DETAILED OFFICIAL 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 .
Examiner Note
It is noted that all references hereinafter to Applicant’s specification (“spec”) are to the published application US 2023/0271772, unless stated otherwise. Further, any italicized text utilized hereinafter is to be interpreted as emphasis placed thereupon.
Information Disclosure Statement
The information disclosure statement (IDS) filed 06 October 2025 is in compliance with 37 CFR 1.97 and has been considered.
Response to Amendment
The Amendment filed 13 October 2025 in response to the Non-Final Rejection dated 13 June 2025 (hereinafter “NFOA”) has been entered. Claims 5, 9, and 12-13 have been canceled; claims 1-2, 6, 10-11, 14-16, 20, and 22-23 have been amended. As such, claims 1-2, 6, 8, 10-11, and 14-23 remain pending and under consideration on the merits.
The amendments to the claims have overcome less than all of the rejections under 35 U.S.C. 112(b) previously set forth in the NFOA – the rejections that have not been overcome are maintained herein, and those that have been overcome are hereby withdrawn.
The amendments to the claims have overcome the rejection under 35 U.S.C. 102(a)(1) [NFOA, ¶26-41], and the rejections under 35 U.S.C. 103 [NFOA, ¶45-73], previously set forth. As such, the 102(a)(1) rejection and 103 rejections have been withdrawn. However, new grounds of rejection are set forth herein, necessitated by the amendments to the claims and made in view of previously cited prior art and/or newly cited prior art identified as a result of additional search/consideration completed by the undersigned Examiner.
Claim Rejections - 35 USC § 112
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.
Claims 1-2, 6, 8, 10-11, and 14-23 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 1 and 22-23, the limitation regarding the sheet material having “a water vapour permeability of less than 6 g/m2/24 hr” renders each claim indefinite, as the measurement conditions at which the reported value/range was determined are not defined by the claim or set forth in Applicant’s spec, and therefore are unclear. One of ordinary skill in the art cannot readily determine or envisage the metes and bounds of the scope of the claim, and the public would not be clearly informed of the boundaries of what constitutes infringement thereupon (see MPEP 2173, MPEP 2173.02, and MPEP 2173.02(I) and(II)).
The water vapour permeability value reported for any material is directly dependent on at least the temperature and relative humidity at which the measurement is made, of which are appropriately/commonly stated alongside said reported value and a corresponding measurement standard (e.g. ASTM, ISO, JIS, etc.). For example, a material which exhibits a permeability to water vapor of 5 g/m2/24 hr at 20° C and 0% RH may exhibit a substantially higher permeability in an environment of higher temperature and/or humidity, e.g. 30° C and 90% RH.
The spec does not explicitly indicate or otherwise imply any temperature, relative humidity, or measurement standard utilized for determining the water vapour permeability of the sheet material (see spec, [0158, 0161]). As such, the broadest reasonable interpretation of the claimed water vapour permeability of the sheet material for examination on the merits is any value less than 6 g/m2/24 hr determined/reported at any temperature, any RH, and any pressure, measured in accordance with any standard – Applicant is respectfully directed to MPEP 2111 and MPEP 2111.01(I)-(III).
Claims 2, 6, 8, 10-11, and 14-21 are indefinite and rejected under 35 U.S.C. 112(b) as they are directly or ultimately dependent upon claim 1 and therefore include, and do not remedy the indefiniteness issue(s) identified hereinabove.
Appropriate action is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 6, 8, 14-16, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Mustafa (WO 2018/197880; “Mustafa”) (newly cited; copy provided herewith), in view of Sigrist et al. (US 5,819,924; “Sigrist”) (previously cited).
Regarding claim 1, Mustafa discloses a package for tobacco industry products, e.g. cigarettes or e-cigarettes, said package comprising a rigid outer card(board) pack (1) including a hinged lid (2) and a base (3) [Figs. 1-2; p. 3 ln. 1-3, 21-22; p. 5 ln. 12-14], and a (wrapped) bundle of tobacco products (6) wrapped in a paper-based barrier material (5) [Figs. 1-3; p. 1 ln. 28–p. 2 ln. 35; p. 3 ln. 31–p. 5 ln. 10]. The pack (1) reads on the claimed container.
The barrier material (5) is formed from paper having a basis weight greater than 85 gsm, such as greater than 100 gsm [p. 1 ln. 34-35; p. 2 ln. 25-35; p. 3 ln. 31–p. 4 ln. 11], and may be coated with a moisture resistant finish such as a metallization coating to better protect the tobacco product (from degradation caused by moisture) [p. 2 ln. 23; p. 4 ln. 13-16]. The barrier material (5) arranged into the wrapped bundle (6) reads on the claimed inner pack located within the container, the inner pack comprising a sheet material that is arranged to form the inner pack. The barrier material (5) itself reads on the claimed sheet material comprising a first material that is paper and a second material that is metallic.
With respect to the difference(s) relative to the claimed invention, Mustafa is silent regarding the barrier material (5) comprising at least 92.5% by mass paper, and regarding the sheet material having a water vapour permeability of less than 6 g/m2/24 hr.
Sigrist is directed to wrappers for cigarettes, and packages inclusive thereof/formed therefrom [Abstract; Figs. 4-5, 7-9; col. 2 ln. 8-14]. Sigrist teaches that the material forming the wrapper preferably consists of at least 90 wt.%, and more preferably at least 95 wt.% of paper (hereinafter “paper-based wrapper”), wherein the paper-based wrapper may include a metallized coating applied to the paper in an amount (coat weight) of 0.01 to 0.1 g/m2 (gsm) (e.g. 10-50 nm thickness) such that the paper-based wrapper comprises up to 0.5 wt.% (0.5 wt.% or less) of metal [col. 4 ln. 42–col. 5 ln. 7]. The aforesaid paper-based wrapper may exhibit a moisture permeability of 0.5-40 g/m2/24 hr, determined at 23° C and 85% relative humidity (RH) [col. 5 ln. 8-11]. The paper (layer itself) of the paper-based wrapper has a basis weight of 50-130 gsm [col. 4 ln. 12-14], wherein it is noted that the aforesaid range overlaps with the paper basis weight range(s) disclosed by Mustafa as set forth/cited above.
Mustafa and Sigrist each constitute prior art which is directly analogous to the claimed invention – moisture resistant (low water vapour permeability) wrappers for tobacco products and packages inclusive thereof. In view of the combined teachings of the foregoing prior art, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the package of Mustafa by forming the metallization coating of the (paper-based) barrier material (5) to a coat weight of 0.01 to 0.1 g/m2 in order to impart increased resistance to moisture permeation through the barrier material and/or achieve a particular moisture (water vapour) permeability of as low as 0.5 g/m2/24 hr at 23° C and 85% RH, as taught by Sigrist.
In accordance with the aforesaid modification, the barrier material (5) of Mustafa (hereinafter “modified Mustafa”) would have been formed from paper having a basis weight of at least 85 gsm (such as 85 gsm, or 100 gsm, though not limited thereto) and having a metallization coating (layer) formed thereon, said metallization coating exhibiting a coat weight of 0.01 to 0.1 g/m2, wherein the water vapour permeability of said barrier material (5) would have ranged from 0.5-40 g/m2/24 hr (23° C, 85%RH).
Through simple calculation, the barrier material (5) of modified Mustafa would have necessarily exhibited a minimum amount of paper content of 99.88 wt.% (85 gsm/85.1 gsm), of which is within the claimed range of at least 92.5% by mass of the first material. The paper layer of the barrier material (5) of modified Mustafa reads on the claimed first material, and the metallization coating of said barrier material (5) reads on the claimed second material. The water vapour permeability range (0.5-40 g/m2/24 hr, 23° C, 85% RH) of said barrier material (5) overlaps with, and thereby renders prima facie obvious the claimed range of less than 6 g/m2/24 hr (see MPEP 2144.05(I)); further, see grounds of rejection and corresponding interpretation of claim 1 under 35 U.S.C. 112(b) above.
In view of the foregoing, the package of modified Mustafa reads on the claimed package for an aerosol provision system component or article (hereinafter “package”) defined by each and every limitation of claim 1.
Regarding claim 2, the rejection of claim 1 above reads on the package defined by claim 2 – the paper layer of the barrier material (5) defines at least 99.88 wt.% of the total weight of the barrier material (5), of which is within the claimed ranges of at least 95% by mass of the first material and at least 98.5% by mass of the first material.
Regarding claim 6, the rejection of claim 1 above reads on the package defined by claim 6 – the paper layer (claimed first material) of the barrier material (5) is paper having a minimum basis weight of 85 gsm, wherein paper is (i) readily recognized by one of ordinary skill in the art as recyclable and/or compostable, and (ii) the spec and claims indicate that the first material which is recyclable and/or compostable is paper [0162, 0169], wherein no further requisites of said paper (first material) are specified. Additionally/alternatively, it is noted that the broadest reasonable interpretation of claim 6, in view of the specification, is that the first material which is paper is required to exhibit any degree of recyclability and/or compostability, under any conditions and via any one or more recycling or composting processes.
Regarding claim 8, the rejection of claim 1 above reads on the packaged defined by claim 8 – the paper layer of barrier material (5) (first material) of modified Mustafa is a non-plastic material.
Regarding claim 14, the rejection of claim 1 above reads on the packaged defined by claim 14 – the barrier material (5) includes the paper layer (first material) and a metallization coating (second material) formed thereon, wherein the paper layer corresponds to a first layer (first layer) and the metallization coating corresponds to a second layer (second layer), as claimed.
Regarding claims 15-16, as set forth above in the rejections of claim 1 and claim 14, the barrier material (5) of modified Mustafa includes the paper layer and metallization coating formed thereon, wherein the barrier material includes a minimum amount of 99.88 wt.% paper content. Specifically, Sigrist teaches that the metallization coating may be formed on the paper layer by vapor (vacuum) deposition, and distinguishes said deposition from, alternatively, laminating the metallization coating/layer to the paper layer [Sigrist, col. 4 ln. 59–col. 5 ln. 7].
With regard to said alternative, Sigrist teaches that the metallization coating may be laminated to the paper layer via an intervening adhesive layer having a coat weight of, e.g. 1-2 g/m2, wherein examples of the adhesive include ethylene-vinyl acetate (EVAc) copolymer and styrene-butadiene copolymer [col. 5 ln. 20-32].
As such, in the alternative to the grounds of rejection of claim 1 above which rely upon deposition of the metallization coating on the paper layer to form the barrier material (5), it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the barrier material (5) of Mustafa by having utilized a barrier material wherein the metallization coating/layer is laminated to the paper layer via an intervening adhesive layer having a coat weight of 1-2 g/m2, in the alternative to vapor deposition of the metal on the paper layer, in order to achieve the predictable result of an alternative barrier material (5) layer sequence suitable for the intended use as a wrapper for tobacco products and capable of providing a water vapour permeability of 0.5-40 g/m2/24 hr (23° C, 85% RH) (see MPEP 2144.07).
The barrier material (5) of modified Mustafa resultant from the aforesaid modification(s) would have included (in the following stated order) a paper layer (at least 85 gsm), an adhesive layer (1-2 g/m2), and the metallization coating/layer (0.01-0.1 g/m2), and would have exhibited a water vapour permeability of as low as 0.5 g/m2/24 hr (23° C, 85% RH) (MPEP 2144.05(I)). Through simple calculation, the aforesaid barrier material (5) of modified Mustafa would have exhibited a minimum amount of paper content of 97.56 wt.% (85/87.1*100), of which is within the claimed range of at least 92.5 wt.% (claim 1). The paper layer (first material) reads on the claimed first layer, the metallization coating/layer (second material) reads on the claimed second layer (claim 14); the intervening adhesive layer for lamination reads on the limitation of claim 15 of wherein the first and second layers are laminated; the application of the metallization coating/layer to the intervening adhesive layer disposed on the surface of the paper layer (first layer) reads on the limitation of claim 16 of wherein the second layer is applied to the first layer as a coating.
As such, the alternative barrier material (5) of modified Mustafa set forth above reads on the package defined by each and every limitation of claim 1 and claims 14-16 dependent thereupon.
Regarding claim 20, the rejection of claim 1 above reads on the package defined by claim 20 – the outer pack (1) (container) of the package of modified Mustafa reads on the claimed container which forms an outer layer of the package.
Regarding claim 21, the rejection of claim 1 above reads on the package defined by claim 21 – the outer pack (1) (container) of the package of modified Mustafa includes hinged lid (2), which reads on the claimed flip lid.
Regarding claim 22, the rejection of claim 1 above is incorporated herein by reference in its entirety (not repeated for sake of brevity). The barrier material (5) of modified Mustafa reads on the inner pack for a package for an aerosol provision system component or article defined by each and every limitation of claim 22.
Regarding claim 23, the rejection of claim 1 above is incorporated herein by reference in its entirety. In view of the aforesaid rejection incorporated herein, Mustafa discloses that the barrier material (5) (that of modified Mustafa incorporated herein) is first provided as a blank (13) [Fig. 3; p. 8 ln. 4-5] (providing a sheet material), wherein the blank (13) is folded into the shape of-, and wrapped about a charge of-, the bundle of tobacco products [p. 8 ln. 4–p. 9 ln. 21] (arranging the sheet material to form an inner pack), followed by locating the resultant wrapped bundle (6) within the pack (1) (container) [p. 3 ln. 2-3; p. 9 ln. 26; Figs. 1-2; claim 16] (locating the inner pack within a container). The method of modified Mustafa set forth/cited herein reads on the method of manufacturing a package for an aerosol provision system component or article defined by each and every limitation of claim 23.
Claims 1-2, 6, 8, 10-11, 14-18, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Scheubner (WO 2021/170730; “Scheubner”) (previously cited), in view of Sigrist (previously cited).
Regarding claim 1, Scheubner discloses a container for cigarettes comprising an outer housing (container) in the form of a box including a hinged lid, and a flexible packaging bag (inner pack located within the container) for enclosing the cigarettes, said bag (accommodating the cigarettes therein) disposed within the outer housing [Abstract; Figs. 1-3; p. 1 ln. 1-17; p. 3 ln. 12-24; p. 14 ln. 5-7; p. 20 ln. 5-25]. Scheubner discloses that the (inner) flexible packaging bag is formed from a multilayer material (sheet material arranged to form the inner pack) including a first film (inner side of bag), a second film (outer side of bag), and a resealable adhesive layer interposed between said first and second films [p. 3 ln. 18-24; p. 4 ln. 13-15; p. 6 ln. 15-16].
The first film is suitably, and preferably monolayer, and can be metallized [p. 4 ln. 26-27]; the (mono)layer of the first film is suitably formed from, inter alia paper [p. 5 ln. 5-8] (MPEP 2131.02(II)).
The second film is also suitably monolayer [p. 6 ln. 23-26], and suitably formed from, inter alia paper [p. 6 ln. 23-25] (MPEP 2131.02(II)).
The first film and second film are preferably made of the same material [p. 7 ln. 1-3], e.g. each of the first film and the second film are formed from (monolayer) paper [p. 7 ln. 4-7]. Each of the monolayer papers respectively forming the first film and second film suitably exhibit a water vapor permeability of 6 g/m2/24 hr or less, determined at 23° C, 50% RH; preferably 6 g/m2/24 hr or less, determined at 38° C, 90% RH; more preferably 2.5 g/m2/24 hr or less (38° C, 90% RH); and most preferably 1 g/m2/24 hr or less (38° C, 90% RH) [p. 7 ln. 16-21].
The resealable adhesive – which is suitably water-based, solvent-based, or a hot-melt and/or may comprise rubber – may be coated to a weight of 5-50 g/m2 [p. 6 ln. 1-14]. Each paper layer (respectively forming the first film and second film) – wherein both paper layers may be, but are not required to be, metallized [p. 4 ln. 27; p. 8 ln. 12; p. 9 ln. 28-29] – suitably exhibits a grammage of 30-200 gsm [p. 8 ln. 11-12].
Further, though not explicitly required by Scheubner, the first film may include a sealing varnish to render it sealable [p. 8 ln. 15-21; p. 11 ln. 25-29], of which may be a hot-melt varnish applied at a coat weight of 5-60 g/m2 (not limited thereto) [p. 9 ln. 5-18], or an aqueous varnish whose coat weight is not specified and thus not explicitly or implicitly limited by Scheubner [p. 9 ln. 19-27].
In view of the foregoing, Scheubner reasonably discloses, i.e. the disclosure of Scheubner reasonably encompasses, an embodiment(s) of the multilayer material which is formed from (in the following stated order, from the inner side of the bag to the outer side of the bag):
optional sealing varnish, exemplary (non-limiting) coat weight of 5-60 g/m2
a first film that is monolayer paper, optionally metallized, and having a grammage of 30-200 gsm, e.g. 30 gsm, 35 gsm, 40 gsm, 50 gsm, etc., said first film exhibiting a water vapour permeability of 1 g/m2/24 hr or less (38° C, 90% RH);
a resealable adhesive layer exhibiting a coat weight of 5-50 g/m2; and
a second film that is monolayer paper, optionally metallized, and having a grammage of 30-200 gsm, e.g. 30 gsm, 35 gsm, 40 gsm, 50 gsm, etc., said second film exhibiting a water vapour permeability of 1 g/m2/24 hr or less (38° C, 90% RH).
With respect to the difference(s) relative to the claimed invention, Scheubner does not explicitly disclose that the overall paper (first material) content (% by mass) relative to the total mass of the multilayer material is at least 92.5%. Said alternatively, Scheubner is silent regarding the coat weight of the metallization layer applied to one or both of the monolayer paper of the first film and monolayer paper of the second film.
The disclosure and teachings of Sigrist set forth above (¶19, ¶28-29) are incorporated herein by reference (not repeated for sake of brevity). In particular, as stated above, Sigrist teaches that metallization coatings can range from 0.01-0.1 g/m2, such that the paper content (wt.%) relative to the total weight of the multilayer material (wrapper) is at least 90%, preferably at least 95%, in order to reduce the overall amount of materials utilized which are considered harmful to the environment, such as plastics and metals, e.g. aluminum foil [col. 1 ln. 65–col. 2 ln. 6; col. 4 ln. 42-65]. Additionally, it is noted that Sigrist discloses a preferred minimum paper basis weight per sheet of paper, when the wrapper is formed from multiple layers of paper, of 25 gsm [col. 5 ln. 10-20] (encompasses range of at least 30 gsm disclosed by Scheubner). Further, Sigrist reasonably teaches that suitable coat weights for coatings/adhesives utilized to laminate layers to one another and to form glued areas (areas capable of being glued to form the wrapper into its intended shape for packaging cigarettes) may range from 1-7 g/m2 [col. 5 ln. 20-31].
Scheubner and Sigrist each constitute prior art which is directly analogous to the claimed invention. In view of the combined teachings of the foregoing prior art, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the multilayer material of Scheubner such that each metallization coating/layer (i.e. applied to first film and/or second film) would have exhibited a coat weight of 0.01-0.1 g/m2, in order to have reduced the overall amount of materials considered harmful to the environment utilized in forming the multilayer material and/or to achieve the predictable result of forming a multilayer material utilizing as much overall paper content as possible, preferably 95 wt.% or greater, while remaining capable of exhibiting the requisite degree of water vapour permeability specified by Scheubner (less than 6 g/m2/24 hr, at 23° C, 50% RH) and encompassed by the range taught by Sigrist. Additionally/alternatively, the foregoing modification(s) would have been obvious as the coat weight for the metallization layer(s) would have been readily recognized by one of ordinary skill in the art as suitable for the intended use in forming metallized water vapour permeability barrier layers disposed on paper monolayers for cigarette packaging multilayer wrappers (see MPEP 2144.07).
Additionally, it would have been obvious to have formed the sealing varnish to a coat weight of from 1-7 g/m2, in accordance with the foregoing, i.e. to further reduce the overall amount of plastic/resinous/rubber-based (environmentally-harmful) material utilized to form the multilayer material and thereby achieve the predictable result of increasing the amount of paper content relative to the overall weight of the multilayer material.
In accordance with the aforesaid modifications, the multilayer material which forms the flexible packaging bag disposed within the outer housing of the cigarette container of Scheubner (hereinafter “modified Scheubner”) would have included the first film, resealable adhesive, second film, and optional sealing varnish disposed on the inner-facing side of the first film, wherein
the monolayer paper of the first film would have exhibited a grammage of from 30-200 gsm and the metallization layer thereof would have exhibited a coat weight of 0.01-0.1 g/m2, said first film exhibiting a water vapour permeability (“WVP”) of 1 g/m2/24 hr or less (38° C, 90% RH)
the resealable adhesive layer would have exhibited a coat weight as low as 1 g/m2, up to 50 g/m2
the monolayer paper of the second film would have exhibited a grammage of from 30-200 gsm and the metallization layer thereof (present in addition to or as an alternative to the metallization layer of the first film) would have exhibited a coat weight of 0.01-0.1 g/m2, said first film exhibiting a water vapour permeability (“WVP”) of 1 g/m2/24 hr or less (38° C, 90% RH)
the optional sealing varnish (water-based, solvent-based, or a hot-melt and/or may comprise rubber), disposed on the first film, would have exhibited a coat weight of as low as 1 g/m2, up to 60 g/m2;
wherein the overall WVP of the multilayer material would have necessarily been 1 g/m2/24 hr or less (38° C, 90% RH) given the presence of the first film and second film each exhibiting the aforesaid WVP.
As such, the cigarette container of modified Scheubner above would have reasonably encompassed (rendered prima facie obvious) embodiments of the multilayer material wherein, for example, the first film and second film would have exhibited a grammage of 30 gsm; one or both metallization layers would have exhibited a coat weight of 0.01 g/m2; the resealable adhesive layer would have exhibited a coat weight of 1 g/m2; and the optional sealing varnish, if present, would have exhibited a coat weight of 1 g/m2. Through simple calculation based on the aforesaid embodiment, the multilayer material would have exhibited a paper content (wt.%) relative to the total weight of the multilayer material of, e.g. 98.34 wt.% (60/61.01) or, e.g. 96.7 wt.% (60/62.02), each of which are within the claimed range of at least 92.5 wt.% of the first material (paper). It is noted that the multilayer material of modified Scheubner is not limited to the aforesaid example.
The cigarette container of modified Scheubner set forth above reads on the package defined by each and every limitation of claim 1. For clarification, the monolayer papers of the first and second films read on the claimed first material which is paper, and the at least one metallization layer reads on the claimed second material which is metallic.
Regarding claim 2, the rejection of claim 1 above reads on the package defined by claim 2 – each of the aforesaid 98.34 wt.% and 96.7 wt.% of paper relative to the total weight of the multilayer material are within the claimed range of at least 95% by mass.
Regarding claim 6, the rejection of claim 1 above reads on the package defined by claim 6 – paper is (i) readily recognized by one of ordinary skill in the art as recyclable and/or compostable, and (ii) the spec and claims indicate that the first material which is recyclable and/or compostable is paper [0162, 0169], wherein no further requisites of said paper (first material) are specified. Additionally/alternatively, it is noted that the broadest reasonable interpretation of claim 6, in view of the specification, is that the first material which is paper is required to exhibit any degree of recyclability and/or compostability, under any conditions and via any one or more recycling or composting processes.
Regarding claim 8, the rejection of claim 1 above reads on the package defined by claim 8 – the monolayer papers which form the first film and second film are non-plastic material.
Regarding claim 10, in view of the rejection of claim 1 above and the embodiment of the multilayer material inclusive of the sealing varnish layer, Scheubner discloses that the multilayer material includes a sealing seam area where the interposed resealable adhesive layer is not present, such that the sealing varnish layer can be utilized to seal the first film to the second film and thereby form the bag (inner pack) to accommodate the cigarettes [p. 11 ln. 19-29; p. 24 ln. 10-19]. The aforesaid sealing varnish layer utilized in the sealing seam area reads on the claimed adhesive which is configured to attach the sheet material to itself, and which is a paper suitable adhesive, given that Scheubner discloses use thereof to seal the first and second films to one another, and given that the broadest reasonable interpretation of the term “paper suitable adhesive” is any adhesive capable of adhering the monolayer papers forming the first and second films to each other.
Regarding claim 11, in view of the rejection of claim 10 above, the sealing varnish layer of the multilayer material of modified Scheubner, formed from a hot-melt adhesive (thermoplastic resin) or an aqueous dispersion of a heat-sealable adhesive (resin), reads on at least the claimed paper suitable adhesive species “resin based adhesive”.
Regarding claim 14, the rejection of claim 1 above reads on the package defined by claim 14. Either or both of the monolayer paper of the first film and the monolayer paper of the second film read on the claimed first material, and the corresponding at least one metallization layer, or both metallization layers, read on the claimed second material. At least the monolayer paper of the first film and the metallization layer coated thereon (e.g. vapor vacuum deposited metallized layer) read on the claimed first layer and second layer, respectively (claim 14).
Regarding claims 15-16, in view of the rejection of claim 14 above, it is noted that the broadest reasonable interpretation of the claimed phrase “wherein the first and second layers are laminated” and claimed term “laminated”, in view of Applicant’s specification [0011, 0167], is such that the phrase/term encompasses simply coating or otherwise forming the metal material (second material) directly on the paper (first material) in the absence of any intervening material. Said alternatively, “laminating” encompasses forming the metal second material directly on the paper first material, by any method or means therefor – “laminating” does not require the presence of an interposed adhesive, primer, or any other type of material between the first and second materials.
As such, the rejection of claim 14 above reads on each package defined by the limitations of claims 15-16, respectively.
Regarding claim 17, it is noted that claim 17, as well as the specification, do not define an oxygen, air, or other/general gas permeability rate corresponding to, or otherwise intended to limit, the claimed phrase “hermetically sealed”. In view thereof, and given that the flexible packaging bag of modified Scheubner (i) completely encloses the cigarettes therein and is sealed at the seam seal (see rejection of claim 10 above at ¶55) via the sealing varnish, (ii) is formed from substantially identical materials relative to those claimed and disclosed for the sheet material forming the inner pack, including the first and second papers which may be metallized, and (iii) exhibits a WVP which is within the claimed water vapour permeability of 6 g/m2·day or less, the sealed flexible packaging bag of modified Scheubner which encloses and seals therein the cigarettes reads on the inner pack being “hermetically sealed”.
Regarding claim 18, the rejection of claim 1 above reads on the package defined by claim 18 – the multilayer material of modified Scheubner (the exemplary embodiment set forth by the Examiner encompassed within the disclosure of Scheubner taken in view of and modified by the teachings of Sigrist) may exhibit an overall basis weight of, e.g. 62.02 gsm or, e.g. 61.01 gsm or greater, of which overlaps with and thereby renders prima facie obvious the claimed range of less than or equal to 75 gsm (MPEP 2144.05(I)).
Regarding claim 20, the rejection of claim 1 above reads on the package defined by claim 20 – the outer housing of the container of modified Scheubner, which reads on the claimed container, forms an outer layer of the package.
Regarding claim 21, the rejection of claim 1 above reads on the package defined by claim 21 – the outer housing (container) of modified Scheubner includes a hinged lid (flip lid).
Regarding claim 22, the rejection of claim 1 above is incorporated herein by reference (not repeated). The multilayer material of modified Scheubner above reads on the inner pack for a package for an aerosol provision system component or article defined by each and every limitation of claim 22.
Regarding claim 23, the rejection of claim 1 above is incorporated herein by reference and reads on the method of manufacturing a package for an aerosol provision system component or article defined by each and every limitation of claim 23. The multilayer material (sheet material) of modified Scheubner is arranged into and forms the flexible packaging bag (inner pack) which encloses and accommodates the cigarettes therein, wherein said cigarettes may be disposed in contact with the the first film of the multilayer material before, or after, said multilayer material is arranged into the flexible bag (sealed) [Scheubner, p. 24]. The flexible packaging bag accommodating the product therein is thereafter located (i.e. placed, disposed, inserted) within the outer housing (container).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Scheubner in view of Sigrist as applied to claim 1 above, further in view of Focke et al. (US 5,511,658; “Focke”) (previously cited).
Regarding claim 19, as set forth above in the rejection of claim 1, the container for cigarettes of modified Scheubner includes the outer housing (container) comprising a box structure and hinged lid [p. 20 ln. 6-11; Figs. 1-2]. Further, Scheubner discloses that the outer housing, including said box and hinged lid, are preferably formed of cardboard, a relatively stiff material [p. 20 ln. 10-11], of which the Examiner takes the position is different, at least to some degree, from (the) paper which forms the monolayers of the first film and second film of the multilayer material which forms the flexible packaging bag (inner pack). As such, it can be said that Scheubner is silent regarding the outer housing being formed from paper (first material) in an amount of at least 90% by mass, i.e. silent regarding “the container comprising at least 90% of the first material”.
Focke is directed to packages, e.g. containers for cigarettes including an outer housing and an inner wrapping material formed from paper or (tin)foil which encloses the cigarettes and is disposed within the outer housing [Abstract; Figs. 1-3, 5-7; col. 1 ln. 5-52]. Focke teaches that – in the alternative to the known/recognized stiff outer housings – the outer housing may suitably be formed from a (relatively) thin packaging material such as/consisting of paper, wherein said outer housing formed from paper (also) exhibits the box-structure and the hinged lid integral with the box-structure [col. 1 ln. 43-53, col. 2 ln. 38-59, col. 3 ln. 46-54]. As such, Focke reasonably teaches an outer housing consisting of paper, and exhibiting both a box-structure and integral hinged lid (substantially identical to the structure of the outer housing disclosed by Scheubner), as a suitable alternative (to stiff cardboard-based materials) for forming the outer housing of a cigarette container. Simply put, and as recognized by one of ordinary skill in the art, Focke teaches/recognizes “soft pack” cigarette containers in the alternative to those disclosed by Scheubner typically being recognized as “hard pack” cigarette containers. Focke constitutes prior art which is directly analogous to the claimed invention.
In view of the combined teachings of the foregoing prior art, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the cigarette container of modified Scheubner (set forth above in the rejection of claim 1) by utilizing an outer housing – exhibiting the box-structure and integral hinged lid – formed from paper rather than (i.e. in place of) cardboard, as the paper based (“soft”) outer housing would have been readily recognized as an equivalent alternative material to cardboard suitable for forming the outer housing of cigarette containers (MPEP 2144.06(II), MPEP 2144.07), and/or to reduce the overall weight/density or increase the conformability of the cigarette container.
In accordance with the aforesaid modification, the outer housing of the cigarette container of modified Scheubner, including the box-structure/box-shape and integral hinged lid, would have been formed from (consisted of) paper instead of cardboard. As such, the outer housing of the container of modified Scheubner would have been formed from paper (100 wt.%), and thereby identical to “paper” (of the monolayer papers of the first film and second film, respectively, of the multilayer material) which reads on the first material of the claimed sheet material of the inner pack. In other words, the outer housing of the container of modified Scheubner would have been formed from 100% by weight of the “first material”, and thereby reads on the package defined by claim 19.
Response to Arguments
Applicant’s arguments presented on pp. 8-10 of the Remarks filed 13 October 2025 (hereinafter “Remarks”), directed to the rejection of claims 1-2, 5-6, 12-16, 18, 20, and 22-23 under 35 U.S.C. 102(a)(1) as anticipated by Schmittel, and the rejection of claims 1-2, 5-6, 8-18, and 20-23 under 35 U.S.C. 103 as unpatentable over Scheubner, both previously set forth in the NFOA, have been fully considered by the Examiner but are moot as the aforesaid 102(a)(1) and 103 rejections have been overcome by the amendments to the claims and accordingly, withdrawn (see ¶6 above). It is noted that new grounds of rejection are set forth above, necessitated by the amendments to the claims and made in view of newly cited prior art to Mustafa, and in view of a new combination of previously-cited prior art to Scheubner and Sigrist based on alternative interpretations thereof.
Applicant’s arguments presented on pp. 6-7 of the Remarks regarding the rejection of claims 1, 22, and 23 (and those directly or ultimately dependent thereupon) under 35 U.S.C. 112(b), specifically regarding the claimed phrase (of the sheet material having) “a water vapour permeability of less than 6 g/m2/24 hr” not being indefinite, have been fully considered but not found persuasive.
Applicant asserts (i) that the aforesaid phrase is clear because “the conditions at which the water vapour permeability is tested within the industry are standard, i.e. 23° C and 50% relative humidity, and 30° C and 90% relative humidity”, and therefore one of ordinary skill in the art would be aware of commonly used methods in the art. Applicant then asserts (ii) that the cited prior art replied upon by the Examiner (Scheubner) outlines that the water vapour permeability tests can be carried out under normal conditions (23° C, 50% RH) and tropical conditions (30° C, 90% RH), and as such a set of standard conditions exists for the testing of water vapour permeability that would be common, general knowledge to one of ordinary skill in the art.
However, Applicant’s first assertion (i) constitutes a mere conclusory statement that the water vapour permeability measurement conditions are “standard within the industry”, as the assertion is not supported by any factual, objective evidence thereof (see MPEP 2145, MPEP 2145(I)). That is, Applicant has not provided any factual, objective evidence that the temperature and relative humidity conditions of 23°/30° C and 50%/90% RH, are actually standard testing conditions “within the industry”, and thereby has not established that one of ordinary skill in the art would recognize said conditions as a standard to which the claimed invention is specifically referencing and being limited thereby. Further, the scope of the “industry” which Applicant has referenced is not clear – or at the very least, is extremely broad – to the Examiner, given the lack of explicit context/specificity. Phrased as a question, is the industry: the packaging industry, the tobacco industry, the cigarette industry, the paper and/or paper-manufacturing industry, the water vapour permeability measurement/testing industry? As such, it is the Examiner’s position that in contrast to Applicants first assertion (i), Applicant has essentially highlighted the fact that it is common for one of ordinary skill in the art, when reporting a water vapour permeability value of a layered material, to specify the conditions at which the value is determined, so that the boundaries of the reported value or range thereof are made clear to one of ordinary skill.
Regarding Applicant’s second assertion (ii), the metes and bounds of the scope of the claimed water vapour permeability range “less than 6 g/m2/24 hr” – regardless of disclosure in analogous prior art of one or more measurement conditions at which the water vapour permeability values of the products disclosed therein are determined and reported – are ambiguous/unclear/vague and cannot be readily determined by one of ordinary skill in the art, including when read in view of Applicant’s specification. Said alternatively and in view of MPEP 2173, the metes and bounds of the scope of the claimed range, in the absence of recitation in the claims and the written description of the specification of at least the corresponding temperature and relative humidity at which the permeability of the claimed sheet material is determined, are unclear such that the public would not be clearly and reasonably informed of the boundaries of what constitutes infringement thereupon. In other words, the boundaries of the claimed subject matter for which patent protection is sought are not clearly delineated.
In view of the foregoing, it is respectfully and further noted that MPEP 2173 states: “It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter…Such a [35 U.S.C. 112(b)] rejection requires that the Applicant respond by explaining why the language is definite or by amending the claim, thus making the record clear regarding the claim boundaries prior to issuance.” In the instant case, it is unclear whether the claimed sheet material exhibits the water vapour permeability when said permeability is measured/determined at all temperatures and relative humidities, only at a subset thereof, or one particular condition or combination of conditions thereof, and Applicant’s assertions have not made the record clear regarding the indefiniteness issue. Therefore, the Examiner maintains that the broadest reasonable interpretation of the claimed water vapour permeability range of the sheet material, in view of the specification (see MPEP 2111), is less than 6 g/m2/24 hr, determined at any temperature and any relative humidity.
For these reasons above, Applicant’s arguments identified above have not been found persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Michael C. Romanowski whose telephone number is (571)270-1387. The Examiner can normally be reached M-F, 09:30-17:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C. ROMANOWSKI/Primary Examiner, Art Unit 1782
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