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 without traverse of group I in the reply filed on 12/31/2025 is acknowledged.
Claims 9-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/31/2025.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ulfstedt et al. (US 6200644).
Regarding claim 1, Ulfstedt discloses paperboard having a pigment coated SBS paperboard, i.e. before pigment coating, the SBS paperboard would be a uncoated paperboard, having basis weight 235 gsm and thickness of 314 microns (col. 11, example 1).
The recitation in the claims that the paper is “for controlling moisture in a smoking article” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Ulfstedt discloses paper as presently claimed, it is clear that the paper of Ulfstedt would be capable of performing the intended use, i.e. for controlling moisture in a smoking article, presently claimed as required in the above cited portion of the MPEP.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goto et al. (US 2008/0081274).
Regarding claim 1, Goto discloses an image recording material comprising a raw paper, i.e. paper comprising uncoated paper, (0016, 0133) having a basis weight of 50 gsm to 250 gsm and a thickness of 100 microns to 300 microns (0133).
In light of the overlap between the claimed paper and the paper disclosed by Goto, it would have been obvious to one of ordinary skill in the art to use a paper that is both disclosed by Goto and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
The recitation in the claims that the paper is “for controlling moisture in a smoking article” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Goto discloses paper as presently claimed, it is clear that the paper of Goto would be capable of performing the intended use, i.e. for controlling moisture in a smoking article, presently claimed as required in the above cited portion of the MPEP.
Regarding claim 6, Goto discloses the paper of claim 1, wherein Goto discloses the paper having roughness of 1 micron or less (0270, 421).
Regarding claim 7, Goto discloses the paper of claim 1, wherein Goto discloses the paper having high gloss, i.e. 50% or greater, (0409, 0532-0535, table 8).
Regarding claim 8, Goto discloses the paper of claim 1.
However, the recitation in the claims that the paper is “for controlling moisture in a smoking article is used as a smoking article packaging” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Goto discloses paper as presently claimed, it is clear that the paper of Goto would be capable of performing the intended use, i.e. for controlling moisture in a smoking article is used as a smoking article packaging, presently claimed as required in the above cited portion of the MPEP.
Regarding claims 2-5, Goto discloses the paper of claim 1, wherein given that Goto discloses basis weight, thickness, roughness and gloss of the paper the same as claimed in present claims, it is clear that the paper of Goto would inherently have the same properties as claimed in present claims, absent evidence to contrary.
Claim(s) 1-2, 5 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrd, JR. et al. (US 2016/0208440).
Regarding claim 1, Byrd discloses a paper for tobacco derived product (abstract, 0001) wherein the paper comprising a fibrous material, i.e. paper comprising uncoated paper, and having a basis weight from 5 to 450 g/m2 and a thickness of 0.01 to 200 mils (0.254 to 5080 microns) (abstract, 0009, 0011).
In light of the overlap between the claimed paper and the paper disclosed by Byrd, it would have been obvious to one of ordinary skill in the art to use a paper that is both disclosed by Byrd and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
The recitation in the claims that the paper is “for controlling moisture in a smoking article” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Byrd discloses paper as presently claimed, it is clear that the paper of Byrd would be capable of performing the intended use, i.e. for controlling moisture in a smoking article, presently claimed as required in the above cited portion of the MPEP.
Regarding claim 2, Byrd discloses the paper of claim 1 wherein the paper has moisture content of about 5 to about 10% (0070).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 5, Byrd discloses the paper of claim 1 wherein the paper has Taber Stiffness Value of 0.1 to 95 Tabor Stiffness units (0.1 to 95 gf.cm) (0080). It is noted that Byrd does not disclose the measured stiffness value in machine direction and cross direction. However, given that the Byrd discloses a broad range of stiffness value and the same paper as presently claimed, it is clear that the paper of Byrd would have the same stiffness value in machine direction and cross direction.
Regarding claim 8, Byrd discloses the paper of claim 1 wherein the paper is used in smoking article packaging (0039, 0070).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrd, JR. et al. (US 2016/0208440) in view of Mitchell et al. (US 2020/0063370).
Regarding claim 3, Byrd discloses the paper of claim 1 but fails to disclose Cobb size value as presently claim.
Mitchell discloses paper for tobacco wrap (0632) wherein the paper has good water absorbency with Cobb size of at least 315 g/m2 (315 cc/m2) to obtain good absorbency paper (0599).
It would have been obvious to one of ordinary skill in the art to use the Cobb absorbency value of Mitchell in the paper to Byrd to obtain good absorbency paper.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787