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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/12/2025 has been entered.
Status of the Claims
Claims 1-2 and 4-19 are pending. Claim 1 has been amended.
Response to Arguments
Applicant's arguments filed 11/12/2025 have been fully considered but they are not persuasive.
Applicant argues that Slama describes a rolling paper comprising a moisture-activated adhesive but is silent as to applying the adhesive in the form of an aqueous solution (Remarks, Pages 7-8). This argument is not persuasive as Slama is not relied upon for teaching applying the adhesive in the form of an aqueous solution, as Tosas Fuentes teaches applying the adhesive in the form of an aqueous solution. 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 Tosas Fuentes does not disclose or suggest that the composition comprising gum arabic functions as a moisture-activated adhesive (Remarks, Page 8). This argument is not persuasive as Tosas Fuentes is not relied upon for teaching that gum arabic compositions function as moisture-activated adhesives, as Slama teaches that gum arabic functions as a moisture-activated adhesive. 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 also argues that Tosas Fuentes teaches away from applying an aqueous solution in which the mass concentration of the moisture-activated adhesive is between 35% and 40% because Tosas Fuentes requires that the gum arabic content of the applied composition be at least 40% by weight relative to the total dry material in ¶ 0016 (Remarks, Page 8). This argument is not persuasive as Tosas Fuentes teaches applying “a solution of gum arabic in water at 39%” (¶ 0057), and 39% falls within the claimed range of between 35% and 40% (MPEP § 2131.03).
Applicant further argues that Parcevaux would not be modified “to have a property that they already possess” because Parcevaux does not indicate that it’s chosen material (i.e., rubber) is “inadequate” and that, therefore, the obvious modification of Parcevaux as discussed in the rejection below is “a redundant and superfluous advantage” (Remarks, Page 9). This argument is not persuasive as a material being “adequate” does not preclude improvements. As noted in the rejection of claim 1 below, there was a benefit to modifying Parcevaux in view of Slama and Tosas Fuentes and, therefore, that modification is neither redundant nor superfluous.
Applicant further argues that one of ordinary skill in the art would have no motivation to combine Slama and Tosas Fuentes as “the composition, function, and placement of the bands in Fuentes are directed to combustion control, not adhesion” (Remarks, Pages 10-11). This argument is not persuasive as Tosas Fuentes was not relied upon for the composition, function, or placement of the bands. As noted in the rejection of claim 1 below, Slama discloses using a strip of gum arabic. Tosas Fuentes is relied upon for teaching that gum arabic can be applied in strip form by depositing the material with a thickness small enough that the resulting strip has a grammage of less than 8 g/m2. As using less material is beneficial, as discussed in the rejection below, it would have been obvious to one having ordinary skill in the art at the time the Application was filed to form the strip of gum arabic in the device of the combination to have a grammage of less than 8 g/m2. Further, Applicant has not provided any evidence establishing that forming a strip of gum arabic to have a grammage less than 8 g/m2 produces unexpected results.
Information Disclosure Statement
The information disclosure statement filed 11/12/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Specifically, the non-patent literature publication CA Office action for application 3,159,121, mailed on March 5, 2025, 6 pages, was not considered because a complete copy was not provided; instead, only the first page ending in “The examiner has identified the following defects in the application:” was provided.
Drawings
The drawings were received on 11/12/2025. These drawings are acceptable.
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 1-2, 4, 6-11, and 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Parcevaux (FR 2 814 340 A1, a translated copy of which was previously provided for reference) in view of Slama et al. (US 2017/0360082 A1) and Tosas Fuentes et al. (US 2014/0144454 A1).
Regarding claim 1, Parcevaux discloses a process for manufacturing a bobbin of roll-your-own cigarette paper (“series of reels each having a width equal to that of a cigarette paper”, ¶ 0009) comprising an adhesive strip along one of the long edges of the bobbin of roll-your-own cigarette paper (“strip of gum”, ¶ 0010), the process comprising the following steps:
a) cutting a web of roll-your-own cigarette paper (“strip of paper 10” wound into “reel 10”, ¶ 0009) in order to obtain a bobbin of roll-your-own cigarette paper (“cut into a series of reels each having a width equal to that of a cigarette paper”, ¶ 0009),
b) applying a strip of adhesive (“strip of gum”, ¶ 0010) in order to obtain the bobbin of roll-your-own cigarette paper comprising an adhesive strip along one of the long edges of the bobbin of roll-your-own cigarette paper (“gum strips . . . applied parallel to the strip 10, longitudinal to it . . . so that the longitudinal cuts subsequently border these strips”, ¶ 0010),
the step b) of applying being carried out before (“series of gum strips . . . applied parallel to the strip 10 . . . so that the longitudinal cuts subsequently border these strips”, ¶ 0010) or after (“According to a variant, these rubber threads are placed on the sub-bands 20 after cutting the strip 10.”, ¶ 0010) the step a) of cutting.
However, Parcevaux does not explicitly disclose that the adhesive strip is moisture-activated.
Slama, in the same field of endeavor, teaches applying a moisture-activated adhesive strip (“moisture-activated adhesive strip 18", Fig. 1, ¶ 0050, made of “gum arabic” ¶ 0019) to roll-your-own cigarette paper (“rolling paper 12”, Fig. 1, ¶ 0050). One of ordinary skill in the art would have understood that there was a benefit to using moisture-activated adhesive strips in that the user can control when the adhesive is activated to prevent the strip from binding with other components prematurely. 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 the moisture-activated adhesive strip taught by Slama in the process for manufacturing a bobbin of roll-your-own cigarette paper taught by Parcevaux in order to obtain this benefit.
However, Parcevaux and Slama do not explicitly disclose the specific method, such as by flexography, photogravure or indirect flexographic printing, used to apply the adhesive strip, to determine if the step of applying includes applying a strip of an aqueous solution comprising a moisture-activated adhesive, wherein the mass concentration of the moisture-activated adhesive in the aqueous solution is between 35% and 40%.
Tosas Fuentes, in the same field of endeavor, teaches applying a strip of an aqueous solution comprising gum arabic (“composition for coating paper wrapper for smoking articles which comprises . . . gum arabic", ¶ 0010; “solution of gum arabic in water at 39%”, ¶ 0057), wherein the mass concentration of the moisture-activated adhesive in the aqueous solution is between 35% and 40% (“solution of gum arabic in water at 39%”, ¶ 0057; 39% falls within the claimed range of between 35% and 40%, MPEP § 2131.03) to cigarette paper (“paper wrapper for smoking articles”, ¶ 0010) by flexography (“For the application of the composition . . . it is preferred to use flexography . . . in bands”, ¶ 0037). Tosas Fuentes also teaches a benefit of the flexography printing technique in that it is a standard printing technique that allows for printing to a desired grams of dry material per square meter of paper (¶ 0037). 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 the moisture-activated adhesive strip made of gum arabic taught by Slama by applying the aqueous solution comprising gum arabic with the flexography printing technique as taught by Tosas Fuentes in the process for manufacturing a bobbin of roll-your-own cigarette paper taught by Parcevaux in order to obtain this benefit.
Slama does not explicitly disclose the grammage of the moisture-activated adhesive strip. However, Tosas Fuentes teaches wherein the grammage of the strip of gum arabic is less than 8 g/m2 (“this composition should be applied to said paper in amounts comprised in the range of . . . between 0.9 and 8 grams of dry material per square metre of paper, measured in the printed area”, ¶ 0037). One of ordinary skill in the art would have understood that there is a benefit in minimizing the amount of adhesive applied in order to minimize the cost of the resulting product. 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 the moisture-activated adhesive strip taught by Slama within the grammage range taught by Tosas Fuentes in order to achieve this benefit. The grammage range of 0.9 to 8 g/m2 taught by Tosas Fuentes falls within the claimed range of less than 8 g/m2 (MPEP § 2131.03).
Regarding claim 2, Parcevaux in view of Slama and Tosas Fuentes teaches the process according to claim 1, as stated above. Slama further teaches wherein the moisture-activated adhesive is a gum (“gum arabic", ¶ 0019).
Regarding claim 4, Parcevaux in view of Slama and Tosas Fuentes teaches the process according to claim 1, as stated above. Slama does not explicitly disclose the mass concentration of moisture-activated adhesive in the moisture-activated adhesive strip. However, Tosas Fuentes teaches wherein the mass concentration of gum arabic in the strip is at least 95% (“gum arabic is present in the composition in a percentage preferably comprised between 40% and 95%”, ¶ 0016). One of ordinary skill in the art would have understood that there is a benefit to maximizing the amount of adhesive in the adhesive strip in order to maximize the adhesiveness of the strip. 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 mass concentration of moisture-activated adhesive in the moisture-activated adhesive strip taught by Slama in the range taught by Tosas Fuentes to achieve this benefit. Since the mass concentration range of 40% to 95% taught by Tosas Fuentes overlaps the claimed range of at least 95%, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 6, Parcevaux in view of Slama and Tosas Fuentes teaches the process of manufacturing a bobbin of roll-your-own cigarette paper as defined in claim 1, as stated above. Parcevaux further teaches a process for manufacturing a sheet of roll-your-own cigarette paper comprising a step c) of cutting at least one bobbin of roll-your-own cigarette paper in order to manufacture a sheet of roll-your-own cigarette paper (“cut transversely with, between each cut, the length of a cigarette”, ¶ 0009).
Regarding claim 7, Parcevaux in view of Slama and Tosas Fuentes teaches the process of manufacturing a sheet of roll-your-own cigarette paper as defined in claim 6, as stated above. Parcevaux further teaches a process for manufacturing a booklet of sheets of roll-your-own cigarette paper comprising a step d1) of forming a stack of sheets of roll-your-own cigarette paper (“book of such rolling cigarette papers, comprising a stack of such cigarette papers”, ¶ 0008).
Regarding claim 8, Parcevaux in view of Slama and Tosas Fuentes teaches the process of manufacturing a bobbin of roll-your-own cigarette paper as defined in claim 1, as stated above. Parcevaux further teaches a process for manufacturing a booklet of sheets of roll-your-own cigarette paper comprising a step d2) of forming a stack of bobbins of roll-your-own cigarette paper (“superimposed on each other to form the same continuous stack 30”, ¶ 0009) followed by a step e) of cutting the stack of bobbins to form a stack of sheets (“continuous stack 30 is ultimately cut transversely with, between each cut, the length of a cigarette”, ¶ 0009).
Regarding claim 9, Parcevaux discloses a roll-your-own cigarette paper (“rolling cigarette papers”, ¶ 0008), in the form of a bobbin (“series of reels each having a width equal to that of a cigarette paper”, ¶ 0009) or a sheet (“stack of such cigarette papers”, ¶ 0008), comprising an adhesive strip along one of the long edges of the roll-your-own cigarette paper (“gum strips . . . applied parallel to the strip 10, longitudinal to it . . . so that the longitudinal cuts subsequently border these strips”, ¶ 0010).
However, Parcevaux does not explicitly disclose that the adhesive strip is moisture-activated.
Slama, in the same field of endeavor, teaches a roll-your-own cigarette paper (“rolling paper 12”, Fig. 1, ¶ 0050) with a moisture-activated adhesive strip (“moisture-activated adhesive strip 18", Fig. 1, ¶ 0050, made of “gum arabic” ¶ 0019). One of ordinary skill in the art would have understood that there was a benefit to using moisture-activated adhesive strips in that the user can control when the adhesive is activated to prevent the strip from binding with other components prematurely. 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 the moisture-activated adhesive strip taught by Slama to the roll-your-own cigarette paper taught by Parcevaux in order to obtain this benefit.
However, Parcevaux and Slama do not explicitly disclose the grammage of the adhesive strip.
Tosas Fuentes, in the same field of endeavor, teaches a cigarette paper (“paper wrapper for smoking articles”, ¶ 0010) with a strip of gum arabic (“composition for coating paper wrapper for smoking articles which comprises . . . gum arabic, ¶ 0010; “Said coating can be applied in discrete areas separated from each other through areas without coating”, ¶ 0011) characterized in that the grammage of the strip of gum arabic is less than 8 g/m2 (“this composition should be applied to said paper in amounts comprised in the range of . . . between 0.9 and 8 grams of dry material per square metre of paper, measured in the printed area”, ¶ 0037). One of ordinary skill in the art would have understood that there is a benefit in minimizing the amount of adhesive applied in order to minimize the cost of the resulting product. 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 the moisture-activated adhesive strip taught by Slama within the grammage range taught by Tosas Fuentes in order to achieve this benefit. The grammage range of 0.9 to 8 g/m2 taught by Tosas Fuentes falls within the claimed range of less than 8 g/m2 (MPEP § 2131.03).
Regarding claim 10, Parcevaux in view of Slama and Tosas Fuentes teaches the roll-your-own cigarette paper according to claim 9, as stated above. Slama further teaches wherein the moisture-activated adhesive of the moisture-activated adhesive strip is a gum (“gum arabic", ¶ 0019).
Regarding claim 11, Parcevaux in view of Slama and Tosas Fuentes teaches the roll-your-own cigarette paper according to claim 10, as stated above. Slama does not explicitly disclose the mass concentration of moisture-activated adhesive in the moisture-activated adhesive strip. However, Tosas Fuentes teaches wherein the mass concentration of gum arabic in the strip is at least 95% (“gum arabic is present in the composition in a percentage preferably comprised between 40% and 95%”, ¶ 0016). One of ordinary skill in the art would have understood that there is a benefit to maximizing the amount of adhesive in the adhesive strip in order to maximize the adhesiveness of the strip. 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 mass concentration of moisture-activated adhesive in the moisture-activated adhesive strip taught by Slama in the range taught by Tosas Fuentes to achieve this benefit. Since the mass concentration range of 40% to 95% taught by Tosas Fuentes overlaps the claimed range of at least 95%, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 13, Parcevaux in view of Slama and Tosas Fuentes teaches the roll-your-own cigarette paper according to claim 10, as stated above. Parcevaux further teaches a booklet of papers for roll-your-own cigarettes in sheet form (“book of such rolling cigarette papers, comprising a stack of such cigarette papers”, ¶ 0008).
Regarding claim 14, Parcevaux in view of Slama and Tosas Fuentes teaches the roll-your-own cigarette paper according to claim 10, as stated above. Parcevaux further teaches a cigarette comprising the roll-your-own cigarette paper in sheet form (“cigarette comprising a paper”, ¶ 0008).
Regarding claim 15, Parcevaux in view of Slama and Tosas Fuentes teaches the process according to claim 1, as stated above. Further, as Slama does not require the inclusion of any other component in the moisture-activated strip, the mass concentration of moisture-activated adhesive in the moisture-activated adhesive strip is 100%, which falls within the claimed range of at least 97% (MPEP § 2131.03).
Regarding claim 16, Parcevaux in view of Slama and Tosas Fuentes teaches the process according to claim 1, as stated above. Slama further teaches that the width of the adhesive strip is from about 1 to about 10 millimeters (¶ 0021). Since the width range of about 1 mm to about 10 mm taught by Slama overlaps the claimed range of 4 mm to 8 mm, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 17, Parcevaux in view of Slama and Tosas Fuentes teaches the process according to claim 1, as stated above. Parcevaux further teaches that the adhesive strip is continuous along one of the long edges of the bobbin of roll-your-own cigarette paper (“gum strips . . . applied parallel to the strip 10, longitudinal to it . . . so that the longitudinal cuts subsequently border these strips”, ¶ 0010).
Regarding claim 18, Parcevaux in view of Slama and Tosas Fuentes teaches the process according to claim 1, as stated above. However, Parcevaux does not explicitly disclose the thickness of the roll-your-own cigarette paper to determine if it falls within the claimed range of between 10 micrometers and 60 micrometers. Slama further teaches that a suitable thickness for roll-your-own cigarette paper is from about 20 to about 60 micrometers. 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 a roll-your-own cigarette paper with thickness of about 20 to about 60 micrometers, as taught by Slama, as a substrate for the moisture-activated adhesive also taught by Slama, as Slama has shown this combination to be an effective one. The range about 20 to about 60 micrometers falls within the claimed range of between 10 micrometers and 60 micrometers (MPEP § 2131.03).
Regarding claim 19, Parcevaux in view of Slama and Tosas Fuentes teaches the process according to claim 1, as stated above. Parcevaux further teaches that the moisture-activated adhesive strip is present along only one of the long edges of the bobbin of roll-your-own cigarette paper (“Each paper here has both a cork-style print and, on an edge perpendicular to this print, a strip of gum.”, ¶ 0011).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Parcevaux (FR 2 814 340 A1) in view of Slama et al. (US 2017/0360082 A1) and Tosas Fuentes et al. (US 2014/0144454 A1) as applied to claim 1 above, and further in view of Maiwald et al. (US 2001/0032697 A1).
Regarding claim 5, Parcevaux in view of Slama and Tosas Fuentes teaches the process according to claim 1, as stated above. However, Parcevaux does not explicitly disclose that the adhesive strip comprises an additive chosen from a plasticizer, an antifoam, a dye, an aromatic compound and mixtures thereof.
Maiwald, in the same field of endeavor, teaches including additives that are aromatic compounds (“flavoring agents, i.e., aromatic substances”, ¶ 0088) in adhesive strips (“portions 53”, ¶ 0088) applied to cigarette paper (“web 10”, ¶ 0088). Maiwald also teaches an advantage of including an additive that is an aromatic compound in that it is likely to be pleasant to the smoker (¶ 0088). 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 moisture-activated adhesive strip taught by Parcevaux in view of Slama and Tosas Fuentes to include the aromatic compound additive taught by Maiwald to achieve this benefit.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Parcevaux (FR 2 814 340 A1) in view of Slama et al. (US 2017/0360082 A1) and Tosas Fuentes et al. (US 2014/0144454 A1) as applied to claim 9 above, and further in view of Maiwald et al. (US 2001/0032697 A1).
Regarding claim 12, Parcevaux in view of Slama and Tosas Fuentes teaches the roll-your-own cigarette paper according to claim 10, as stated above. However, Parcevaux does not explicitly disclose that the adhesive strip comprises an additive chosen from a plasticizer, an antifoam, a dye, an aromatic compound and mixtures thereof.
Maiwald, in the same field of endeavor, teaches including additives that are aromatic compounds (“flavoring agents, i.e., aromatic substances”, ¶ 0088) in adhesive strips (“portions 53”, ¶ 0088) applied to cigarette paper (“web 10”, ¶ 0088). Maiwald also teaches an advantage of including an additive that is an aromatic compound in that it is likely to be pleasant to the smoker (¶ 0088). 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 moisture-activated adhesive strip taught by Parcevaux in view of Slama and Tosas Fuentes to include the aromatic compound additive taught by Maiwald to achieve this benefit.
Conclusion
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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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747