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 .
Status of the Claims
This office action is in response to Applicant’s amendments filed 07/27/2026.
Claims 17-20, 22-24, 26-31, and 33-35 are pending and are subject to this Office Action.
Claims 17, 20, 22, 26, 29 and 35 are amended.
Claims 21, 25 and 32 are cancelled.
Response to Amendment
The submission and approval of terminal disclaimer filed on 07/27/2026 overcomes the nonstatutory double patenting rejections of record. The double patenting rejections have been withdrawn.
The Examiner withdraws the objections to claims 17, 26 and 33 for informalities due to Applicant’s amendments to the claims filed 07/27/2026.
The Examiner notes that the 112 rejections of claims 25 and 32 are no longer applicable due to Applicant’s cancellation of the claims in the amendments filed 07/27/2026.
The Examiner withdraws the 112 rejection of claim 20 for improper dependency due to Applicant’s amendments to the claims filed 07/27/2026.
Response to Arguments
Applicant’s arguments, see pages 6-10, filed 07/27/2026, with respect to the 103 rejection of claim 17 have been fully considered and are persuasive. Claim 17 is amended to require a different base web permeability than previously presented. Prior art of record Sakurai does not teach that the base web of the wrapper has an inherent permeability greater than about 20 CU and less than about 60 CU, as newly required by the claim. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sherwood et al. (US 20130306082 A1) in view of Sakurai et al. (US 20210120867 A1).
The following is a modified rejection based on amendments to the claims.
Claim Interpretation
Regarding Claim 17, the claim recites the limitation “the base web having a permeability where coated with the reduced ignition composition of less than about 5 CU and having a diffusivity of less than 0.04 cm/s” on lines 10-11. While the claim does not recite that the diffusivity is of the base web where coated, paragraph [0072] of the instant specification teaches the diffusivity of the coated web. The specification does not teach a diffusivity of the base web alone. Thus, the recited diffusivity is interpreted to be the diffusivity of the coated web, rather than the base web alone.
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 17-20, 22-14, 26-31, and 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Sherwood et al. (US 20130306082 A1) in view of Sakurai et al. (US 20210120867 A1).
Regarding claim 17, Sherwood teaches a wrapper (wrapper 123; [0033]) comprising:
a base web (base web 140; [0035]),
the base web having an inherent permeability greater than about 20 CU and less than about 60 CU ([0046] teaches at least 20 CU. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious),
the base web having a first side and a second and opposite side ([0035] describes sides. Furthermore, any base web would be expected to have two opposite sides); and
a continuous coating (layer 126; [0039]) disposed on the first side of the base web,
the coating comprising a reduced ignition composition, the reduced ignition composition comprising a polymer material, a cellulose material, or mixtures thereof ([0039], [0062], [0075]),
the base web having a permeability where coated with the reduced ignition composition of less than about 5 CU ([0054] teaches 0-10 CU. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious) and having a diffusivity of less than 0.04 cm/s ([0055] teaches less than about 0.15 cm/s. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious),
the coating having a basis weight from about 0.5 gsm to about 10 gsm ([0077] teaches about 0.5 gam to about 3 gsm, which anticipates the claimed range).
Sherwood does not teach that the base web comprises a flame retardant filler.
Sakurai, directed to a wrapping paper for a non-combustible heated type smoking article (Abs, [0002], [0018]) that comprises a base paper (base web) comprising cellulosic fibers ([0029]) with an air permeability of 0 CU or more and 20 CU or less, preferably 15 CU or less ([0028],[0044]), teaches that calcium carbonate, which is a flame retardant filler, may be added in the base web in an amount less than about 24 wt.% ([0032] teaches greater than 5% and less than 50%. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious) to improve whiteness and opacity ([0032]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sherwood by adding a calcium carbonate filler in an amount less than about 24 wt.% as taught by Sakurai because both Sherwood and Sakurai are directed to a wrapper comprising a base web, Sakurai teaches that a base web may comprise a calcium carbonate filler to improve whiteness and opacity, and this involves applying a known teaching to a similar wrapper to yield predictable results.
The Examiner notes that while the wrapper of Sherwood is not explicitly defined for use with a heat not burn article, this is merely functional language. The wrapper taught by the prior art includes all claimed limitations and would thus be capable of such an application. The Examiner further notes that Sakurai teaches a similar wrapper applied to a heat not burn article, showing that this application was known in the art.
Regarding claim 18, Sherwood teaches that the reduced ignition composition comprises an alginate, a starch, or mixtures thereof ([0039], [0032], [0072-0075]).
Regarding claim 19, Sherwood teaches that the reduced ignition composition covers greater than about 80% of the surface area of the first side of the base web ([0051] teaches that material-free regions 127 comprise of about 4% to about 9% of the area, corresponding to a covered area of 91-96%, which anticipates the claimed range).
Regarding claim 20, Sakurai teaches that the base web contains the flame retardant filler in an amount from greater than about 10% by weight ([0032] teaches greater than 10%. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious).
Regarding claim 22, Sherwood teaches that the base web has a basis weight of from about 12 gsm to about 100 gsm (Table 1, [0046] teach 25 gsm, which anticipates the claimed range).
Regarding claim 23, Sherwood teaches that the wrapper is a single layer wrapper ([0039] teaches that the wrapper may have a single layer of coating 126, which is considered to be a single layer wrapper).
Regarding claim 24, Sherwood teaches that the wrapper includes a plurality of layers, the base web comprising one of the layers (([0039] teaches that the wrapper may have a multiple layers of coating 126 on top of base web 140, which is considered to be a multiple layer wrapper).
Regarding claim 26, Sherwood teaches a wrapper (wrapper 123; [0033]) comprising:
a base web (base web 140; [0035]),
the base web having a first side and a second and opposite side ([0035] describes sides. Furthermore, any base web would be expected to have two opposite sides),
the base web having an inherent permeability greater than about 20 CU and less than about 60 CU ([0046] teaches at least 20 CU. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious); and
a continuous coating (layer 126; [0039]) disposed on the first side of the base web,
the coating comprising a reduced ignition composition, the reduced ignition composition comprising a polymer material, a cellulose material, or mixtures thereof ([0039], [0062], [0075]),
the base web having a permeability where coated with the reduced ignition composition of less than about 5 CU ([0054] teaches 0-10 CU. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious) and having a diffusivity of less than 0.04 cm/s ([0055] teaches less than about 0.15 cm/s. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious),
the first side of the base web having a surface area and wherein the reduced ignition composition covers greater than about 90% of the surface area of the first side of the base web ([0051] teaches that material-free regions 127 comprise of about 4% to about 9% of the area, corresponding to a covered area of 91-96%, which anticipates the claimed range).
Sherwood does not teach that the base web comprises a flame retardant filler.
Sakurai, directed to a wrapping paper for a non-combustible heated type smoking article (Abs, [0002], [0018]) that comprises a base paper (base web) comprising cellulosic fibers ([0029]) with an air permeability of 0 CU or more and 20 CU or less, preferably 15 CU or less ([0028],[0044]), teaches that calcium carbonate, which is a flame retardant filler, may be added in the base web in an amount less than about 40 wt.% ([0032] teaches greater than 5% and less than 50%. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious) to improve whiteness and opacity ([0032]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sherwood by adding a calcium carbonate filler in an amount less than about 40 wt.% as taught by Sakurai because both Sherwood and Sakurai are directed to a wrapper comprising a base web, Sakurai teaches that a base web may comprise a calcium carbonate filler to improve whiteness and opacity, and this involves applying a known teaching to a similar wrapper to yield predictable results.
The Examiner notes that while the wrapper of Sherwood is not explicitly defined for use with a heat not burn article, this is merely functional language. The wrapper taught by the prior art includes all claimed limitations and would thus be capable of such an application. The Examiner further notes that Sakurai teaches a similar wrapper applied to a heat not burn article, showing that this application was known in the art.
Regarding claim 27, Sherwood teaches that the reduced ignition composition comprises an alginate, a starch, or mixtures thereof ([0039], [0032], [0072-0075]).
Regarding claim 28, Sakurai teaches that the base web contains the flame retardant filler in an amount from about 10% to about 4-% by weight ([0032] teaches greater than 10%. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious).
Regarding claim 29, Sherwood teaches that the base web has a basis weight of from about 12 gsm to about 100 gsm (Table 1, [0046] teach 25 gsm, which anticipates the claimed range).
Regarding claim 30, Sherwood teaches that the wrapper is a single layer wrapper ([0039] teaches that the wrapper may have a single layer of coating 126, which is considered to be a single layer wrapper).
Regarding claim 31, Sherwood teaches that the wrapper includes a plurality of layers, the base web comprising one of the layers (([0039] teaches that the wrapper may have a multiple layers of coating 126 on top of base web 140, which is considered to be a multiple layer wrapper).
Regarding claim 33, Sherwood teaches a wrapper (wrapper 123; [0033]) comprising:
a plurality of layers, the plurality of layers comprising an outer layer (layer 126 may be applied to either or both sides of base web 140; [0035], [0039]) and an inner layer (base web 140; [0035]),
the inner layer comprising a base web (base web 140; [0035]),
the base web having an inherent permeability greater than about 20 CU and less than about 60 CU ([0046] teaches at least 20 CU. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious),
the base web having a first side and a second and opposite side ([0035] describes sides. Furthermore, any base web would be expected to have two opposite sides); and
a continuous coating (layer 126, which may comprise multiple layers; [0039]) disposed on the first side of the base web,
the coating comprising a reduced ignition composition, the reduced ignition composition comprising a polymer material, a cellulose material, or mixtures thereof ([0039], [0062], [0075]),
the base web having a permeability where coated with the reduced ignition composition of less than about 5 CU ([0054] teaches 0-10 CU. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious) and having a diffusivity of less than 0.04 cm/s ([0055] teaches less than about 0.15 cm/s. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious).
Sherwood does not teach that the base web comprises a flame retardant filler.
Sakurai, directed to a wrapping paper for a non-combustible heated type smoking article (Abs, [0002], [0018]) that comprises a base paper (base web) comprising cellulosic fibers ([0029]) with an air permeability of 0 CU or more and 20 CU or less, preferably 15 CU or less ([0028],[0044]), teaches that calcium carbonate, which is a flame retardant filler, may be added in the base web in an amount less than about 40 wt.% ([0032] teaches greater than 5% and less than 50%. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious) to improve whiteness and opacity ([0032]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sherwood by adding a calcium carbonate filler in an amount less than about 40 wt.% as taught by Sakurai because both Sherwood and Sakurai are directed to a wrapper comprising a base web, Sakurai teaches that a base web may comprise a calcium carbonate filler to improve whiteness and opacity, and this involves applying a known teaching to a similar wrapper to yield predictable results.
The Examiner notes that while the wrapper of Sherwood is not explicitly defined for use with a heat not burn article, this is merely functional language. The wrapper taught by the prior art includes all claimed limitations and would thus be capable of such an application. The Examiner further notes that Sakurai teaches a similar wrapper applied to a heat not burn article, showing that this application was known in the art.
Regarding claim 34, Sherwood teaches that the reduced ignition composition comprises an alginate, a starch, or mixtures thereof ([0039], [0032], [0072-0075]).
Regarding claim 35, Sherwood teaches that the base web has a basis weight of from about 12 gsm to about 100 gsm (Table 1, [0046] teach 25 gsm, which anticipates the claimed range).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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