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 .
Election/Restrictions
Applicant’s election of Species-a (Figure 4A) in the reply filed on 4-24-26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement (i.e. applicant did not indicate if the election was made with traverse or made without travers), the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 1 and 3-16 are readable on the elected species. Species (b), (c), (d) and (e) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “21” has been used to designate both a control unit and tobacco filler. Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the steps of claim 10 and 11 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show rolling a mixture into a rolled article and imparting a corrugated shape to the rolled article while cutting the rolled article into a strip – by pressing a rotary roller cutter against the rolled article as described in the specification and as claimed in claims 10 and 11. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
The subject matter of this application (i.e. that of claims 10 and 11) admits of illustration by a designated drawing or drawings to facilitate understanding of the invention in claims 10 and 11. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. 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).
Specification
The disclosure is objected to under 37 CFR 1.71, as being incomprehensible (with respect to claims 10 and 11) as to preclude a reasonable search of the prior art by the examiner. The features of claims 10-11 and the specification are not shown to have any connection to the drawings by reference number etc. such that the examiner cannot reasonably search the prior art (i.e. corrugating a rolled article and cutting the rolled article into a strip by pressing a rotary roller cutter against the rolled article. Applicant is required to submit an amendment which clarifies the disclosure so that the examiner may make a proper comparison of the invention with the prior art for an invention. Applicant should be careful not to introduce any new matter into the disclosure (i.e. matter which is not supported by the disclosure as originally filed).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are: heating device in claim 9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 10-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The features of claims 10-11 and the specification are not shown to have any connection to the drawings by reference numbers etc. such that the examiner cannot determine the invention. The claims recite corrugating a rolled article and cutting the rolled article into a strip by pressing a rotary roller cutter against the rolled article. However, the specification does not describe or explain how a rolled article itself is corrugated and how the rolled article itself is cut as claimed. Also, structures claimed and discussed in the specification are not illustrated in the drawings such that one skilled in the art cannot determine these process steps. The specification speak in generalities with respect to the method of claims 10 and 11 – lacking a working example with respect to the method.
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 10-11 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 10 is considered to be indefinite in that a definition (or criteria etc.) of when the fructan is needed has not been defined (or provided etc.) in the claim and/or the specification such that one skilled in the art cannot determine the scope of the claim.
Claims 10-11 are considered to be indefinite in that it the claims do not particularly point out corrugated a rolled article itself and cutting the rolled article itself into a strip.
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.
Claims 1, 3, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN101999751 (A)) in view of Cooley (US 1,104,779).
Claims 1 and 3: Huang teaches a cigarette having a tobacco sheet (para6 para24) (Note: “for a non-combustion heating-type flavor inhaler” refers to an intended use of the claimed tobacco sheet and is not considered to provide a structural and/or product limitation to the claimed tobacco sheet) comprising:
●a tobacco raw material (tobacco dust, stems, leaf fragments, and/or leaves) (para6)
●a fructan (burdock inulin fructan which is also a fructo-oligosaccharide) (para21
paras38-39).
Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
Claim 1: Huang does not teach that the cross-section of the tobacco sheet in the thickness direction has a corrugated shape.
Cooley teaches a cigar having a tobacco sheet comprising a tobacco raw material (tobacco leaves). The cross-section of the tobacco sheet in a thickness direction has a corrugated shape (waves) (pg2 col1 Lns13-29). Corrugations provide that the tobacco sheet burns more slowly and more evenly (pg2 col2 Lns57-76).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Huang that the cross-section of the tobacco sheet in the thickness direction has a corrugated shape in that Cooley teaches, in the same art, that such provides that a tobacco sheet burns more slowly and more evenly.
Claim 6: with respect to the claimed length and width ranges of the tobacco sheet to which one skilled in the art would consider providing is a function of, among other variables, the overall cigarette size, the thickness and amplitude and period of the tobacco sheet, and the operating parameters of the cigarette. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the length and width ranges of the tobacco sheet to which one skilled in the art would consider providing based on known variables, such as those listed for example; and thus, the claimed length and width ranges of the tobacco sheet cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Claims 4-9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN101999751 (A)) in view of Cooley (US 1,104,779), as applied to claims 1, 3, and 16 above, and further in view of Ishikawa (WO 2020202254 (A1)).
Claims 4-5: Huang does not teach that the tobacco sheet further comprises a saturated fatty acid-based additive, wherein the additive is selected from the group consisting of a saturated fatty acid having a molar mass of 200 g/mol to 350 g/mol (as a single compound), an ester of the saturated fatty acid (as a single compound), and a combination thereof, and a content of the additive is 0.01% to 3% by mass based on dry matter mass of the sheet.
Ishikawa teaches a flavoring for a tobacco sheet – comprising at least palmitic acid (a saturated fatty acid-based additive; a saturated fatty acid having a molar mass of approximately 256 g/mol – which falls within the claimed range of 200 g/mol to 350 g/mol as a single compound) in an amount of 10,000 to 50,000 ppm (0.01% to 0.05% – which range falls within the claimed range of 0.01% to 3%) based on the amount of tobacco (abstract; pg3 paras5-6; pg5 para4; pg6 para2).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Huang that the tobacco sheet comprise palmitic acid (a saturated fatty acid-based additive; a saturated fatty acid having a molar mass of approximately 256 g/mol – which falls within the claimed range of 200 g/mol to 350 g/mol as a single compound) in an amount of 10,000 to 50,000 ppm (0.01% to 0.05% – which range falls within the claimed range of 0.01% to 3%) in that Ishikawa teaches, in the same art, that palmitic acid (present in the disclosed percentage) adds flavor to the tobacco which necessarily enhances the smoking experience.
Claims 6-7: the above discussion of Huang applies herein. In Huang each tobacco sheet is considered a tobacco-containing segment and is a filler of the cigarette (para2 paras4-6 para9). Huang does not teach lignin and hemicellulose (paper; an aerosol-generating agent), as part of the segments. Note that tobacco is an aerosol-generating agent also.
It is conventional and well-known in the art that tobacco sheets contain lignin and hemicellulose (paper; aerosol-generating agent) as part of a tobacco filler material – as illustrated by Ishikawa (pg2 Lns3-6). At a proper smoking temperature the lignin and hemicellulose help to improve the tobacco flavor by way of low decomposition of the lignin and hemicellulose (pg2 Lns11-34).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Huang the presence of lignin and hemicellulose (paper; aerosol-generating elements) in the tobacco segments in that such is conventional and well-known in the art – as illustrated by Ishikawa – and Ishikawa indicates that at a proper smoking temperature the lignin and hemicellulose help to improve the tobacco flavor by way of low decomposition of the lignin and hemicellulose.
Claim 6: with respect to the claimed amount range of paper in the tobacco sheet, this amount of paper in the tobacco sheet to which one skilled in the art would consider providing is a function of, among other variables, the temperature at which the tobacco is smoked, the proportion of other materials in the tobacco sheet, the desired degree of flavor, and desired degree of filtration. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the amount range of paper in the tobacco sheet to which one skilled in the art would consider providing based on known variables, such as those listed for example; and thus, the claimed amount of paper in the tobacco sheet cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Claims 8-9 and 12: the above discussion of Huang applies herein. Huang does not teach a non-combustion heating-type flavor inhaler system comprising a non-combustion heating-type inhaler having a heating device configured to heat the tobacco sheets (segments).
Non-combustion heating-type flavor inhaler systems comprising non-combustion heating-type inhalers having a heating device configured to heat tobacco sheets are a conventional and well-known alternative to cigarettes, as illustrated in Ishikawa, for obtaining nicotine (abstract; pg1 para2; pg9 paras4-5).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Huang a non-combustion heating-type inhaler system comprising a non-combustion heating-type flavor inhaler having a heating device configured to heat tobacco sheets (segments) in that such is conventional and well-known alternative to cigarettes, as illustrated in Ishikawa, for containing nicoti
Claim 9: with respect to the claimed heating device, because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches a structure for the heating device to perform the claimed function. Huang teaches a structure for the heating device to perform the same claimed function. Huang is thus considered to meet this limitation of the claim.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN101999751 (A)) in view of Cooley (US 1,104,779), as applied to claims 1, 3, and 16 above, and further in view of Pijnenburg (WO 2016/023965 (A1)).
Claim 13: Huang does not teach that the wave has a period of 0.1 mm to 10.0 mm.
Claim 14: Huang does not teach that the wave has a height of 0.1 mm to 5.0 mm.
Pijnenburg teaches a cigarette having a tobacco sheet comprising a tobacco raw material (tobacco shreds, strands, and/or strips). The cross-section of the tobacco sheet in a thickness direction has a corrugated shape (waves) (abstract; pg1: para2 para6; pg4 para2). Pijnenburg teaches that a tobacco sheet having the corrugations is a well-known and conventional alternative to a flat tobacco sheet (pg2 para3). Pijnenburg teaches that the wave period is 1 mm which falls within the claimed range of 0.1 mm to 10.0 mm (pg13 para4). Pijnenburg teaches that the wave height (amplitude) is 50 to 300 micrometer (0.05 mm to 0.3 mm) which falls within the claimed range of 0.1 mm to 5.0 mm (pg4 para2).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Huang that the wave has a period of 1 mm (which falls within the claimed range of 0.1 mm to 10.0 mm) and that the wave has a height of 0.05 mm to 0.3 mm (which falls within the claimed range of 0.1 mm to 5 mm) in that Pijnenburg the wave-period and the wave-height range are both well-known and conventional wave-periods and wave-height ranges for a corrugated tobacco sheet where it is obvious to replace one tobacco sheet wave-period and wave-height range (that of Huang – not specifically disclosed) with another art recognized alternative tobacco sheet wave-period and wave-height range (that of Pijnenburg) where acceptable use has been demonstrated.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN101999751 (A)) in view of Cooley (US 1,104,779), as applied to claims 1, 3, and 16 above, and further in view of Liu (CN 112369672 (A)).
Claim 13: Huang does not teach that the tobacco sheet has a thickness of 100 µm to 1,000 µm.
Liu teaches a cigarette having a tobacco sheet comprising a tobacco raw material (tobacco shreds). The cross-section of the tobacco sheet in the thickness direction has a thickness of 0.3 mm to 3 mm (300 µm to 3,000 µm) (para9). The thickness range falls overlaps claimed range of 100 µm to 1,000 µm.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Huang that the tobacco sheet has a thickness of 0.3 mm to 3 mm (300 µm to 3,000 µm) (which overlaps the claimed range) in that Liu teaches the height range is a well-known and conventional height range for a corrugated tobacco sheet where it is obvious to replace one tobacco sheet thickness range (that of Huang – not specifically disclosed) with another art recognized alternative tobacco sheet thickness range (that of Liu) where acceptable use has been demonstrated.
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.
Claims 1, 3-9, and 12 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/493,443 in view of Cooley (US 1,104,779).
Claims 1-10 of the copending application teaches the instant claimed limitations (claims 1, 3-9, and 12) – except that the cross-section of the tobacco sheet in the thickness direction has a corrugated shape.
Cooley teaches a cigar having a tobacco sheet comprising a tobacco raw material (tobacco leaves). The cross-section of the tobacco sheet in a thickness direction has a corrugated shape (waves) (pg2 col1 Lns13-29). Corrugations provide that the tobacco sheet burns more slowly and more evenly (pg2 col2 Lns57-76).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in claims 1-10 of the copending application that the cross-section of the tobacco sheet in the thickness direction has a corrugated shape in that Cooley teaches, in the same art, that such provides that a tobacco sheet burns more slowly and more evenly.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3-9, and 12 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-9, 12, 14-16, and 18-21 of copending Application No. 18/493,147 in view of Cooley (US 1,104,779).
Claims 1, 3-9, 12, 14-16, and 18-21 of the copending application teaches the instant claimed limitations (claims 1, 3-9, and 12) – except that the cross-section of the tobacco sheet in the thickness direction has a corrugated shape.
Cooley teaches a cigar having a tobacco sheet comprising a tobacco raw material (tobacco leaves). The cross-section of the tobacco sheet in a thickness direction has a corrugated shape (waves) (pg2 col1 Lns13-29). Corrugations provide that the tobacco sheet burns more slowly and more evenly (pg2 col2 Lns57-76).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in claims 1, 3-9, 12, 14-16, and 18-21 of the copending application that the cross-section of the tobacco sheet in the thickness direction has a corrugated shape in that Cooley teaches, in the same art, that such provides that a tobacco sheet burns more slowly and more evenly.
This is a provisional nonstatutory double patenting rejection.
Prior Art of Record
The following prior art, though not relied upon, is made of record. Yang teaches a levan branched fructan as a cigarette tobacco humectant.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
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/LINDA L GRAY/Primary Examiner, Art Unit 1745
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