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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-2, 5-8, 11-14, 18 and 21-23 in the reply filed on February 12, 2026 is acknowledged.
Claims 24-28, 30-31, 33, , 37, 41, 43-48 and 50 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 12, 2026.
Specification
The disclosure is objected to because of the following informalities: The reference to claims 1 and 21 on page 2 of the specification, is improper, since every meaning of the claims must be found in the description. The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification. Glossaries of terms used in the claims are a helpful device for ensuring adequate definition of terms used in claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The lower range of claim 12 is lower than the lower range of claim 1, the independent claim, and therefore, said range does not further limit the claim that it depends on. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-2, 5, 7-8 and 11-13 are rejected under 35 U.S.C. 102(a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zitturi et al., (hereinafter Zitturi), US Patent Application Publication No. 2014/0137880 A1.
1-2, 5, 7-8 and 11-12, Zitturi teaches a wrapping paper for smoking articles (abstract and ¶-[0002]) comprising long-fiber pulp which is refined between 80º SR to 100º SR and preferably between 85º SR and 95º SR (falling within the range of claim 2) and makes up at least 30% and preferably at least 40% of the paper (abstract and ¶-[0021]). Zitturi teaches the use of fillers, usually inorganic (¶-[0005] and [0010]) of less than or equal to 10% by mass (abstract, ¶-[0025] and [0041] which falls within the range of claims 1 and 8; the examples disclose calcium carbonate as one of filler and discloses the use of 0 to 10% of the filler; see ¶-[0041])), and short fibers which are usually refined to 40º SR (¶-[0009], falls within the range of claims 1 and 5), and the examples teach addition amount to 40% by mass of said short fibers (¶-[0041] which falls within the range of claims 1 and 7). Zitturi also teaches basis weight falling within the claimed range; see ¶-[0028], [0058], etc. While Zitturi did not measure the diffusivity and the standard deviation of the diffusion capacity, the first and third full paragraphs on page 5 of the present application describe how a corresponding diffusion capacity and the associated standard deviation are determined by the defined degree of grinding and the respective mixing ratios of ground and unground long and the short-fiber pulp and the proportion of inorganic filler are adjusted accordingly and actually teaches of the third full paragraph that the degree of refining of the long pulp determines the diffusion capacity and its standard coefficient and since Zitturi teaches the refining degree and addition amount of said pulp falling within the claimed range id, then said properties must inherently be the same or at the very least in the same range as claimed in claims 1 and 11-12.
Regarding to claim 13, Zitturi teaches the wrapping paper can be coated/impregnated with film forming compositions comprising starch, starch derivatives, cellulose derivatives and alginates, the same claimed compounds; see ¶-[0026], [0030]-[0032] and [0063]-[0065].
It seems that Zitturi teaches all the limitations of the above claims or at the very least the minor modification(s) to obtain the claimed invention would have been obvious to one of ordinary skill in the art.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Zitturi, cited above in view of any of Kraker, US Patent No. 8,863,757 B2 and Snow et al., (hereinafter Snow), US Patent Application Publication No. 2017/0103099 A1, just to cite a couple.
While Zitturi teaches that the air permeability of the filter wrapping paper should be less than 12,000 cm3/(cm2 min. kPa) and preferably less than 8,000 cm3/(cm2. min. kPa), which theoretically reads on the claim, but the secondary references, teach that wrapping papers used in smoking articles, e.g. cigarette, usually have air permeability falling within eth claimed range; see ¶-[0054] of Snow and column 6, lines 21-31 of Kraker1. Therefore, choosing air permeability in the range of the secondary reference as the wrapping paper taught by Zitturi would have been obvious to one of ordinary skill in the art since he/she would have reasonable expectation of success if such ranges were used for Zitturi wrapping paper.
Claims 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al., (hereinafter Jung), US Patent Application Publication No. 2020/0404971 A1 and Zhang et al., (hereinafter Zhang), US Patent Application Publication No. 2020/0397047 A1, just to cite a couple view of Zitturi, cited above.
With regard to claims 21-23, both, Jung and Zhang, teach cigarettes including aerosol as claimed that are heated by electricity, which enhances the user experience and eliminates the harmful tar that is produced by combustion of the cigarette, since there is not combustion in the smoking article, cigarette; see ¶-[0004] of Zhang and ¶-[0002] of Jung. The cigarette of the secondary references are the same as the general/common cigarettes, including filter, papers and wrappings, with the only difference of having the aerosol and means of heating included; see for example ¶-[0051] of Jung. Therefore, using the wrapper taught by Zitturi as the wrapper of the smoking article of Jung or Zhang would have been obvious to one of ordinary skill in the art, since he/she would have reasonable expectation of success if such wrapping paper were used.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Improved Wrapping Paper Having a Low Diffusion Capacity.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
1 Note that Coresta units are cm3/(cm2 min. kPa).