DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/12/25 has been entered.
Status of the Claims
Claims 1-4, 6-16 are pending and are subject to this office action. This office action is in response to Applicant’s amendments filed on 5/12/25.
Claims 3 and 7-9 are amended.
Claims 1 and 2 remain withdrawn.
Response to Arguments/Amendments
Applicant's arguments (filed 5/12/25, pages 7-10) with respect to the rejection(s) of amended Claim 3 under 35 USC § 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Claim Objections
Claims 8 and 9 are objected to because of the following informalities:
In Claim 8, “a first sweetener” should read “the first sweetener” and “a second sweetener” should read “the second sweetener.”
In Claim 9, “a first sweetener” should read “the first sweetener,” “a second sweetener” should read “the second sweetener,” and “a third sweetener” should read “the third sweetener.”
Appropriate correction is required.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. In the present application, the term “salt” as claimed in Claims 3, 8, 9, and 11 is known by one of ordinary skill in the art to refer to one of two categories of substances: sodium chloride (commonly referred to as “table salt”) or ionic compounds formed from the neutralization reaction between an acid and a base (commonly referenced as “a salt” or “salts”). The Specification appears to use the term “salt” to refer to a specific compound in a list which further references other ionic compounds ([0053]), suggesting the term is to be interpreted as to refer to sodium chloride. Thus, in the present application the term “salt” is interpreted to refer only to sodium chloride. For the avoidance of confusion, the Examiner suggests any reference to “salt” in the claims be amended to “sodium chloride.”
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 4, and 6-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 3, the claim recites the limitation "the group consisting of" in reference to the first, second, and third sweetener materials. There is insufficient antecedent basis for this limitation in the claim. The respective limitations in the claim should be amended to read:
“the sweetener composition consists of a first sweetener material selected from a first group consisting of”
“a second sweetener material selected from a second group consisting of”
“optionally a third sweetener material selected from a third group consisting of”
Regarding Claims 8 and 9, these claims repeat this limitation and thus are similarly rejected under 35 U.S.C. 112(b). However, Claim 8 is further rejected under 35 U.S.C. 112(d) for failing to further limit the claim as discussed below, and the Examiner suggests amending Claim 9 for clarity as also discussed below in the Examiner’s note.
Claims 4 and 6-16 are also rejected under 35 U.S.C. 112(b) by virtue of their dependency on Claim 3.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7, 8, 11, and 12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding Claim 7, the claim fails to further limit the subject matter because the claim is drawn to a broader limitation than the claim to which it depends. Claim 3 limits the sweetener composition to consisting of the specifically identified compounds. However, Claim 7 recites broad categories which either do not limit or directly contradict the limitation of Claim 3.
Regarding Claim 8, the claim repeats the limitations of Claim 3 with regard to the first and second sweetener materials without further limiting the composition.
Regarding Claim 11, the claim broadens the limitation of Claim 3. Claim 3 states “a first sweetener material selected from the group consisting of sodium glutamate, salt, sodium saccharin, xylitol, sucralose, tomatine, stevia, erythritol, and psicose.” This limitation is phrased such that the first sweetener material is a single compound selected from the identified group. Thus, where Claim 11 states “the first sweetener material includes a 1-1 sweetener material which is one or more selected from sodium glutamate and salt,” the claim impermissibly broadens the limitation to a selection of two compounds from the group.
Similarly, Claim 3 states “a second sweetener material selected from the group consisting of citric acid, malic acid, lactic acid, and catechin.” This limitation is also phrased such that the second sweetener material is a single compound selected from the identified group. Thus, where Claim 11 states “a 1-2 sweetener material which is one or more selected from sodium saccharin, xylitol, sucralose, tomatine, stevia, erythritol, and psicose” the claim impermissibly broadens the limitation to a selection of two compounds from the group.
Claim 12 is rejected under 35 U.S.C. 112(d) by virtue of its dependency on Claim 11 and recitation of “1-1 sweetener” and “1-2 sweetener.”
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Examiner’s Note
Claim 9 appears to be directed to limiting the invention from the sweetener composition comprising of an optional third sweetener material to the sweetener composition requiring the third sweetener material. However, the claim was amended to further include the same recitation of the first and second sweeteners as amended Claim 3. This repetition of the limitations does not further limit the claim. The Examiner recommends amending and simplifying Claim 9 to read “the sweetener composition consists of: the first sweetener, the second sweetener, and the third sweetener,” for the purposes of clarity.
Allowable Subject Matter
Claim 3 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. The following is an examiner’s statement of reasons for indication of allowable subject matter: no prior art, alone or in combination with references, discloses or reasonably suggests a method of coating a tipping paper as recited in independent Claim 3. Specifically, the prior art fails to disclose a method of coating a tipping paper comprising: “a design printing step of printing a design on at least a portion of the tipping paper; an overprint (OP) coating step of coating a surface of the tipping paper with an OP coating solution; and a sweetener coating step of coating the surface of the tipping paper with a sweetener coating solution, wherein the sweetener coating step is performed as a separate process from the design printing step and the OP coating step, and the sweetener coating solution consists of a sweetener composition and a mixed solvent of water and ethanol, and the sweetener composition consists of a first sweetener material selected from the group consisting of sodium glutamate, salt, sodium saccharin, xylitol, sucralose, tomatine, stevia, erythritol, and psicose; and a second sweetener material selected from the group consisting of citric acid, malic acid, lactic acid, and catechin; and optionally a third sweetener material selected from the group consisting of saccharin, menthol, eucalyptol, phenylacetic acid, and cinnamon oil.”
The closest prior art is Ashcraft (US 20050016556 A1). Ashcraft discloses a method of coating a tipping paper for a smoking article ([0020]), the method comprising: a design printing step of printing a design on at least a portion of the tipping paper ([0024]-[0025]); an overprint (OP) coating step of coating a surface of the tipping paper with an OP coating solution ([0027]-[0028]); and a sweetener coating step of coating the surface of the tipping paper with a sweetener coating solution ([0080]), wherein the sweetener coating step is performed as a separate process from the design printing step and the OP coating step (The printing process may comprise third and fourth printing/drying stations to print third and fourth layers which may comprise the flavorant. [0029]-[0030]), and wherein the sweetener coating solution consists of: a sweetener composition ([0080]) and a mixed solvent of water and ethanol ([0070]). Ashcraft does not explicitly disclose a sweetener coating step which comprises a sweetener coating solution which consists of a sweetener composition and a mixed solvent of water and ethanol, wherein the sweetener composition consists of a first sweetener material selected from a first group consisting of sodium glutamate, sodium chloride, sodium saccharin, xylitol, sucralose, tomatine, stevia, erythritol, and psicose; and a second sweetener material selected from a second group consisting of citric acid, malic acid, lactic acid, and catechin.
Beeson (US 20170064995 A1) discloses a method of coating a tipping paper comprising a design printing step of printing a design on at least a portion of the tipping paper ([0051]); an ink layer comprising lip-release components ([0031]); and a sweetener coating step of coating the surface of the tipping paper with a sweetener coating solution ([0033]-[0041]), and the sweetener coating solution consists of a sweetener composition which may comprise sucralose, citric acid, lactic acid, menthol, eucalyptol, or cinnamon oil ([0040], [0041], [0062]). Beeson does not explicitly disclose a sweetener coating step performed as a separate process from the design printing step and the OP coating step, the step comprising a sweetener coating solution which consists of a sweetener composition and a mixed solvent of water and ethanol, wherein the sweetener composition consists of a first sweetener material selected from a first group consisting of sodium glutamate, sodium chloride, sodium saccharin, xylitol, sucralose, tomatine, stevia, erythritol, and psicose; and a second sweetener material selected from a second group consisting of citric acid, malic acid, lactic acid, and catechin.
Blevins Joyce (US 20100108081 A1) discloses a method of coating a tipping paper for a smoking article, the method comprising: a design printing step of printing a design on at least a portion of the tipping paper ([0084], [0087]); and a sweetener coating step of coating the surface of the tipping paper with a sweetener coating solution ([0083]-[0088]), wherein the sweetener coating step is performed as a separate process from the design printing step ([0084]), and the sweetener coating solution consists of a sweetener composition and a solvent of water ([0089], [0092]-[0094])), and the sweetener composition comprises of a flavorant, such as: menthol, eucalyptol, phenylacetic acid, and cinnamon oil ([0093], [0106]). Blevins Joyce does not explicitly disclose an overprint (OP) coating step of coating a surface of the tipping paper with an OP coating solution and/or a sweetener coating solution which consists of a sweetener composition and a mixed solvent of water and ethanol, wherein the sweetener composition consists of a first sweetener material selected from a first group consisting of sodium glutamate, sodium chloride, sodium saccharin, xylitol, sucralose, tomatine, stevia, erythritol, and psicose; and a second sweetener material selected from a second group consisting of citric acid, malic acid, lactic acid, and catechin.
Fuhrmann (US 20220007708 A1) discloses a method of coating a tipping paper comprising: a design printing step of printing a design on at least a portion of the tipping paper ([0029]); a layer comprising lip-release components ([0029]); and a sweetener coating step of coating the surface of the tipping paper with a sweetener coating solution ([0024]-[0029]), the sweetener composition may comprise of cool, warm, spicy, tangy, salty, tingly, bitter, sour, hot, sweet, or tart flavorants ([0029]-[0031]. Fuhrmann does not explicitly disclose a sweetener coating solution which consists of a sweetener composition and a mixed solvent of water and ethanol, wherein the sweetener composition consists of a first sweetener material selected from a first group consisting of sodium glutamate, sodium chloride, sodium saccharin, xylitol, sucralose, tomatine, stevia, erythritol, and psicose; and a second sweetener material selected from a second group consisting of citric acid, malic acid, lactic acid, and catechin.
There is no indication of teaching in the prior art of a method of coating a tipping paper comprising three separate layers: a design printing layer, an overprint layer, and a sweetener layer comprising a coating solution which consists of a sweetener composition and a mixed solvent of water and ethanol, wherein the sweetener composition consists of a first sweetener material selected from a first group consisting of sodium glutamate, sodium chloride, sodium saccharin, xylitol, sucralose, tomatine, stevia, erythritol, and psicose; and a second sweetener material selected from a second group consisting of citric acid, malic acid, lactic acid, and catechin.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 8:00-4:00.
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755