DETAILED ACTION
Response to Arguments
Applicant's arguments filed 10/31/2025 have been fully considered but they are not persuasive.
Applicant argues that the tobacco sheet of Hanada already possesses a tobacco flavor and would not be modified to have a redundant or superfluous advantage (i.e., to have a tobacco flavor). The Examiner disagrees. Berger discloses a smoking article comprising tobacco section 12 in combination with tobacco sheet filter 14 [Fig. 1; col. 4, l. 56 to col. 5, l. 30]. The tobacco section of Hanada already having a tobacco flavor, like that of Berger, does not mean that a tobacco sheet filter would be redundant. A tobacco sheet filter provides tobacco flavor enrichment as taught by Berger.
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, and 8-11 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.
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 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.
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, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ashton (US 2023/0023799) in view of Aoun (US 2021/0161201).
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], wherein the paper substrate consists of wood (hardwood pulp or softwood pulp) or hemp fibers [0024]. 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.
Claims 12, 16, and 17 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).
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], wherein the paper substrate consists of wood (hardwood pulp or softwood pulp) or hemp fibers [0024]. 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 gramma 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ERIC YAARY/Examiner, Art Unit 1755