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 with traverse in the reply filed 03/19/2026 has been fully considered. Applicant elected Group I, claims 13-20, drawn to a nano-embossed mouthpiece lining paper.
Applicant argues that the claims are linked by a single general inventive concept because independent claims 13, 21, and 22 each include or relate to a nano-embossed mouthpiece lining paper having a lacquer layer provided with a nano-structure by mechanical embossing. Applicant further argues that WO2017/122291 does not teach this feature because the embossed pattern of WO2017/122291 is formed in a front surface fiber layer rather than in a lacquer layer.
Applicant’s arguments are not persuasive. Even assuming that WO2017/122291 does not teach embossing a lacquer layer, the alleged common feature identified by Applicant does not establish a single patentable general inventive concept over the prior art. Griesmayr et al. (US 2015/0216226 A1) teaches a mouthpiece lining paper having a lacquer layer comprising ethyl cellulose lacquer and further teaches that nitrocellulose lacquer may be used for the lacquer layer. Maaninen et al. (US 2010/0327485 A1) teaches forming nano-scale grooves/ridges in a surface lacquer or printing ink by mechanical embossing using embossing rolls. Thus, Griesmayr teaches the claimed mouthpiece lining paper and lacquer material, while Maaninen teaches the claimed nano-scale mechanical embossing of a lacquer/ink surface layer. Accordingly, the alleged common feature of a lacquer layer provided with a nano-structure by mechanical embossing does not constitute a special technical feature that makes a contribution over the prior art.
In the interest of compact prosecution, the restriction requirement is withdrawn as between Group I, claims 13-20, and Group II, claim 21. Accordingly, claims 13-21 are examined together in this Office action.
The restriction requirement is maintained as to Group III, claims 22-24. Applicant’s traversal is not persuasive as to Group III because claims 22-24 are directed to a device for producing a nano-embossed mouthpiece lining paper, and the features relied upon to define the device invention are not the same as, or corresponding to, the features defining the product/article invention of claims 13-21. In particular, claims 22-24 recite a manufacturing device including a first machine for coating, a second machine for hot foil embossing, a third machine for nano-embossing, and additional band transport/cutting/winding arrangements. These apparatus features do not constitute the same or corresponding special technical features as the nano-embossed mouthpiece lining paper recited in claims 13-21. Accordingly, claims 22-24 are not linked with claims 13-21 by a single general inventive concept and remain withdrawn from further consideration.
The requirement is still deemed proper and is therefore made FINAL.
Claims 22-24 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. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/19/2026.
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 15 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.
Claim 15 recites “a base paper with a grammage of 30 to 60” without identifying the unit of measurement. Although the specification may indicate the intended unit, the claim itself does not define whether the grammage is measured in g/m² or another unit, rendering the metes and bounds unclear.
For purposes of continuing examination, and without waiving the indefiniteness rejection, the phrase “a base paper with a grammage of 30 to 60” is interpreted as requiring a base paper having a grammage of 30 to 60 g/m², consistent with the unit used in the specification.
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 13-18 and 21 are rejected under 35 U.S.C. § 103 as being unpatentable over Griesmayr et al. (US 2015/0216226 A1) in view of Maaninen et al. (US 2010/0327485 A1).
Regarding claim 13, Griesmayr teaches a nano-embossed mouthpiece lining paper (mouthpiece lining paper for a smoking article; ¶ [0001]), comprising a lacquer layer comprising one of nitrocellulose and ethyl cellulose (moisture-resistant lacquer such as ethyl cellulose lacquer; ¶ [0021]); wherein the lacquer layer is one of a clear lacquer layer and a colored lacquer layer (sealing lacquer coating is transparent and more preferably colorless; ¶ [0019]).
The limitation wherein the lacquer layer is provided with a nano-structure by mechanical embossing is treated as a product-by-process limitation because claim 13 is directed to the mouthpiece lining paper, not a method of making the paper. The recited process is given patentable weight only to the extent that it imparts structure to the claimed product, namely the nano-structure of the lacquer layer. See MPEP § 2113.
Griesmayr does not teach wherein the lacquer layer is provided with a nano-structure.
Maaninen is reasonably pertinent to this limitation because it teaches mechanically embossing nano/micro surface structures into paper or cardboard surface layers, including layers formed from surface lacquer or printing ink. Maaninen teaches that a top layer formed by “surface lacquer or printing ink” can be processed to create a microstructure by embossing (¶ [0007]). Maaninen further teaches grooves and ridges having a smallest dimension of about 10 nm to 1500 nm (¶ [0021]) and teaches roll-on-roll embossing using an embossing roll and backing roll to exert embossing pressure on a surface layer (¶ [0060]). Thus, Maaninen supplies the missing nano-structured lacquer-layer feature.
The references also share the relevant structure of a coated paper substrate having a surface coating/layer intended to provide visual or haptic surface effects. Griesmayr teaches lacquer coatings on mouthpiece lining paper having visual or haptic function, and Maaninen teaches forming fine optical surface structures in surface lacquer or printing ink by embossing.
It has been held that a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP § 2143.
Therefore, it would have been obvious to modify Griesmayr’s lacquer-coated mouthpiece lining paper by using Maaninen’s teaching of embossing nano/micro grooves or ridges into a surface lacquer layer, because Griesmayr already teaches lacquer coatings for visual or haptic effects on mouthpiece lining paper and Maaninen teaches a known embossing technique for forming fine surface structures in lacquer or printing ink, with the predictable result of providing Griesmayr’s lacquer layer with a nano-structured optical or haptic surface effect.
Regarding claim 14, Griesmayr teaches the nano-embossed mouthpiece lining paper according to claim 13, as modified by Maaninen, wherein the lacquer layer comprises nitrocellulose (nitrocellulose lacquer may be used as a less moisture-resistant lacquer; ¶ [0022]).
Regarding claim 15, Griesmayr teaches the nano-embossed mouthpiece lining paper according to claim 13, as modified by Maaninen, further comprising a base paper (mouthpiece lining paper is usually paper but may also be foil or composite material; ¶ [0004]), the base paper being provided with the lacquer layer (mouthpiece lining paper is imprinted with lacquer; ¶ [0018]).
As stated above, claim 15 is indefinite because it recites “a grammage of 30 to 60” without units. However, for purposes of continuing examination and without waiving the indefiniteness rejection, if claim 15 is interpreted as requiring a grammage of 30 to 60 g/m², Maaninen teaches paper/cardboard substrates having a grammage usually in the range of about 30 to 750 g/m², which overlaps the interpreted range (¶ [0052]). It would have been obvious to use a base paper grammage within the overlapping range because Maaninen teaches that such grammages are suitable for paper substrates receiving embossed microstructures.
Therefore, it would have been obvious to modify Griesmayr’s lacquer-coated mouthpiece lining paper by selecting a base paper grammage within Maaninen’s taught range, including about 30 to 60 g/m², because Maaninen teaches that such paper substrates are suitable for receiving embossed microstructures, with the predictable result of providing a lacquer-coated base paper capable of receiving the nano-structured embossed surface.
Regarding claim 16, Griesmayr teaches the nano-embossed mouthpiece lining paper according to claim 13, as modified by Maaninen, wherein the lacquer layer is a colored lacquer layer (lacquer applied as an imprint having visual function; ¶ [0018]). Maaninen further teaches that a paper or cardboard surface layer may be formed from printing ink and processed to create a microstructure by embossing (¶ [0007]). It would have been obvious to use colored pigment-containing printing ink/lacquer material for the colored lacquer layer because Griesmayr teaches lacquer coatings for visual effects on mouthpiece lining paper and Maaninen teaches printing ink as a suitable embossable paper surface-layer material, with the predictable result of providing a colored embossed surface layer.
Regarding claim 17, Griesmayr teaches the nano-embossed mouthpiece lining paper according to claim 13, as modified by Maaninen, wherein the lacquer layer is a clear lacquer layer (sealing lacquer coating is transparent and more preferably colorless; ¶ [0019]), which is applied over a colored area of the mouthpiece lining paper (outside imprint protected by a sealing layer applied over it; ¶ [0017]).
Regarding claim 18, Griesmayr teaches the nano-embossed mouthpiece lining paper according to claim 17, as modified by Maaninen, wherein the colored area of the mouthpiece lining paper is formed by a printing material applied by a printing method (type of printing material, printing method, and applied amount of printing material are selected so that the imprint withstands production, packing, transportation, storage, and smoking; ¶ [0016]).
Griesmayr does not expressly teach that the colored area is formed by a non-film-forming ink or printing ink.
Maaninen is reasonably pertinent to this limitation because it teaches materials suitable for forming paper surface layers that are processed to create embossed micro/nano surface structures. Maaninen teaches that, for paper or cardboard, a top layer may be formed by “surface lacquer or printing ink” and processed to create a microstructure by embossing (¶ [0007]). This teaching is relevant because claim 18 is directed to the resulting mouthpiece lining paper article, and the relevant structure is a colored printed/ink area of the paper, not a separately claimed method of making the colored area.
Therefore, it would have been obvious to modify Griesmayr’s printed/imprinted mouthpiece lining paper by forming the colored area using Maaninen’s taught printing ink, because Griesmayr already teaches mouthpiece lining paper having an imprint formed using printing material and printing methods, and Maaninen teaches printing ink as a known paper surface-layer material compatible with embossing micro/nano structures, with the predictable result of providing a printed colored area suitable for receiving the clear lacquer/nano-structured surface treatment.
Regarding claim 21, Griesmayr teaches an aerosol-generating consumer article (smoking article including mouthpiece lining paper; ¶ [0001]), comprising a nano-embossed mouthpiece lining paper (mouthpiece lining paper, as modified by Maaninen to include embossed nano/micro grooves or ridges; Griesmayr ¶ [0001]; Maaninen ¶ [0021]), including a lacquer layer comprising one of nitrocellulose and ethyl cellulose (ethyl cellulose lacquer; ¶ [0021]); wherein the lacquer layer is one of a clear lacquer layer and a colored lacquer layer (transparent and preferably colorless sealing lacquer coating; ¶ [0019]).
The limitation wherein the lacquer layer is provided with a nano-structure by mechanical embossing is treated as a product-by-process limitation because claim 21 is directed to the consumer article, not a method of making the article. The limitation is given patentable weight only to the extent that it imparts structure to the claimed article, namely the nano-structured lacquer layer. See MPEP § 2113.
Griesmayr does not teach wherein the lacquer layer is provided with a nano-structure by mechanical embossing.
Maaninen is reasonably pertinent to this limitation because it teaches mechanically embossing nano/micro surface structures into paper or cardboard surface layers, including layers formed from surface lacquer or printing ink. Maaninen teaches that a surface lacquer layer may be processed to create a microstructure by embossing (¶ [0007]), and teaches grooves and ridges having a smallest dimension of about 10 nm to 1500 nm (¶ [0021]).
Griesmayr further teaches wherein the nano-embossed lacquer layer is exposed on the outside of the consumer article (imprinted lacquer coating is on the outside of the mouthpiece lining paper; claim 26). Griesmayr teaches that mouthpiece lining paper is used on a smoking article and is touched by the smoker’s lips, confirming that the lacquered mouthpiece surface is an exterior surface of the article (¶ [0004]).
Therefore, it would have been obvious to modify Griesmayr’s lacquer-coated mouthpiece lining paper on a smoking article by using Maaninen’s teaching of mechanically embossing nano/micro grooves or ridges into a surface lacquer layer, because Griesmayr teaches exterior lacquer coatings on mouthpiece lining paper for visual or haptic effects and Maaninen teaches a known embossing technique for forming fine surface structures in lacquer layers, with the predictable result of providing the outside lacquer layer of the consumer article with a nano-structured surface effect.
Claims 19 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Griesmayr et al. (US 2015/0216226 A1) in view of Maaninen et al. (US 2010/0327485 A1) and further in view of Boswell (US 5,810,957).
Regarding claim 19, Griesmayr teaches the nano-embossed mouthpiece lining paper according to claim 13, as modified by Maaninen, as set forth above. Griesmayr and Maaninen do not teach wherein the mouthpiece lining paper comprises at least one foil element.
Boswell is reasonably pertinent to this limitation because it teaches foil/composite sheets bearing holographic or diffraction grating surface structures that are hot stamped onto substrates to provide decorative/optical surface effects. This is directly relevant to adding an optical foil element to the decorative nano-embossed mouthpiece lining paper of Griesmayr and Maaninen. Boswell teaches a foil/composite sheet having a holographic image or diffraction grating image, and that a chip containing the image may be hot stamped directly onto a substrate (Abstract). Boswell further teaches that the hot-stamped chip includes lacquer layers, a metal layer, an embossment receiving layer, and adhesive (col. 10, ll. 60-67). Thus, Boswell supplies the foil element missing from Griesmayr and Maaninen.
Regarding claim 20, Griesmayr teaches the nano-embossed mouthpiece lining paper according to claim 19, as modified by Maaninen and Boswell, as set forth above. Griesmayr and Maaninen do not teach wherein the lacquer layer and the foil element are provided with the same nano-structure.
Boswell teaches that a holographic or diffraction grating image is embossed into an embossment receiving coating, a metal layer, and a soft lacquer layer, with those layers deformed to substantially the same profile as the image in the embossing shim (col. 7, ll. 36-48). Maaninen supplies the nano-scale character of the embossed structure by teaching grooves and ridges having dimensions of about 10 nm to 1500 nm (¶ [0021]). Thus, Boswell supplies the same-structure relationship between lacquer and foil/metal layers, while Maaninen supplies the nano-scale embossed surface structure.
It has been held that a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP § 2143.
Therefore, it would have been obvious to modify Griesmayr’s nano-embossed lacquered mouthpiece lining paper, as modified by Maaninen, to include Boswell’s hot-stamped holographic foil element and to provide the lacquer layer and foil element with the same embossed nano-structure, because Boswell teaches applying decorative/optical foil elements to substrates and teaches that the same embossed surface relief can extend through lacquer and metal/foil layers, with the predictable result of providing the mouthpiece lining paper with a decorative foil element having a continuous nano-structured optical surface effect.
Claim 19 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Griesmayr et al. (US 2015/0216226 A1) in view of Maaninen et al. (US 2010/0327485 A1), and further in view of Griesmayr et al. (US 2015/0027478 A1).
Regarding claim 19, Griesmayr ’226 and Maaninen teach the nano-embossed mouthpiece lining paper according to claim 13 as set forth above. Griesmayr ’226 and Maaninen do not teach that the mouthpiece lining paper comprises at least one foil element.
Griesmayr ’478 is in the same field of mouthpiece lining paper for filter cigarettes and teaches a mouthpiece lining paper formed from a foil (¶ [0016]). This teaching is relevant because claim 19 requires the mouthpiece lining paper to comprise at least one foil element, and Griesmayr ’478 teaches foil in the same type of mouthpiece lining paper.
It has been held that a claimed invention may be obvious where the claimed improvement is the predictable use of prior art elements according to their established functions. MPEP § 2143.
Therefore, it would have been obvious to modify the nano-embossed mouthpiece lining paper of Griesmayr ’226 as modified by Maaninen to include at least one foil element as taught by Griesmayr ’478, because Griesmayr ’478 teaches foil as a known mouthpiece-lining-paper material, and a person of ordinary skill would have expected the inclusion of such foil to provide a predictable decorative or structural surface component in the same type of mouthpiece lining paper.
Regarding claim 20, Griesmayr ’226 and Maaninen as modified by Griesmayr ’478 teach the nano-embossed mouthpiece lining paper according to claim 19. Griesmayr ’226 and Maaninen do not expressly teach that the lacquer layer and the foil element are provided with the same nano-structure.
Griesmayr ’478 teaches that elevations and depressions may be formed by mechanical shaping of the foil material, including by embossing rollers (¶ [0040]). Maaninen teaches nano-scale grooves/ridges having a smallest dimension of about 10 nm to 1500 nm (¶ [0021]). Thus, Griesmayr ’478 supplies the teaching that foil material in mouthpiece lining paper can be mechanically embossed, while Maaninen supplies the nano-scale structure.
Therefore, it would have been obvious to modify the mouthpiece lining paper of Griesmayr ’226 as modified by Maaninen and Griesmayr ’478 so that the embossing applied to the lacquer layer is also applied to the foil element, thereby providing the lacquer layer and foil element with the same nano-structure, because Griesmayr ’478 teaches embossing foil material in mouthpiece lining paper and Maaninen teaches nano-scale embossing, with the predictable result of imparting the same surface optical/haptic nano-structure to both exposed surface materials.
Conclusion
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/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
