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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/4/2026 has been entered.
Status of the Claims
Claims 1, 6-11, and 13-23 are pending. Claims 1 and 22 have been amended.
Response to Arguments
Applicant's arguments filed 5/4/2026 have been fully considered but they are not persuasive.
Applicant argues that the substitution of hemp fibers in place of wood fibers is improper because “an obvious inquiry requires more than identifying that a modification would predictably function” because “a court must ask whether the improvement is more than the predictable use of prior art elements according to their established function” (Page 6 of the Remarks). This argument is not persuasive as Applicant’s argument is directed to an obvious combination of known elements (“When considering obviousness of a combination of known elements, the operative question is thus ‘whether the improvement is more than the predictable use of prior art elements according to their established functions’” (MPEP § 2141(I), emphasis added)). However, with regards to the use of hemp fibers in place of wood fibers, this is not a combination of known elements (e.g., adding hemp fibers in addition to the wood fibers or inserting hemp fibers into a material that did not already have fibers, which would fall under MPEP § 2143(I)(A)). Instead, it is a “simple substitution of one known element for another to obtain predictable results” (see MPEP § 2143(I)(B)).
With regards to the various claimed ranges, Applicant submits that the ranges disclosed in the prior art are “so broad that it does not invite routine optimization” (Page 6 of the Remarks). The Examiner notes that because the claimed ranges and the ranges disclosed by the prior art overlap, a prima facie case of obviousness exists (MPEP § 2144.05(I)). A prima facie case obviousness shifts the burden to the Applicant to present evidence of non-obviousness (MPEP § 2142). Applicant has not sufficiently presented evidence of non-obviousness.
Regarding the amount of refined hemp fiber within the web, Applicant states that “Fritzsching discloses a pulp fiber range of from 1-95% of the wrapper paper” (Page 7 of the Remarks). This argument is not persuasive as this is not the range cited by the Rejection. Instead, the Rejection cited an amount “preferably at least 10% and at most 80%” (¶ 0015 of Fritzsching), and Applicant has not addressed this range.
Applicant further argues that the claim is directed to a “nine integer range” and that the “probability of choosing the specific [nine integer] range as presently claimed would be ~1.15%” (Page 7 of Remarks). Even if Applicant sufficiently explained how this alleged probability was derived, this argument would still not be persuasive as Applicant has not presented any argument or evidence that the prior art must teach or render obvious a range that is exactly coextensive with the claimed range. Arguments presented by the applicant cannot take the place of evidence in the record (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), MPEP § 716.01(c)).
Regarding the range of air permeability in Coresta units, Applicant recites an alleged probability of Yoshimura and an alleged probability of Fritzsching and that “the combined probability” for choosing the combinations of features is “0.0117% using Yoshimura or about 0.0575% using Fritzsching” (Page 7 of the Remarks). This argument is not persuasive as Yoshimura was not relied upon for disclosing the range of air permeability, Applicant has not provided any rationale as to why Yoshimura is pertinent to the discussion of air permeability, and Applicant has not explained how these numbers were derived (e.g., Applicant presents “15/300” for Fritzsching but no explanation regarding how these numbers were chosen). As such, Applicant has not satisfied the burden of presenting evidence to overcome the prima facie case of obviousness (MPEP § 2142).
Applicant further quotes In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig. (Page 7 of the Remarks) to state that “[e]vidence of obviousness is insufficient unless it indicates that the possible options skilled artisans would have encountered were ‘finite,’ ‘small,’ or ‘easily traversed’”. This argument is not persuasive as In re Cyclobenzaprine does not concern overlapping ranges, and Applicant has not set forth any basis from which to conclude that the fact pattern at issue in In re Cyclobenzaprine is pertinent to the present claims. As such, Applicant has not satisfied the burden of presenting evidence to overcome the prima facie case of obviousness (MPEP § 2142).
Similarly, Applicant cites Ex parte Senderoff (Pages 8-9 of the Remarks), which concerns discrete compounds, and again sets forth the alleged probabilities of Yoshimura and Fritzsching. This argument is not persuasive Ex parte Senderoff does not concern overlapping ranges, and Applicant has not set forth any basis from which to conclude that the fact pattern at issue in Ex parte Senderoff is pertinent to the present claims. Further, Applicant has not explained how the alleged probabilities were calculated. As such, Applicant has not satisfied the burden of presenting evidence to overcome the prima facie case of obviousness (MPEP § 2142).
Similarly, Applicant cites Ex parte Zerbe (Pages 9-10 of the Remarks), which also concerns discrete compounds, and again sets forth the alleged probabilities of Yoshimura and Fritzsching. This argument is not persuasive as Ex parte Zerbe does not concern overlapping ranges, and Applicant has not set forth any basis from which to conclude that the fact pattern at issue in Ex parte Zerbe is pertinent to the present claims. Further, Applicant has not explained how the alleged probabilities were calculated. As such, Applicant has not satisfied the burden of presenting evidence to overcome the prima facie case of obviousness (MPEP § 2142).
Applicant further argues that Stevens in view of Fritzsching and Yoshimura does not disclose or render obvious claim 1 as presently amended (Page 10 of the Remarks). This argument is not persuasive as claim 1 is obvious over Stevens in view of Fritzsching and Yoshimura, as discussed in the rejection of claim 1 below. Applicant's argument amounts to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant further argues that “Stevens does not provide a meaningful starting point” because Stevens discloses employing wood fibers and not refined hemp fibers (Page 10 of Remarks). This argument is not persuasive as the simple substitution of wood fibers with hemp fibers is obvious (see MPEP § 2143(I)(B)), as discussed in the rejection below.
Applicant further argues that Stevens “does not teach or suggest the presently claimed high-tobacco-content, low-permeability, high-tensile-strength wrapper, and does not teach or suggest refined hemp fibers having the presently claimed amount and average fiber length” (Page 11 of Remarks). This argument is not persuasive as Stevens is not relied upon for disclosing the entirety of the limitations. Instead, these features are taught by the obvious combination of Stevens, Fritzsching, and Yoshimura, as discussed in the rejection below. 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 “Fritzsching does not teach or suggest the presently claimed tobacco-containing wrapper” (Page 11 of Remarks). This argument is not persuasive as Fritzsching is not relied upon for disclosing the entirety of the tobacco-containing wrapper. Instead, the tobacco-containing wrapper is taught by the obvious combination of Stevens, Fritzsching, and Yoshimura, as discussed in the rejection below. 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 Fritzsching “does not teach or suggest a web comprising at least 70 wt% extracted tobacco material in combination with refined hemp fibers in the claimed amount and fiber-length range, an inherent air permeability below about 15 Coresta, and a tensile strength greater than about 2,100 cN/30 mm” (Page 11 of Remarks). This argument is not persuasive as Fritzsching is not relied upon for disclosing the entirety of the limitations. Instead, these features are taught by the obvious combination of Stevens, Fritzsching, and Yoshimura, as discussed in the rejection below. 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 “Yoshimura does not teach a general preference for low permeability” (Page 12 of Remarks). This argument is not persuasive as Yoshimura is not relied upon for disclosing this feature. Instead, Fritzsching teaches low permeability, as discussed in the rejection below. 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 Yoshimura’s “disclosure of flax pulp fibers having an average fiber length of 1478 μm does not teach or suggest the presently claimed refined hemp fibers having an average fiber length from about 1.5 mm to about 2.0 mm” (Page 12 of Remarks). This argument is not persuasive as Yoshimura is not relied upon for disclosing hemp fibers, as Fritzsching discloses hemp fibers. Thus, this feature is taught by the obvious combination of Stevens, Fritzsching, and Yoshimura, as discussed in the rejection below. 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 1478 μm “is below the amended lower endpoint” of 1.5 mm (Page 12 of Remarks). This argument is not persuasive because 1.478 mm is close to the claimed range of greater than 1.5 mm and less than 3.5 mm, and as such, a prima facie case of obviousness exists (see MPEP § 2144.05(I)).
Applicant further argues the length of Yoshimura is “for flax pulp fibers in a materially different filler-containing paper system” (Page 12 of Remarks). This argument is not persuasive as it is an allegation for which Applicant has not provided evidence. Arguments presented by the applicant cannot take the place of evidence in the record (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), MPEP § 716.01(c)).
Applicant further argues that Yoshimura “does not provide a reason to select refined hemp fibers having the presently claimed average fiber length for use in a high-tobacco wrapper having the claimed permeability and tensile strength” (Page 12 of Remarks). This argument is not persuasive as Yoshimura is not relied upon for disclosing hemp fibers, as Fritzsching discloses hemp fibers. Thus, this feature is taught by the obvious combination of Stevens, Fritzsching, and Yoshimura, as discussed in the rejection below. 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 “the applied references do not disclose the same or substantially the same composition or structure as amended claim 1” (Page 12 of Remarks). Applicant attempts to support this allegation by noting that no single reference discloses the entire structure of claim 1. This argument is not persuasive as no single reference is relied upon for disclosing the entire structure of claim 1. Instead, the structure of claim 1 is obvious over the combination of Stevens, Fritzsching, and Yoshimura, as discussed in the rejection below. 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 “Stevens does not teach or suggest the presently claimed combination of high extracted-tobacco content, refined hemp fiber structure, low air permeability, and high tensile strength” (Page 13 of Remarks). This argument is not persuasive as Stevens is not relied upon for disclosing the entirety of the limitations. Instead, these features are taught by the obvious combination of Stevens, Fritzsching, and Yoshimura as discussed in the rejection below. 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).
Regarding claim 7, Applicant further argues that “Chen does not disclose a tobacco-containing wrapper having the presently claimed high extracted-tobacco content, refined hemp fiber amount, refined hemp fiber length, permeability below about 15 Coresta, or tensile strength greater than about 2,100 cN/30 mm” (Page 13 of Remarks). This argument is not persuasive as Chen is not relied upon for disclosing the entirety of the limitations. Instead, these features are taught by the obvious combination of Stevens, Fritzsching, and Yoshimura as discussed in the rejection below. 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).
Regarding claim 9, Applicant argues that “Brinkley does not disclose or suggest the presently claimed high-tobacco, hemp-based wrapping material” (Page 13 of Remarks). This argument is not persuasive as Brinkley is not relied upon for disclosing the entirety of the limitations. Instead, these features are taught by the obvious combination of Stevens, Fritzsching, and Yoshimura as discussed in the rejection below. 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).
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 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 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.
Claim 22 is 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), Fritzsching (US 2023/0136404 A1) and Yoshimura et al. (US 2020/0022404 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 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 10 Coresta, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
While Stevens, Brinkley, Fritzsching, and Yoshimura do not disclose the tensile strength of the web according to ASTM Test D828-97, Stevens in view of Brinkley, 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 Brinkley, 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)).
Claim 23 is 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), Fritzsching (US 2023/0136404 A1) and Yoshimura et al. (US 2020/0022404 A1) as applied to claim 22 above and further in view of Pesendorfer et al. (US 2018/0092397 A1).
Regarding claim 23, Stevens in view of Brinkley, Fritzsching, and Yoshimura 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.
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)).
Conclusion
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/COURTNEY G CULBERT/Examiner, Art Unit 1747
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