellulose) for another (i.e. hydroxypropyl methyl cellulose) yielding predictable results, specifically serving as a binding agent (Gonterman, [0011]), to one of ordinary skill in the art would have been obvious to one of ordinary skill in the art (See MPEP § 2143 B).
Regarding claim 10, Ergle does not expressly teach that the cellulose and cellulose derivatives include hydroxypropyl methyl cellulose.
Gonterman teaches a flavored filter plug wrap of a smoking article (abstract), comprising suspending flavor in cellulose or cellulose derivatives ([0011]). Gonterman teaches that the cellulose or cellulose derivatives includes carboxymethyl cellulose and hydroxypropyl methyl cellulose ([0011]). It would have been obvious for one of ordinary skill in the art at the time of filing to have substituted the carboxymethyl cellulose in Ergle with the hydroxypropyl methyl cellulose as taught by Gonterman because it has been held that the substitution of one known element (i.e. carboxymethyl cellulose) for another (i.e. hydroxypropyl methyl cellulose) yielding predictable results, specifically serving as a binding agent (Gonterman, [0011]), to one of ordinary skill in the art would have been obvious to one of ordinary skill in the art (See MPEP § 2143 B).
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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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755