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 .
Response to Amendment
Claims 1 and 5 are amended. Claims 2, 7, 10, 12 and 19-20 are withdrawn. Claims 4, 11, 14, 16 and 18 are cancelled. Claims 1, 3, 5-6, 8-9, 13, 15 and 17 are presently examined.
Applicant’s arguments regarding the objection to the abstract have been fully considered and are persuasive. The objection of 4/9/2026 is withdrawn.
Applicant’s arguments regarding the rejections under nonstatutory double patenting have been fully considered and are persuasive. The rejections of 4/9/2026 are overcome.
Specification
The use of the terms Thermo Scientific [0016], Dionex [0016], ASE [0016], ML-Q [0017], and SODIMAX [0036], which are trade names or marks used in commerce, have been noted in this application. The terms should be accompanied by the generic terminology; furthermore the term should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the terms.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Information Disclosure Statement
To the extent that applicant’s filing of 1/23/2024 to identify related applications as required by MPEP § 2001.06(b) is an information disclosure statement under 37 CFR 1.97, it cannot be considered since the paper submitted by applicant does not contain a space for the Examiner to sign. It is noted that applicant does not identify the document as an information disclosure statement but rather as a “letter.”
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 5, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US 2020/0120981) in view of Smith (US 5,338,406).
Regarding claims 1, 3 and 5, Yamada discloses a flavor generating segment having a plurality of flavor generating sheets (figure 5, reference numeral 10) located on a substrate ([0105], figure 5, reference numeral 6). The flavor generating sheets are tobacco sheets [0117], and are therefore considered to meet the claim limitation of a tobacco material, and the substrate is made from rolling paper [0117], and is therefore considered to meet the claim limitation of paper. Yamada additionally discloses that the flavor generating members formed by the tobacco containing flavor generating sheets each weight between 200 mg to 350 mg [0065]. Yamada does not explicitly disclose (a) a total content of lignin and hemicellulose and (b) the substrate having a size that results, based on the density of the substrate, in the claimed weight percentage.
Regarding (a), Smith teaches a process of forming a dried cellulosic web in which about 0.1% to about 5% lignin and hemicellulose are incorporated into a pulp based on the dry weight of the pulp to improve its strength (column 17, lines 67-68, column 18, lines 1-20).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the paper of Yamada with the lignin and hemicellulose of Smith. One would have been motivated to do so since Smith teaches a composition that improves the strength of a cellulosic web.
Regarding (b), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the substrate have a size that results, based on the density of the substrate, in the claimed weight percentage. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 9, Yamada discloses that the segment is incorporated into a flavor generating article (abstract) that generates an aerosol upon heating [0055], indicating that the article is a non-combustion heating-type flavor inhalation article.
Claims 6 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US 2020/0120981) in view of Smith (US 5,338,406) as applied to claims 1, 3 and 5 above, and further in view of Joyeux (US 2022/0232884).
Regarding claims 6, 13 and 15, modified Yamada teaches all the claim limitations as set forth above. Modified Yamada does not explicitly teach a density of the substrate.
Joyeux teaches an aerosol generating article having a wrapper having a paper layer (abstract) having a thickness of less than about 50 microns and a grammage from about 25 gsm to 45 gsm [0013], which indicates that the density of the paper overlaps the claimed range. Joyeux additionally teaches that an article wrapped by this paper is mechanically stable [0004].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the substrate of modified Yamada from the paper of Joyuex. One would have been motivated to do so since Joyuex teaches a paper that provides mechanical stability.
Claims 8 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US 2020/0120981) in view of Smith (US 5,338,406) as applied to claims 1 and 3-4 above, and further in view of Sanna (US 2020/0107571).
Regarding claims 8 and 17, modified Yamada teaches all the claim limitations as set forth above. Modified Yamada does not explicitly teach the substrate having an aerosol source material.
Sanna teaches a heatable aerosol forming rod (abstract) having a wrapper that surrounds a substrate web to prevent dissociation that is itself impregnated with a flavoring volatile substance [0049]. The substrate web also comprises an aerosol forming substrate [0009].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the substrate of modified Yamada with the flavoring volatile substance of Sanna. One would have been motivated to do so since Sanna teaches a flavoring volatile substance that allows a support material to also release flavor.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that Smith does not teach an amount of lignin and hemicellulose in finished paper, (b) that Smith does not teach or suggest using the paper in a tobacco product, (c) that the claimed invention reduces offensive odors in tobacco products, (d) that there is no reasonable expectation of success to combine the references, and (e) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), Smith teaches that the operations performed after the formation of the aqueous suspension are sheeting and drying. Sheeting is a step of rearranging the suspension without changing its composition, and, while drying does change the overall composition, Smith teaches that the dissolved polymers are measured by dry weight. Changes in the moisture level, which is what drying achieve, would therefore not impact the concentration of materials added on a dry weight basis, and the teachings of Smith therefore do indicate an amount of lignin and hemicellulose in the final composition.
Regarding (b), Smith teaches a composition that improves the strength of paper in general. One of ordinary skill in the art would therefore recognize that Smith would provide benefits to Yamada since Yamada discloses paper, the very material that Smith improves.
Regarding (c), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, the cited references teach sufficient motivation to combine the references.
Regarding (d), Smith teaches a specific method of making paper that produces the claimed paper, and therefore one of ordinary skill in the art would be properly guided as to how to make the paper, which fulfills the requirement to have a reasonable expectation of success.
Regarding (e), all examined claims, including the examined independent claim, are rejected as set forth above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
Prosecution Insights