Detailed Office Action
The communication dated 3/26/2026 has been entered and fully considered.
Claim 22 has been canceled. Claims 1-21 are pending.
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 Group I in the reply filed on 3/26/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Interpretation
The examiner interprets air permeability to be measured as ISO 2965:2009 and opacity as measured by ISO 2471:2008 in light of the instant specification.
As for claim 3 and 20, the applicant claims unrefined cellulose fibers. On the onset this is a product by process limitation that is better described by the actual structural claim of degrees SR. However, unlike the EPO sister application the Examiner does not require this change (breadth is not lack of clarity).
In claims 2 and 20 the applicant refers to biobased wax or oil. The Examiner interprets biobased to refer to both the wax and the oil “bio-based wax or bio-based oil”
Allowable Subject Matter
Claims 2, 15-17, 19, and 21 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Double Patenting
Claim 20 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of copending Application No. 18/676,867(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a sheet with the same gsm and a transparency coating made of biobased oil or biobased wax.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 20 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 14 of copending Application No. 18/676,850(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a sheet with the same gsm and a transparency coating made of biobased oil or biobased wax.
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.
Claim 2, 7, 8, 15-17, and 19-21 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.
As for claims 2 and 20, the applicant claims “bio-based”. It is not clear the scope of the term bio-based.
Claims 15-17 and 19 depend from claim 2 and are similarly rejected.
Claim 21 depends from claim 20 and is similarly rejected.
Regarding claims 7 and 8, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4, 9, 11, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP2818060 SAKURAI, hereinafter SAKURAI.
As for claims 1, 4, 11, 13, and 14, SAKURAI discloses a cigarette paper [abstract] that has a basis weight of 27 gsm and an opacity of 40 which falls within the claimed ranges [Table 3, second material paper]. SAKURAI discloses the paper has an air permeability with Coresta units of 10,000 CU (cm3/min/cm2) which falls within the claimed ranges [0069].
As for claim 9, SAKURAI discloses lyocell which is a regenerated cellulose [Table 3, second material paper].
Claim Rejections - 35 USC § 103
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 12 and 18 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over EP2818060 SAKURAI, hereinafter SAKURAI.
As for claim 12, SAKURAI teaches the features as per supra. As SAKURAI discloses substantially the same paper it would be expected to have substantially the same properties. Alternatively, it would be obvious to the person of ordinary skill in the art to add common papermaking chemical to increase water resistance including internal and external sizes.
As for claim 12, SAKURAI teaches the features as per supra. The Examiner interprets an opacity of 40 as meeting “about 32” because of the about. SAKURAI additionally discloses the range of 20-40% opacity [0035] which overlaps with sufficient specificity to the claimed range or in the alternative makes a prima facie case of obviousness.
Claims 3, 5, 6-8, and 10 under 35 U.S.C. 103 as obvious over EP2818060 SAKURAI, hereinafter SAKURAI, in view of U.S. 2024/0122231 ZITTURI et al., hereinafter ZITTURI.
As for claims 3 and 5-7, ZITTURI discloses making paper for cigarettes [abstract]. ZITURI discloses refining is a result effective variable that effects Coresta and strength [0013]. The mixing ratios of unrefined long fiber pulp, unrefined short fiber pulp, refined long fiber, and refined short fiber pulp all affect the Coresta of the paper [0016]. At the time of the invention it would be obvious to the person of ordinary skill in the art to optimize the amount of unrefined fibers present to achieve the desired Coresta of SAKURAI through routine experimentation. The person of ordinary skill in the art would expect that by excluding refining there would be less fines and therefore higher Coresta. SAKURAI discloses a very high Coresta of 10,0000 thereby requiring a much higher amount of unrefined fibers. An unrefined pulp will have a low SR (ZITTURI shows that a lightly refined pulp has an SR of 20 to 60 therefore unrefined has less claim 5).
As for claims 8 and 10, SAKURAI discloses wood pulp and regenerated cellulose as per supra but does not disclose leaf fibers. ZITTURI discloses making paper for cigarettes [abstract]. ZITTURI discloses that leaf fibers [0013 annual plants incudes leaf fibers and bast fibers] can be used in addition to wood pulp and regenerated cellulose. At the time of the invention it would be obvious to the person of ordinary skill in the art to combine/substitute one known pulp (leaf/bast non-wood fibers) for another known pulp (wood/regenerated cellulose) intended for the same purpose of making cigarette paper [MPEP 2144.06]
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 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, 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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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
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