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 .
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.
Response to Amendment
Claims 1, 2, and 7 are amended. Claims 8-14 were previously withdrawn.
Response to Arguments
Applicants remarks and amendments filed April 8, 2026 with respect to the claim objection have been fully considered and are persuasive. Said claim objection has been withdrawn.
Applicant’s remarks and amendments filed April 8, 2026 with respect to the § 103 rejections of record have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Browne (US 4,744,943).
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 1-2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi et al. (US 2008/0053467) in view of McHugh et al. (US 2008/0029112), and further in view of Browne (US 4,744,932).
Regarding claims 1-2 and 7, Taniguchi discloses a woven fabric filter ([0111]: the form of the cigarette filter material is not particularly limited to a specific one, and may be, for example, any one of a fibrous form, a capillaceous form, a woven fabric form, a nonwoven fabric form, a tow-like form, a sheet form and a particulate form (or a particulate), depending on the form of the substrate), the woven fabric filter comprising:
a sheet fiber ([0052]: the preferred substrate may be in the form of a filter rod formed from a fiber [or a filter (a filter substrate) having a rod formed from a fiber), wherein the sheet comprises:
a cellulose-based polymer ([0092]: examples of a humectant may include ... a cellulose derivative [for example, a cellulose ether, e.g., a hydroxyalkyl cellulose (such as hydroxyethyl cellulose or hydroxypropyl cellulose), a hydroxyl group-containing cellulose derivative (e.g., an alkyl-hydroxyalkyl cellulose such as ethyl hydroxyethyl cellulose), a carboxyalkyl cellulose (such as carboxymethyl cellulose), and an alkyl cellulose (such as ethyl cellulose), reading over the cellulose-based polymer of claims 1 and 2); the cellulose-based polymer is in an amount of 20% wt% to 60 wt% ([0093]: In the case of using the humectant, the content of the humectant may be, for example, about 0.1 to 100 parts by weight (i.e., about 0.01 wt% to about 100 wt% ) , preferably about 0.5 to 50 parts by weight (i.e., about 1 wt% to about 99 wt% by calculation), and more preferably about 2 to 30 parts by weight (i.e., about 6 wt% to about 94 wt% by calculation) (for example, about 4 to 20 parts by weight (i.e., about 17 wt% to about 83 wt%)), relative to 100 parts by weight of the substrate; reading over the claimed cellulose-based polymer wt% of claim 2);
a plasticizer ([0110]: the cigarette filter material may further contain other component(s), for example a plasticizer (e.g., triacetin), an inorganic fine powder (e.g., kaolin, talc, diatomaceous earth, quartz, calcium carbonate, barium sulfate, titanium oxide, and alumina), a heat stabilizer (e.g., a salt of an alkali or alkaline earth metal), a coloring agent, a whitening agent, an oil, a retention aid for paper, a sizing agent, an adsorbent (e.g., an activated carbon), a biodegradation or photodecomposition accelerator (e.g., an anatase-type titanium oxide), and a natural polymer or a derivative thereof (e.g., a cellulose powder). These other components may be used singly or in combination.); reading over the plasticizer of claim 1.
Taniguchi does not explicitly disclose a flavored sheet fiber (claim 1).
McHugh, directed to fibrous elements impregnated with additives such as flavorants useful as a filter in a smoking article, teaches a flavored sheet fiber (Abstract; [0014]: a fibrous element useful as a filter in a smoking article is prepared by impregnating fibers with an additive such as a flavorant, flavorant enhancer or scavenger using a gas at high pressures or a supercritical fluid (SCF) as a solvent or dispersant for the additive. In the absence of heat or vacuum force, the impregnated fibers slowly release the additive over a finite and measurable period time. Such slow release makes the impregnated fibers useful as flavor mediums in smoking articles since there is always a fraction of the additive within and on the fiber surface which can readily be removed or vaporized. [0016]: the terms “fiber,” “fiber element,” and “fiber matrix” are intended to encompass monofilaments such as single strands elongated alone one axis, bundles of monofilaments including combinations of monofilaments similar in length, as well as fabrics in the form of woven, braided, non-woven or spun structures or any other fibrous structure conventionally used in the construction of cigarette filters.); and a flavoring material ([0031]: Typical examples of flavorants (reads over a flavoring material) include natural and synthetic materials which augment the minty, camphoraceous, spicy, peppery, fruity, flowery, woody, green, or other tobacco flavor and aroma notes. Other flavorants contemplated for use include naturally occurring or synthetic flavorants such as citrus oils, tobacco extracts, wine, rum, honey, vanilla, molasses, maple syrup, chocolate, menthol, vanillin, licorice, anethole, anise, cocoa, cocoa and chocolate by-products, eugenol, clove oil, and other generally accepted flavorant filter additives; reading over a flavor material).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Taniguchi by including flavor impregnated fibers (reads over a flavored sheet fiber) with a flavor material as taught by McHugh because Taniguchi and McHugh are both directed to woven fabrics and Taniguchi is silent to a sheet fiber flavored with a flavoring material. One of ordinary skill would be motivated to look to McHugh for a known and suitable flavored fibrous structure as McHugh teaches a fibrous element useful as a filter in a smoking article impregnating fibers is prepared by impregnating fibers with a flavorant additive (i.e., a flavoring material) ([0014]).
Taniguchi discloses a cellulose ester fiber diameter may be, for example (e.g., suggests), about 0.01 µm to about 100 µm (i.e., about 1.0E-5 mm to about 0.1 mm), preferably about 0.5 to 80 µm and more preferably about 1 to 50 µm ([0047]). However, Taniguchi is not limited to the fiber diameters suggested in [0047]. However, Taniguchi does not explicitly disclose the claimed fiber diameters of claims 1 and 7.
Browne, directed to forming a skinless hollow fiber of a cellulose ester (Abstract), teaches a particular object of the invention is to produce hollow filter fibers having values of specific surface area significantly greater than the currently available materials (col 2 lines 58-60). Brown teaches shaped articles with striated surfaces extruded from a solution of a cellulose ester so that the articles are cellular in cross-section, semipermeable, lack a defined denser outer layer or “skin”, and have at least one striated surface and increased specific surface area. The articles can take any suitable shape which can be extruded, preferably solid or hollow fibers. A preferred embodiment is a hollow fiber having striations in both the inner and outer surfaces, and specific surface area several times greater than that of typical dry spun cellulose ester fibers (col 4 lines 10-22). Browne teaches fibers having a diameter in the range of from about 0.8 to about 3 mm can be produced. Hollow fibers of 1-2 mm in diameter having walls approximately 0.15 mm thick were produced for the examples herein (col 5 lines 32; Example VII).
Browne further teaches as small-diameter hollow fibers, these materials are useful in filters for tobacco smoke, air or other gases carrying particulate or vaporized impurities. due to their hollow and cellular structure, these fibers can also be impregnated or filled with odorants, flavorants or absorbent or deodorant materials to interact with gases or vapors which contact both the internal and external surfaces of the fibers. For example, if the cells in the walls are filled or impregnated with an odorant or a flavorant, an aroma or flavor will be transferred to a gaseous stream such as a smoke stream passing through the hollow fiber (col 7 lines 48-60).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice modified Taniguchi by using hollow cellulose ester fibers having a diameter of from 1 to 2 mm with striations on inner and outer surfaces which will interact with gases or vapors which contact both the internal and external surfaces of the hollow fibers, thereby a flavor will be transferred to the smoke stream of a cigarette as taught by Browne as discussed above.
The prior art hollow fiber diameter range overlaps at the end point rending claims 1 and 7 claimed ranges obvious absent demonstration of some critical effect of size. This reads over the claimed ranges of claims 1 and 7.
Claim 1 is a product by process claim. Product by process claims are evaluated for the structure the process imparts on the product. The process limitation “a fiber obtained by cutting a flavored sheet” does not add patentable details to the invention, as no structural characteristics are in association with the process in the specification. In the instant case, the process of modified Taniguchi results in a flavored sheet fiber. There is no evidence that the recited process imparts any additional structure on the resulting flavored sheet fiber structure that is not already present or substantially similar to that of modified Taniguchi for the above reason.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi et al. (US 2008/0053467), in view of McHugh et al. (US 2008/0029112) and in view of Browne (US 4,744,932) as applied to claim 1 above, and further in view of Ergle et al. (US 2009/0038629).
Regarding claim 3, Taniguchi discloses a common plasticizer (e.g., triacetin) as previously discussed in the rejection of claim 1. Taniguchi does not explicitly disclose at least one of the plasticizers selected from the claimed group.
Ergle, directed to a flavored sheet for smoking articles (Abstract; [0013]), teaches that the sheet comprises a cellulose-based polymer (carboxymethyl cellulose), a plasticizer (propylene glycol; reading over at least one selected from the claimed group listing), and a flavoring material (menthol) ([0077]; Table 1); the plasticizer is in an amount of 1 wt% to 20 wt% in the flavored sheet ([0077], Table 1 teaches that the plasticizer is in an amount of 5-45 wt%. The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the sheet of Taniguchi to include propylene glycol in an amount of 5-45 wt% as taught by Ergle because modified Taniguchi is directed to a flavored sheet of cigarette filter material and Ergle is directed to a flavored sheet for use in smoking articles. Taniguchi is silent to the exact amount of plasticizer and one with ordinary skill in the art would be motivated to prior art for a known and suitable plasticizer. This reads over claim 3.
Regarding claim 4, modified Taniguchi does not explicitly disclose an amount of flavor material.
Ergle teaches that the flavoring material is in an amount of 10 wt% to 50 wt% in the flavored sheet ([0077], Table 1 discloses that the flavoring material is in an amount of 30 wt%, which reads on the claimed range). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the sheet of modified Taniguchi to include the flavoring material in an amount of 30 wt% as taught by Ergle because modified Taniguchi is directed to a flavored sheet of cigarette filter material and Ergle is directed to flavored sheets for use in smoking articles. Modified Taniguchi is silent to the exact amount of flavor material and one with ordinary skill in the art would be motivated to prior art for a known and suitable flavor material. This reads over claim 4.
Regarding claim 5, modified Taniguchi does not explicitly disclose the flavored sheet thickness.
Ergle teaches the flavored sheet has a thickness from about 2 mil to about 5 mil (about 0.0508 mm to about 0.127 mm) ([0046]) which reads on the claimed range). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the sheet of modified Taniguchi to make the sheet have a thickness of about 2 mil to about 5 mil as taught by Ergle because modified Taniguchi is directed to a flavored a sheet of cigarette filter material and Ergle is directed to flavored sheets for use in smoking articles. Modified Taniguchi is silent to the thickness of the flavored sheet and one with ordinary skill in the art would be motivated to prior art for a known and suitable flavored sheet thickness. This reads over claim 5.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi et al. (US 2008/0053467) in view of McHugh et al. (US 2008/0029112), in view of McHugh et al. (US 2008/0029112) and further in view of Browne (US 4,744,932) as applied to claim 1 above, and further in view of Rousseau et al. (US 2020/0253268).
Regarding claim 6, modified Taniguchi is silent to a tensile strength of the flavored sheet.
Rousseau, directed to a flavored sheet (wrapping material 100; [0015]; [0097]) comprising a cellulose-based polymer ([0022]), a plasticizer (humectant) ([0021]) and a flavoring material ([0015]; [0043]), teaches that flavored sheets for use in tubes should have a tensile strength of 1.0 kgf/ 15 mm or greater ([0008] teaches a tensile strength 1,000cN/15mm or greater; [0013] teaches a tensile strength of 1000cN/15mm or greater).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Taniguchi by making the flavored sheet with a tensile strength of 1.0 kgf/ 15 mm or greater as taught by Rousseau because modified Taniguchi is directed to a flavored a sheet of cigarette filter material and Rousseau is directed to a flavored sheet. Modified Taniguchi is silent to the tensile strength of the flavored sheet and one with ordinary skill in the art would be motivated to prior art for a known and suitable tensile strength for a cigarette filter flavored sheet and this involves applying a known teaching to a similar product to yield predictable results. This reads over claim 6.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONNIE KIRBY JORDAN whose telephone number is 571-272-5214. The examiner can normally be reached M-F 8AM - 4PM (EST).
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/Christopher M Rodd/Primary Examiner, Art Unit 1766
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