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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/15/2026 has been entered.
Status of the Claims
Claims 1, 5-10, 12-13 and 14 are pending. Claim 1 is amended. Claim 14 is new. Claims 7 and 12 are Withdrawn – Currently Amended). Claims 8-10 and 13 are withdrawn. Claims 2-4 and 11 are cancelled.
Response to Arguments
Applicant’s arguments, see Response starting pg 6, filed 04/15/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of SAKURAI et al. (EP3437494 A1), in view of Yamada (TW201534785A) cited in the IDS of 11/02/2023 (English Machine Translation relied upon), Sebastian et al. US 2018/0266053 A1, Hubbe et al. “Nanocellulose in Thin Films, Coatings, and Plies for Packaging Applications: A Review, bioresources.com 2017, and Nelson et al. (US 2014/0155301 A1), see the rejections below.
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.
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.
Claim 1, 5-6 and 14 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 1, the term “reduces unpleasant odor” in claim 1 is a relative term which renders the claim indefinite. The term “reduces unpleasant odor” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Because the degree that a person finds a smell unpleasant or desirable is incredibly subjective, one of ordinary skill in the art would not be apprised as to the scope of the claim. For the purposes of claim interpretation, the requirement that the cigarette wrapper “reduces unpleasant odor caused by paper smell and steaming smell” will be considered to be met if the other limitations of the claim(s) are met, because there does not appear to be a separate structural or compositional element that results in the reduction of unpleasant odor, nor is there any basis upon which one of ordinary skill in the art could identify what is meant by unpleasant.
Claims 5-6 and 14 are rejected as depending on an indefinite base claim, where none of the further limitations resolve the indefinite rejection of the base claim.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over SAKURAI et al. (EP3437494 A1), in view of Yamada (TW201534785A) cited in the IDS of 11/02/2023 (English Machine Translation relied upon), Sebastian et al. US 2018/0266053 A1, Hubbe et al. “Nanocellulose in Thin Films, Coatings, and Plies for Packaging Applications: A Review, bioresources.com 2017, and Nelson et al. (US 2014/0155301 A1).
Regarding claim 1, Sakurai discloses:
A wrapping paper for tobacco filters, ([0012]). The wrapping paper is from 100-300 µm, to act as a buffer where a water-soluble liquid is added to a filter medium, and allows preventing that water-soluble liquid from leaking out of the filter, ([0016]). Preferably, the thickness is 200-300 µm, and is a thick as possible to further prevent leakage of liquid from the filter medium, and at a thickness of 100 µm or greater, there is excellent formability as tobacco filter wrapping paper, (0017]). The wrapping paper is formed by a nonwoven fabric made up of hydrophobic fibers, ([0014]). Examples of hydrophobic fibers include for instance fibers made up of polyolefins such as polyethylene or polypropylene, or thermoplastic resins other than polyolefins, for instance nylon or polyester, and also composite fibers being combinations of fibers made up of the foregoing thermoplastic resins, ([0024]). Polyolefin fibers are preferably used among the foregoing, and among these, polyethylene or polypropylene fibers are more preferably used, since these form interfiber bonding points on account of heat, and allow fibers to fuse with each other at a low temperature, ([0025]). Sakurai does not disclose the wrapper comprises a nanocellulose film.
Yamada teaches a cigarette wrapper, ([0001]), and is thus within the inventor’s field of endeavor. Yamada further teaches the cigarette wrapper including a nanocellulose film, ([0011] describing an outer layer paper for a smoking article containing nanofibers), where the nanofiber is composed of cellulose, ([0019]), the outer paper may have a two layer structure where the outer layer is made of nanofibers, ([0066]), thus disclosing an outer layer paper for a smoking article comprising a nanofiber layer (film) over another layer, with both layers together having an intended use for wrapping a cigarette. Yamada teaches that the outer coating of nanocellulose provides for a pleasant feeling to the touch, and improves manufacturing. ([0008]). Yamada does not disclose that the nanocellulose film may be applied to a nonwoven fabric comprising polyethylene or polypropylene fibers.
Sebastian teaches a method of making tobacco nanocellulose based film, ([0104]), and is thus pertinent to the problem faced by the inventor. Sebastian teaches that the preparation of thin and dense films of cellulose nanofibrils is carried out on a support material, and suggests support materials made of polyethylene and polypropylene, ([0105]). Sebastian teaches the thickness of the film is preferably in the range of about 50-150 µm, and that while the thickness of the support is not an essential parameter, generally the thickness of the used support ranges between 150 – 2000 µm, ([0112]). Sebastian teaches that in some embodiments the CNF has crystallinity ranging from 50-75%, ([0029]). Thus, Sebastian lacks a teaching that the crystallinity of the CNF applied to the support material is 80% or more.
Hubbe teaches the use of nanocellulose to enhance the barrier properties and performance attributes of packaging products, ([Pg 2143 first full paragraph] here the wrapper is understood to be packaging for the aerosol generating article), and is thus within the Applicant’s field of endeavor. Hubbe teaches that the mechanical and barrier properties of nanocellulose depend in part based on the crystalline structure, ([Section titled Mechanical and barrier properties] Fig 1), showing that permeance of oxygen and water is impacted by defects in the crystalline structure, ([pg 2163 paragraph discussing Fig 6] Fig 6).
Nelson teaches that nanocellulose is being developed for use in a wide variety of applications including films and packaging, ([0005]) and teaches a process for generating a nanocellulose material having a crystallinity of at least 85% or higher, ([0017]), and is thus considered within the Applicant’s field of endeavor. Nelson teaches that the crystallinity of the nanocellulose material is at least 80% in various embodiments, and the nanocellulose may include nanofibrilated cellulose, nanocrystalline cellulose, or both, ([0038]-[0039]). Nelson teaches that the high crystallinity contributes to high mechanical strength, ([0141] which one of ordinary skill in the art would recognize as advantageous when the film is subjected to stress during the cigarette manufacturing process, so that the wrapper does not break during the cigarette wrapping process). Nelson teaches that nanofibrillated cellulose nanopaper has a higher density and higher tensile mechanical properties than conventional paper, maybe made optically transparent and flexible, with low thermal expansion and excellent oxygen barrier characteristics, ([0278]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have improved the wrapper of Sakurai according to the teachings of Yamada, Sebastian, Hubbe, and Nelson. Sakurai discloses an unimproved cigarette wrapper comprising a nonwoven fabric of preferably polyethylene or polypropylene fibers, a prior art reference ready for improvement. Yamada suggests and motivates an improvement to that prior art reference, by applying a nanocellulose film to cigarette paper that improve its strength and also the feel of the wrapper when held by a consumer. Sebastian teaches that the prior art wrapper made of polyethylene or polypropylene fibers may serve as a base upon which the nanocellulose film may be supported, and that the film should be in a range of 50-150 µm, while the support may be in a range of 150 µm or more, consistent with the original wrapper according to Sakurai that may be 100-300 µm thick. While Sebastian teaches a process with 50-75% crystallinity, Hubbe makes clear that a higher crystallinity structure will have less water and oxygen permeability, and Nelson teaches embodiments with greater than 80% crystallinity, and also teaches the high crystallinity contributes to high mechanical strength, important to the cigarette manufacturing process. These teachings taken together would reasonably suggest to one of ordinary skill in the art to modify the wrapper of Sakurai with a nanocellulose film as suggested by Yamada, using the base and film thickness ranges of Sebastian (which are consistent with thickness of the wrapper according to Sakurai), but using a nanocellulose film with a higher than 80% crystallinity according to Nelson, for the advantages described by both Nelson and Hubbe.
Applicants have amended claim 1 to further require a functional limitation, where the cigarette wrapper reduces unpleasant odor caused by paper smell and steaming smell. This limitation has been found indefinite, because unpleasant odor is a relative term, and has been interpreted as being met for the purposes of compact prosecution, because this limitation is interpreted as being dependent on the other limitations of the claim, rather than requiring a separate structural or compositional limitation.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over SAKURAI et al. (EP3437494 A1), in view of Yamada (TW201534785A) cited in the IDS of 11/02/2023 (English Machine Translation relied upon), Sebastian et al. US 2018/0266053 A1, Hubbe et al. “Nanocellulose in Thin Films, Coatings, and Plies for Packaging Applications: A Review, bioresources.com 2017, and Nelson et al. (US 2014/0155301 A1), as applied to claim 1 above, and further in view of Podraza “Basic Principles of Cigarette Design and Function” 2001 and Cooper et al. (US 2010/0180903 A1).
Regarding claim 5-6, modified Sakurai discloses the cigarette wrapper of claim 1. Sakurai does not disclose whether or not the cigarette wrapper comprises a filler and a combustion improver.
Podraza teaches basic principles of cigarette design and function, ([Title]), and is thus within the Applicant’s field of endeavor. Podraza teaches an generic wrapper for a cigarette typically will contain calcium carbonate as a color enhancing agent, and sodium and potassium citrate as burn rate modifiers, ([pg 32 under the slide heading “Cigarette Paper”).
Cooper teaches a smoking article enclosed in a wrapper, ([0014], and is thus considered within the inventor’s field of endeavor. Cooper teaches the prior art wrappers typically include additives such as burn additives and ash improvers such as sodium citrate and potassium citrate, ([0005]), that prior art wrappers may comprise fillers, such as calcium carbonate, ([0006]), and that the wrapper may be partially or entirely non-paper, ([0007]).
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 nonwoven fabric support of modified Sakurai consistent with the teachings of Podroza and Cooper to further comprise calcium carbonate for the benefit of color enhancing, and sodium and potassium citrate to adjust the burn rate of the cigarette. One of ordinary skill in the art would have recognized using these standard wrapper additives for the benefits taught by Podraza and Cooper, to obtain the standard design benefits of aesthetic enhancement (calcium carbonate) and burn rate control (sodium and potassium citrate) in the modified wrapper of Sakurai.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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/DANIEL EDWARD VAKILI/Examiner, Art Unit 1747
