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.
Election/Restrictions
Applicant’s election with traverse of species of Group I in the reply filed on March 5, 2026 is acknowledged. The traversal is persuasive and, therefore, the restriction / election of species is withdrawn.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Specification
The disclosure is objected to because of the following informalities: On page 4 and in the last paragraph, applicant used the word ‘coked’ instead of ‘cooked’.
Appropriate correction is required.
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(s) 1-14 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.
Claim 1 is unclear whether the ‘contact surface’ is identical or different to the ‘contact layer’. If the same, the same word should be used.
Claim 1 recites the limitation " a ceramic film" in line 3 and 4. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the ceramic film that is arranged on the contact layer in contact with the tobacco tube, the same or a different ceramic film on a contact surface of the sealing paper and the tobacco.
Claim 2 recites the limitation " a ceramic film" in line 3. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the ceramic film is the same or different from the ceramic film in claim 1.
Claim 2 recites the limitation " the ceramic film sealing paper" in line 3. There is insufficient antecedent basis for this limitation in the claim. It is unclear what ‘the ceramic film sealing paper’ is, when it was not introduced in prior claims or an additional ceramic film sealing paper is required to be present to meet the claim.
Claim 4 is declared indefinite because of the phrase ’gram weight of the ceramic film of the tobacco tube and the ceramic film of the sealing paper is 2-10 gsm’. It is unclear whether the weight of the ceramic film that is used to coat the tobacco tube and sealing paper is determined or the gram weight of the ceramic film with tobacco tube and the sealing paper.
Claim 9 is declared as indefinite because the phrase ‘a similar material film’ renders the scope of the claim unclear. The phrase ‘similar material film’ is equivalent to ‘or the like’. Thus, the phrase "or the like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d).
Regarding claims 3, 5-8, and 10-14 are rejected under 35 U.S.C. 112(b), second paragraph, due to dependency.
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.
Claim(s) 1-3, 5, 7, 9, 11, & 14 are rejected under 35 U.S.C. 103 as being unpatentable over John (US20160205996A1), in view of Zhou (WO2020113796A1 – English Translation).
In regards to Claim 1, John discloses a smokable article that includes heat-not-burn product that contains a filter [0058]. The heat-not-burn product includes a rod of smoking material (103) that is wrapped in cigarette paper [0163], however John, also adds that in other embodiments that the smoking article has a ceramic-based wrapper that can be used to wrap the smokeable material instead of the traditional cigarette paper [0196]. The ceramic-based wrapper reads on the main tobacco tube from claim 1 of applicant. The filter portion (103) is located on the end of the smoking material rod, which read on the filter tip from claim 1.
Though John discloses a heat-not-burn product, John fails to disclose a sealing paper that is located on one end of the tobacco tube.
Zhou teaches a tobacco pellet-type heated non-combustible cigarette that consists of a front-end sealing structure that is composed of aluminum foil backing paper [0012]. The sealing structure used from Zhou has a firm sealing effect, good heat resistance, and will not shrink and fall off [0006].
John and Zhou are analogous prior art because both are directed to heat-not-burn tobacco products. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the heat-not-burn smoking article of to include the sealing structure of Zhou at one end of the tobacco tube to provide a firm, heat-resistant seal that prevents the sealing material from shrinking or falling off as stated by Zhou. Therefore, this renders claim 1 obvious.
As mentioned above with respect to claim 1, John discloses a ceramic-based wrapper surrounding the smoking material similar to cigarette paper. John further discloses that the ceramic-based wrapper includes ceramic filler in order to reduce the concentration of smoke constituents in smoke. Zhou discloses a sealing structure formed from aluminum foil backing paper. Although Zhou does not disclose that the sealing paper is a double surfaced film coated paper having a ceramic film arranged on one surface, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the sealing structure of Zhou to include the ceramic wrapper/coating arrangement taught by John such that the sealing paper includes an aluminum foil layer on one surface and a ceramic coating arrangement on the opposite surface, thereby forming a double surfaced film coated paper. The modification would improve heat resistance, thermal insulation, and reduction of smoke constituents during heating. Therefore, this renders claim 2 obvious.
As discussed above with respect to claim 2, Zhou discloses that the sealing structure is formed from aluminum foil backing paper [0021]. The aluminum foil backing paper reads on the claimed impermeable film arranged on another surface of the sealing paper because aluminum foil provides a liquid resistant barrier structure. The aluminum foil backing paper also reads on the claimed aluminum film from claim 11. Therefore, Zhou renders claim 3 and 11 obvious.
In regard to claims 5 with respect to claim 2, John teaches a tipping material (107) used to join the filter (102) and the smoking material rod (103). The tipping material overlays the filter portion and overlays the wrapping material (104), whereas the wrapping material can be a ceramic-based wrapper [0163]. This reads over claim limitation in claim 5.
In regard to claim 7 with respect to claim 2, John teaches a wrapping material that is used to wrap the smokable material (104). The smokable material is in the form of a cylindrical rod and the wrapping material can be made of cigarette paper [0162]. This reads over claim limitation in claim 7.
In regards to claim 9 with respect to claim 2, John et al teaches the ceramic based wrapper that comprises of a ceramic filler [0130]. The composition of the ceramic based wrapper includes a binder and an ash improver, which both consist of clay. This reads on claim 9 thus rendering the claim obvious.
In regards to claim 14 with respect to claim 9, recites the ceramic film is ‘milky white’. The claimed color of the ceramic film is considered obvious matter of aesthetic design choice because applicant has not shown that milky white color performs a new or unexpected function relative to other ceramic film colors (See applicant specifications on Page 4; Paragraph 1). Modifying the color of the ceramic based wrapper from John et al, to a milky white would have been an obvious design choice to one of ordinary skill in the art (See MPEP 2144.04 and In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)).
Allowable Subject Matter
Claim 4, 6, 8, 10, & 12-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and overcoming the §112 2nd rejection.
The following is a statement of reasons for the indication of the allowable subject matter:
The closest prior art of record is over John et al (US20160205996A1), in view of Zhou (WO2020113796A1), which discloses the heat-not-burn products with a sealing paper from claim 1 as set forth above.
In regards to claim 4, John and Zhou do not teach an exact gram weight of 2-10-gsm for the ceramic filmed tobacco tube and ceramic filmed sealing paper.
In regard to claim 6, Zhou does not teach the gram weight of the tobacco tube with ceramic film, instead Zhou teaches the weight of the front-end plugging structure.
In regards to claim 8, John and Zhou do not teach the texture (smoothness and roughness) of the sealing material or the sealing paper.
In regards to claim 10, Zhou does not teach the porosity of 12.6% or a center distance of the holes being 0.50 mm. John et al does not teach the ceramic film with 65-gsm, 120-gsm, and 60-gsm.
In regards to claim 12/13, Zhou teaches a plurality of holes formed on the sealing paper, however Zhou does not teach the porosity being less than 4% or at 12.6%.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH C NNABUGWU whose telephone number is (571)272-8791. The examiner can normally be reached Mon-Thurs. 8:30am-5:00pm.
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/H.C.N./Examiner, Art Unit 1747
/Christopher M Rodd/Primary Examiner, Art Unit 1766
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