DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
International Search Report
Beven et al (US 6095152) was cited as an “X” reference in the International Search Report for International Application PCT/ IB2011/001147, to which the instant application claims priority. Beven et al is used in the rejections herein.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 2-13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beven et al (US 6095152) in view of Vanderbilt Report (Filler Minerals Reference A Guide to Filler Properties and Uses, hereinafter Vanderbilt).
Claims 2-9: Beven et al discloses a smoking article comprising a substantially non-combustible wrapper (reads on heat-resistant sheet material) that enwraps a combustible fuel source and an aerosol-generator (Abs; col 3, lines 13-21). The wrapper comprises in some embodiments at least about 65% by weight of the wrapper of particulate inorganic filler material such as chalk (calcium carbonate), or other low-density non-combustible filler materials known to those skilled in the art, a binder and cellulose fibers (col 3, lines 22-29; col 4, lines 4-33), thus the wrapper comprises a fibrous layer including the inorganic filler material. The wrapper may be formed by coating a slurry about a rotating mandrel or by casting as a sheet on a drum or band caster, or extruded as a sheet material (col 5, lines 39-45), thus is a sheet material.
Since the wrapper comprises in some embodiments at least about 65% by weight of the wrapper of particulate inorganic filler material, the amount of cellulosic fiber must be less than about 35% by weight of the wrapper.
Beven et al does not disclose the particle size of the filler or that the filler material includes a plurality of spherical-shaped particles.
Vanderbilt teaches that typical inorganic fillers used in paper have median particle sizes from 0.2 to 40 mm (p 2, Table).
The art of Beven et al, Vanderbilt and the instant invention is analogous as pertaining to fillers used in paper. Absent convincing evidence of unexpected results commensurate in scope with the claims, it would have been obvious to one of ordinary skill in the art to select and use a filler particle size in the claimed range in the product of Beven et al in view of Vanderbilt as a typical filler particle size used in the art.
Regarding the shape of the filler particles, the courts have held that a
change in the shape is a design consideration selectable by one of ordinary skill in the art absent persuasive evidence that the shape is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). No evidence has been provided that spherical-shaped filler particles provide unexpected results.
Claims 10-12: Beven discloses that in some embodiments, the binder is an organic binder, which may be present in an amount of about 5% or less by weight of the wrapper (col 4, lines 31-33), which significantly overlays the claimed ranges.
Claim 13: Disclosed binders include guar gum, xanthan gum, starches, etc. (col 4, lines 48-54), which are claimed binders. Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to select and include a claimed binder in the non-combustible wrapper of Beven et al with a reasonable expectation of success in obtaining a suitable wrapper.
Claims 14-16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beven et al in view of Vanderbilt and further in view of Tadakoro et al (US 7122098).
The disclosures of Beven et al in view of Vanderbilt are used as above. Beven et al in view of Vanderbilt does not disclose adding a processing aid such as a flocculant or coagulant. Beven et al does disclose sodium.carboxymethyl cellulose as a suitable binder (col 4, lines 33-35).
Tadakoro et al discloses that starch and carboxymethyl cellulose are known flocculants in the papermaking art {col 11, lines 6-8). The flocculant is used in an amount from 0.001% to 5% by weight of the pulp (col 11, lines 9-11), which overlays the claimed range. . It would have been obvious to one of ordinary skill in the art to include starch or sodium carboxymethyl cellulose as a claimed flocculant and in a claimed amount as a processing aid in the non-combustible wrapper of Beven et al with a reasonable expectation of success in obtaining a suitable wrapper.
Claims 17-21 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beven et al in view of Vanderbilt and further in view of Snaidr et al (US 2005/0000530) and with the evidence of Ashcraft et al (US 2005/0016556).
The disclosures of Beven et al in view of Vanderbilt are used as above. Beven et al in view of Vanderbilt does not disclose a coating layer at least partially covering at least one side of the fibrous layer.
Snaidr et al teaches that it is generally understood that sidestream smoke accounts for the majority of smoke emitted during the smoking process. There has therefore been significant interest in reducing sidestream smoke [0003].
Snaidr et al discloses a sidestream smoke treatment composition for application as a coating to a cigarette wrapper (Abs, [0019]). In disclosed embodiments, the treatment composition is coated onto one or both sides of the wrapper [0019].
The composition comprises a metal oxide oxidation catalyst and an essentially non-combustible, finely divided, porous particulate adjunct for the catalyst [0016]). Suitable particulate adjunct materials include clays commonly used in cigarette paper manufacture, aluminum oxide, titanium oxides (titanium oxide is a common synonym for naturally-occurring titanium dioxides) [0051]. The composition also comprises processing aids in some embodiments, such as polyvinyl alcohol, casein and other types of acceptable glues (claimed organic binders) [0091]. The metal oxides and adjunct materials read on the claimed second inorganic filler material, and the processing aids are claimed species of binder.
Snaidr et al discloses that the amount of coating composition applied is preferably in the range from about 2.5 g/m2 to about 125 g/m2, most preferably from about 2.5 g/m2 to about 100 g/m2 [0092], which subsumes the claimed range. Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to select a second inorganic filler material and binder to form a coating layer for the wrapper of Beven et al in view of Vanderbilt and further in view of Snaidr et al, and to apply a claimed amount of the coating layer at least partially covering at least one side of the wrapper of Beven et al with a reasonable expectation of success in obtaining a suitable amount of sidestream smoke.
Beven et al does not disclose the basis weight of the fibrous layer. However, typical wrapping material base sheets for use as circumscribing wrappers for tobacco rods of cigarettes have basis weights from about 15 g/m2 to about 80 g/m2 (see Ashcraft et al, [0052] for evidence), which overlays the claimed ranges. It would have been obvious to one of ordinary skill in the art to form a material sheet of Beven et al to have a basis weight in the claimed range absent convincing evidence of unexpected results
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 10 of U.S. Patent No. 12,075,817. Claim 1 of the patent recites the limitations of instant claims 2, 6-11 and 18 (partially). Patent claims 3,4,5,6,7 and 8 recite the limitations of instant claims 3,4,5,12,13,14,15 and 16 respectively. Patent claims 12,13 and 14 recite the limitations of instant claims 11,18 (partially),19 and 20. It would have been obvious to one of ordinary skill in the art to rearrange the claims of the patent and obtain 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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/DENNIS R CORDRAY/Primary Examiner, Art Unit 1748
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