Response to Arguments
Applicant's arguments filed 5/13/2026 have been fully considered but they are not persuasive.
Applicant argues Hanada is not analogous art to the presently claimed subject matter. The present application is directed to a smoking article comprising a filter [0036 of instant specification]. Hanada is directed to a smoking article comprising a filter [0014]. Hanada is therefore in the same field of the inventor’s endeavor.
Applicant argues “a sufficient reason has not been articulated as to why a person of ordinary skill would have repurposed Hanada's calendered wrapper sheet as Berger's filter filtration medium. Hanada's sheet is optimized for adhesive bonding and machine compatibility as a cigarette-paper wrap. Berger's reconstituted tobacco member, in contrast, is embossed, compacted, and bonded to form longitudinal flow passages that provide high surface area for flavor enrichment. The references therefore address different problems, use different structures, and rely on different mechanisms. Applicant acknowledges that the Office Action states that such a modification would be made "for the benefit of enabling the smoke to become tobacco flavor-enriched." See Office Action, Detailed Action 1 5. Applicant respectfully submits, however, that this statement identifies only a desired result. It does not provide an evidence-based reason why a skilled artisan would have selected Hanada's wrapper sheet, removed it from its disclosed use as cigarette paper wound around tobacco filler, modified Berger's embossed and compacted reconstituted tobacco filter architecture with that sheet, and reasonably expected the resulting structure to retain Berger's intended filter function.”
The Examiner disagrees. The proposed modification does not involve removing the sheet of Hanada from its disclosed use, nor does it involve modifying the filter of Berger. In the proposed modification, the sheet of Hanada continues to achieve its disclosed use while additionally being used as the filter body 15 of its own filter 13 [Fig. 1-2], in view of the suggestion of Berger. It is noted that Hanada discusses the versatility of the tobacco sheet, noting that it can be used as tobacco filler 17, tobacco filler wrapper 18, filter wrapper 16, and tipping paper 14 [0078]. Additionally using the sheet as the filter body 15 would be merely an extension of the sheet’s versatility already disclosed by Hanada. One of ordinary skill in the art would recognize that a tobacco sheet is suitable for use as a filter body in view of Berger and would have found it obvious to do so for the stated reasons.
Applicant argues “Paragraph [0024] states that "[t]he sheets might be formed of other suitable materials, such as wood pulp, rice, hemp, metal foil or other suitable materials other than paper." Thus, Ashton identifies wood pulp, rice, hemp, and metal foil as possible materials other than paper. In this respect, Ashton does not disclose that its paper substrate consists of hardwood pulp fibers, softwood pulp fibers, hemp fibres, or any of the other cellulosic fibres recited in claims 16 and 18.” The Examiner disagrees. A sheet made of pulp or hemp is, by definition, paper. See the definition of paper: “a substance made from wood pulp, rags, straw, or other fibrous material, usually in thin sheets, used to bear writing or printing, for wrapping things, etc. (https://www.dictionary.com/browse/paper). Ashton therefore does disclose a paper substrate consisting of pulp or hemp fibers.
Applicant argues “The present specification expressly defines "paper substrate" as a sheet consisting of cellulosic fibres obtained by a wetlaid process, and further excludes drylaid and airlaid materials. See Spec. [0014]. This express definition governs the proper construction of "paper substrate" in claim 12. Under this definition, Hanada's wrapper sheet is not the claimed "paper substrate." Hanada repeatedly teaches a tobacco-containing sheet, not a sheet consisting of cellulosic fibres.” The Examiner disagrees. Tobacco fibers are considered cellulosic fibers. See, for example, US 2013/0284189: “The present invention relates to cellulosic materials (such as tobacco)” [0001].
Applicant argues “the Office Action relies on an advantage from Aoun that depends on a structural relationship absent from Ashton. Because Ashton does not include Aoun's amorphous solid composition, does not include Aoun's carrier for that amorphous solid composition, and does not require bonding between those components, a person of ordinary skill would not have optimized Ashton's alleged paper substrate for the purpose of achieving Aoun's bonding strength. The proposed modification therefore appears to select Aoun's smoothness disclosure apart from the very structure and purpose that make the smoothness relevant in Aoun.” The Examiner disagrees. The fact that smoothness of a paper in the context of Aoun is relevant to bonding with an amorphous solid does not indicate that smoothness is irrelevant to bonding with other components. "A person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 421 (2007). In making an obviousness determination one "can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR, 550 U.S. at 418. One of ordinary skill in the art would recognize in view of Aoun that the smoothness of a paper generally impacts bonding strength and thus would have considered it relevant to the article of Ashton.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 4-5, 8-11, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hanada (US 2022/0071275) in view of Berger (US 4,291,711).
Regarding claim 1, Hanada teaches a tobacco sheet (paper substrate) having a smoothness of 24 s [0052], i.e. comprising two faces and at least one of the two faces having a smoothness of 24 s. Hanada does not teach a filter comprising the paper substrate as filtration material. Berger teaches a cigarette (smoking article) comprising a filter, wherein the filter comprises a tobacco sheet as filtration material, which enables the smoke to become tobacco flavor-enriched by extracting tobacco flavor [col. 2, l. 41-56]. It would have been obvious to one of ordinary skill in the art to use the tobacco sheet paper substrate of Hanada as a filtration material in the filter for the benefit of enabling the smoke to become tobacco flavor-enriched by extracting tobacco flavor as suggested by Berger.
Regarding claim 2, Hanada does not specify whether only one face of the paper has a smoothness 24 s or both faces have this smoothness. As Hanada is silent to a different smoothness, it is interpreted that both faces have a smoothness of 24 s. In the alternative, if it is interpreted that only one face has a smoothness 24 s, it would have been obvious to one of ordinary skill in the art to apply this smoothness level to both faces to achieve the predictable result of a paper with uniform properties.
Regarding claim 4, Hanada teaches a basis weight (grammage) of 32 g/m2 [0051].
Regarding claim 5, Hanada teaches the paper substrate comprises cellulosic fibers from wood pulp [0024-0025], which is necessarily either hardwood pulp or softwood pulp.
Regarding claims 8-9, modified Hanada teaches a smoking article comprising the filter as defined in claim 1 [Hanada Fig. 1] This smoking article is interpreted to read on the claimed vaping article as well. The instant specification notes: “For the purposes of the present application, “vaping article” denotes an article comprising tobacco, any other plant intended to be vaped or mixtures thereof, which is intended to be inserted into a device which heats the tobacco, the plant or mixtures thereof without burning said tobacco, plant or mixtures and which enables delivery of an aerosol to a user. For example, the vaping article can be a tobacco stick.” [0039]. The cigarette or smoking article of modified Hanada is inherently capable of being inserted into a device which heats the tobacco without burning said tobacco.
Regarding claim 10, Hanada teaches a process for producing a paper substrate as defined in claim 1, comprising the following steps: a) producing a rough-faced paper substrate by a wetlaid process, b) smoothing the rough-faced paper substrate which is produced in step a) to produce the paper substrate, wherein smoothing step b) is carried out by calendaring [0040].
Regarding claim 11, Hanada teaches the calendaring of smoothing step can be carried out with an elastic roller [0030, 0041], i.e. soft nip calender.
Regarding claim 20, Hanada teaches the paper substrate consists of cellulosic fibres obtained by a wetlaid process [0040].
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hanada and Berger as applied to claim 1 above, and further in view of Osawa (US 2021/0045433).
Hanada is silent to an air permeability of the paper substate. Osawa teaches a tobacco sheet having an air permeability of 0 to 60 Coresta units (cm3/cm2min) [0063]. As this is a conventional air permeability for a tobacco sheet known in the art, it would have been obvious to one of ordinary skill in the art to apply to the tobacco sheet paper substrate of Hanada to achieve predictable results, e.g. allowing a suitable amount of air to flow through the paper.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hanada and Berger as applied to claim 6 above, and further in view of Klipfel (US 2017/0258126).
Hanada is silent to silent to the length of the cellulosic fibers. Klipfel teaches a tobacco sheet [0013] wherein a length of cellulosic fibers used in preferably between 1 mm and 3 mm because shorter fibers would not contribute efficiently to the tensile strength of the resulting material and longer fibers would create inhomogeneties and other defects [0056]. It would have been obvious to one of ordinary skill in the art to use this length for the cellulosic fibers of Hanada for the above reasons suggested by Klipfel.
Claims 12-14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Hanada in view of Osawa and Berger.
Regarding claims 12 and 14, Hanada teaches a tobacco sheet (paper substrate) having a smoothness of 24 s [0052], i.e. comprising two faces and at least one of the two faces having a smoothness of 24 s. Hanada teaches a basis weight (grammage) of 32 g/m2 [0051]. Hanada teaches the paper substrate comprises cellulosic fibers from wood pulp [0024-0025], which is necessarily either hardwood pulp or softwood pulp. Hanada is silent to an air permeability of the paper substate. Osawa teaches a tobacco sheet having an air permeability of 0 to 60 Coresta units (cm3/cm2min) [0063]. As this is a conventional air permeability for a tobacco sheet known in the art, it would have been obvious to one of ordinary skill in the art to apply to the tobacco sheet paper substrate of Hanada to achieve predictable results, e.g. allowing a suitable amount of air to flow through the paper.
Modified Hanada does not teach a filter comprising the paper substrate as filtration material. Berger teaches a cigarette (smoking article) comprising a filter, wherein the filter comprises a tobacco sheet as filtration material, which enables the smoke to become tobacco flavor-enriched by extracting tobacco flavor [col. 2, l. 41-56]. It would have been obvious to one of ordinary skill in the art to use the tobacco sheet paper substrate of Hanada as a filtration material in the filter for the benefit of enabling the smoke to become tobacco flavor-enriched by extracting tobacco flavor as suggested by Berger.
Regarding claim 13, Hanada does not specify whether only one face of the paper has a smoothness 24 s or both faces have this smoothness. As Hanada is silent to a different smoothness, it is interpreted that both faces have a smoothness of 24 s. In the alternative, if it is interpreted that only one face has a smoothness 24 s, it would have been obvious to one of ordinary skill in the art to apply this smoothness level to both faces to achieve the predictable result of a paper with uniform properties.
Regarding claim 21, Hanada teaches the paper substrate consists of cellulosic fibres obtained by a wetlaid process [0040].
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Hanada, Osawa, and Berger as applied to claim 12 above, and further in view of Klipfel.
Modified Hanada is silent to silent to the length of the cellulosic fibers. Klipfel teaches a tobacco sheet [0013] wherein a length of cellulosic fibers used in preferably between 1 mm and 3 mm because shorter fibers would not contribute efficiently to the tensile strength of the resulting material and longer fibers would create inhomogeneties and other defects [0056]. It would have been obvious to one of ordinary skill in the art to use this length for the cellulosic fibers of Hanada for the above reasons suggested by Klipfel.
Claims 1-2, 5, 8-9, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ashton (US 2023/0023799) in view of Aoun (US 2021/0161201).
Regarding claims 1-2 and 19, Ashton teaches a filter 101 [Fig. 1B] comprising a paper substate 403 comprising two faces [Fig. 1A], wherein the paper substrate is a filtration material [0029]. Ashton is silent to the smoothness of the paper. Aoun teaches a consumable wherein smoothness as measured by a Bekk smoothness test (and correspondingly roughness) of a paper effects the strength of a bond [0156]. In Aoun, the paper filtration material is adhered (bonded) to a cylinder of paper [0031]. It would have been obvious to one of ordinary skill in the art to optimize through routine experimentation the smoothness of the paper substrate filtration material of Ashton to achieve the desired bonding strength as suggested by Aoun.
Regarding claims 5 and 18, Ashton teaches the paper substrate consists of wood (hardwood pulp or softwood pulp) or hemp fibers [0024].
Regarding claims 8-9, modified Ashton teaches a smoking article comprising the filter as defined in claim 1 [Ashton Fig. 2, 0032] This smoking article is interpreted to read on the claimed vaping article as well. The instant specification notes: “For the purposes of the present application, “vaping article” denotes an article comprising tobacco, any other plant intended to be vaped or mixtures thereof, which is intended to be inserted into a device which heats the tobacco, the plant or mixtures thereof without burning said tobacco, plant or mixtures and which enables delivery of an aerosol to a user. For example, the vaping article can be a tobacco stick.” [0039]. The cigarette or smoking article of modified Hanada is inherently capable of being inserted into a device which heats the tobacco without burning said tobacco.
Regarding claim 20, the limitation “the paper substrate consists of cellulosic fibres obtained by a wetlaid process” is a product by process limitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The paper substrate of modified Ashton reads on the claimed paper substrate.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Ashton and Aoun as applied to claim 1 above, and further in view of Lisauskas (US 2015/0374030).
Modified Ashton is silent to an air permeability of the paper substate. Lisauskas teaches a filter wherein air permeability can be altered to obtain the desired smoking parameters, such as pressure drop and retention properties [0021]. It would have been obvious to one of ordinary skill in the art to optimize the air permeability of the paper substrate of modified Ashton through routine experimentation to achieve the desired effects as suggested by Lisauskas.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ashton and Aoun as applied to claim 1 above, and further in view of Slama (US 2017/0360082).
Modified Ashton is silent to a grammage of the paper substate. One of ordinary skill in the art would have looked to conventional grammages of paper, wood pulp, or hemp sheets known in the art. Slama teaches a rolling paper fabricated of paper, wood pulp, or hemp having a basis weight (grammage) of between 20 and 50 g/m2. [0022]. As this is a conventional sheet or paper grammage known in the art, it would have been obvious to use this grammage for the paper substrate of modified Ashton to achieve predictable results.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ashton and Aoun as applied to claim 1 above, and further in view of Rousseau (US 2020/0253268).
Ashton teaches consists of wood pulp (hardwood pulp or softwood pulp) or hemp fibers [0024] but is silent to a length of the fibers. One of ordinary skill in the art would have looked to conventional fiber lengths of paper, wood pulp, or hemp sheets known in the art. Rousseau teaches a smoking article sheet comprising hemp pulp fibers have a length of 1-4 mm [0065]. As this is a conventional cellulosic fiber length known in the art, it would have been obvious to use this length for the wood or hemp fibers of modified Ashton to achieve predictable results.
Claims 12-14, 16-17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ashton (US 2023/0023799) in view of Aoun (US 2021/0161201) and Woodings (US 5,671,757).
Regarding claims 12, 13, and 17, Ashton teaches a filter 101 [Fig. 1B] comprising a paper substate 403 comprising two faces [Fig. 1A], wherein the paper substrate is a filtration material [0029], Ashton is silent to the smoothness of the paper. Aoun teaches a consumable wherein smoothness as measured by a Bekk smoothness test (and correspondingly roughness) of a paper effects the strength of a bond [0156]. In Aoun, the paper filtration material is adhered (bonded) to a cylinder of paper [0031]. It would have been obvious to one of ordinary skill in the art to optimize through routine experimentation the smoothness of the paper substrate filtration material of Ashton to achieve the desired bonding strength as suggested by Aoun.
Ashton is silent to an air permeability or grammage of the paper substate. Woodings teaches a paper filtration material having an air permeability of 215 or 458 Coresta (cm3/cm2min) and a grammage of 28 g/m2 [col. 4, l. 15-65]. As these are conventional air permeability and grammage value for a paper filtration material known in the art, it would have been obvious to one of ordinary skill in the art to apply to the paper substrate of Ashton to achieve predictable results, e.g. allowing a suitable amount of air to flow through the paper.
Regarding claims 14 and 16, Ashton teaches wherein the paper substrate consists of wood pulp (hardwood pulp or softwood pulp) or hemp fibers [0024].
Regarding claim 21, the limitation “the paper substrate consists of cellulosic fibres obtained by a wetlaid process” is a product by process limitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The paper substrate of modified Ashton reads on the claimed paper substrate.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Ashton, Aoun, and Woodings as applied to claim 12 above, and further in view of Rousseau.
Ashton teaches consists of wood pulp (hardwood pulp or softwood pulp) or hemp fibers [0024] but is silent to a length of the fibers. One of ordinary skill in the art would have looked to conventional fiber lengths of paper, wood pulp, or hemp sheets known in the art. Rousseau teaches a smoking article sheet comprising hemp pulp fibers have a length of 1-4 mm [0065]. As this is a conventional cellulosic fiber length known in the art, it would have been obvious to use this length for the wood or hemp fibers of modified Ashton to achieve predictable results.
Conclusion
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/ERIC YAARY/Examiner, Art Unit 1755
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