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 with traverse of Species A, Claims 17-20 and 22-25 in the reply filed on 3/16/2026 is acknowledged. The traversal is on the ground(s) that
Claims 17, 26 and 33 overlap in scope.
the stated species have not been established as being patentably distinct.
no serious search or examination burden that has been established.
The traversal is convincing because, during examination, the limitations of all species were able to be searched without undue burden. The restriction requirement between Species A, B and C, as set forth in the Office action mailed on 1/14/2026, is hereby withdrawn and all claims are fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Claim 17 is objected to because of the following informalities:
In line 5 of Claim 17, the text “in amount” should be amended to read “in an amount.”.
In line 4 of Claim 26, the text “in amount” should be amended to read “in an amount.”
In line 5 of Claim 33, the text “in amount” should be amended to read “in an amount.”.
Appropriate correction is required.
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 25 and 32 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 written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 25 and 32 each recite the limitations “the wrapper comprises an aerosol generating material, the aerosol generating material comprising a tobacco.”
The published Specification describes the relationship between the wrapper and aerosol generating material as follows:
“The heat but not burn sticks, similar to conventional smoking articles, contain a column of an aerosol generating material surrounded by a wrapper.” [0004]
“the wrapper can be constructed so as to not adversely interfere with the aerosol producing characteristics of an aerosol generating material contained within the heat but not burn stick.” [0008]
“The heat but not burn stick includes a column of an aerosol generating material. A wrapper as described above surrounds the column of the aerosol generating material.” [0020]
“the heat but not burn stick 14 can further include a wrapper 26 that at least covers the aerosol generating material 22.” [0036]
“the heat but not burn stick 114 includes a column of an aerosol generating material 122 that is surrounded by a wrapper” [0037]
“The aerosol generating material 22 is surrounded by a wrapper 26 made in accordance with the present disclosure. “ [0038]
“In accordance with the present disclosure, the aerosol generating material is surrounded by a wrapper.” [0040]
The Specification clearly discloses a heat but not burn stick comprising a column of an aerosol generating material that is surrounded by a wrapper. Nowhere is it stated or suggested that the wrapper comprises an aerosol generating material, the aerosol generating material comprising a tobacco. No examples are presented wherein the wrapper comprises an aerosol generating material, the aerosol generating material comprising a tobacco. One of ordinary skill in the art of the Specification would not find that the disclosed invention would or could comprise a wrapper that comprises an aerosol generating material, the aerosol generating material comprising a tobacco.
The instant application is a CON of Application no. 17/224,783, now U.S. Patent No. 11,998,040, and which draws priority to U.S. Provisional application 63/006,576. U.S.Patent No. 11,998,040 and U.S. Provisional application 63/006,576 disclose only a heat but not burn stick 114 that includes a column of an aerosol generating material 122 that is surrounded by a wrapper. Neither U.S.Patent No. 11,998,040 nor U.S. Provisional application 63/006,576 discloses or suggests a heat but not burn stick or any smoking article wherein the wrapper comprises an aerosol generating material, the aerosol generating material comprising a tobacco.
Claims 25 and 32 therefore recite subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 20 recites the limitation “the base web contains the flame retardant filler in an amount from about 10% to about 40% by weight.” However, Claim 20 depends from Claim 17, which requires ”the flame retardant filler being present in the base web in amount less than about 24 wt.%.”
.Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
International Search Report
SCHWEITZER MAUDUIT INT INC (WO 2009/006570 A2 and WO 02/37991 A1) were cited as “X” and/or “Y” references in the International Search Report for International Application PCT/IB2021/052905, to which the instant application is related but priority is not claimed.
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 17-20, 22-24, 26-31 and 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al (US 2021/0120867) in view of Poget et al (US 2013/0146075). US 2021/0120867 is a continuation of international Application PCT/JP2018/025096, filed 2/7/2018, designated the U.S. and published as WO-2020/008510).
Claims 17-20: Sakurai et al discloses a wrapping paper for a non-combustible heated type smoking article that can be used in an electrically heated system (reads on a heat but not burn stick) (Abs, [0002], [0018]). The wrapping paper comprises a base paper (base web) comprising cellulosic fibers [0029] combined in some embodiments with a filler that comprises calcium carbonate [0031], which is a claimed flame retardant filler. In disclosed embodiments, the filler content in the wrapping paper is 5 wt% or more, 10 wt% or more [0032], which overlays the claimed range. The wrapping paper has an air permeability of 0 CU or more and 20 CU or less, preferably 15 CU or less ([0028],[0044]), which overlays the claimed range.
The base web obviously has a first side and a second and opposite side and each side has a surface area. The inventive wrapper suppresses the occurrence of stains from substances contained within the article ([0006]-[0007],[0017]-[0018]). Absent convincing evidence of unexpected results commensurate in scope with the claims, selecting and incorporating calcium carbonate as a filler in the wrapping paper in an amount in the claimed range would have been obvious to one of ordinary skill in the art with a reasonable expectation of success in forming a suitable wrapping paper.
Sakurai et al does not disclose a coating disposed on the first side of the base web, the coating comprising a reduced ignition composition.
Poget et al discloses a heat but not burn smoking article comprising a sheet material as a wrapper that is resistant to the heat generated by a combustible or non-combustible heat source. The sheet material comprises a fibrous layer formed of cellulosic fibers (cellulosic web) and an inorganic filler such as calcium carbonate (Abs, [0009],[0011],[0016],[0019]). The sheet material has a coating on at least one side (inner side or outer side) of the fibrous layer [0025], thus the fibrous layer has at least a first side and a second side, the coating layer partially or completely covering the fibrous layer. Preferably, where a single coating layer is provided the weight of the coating layer is between 5 and 75 grams per square meter (gsm) and where both inner and outer coating layers are provided, the weight of each coating layer at least 10 grams per square meter [0031]. The disclosed ranges overlay the claimed range.
Preferably, the coating layer(s) each comprise a binder material such as a starch ([0027]-[0028]), which reads on a polymer material, thus the coating comprises a reduced ignition composition as claimed. An inner side coating insulates the rest of the sheet material from heat generated by the heat source, while an outer side coating reduces discoloration and other visible changes of the outer coating upon heating. Poget et al also teaches that the heat resistant sheet material lowers the ignition propensity of the smoking article [0041].
It would have been obvious to one of ordinary skill in the art to include a coating as disclosed by Poget et al in one or both sides of the base web of Sakurai et al to obtain the benefits disclosed by Poget et al. The base web of Sakurai obviously has a surface area. Since the coating of Poget et al covers completely covers the fibrous layer in some embodiments, it would further have been obvious that the coating is continuous and covers at least the claimed amount of the surface area of the base web. Since the coating comprises a reduced ignition composition as claimed, one of ordinary skill in the art would have found it obvious to obtain the claimed permeability and diffusivity where coated with the reduced ignition composition because, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “Products of identical chemical composition cannot have mutually exclusive properties.”
Claim 22: Sakurai et al discloses that the wrapping paper has an air permeability 20 CU or less ([0018],[0028],[0044]) and a basis weight of 35 gsm or more, preferably 40 gsm or more and generally 65 gsm or less ([0018],[0028],[0038]). The disclosed air permeability and basis weight overlay the claimed ranges for the base web or, at least, taking into account the weight of the coating composition, it would have been obvious to one of ordinary skill in the art to form a base web having a claimed inherent air permeability and basis weight
Claim 23: The wrapping paper of Sakurai et al in view of Poget et al comprises one layer.
Claim 24: Sakirai et al discloses that the sheet material is suitable for an outer wrapper 12 and a tipping paper 13, which generally overlays a portion of the outer wrapper 12. In an embodiment, both the outer wrapper 12 and the tipping paper 13 comprise a plurality of layers (outer wrapper and tipping paper) of the inventive wrapping paper, each comprising the base web ([0060]-[0061], Fig. 1).
Claims 26-28: The limitations of Claims 26-28 have been discussed above with regard to Claims 17-20 and are not repeated.
Claim 29: The limitations of Claim 29 have been discussed above with regard to Claim 22 and are not repeated.
Claim 30: The limitations of Claim 30 have been discussed above with regard to Claim 23 and are not repeated.
Claim 31: The limitations of Claim 31 have been discussed above with regard to Claim 24 and are not repeated.
Claims 33 and 34: The limitations of Claims 33 and 34 have been discussed above with regard to Claims 17-20 and are not repeated.
Claim 35 The limitations of Claim 35 have been discussed above with regard to Claim 22 and are not repeated.
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.
Claims17-20, 26-28 and 33-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-20 of U.S. Patent No. 11,998,040. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 17, 19 and 20 of the patent recite limitations overlaying the limitations of instant Claims 17, 26 and 33, although in different combinations. Claims 18-20 recite limitations overlaying the limitations of instant Claims 18-20,27-28 and 33-34. It would have been obvious to one of ordinary skill in the art to rearrange the limitations of the claims of the patent and obtain the limitations of the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS R CORDRAY whose telephone number is (571)272-8244. The examiner can normally be reached Monday-Friday 8 AM-5 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS R CORDRAY/Primary Examiner, Art Unit 1748
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