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 .
Status of the Claims
Claims 1, 5-10, and 12-13 are pending. Claims 7-10 and 12-13 are withdrawn. Claims 2-4 and 11 are cancelled.
Response to Amendment
The Response of 12/03/2025 is entered. The amendments to the claims overcome the objections to the Specification and the rejections to the claims based on 35 USC 112(b), and thus these objections and rejections are withdrawn.
Response to Arguments
Applicant's arguments filed 12/03/2025 have been fully considered but they are not persuasive. At the outset, Examiner thanks Applicant for amending the withdrawn claims with the limitations incorporated into the base claim under examination. Examiner agrees that should claim 1 be amended such that it is allowable over the prior art, the withdrawn claims should (and will) be considered for rejoinder. For the reasons discussed below and in the rejections that follow, the claims are not yet allowable.
Claim 1 was amended to include the limitations from claims 2-4, now cancelled. The base reference Yamada was considered to anticipate the limitations of claims 1-3, but the limitation requiring that the cellulose nanofibers and the cellulose nanocrystals have a crystallinity of 80% or more was only found obvious based on Yamada in light of the teachings of two other references, Hube and Nelson.
Applicant argues that the combination of these limitations provides particular benefits, Response pg 7-8, and that the combination of references do not disclose or suggest the combined features of nanocellulose film thickness, the type of nanocellulose, and the crystallinity of the nanocellulose, Remarks pg 8 2nd full paragraph. Applicant then narrowly characterizes the references individually, and concludes that the claims are not obvious in light of the individual disclosures, stating that none of the references teaches or suggests adjusting all of the nanocellulose film thickness, the type of nanocellulose, and the crystallinity of the nanocellulose within specific ranges, nor do they suggest that the nanocellulose is used as a tobacco wrapper to reduce unpleasant tobacco odor, Remarks, pg 8 6th full paragraph.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant asserts: “In particular, Yamada merely discloses that the outer paper contains nanofibers or addresses only the thickness thereof.” Response pg 8 3rd full paragraph. First, Yamada discloses using a cigarette wrapper, ([0001]), including a nanocellulose film, ([0011] an outer layer paper for a smoking article containing nanofibers). Yamada recognizes that the outer paper must have a certain degree of tensile strength, ([0006], [0016], [0082], [0083]). Yamada discloses that the outer layer contains nanofibers, may be entirely composed of nanofibers, may be laminated with layers composed of other materials in addition to the nanofiber layer, and may have other materials in small amounts to form the outer layer of paper, ([0061]). The proportion of nanofibers in the outer layer of paper may be more than 99.5% by weight, ([0061]). Yamada discloses that the thickness of the outer paper is usually between 10-50 µm, ([0069]-[0070]), and the film is formed with a plurality of other layers of paper, the thickness of the nanofibers is generally 10-50% of the thickness of the entire outer paper, ([0071]). Applicant asserts that these disclosures do not reasonably suggest that the film is used as a tobacco wrapper which would reduce unpleasant tobacco odor. Yet, Yamada discloses that the air permeability of the outer paper of the invention to have a value of 5 CU (Coresta Units) or less, ([0078]), understood to disclose a wrapper that is essentially air impermeable, which one of ordinary skill in the art would understand as substantially blocking the transmission of odor through the outer paper.
Applicant asserts: “Hubbe merely mentions that a film containing nanocellulose may exhibit different barrier properties for O2, H2O, oils and the like due to its crystalline domains.” Remarks, pg 8 4th full paragraph. Examiner does not read Hubbe so narrowly. Hubbe teaches that the decrease in gas permeation is at least partially attributable to the relatively high crystallinity of nanocellulose, Hubbe pg 2163, and Fig 6 and its description reasonably suggest that the crystalline regions play a role in impeding the diffusion and permeance of oxygen and water vapor, both of which would have to pass around the outsides of any crystalline domains, Hubbe pg 2163. This reasonably suggests that the higher the crystallinity, the greater the impedance of oxygen and water through the film, further reasonably suggesting that a nanocellulose film used in a wrapper should have a high relative crystallinity.
Applicant asserts: “Nelson merely lists that the crystallinity of the nanocellulose may be at least 70%, 75%, 80%, or 85%.” Remarks, pg 8 5th full paragraph. Examiner does not read Nelson so narrowly.
Nelson teaches that nanocellulose is being developed for use in a wide variety of applications, including paper for packaging, ([0005]). Nelson teaches that the crystallinity of the nanocellulose material is at least 70% or at least 80% in various embodiments, ([0038], [0140] suggesting crystallinity of 86% or greater). 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]).
One of ordinary skill in the art, when considering the references together, would have found the invention of claim 1 to be obvious. Yamada discloses the limitations of claim 1, with the exception of explicitly requiring over 80% crystallinity. Hubbe and Nelson when considered together, and in light of Yamada, reasonably suggest that a crystallinity of over 80% was available and would have produced an outer paper that would have had improved air permeability and tensile strength characteristics.
The teachings of Podraza are not considered relevant to the rejections argued in the Response, which focus on the subject matter of amended claim 1.
Applicant further argues that subject matter claimed from this Application, including broader claims, were allowed in other jurisdictions, Remarks pg 9. Examiner is not familiar with the rules for examining inventions and granting patents in all these jurisdictions, but notes that while similarities exist so do differences and these differences certainly may form the basis for an allowance in one jurisdiction and a rejection in another. Also, allowances and rejections may also be different where the prior art used in the patentability analysis is different. Here the art used was different, and the rules applied were also different, which reasonably may lead to a rejection in one jurisdiction (in this case the US) and not the others. Examiner has no further comment regarding the examination and allowance in the other jurisdictions.
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 Yamada (TW201534785A) cited in the IDS of 11/02/2023 (English Machine Translation relied upon) as applied to claim 3 above, and further in view of 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, Yamada discloses:
A cigarette wrapper, ([0001]) 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 recognizes that the outer paper must have a certain degree of tensile strength, ([0006], [0016], [0082], [0083]). Yamada discloses the outer paper has a thickness that is usually 10-50 µm, ([0069]), reasonably disclosing that the nanocellulose film has a thickness within the claimed range). Yamada discloses the nanocellulose film includes one or more nanocelluloses of cellulose nanofibers and cellulose nanocrystals, ([0019] disclosing the nanofiber layer may be made of cellulose). Yamada discloses that the air permeability of the outer paper of the invention to have a value of 5 CU (Coresta Units) or less, ([0078]), understood to disclose a wrapper that is essentially air impermeable, which one of ordinary skill in the art would understand as substantially blocking the transmission of odor through the outer paper. Yamada does not disclose the crystallinity of the nanofibers made of cellulose.
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 80% or higher, ([0017]), and is 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 specified a crystallinity of 80% or more for the nanocellulose fibers of Yamada, based on the teachings of Hubbe and Nelson. First, Yamada is silent as to the crystallinity of the nanofiber cellulose to be used, but discloses characteristics of the outer paper such as tensile strength and low air permeability that are influenced by high crystallinity. Hubbe teaches that the barrier properties of the nanocellulose layer will be enhanced by a higher degree of crystallinity, as shown by the figures of the disclosure and the passages cited above. Still, Hubbe does not teach what levels of crystallinity may be available. Nelson teaches a process where nanocellulose fibers may be produced with a crystallinity of 80% or more, and further teaches high impermeability and tensile strength are provided by high crystallinity. It would be obvious to one of ordinary skill in the art to use the nanocellulose of 80% or more, provided by the process of Nelson, for the advantages taught by Hubbe and Nelson, in the outer layer of the cigarette paper of Yamada to achieve a substantially impermeable outer paper with a high degree of mechanical strength, to facilitate machine wrapping of cigarettes with a wrapper having a low air permeability.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (TW201534785A) cited in the IDS of 11/02/2023 (English Machine Translation relied upon) as applied to claim 1 above, and further in view of Podraza “Basic Principles of Cigarette Design and Function” 2001.
Regarding claim 5-6, Yamada discloses the cigarette wrapper of claim 1. Yamada 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”).
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 outer layer paper comprising the nanocellulose such that the interior layer of cigarette paper included 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 the value of using a standard cigarette paper design for the interior layer for the wrapper of Yamada, to obtain the standard design benefits of aesthetic enhancement (calcium carbonate) and burn rate control (sodium and potassium citrate).
Conclusion
THIS ACTION IS MADE FINAL. 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 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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/D.E.V./Examiner, Art Unit 1747
/Michael J Felton/Primary Examiner, Art Unit 1747