DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-3 and 15-20, in the reply filed on January 2, 2026 is acknowledged. The traversal is on the ground that there would not be a serious burden to search all the claims together. Applicant argues that both of claims 1 and 4 require the search for preparing a printing solution. This is not found persuasive. Each of the groups of claims is classified differently and they are each to varied articles and processes. Claim 1 is directed to a bobbin of wrapper material and claim 4 is directed to a smoking article. These are two very different articles and they do not have to be made by the same process, even if that process is claimed due to an article being patentable based on what it is and not how it’s made. Therefore, the inventions do require a different field of search and it would be a serious search burden. Applicant’s arguments are unpersuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 January 2, 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.
Claims 2 and 18 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.
Regarding claim 2, the second half of this claim is unclear. Does the claim mean that the base web has a permeability of about 60 to about 80 Coresta after printing the desired pattern; or does it have this permeability generally, and the phrase “after printing the desired pattern” goes with the second part of the claim? For the purpose of further examination, the claim will be interpreted as the base web having this permeability generally and that the wrapper is wound onto a bobbin after the desired printing.
Regarding claim 18, claim 18 recites the limitation "the propylene" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this will be interpreted to be the propylene glycol of claim 1.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claims 1-3 and 15-20 are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (US 2008/0295854).
Regarding claim 1, Li et al. teaches a wrapper paper for a smoking article that has a base web to which add-on material is applied in a pattern using an aqueous starch solution that includes an anti-wrinkling agent (¶28). After the wrapper passes through the printing stations, it is wound up on a collection reel and the collection reel is then cut into bobbins. The bobbins are then used during manufacture of the smoking article in conventional tobacco rod making machines (¶289).
The limitations regarding how the wrapper material is made are product-by-process limitations. Even 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). In this case, the wrapper material is made by a starch solution added to a base web. There is no evidence on the record that the instant wrapper material on a bobbin is not the same as or obvious from the product of the prior art.
Regarding claim 2, Li et al. teaches that the base web of a preferred wrapper has a permeability of greater than about 60 Coresta (¶114). Also, after printing the desired pattern, the wrapper is slit into bobbins (¶96).
Regarding claim 3, Li et al. teaches that the wrapper material is printed in a patch pattern (¶194).
Regarding claims 15-19, these claims are all product-by-process claims and the same rationale as applied to claim one applies to them as well.
Regarding claim 20, Li et al. teaches that the inclusion of an anti-wrinkling agent in the starch solution has been found to make possible the application of add-on material to be applied to the base web in a single application, printing pass, or the like, provided that sufficient drying capability is established with such practices (¶140).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
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