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
This office action is in response to Applicant’s amendments filed 06/30/2026.
Claims 1-7, 9-10 and 13-17 are pending and are subject to this Office Action.
Claim 1 is amended.
Claims 8 and 11-12 are cancelled.
Claims 13-16 are previously withdrawn.
Response to Arguments
Applicant’s arguments, see pages 6-12, filed 06/30/2026, with respect to the 103 rejection of claim 1 have been fully considered and they are persuasive. Claim 1 has been amended to recite subject matter of previously presented claim 12 and to further limit the thickness ratio of the third layer and second layer, which was not required previously. The prior art of record does not teach that the third layer comprises the flavored sheet. Therefore, the rejection is withdrawn. However, upon further consideration, a new obviousness rejection is made in further view of Ferrie et al. (US 20210244076 A1), as previously applied to claim 12.
On pages 7-9 the Applicant notes the differences between the invention of Ferrie and the claimed invention. Specifically, the Applicant notes that Ferrie teaches a menthol coating rather than a flavored sheet, that the tipping layer 42b of Ferrie is a wrapper covering the cardboard tube spacer 30b and filter element 26b rather than a component of the paper tube, and that tipping layer 42b is not equivalent to the claimed flavored sheet. The Applicant further asserts that Ferrie does not teach a thickness ratio.
The Examiner notes that these differences would not preclude the modification of primary prior art reference Liu with the teachings of Ferrie. While Liu is silent as to the material of the tipping paper, Ferrie teaches that an outer layer/tipping paper may be flavored to enhance flavor delivery to the user. Thus, it would be obvious to one having ordinary skill to duplicate and/or use the flavored sheet of Ergle as the tipping paper. This is merely an application of the teaching of Ferrie that a third layer/tipping paper may be flavored.
On page 9 the Applicant appears to argue that Liu does not teach the claimed invention. Specifically, the Applicant notes that Liu teaches a thickness of the paper tube 2 to be 0.2-0.3mm and that a separate spoiler board 211 having a second flavor layer is provided inside the paper tube, as in Fig. 7. As the spoiler board does not correspond to a paper tube as in claim 1, and Liu does not teach an appropriate three-layer structure.
The Examiner disagrees.
The spoiler board of Liu is an element not relied upon in the rejection, and not explicitly required by the disclosure of Liu. Instead, they are present in embodiments of Liu, such as shown in Figs. 6-7. For example, Fig. 4 as cited in the rejection, does not comprise the spoilers. The examiner maintains that the cited portions of Liu appropriately teach the claim limitations as presented.
On page 10 the Applicant argues that Ergle does not appropriately teach or make obvious the claimed thickness ratio.
The Examiner disagrees.
Ergle is merely relied upon to teach the flavored sheet/first layer material composition. The thickness ratio is therefore not expected to be taught by Ergle. Instead, Ergle teaches the composition of the first layer flavored sheet, that is then applied to the second layer of Liu in the modified product. Ergle is not relied upon to teach either a thickness or a ratio.
The Examiner further notes that the ratio need not be explicitly disclosed in the prior art, as the thickness measurements are taught by the prior art (Liu and Watanabe) and thus the ratio would be an inherent characteristic of the combination.
On pages 10-11 the Applicant argues that it is improper to modify the flavor sheet wrapper of Liu with the thickness of the aerosol-forming substrate/filler 110 of Watanabe, as each are different components with different uses.
The Examiner disagrees.
Both Liu and Wanatabe are directed to flavored sheets applied inside a paper tube, with the same intended use of providing flavor. Although the flavor sheet of Watanabe may be called a "filler" rather than a "layer", it is still considered to be a flavored sheet on the inside of a paper tube (see Fig. 4) with a similar composition. It is thus not unreasonable to apply the thickness of the flavored sheet of Watanabe to the modified prior art.
Below is a modified rejection based on amendments to the claims.
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, 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.
Claims 1-6 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (WO 2020098320 A1; hereinafter referring to the English translation provided) in view of Ergle et al. (US 20090038629 A1), Watanabe (US 20210127734 A1), and Ferrie et al. (US 20210244076 A1).
Regarding claim 1, Liu teaches a paper tube (paper tube unit 2; page 3) for smoking articles (cigarette), the paper tube comprising:
A flavored sheet (first flavor layer 10; page 3) on an inner surface (page 3; Fig. 4) of the paper tube.
Wherein the flavored sheet comprises a polymer (page 3 teaches that first flavor layer may be a polymer such as natural bio-polymers but does not further specify the composition),
Wherein the paper tube comprises:
a first layer comprising the flavored sheet (first flavor layer 10; page 3);
a second layer (paper tube unit 2; page 3) surrounding the first layer (Fig. 4); and
a third layer (tipping paper 7; Fig. 2; page 3).
Liu does not explicitly teach (I) that the flavored sheet comprises a cellulose-based polymer, a plasticizer, and a flavoring material, (II) that the flavored sheet has a thickness of 0.2 mm to 1 mm or (III) that the third layer comprises the flavored sheet.
Regarding (I), 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), and a flavoring material (menthol) ([0077]; Table 1).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Liu by substituting the flavored sheet with the sheet material comprising cellulose-based polymer, a plasticizer, and a flavoring material as taught by Ergle because Liu is directed to a paper tube for a smoking article comprising a flavored sheet and Ergle is directed to flavored sheets for use in smoking articles, Liu is silent to the exact composition of the flavored sheet and one with ordinary skill would be motivated to look to prior art for a known and suitable flavored sheet, Ergle teaches that flavored sheet provides controlled delivery of volatile flavorants such as menthol to a smoker while reducing the migration of flavorant throughout the cigarette and packaging during storage ([0013]) and this involves substitution of one known flavored sheet for another to yield predictable result.
Regarding (II), Watanabe, directed to a flavored sheet for smoking articles comprising comprises a cellulose based polymer ([0040], [0045]), a plasticizer ([0041]), and a flavoring material ([0042]), teaches that a flavor sheet may have a thickness of 0.6 mm to 1.0 mm ([0112] teaches a thickness of 0.1 mm to 1 mm. The claimed range overlaps the range taught by the prior art and is therefore prima facie obvious).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Liu by modifying the thickness of the sheet to a range of 0.6 mm to 1 mm as taught by Watanabe, because Liu is directed to a paper tube comprising a flavored sheet and Watanabe is directed to a flavored sheet for smoking articles, one having ordinary skill in the art would recognize that the thickness may be adjusted to improve durability, increase flavor or improve longevity of the flavor, and this involves applying a known teaching to a similar product to yield predictable results to yield predictable results.
Furthermore, this modification would further result in a thickness ratio of the first layer to the second layer in a range of 2.5 : 1 to 0.5 : 1 (Liu page 3 teaches that second layer has a thickness of 0.2-0.3 mm; The corresponding thickness ratio of the first layer to the second layer would overlap the claimed range of 2.5:1 to 0.5:1. Therefore, the claimed range is prima facie obvious).
Regarding (III), Ferrie, directed to a paper tube (cardboard spacer tube 30; [0939]) for smoking articles (consumable 10), the paper tube (second layer) comprising a flavored sheet (first layer) (coating 100) on an inner surface (Fig. 8; [0248]), teaches a third layer (outer wrapper or tipping paper 42; [0945]; [0204]; Fig. 8) that is flavored to enhance the flavor.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Liu by making the third layer a flavored sheet as taught by Ferrie because both Liu and Ferrie are directed to paper tubes comprising flavored sheets, Ferrie teaches that the third layer may also comprise a flavored sheet to enhance the flavor delivered to users, and this involves applying a known teaching to a similar product to yield predictable results.
Furthermore, this modification would further result in a thickness ratio of the third layer to the second layer in a range of 2.5 : 1 to 0.5 : 1 (Liu page 3 teaches that second layer has a thickness of 0.2-0.3 mm; Wanatabe teaches the thickness of the first layer, and therefore also the third layer; The corresponding thickness ratio of the third layer to the second layer would overlap the claimed range of 2.5:1 to 0.5:1. Therefore, the claimed range is prima facie obvious).
Regarding claim 2, Ergle teaches that the cellulose-based polymer is in an amount of 20% wt% to 60 wt% in the flavored sheet ([0077], Table 1 teaches that the cellulose-based polymer is in an amount of 25-65 wt%. The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious).
Regarding claim 3, Ergle teaches that 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).
Regarding claim 4, 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 anticipates the claimed range).
Regarding claim 5, Ergle teaches that the cellulose comprises carboxymethyl cellulose ([0077], Table 1).
Regarding claim 6, Ergle teaches that the plasticizer comprises propylene glycol ([0077], Table 1).
Regarding claim 17, modified Liu teaches that the flavored sheet may have a thickness of 0.8 to 1mm (Watanabe [0112] teaches that the thickness of a flavor sheet may have a thickness of 0.1 mm to 1.0 mm. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious).
Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Liu, Ergle, Watanabe and Ferrie as applied to claim 1 above, and further in view of Batista et al. (US 20220132907 A1).
Regarding claim 7, Liu is silent to the resistance to draw of the paper tube.
Batista, directed to a paper tube (aerosol-cooling element; [0057]; [0088]; [0145]; Fig. 1, element 70) for smoking articles (aerosol-generating article 10; [0085]; [0145]), teaches that paper tubes (cooling sections) are usually 10-25 mm long ([0090]) and have low resistance to draw, e.g., 15-20 mmH2O ([0086]). This corresponds to a resistance to draw of 0.6-2 mmH2O per mm of length (the claimed range of 0.1-1.5 mmH2O overlaps the range taught by the prior art and is therefore considered prima facie obvious).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Liu by making the resistance to draw of the paper tube 0.1-1.5 mmH2O as taught by Batista because both Liu and Batista are directed to paper tubes for smoking articles, Liu is silent to the resistance to draw of the paper tube and one with ordinary skill would be motivated to look to prior art for a known paper tube resistance to draw, and this involves applying a known teaching to a similar product to yield predictable result.
Regarding claim 10, Liu teaches a paper tube inner diameter of 7-10mm (page 3) and a paper tube thickness of 0.2-0.3mm (page 3). The corresponding circumference of the paper tube would overlap the claimed range of 14-25mm. Thus, the claimed range would be considered prima facie obvious.
Liu does not explicitly teach the length of the paper tube.
Batista, directed to a paper tube (aerosol-cooling element; [0057]) for smoking articles (aerosol-generating article 10; [0085]), teaches that a length of the paper tube is 5 mm or greater ([0090] teaches a length of 10-25mm, which anticipates the claimed range).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Liu by making the paper tube have a length of 5 mm or greater as taught by Batista because both Liu and Batista are directed to paper tubes for smoking articles, Liu is silent to the length of the paper tube and one with ordinary skill would be motivated to look to prior art for a known paper tube length, Batista demonstrates that the disclosed lengths are suitable for a paper tube cooling element, and this involves applying a known teaching to a similar product to yield predictable result.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Liu, Ergle, Watanabe and Ferrie as applied to claim 1 above, and further in view of Rousseau et al. (US 20200253268 A1).
Regarding claim 9, Liu and Ergle are 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 Liu by making the flavored sheet with a tensile strength of 1.0 kgf/ 15 mm or greater as taught by Rousseau because Liu is directed to a tube comprising a flavored sheet and Rousseau is directed to a flavored sheet, Liu is silent to the tensile strength of the flavored sheet and one with ordinary skill would be motivated to look to prior art for a known and suitable tensile strength of a flavored sheet for a tube, Rousseau teaches that tensile strengths below 1,000cN/15mm is too low to form suitable wrapping materials ([0008]) and this involves applying a known teaching to a similar product to yield predictable results
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.
/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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