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 16-20 in the reply filed on June 2, 2026 is acknowledged.
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: reference character 1’’’’ shown on Replacement Figure 4. Specification paragraph [0054], recites Figure 4 shows forming a cigarette 1’’’.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 16-20 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.
Claim 1 recites the limitation "the second rolling paper" in line 5. There is insufficient antecedent basis for this limitation in the claim. The examiner suggests the limitation should read “the second rolling material” which is consistent with the limitation “a second rolling material” cited previously in line 5 of the claim.
Claims 9 and 10 all recite ‘preferably’ language which is a broad then narrow limitation. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 4, 8-9, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sinclair, JR. et al. (US 2016/0088871 A1, cited on IDS dated 1/31/2025, hereinafter Sinclair et al.) in view of Sinclair, JR. (US 9,125,435 B1, herein after Sinclair JR).
Regarding claims 1 and 4, Sinclair et al. discloses a smoking article 10 (reads over a cigarette) comprising a sheet of material 11 (reads over a first rolling material), a hollow interior 36 (reads over an inner volume) of sheet 11 larger section 14, the larger section 14 has a frustoconical shape (reads over defining a body) with an opening 44 into which custom tobacco material 46 is loaded (reads over a smokeable material limitation) (Fig. 10, [0136]), a filter 50 in the smaller section 18 (reads over a support tip arranged inside of a proximal end of the body) (Fig. 11, [0137]). Sinclair et al. does not explicitly disclose the claimed second rolling material and combined structure.
Sinclair JR teaches a smoking article 80 that includes a tip or mouthpiece 15 connected to a cone or spirally wrapped conically shaped layer 81 wherein layer or cone 81 is internally supported with a conically shaped member (i.e., a cone) 84 (reads over the second rolling material forming a sleeve limitation), cone 81 has a proximal end 82 and distal end 83. Support cone 84 is shown partially extending out of the distal end 83 in a longitudinal direction of the cone 81 (Fig. 19, col 7 lines 10-15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Sinclair et al. by including the conically shaped support member arrangement of Sinclair JR for the advantage of providing internal support the outer cone of Sinclair et al. as taught by Sinclair JR. The invention of Sinclair et al. is a frusto-conical shape (i.e., cone) affixed to a support tip as discussed above, and therefore the support cone of Sinclair, JR is not required to be attached to a tip as detailed in Sinclair JR because Sinclair et al. has an alternative method of affixing a support tip/mouthpiece/tip to a conically shaped wrapper/shell/body.
Sinclair et al. additionally discloses the open end 44 of the sheet material 11 is twisted until it is closed to form a closure at 48 (Fig. 12, [0137]). Therefore, twisting the outer layer (sheet 11) of modified Sinclair et al. physically deforms both the outer layer and the inner support member. This reads over the second portion deformation limitation as the claimed physical deformation does not exclude deformation of the first rolling material. This reads over claim 1 and reads over the closed twist of claim 4.
Regarding claim 3, one of ordinary skill in the art before the effective filing date of the claimed invention would be reasonably suggested the custom tobacco material 46 fills the hollow interior 36 from the filter 50 to the twisted closure 48 (see Sinclair et al. Figs. 11 and 12)
Applicant does not provide any evidence demonstrating that the smokable material extending beyond the distal end of the body formed by the first rolling material as recited in the claim serves a unique or critical function or purpose, or achieves results that would have been unexpected. This reads over claim 3.
Regarding claim 8, modified Sinclair et al. teaches sheet 11 is shaped as a rectangle (Sinclair et al. Fig. 1); the larger section 14 is frustoconical (Sinclair et al. [0136] as discussed in the rejection of claim 1 above). This reads over claim 8.
Regarding claim 9, modified Sinclair et al. does not explicitly teach the unrolled form shape for the conically shaped support member 84, however one of ordinary skill in the art is reasonably suggested the unrolled form of the support member 84 has a rectangular shape as the rolled support member 84 is a conical shape (Sinclair JR [0136]), similar (i.e., an extension) to the frustoconical shape of the larger section 14 of Sinclair et al. which has a rectangular-shaped unrolled form as discussed in the rejection of claim 8 above. This reads over claim 9.
Regarding claim 17, modified Sinclair et al. teaches all the claim limitations as set forth above.
Modified Sinclair et al. teaches a twisting action 200 (reads over rotating the body around the longitudinal axis) used to form a twisted closure (physical deformation) (Sinclair JR, Fig. 7, col 5 lines 34-40).
Claim 17 is a product by process claim. Product by process claims are evaluated to determine what structure is imparted by the process onto the resulting product. In the instant case, the process of Sinclair JR teaches a twisting action 200 used to form a twisted closure (physical deformation) (Fig. 7 col 5 lines 34-40). There is no evidence the steps of the recited process impart any additional structure on the resulting twisted closure that is not already present or substantially similar to that of modified Sinclair et al. for the above reason.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Sinclair, JR. et al. (US 2016/0088871 A1, cited on IDS dated 1/31/2025, hereinafter Sinclair et al.) in view of Sinclair, JR. (US 9,125,435 B1, herein after Sinclair JR) as applied to claim 1 above, and further in view of Rousseau (US 2020/0253267 A1).
Regarding claim 16, modified Sinclair et al. teaches all the claim limitations as set forth above, and further teaches the smoking article includes a sheet of smokable material (Sinclair et al. [0031]), but does not explicitly teach the smokable material is a paper, dried leaves, or flower petals.
Rousseau teaches a wrapping material 100 (i.e., a first rolling material) for a smoking article 10 (Fig. 1, [0042]); the wrapping material can comprise cut leaf tobacco (reads over dried leaves), a reconstituted tobacco material, or mixtures thereof. The material of the present disclosure can be refined with a tobacco material, in addition to the web building fibers, for forming an aerosol generating material with controlled nicotine deliveries and a desirable taste and smell ([0080]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of modified Sinclair et al. and include the wrapping material as taught by Rousseau for the sheet material 11 of Sinclair et al. for the advantage of the inclusion of cut leaf tobacco as the tobacco material for forming an aerosol generating material with controlled nicotine deliveries and a desirable taste and smell as taught by Rousseau. This reads over claim 16.
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, 3-9, and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 3-9 of Patent Application No. 18/349,618. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of 18/349,618 covers the same structure as instant claims 1 and 16.
Claim 3 of 18/349,618 reads over instant claim 3.
Claim 4 of 18/349,618 read over instant claims 4 and 17.
Claim 5 of 18/349,618 reads over instant claims 5 and 18.
Claim 6 of 18/349,618 reads over instant claims 6 and 19.
Claim 7 of 18/349,618 reads over instant claim 7 and 20.
Claim 8 of 18/349,618 reads over instant claim 8.
Claim 9 of 18/349,618 reads over instant claim 9.
Allowable Subject Matter
Claims 2, 5-7, 10, and 18-20 are objected to as being dependent upon a rejected base claim, but 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. 18/349,618 or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection.
Regarding claim 2, the prior art of record does not teach or suggest the second rolling material is more flexible than the first rolling material.
Regarding claim 6, the prior art of record does not teach or suggest the second rolling material only extends between about 2.5 and about 0.5 cm into the body.
Regarding claim 7, the prior art of record does not teach or suggest the second rolling material only projects between about 2.5 and about 1.0 cm from the body.
Regarding claim 10, the prior art of record does not teach or suggest a third rolling material wherein the second rolling material is layered between the third and first rolling material, and wherein the first and second rolling material are within about 0 to about 0.5 cm of each other’s length and wherein the length of the second rolling material exceeds that of the first rolling material by about 0.5 to about 2.5 cm.
Claims 5 and 18-20 are objected to due to dependency.
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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