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, 8, 14, 18, 21-28, and 30 are pending and are subject to this Office Action. Claims 25-28 and 30 are withdrawn.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 6/23/2026 containing
amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments filed 6/23/2026 have been fully considered but they are not persuasive.
On page 7, the Applicant argues that Paper A as disclosed by Kaljura has a diffusivity value of 0.140 cm/s, rather than within the claimed range of 0.15 to 0.5 cm/s. The Applicant further argues that while the Examiner asserts that a prima facie case of obviousness exists because Paper A’s value is merely close to the claimed lower bound, the Examiner has not identified any motivation or reasoned rationale for a person of ordinary skill in the art to modify the prior art value to arrive within the claimed range.
The Examiner does not find this to be persuasive. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. The Examiner does not need to identify motivation or reasoned rationale for a person of ordinary skill in the art to modify the prior art value to arrive within the claimed range. Rather, the burden is on the Applicant to establish a showing of unexpected results or criticality of the claimed range. See MPEP § 2144.05(III). regarding rebuttal of prima facie case of obviousness.
Further, the courts have held a claimed composition was so close to the prior art that prima facie one skilled in the art would have expected them to have the same properties (see Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)). In Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) ()), the courts held that under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0. In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934), the courts held that the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical. See MPEP § 2144.05(I).
On page 8, the Applicant argues that as the Examiner relies on the disclosure in Kaljura that region 322 can have any diffusivity below 0.50 cm/s, and region 322 is part of finished wrapper 320, then the Examiner must also consistently apply the disclosure of finished wrapper 320. Thus as the region 322 is only a portion of finished wrapper 320, this consistent reliance on Kaljura’s finished wrapper 320 fails to meet the claim limitation that the diffusivity of the paper wrapper is uniform along the length of the tobacco rod and the permeability of the wrapper is between about 4 and 12 CU over at least 90% surface area of the wrapper.
The Examiner does not find this to be persuasive. First, the reliance on the disclosure in Kaljura that region 322 can have any diffusivity below 0.50 cm/s, is because it is evident from the disclosure that Paper A is region 322, or in other words, Paper A has the same materials and properties of region 22. This is shown through Kaljura’s disclosure that Paper A is a non-embossed, non-perforated sheet of the same low permeability base paper 320 used for the wrapper 320 (see page 12, last paragraph of Kaljura). Table 1 shows only one data point of Paper A, but based on the disclosure of Kaljura it would be obvious to one of ordinary skill in the art that the diffusivity of Paper A may have the same diffusivity range as described for region 322, since they are the same non-embossed, non-perforated, low permeability paper.
Second, fig. 2 of Kaljura shows region 322 extending throughout the entire length of the wrapper 300 (as the strips of embossing 321 may be longitudinal strips and separated by region 322, page 8, fourth paragraph). Therefore, the region of the longitudinal region of the wrapper that does not contain the longitudinal strip of region 321 would just be a longitudinal strip of region 322, and therefore would meet the claimed limitation of the diffusivity of the paper wrapper is uniform along the length of the tobacco rod.
Finally, the claimed limitations are met due to Kaljura’s disclosure of Paper A, which has a diffusivity that is merely close to the claimed diffusivity as discussed above.
The following is the maintained rejection.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (WO2011/117106).
Regarding claim 1, Kaljura teaches:
A smoking article (100) comprising tobacco material (310) wrapped in a paper wrapper (320) to form a tobacco rod (300) (figure 1, pages 6-7, last paragraph).
Other types of cigarette wrappers are shown in Table 1, and Paper A is a non-embossed, non-perforated sheet of the same low permeability base paper 320 used for the wrapper 320 (page 12, lines 21-32). As such, Kaljura teaches other known types of paper wrappers used in a smoking article to wrap a tobacco material.
The paper wrapper has a diffusivity of 0.140 cm/s (Table 1, page 13: Paper A C02 diffusivity) which is merely close to the claimed diffusivity of 0.150 cm/s and therefore a prima facie case of obviousness exists. Alternatively, as Kaljura teaches that Paper A is the same base paper wrapper 320 (page 12, lines 21-32) and the diffusivity of section 322 which is a remaining area of a wrapper that is not embossed may be any value below 0.50 cm/s (page 18, lines 12-14), it is evident that the diffusivity of Paper A may be any value below 0.50 cm/s. The range taught by the prior art overlaps the claimed range and is therefore prima facie obvious.
The paper wrapper has a permeability of 7.2 CU (Table 1, page 13: Paper A Air permeability), which falls within the claimed range of between 4 and 12 CU.
As Table 1 shows one value for air permeability for paper A, it is evident that the permeability is that value over 100% of a surface area of the paper wrapper, which falls within the claimed range of at least 90%.
As Table 1 shows one value for diffusivity for paper A, it is evident that the diffusivity of the paper wrapper is one constant value, and therefore uniform along the length of the tobacco rod.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (WO2011/117106) as applied to claim 1 above, and further in view of Schneider (US 6,089,238, cited previously).
Regarding claim 8, Kaljura discloses the smoking article further comprising a filter (200, figure 1, page 7, first paragraph).
Kaljura does not appear to disclose the filter comprising at least one of: a pressure drop across the filter is between about 40 mm water gauge (WG) and 180 mm WG; a ventilation area; a ventilation area which provides ventilation of between about 40% and 90%;filter material having a denier per element of between about 2.5 and 9; and filter material having a total denier of between 10,000 and 32,000.
Schneider, directed to a cigarette filter, teaches:
A smoking article comprising tobacco material wrapped in a paper wrapper to form a tobacco rod (Col. 1, lines 5-10).
The smoking article further comprises a filter (filter 10, Fig. 1, Col. 3, lines 65-67, Col. 4, lines 1-10).
A pressure drop across the filter is between about 40 mm water gauge (WG) and 180 mm WG (Col. 4, lines 4-10, wherein a pressure drop across segment 10 of the filter is 50 mm WC).
The filter has a ventilation area (ventilation perforations 18, Fig. 1, Col. 4, lines 10-20).
The filter has a ventilation area which provides ventilation of between about 40% and 90% (ventilation perforations 18, Fig. 1, Col. 4, lines 10-20, wherein the ventilation rate is between 50 to 85%).
The filter material having a denier per element of between about 2.5 and 9 (Col. 2, lines 23-34, wherein the material of the jacket element portion of the filter has a single denier of 2.5 to 5 denier per filament).
The filter is able to be part of a coaxial cigarette and may be configured as an ultralight cigarette (Col. 1, lines 53-55).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the filter of Kaljura to have the ventilation area, pressure drop, ventilation, and denier per element as taught by Schneider, because both Kaljura and Schneider are directed to smoking articles with filters, Schneider teaches the filter may be configured as part of a coaxial ultralight cigarette, and this merely involves incorporating known filter properties to a similar filter of a similar smoking article to yield predictable results.
Claim(s) 14 and 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (WO2011/117106) as applied to claim 1 above, and further in view of Sebastian (US2011/0030709, cited previously).
Regarding claim 14, Kaljura is silent to the basis weight of the paper wrapper.
Sebastian, directed to cigarettes, teaches:
Preferred paper wrapping material base sheets have basis weights between about 20 g/m2 and about 30 g/m2 [0181].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the paper wrapper of Kaljura to have a basis weight between 20 and 30 g/m2 as taught by Sebastian, because both Kaljura and Sebastian are directed to smoking articles with paper wrappers, Kaljura is silent in regards to suitable basis weights for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable basis weight for a similar paper wrapper of a smoking article, Sebastian teaches known basis weights for a similar paper wrapper, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
The range taught by the prior art overlaps the claimed range of between 24 and 36 g/m2 and is therefore prima facie obvious.
Regarding claims 22 and 24, Kaljura further teaches that the wrapper may comprise a burn additive material to increase the burn rate of the wrapper (page 9, third paragraph).
Kaljura is silent to the amount and type of burn additive of the paper wrapper.
Sebastian further teaches:
Additives can be incorporated into the wrapping material for a variety of reasons, for examples burn control additives such as potassium citrate…for certain wrapping materials, the amount of certain additive salts, such as burn chemicals such as potassium citrate and monoammonium phosphate, preferably are in the range of about 0.5 to about 0.8 percent, based on the dry weight of the wrapping material to which those additive salts are applied [0187].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the burn additive of the paper wrapper of Kaljura to be potassium citrate in the range of about 0.5 to about 0.8 percent as taught by Sebastian, because both Kaljura and Sebastian are directed to smoking articles with paper wrappers comprising burn additives, Kaljura is silent in regards to the amount and type of burn additive and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable burn additive for a similar paper wrapper of a smoking article, Sebastian teaches known burn additives and amounts for a similar paper wrapper, and this merely involves applying a known burn additive amount and type to a similar product with a reasonable expectation of success. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
The range taught by the prior art falls within the claimed range of less than 4% burn additive by weight of the paper wrapper and is therefore prima facie obvious.
The burn additive being potassium citrate reads on claim 24.
Regarding claim 23, Sebastian further teaches:
Wherein the paper wrapper comprises about 1% burn additive by weight ([0187] – wherein the chemical additive does not exceed about 1%, and certain additives can act as burn control additives). The claimed amount of about 1% falls within the range taught by the prior art and is therefore considered prima facie obvious.
Claim(s) 18 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (WO2011/117106) as applied to claim 1 above, and further in view of Sakurai (US2020/0323258)
Regarding claims 18 and 21, Kaljura is silent to the filler content of the paper wrapper.
Sakurai, directed to a smoking article, teaches:
The tipping paper 13 may be paper further containing calcium carbonate or titanium oxide as a filler and having opacity of greater than or equal to 76%. The tipping paper 13 having opacity of greater than or equal to 76% is obtained by containing, for example, calcium carbonate of greater than or equal to 20% by weight. The tipping paper 13 having opacity of greater than or equal to 76% is preferable because characters or figures printed on the front surface are not likely to be seen through on the back surface [0036].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the wrapper paper of Kaljura to have calcium carbonate as filler to make the opacity greater than or equal to 76% as taught by Sakurai, because both Kaljura and Sakurai are directed to smoking articles with paper wrapper, Sakurai teaches this allows characters or figures printed on the front surface to not likely be seen through on the back surface, and this merely involves incorporating a known paper wrapper filler and opacity to a similar paper wrapper of a smoking article to yield predictable results.
The range taught by the prior art overlaps the claim 21 range of an opacity between 60% and 80% and is therefore prima facie obvious.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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