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 .
Response to Amendment
The office action is in response to Applicant’s amendment filed on 09/27/2024.
Claims 16-31 are pending.
Response to Arguments
Applicant' s arguments, see pages 7-10 filed 02/14/2025, with respect to the rejection(s) of claims 16-29 under 35 U.S.C. 103, have been fully considered and are persuasive. The previous arguments are moot in view of different interpretation of previously applied prior art and additional newly found prior art.
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, 18, 26, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al. (US-20210244084-A1).
In regards to claim 16, Sakurai, directed to a non-combustible-type smoking article (abstract) comprising:
An aerosol generating substrate comprising tobacco, which one of ordinary skill in the art would reasonably conclude contains nicotine, and an aerosol generating base material (i.e., aerosol former) including glycerine ([0038]-[0039];[0121]). Sakurai further discloses glycerine as the aerosol former in an amount of 17% of the total weight ([0121]). The range disclosed by the prior art overlaps the claimed range of at least 10% aerosol former comprising glycerine, and is therefore considered prima facie obvious; and
A paper wrapper layer 41, ([0177]-[0184]) disposed around the tobacco filler 23, which comprises the aerosol forming substrate (figure 2 and [0039]) (i.e., in contact with the aerosol generating substrate),
The wrapper comprising a paper layer, wherein the paper layer has a CD/MD of 2.5 (Comparative Example 5 – CD = 4 and MD = 1.6) (Figure 8).
In regards to claim 18, Sakurai discloses the wrapper having an elongation at break in the cross direction of 4.0% and an elongation at break in the machine direction of 1.6% (Figure 8 -Comparative Example 5).
In regards to claim 26, Sakurai discloses the tobacco filler in the aerosol generating substrate comprises homogenized tobacco material ([0039]).
In regards to claim 30, Sakurai discloses an elongation at break in the cross direction of 4% (Comparative Example 5 – Figure 7).
Claims 17 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al. ( US-20210244084-A1) and further in view of Fantur et al. (WO-2016166012-A1).
In regards to claim 17, Sakurai discloses an elongation at break ratio of 2.5, but does not explicitly disclose an elongation at break ratio of CD/MD is in a range from 2.2 to 1.8.
Fantur, directed to a wrapping paper for smoking articles, discloses the wrapping paper for smoking articles that are processed in a machine should have an elongation at break in the machine direction of at least about 1.0% and preferably at most 5.0% and more preferably 3% ([0035]-[0036]).
Fantur further teaches that when manually producing smoking articles, the elongation at break can be lower, but generally with machine processing of wrapping paper it requires the paper to have an elongation at break in the machine direction of at least 1.0% ([0035]-[0036]).
Therefore, it would be obvious to modify Sakurai to have an elongation at break in the machine direction (MD) that is from 1 to 5%, as taught by Fantur, because both are directed to paper wrappings for smoking articles, Fantur teaches it is known in the art that the paper needs to have an MD of at least 1% for machine processing and it is preferable that the MD is 3% ([0035]-[0036]), and this merely involves modifying the elongation at break in the MD direction to match a known elongation at break of a similar smoking article comprising a paper wrapping to yield predictable results.
Thus, Sakurai in view of Fantur discloses a CD/MD ratio that would arrive at overlapping ranges. For example, an elongation at break in the cross direction of 4, as taught by Sakurai, and an elongation at break in the MD of 2, as taught by Fantur would deliver a CD/MD ratio of 2.0.
In regards to claim 31, Sakurai discloses an elongation at break in the machine direction of 1.6% but does not explicitly disclose the paper layer has an elongation at break in the machine direction of 2%.
Fantur, directed to a wrapping paper for smoking articles, discloses the wrapping paper for smoking articles that are processed in a machine should have an elongation at break in the machine direction of at least about 1.0% and preferably at most 5.0% and more preferably 3% ([0035]-[0036]). The range disclosed by the prior art overlaps the claimed range of an elongation at break in the machine direction of 2% and is therefore considered prima facie obvious.
Fantur further teaches that when manually producing smoking articles, the elongation at break can be lower, but generally with machine processing of wrapping paper it requires the paper to have an elongation at break in the machine direction of at least 1.0% ([0035]-[0036]).
Therefore, Sakurai in view of Fantur, it would be obvious to modify Sakurai to have an elongation at break in the machine direction (MD) that is 2%, as taught by Sakurai, because both are directed to paper wrapping layers, Sakurai teaches it is known in the art that the paper needs to have an MD of at least 1% for machine processing and can have at most 5% ([0035]-[0036]), and this merely involves applying a known machine direction elongation at break of a paper wrapper of a similar smoking article to yield predictable results.
Claims 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al.( US-20210244084-A1), as applied to claim 16 above, and further in view of Dashley et al. (GB-2143150-A as cited in the IDS dated 11/19/2021).
In regards to claims 20 and 22, Sakurai discloses an aerosol generating article with a paper layer ([0073]), but does not explicitly disclose the paper layer comprising PVOH or siloxane.
Dashley, directed to smoking articles and paper for smoking articles, discloses the paper coated with polyvinyl alcohol (PVOH) (page 1, lines 83-87).
Dashley further discloses polyvinyl alcohol can either be coated (i.e. treated) onto the paper or added to the paper mixture during the paper making stage (i.e., paper layer comprises PVOH) (page 1, lines 97-99).
Dashley further discloses polyvinyl alcohol is used for its stain resistant properties (page 1, lines 79-87).
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sakurai, by making the paper further comprise polyvinyl alcohol as taught by Dashley because all are directed to aerosol generating articles, Dashley teaches polyvinyl alcohol has stain resistance properties (page 1, lines 79-87), and this involves modifying a similar paper of an aerosol generating article with a known component in the art to yield a predictable result of a stain resistant paper layer.
Claim 21 is further rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al.( US-20210244084-A1), as applied to claim 16 above, and further in view of Dashley et al. (GB-2143150-A as cited in the IDS dated 11/19/2021) and alternatively or additionally Xu (CN-106480778-A, hereinafter referring to the English translation provided).
In regards to claim 21, Sakurai discloses an aerosol generating article with a paper layer ([0073]), but does not explicitly disclose the paper layer comprising PVOH or silicon.
Dashley, directed to smoking articles and paper for smoking articles, discloses the paper coated with polyvinyl alcohol (PVOH) (page 1, lines 83-87).
Dashley further discloses polyvinyl alcohol can either be coated (i.e. treated) onto the paper or added to the paper mixture during the paper making stage (i.e., paper layer comprises PVOH) (page 1, lines 97-99).
Dashley further discloses polyvinyl alcohol is used for its stain resistant properties (page 1, lines 79-87).
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sakurai, by making the paper further comprise polyvinyl alcohol, as taught by Dashley, because all are directed to aerosol generating articles, Dashley teaches polyvinyl alcohol has stain resistance properties (page 1, lines 79-87), and this involves modifying a similar paper of an aerosol generating article with a known composition to yield a predictable result of a stain resistant paper layer.
In addition, 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 PVOH or 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 Sakurai or further modify Modified Sakurai, by making the paper further comprise siloxane as taught by Xu because both 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.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al. (US-20210244084-A1), as applied to claim 16 above, and further in view of Xu (CN-106480778-A, hereinafter referring to the English translation provided).
In regards to claim 23, Sakurai discloses a paper wrapper but does not explicitly disclose a wrapper comprising siloxane.
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 Sakurai or further modify Modified Sakurai, by making the paper further comprise siloxane, as taught by Xu, because both 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.
Claims 24-25 and 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al.( US-20210244084-A1), as applied to claim 16 above, and further in view of Aoun et al. (US-20210177041-A1).
In regards to claim 24, Sakurai discloses an aerosol generating substrate comprising glycerine, but does not explicitly teach a gel composition.
Aoun, directed to an aerosol generating articles, discloses an aerosol generating article comprising a tubular substrate where the substrate comprises a slurry set to a gel ([0007], [0011] and further dried to an amorphous solid, which is a dried gel ([0024]).
Aoun further discloses the amorphous solid (i.e., gel) comprises an aerosol generating agent consisting essentially of glycerol (i.e., glycerine) ([0135]).
Aoun further discloses the provision of the gel allows the composition of the aerosol or vapor to be altered/enhanced ([0028]).
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sakurai, by modifying the aerosol generating substrate to comprise a gel composition, as taught by Aoun, because all are directed to aerosol generating articles, Aoun teaches the gel allows the composition of aerosol or vapor to be altered or enhanced ([0028]), and this involves applying a known technique of using glycerine in a gel composition for a similar aerosol generating substrate.
In regards to claim 25, Sakurai in view of Aoun discloses xanthan gum in the gel composition ([0132]).
In regards to claims 28 and 29, Sakurai discloses the aerosol article is heated ([0015]) but is silent in regards to metallic induction heating elements.
Aoun discloses the aerosol forming compositions may comprise embedded heating means, such as inductive heating elements (i.e., plurality of induction heating elements) ([0046]).
Aoun further discloses at least a first and second heating element, which allows the heat to be applied to different sections of the aerosol generating article, at different times and rates ([0060]-[0061]).
Aoun further discloses that staggering the times and rates of heating may allow for both fast aerosol production and longevity of use ([0060]).
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sakurai by making the aerosol generating article further comprise a plurality of metallic heating elements, as taught by Aoun, because both are directed to aerosol generating articles, Aoun teaches the plurality of heating elements may allow for both fast aerosol production and longevity of use ([0060]), and this involves applying a known technique of using a plurality of induction heating elements for a similar aerosol generating article to yield predictable results.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al. (US-20210244084-A1), as applied to claim 26 above, and further in view of Sciboz et al. (US-20180310608-A1, as cited in the IDS dated 11/19/2021).
In regards to claim 27, Sakurai discloses homogenized tobacco material where glycerine (i.e., aerosol former) is in an amount of 17% of the total weight ([0121]). The range disclosed by the prior art overlaps the claimed range of 5 to 30 percent dry weight basis, and is therefore considered prima facie obvious.
Sakurai further discloses a binder is used in the homogenized tobacco ([0039]) but is silent in regards to an amount of binder used.
Sciboz, directed to an aerosol generating article, discloses an aerosol former content of between about 5 and 30 weight percent of the aerosol generating substrate ([0045]).
Sciboz further discloses a homogenized tobacco material comprising from about 1 to 5 % of a binder ([0047]).
Sciboz further discloses the binder gels when coming in contact with water and that the gelling strongly influences the viscosity of the tobacco slurry, which in turn is an important parameter of the slurry for subsequent web manufacturing processes, like for example casting, and therefore it is preferred to have a relatively low amount of binder in the homogenized tobacco material ([0047]).
Sciboz further discloses the binder may help ensure that tobacco, for example tobacco powder, remains substantially dispersed throughout the homogenized tobacco material ([0047]).
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sakurai, by specifying the amount of binder used in the homogenized tobacco to be 1 to 5%, as taught by Sciboz, because all are directed to aerosol generating articles, Sciboz teaches a binder can help ensure the tobacco remains substantially dispersed throughout the homogenized tobacco material ([0047]), and this involves applying a known binder percentage to a similar homogenized tobacco material to yield predictable results.
Allowable Subject Matter
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 19, no prior art alone or in combination with references discloses a paper layer comprising a CD/MD ratio of 1.8 to 2.5 along with a high paper layer grammage in a range from 25 to about 45 gm^2.
Sakurai et al. (US-20210244084-A1), directed to a non-combustible-type smoking article (abstract) comprising an aerosol generating substrate comprising tobacco and an aerosol generating base material (i.e., aerosol former) including glycerine ([0038]-[0039];[0121]). Sakurai further discloses glycerine as the aerosol former in an amount of 17% of the total weight ([0121]).
Sakurai further discloses a paper wrapper layer 41, ([0177]-[0184]) disposed around the tobacco filler 23, which comprises the aerosol forming substrate (figure 2 and [0039]) (i.e., in contact with the aerosol generating substrate), wherein the paper layer has a CD/MD of 2.5 (Comparative Example 5 – CD = 4 and MD = 1.6) (Figure 8).
Sakurai discloses a modification where the wrapper can be made of a first and second sheet made from paper ([0073]).
Sakurai further discloses the paper wrapper has a basis weight of 14 g/m², (Figure 8 – Comparative Example 5) and a thickness of 40 micrometers (Comparative Example 5).
Sakurai discloses other embodiments within the claimed basis weight but none of those examples have the recited claimed CD/MD ratio required of independent claim 19.
While Sakurai discloses the paper wrapper has a basis weight within the claimed range, Sakurai differs from the instant invention in that Sakurai’s weight is directed to the entirety of the paper wrapper and not just the paper layer comprising the CD/MD ratio claimed in claim 1.
Fantur et al. (WO-2016166012-A1), directed to a wrapping paper for smoking articles, discloses the wrapping paper for smoking articles that are processed in a machine should have an elongation at break in the machine direction of at least about 1.0% and preferably at most 5.0% and more preferably 3% ([0035]-[0036]). The range disclosed by the prior art overlaps the claimed range of an elongation at break in the machine direction of 2% and is therefore considered prima facie obvious.
Fantur further teaches that when manually producing smoking articles, the elongation at break can be lower, but generally with machine processing of wrapping paper it requires the paper to have an elongation at break in the machine direction of at least 1.0% ([0035]-[0036]).
Fantur further teaches the basis weight of the wrapping paper is from 10 to 70 g/m^2 ([0027]).
While Fantur discloses a weight that overlaps the claimed weight, Fantur does not explicitly disclose a paper layer comprising the claimed CD direction of claim 16 and therefore does not teach a paper wrapper comprising all the components of claim 1 and a basis weight of 25 to 45 g/m^2.
Hampl (US-20020157678-A1), directed to a cigarette paper with reduced carbon monoxide deliver, discloses a smoking article comprising a wrapping paper (abstract).
Hampl further discloses as long as the wrapping paper has a low fiber basis weight, the total weight of the wrapping paper can vary depending on the particular application. For instance, by adding significant amounts of fillers, the wrapping paper can have a basis weight up to about 30 gsm, particularly less than about 25 gsm, and, in one embodiment, can have a basis weight of less than about 22 gsm. At lower basis weights, wrapping papers can be made in accordance with the present invention that have sufficient opacity properties and tensile strength properties for practical use in commercial applications ([0013]).
Hampl differs from the instant invention in that Hampl does not explicitly disclose a CD/MD ratio from 1.8 to 2.5 and therefore does not teach a wrapping paper layer with a CD/MD ratio of 1.8 to 2.5 and a wrapper with a basis weight from 25 to 45 g/m^2.
As such, no prior art appears to disclose or reasonably suggest a paper layer comprising a CD/MD ratio of 1.8 to 2.5 along with a high paper layer grammage in a range from 25 to about 45 gm^2, as recited in claim 19 and therefore claim 19 is indicated as having allowable subject matter.
Conclusion
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755