DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Li et al (U.S. Patent No. 12,108,784).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of Li et al, while being narrower in scope, encompasses all of the limitations of the instant claim 1 because it includes all of the same structural limitations of instant claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 1 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Wanna et al (US. Pat. App. Pub. 2004/0261805) in view of Monsalud, Jr. et al (US. Pat. App. Pub 2004/0177856).
Regarding independent claim 1, Wanna et al discloses a cigarette having reduced ignition propensity as a result of a pattern of additive material applied to the wrapper of said cigarette, in the form of bands/stripes, such that the burn rate properties are controlled (see abstract and para. [0006]). Wanna et al discloses several illustrations of some of the different types of geometric configurations which may be applied to cigarette paper. For example, Fig. 2D shows an elongated section of cigarette paper sample having a plurality of longitudinal stripes/bands (read: pattern…discrete shapes) of additive (read: film-forming compound) there-along of shortened lengths that are less than the length of the sample (read: extends over only a portion of the length) (corresponding to the claimed “[a] wrapper for a smoking article comprising a tobacco rod having a longitudinal axis and a length, the wrapper configured to surround the tobacco rod when incorporated into the smoking article, the wrapper comprising paper and a pattern of film-forming compound disposed on the paper and providing a plurality of discrete shapes”).
Wanna et al fails to disclose bands/stripes, wherein only first and second discrete bands/stipes intersect a plane perpendicular to the longitudinal axis, and wherein the first band/stripe is disposed only on a first side of the smoking article and the second band/strip is disposed only on a second side opposite the first side of the smoking article. However, it is emphasized in the Wanna et al disclosure that this, and other, illustrations in the reference are merely preferred examples, and that other geometric configurations could also be used without departing form the scope and spirit of the invention (see para. [0021],[0024]). Further, Monsalud, Jr. et al discloses a cigarette having controlled burn rate due to the placement of inner wrap strips (14) in the form of bands/stripes (containing burn control agent) on an inner surface of the outer wrap (12) that reduce the porosity of the overall wrapper and enable a low ignition propensity smoking article (see para. [0004],[0019]). As seen in the embodiment of Figs. 2-3, two such strips (14) are provided at opposite positions from one another when the outer wrap (12) is wrapped around the tobacco column (13). Further, as articulated in Monsalud, Jr. the strips may be shortened to not extend the full longitudinal length of the wrapper/smoking article (see para. [0015]). With this in mind, it would have been obvious to one having ordinary skill in the art to have been motivated by the teachings of Monsalud, Jr. et al and arranged the additive patterns of Wanna et al into stripes/bands positioned opposite (i.e., 180 degrees) from each other when wrapped around a tobacco column, as such pattern arrangement is known/taught in Monsalud, Jr as an effective one in which to achieve reduced ignition propensity - the goal of both inventions (corresponding to the claimed “discrete shapes, each of which extends over only a portion of the length, wherein at each of a plurality of longitudinal locations along the smoking article only first and second discrete shapes intersect a plane perpendicular to the longitudinal axis and wherein the first shape is disposed only on a first side of the smoking article and the second shape is disposed only on a second side opposite the first side of the smoking article”).
Hence, the modified Wanna et al and Monsalud, Jr wrapper meets the limitations of the above-referenced claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
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/DIONNE W. MAYES/Primary Examiner, Art Unit 1747