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 16-33 are pending and are subject to this Office Action.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 05/11/2026.
Claims 18-19 are amended.
The 35 U.S.C. 112(b) rejections of claims 18-19 have been withdrawn due to amendments made to the claims.
Response to Arguments
Applicant' s arguments, see pages 5-12, filed 05/11/2026, with respect to the rejection(s) of claims 16-33 under 35 U.S.C. 103, have been fully considered and are not persuasive.
On pages 6-8, the Applicant argues that Besso teaches a wide spectrum of possible thickness and basis-weight combinations and thus the breadth of these ranges confirm that Besso provides no guidance toward selecting a particular combination of thickness and basis-weight values as claimed.
The Examiner respectfully disagrees. The Applicant’s Specification recites “the paper layer may have a thickness of less than about 50 micrometers, or less than about 40 micrometers. The wrapper includes a paper layer having a grammage in a range from about 25 gsm to about 45 gsm, or from about 35 gsm to about 40 gsm.” Besso discloses similar overlapping ranges. Besso teaches a thickness of preferably 40 to 100 micrometers and a grammage of preferably 2 to 40 gsm ([0024]). Since Besso already makes obvious the claimed thickness to gsm ratio and additionally teaches the individual thicknesses and basis-weights are within or overlap those described in Applicant’s Specification, the breadth of the ranges provided in Besso are not a wide spectrum of possible outcomes, and at the very least not ones that are outside of Applicant’s own disclosure. Therefore, Besso does in fact read on and make obvious the claimed ratio.
Furthermore, Besso teaches Example 1 comprising the ratio claimed. Example 1 teaches a cigarette paper comprising a thickness of 47 and a grammage of 46.5 (pages 13-14). Therefore, Besso does in fact pick such a ratio in at least one example as has been provided in the rejection below for clarity. For those reasons the arguments are unpersuasive.
On pages 8-10, the Applicant further argues that the Office does not provide a sufficient reason to modify Sciboz based on Besso. Specifically arguing that none of the references cited recognize the thickness and basis-weight as related parameters.
The Examiner respectfully disagrees. As discussed above, Besso does indeed teach and make obvious the ratio claimed. Besso clearly teaches the claimed ratio and the Examiner additionally notes that as mentioned in the previous Office Action, absent unexpected results, the claimed ratio is not novel.
On page 10, the Applicant further argues that Besso does not disclose an overlapping range for the claimed ratio because the independently disclosed parameters that the cited reference teaches are not related to one another.
The Examiner respectfully disagrees. Even absent the example 1 provided as detailed above, Besso clearly teaches parameters of the wrapping paper include weight-basis and thickness. These parameters are not independent and are described as ranges within the same wrapper. For those reasons alone and additionally the ones provided above, the arguments are not found persuasive, and the rejection is maintained.
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 16-22, 25-26, 29, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Sciboz et al. (US 2018/0310608 A1, cited in the IDS dated 11/19/2021) in view of Besso et al. (US-20170215475-A1), and Dashley et al. (GB 2143150, cited in the IDS dated 11/19/2021) or alternatively Kido et al. (TW 201538090 A, hereinafter referring to the English translation provided), or alternatively Xu (CN-106480778-A, hereinafter referring to the English translation provided).
Regarding claim 16, Sciboz teaches a heated aerosol generating article with homogenized tobacco material as the aerosol substrate material ([0001]). The homogenized tobacco material contains nicotine ([0004]) and a range of 5-30% by dry weight of aerosol former ([0045]). Sciboz further teaches a paper wrapper disposed about and in contact with the aerosol generating article ([0019]).
Sciboz does not explicitly disclose wherein the substrate comprises at least about 10% aerosol former. The prior art’s range of wt% overlaps with the range found in claim 16 of at least about 10% and therefore establishes a prima facie case of obviousness. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” see MPEP 2144.05 I. An applicant’s showing of unexpected results from values outside of the range of the prior art may overcome this prima facie case.
Sciboz fails to teach (I) wherein the wrapper comprises a cylindrical paper layer having a thickness/grammage of about 1.2 micrometers/gsm or less, and (II) wherein the paper layer comprises a surface treatment comprising PVOH or siloxane. Sciboz is silent in regards to grammage and thickness.
Regarding (I), Besso, directed to hydrophobic wrapper for a smoking article, discloses aa smoking article comprising a tobacco substrate comprising nicotine ([0004]) and at least 15% of an aerosol former ([0054]).
Besso further discloses the wrapper disposed about or surrounding the tobacco substrate and the wrapper comprising a web of cellulosic fibers forming a paper wrapper ([0055]).
Besso further discloses a cylindrical paper layer for maintaining the substrate in a cylindrical form (claim 2).
Besso further discloses the cylindrical paper layer comprising “any suitable basis weight” and specifically discloses the basis weight can be in the from 20 to 50 gsm ([0030]). Besso further discloses the wrapper can have “any suitable thickness” and can specifically be in a range from about 30 to about 50 micrometers ([0030]). Therefore, Besso teaches a total possible thickness/grammage ratio ranging from 0.67 to 2.5. Furthermore, Besso teaches an example (Example 1) comprising the ratio claimed. Example 1 teaches a cigarette paper comprising a thickness of 47 and a grammage of 46.5 (pages 13-14) which results in a thickness to gsm ratio of 1.01. The prior art’s range of thickness/grammage ratio overlaps with the range of about 1.2 micrometers/gsm or less and therefore establishes a prima facie case of obviousness. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” see MPEP 2144.05 I. An applicant’s showing of unexpected results from values outside of the range of the prior art may overcome this prima facie case.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sciboz by applying the wrapping paper parameters of Besso, because both are directed to smoking articles comprising paper wrappers, Besso teaches the wrapper can have “any suitable thickness” and “any suitable basis weight” ([0030]), Besso further teaches a cylindrical paper maintains the substrate in a cylindrical form (claim 2), and it would be obvious for one having ordinary skill in the art to look to a similar reference for features of a known wrapper paper, especially when the prior art is silent to it, because this merely involves applying a known suitable weight and thickness of a similar paper wrapper, known to optimize the performance of the paper ([0031]) to yield predictable results.
Regarding (II), Dashley, directed to smoking articles, teaches that a stain resistant substance, like PVOH, may be coated on either the outside of the inside portions of the paper (Pg. 1, lines 79-96).
Kido, directed to cigarettes, teaches a non-penetrating layer of a coating solution comprises polydimethyl siloxane ([0076]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sciboz by applying a PVOH surface treatment as taught by Dashley or siloxane surface treatment as taught by Kido, because all are directed to tobacco provision systems, Dashley teaches PVOH is known in the art to provide stain resistant properties when coated on wrapping paper, Kido teaches siloxane is known in the art to provide stain resistant properties when coated on wrapping paper, and this merely involves applying a known stain resistant coating to a similar device to yield predictable results.
Therefore, Sciboz, in view of Besso, Dashley, and Kido, teaches each and every limitation of claim 16.
Alternatively, Xu directed to a cigarette tipping paper, discloses the tipping paper including an oil-resistant layer and an oleophobic hydrophilic layer sequentially stacked on at least one side of the tipping base paper ([0008]).
Xu further discloses the first oleophobic and hydrophilic layer 30 may further include at least one of the following additives: slip agent, anti-settling agent, defoamer, leveling agent, etc., to make the first oleophobic and hydrophilic layer 30 smoother and more even ([0035]).
Xu further discloses the leveling agent may be one or more of polydimethylsiloxane (PDMS), alkyl-modified organosiloxane, and polyether polyester-modified organosiloxane (i.e., paper layer comprises a surface treatment comprising siloxane) ([0035]).
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to either modify Besso or further modify Modified Besso, by making the paper further comprise siloxane as taught by Xu, because all are directed to aerosol generating articles, Xu teaches siloxane makes the surface treatment smoother and more even ([0035]), and this involves modifying a similar paper of an aerosol generating article with a known surface treatment in the art to yield predictable results.
Regarding claim 17, Modified Sciboz discloses the cylindrical paper layer comprising “any suitable basis weight” and specifically discloses the basis weight can be in the from 20 to 50 gsm (Besso [0030]). Besso further discloses the wrapper can have “any suitable thickness” and can specifically be in a range from about 30 to about 50 micrometers ([0030]). Therefore, Besso teaches a total possible thickness/grammage ratio ranging from 0.67 to 2.5. The prior art’s range of thickness/grammage ratio overlaps the range of about 1.0 micrometers/gsm to about 1.2 micrometers/gsm without and therefore establishes a prima facie case of obviousness. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” see MPEP 2144.05 I. An applicant’s showing of unexpected results from values outside of the range of the prior art may overcome this prima facie case.
Regarding claim 18, Modified Sciboz further discloses the wrapper can have “any suitable thickness” and can specifically be in a range from about 30 to about 50 micrometers (Besso [0030]). The prior art’s range of thickness overlaps with the range of less than about 50 micrometers and therefore establishes a prima facie case of obviousness. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” see MPEP 2144.05 I. An applicant’s showing of unexpected results from values outside of the range of the prior art may overcome this prima facie case.
Regarding claim 19, Modified Sciboz discloses the cylindrical paper layer comprising “any suitable basis weight” and specifically discloses the basis weight can be in the from 20 to 50 gsm (Besso [0030]). The prior art’s range of grammage overlaps with the range of from about 25 gsm to about 45 gsm and therefore establishes a prima facie case of obviousness. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” see MPEP 2144.05 I. An applicant’s showing of unexpected results from values outside of the range of the prior art may overcome this prima facie case.
Regarding claim 20, Modified Sciboz teaches a wrapping paper with a stain resistant substance added at the paper making stage (Dashley Pg. 1, lines 97-99). Dashley teaches that PVOH is a suitable stain resist material (Pg. 1, lines 79-87).
Regarding claim 21, Modified Sciboz discloses the cylindrical paper comprising siloxane (Kido [0076] and Xu [0035]).
Regarding claim 22, Sciboz teaches a homogenized tobacco material comprising binders that provide the ability to gel when in contact with water ([0047]). These binders may comprise gums or pectins ([0048]).
Regarding claim 25, Sciboz teaches the aerosol forming substrate may be homogenized tobacco material ([0045]).
Regarding claim 26, Sciboz teaches the homogenized tobacco material comprises tobacco power, 20 wt% glycerine as an aerosol former, and 3 wt% guar as a binder ([0080]).
Regarding claim 29, Modified Sciboz discloses the wrapper is the portion of the smoking article that is disposed about the tobacco rod or tobacco substrate to help maintain the cylindrical form of the tobacco substrate (Besso [0027]).
Regarding claim 33, Modified Sciboz discloses the wrapper circumscribes the tobacco substrate and is formed of other material and optional filler materials (Besso [0023]).
Since Besso discloses the paper wrapping can optionally include filler material, it would be obvious to one of ordinary skill in the art that Sciboz teaches embodiments without adding filler to the paper wrapping and therefore would make obvious claim limitation “wherein the cylindrical paper is free of fillers.”
Claims 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Sciboz et al. (US 2018/0310608 A1, cited in the IDS dated 11/19/2021) in view of Besso et al. (US-20170215475-A1), and Dashley et al. (GB 2143150, cited in the IDS dated 11/19/2021) or alternatively Kido et al. (TW 201538090 A, hereinafter referring to the English translation provided), or alternatively Xu (CN-106480778-A, hereinafter referring to the English translation provided), and further in view of Aoun et al. (US 2021/0177041 A1, hereinafter “Aoun”).
Regarding claim 23, Modified Sciboz discloses a gel composition but does not explicitly disclose the gel composition comprises a majority of glycerine.
Aoun, directed to an aerosol generating article, teaches an amorphous solid may comprise a dried gel ([0024]), and the amorphous solid may have a dry weight basis of aerosol generating agent comprising glycerol in an amount from 15 wt% to 75 wt% ([0176]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to substitute the aerosol substrate of Sciboz with the aerosol forming substrate of Aoun, because Sciboz and Aoun are both directed to aerosol provision systems, Aoun teaches that an aerosol generating substrate composition needs to be fine-tuned to prevent negative results like the substrate absorbing water and reducing appropriate consumption experience or being too brittle ([0135]) and this merely involves applying a known substrate composition to a similar device to yield predictable results.
Regarding claim 24, Modified Sciboz fails to disclose wherein the gel composition comprises xanthan gum.
Aoun, directed to an aerosol generating article, teaches an amorphous solid may comprise xanthan gum as a gelling agent ([0132]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sciboz by including the xanthan gum as a gelling agent in the aerosol generation substrate as taught by Aoun, because Sciboz and Aoun are both directed to aerosol provision systems, Aoun teaches that xanthan gum is known in the art as a suitable gelling agent in an aerosol substrate ([0132]) and this merely involves applying a known gelling agent to a similar device to yield predictable results.
Claims 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Sciboz et al. (US 2018/0310608 A1, cited in the IDS dated 11/19/2021) in view of Besso et al. (US-20170215475-A1), and Dashley et al. (GB 2143150, cited in the IDS dated 11/19/2021) or alternatively Kido et al. (TW 201538090 A, hereinafter referring to the English translation provided), or alternatively Xu (CN-106480778-A, hereinafter referring to the English translation provided), and further in view of Mironov (US 2019/0075851 A1, cited in the IDS dated 11/19/2021, hereinafter “Mironov”).
Regarding claims 27 and 28, Sciboz discloses a heating element for a heat-not-burn device ([0045]), but does not explicitly disclose a metallic induction heating element or plurality of metallic induction heating elements.
Mironov, directed to aerosol forming substrates, teaches an aerosol forming substrate containing a susceptor that can convert energy transferred as magnetic waves into heat ([0021]).
Mironov further teaches the susceptor may comprise ferrite, a metallic material ([0030]) or metallic alloys ([0028]). Mironov further teaches that the susceptor may comprise a plurality of particles acting as individual induction heating elements ([0005]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sciboz by including one or more metallic induction susceptor(s) in the aerosol generation substrate as taught by Mironov, because Sciboz and Mironov are both directed to tobacco provision systems, Mironov teaches that using susceptors to heat aerosol substrates is known in the art to provide uniform distributed heat throughout a substrate, and this merely involves applying a known technique to a similar device to yield predictable results.
Claims 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Sciboz et al. (US 2018/0310608 A1, cited in the IDS dated 11/19/2021) in view of Besso et al. (US-20170215475-A1), and Dashley et al. (GB 2143150, cited in the IDS dated 11/19/2021) or alternatively Kido et al. (TW 201538090 A, hereinafter referring to the English translation provided), or alternatively Xu (CN-106480778-A, hereinafter referring to the English translation provided), and further in view of Kasbo et al. (US-5170807-A).
Regarding claims 30-32, Modified Sciboz discloses various embodiments wherein the wrapper is formed of cellulosic material such as paper, wood, textile, natural fibers, and artificial fibers (Besso [0029]).
Besso further discloses the paper wrapper can optionally also include filler materials ([0029]), but is silent to the paper layer comprising 90 or 95% wt. cellulosic.
However, since Besso teaches embodiments wherein the only ingredient mentioned in the wrapper can be cellulosic materials, it would be obvious to one of ordinary skill in the art that the paper layer could consist essentially of cellulosic material, as high as 95% wt, and is therefore considered prima facie obvious.
In addition, Kasbo directed to a method of producing a non-burning outer wrapper for use with smoking products, discloses the paper layer preferably being 100% cellulose paper (column 3, lines 5-8). The prior art’s range of wt% overlaps with the range of at least about 90% wt, at least 95% wt, and consisting essentially of cellulosic material as recited in claims 30-32 respectively, and therefore establishes a prima facie case of obviousness. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” see MPEP 2144.05 I. An applicant’s showing of unexpected results from values outside of the range of the prior art may overcome this prima facie case.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to further modify Modified Sciboz by making the cellulosic material at least 95% wt of the paper layer and the layer consist essentially of cellulosic material, as taught by Kasbo, because both are directed to wrappers for smoking articles, Kasbo teaches it is common in the art for base papers to comprise pure cellulose (column 3, lines 5-8), and this merely involves applying a known technique of using a high amount of cellulosic material in a paper layer of a similar wrapper, especially when the prior art is silent to the amount of cellulosic material, to yield predictable results.
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 MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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