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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/21/2025 has been entered.
Applicant’s amendment to claim 1, cancellation of claims 2-3, addition of new claims 32-34, and supporting remarks filed 11/21/2025 (“Amendment”) have been entered. The claim rejections under 35 USC 103 are maintained. New claims 32-34 are withdrawn due to Applicant’s constructive election by original presentation.
Response to Arguments
Applicant’s arguments directed to the rejection of claim 1 over Burger and Graf (Amendment p. 7-12) have been fully considered but they are not persuasive.
Applicant argues that Burger and Graf fail to teach or suggest the claimed cooperative geometry of the claimed first and second cut-off regions defining a progressive spiral winding configuration optimized for manual rolling (Amendment p. 9-10). The Examiner respectfully disagrees.
Burger indeed only discloses one angled edge (as argued at Amendment p. 9), but Graf discloses an edge with two angled halves, which motivates one of ordinary skill in the art to modify Burger’s straight edge and resulting in the claimed structure, as set forth in the rejection of claim 1 below. Despite Graf’s disclosure of machine wrapping (as argued at Amendment p. 9), the primary reference Burger discloses hand rolling as set forth below, and modified Burger’s paper would be capable of being rolled by hand regardless of such disclosure, thus reading on the claim. The prior art references are indeed silent on the claimed progressive spiral winding geometry (as argued at Amendment p. 10), but forming such a structure is an inherent capability of the claimed paper, and the combined prior art teaches the same paper as set forth below. Additionally, Graf teaches its acute angle precisely for the purpose of enhancing rolling contact and evenness as set forth below. The allegation of an unexpected benefit (as argued at Amendment p. 10) does not structurally distinguish the claimed invention from the prior art nor undermine the motivation for combining the references.
In sum, the Examiner respectfully disagrees because the arguments essentially attack the references individually but do not distinguish the claimed structure from the combined teachings of the prior art, they point out alleged differences which do not structurally distinguish the prior art, and they point out alleged differences which do not undermine the motivation for combining the prior art.
Election/Restrictions
Newly submitted claims 32-34 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: original claims 1-31 recited (and currently pending claims 1 and 4-14 recite) a smoking paper and smoking article which are products whereas new claims 32-34 recite a method for manually winding a smoking paper which is a process of using such a product. See MPEP 806.05(h). Claim 32 is independent but recites several limitations also recited in claim 1. The claims recite distinct inventions because the product of claim 1 could be used in another materially different process than the process recited in claim 32. See MPEP 806.05(h). For example, claim 32 recites “manually rolling” (i.e., with the user’s hands), but the product of claim 1 could be rolled automatically by a machine (the claim 1 language “configured to be manually rolled by a consumer” is interpreted as meaning that the material is capable of being rolled by a reasonably skilled consumer, but still may be rolled by other means as well).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 32-34 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4-8 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Burger (US 5,645,089 A, previously cited) in view of Graf (US 2020/0397036 A1, previously cited).
Regarding claim 1, Burger is directed to preparatory materials for an article for smoking and a sleeve section therefor (Title), which reads on a “smoking paper” as claimed. The materials include:
the sleeve section 1 rolled into a smoking article 20 by a smoker (col. 2 l. 55-col. 3 l. 12, Figs. 1-3) (which reads on a “a flat sheet or sleeve formed of smokable material configured to be manually rolled by a consumer” as claimed);
an approximately rectangular base part 3 of the sleeve section 1 (col. 2 l. 57-col. 3 l. 12, Figs. 1-3) (which reads on the “generally rectangular base section” as claimed);
a wrapper part 4 of the sleeve section 1 which is triangular as shown in Figs. 1-2 (col. 2 l. 57-col. 3 l. 12, Figs. 1-3) (which reads on the “generally triangular wrapper section having a hypotenuse and having a base extending from one of said short sides of said generally rectangular base section to said hypotenuse”). Furthermore, Applicant’s specification admits that the claimed generally rectangular base section and generally triangular wrapper section are known in the prior art at paragraphs [0023, 0031, 0034] and Fig. 1A;
a region at the intersection of line 6 and line 7 (see Figs. 1-2) (which reads on a “first cut-off region at an intersection of said base and said hypotenuse”). Furthermore, Applicant’s specification admits that the claimed first cut-off region is known in the prior art at paragraphs [0023, 0031, 0034] and Fig. 1A;
Burger fails to disclose the wrapper part 4 including “a second cut-off region disposed adjacent to said first cut-off region and extending at an acute angle of between 5° and 60° relative to said one short side of said generally rectangular base section” and Burger fails to disclose “said first and second cut-off regions cooperating to define a progressive spiral winding geometry initiating rolling at said second cut-off region and terminating at said first cut-off region, thereby reducing local bending stress and facilitating uniform manual rolling of the smokable material without tearing or creasing” (compare Burger’s Fig. 1 with Applicant’s Figs. 1B-D showing second cut-off region 12);
Burger discloses variations on the triangular wrapper part 4, such as “the line 6 also can deviate from a perfectly straight line by means of a slight curve” and that line 7 can “run also to the tip of the line 6” (col. 3 l.63-col. 4 l. 1-15, Fig. 4). One of ordinary skill in the art would recognize that the precise shape of the triangular wrapper part 4 and the intersection of lines 6 and 7 are not particularly limited by Burger.
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Graf is directed to a wrapping paper pattern for an aerosol-generating article (Title). Graf discloses rolling an outer wrapping sheet around an inner tubular element to form the article [0023]. The outer wrapping sheet 200 has a first edge 215 with two halves 215a, b disposed at an acute angle α of 1-40° ([0053], Fig. 3). Graf explains that the acute angle allows an unglued area 240a to wrap tightly around the inner tubular element 105’ with increased contact and good traction, which advantageously prevents separation and prevents a cone effect which causes uneven shaping of the rolled article [0012, 0057].
One of ordinary skill in the art would recognize that Burger’s line 6 could be shaped similarly to Graf’s first edge 215 (i.e., with two halves 215a, b disposed at an angle α of 1-40°), in order to similarly provide good rolling contact and traction while preventing separation and cone-shaping, which reads on “a second cut-off region disposed adjacent to said first cut-off region and extending at an acute angle of between 5° and 60° relative to said one short side of said generally rectangular base section”. Such a modified Burger having the claimed first and second cut-off regions would further read on “said first and second cut-off regions cooperating to define a progressive spiral winding geometry initiating rolling at said second cut-off region and terminating at said first cut-off region, thereby reducing local bending stress and facilitating uniform manual rolling of the smokable material without tearing or creasing” because this claim language recites an inherent capability of the claimed paper structure. See MPEP 2112.01(I); see also In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971); see also Applicant’s specification at [0011-13, 0015, 0033] and Figs. 1-2, disclosing that the claimed spiral is formed by rolling the claimed smoking paper having the claimed rectangular section, triangular section, and first and second cut-off regions with claimed angle.
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Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Burger’s sleeve section 1 so that the portion of line 6 within the wrapper part 4 is disposed at an angle α of 1-40° relative to the portion of line 6 within the base part 3 (i.e., line 6 extends inward beginning at the wrapper part 4), because Burger and Graf are both directed to rolled inhalation articles, Burger teaches that the shape of line 6 may be varied, Graf teaches that forming the acute angle α between edge portions 215a, b increases wrapping contact and prevents separation, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 4, Burger discloses a region at the intersection of line 6 and line 7 on the side opposite the rectangular base part 3 (Figs. 1-2) (which reads on “wherein said first cut-off region is disposed at an end of said second cut-off region facing away from said generally rectangular base section”).
Furthermore, Applicant’s specification admits that the claimed first cut-off region is known in the prior art at paragraphs [0023, 0031, 0034] and Fig. 1A.
Regarding claim 5, Burger discloses a region at the intersection of line 6 and line 7 which is approximately parallel to the long side 5 (Figs. 1-2) (which reads on “wherein said first cut-off region is substantially parallel to said dividing line”).
Furthermore, Applicant’s specification admits that the claimed first cut-off region is known in the prior art at paragraphs [0023, 0031, 0034] and Fig. 1A.
Regarding claim 6, Burger discloses “[t]he sleeve section 1 is preferably cut out of naturally grown tobacco leaves” or “homogenized tobacco leaf” at col. 3 l. 13-26 (which reads on “wherein said smokable material sheet or sleeve is formed of at least one of smokable herbs, plants, tobacco, homogenized tobacco or natural leaf materials”).
Regarding claim 7, Burger discloses the smoking article 20 (col. 2 l. 55, Figs. 1-3) (which reads on a “smoking article”). Modified Burger includes the smoking paper of claim 1 as set forth above. Burger discloses a filler 2 (col. 2 l. 57-col. 3 l. 12, Figs. 1-3) (which reads on “a filler disposed on said generally rectangular base section”). Burger discloses that a user “begins to roll the filler 2 on the base part 3 into a shaftlike form” which is a “tube shaped sleeve” (col. 2 l. 57-col. 3 l. 12, Figs. 1-3), the wrapper part 4 has a line 7 which “forms a helical line on the tube shaped rolled sleeve as it is seen in FIG. 3” (col. 3 l. 27-43), and “the wrapper part along the line 6 should wrap around the rolled base part at least approximately once and preferably 1.5 to at maximum approximately 2.5 times” (col. 4 l. 10-15) (which reads on “said smokable material sheet or sleeve being rolled into a tube with said generally rectangular base section holding the filler in an interior of said tube and said generally triangular wrapper section being wound into a spiral at an exterior of said tube”).
Regarding claim 8, Burger discloses “[w]hen finished the region along the line 6 in the rolled article forms the mouthpiece end of the tube shaped sleeve (left in FIG. 3)” at col. 3 l. 27-43. Thus, in modified Burger as applied to claim 1 above, Burger’s line 6 would be located at the mouthpiece end (which reads on “wherein said cut-off region is disposed at a mouthpiece end of said tube”). Burger discloses “[a]t the end which forms the corner 8 (the right side in FIG. 3) the article 20 is lit during smoking” at col. 3 l. 27-43 (which reads on “another of said short sides of said generally rectangular base section, located opposite to said one short side, is disposed at an end of said tube to be lighted”).
Regarding claim 10, Burger fails to disclose a “band circumferentially surrounding said tube” as claimed.
Graf discloses a “band of glue” which joins the wrapping sheet and inner tubular element to form a first circumferential wrap which advantageously forms a tight seal [0022, 0053] (which reads on “a band circumferentially surrounding said tube”).
Therefore, in modified Burger, it would have been further obvious to modify Burger’s sleeve section 1 to include a band of glue for the same reasons as set forth above in the discussion of claim 1, and to form a tight seal between the rolled ends as taught by Graf.
Furthermore, Applicant’s specification admits that the claimed band is known in the prior art at paragraphs [0041] and Figs. 5A-5F.
Regarding claim 11, Burger discloses “[t]he sleeve section 1 is preferably cut out of naturally grown tobacco leaves” or “homogenized tobacco leaf” (col. 3 l. 13-26) (which reads on “wherein said smokable material sheet or sleeve is formed of at least one of smokable herbs, plants, tobacco, homogenized tobacco or natural leaf materials”).
Regarding claim 12, Burger discloses filler 2 which includes “finely cut tobacco” (col. 2 l. 57-col. 3 l. 12) (which reads on “wherein said filler is formed of at least one of smokable herbs, plants, tobacco, homogenized tobacco or natural leaf materials”).
Claims 9 and 13-14 are rejected over Burger (US 5,645,089 A) in view of Graf (US 2020/0397036 A1) as applied to claims 1 and 7, further in view of Sinclair (US 9,113,658 B1, previously cited).
Regarding claim 9, modified Burger discloses the smoking paper of claim 7 as set forth above, but fails to disclose “a mandrel around which said tube is wound”.
Sinclair is directed to materials for making a hand rolled smoking article having a novel sheet (see Sinclair Abstract) and is therefore analogous art to the claimed invention. Sinclair discloses a mandrel 14 (col. 5 l. 17-30 and Figs. 16-18) (which reads on “a mandrel around which said tube is wound”). Sinclair discloses sheet 20 being rolled on the mandrel 14 for sale in an unfilled condition.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify the sleeve section 1 of Burger to be wrapped around the mandrel 14 of Sinclair, because Burger and Sinclair are both directed to smoking articles, Sinclair teaches that this forms a more user-friendly smoking article 20 (i.e., by preparing the smoking article 20 for sale to a user), and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Furthermore, Applicant’s specification admits that the claimed mandrel is known in the prior art at paragraphs [0041] and Figs. 5A-5F.
Regarding claim 13, modified Burger discloses the smoking paper of claim 1 as set forth above. Burger discloses smoking article 20 (col. 2 l. 55, Figs. 1-3) (which reads on “[a] smoking article”). Burger discloses that a user “begins to roll the filler 2 on the base part 3 into a shaftlike form” which is a “tube shaped sleeve” (col. 2 l. 57-col. 3 l. 12, Figs. 1-3), the wrapper part 4 has a line 7 which “forms a helical line on the tube shaped rolled sleeve as it is seen in FIG. 3” (col. 3 l. 27-43), and “the wrapper part along the line 6 should wrap around the rolled base part at least approximately once and preferably 1.5 to at maximum approximately 2.5 times” (col. 4 l. 10-15) (which reads on “said smokable material sheet or sleeve being rolled into a tube with said generally rectangular base section in an interior of said tube and said generally triangular wrapper section being wound into a spiral at an exterior of said tube”). However, modified Burger fails to disclose “a mandrel configured to permit said tube to be wound around said mandrel.”
Sinclair discloses the mandrel 14 (col. 5 l. 17-30 and Figs. 16-18) (which reads on “a mandrel configured to permit said tube to be wound around said mandrel”). Sinclair discloses sheet 20 being rolled on the mandrel 14 for sale in an unfilled condition.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify the sleeve section 1 of Burger to be wrapped around the mandrel 14 of Sinclair, because Burger and Sinclair are both directed to smoking articles, Sinclair teaches that this forms a more user-friendly smoking article 20 (i.e., by preparing the smoking article 20 for sale to a user), and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Furthermore, Applicant’s specification admits that the claimed mandrel is known in the prior art at paragraphs [0041] and Figs. 5A-5F.
Regarding claim 14, Burger fails to disclose a “band circumferentially surrounding said tube” as claimed.
Graf discloses a “band of glue” which joins the wrapping sheet and inner tubular element to form a first circumferential wrap which advantageously forms a tight seal [0022, 0053] (which reads on “a band circumferentially surrounding said tube”).
Therefore, in modified Burger, it would have been further obvious to modify Burger’s sleeve section 1 to include a band of glue for the same reasons as set forth above in the discussion of claim 1, and to form a tight seal between the rolled ends as taught by Graf.
Furthermore, Applicant’s specification admits that the claimed band is known in the prior art at paragraphs [0041] and Figs. 5A-5F.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL PATRICK MULLEN whose telephone number is (571)272-2373. The examiner can normally be reached M-F 10-7 ET.
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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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/MICHAEL PATRICK MULLEN/Examiner, Art Unit 1747
/ERIC YAARY/Examiner, Art Unit 1755