DETAILED ACTION
Response to Arguments
Applicant's arguments filed 9/29/2025 have been fully considered but they are not persuasive. Applicant argues Li does not teach or suggest the second amount being 35% less than the first amount. The Examiner disagrees. Li teaches second amount being 3.5x of add-on material and the first amount being 5.5x of add-on material [Table XIII], or the second amount being 36% less than the first amount. 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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 20 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 20 requires the basis weight of each of the first and second zones are at least twice a basis weight of the third zone. If the area of each of the first zone and second zones were equal in size to an area of the third zone, this would indicate that when the basis weight of each of the first and second zones are at least twice a basis weight of the third zone, the total add on material of the third zone would be 50%+ less than the total add on material of each of the first and second zones. For the total add on material of the third zone to be only 35% less than the total add on material of each of the first and second zones, as required by claim 1 from which claim 20 depends, the area of the third zone necessarily must be larger in size than the area of each of the first and second zones. The instant specification only discloses the opposite, where the area of the third zone (middle zone, referred to as the “second zone” in the instant specification) is smaller in size than the area of each of the first and second zones. The subject matter of claim 20 is thus not supported by the instant specification.
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 and 17-19 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. 33]; and a banded region (second layer) on the first side of the first layer, the second layer including, a first and second zones 420 and 422 (in Li zone 422 is referred to as the third zone) each including a first amount of a first add-on material, and a third zone 424 (in Li zone 424 is referred to as the second zone) between the first zone 420 and the third zone 422 including a second amount of a second add-on material [0248], the second amount being 3.5x of add-on material and the first amount being 5.5x of add-on material [Table XII], i.e. the second amount being 36% less than the first amount. 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). The third zone, comprising less occluding material than the first zone and second zones [0107, 0238], inherently has a second diffusivity that is greater than a first diffusivity of the first and second zones.
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, as the first and second zones are equal in size to the third zone [Table XIII], the first and second zones necessarily each has a greater basis weight than the third zone given that the total add-on material is less in the third zone.
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
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/ERIC YAARY/ Examiner, Art Unit 1755