DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 and 14-15 in the reply filed on June 2, 2026 is acknowledged.
Claims 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 2, 2026.
Claims 1-11 and 14-15 are directed to an allowable product, (Claim 11 being rejoined as it contains allowable subject matter). Pursuant to the procedures set forth in MPEP § 821.04(B), claims 12-13, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on January 15, 2026 is hereby fully withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Claims 6 and 8 are objected to because of the following informalities:
Regarding claim 6,
line 2: the words “in an” are appear to be a typographical error and should be removed;
line 2: “between about 2-0,5 cm” should be changed to read “between about 2 and about 0.5 cm” which is consistent with applicant’s as-filed specification [0016];
Regarding claim 7,
line 2: “between about 2,5-1,0 cm” should be changed to read “between about 2.5 and about 1.0 cm” which is consistent with applicant’s as-filed specification [0017];
Regarding claim 8,
line 2: the word “is” immediately after “rolling material” should be removed to read “rolling material, in its unrolled form, is shaped”.
Appropriate correction is required.
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 1-10 and 13-15 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.
Claims 1, 4, 5, and 13-15 each recite the phrase "such as" which renders each claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2-3 and 6-10 are rejected due to dependency on a rejected base claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Note: Provisional non-statutory double patenting rejections may not be held in abeyance. MPEP §804 (I) (B) (1).
Claims 1-9 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of Patent Application No. 18/360,686 in view of Rousseau et al. (US 2020/0253268 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1, 2, and 16 of 18/360,686 cover the same structure as instant claims 1 and 2. Claim 11 of 18/360,686 recites the same structure as instant claim 11.
However, claims 1, 2, 11, and 16 of 18/360,686 do not explicitly recite a first area density. Rousseau [0071] teaches a wrapping material has a preferred basis weight of greater than about 85 gsm to less than about 100 gsm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice 18/360,686 wherein the first rolling material has a preferred first area density of greater than about 85 gsm to less than about 100 gsm. This reads over the claimed first area density of instant claims 1 and 11.
Claim 3 of 18/349,618 reads over instant claim 3.
Claims 4 and 17 of 18/349,618 read over instant claim 4.
Claim 5 of 18/349,618 reads over instant claim 5.
Claim 6 of 18/349,618 reads over instant claim 6.
Claim 7 of 18/349,618 reads over instant claim 7.
Claim 8 of 18/349,618 reads over instant claim 8.
Claim 9 of 18/349,618 reads over instant claim 9.
Claim 12 of 18/349,618 reads over instant claim 12.
Claim 13 of 18/349,618 reads over instant claim 13.
Allowable Subject Matter
Claims 11 and 12 are allowable upon resolution of the non-statutory double patenting rejections including a reply that either shows that the claims are patentably distinct from the claims of U.S. Application No. 18/360,686 or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection.
Regarding claim 11, the closest prior art, Sinclair, JR (US 2016/0088871 A1, cited on IDS dated 1/31/2025), discloses a smoking article 10 (a cigarette shell) comprising a sheet of material 11 (first rolling material), a hollow interior 36 (a hollow body) has a larger section 14 has a frustoconical shape with an opening 44 into which custom tobacco material (smokeable material) is loaded (Fig. 10, [0136]), a filter 50 in the smaller section 18 (a support tip arranged inside of a proximal end of the hollow body) (Fig. 11, [0137]). Sinclair, JR is silent regarding a first area density and a second rolling paper.
Rousseau et al. (US 2020/0253268 A1), teaches a wrapping material 100 for a smoking article 10 (Fig. 1, [0042], [0097]), the wrapping material has a preferred basis weight of greater than about 85 gsm to less than about 100 gsm ([0071]) (reads over a first area density range 50-100 gm/m2).
The prior art does not teach or reasonably suggest the combined claimed structure of a cigarette shell comprising a second rolling paper with a lower area density compared to the first rolling material wherein the second rolling paper forms a sleeve of which a first portion extends with the body and of what a second portion projects from the body out from a distal end thereof in a longitudinal direction of the said body.
Claims 1-10 and 13-15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph and upon resolution of the non-statutory double patenting rejections including a reply that either shows that the claims are patentably distinct from the claims of U.S. Application No. 18/360,686 or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection.
Regarding claim 1, the closest prior art, Sinclair, JR (US 2016/0088871 A1, cited on IDS dated 1/31/2025), discloses a smoking article 10 (a cigarette) comprising a sheet of material 11 (first rolling material), a hollow interior 36 (a hollow body) has a larger section 14 has a frustoconical shape with an opening 44 into which custom tobacco material (smokeable material) is loaded (Fig. 10, [0136]), a filter 50 in the smaller section 18 (a support tip arranged inside of a proximal end of the hollow body) (Fig. 11, [0137]). Sinclair, JR is does not teach or suggest a first area density or a second rolling paper.
Rousseau et al. (US 2020/0253268 A1), teaches a wrapping material 100 for a smoking article 10 (Fig. 1, [0042], [0097]), the wrapping material has a preferred basis weight of greater than about 85 gsm to less than about 100 gsm (reads over first area density).
The prior art does not teach or reasonably suggest the combined claimed structure of a cigarette plugged at a distal end of the body, comprising a second rolling paper with a lower area density compared to the first rolling material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONNIE KIRBY JORDAN whose telephone number is 571-272-5214. The examiner can normally be reached M-F 8AM - 4PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/Christopher M Rodd/Primary Examiner, Art Unit 1766
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