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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/28/2026 has been entered.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 05/28/2026.
Claims 1-10 are pending.
Claims 1-7 are amended.
The 35 U.S.C. 112(b) rejections of claims 2-7 are withdrawn due to amendments made to the claims.
Response to Arguments
Applicant' s arguments, see pages 5-9, filed 05/28/2026, with respect to the rejection(s) of claims 1-10 under 35 U.S.C. 103, have been fully considered and are not persuasive. Claim 1 has been amended to include the second wrapper exposes the aerosol formation substrate portion.
On pages 7-8 the Applicant argues that the tipping paper (i.e., second wrapper) of Robert does not expose the tobacco containing substrate portion because Robert teaches the second wrapper wraps the tobacco-containing substrate, the spacer, and the filter portion together, citing page 11, lines 6-13 of Robert.
The Examiner respectfully disagrees. Robert does not teach the second wrapper/tipping paper wraps the entirety of all of these elements and instead teaches the tipping paper can combine all of the elements of the smoking article ([0053]). Combining elements does not require the entire substrate portion to be wrapped and while Robert does not explicitly disclose the second wrapper (tipping paper) exposes a part of the aerosol-generating substrate, this is a known feature of tipping paper in the art. Tipping papers cover the filter portion or only a part of the substrate to combine the elements and do not wrap the entire smoking article, thus allowing for the substrate to be at least partially exposed. Therefore, the substrate still being exposed by the tipping paper is considered an obvious limitation in the art as one of ordinary skill would reasonably expect that a portion of the substrate would be exposed and not completely enclose the substrate.
However, to advance prosecution a reference demonstrating tipping paper exposing the aerosol-generating substrate is provided below in the modified rejection based on the amendments.
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 1 is 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. Co-pending claims 2-10 are rejected for their dependency on claim 1.
Claim 1 line 8 is indefinite for reciting “while exposing the aerosol formation substrate portion” because it is unclear how the wrapper is exposing the substrate portion. It is unclear if the second and the first wrapper are both exposing the substrate portion or if the second wrapper is exposing the joint first wrapper with the substrate. It is further unclear what is meant by “exposing” as there is no definition or example provided in the Applicant’s instant specification and/or drawings. For purposes of this examination “exposing the aerosol formation substrate portion” will be interpreted as the second wrapper does not wrap around the entire aerosol formation substrate portion.
Furthermore, the Examiner notes that the Applicant should show support in the original disclosure for new or amended claims in accordance with MPEP 2163 IIA and 2163.04.
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.
Claims 1-3, 5, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Robert et al. (WO-2022049212-A1) and further in view of Taylor et al. (US-20210386114-A1).
In regards to claim 1, Robert discloses a heat-not burn aerosol-generating article (i.e., aerosol generation product) (page 3, lines 4-5) that can be used with a heat-not-burn device (page 4, lines 20-25), wherein the aerosol generation product comprises:
A tobacco-containing substrate portion (i.e., aerosol formation substrate portion) (page 3, lines 6-7);
A filter portion (page 3, line 5); and
A non-combustible wrapper (i.e., first wrapper) comprising non-combustible filler material, prone to not burn or combust is provided to a paper wrapper (i.e., a flame-retardant paper material) and wrapped around the aerosol formation substrate portion (page 3, lines 7-25 and page 4, lines 26-27); and
A tipping paper (i.e., second wrapper) can be formed of the same filler material (i.e., flame retardant paper material and wrapped around at least a portion of the filter portion (page 3, lines 7-25 and page 11, lines 6-13).
Robert further discloses the non-combustible paper wrappers comprise non-combustible filler material to prevent burning (page 5, lines 7-20), but does not explicitly disclose the first and second paper wrappers having different flame retardancies. However, it would be obvious to one of ordinary skill in the art at the time the invention was made to optimize the flame-retardancy of each paper wrapper since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed paper wrappers having different flame-retardancies is critical and have unexpected results. In the present invention, one would have been motivated to optimize the flame-retardancy of each paper wrapper motivated by the desire to apply a desired amount of non-combustible filler material to each paper layer, which is responsible for the flame-retardancy of the paper layer, in an amount efficient in preventing lighting of the smoking article (page 5, lines 7-20).
Further, Robert discloses the paper wrapping layers comprise 1 to 10% of the non-combustible filler material (page 5, lines 12-20) and therefore it would be obvious to one of ordinary skill in the art that the paper wrapping layers could comprise different amounts of non-combustible filler material, within the range provided, and thus have differing flame retardancies.
Robert does not explicitly disclose the second wrapper (tipping paper) exposes a part of the aerosol-generating substrate, however Robert teaching the tipping paper combines the elements of the article, which is known in the art to only wrap a small portion of the tobacco portion which is a commonly known feature of tipping paper in the art. Most tipping papers only cover the filter portion or only a part of the substrate and do not wrap the entire smoking article. Therefore, the substrate still being exposed by the tipping paper is considered an obvious limitation in the art.
In addition, Taylor, directed to an aerosol-generating article comprising a tipping paper wrapped around the filter (abstract) discloses the tipping paper provides a mechanical connection (i.e., combination) between the filter and tobacco containing rod (i.e., aerosol-formation substrate portion) whilst also providing a physical barrier between the inner filter material and a user’s mouth ([0003]).
Taylor teaches the tipping paper 18 exposes the aerosol-formation substrate portion 12 (Figure 1B provided below).
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Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Robert by making the tipping paper expose a portion of the aerosol-formation substrate as taught by Taylor because both are directed to electronic cigarettes comprising tipping papers for combining elements of the smoking article, Taylor teaches the tipping paper is provided over the filter and connected to the substrate to provide a mechanical connection and also protect the inner filter particles from the user ([0003]), this merely involves applying a known technique of using a tipping paper in a known form/structure of a similar device to yield predictable results, and furthermore makes obvious that combining elements, as taught by Robert, is known in the art to not wrap the entire aerosol formation substrate.
In regards to claim 2, Robert discloses the weight of the at least first flame-retardant paper material is 46.5 g/m^2 (Table 1 on pages 13-14) which anticipates the claimed range of the flame-retardant material having a basis weight of 38 to 48 g/m^2.
In regards to claim 3, Robert discloses the thickness of Example 1 for the at least first flame-retardant paper material is 47 micrometers (Table 1 on pages 13-14) and preferably the thickness of the paper material is from 40 to 100 micrometers (page 5, lines 27-29). The range disclosed by the prior art overlaps the claimed range of the paper material has a thickness of 50 to 60 micrometers and is therefore considered prima facie obvious.
In regards to claim 5, Robert discloses a flame-retardant paper material has a stretch (i.e., elongation rate) under ISO 1942-2 (which is in accordance with the ISO used for the elongation rate in the Applicant’s instant specification) of greater than or equal to 1% (Table 1 on page 14). The range disclosed by the prior art overlaps the claimed range of the paper material has an elongation rate of 2% to 4% and is therefore considered prima facie obvious.
In regards to claim 9, Robert discloses the flame-retardant coating (claim 15) can include aluminum hydroxide, magnesium hydroxide (page 11, lines 14-21), alcohols like ethanol, and deionized water (example 3 on page 14).
While Robert does not explicitly disclose the use of both magnesium hydroxide or aluminum hydroxide and distilled water or an alcohol, it is obvious to one of ordinary skill in the art that water is a typical step in manufacturing paper wrappers for aerosol-generating products, and just because Robert does not teach the exact process of making the paper wrapper, it would still be obvious that Robert’s paper wrapper would require water or distilled water in the paper making process. Water is used to separate fibers in pulp processing and tobacco extraction, both of which are components in the paper material of Robert, and therefore it is obvious that water is required of Robert’s paper wrapper.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Robert et al. (WO-2022049212-A1) in view of Taylor et al. (US-20210386114-A1) alone as applied to claim 1 above, or further in view of Zitturi et al. (US-20230337721-A1).
In regards to claim 4, Robert discloses a flame-retardant paper material has a tensile strength of greater than or equal to 12 N/15mm (Table 1, page 14). The range disclosed by the prior art overlaps the claimed range of the paper material has a tensile strength of 35 to 45 N/15 mm and is therefore considered prima facie obvious.
In addition, Zitturi directed to a wrapper paper with improved flame resistance, discloses a wrapper paper for an aerosol-generating article that is essentially heat-resistant and strongly flame-retardant ([0009]).
Zitturi further discloses there is an interest in having a wrapper paper available which still has sufficient tensile strength after heating, is biodegradable and has a particularly efficient flame-retardant effect ([0008]).
Zitturi further discloses a particularly preferably tensile strength of the flame-retardant paper material is at least 20 N/15 mm and at most 80 N/15 mm ([0046]). The range disclosed by the prior art overlaps the claimed range of the paper material has a tensile strength of 35 to 45 N/15 mm 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 Modified Robert by making the flame-retardant wrapping paper have a tensile strength of 35 to 45 N/15 mm, as taught by Zitturi, because both are directed to flame-retardant paper wrappers for use in aerosol-generating devices, Zitturi teaches a high and sufficient tensile strength is desirable after heating ([0008]), and this merely involves applying/modifying a known tensile strength of a similar product using similar components to yield predictable results.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Robert et al. (WO-2022049212-A1) in view of Taylor et al. (US-20210386114-A1), as applied to claim 1 above, and further in view of Zitturi et al. (US-20230337721-A1).
In regards to claim 6, Robert discloses the use of white HAP paper in the flame-retardant paper material (Example 3, page 14), but is silent to a specific whiteness index and does not explicitly disclose a whiteness index of 80% to 90%.
Zitturi directed to a wrapper paper with improved flame resistance, discloses a wrapper paper for an aerosol-generating article that is essentially heat-resistant and strongly flame-retardant ([0009]).
Zitturi further discloses the use of white filler particles in the flame-retardant paper wrapper provide the paper layer with a white color and a high opacity, so that the discoloration of the wrapper paper according to the invention located under it is not or is only slightly visible ([0032]).
Zitturi further discloses an opacity (i.e., whiteness) of the paper is preferably at least 45% and at most 90% ([0049]). The range disclosed by the prior art overlaps the claimed range of the paper material has a whiteness index of 80% to 90% 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 Modified Robert by making the flame-retardant wrapping paper have a whiteness index of 80 to 90%, as taught by Zitturi, because both are directed to flame-retardant paper wrappers for use in aerosol-generating devices, Zitturi teaches a high whiteness is desired so that the discoloration of the wrapper paper is not or only slightly visible to the user ([0032]), and this merely involves applying a known technique of using an amount of filler to enhance the whiteness index of a similar product of a similar device to yield predictable results.
In regards to claim 7, Robert does not explicitly disclose an air permeability of the flame-retardant paper material being from 2 to 10 CU.
Zitturi directed to a wrapper paper with improved flame resistance, discloses a wrapper paper for an aerosol-generating article that is essentially heat-resistant and strongly flame-retardant ([0009]).
Zitturi further discloses the air permeability of the wrapper paper can be low. A low air permeability is often obtained by more intensive refining of the pulp fibers which also contributes to an increase in strength, so that preferably, the air permeability is at least 0 and at most 80 CU ([0048]). The range disclosed by the prior art overlaps the claimed range of the paper material has an air permeability of 2 CU to 10 CU 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 Modified Robert by further refining the pulp fibers of Robert to have an air permeability of 2 to 10 CU, as taught by Zitturi, because both are directed to flame-retardant paper wrappers for use in aerosol-generating devices, Zitturi teaches a low permeability increases the strength of the pulp fibers ([0048]), and this merely involves applying a known technique of further refining pulp fibers to have a desired air permeability of a similar product to yield predictable results.
Claims 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Robert et al. (WO-2022049212-A1) in view of Taylor et al. (US-20210386114-A1), as applied to claim 1 above, and further in view of Jin et al. (KR-20200030368-A, hereinafter referring to the English Translation provided).
In regards to claim 8, Robert discloses the wrapper can include a first and a second paper wherein both papers can comprise the non-combustible filler material (i.e., a flame-retardant paper material) (page 11, lines 6-13), but does not explicitly disclose an external wrapping paper wrapper around the first and second wrapper and that external wrapper comprising at least a portion formed of a flame-retardant material.
Jin, directed to a non-flammable wrapper, discloses a smoking article comprising multiple wrappers (abstract).
Jin further discloses a fifth 235 and sixth wrapper 236 that wrap the other wrappers (i.e., fifth and sixth wrapper form the external wrapper) can prevent the cigarette (2) from burning ([0035]).
Jin further discloses if the temperature rises above the ignition point of any of the substances contained in the tobacco rod (210), the cigarette (2) may burn, but the external wrapper 235 and 236 will not burn because the external wrapper comprises non-combustible material ([0035]).
Jin further discloses the external wrapper may have an additional material coated onto the wrapper for additional burn-resistance, such as silicone ([0034]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Robert by making the paper wrappers comprise an additional external wrapper with flame-retardance, as taught by Jin, because both are directed to smoking articles comprising a plurality of paper wrappers, Jin teaches the external wrapper provides additional flame-retardance ([0035]), and this merely involves applying a known technique of using an external wrapper of a similar smoking article to yield predictable results.
In regards to claim 10, Modified Robert discloses the external wrapper includes silicone, but does not explicitly disclose the external wrapper having a different flame-retardancy than the first or second wrappers.
However, while Jin does not explicitly disclose the external wrapper has a different flame-retardance than the first or second paper wrappers, it would be obvious to one of ordinary skill in the art that the additional silicone coating would provide further flame-retardance and thus the external wrapper would have a higher flame retardance, or at the very least a different flame retardance, than that of the first and/or second wrappers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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