DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1, 6-11, and 13-23 are pending. Claims 1, 7, and 22-23 have been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 7/21/2025 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 7/21/2025 have been fully considered but they are not persuasive.
Applicant argues that prior art references Stevens and Brinkley disclose using wood fibers to strengthen wrapping materials, which Applicant has found to be inferior to using hemp fibers. Applicant argues that incorporating hemp fibers in an amount greater than about 12% by weight and tobacco material in an amount 50% or more by weight of the wrapping material unexpectedly results in a tensile strength greater than 2,100 cN/30 mm. This argument is not persuasive, as Applicant has not established sufficient evidence of tests to show the criticality of the claimed range. To establish unexpected results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (MPEP § 716.02(d)(II), In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)). Further, “‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range” (MPEP § 716.02(d) citing In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)).
‘’Applicant further argues that Fritzsching, Yoshimura, and Pesendorfer do not disclose wrappers which include tobacco material. This argument is not persuasive as Fritzsching, Yoshimura, and Pesendorfer are not relied upon for disclosing tobacco material. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues that modifying Fritzsching, Yoshimura, and Pesendorfer to incorporate tobacco would not be obvious. This argument is not persuasive as the rejections did not modify Fritzsching, Yoshimura, and Pesendorfer to incorporate tobacco. Instead, the wrapping material of Stevens was modified based on the teachings of Fritzsching, Yoshimura, and Pesendorfer, as discussed in the rejections below.
Applicant further argues that a person having ordinary skill in the art would not apply the teachings of the prior art references used in the rejections as a person having ordinary skill in the art “would first have searched” for different references. This argument is not persuasive as Applicant has not provided any legal rationale or precedence to indicate that prior art may not be used to make a rejection if other references would have been searched for first.
Applicant further argues that there is no explicit indication in the references “that hemp possesses superior mechanical properties to wood fibers”. This argument is not persuasive as references are not required to disclose the comparative performance of a claimed material (MPEP § 2112(I)).
Applicant further argues that the references do not disclose the newly added limitations to claim 1. This argument is not persuasive as these features are obvious in view of the references of record, as discussed in the rejections below.
Applicant further argues that there is no express statement in Fritzsching that wood fibers and hemp may be substituted for one another. This argument is not persuasive as “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious” (MPEP § 2144.06(II)).
Applicant further argues “that a rationale has not been provided as to why refined hemp fibers being present in the web in an amount greater than 12% by weight and less than 20% by weight is obvious.” This argument is not persuasive as Applicant only included this limitation in the most recently submitted amendments and, therefore, a previous recitation of this rationale was not required. However, to address this newly added limitation, the rationale is presented in the rejection of claim 1 below.
Applicant further argues that the range of relative fiber weight in the wrapping material as taught by Fritzsching is broader than the range claimed and that, therefore, the claimed range is non-obvious. This argument is not persuasive as the range of Fritzsching overlaps the claimed range, as discussed in the rejection below, which establishes a prima facie case of obviousness. Applicant has not presented any secondary considerations of nonobviousness specific to the claimed range sufficient to rebut this prima facie case of obviousness.
Applicant further argues that the claimed tensile strength of the wrapping material limits the scope of the materials of the claims to compositions outside those disclosed by the prior art. This argument is not persuasive as Applicant has not presented evidence to support this assertion. Further, Applicant has not identified what parameters are allegedly affected or how the prior art ranges are outside of these unspecified parameters.
Claim Rejections - 35 USC § 103
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 1, 8, 10, 13-18, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Stevens et al. (US 3,729,009) in view of Fritzsching (US 2023/0136404 A1) and Yoshimura et al. (US 2020/0022404 A1).
Regarding claim 1, Stevens teaches a wrapping material (“wrapper”, Col. 6, Line 8) for an aerosol producing filler comprising a web (“paper-like web”, Col. 2, Lines 63-64) comprising an extracted tobacco material (“fibrous residue”, Col. 2, Line 58), the extracted tobacco material being blended with strength building fibers (“wood fiber”, Col. 6, Line 12).
Stevens does not explicitly disclose wherein the web comprises at least about 50% by weight of the extracted tobacco material. However, Stevens teaches that desirable flavor and smell is related to the amount of tobacco material (Col. 1, Lines 13-16), and undesirable flavor is related to the amount of fibers (Col. 6, Lines 12-14). One of ordinary skill in the art would have known to optimize the relative amounts of tobacco material and fiber to balance the overall strength, flavor, and smell of the resulting wrapping material. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the weight of the extracted tobacco material such that it falls within the claimed range. "[W]here 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, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Stevens does not teach that the strength building fibers comprise refined hemp fibers. However, Fritzsching, in the same field of endeavor, teaches a wrapping material (“wrapper paper” with “pulp fibers”, ¶ 0015) with strength building fibers that comprise refined hemp fibers (“The tensile strength can primarily be increased by increasing the basis weight and by increasing the proportion of pulp fibers, as well as by more intensive refining of the pulp fibers.”, ¶ 0043; “The pulp fibers . . . can be sourced from . . . other plants such as hemp, flax” ¶ 0016). Alternatively, Fritzshing teaches that the strength building fibers can comprise wood fibers (“The pulp fibers . . . can be sourced from coniferous wood . . . from deciduous wood”, ¶ 0016). Because Fritzching teaches this interchangeability, one of ordinary skill in the art would have understood that substitution of refined hemp fibers in place of wood fibers would predictably provide the same result of strengthening the wrapping material. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the refined hemp fibers taught by Fritzching in place of the strength building fibers comprising wood fibers taught by Stevens (see MPEP § 2143(I)(B)).
Fritzsching also teaches that the refined hemp fibers are present in the web in an amount of “preferably at least 10% and at most 80% . . . with respect to the mass of the wrapper paper (¶ 0015). Since the range at least 10% and at most 80% overlaps the claimed range of greater than 12% by weight and less than 20% by weight, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Fritzsching does not explicitly disclose an average fiber length of the refined hemp fibers to determine whether or not it falls within the claimed range. However, Yoshimura, in the same field of endeavor, teaches a wrapping material (“wrapping paper”, ¶ 0024) with hemp fibers (“flax pulp fibers, hemp pulp fibers, or sisal hemp pulp fibers”, ¶ 0024) and an average fiber length of 1.478 mm (“average fiber length of 1478 μm”, ¶ 0024). Yoshimura also teaches a benefit of this average fiber length in that it ensures that the fibers are refined to an appropriate degree (“so that the Schopper-Riegler freeness is 60° SR”, ¶ 0024). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used the average fiber length taught by Yoshimura for the fibers in the wrapping material of the combination in order to obtain this benefit. Since 1.478 mm is close to the claimed range of greater than 1.5 mm and less than 3.5 mm, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Stevens does not explicitly disclose the basis weight of the wrapping material to determine whether or not it falls within the claimed range. However, Fritzsching teaches that the basis weight of a wrapping material should be optimized to fall within the range of 20 gsm to 40 gsm (“basis weight . . . at least 20 g/m2 and at most 40 g/m2”, ¶ 0040). Fritzsching teaches that higher basis weights negatively impact taste (¶ 0007), whereas lower basis weights have lower tensile strength (¶ 0043). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have made the wrapping material with a basis weight within the range of 20 gsm to 40 gsm. The range 20 gsm to 40 gsm falls within the claimed range of about 15 gsm to about 45 gsm (MPEP § 2131.03).
Stevens does not explicitly disclose the permeability of the wrapping material to determine whether or not it falls within the claimed range. However, Fritzsching teaches that the permeability of a wrapping material should be optimized to fall within the range of 10 Coresta to 250 Coresta (“The air permeability of the wrapper paper according to the invention is . . . at least 10 cm3/(cm2·min·kPa) and at most 250 cm3/(cm2·min·kPa), ¶ 0050). Fritzsching teaches that lower permeability prevents necessary dilution of the aerosol (¶ 0049), whereas higher permeability creates poor ash appearance (¶ 0051). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have made the wrapping material with a permeability within the range of 10 Coresta to 250 Coresta. Since the range 10 Coresta to 250 Coresta overlaps the claimed range of about 5 Coresta to about 15 Coresta, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
While Stevens, Fritzsching, and Yoshimura do not disclose the tensile strength of the web according to ASTM Test D828-97, Stevens in view of Fritzsching and Yoshimura teaches the composition of the wrapping material as discussed above. Therefore, given that the wrapping material taught by Stevens in view of Fritzsching and Yoshimura is substantially identical to the claimed wrapping material, the tensile strength according to ASTM Test D828-97 should inherently be the same. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP § 2112.01(I)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); MPEP § 2112.01(I)).
Regarding claim 8, Stevens in view of Fritzsching and Yoshimura teaches a wrapping material as defined in claim 1, as stated above. Stevens teaches wherein the extracted tobacco material has been refined but has not been pulped (Col. 2, Lines 21-65, and associated flow diagram; using applicant’s definition of pulped provided in ¶ 0035 of the specification).
Regarding claim 10, Stevens in view of Fritzsching and Yoshimura teaches a wrapping material as defined in claim 1, as stated above. Stevens in view of Fritzsching and Yoshimura teaches a wrapping material with a basis weight within the range of 20 gsm to 40 gsm. Since the range 20 gsm to 40 gsm overlaps the claimed range of about 25 gsm to about 38 gsm, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 13, Stevens in view of Fritzsching and Yoshimura teaches a wrapping material as defined in claim 1, as stated above. Stevens does not teach wherein the web further contains filler particles. Fritzsching teaches that the wrapping material can contain filler particles in amounts from at least 10% by weight and at most 30% by weight for the benefit that filler materials increase the opacity and brightness of the wrapping material (¶ 0023). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the wrapping material to include filler particles in amounts from at least 10% by weight and at most 30% by weight in order to obtain these benefits. The range at least 10% by weight and at most 30% by weight falls within the claimed range of about 0.5% to about 30% by weight (MPEP § 2131.03).
Regarding claim 14, Stevens in view of Fritzsching and Yoshimura teaches a wrapping material as defined in claim 1, as stated above. Stevens does not teach wherein the web further contains filler particles. Fritzsching also teaches that the wrapping material can be produced without filler particles (“the ratio of the mass of calcium carbonate particles that are contained in the pulp fibers loaded with calcium carbonate particles and the mass of free filler material particles in the wrapper paper is 5:95 to 100:0”, ¶ 0025).
Regarding claims 15 and 16, Stevens in view of Fritzsching and Yoshimura teaches a wrapping material as defined in claim 1, as stated above. Stevens does not teach that the wrapping material has been treated with a burn control agent. Fritzsching teaches treating wrapping material with a burn control agent (“burn additive”, ¶ 0026) to control the speed of thermal degradation of the wrapping material and improve the ash appearance (¶ 0026). Fritzsching also teaches that the burn control agent comprises a salt of a carboxylic acid (“citrates” including “trisodium citrate”, ¶ 0028) and that the burn control agent should be present in the wrapping material in an amount at least 0.5% by weight and at most 3% by weight (¶ 0027). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included a burn control agent comprising a salt of a carboxylic acid in the wrapping material in an amount at least 0.5% by weight and at most 3% by weight in order to obtain the benefits taught by Fritzsching. The range at least 0.5% by weight and at most 3% by weight falls within the claimed range of about 0.3% by weight to about 3% by weight (MPEP § 2131.03).
Regarding claims 17 and 18, Stevens in view of Fritzsching and Yoshimura teaches a wrapping material as defined in claim 1, as stated above. Stevens does not explicitly disclose that the wrapping material has been treated with a gum. Fritzsching teaches applying gum, specifically carboxymethyl cellulose, to wrapping paper to act as a binder (¶ 0032). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have applied carboxymethyl cellulose gum to the wrapping material for this benefit.
Regarding claim 21, Stevens in view of Fritzsching and Yoshimura teaches the wrapping material of claim 1, as stated above. Stevens in view of Fritzsching and Yoshimura also teaches an aerosol generating product (“little cigar”, Col. 6, Line 8) comprising a cylindrical rod comprising an aerosol producing filler (rod of “tobacco” for “smoking”, Col. 1, Lines 9-12, and Col. 3, Lines 38-41) surrounded by the wrapping material (“wrapper”, Col. 6, Line 8, modified in view of Fritzsching and Yoshimura as described in the rejection of claim 1 above).
Claims 6, 11, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Stevens et al. (US 3,729,009) in view of Fritzsching (US 2023/0136404 A1) and Yoshimura et al. (US 2020/0022404 A1) as applied to claim 1 above, and further in view of Pesendorfer et al. (US 2018/0092397 A1).
Regarding claim 6, Stevens in view of Fritzsching and Yoshimura teaches a wrapping material as defined in claim 1, as stated above. Stevens teaches that the wrapping material contains wood pulp fiber for strengthening but does not explicitly disclose the amount of wood pulp fiber (Col. 6, Lines 12-13). Pesendorfer, in the same field of endeavor, teaches a wrapping material (“wrapping paper”, ¶ 0013) containing wood pulp fiber (“other pulps . . . formed by pulps sourced from coniferous trees”, ¶ 0030) in an amount up to about 10% by weight (“at most 10%”, ¶ 0029) for strengthening the wrapping material (¶ 0030). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included the wood pulp fiber in an amount up to about 10% by weight.
Regarding claim 11, Stevens in view of Fritzsching and Yoshimura teaches a wrapping material as defined in claim 1, as stated above. Stevens does not explicitly disclose the stretch of the wrapping material. Pesendorfer, in the same field of endeavor, teaches that the stretch of a wrapping material should be at least about 1% in order for the wrapping material to withstand automatic processing (¶ 0040-0041). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have made the wrapping material with a stretch of at least about 1% to achieve this benefit. Since the range at least about 1% overlaps the claimed range of greater than about 1%, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 19, Stevens in view of Fritzsching and Yoshimura teaches a wrapping material as defined in claim 1, as stated above. Stevens does not explicitly disclose the diffusivity of the wrapping material. Pesendorfer, in the same field of endeavor, teaches that the diffusivity of wrapping materials is preferably at least 0.1 cm/s (“the diffusion capacity in untreated areas is thus at least 0.1 cm/s”, ¶ 0052; it would have been obvious to one of ordinary skill in the art to test at 23 °C, which is room temperature). Pesendorfer also teaches that a higher diffusivity of the wrapping material reduces the amount of toxic carbon monoxide in the smoke or aerosol of a smoking article (¶ 0051). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have made the wrapping material with a diffusivity of at least 0.1 cm/s at 23 °C to achieve this benefit. Since the range at least 0.1 cm/s overlaps the claimed range of less than about 0.5 cm/s, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 20, Stevens in view of Fritzsching, Yoshimura, and Pesendorfer teaches a wrapping material as defined in claim 19, as stated above. Stevens does not teach that the wrapping material includes a plurality of reduced ignition areas that have been formed by applying a reduced ignition composition to the web. Pesendorfer teaches applying a reduced ignition composition to wrapping material to form a plurality of reduced ignition areas (“the wrapping paper can also be coated in certain areas, for example to reduce the diffusion capacity and thus provide self-extinguishing properties to a cigarette manufactured from the wrapping paper”, ¶ 0017). Pesendorfer also teaches a benefit of forming these reduced ignition areas in that they facilitate compliance with legal requirements regarding self-extinguishing of smoking articles (¶ 0056). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have applied a reduced ignition composition to the wrapping material to form a plurality of reduced ignition areas to obtain this benefit.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Stevens et al. (US 3,729,009) in view of Fritzsching (US 2023/0136404 A1) and Yoshimura et al. (US 2020/0022404 A1) as applied to claim 1 above, and further in view of Chen et al. (CN 103161091 A, a copy of which was previously provided for reference).
Regarding claim 7, Stevens in view of Fritzsching and Yoshimura teaches a wrapping material as defined in claim 1, as stated above. However, Stevens in view of Fritzsching and Yoshimura does not teach that refined hemp fibers are bleached. Chen, in the same field of endeavor, teaches a wrapping material (“hand-rolling paper”, see abstract) with refined hemp fibers (“fiber hemp”, ¶ 0011) that have been bleached (“bleached hemp pulp”, ¶ 0012). Chen also teaches a benefit of bleaching the refined hemp fibers in that it contributes to making the wrapping material a desired level of whiteness (¶ 0014). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have bleached the refined hemp fibers to obtain this benefit.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Stevens et al. (US 3,729,009) in view of Fritzsching (US 2023/0136404 A1) and Yoshimura et al. (US 2020/0022404 A1) as applied to claim 1 above, and further in view of Brinkley et al. (US 5,322,076).
Regarding claim 9, Stevens in view of Fritzsching and Yoshimura teaches a wrapping material as defined in claim 1, as stated above. Stevens teaches that the tobacco material is extracted with water (Col. 2, Lines 57-59). One of ordinary skill in the art would have understood that the extracted tobacco material would have the water soluble components removed. However, Stevens does not explicitly disclose the weight percentage of water soluble components remaining in the extracted tobacco material to determine whether or not it falls within the claimed range.
Brinkley, in the same field of endeavor, teaches a wrapping material (“wrappers”, Col. 1, Line 29) comprising an extracted tobacco material (“water insoluble tobacco pulp”, Col. 8, Line 4), wherein the extract tobacco material contains water soluble components in an amount less than about 20% by weight (“water-soluble tobacco extract/water insoluble tobacco pulp weight ratio of less than . . . about 0.25”, Col. 8, Lines 3-4 and 6, a ratio of less than about 0.25 corresponds to a ratio of less than about 1:4, which corresponds to less than about 20% by weight water-soluble tobacco extract). Brinkley also teaches an advantage of including a low amount of water soluble components in that it results in a wrapping material with acceptable physical properties such as desirably high tensile strength (Col. 8, Lines 8-11). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included water soluble components in the extracted tobacco material in an amount less than about 20% by weight, as taught by Brinkley, in order to achieve this benefit.
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Stevens et al. (US 3,729,009) in view of Brinkley et al. (US 5,322,076) and Pesendorfer et al. (US 2018/0092397 A1).
Regarding claim 22, Stevens teaches a wrapping material (“wrapper”, Col. 6, Line 8) for an aerosol producing filler comprising a web (“paper-like web”, Col. 2, Lines 63-64) comprising an extracted tobacco material (“fibrous residue”, Col. 2, Line 58), the extracted tobacco material being blended with strength building fibers (“wood fiber”, Col. 6, Line 12).
Stevens does not explicitly disclose wherein the web comprises at least about 70% by weight of the extracted tobacco material. However, Stevens teaches that desirable flavor and smell is related to the amount of tobacco material (Col. 1, Lines 13-16), and undesirable flavor is related to the amount of fibers (Col. 6, Lines 12-14). One of ordinary skill in the art would have known to optimize the relative amounts of tobacco material and fiber to balance the overall strength, flavor, and smell of the resulting wrapping material. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the weight of the extracted tobacco material such that it falls within the claimed range. "[W]here 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, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Stevens further teaches that the tobacco material is extracted with water (Col. 2, Lines 57-59). One of ordinary skill in the art would have understood that the extracted tobacco material would have the water soluble components removed. However, Stevens does not explicitly disclose the weight percentage of water soluble components remaining in the extracted tobacco material to determine whether or not it falls within the claimed range.
Brinkley, in the same field of endeavor, teaches a wrapping material (“wrappers”, Col. 1, Line 29) comprising an extracted tobacco material (“water insoluble tobacco pulp”, Col. 8, Line 4), wherein the extract tobacco material contains water soluble components in an amount less than about 20% by weight (“water-soluble tobacco extract/water insoluble tobacco pulp weight ratio of less than . . . about 0.25”, Col. 8, Lines 3-4 and 6, a ratio of less than about 0.25 corresponds to a ratio of less than about 1:4, which corresponds to less than about 20% water-soluble tobacco extract). Brinkley also teaches an advantage of including a low amount of water soluble components in that it results in a wrapping material with acceptable physical properties such as desirably high tensile strength (Col. 8, Lines 8-11). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included water soluble components in the extracted tobacco material in an amount less than about 20% by weight, as taught by Brinkley, in order to achieve this benefit.
Stevens does not teach that the strength building fibers are refined bast fibers, and Stevens does not explicitly disclose an average length of the strength building fibers. However, Pesendorfer, in the same field of endeavor, teaches a wrapping material (“wrapping paper”, ¶ 0013) with strength building fibers that are refined hemp fibers (“Pulp fibers are also preferred which are sourced, for example, from flax, hemp, sisal, aback jute or cotton. These fibers can be used unrefined, but are preferably refined, for example to provide a particularly high strength to the wrapping paper.”, ¶ 0030). Pesendorfer also teaches that the fibers have an average length of at most 2 mm (¶ 0020). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use refined hemp fibers with an average length of at most 2 mm for the strength building fibers, as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); MPEP § 2144.07). Since the range of at most 2 mm overlaps the claimed range of greater than 1.5 mm and less than 3.5 mm, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Pesendorfer also teaches that the refined hemp fibers are present in the web in an amount of at most 10% by weight (¶ 0029). Since the range of at most 10% by weight is close to the claimed range of greater than 10% by weight and less than 20% by weight, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Stevens does not explicitly disclose the basis weight of the wrapping material. However, Pesendorfer teaches that the basis weight of a wrapping material should be optimized to fall within the range of 25 gsm to 40 gsm (“basis weight . . . particularly preferably at least 25 g/m2 and/or . . . particularly preferably at most 40 g/m2”, ¶ 0032). Pesendorfer teaches that higher basis weights negatively impact taste and cost, whereas lower basis weights have lower tensile strength, opacity, and whiteness (¶ 0032). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have made the wrapping material with a basis weight within the range of 25 gsm to 40 gsm. The range 25 gsm to 40 gsm falls within the claimed range of about 15 gsm to about 45 gsm (MPEP § 2131.03).
Stevens does not explicitly disclose the permeability of the wrapping material. However, Pesendorfer teaches that the permeability of known wrapping materials typically falls within the range of 10 Coresta to 300 Coresta (“The air permeability of known, naturally porous wrapping papers for smoking articles is typically between 10 cm3/(cm2·min·kPa) and 300 cm3/(cm2·min·kPa)). Pesendorfer also teaches that the permeability of the wrapping material influences the substances of the smoke or aerosol of a smoking article, including tar, nicotine, and carbon monoxide content (¶ 0044). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have made the wrapping material with a permeability within the range of 10 Coresta to 300 Coresta to achieve a desired aerosol content for an aerosol generating product wrapped with the wrapping material. Since the range 10 Coresta to 300 Coresta overlaps the claimed range of about 5 Coresta to about 15 Coresta, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
While Stevens, Brinkley, and Pesendorfer do not disclose the tensile strength of the web according to ASTM Test D828-97, Stevens in view of Brinkley, and Pesendorfer teaches the composition of the wrapping material as discussed above. Therefore, given that the wrapping material taught by Stevens in view of Brinkley, and Pesendorfer is substantially identical to the claimed wrapping material, the tensile strength according to ASTM Test D828-97 should inherently be the same. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP § 2112.01(I)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); MPEP § 2112.01(I)).
Regarding claim 23, Stevens in view of Brinkley and Pesendorfer teaches a wrapping material as defined in claim 22, as stated above. Brinkley teaches wherein the extract tobacco material contains water soluble components in an amount less than about 20% by weight (“water-soluble tobacco extract/water insoluble tobacco pulp weight ratio of less than . . . about 0.25”, Col. 8, Lines 3-4 and 6, a ratio of less than about 0.25 corresponds to a ratio of less than about 1:4, which corresponds to less than about 20% water-soluble tobacco extract). Since the range less than about 20% by weight overlaps the claimed range of less than about 15% by weight, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Stevens does not explicitly disclose the diffusivity of the wrapping material. However, Pesendorfer teaches that the diffusivity of wrapping materials is preferably at least 0.1 cm/s (“the diffusion capacity in untreated areas is thus at least 0.1 cm/s”, ¶ 0052; it would have been obvious to one of ordinary skill in the art to test at 23 °C, which is room temperature). Pesendorfer also teaches that a higher diffusivity of the wrapping material reduces the amount of toxic carbon monoxide in the smoke or aerosol of a smoking article (¶ 0051). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have made the wrapping material with a diffusivity of at least 0.1 cm/s at 23 °C to achieve this benefit. Since the range at least 0.1 cm/s overlaps the claimed range of less than about 0.5 cm/s, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
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 COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at (571)270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747