Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Election/Restrictions
Applicant’s election of the “paper tube” for species A and “menthol” for species B in the reply filed on 10/13/2025 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)).
Claims 11, 12, and 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 2, 4, 5, 7, 8, and 20, are rejected under 35 U.S.C. 102(b) as being anticipated by Moll, Jr. (US 3,162,199).
Regarding claims 2, 4, 5, 7, and 8, Moll Jr. discloses a cigarette with an elongated insert in the tobacco rod (with a mount end and an opposite end) that is inserted by machine during manufacture composed of a hollow thermoplastic tube (i.e. polymeric) that is pinched off to completely enclose and additive or flavoring (such as menthol, col. 4, 55-72) contained within the insert to prevent the escape of the flavoring (col. 3, line 51—col. 4, line 8). The tube is thermally degraded during use and releases the flavor or additive contained within (col. 4, 41-54). Although not expressly disclosed, the insert is “sufficiently robust” that it is capable of being inserted into a tobacco rod by a machine and is not disclosed to deform during insertion.
Moll Jr. does not expressly teach pressurizing to 20 psi, 100 psi, 200 psi, in an evacuated pressure vessel, layering, or infusing by vacuum. The steps and parameters for the process for making the insert do not add patentable details to this invention, as no structural characteristics are association with the step in the specification. As such, this is a “product by process” claim.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113).
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) …
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claim 20, Moll Jr. discloses that the end of the tube is tapered (i.e. pinched) when cut because, “the blade 38 at the cut-off station 22 will have a pinching effect, thereby prohibiting undesirable discharge of the contained powder 70 in the ribbon.” (col. 4, 27-30). The pinching effect is also illustrated in figure 5. Although figure 5 is indicated as perioding pinching, this is the same effect as disclosed for the cutting of the tube.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims under 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 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claim 21 is rejected under 35 U.S.C. 103(a) as being unpatentable over Moll, Jr. (US 3,162,199) as applied to claim 1 above.
Regarding claim 21, Moll, Jr. discloses that the side of the strip, “may be heat sealed or secured in any other manner.” (col. 4, 23-25). It would have been obvious to one of ordinary skill in the art at the time of invention to also seal the first and second ends of the strip to further contain the volatile flavorants disclosed by Moll, Jr. Moll Jr. discloses that the ends are pinched, and adding heat sealing or other securing would have been obvious to one of ordinary skill in the art at the time of filing/invention to duplicate the sealing so more of the flavorant was sealed within the tube or ribbon, since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
In addition, it would have been notoriously well known in the art to use adhesives to seal the web disclosed by Moll Jr. because Moll Jr. state that, “any other manner” may be used. In particular, using adhesives to seal two parts of a web is more well known in the art, as well as those not in the art, than heat sealing. For instance, it is notoriously well known to use adhesives like glue to attach webs together such as using glue to attach paper together to form books or crafts. Furthermore, it is known in the art to use adhesives to glue webs together such as using seam glue to glue cigarette paper together in a garniture during conventional cigarette manufacturing.
Claim 21 is rejected under 35 U.S.C. 103(a) as being unpatentable over Moll, Jr. (US 3,162,199) as applied to claim 1 above and in further view of Mollins et al. (US 3,865,121).
Regarding claim 21, Moll, Jr. discloses that the side of the strip, “may be heat sealed or secured in any other manner.” (col. 4, 23-25) but does not expressly disclose using adhesive or wax. However, Mollins et al. disclose that cigarette materials such as paper maybe adhered with adhesives that may be applied between pitched-together portions and that heat may be applied to set or activate the adhesive. It would have been obvious to one of ordinary skill in the art at the time of invention/filing to use adhesves as taught by Mollins et al. to adhere pinched together regions together.
Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable over Moll, Jr. (US 3,162,199) as applied to claim 1 above in further view of Mishra et al. (US 2006/0144412).
Regarding claim 3, Moll, Jr. does not disclose coating the insert with a sealant. However, it is known in the art to overcoat encapsulated flavorants to reduce leakage of the flavor. For example, Mishra et al. disclose encapsulated flavorants such as menthol that are overcoated with another layer of polymer. It would have been obvious to one of ordinary skill in the art at the time of invention to reduce flavorant leakage by overcoating the encapsulated flavor of Moll Jr. with the overcoating as taught by Mishra et al.
Claim 9 is rejected under 35 U.S.C. 103(a) as being unpatentable over Moll, Jr. (US 3,162,199) as applied to claim 1 above in further view of Selke et al. (US 3,576,249).
Regarding claim 9, Moll, Jr. discloses that the web material used to form the hollow tube or ribbon can be polyethylene and does not disclose paper materials. However, Selke et al. disclose a similar tube for use within a cigarette and disclose that the tube, “can be made of paper or other sheet material,” or “can also be made of extruded plastic…” (col. 2, 52-62). It would have been obvious to one of ordinary skill in the art at the time of invention/filing, to make the tube of Moll, Jr. using the materials such as paper disclosed by Selke et al. The results would have been predictable. In addition, Selke et al. indicate that plastic is used there is concern for less desirable combustion products and further indicate that particular papers can minimize this problem (col. 2, line 76--col. 3, line 11). This provides further motivation to replace the plastic of Moll, Jr. with paper.
Claim 13 is rejected under 35 U.S.C. 103(a) as being unpatentable over Moll, Jr. (US 3,162,199) as applied to claim 1 above in further view of Norman et al. (US 4,776,354).
Regarding claim 13, Moll Jr. discloses that the tube can be closed at the interval at which the tobacco rod is to be severed so that the additive/flavor remains sealed inside the tube but does not disclose the length of the tobacco rod, but do indicate that the tube should be sealed every 10 mm (col. 3, 72-75). However, Norman et al. disclose a low tar cigarette with a tobacco rod between 40 and 53 mm long, which significantly overlaps the instant range. It would have been obvious to one of ordinary skill in the art at the time of invention to use the flavor of Moll Jr. in the cigarette of Norman et al. because Norman et al. disclose using limited amounts of puffed tobacco to improve taste and one of ordinary skill would use the tube of Moll Jr. to further improve taste. Doing so would have predictable results and would have been well within the level or one of ordinary skill.
Claim 14-17 is rejected under 35 U.S.C. 103(a) as being unpatentable over Moll, Jr. (US 3,162,199) as applied to claim 1 above in further view of Bavley et al. (US 3,312,226).
Regarding claim 14, Moll, Jr. does not disclose the amount of menthol to be added to the cigarette by the device or the claimed range of 5-50 mg menthol. Although the amount of menthol typically added to cigarettes is not typically reported, Bavley et al. discloses that a comparison cigarette, representing a typical cigarette, contains 3.2 mg of menthol (col. 9, 25-30). It would have been obvious to one of ordinary skill in the art at the time of invention to use 3.2 mg of menthol in the invention of Moll, Jr. to provide menthol in the amounts that are typical for cigarettes, such as the control cigarette of Bavley et al. One of ordinary skill would have understood and predicted the effects of using 3.2 grams of menthol in the invention of Moll, Jr., such as the delivery of the menthol to mainstream smoke as taught my Moll, Jr.
Regarding claim 15-17, menthol or other flavorants disclosed by Moll Jr. are inherently diluent material, as they function to dilute the mainstream smoke.
Allowable Subject Matter
Claims 6 and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, Moll, Jr. (see rejections below), expressly discloses that the interior of the hollow tube is 0.010 inches (0.254 mm) and the outside is 0.014 inches (0.355 mm). This is smaller than the claimed range of a hollow region having an average diameter of 0.5 mm to 3.0 mm in claim 6 or a paper tube having an inner diameter of 2 mm and an outer diameter of 2.6 mm.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached on Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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, Michael H Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Felton/Primary Examiner, Art Unit 1747