DETAILED ACTION
Response to Arguments
Applicant's arguments filed 8/25/2026 have been fully considered but they are not persuasive.
Applicant argues the amended limitation would not have been obvious to one of ordinary skill in the art over the cited prior art. The Examiner disagrees. Li suggests the first and third zones (first and second zones as clamed) may be about 2-5 mm wide and the second zone (claimed third zone) may be about 1-2 mm wide [0246; Fig. 28]. One of ordinary skill would have considered the term “about” to include +/- 10%, providing a maximum first width of 5.5 mm and a minimum second width of 0.9 mm, yielding a second width to first width ratio that may be low as 16%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
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 1-12, 17-19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 2008/0295854) in view of Schweizer (US 4,236,532).
Regarding claims 1, Li teaches a wrapper for a smoking article, the wrapper comprising: a paper 140 (first layer) having a first side and a second side, the first side opposing the second side [0095; Fig. 28]; and a banded region (second layer) on the first side of the first layer, the second layer including, a first and second zones 400 and 402 (in Li zone 402 is referred to as the third zone) each including a first amount of a first add-on material, and a third zone 404 (in Li zone 404 is referred to as the second zone) between the first zone 400 and the third zone 402 including a reduced amount of a second add-on material [0246]. Li suggests the first and third zones zones (first and second zones as clamed) may be about 2-5 mm wide and the second zone (claimed third zone) may be about 1-2 mm wide [0246; Fig. 28]. One of ordinary skill would have considered the term “about” to include +/- 10%, providing a maximum first width of 5.5 mm and a minimum second width of 0.9 mm, resulting in a second width to first width ratio that may be low as 16%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). The third zone, comprising less occluding material than the first zone and second zones [0107], inherently has a second diffusivity that is greater than a first diffusivity of the first and second zones. Although Li does not specifically teach that with these widths the second amount being 35% less than the first amount, Li does teach the second amount is reduced compared to the first amount and teaches this “slit band configuration”, as shown in Fig. 5 and 28, is capable of better sustaining smoldering during free burns, yet when placed adjacent a substrate, does not sustain smoldering [0188, 0246]. One of ordinary skill in the art would have found it obvious to optimize the first amount relative to the second amount through routine experimentation to achieve the desired effects. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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). See also In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution).
Li does not specifically teach the zones being in different patterns. Schweizer teaches a wrapper for a smoking article wherein additive material concentration printed onto the wrapper is varied by changing the density of printing of dots, i.e. changing the pattern [col. 4, l. 67 to col. 5, l. 5]. It would have been obvious to one of ordinary skill in the art to provide different printed dot patterns with the printed add-on material zones of Li [0109] to achieve the same, predictable result of varying the concentration/amount of add-on material between zones as desired by Li [0238].
Regarding claim 2, Li teaches the first layer includes flax, wood pulp, or cellulose fiber [0095].
Regarding claims 3-8, Li teaches the add-on materials include starch occluding agent, calcium carbonate filler material, and glycerin anti-wrinkling agent [0107-0108].
Regarding claims 9-10, modified Li as applied to claim 1 above teaches varying the density of dots to achieve different levels of concentration. This would suggest to one of ordinary skill in the art that in the denser, higher concentration first zone, the first pattern may include a plurality of first dots touching one another and in the less dense, lower concentration second zone, the second pattern may include a plurality of discrete and discontinuous second dots.
Regarding claim 11, Li does not teach hexagonal dots. However, absent evidence of criticality, the claimed limitation is merely a change in shape. The courts have held changes in shape and aesthetic design changes to be prima facie obvious, see In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), MPEP 2144.04.
Regarding claim 12, Schweizer further teaches additive material concentration printed onto the wrapper is varied by changing the dimensions of dots [col. 4, l. 67 to col. 5, l. 5]. It would have been obvious to one of ordinary skill in the art to further modify the wrapper of Li such that each of the plurality of first dots has a larger average dimension than each of the plurality of second dots to achieve the same, predictable result of varying the concentration/amount of add-on material between zones as desired by Li [0238].
Regarding claim 17, Li teaches a banded region is applied to both sides of the wrapper [0027], i.e. a third layer on the second side of the first layer, the third layer including one or more zones having one or more different patterns.
Regarding claim 18, Li teaches the second layer has a permeability between 0 CORESTA and 12 CORESTA [0271], and the first layer has a permeability of up to 100 CORESTA [0141].
Regarding claim 19, Li teaches the first and second zones each has a greater basis weight in grams per square meter than the third zone [0238].
Regarding claim 22, Li as applied to claim 1 above suggests a second width to first width ratio that may be low as 16%. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Li and Schweizer as applied to claim 10 above, and further in view of Sherwood (US 2013/0306082).
Modified Li does not specifically teach at least a portion of the plurality of second dots are hexagonal. However, this configuration is known in the art as taught by Sherwood [0094-0095] and would have been obvious to one of ordinary skill in the art to apply to modified Li to achieve the same, predictable result of applied add-on material.
Claim 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Li and Schweizer as applied to claim 1 above, and further in view of Norman (US 2012/0227754).
Modified Li does not specify the diffusivity. Norman teaches a smoking article wherein a band providing a reduced ignition propensity [0024], like that of Li [0009], has a diffusivity of less than 0.1 cm/sec [0065]. It would have been obvious to one of ordinary skill in the art to provide this diffusivity for the first diffusivity of modified Li to achieve the same, predictable result of reduced ignition propensity. As Norman further teaches a base wrapper diffusivity of 1.7 cm/sec [0067], the second diffusivity, where less occluding material is present, would necessarily be higher than 0.1 cm/sec and lower than 1.7 cm/sec. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Furthermore, due to the presence of the occluding, permeability reducing material in the second zone, one of ordinary skill in the art would appreciate that the second diffusivity would be closer to 0.1 cm/sec than 1.7 cm/sec.
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
