DETAILED ACTION
Applicant’s response, filed Dec 12 2025, has been fully considered. Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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 .
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 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.
Claim Status
Claims 1-16 and 19-21 are pending.
Claims 17-18 are canceled.
Claims 1, 16, and 19-21 are objected to.
Claims 1-16 and 19-21 are rejected.
Priority
Applicant's claim for the benefit of a prior-filed application, PCT/GB2020/051796, filed Jul 24 2020, is acknowledged.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) to App. No. GB1910738.2, filed Jul 26 2019. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Accordingly, each of claims 1-21 are afforded the effective filing date of Jul 26 2019.
Information Disclosure Statement
The information disclosure statement filed Jan 22 2026 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. The NPL reference is not in English. The IDS has been placed in the application file, but the information referred to therein, as indicated by strikethrough, has not been considered. The FOR reference has been considered.
Claim Objections
The outstanding objections to the claims are withdrawn in view of the amendments submitted herein.
The claims are objected to because of the following informalities. The instant objection is newly stated and is necessitated by claim amendment.
Claim 1 recites “wherein the at least two selected design parameters include at least one of the combustible tobacco product dimensions, the tobacco weight, the tobacco rod and/or filter density; the tobacco rod and/or filter firmness; the open and/or closed combustible tobacco product pressure drop; the filter pressure drop; the cigarette paper porosity; and/or the ventilation level”. The limitation is interpreted as one of the at least two parameters must be selected from those listed in this “wherein” clause. However, the limitation should be amended to include only commas instead of semicolons in the list. Claims 16 and 21 are similarly objected to.
The end of the 5th to last line in claim 16 is missing a comma or a semicolon.
Claim 19 should be amended to recite “when executed by a system”.
Claim 20 should be amended to recite “[[a]] the non-transitory computer-readable storage medium” to maintain consistent claim language.
Claim 21, lines 3-4, recites “the computer computer”, where one of the recitations of “computer” should be deleted.
Claim 21, second to last line, recites “vales”, which should be amended to recite “values”.
Claim Interpretation
35 U.S.C. 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a combustible tobacco product manufacturing apparatus that receives the vales for the plurality of design parameters and manufactures the target combustible tobacco product based on the calculated values for the plurality of design parameters” in claim 21. Regarding the three-prong test: (A) “apparatus” is a substitute for “means” that is a generic placeholder; (B) “apparatus” is modified by the functional language “that”; (C) “apparatus” is modified by “combustible tobacco product manufacturing”, which does not provide sufficient structure for performing the steps of receiving the values for the plurality of design parameters and manufacturing the target combustible tobacco product based on the calculated values for the plurality of design parameters. The specification as published discloses a combustible tobacco product manufacturing apparatus at [0008; 0038; 0068], but does not disclose adequate structure to perform the claimed function. See below regarding issues under 112(a) and 112(b) arising from this claim interpretation.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections- 35 USC § 112
35 USC § 112(a)
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.
Claim 21 is 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 claim(s) contains 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. Any newly recited portions are necessitated by claim amendment.
Claim 21 is rejected because, as outlined above under 35 USC 112(f), the disclosure does not contain adequate structure to perform the claimed functions of performing the step of that receiving the values for the plurality of design parameters and manufacturing the target combustible tobacco product based on the calculated values for the plurality of design parameters because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. The specification as published discloses a combustible tobacco product manufacturing apparatus at [0008; 0038; 0068], but does not disclose the specific structure of such an apparatus. Therefore, the disclosure lacks adequate written description.
35 U.S.C. 112(b)
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.
Claim 21 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Any newly recited portions are necessitated by claim amendment.
Regarding the claim limitation that invokes 112(f): Claim limitation “a combustible tobacco product manufacturing apparatus configured that receives the vales for the plurality of design parameters and manufactures the target combustible tobacco product based on the calculated values for the plurality of design parameters” in claim 21 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function, as described in the above 35 USC 112(a) rejection. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Response to Applicant Arguments
At p. 9-10, Applicant submits that claim 21 now recites acts sufficient to define the tobacco product manufacturing apparatus, and should not invoke interpretation under 35 USC 112(f) or be rejected under 35 USC 112(a) and (b).
It is respectfully submitted that this is not persuasive. Invocation of interpretation under 35 USC 112(f) is not dependent on the claim describing sufficient acts performed by the structure, but rather by whether the claim recites sufficient structure for performing those actions (see MPEP 2181). The limitation continues to invoke interpretation under 35 USC 112(f) because it recites apparatus, which is a generic placeholder for “means”, that is modified by the functional language “that” but not any terms which define the structure required to receive values and manufacture a combustible tobacco product. Rather, the claim recites an apparatus which is described by what it does rather than what it is.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-16 and 19-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to one or more judicial exceptions without significantly more. Any newly recited portions are necessitated by claim amendment.
MPEP 2106 organizes judicial exception analysis into Steps 1, 2A (Prongs One and Two) and 2B as follows below. MPEP 2106 and the following USPTO website provide further explanation and case law citations: uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials.
Framework with which to Evaluate Subject Matter Eligibility:
Step 1: Are the claims directed to a process, machine, manufacture, or composition of matter;
Step 2A, Prong One: Do the claims recite a judicially recognized exception, i.e. a law of nature, a natural phenomenon, or an abstract idea;
Step 2A, Prong Two: If the claims recite a judicial exception under Prong One, then is the judicial exception integrated into a practical application (Prong Two); and
Step 2B: If the claims do not integrate the judicial exception, do the claims provide an inventive concept.
Framework Analysis as Pertains to the Instant Claims:
Step 1
With respect to Step 1: yes, the claims are directed to a method, a non-transitory computer-readable storage medium, and a system, i.e., a process, machine, or manufacture within the above 101 categories [Step 1: YES; See MPEP § 2106.03].
Step 2A, Prong One
With respect to Step 2A, Prong One, the claims recite judicial exceptions in the form of abstract ideas. The MPEP at 2106.04(a)(2) further explains that abstract ideas are defined as:
mathematical concepts (mathematical formulas or equations, mathematical relationships and mathematical calculations);
certain methods of organizing human activity (fundamental economic practices or principles, managing personal behavior or relationships or interactions between people); and/or
mental processes (procedures for observing, evaluating, analyzing/ judging and organizing information).
With respect to the instant claims, under the Step 2A, Prong One evaluation, the claims are found to recite abstract ideas that fall into the grouping of mental processes (in particular procedures for observing, analyzing and organizing information) and mathematical concepts (in particular mathematical relationships and formulas) are as follows:
Independent claims 1 and 21: calculating respective values for a plurality of design parameters for the target combustible tobacco product based on the received values for the plurality of input parameters, the plurality of design parameters comprising at least two parameters selected from: a tobacco blend composition; tar, nicotine and carbon monoxide deliveries; a smoke sensory attribute; a number of puffs associated with the target combustible tobacco product; combustible tobacco product dimensions; tobacco weight; tobacco rod and/or filter density; tobacco rod and/or filter firmness; open and/or closed combustible tobacco product pressure drop; filter pressure drop; cigarette paper porosity; and ventilation level; wherein the at least two selected design parameters include at least one of the combustible tobacco product dimensions, the tobacco weight, the tobacco rod and/or filter density: the tobacco rod and/or filter firmness: the open and/or closed combustible tobacco product pressure drop: the filter pressure drop: the cigarette paper porosity: and/or the ventilation level.
Dependent claims 2-14 and 16 recite further steps that limit the judicial exceptions in independent claim 1 and, as such, also are directed to those abstract ideas. For example, claims 2-3 further limit the calculation to include deriving a target combustible tobacco product descriptor having a maximal fitness by performing an optimization procedure; claims 4-5 further limit the fitness to being based on differences between values and its relation to the root mean square deviation of the values; claims 6-13 further limit the performance of the optimization procedure of claim 3; claim 14 further limits the calculation of the design parameters; and claim 16 further limits the input parameters used to calculate the design parameters.
The abstract ideas recited in the claims are evaluated under the Broadest Reasonable Interpretation (BRI) and determined to each cover performance either in the mind and/or by mathematical operation because the method only requires a user to manually design a target combustible tobacco product. Without further detail as to the methodology involved in “calculating”, under the BRI, one may simply, for example, use pen and paper to determine at least two different design parameters based on values of input parameters. The step of “calculating” also requires mathematical techniques as the only supported embodiments, as it is based on “values” of the input parameters and is further limited in the dependent claims to using an optimization procedure to derive descriptors having maximal fitness based on several mathematical functions described in words. Further support for the interpretation of “calculating” as requiring mathematical techniques as the only supported embodiments is disclosed in the specification as published at least at [0034-0035; 0063-0065; 0070-0086].
Therefore, claims 1 and 21 and those claims dependent therefrom recite an abstract idea [Step 2A, Prong 1: YES; See MPEP § 2106.04].
Step 2A, Prong Two
Because the claims do recite judicial exceptions, direction under Step 2A, Prong Two, provides that the claims must be examined further to determine whether they integrate the judicial exceptions into a practical application (MPEP 2106.04(d)). A claim can be said to integrate a judicial exception into a practical application when it applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception. This is performed by analyzing the additional elements of the claim to determine if the judicial exceptions are integrated into a practical application (MPEP 2106.04(d).I.; MPEP 2106.05(a-h)). If the claim contains no additional elements beyond the judicial exceptions, the claim is said to fail to integrate the judicial exceptions into a practical application (MPEP 2106.04(d).III).
Additional elements, Step 2A, Prong Two
With respect to the instant recitations, the claims recite the following additional elements:
Independent claim 1: receiving respective values for a plurality of input parameters;
providing the calculated values as an output;
providing the calculated values to a combustible tobacco product manufacturing apparatus: and
manufacturing the target combustible tobacco product using the calculated values.
Dependent claim 15: deriving one or more of the plurality of stored combustible tobacco product descriptors using chemometric analysis.
The claims also include non-abstract computing elements. For example, independent claim 19 includes a non-transitory computer-readable storage medium comprising instructions which, when executed by system including a computer and a combustible tobacco product manufacturing apparatus, cause the system to carry out the method of claim 1; independent claim 20 includes a data processing apparatus comprising a processor and a computer-readable storage medium; and independent claim 21 includes a system comprising a data processing apparatus comprising a computer and a computer-readable storage medium comprising instructions and a combustible tobacco product manufacturing apparatus that receives the vales for the plurality of design parameters and manufactures the target combustible tobacco product based on the calculated values for the plurality of design parameters.
Considerations under Step 2A, Prong Two
With respect to Step 2A, Prong Two, the additional elements of the claims do not integrate the judicial exceptions into a practical application for the following reasons. Those steps directed to data gathering, such as “receiving” input parameters in claim 1 and “deriving” stored combustible tobacco product descriptors using chemometric analysis in claim 15, and to data outputting, such as “providing the calculated values as an output” in claim 1, perform functions of collecting the data needed to carry out the judicial exceptions. Data gathering and outputting do not impose any meaningful limitation on the judicial exceptions, or on how the judicial exceptions are performed. Data gathering and outputting steps are not sufficient to integrate judicial exceptions into a practical application (MPEP 2106.05(g)).
The step of “manufacturing the target combustible tobacco product using the calculated values” in claim 1 and “manufacturing the target combustible tobacco product based on the calculated values for the plurality of design parameters” in claim 21 are mere instructions to apply the judicial exceptions to the manufacture of a combustible tobacco product (see MPEP 2106.05(f)). The limitation requires only that the manufacturing uses or is based on the calculated values but does not explain how such parameters are incorporated into the product. The claim therefore recites only the idea of a solution or outcome based on the application of the judicial exceptions without reciting details of how a solution to a problem is accomplished (see MPEP 2106.05(f)(1)).
Further steps directed to additional non-abstract elements of “on-transitory computer-readable storage medium comprising instructions” in claim 19, “a data processing apparatus comprising a processor and a computer-readable storage medium” in claim 20, and a “system comprising a data processing apparatus comprising a computer and a computer-readable storage medium comprising instructions” in claim 21 do not describe any specific computational steps by which the “computer parts” perform or carry out the judicial exceptions, nor do they provide any details of how specific structures of the computer, such as the computer-readable recording media, are used to implement these functions. The claims state nothing more than a generic computer which performs the functions that constitute the judicial exceptions. Hence, these are mere instructions to apply the judicial exceptions using a computer, and therefore the claim does not integrate that judicial exceptions into a practical application. The courts have weighed in and consistently maintained that when, for example, a memory, display, processor, machine, etc.… are recited so generically (i.e., no details are provided) that they represent no more than mere instructions to apply the judicial exception on a computer, and these limitations may be viewed as nothing more than generally linking the use of the judicial exception to the technological environment of a computer (MPEP 2106.05(f)).
The specification as published discloses that the described systems and methods may facilitate designing and prototyping combustible tobacco products in silico reducing the time and cost of developing new combustible tobacco products at [0018], but does not provide a clear explanation for how the additional elements provide these improvements. Therefore, the additional elements do not clearly improve the functioning of a computer, or comprise an improvement to any other technical field. Further, the additional elements do not clearly affect a particular treatment; they do not clearly require or set forth a particular machine; they do not clearly effect a transformation of matter; nor do they clearly provide a nonconventional or unconventional step (MPEP2106.04(d)).
Thus, none of the claims recite additional elements which would integrate a judicial exception into a practical application, and the claims are directed to one or more judicial exceptions [Step 2A, Prong 2: NO; See MPEP § 2106.04(d)].
Step 2B (MPEP 2106.05.A i-vi)
According to analysis so far, the additional elements described above do not provide significantly more than the judicial exception. A determination of whether additional elements provide significantly more also rests on whether the additional elements or a combination of elements represents other than what is well-understood, routine, and conventional. Conventionality is a question of fact and may be evidenced as: a citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates a well-understood, routine or conventional nature of the additional element(s); a citation to one or more of the court decisions as discussed in MPEP 2106(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s); a citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s); and/or a statement that the examiner is taking official notice with respect to the well-understood, routine, conventional nature of the additional element(s).
With respect to the instant claims, the prior art review to Uryupin et al. (Journal of Analytical Chemistry, 2013, 68(12:1021-1032; newly cited) discloses that performing NMR and other analytical techniques (i.e., chemometric analysis as in claim 15), on tobacco products, as well as the commercial production of cigarettes (i.e., manufacturing as in claim 1), are data gathering elements and applications of a judicial exception that are routine, well-understood and conventional in the art. Said portions of the prior art are, for example, p. 1022, col. 2, through p. 1025, col. 2, par. 2. Further, the courts have found that receiving and outputting data are well-understood, routine, and conventional functions of a computer when claimed in a merely generic manner or as insignificant extra-solution activity (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information), buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015), and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93, as discussed in MPEP 2106.05(d)(II)(i)). As such, the claims simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception (MPEP2106.05(d)). The data gathering steps as recited in the instant claims constitute a general link to a technological environment which is insufficient to constitute an inventive concept which would render the claims significantly more than the judicial exception (MPEP2106.05(g)&(h)).
With respect to claims 19-20 and 21 and those claims dependent therefrom, the computer-related elements or the general purpose computer do not rise to the level of significantly more than the judicial exception. The claims state nothing more than a generic computer which performs the functions that constitute the judicial exceptions. Hence, these are mere instructions to apply the judicial exceptions using a computer, which the courts have found to not provide significantly more when recited in a claim with a judicial exception (Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984; see MPEP 2106.05(A)). The specification as published also notes that computer processors and systems, as example, are commercially available or widely used at [0022]. The additional elements are set forth at such a high level of generality that they can be met by a general purpose computer. Therefore, the computer components constitute no more than a general link to a technological environment, which is insufficient to constitute an inventive concept that would render the claims significantly more than the judicial exceptions (see MPEP 2106.05(b)I-III).
Regarding the combustible tobacco product manufacturing apparatus in claims 1, 19, and 21, it is noted that the structure of the apparatus is not described in the specification and therefore the metes and bounds of the apparatus are unclear in claim 21, as described in the above 35 USC 112(b) rejection. Therefore, the structure of the apparatus will be interpreted, for 35 USC 101, as any apparatus capable of manufacturing a combustible tobacco product. The specification as published discloses that a combustible tobacco product includes cigarettes at least at [0003]. The prior art review to Yach et al. (Annals of Tropical Medicine & Parasitology, 2006, 100:465-479) disclose that the invention of cigarette-making machines in 1880 led to the large scale production and adopted use of cigarettes throughout the world (see at least p. 466, col. 1, par. 4 through col. 2, par. 2). Therefore, the combustible tobacco product manufacturing apparatus constitute no more than a general link to a technological environment which is routine, well-understood and conventional in the art, and is therefore insufficient to constitute an inventive concept that would render the claims significantly more than the judicial exceptions (see MPEP 2106.05(b)I-III).
Taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception(s). Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, the claims as a whole do not amount to significantly more than the exception itself [Step 2B: NO; See MPEP § 2106.05].
Therefore, the instant claims are not drawn to eligible subject matter as they are directed to one or more judicial exceptions without significantly more. For additional guidance, applicant is directed generally to the MPEP § 2106.
Response to Applicant Arguments
At p. 10-11, Applicant submits that both the method of claim 1 and the system of claim 21 are directed to manufacturing a combustible tobacco product that has a combination of specific qualities and properties resulting from the method that provide desirable characteristics to the resulting combustible tobacco product, and therefore improves the technical fields oof combustible tobacco products and the manufacture thereof. Applicant submits that the manufacture of the product based on design parameters effects a transformation analogous to that in Diamond v. Diehr. Applicant submits that the calculation results in the design parameters and thus is not mere data gathering or a general field of use.
It is respectfully submitted that this is not persuasive. The additional element of manufacturing of the combustible tobacco products is considered to recite a mere application of the results obtained from the judicial exception to a technical field. The additional elements of the claims are examined at Step 2A, Prong 2, to determine whether they integrate the recited judicial exception into a practical application. As discussed in MPEP 2106.05(f), the additional elements are examined to determine whether the claim recites only the idea of a solution or an outcome while failing to recite details of how a solution to a problem is accomplished, as well as the particularity or generality of the application of the judicial exception. The claims merely recite “calculating respective values for a plurality of design parameters for the target combustible tobacco product based on the received values for the plurality of input parameters”, “providing the calculated values as an output”, and “manufacturing the target combustible tobacco product using the calculated values”. The claim does not explain or limit what the calculated values pertain to or how they are used to design and manufacture the combustible tobacco product. Therefore the manufacture of the product merely recites a general application of an additional element to results obtained from the judicial exception without reciting any details of how the application is intended to be performed. Without describing what the calculated values are and how they are used to design and manufacture the combustible tobacco product, the claims do not clearly reflect an improvement as submitted by Applicant.
Regarding Diamond v. Diehr, there is no transformation of raw products present in the application which is analogous to Diamond. In Diamond, the process of transforming raw rubber into a rubber product was improved by the application of the recited equations which controlled the manufacturing process. The instant claims merely recite design parameters which are input to an apparatus to produce the product, but are not used in real time to control the process as in Diamond. Therefore, the instant claims are not analogous. The claims are considered to be more analogous to In re Brown, 645 Fed. App'x 1014, 1017 (Fed. Cir. 2016), where a method of assigning a hair design was not found to be integrated by the final step of using a tool to cut the hair (see MPEP 2106.05(f)).
Finally, it is noted that the judicial exceptions are not considered as to whether they recite data gathering or a general field of use, as submitted by Applicant. Rather, it is the additional elements of the claims which are examined for such features at Step 2A, Prong 2.
Claim Rejections - 35 USC § 102
The outstanding rejections from the previous Office Action are withdrawn in view of the amendments submitted herein. Specifically, Gong does not teach manufacturing the target combustible tobacco product as recited in the amended claims.
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.
A. Claims 1-3, 6-16, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Gong et al. (Proceedings of the Multiconference on "Computational Engineering in Systems Applications", 2006, 2:1532-1536; previously cited) in view of Lewis et al. (WO2000016647; previously cited) and, for claim 12 only, as evidenced by Gaffney et al. (The Proceedings of ANZIAM, 2010, 51:C347-C359; newly cited). The instant rejection is newly stated and is necessitated by claim amendment.
The prior art to Gong discloses a method based on the genetic algorithm for obtaining optimum formula scheme of tobacco groups (abstract). Gong, indicated by the open circles, teaches the instant features, indicated by the closed circles, as follows. Instantly claimed elements which are considered to be equivalent to the prior art teachings are described in bold for all claims.
Claim 1 discloses a method of designing a target combustible tobacco product. Claim 21 discloses a system comprising a data processing apparatus comprising a computer and a computer-readable storage medium comprising instructions, which when executed by a computer, cause the computer to carry out a method, and a combustible tobacco product manufacturing apparatus. The method of claims 1 and 21 comprises: receiving respective values for a plurality of input parameters; calculating respective values for a plurality of design parameters for the target combustible tobacco product based on the received values for the plurality of input parameters, the plurality of design parameters comprising at least two parameters selected from: a tobacco blend composition; tar, nicotine and carbon monoxide deliveries; a smoke sensory attribute; a number of puffs associated with the target combustible tobacco product; combustible tobacco product dimensions; tobacco weight; tobacco rod and/or filter density; tobacco rod and/or filter firmness; open and/or closed combustible tobacco product pressure drop; filter pressure drop; cigarette paper porosity; and ventilation level; wherein the at least two selected design parameters include at least one of the combustible tobacco product dimensions, the tobacco weight, the tobacco rod and/or filter density; the tobacco rod and/or filter firmness; the open and/or closed combustible tobacco product pressure drop; the filter pressure drop; the cigarette paper porosity; and/or the ventilation level; providing the calculated values as an output; providing the calculated values to a combustible tobacco product manufacturing apparatus (claim 1) or receiving the values for the plurality of design parameters (claim 21); and manufacturing the target combustible tobacco product using the calculated values.
Gong teaches a method comprising a genetic algorithm (i.e., instructions) that results in a man-computer (i.e., data processing apparatus) cooperated intelligence-aided formula design (abstract; p. 1532, col. 2, par. 2). As Gong teaches performing their method on a computer, it is considered that Gong fairly teaches a computer-readable storage medium as instantly claimed in claim 21. Gong teaches using a large collection of data (i.e., input values) to build a learning model between chemical components and sensory and smoke indexes (p. 1532, col. 2, par. 2 through p. 1533, col. 1, par. 1). Gong teaches that the chemical ingredients, sensory terms, and smoke indexes evaluated included total volatile nicotine (i.e., nicotine deliveries), total nicotine (i.e., nicotine deliveries), total sugar, total reduced sugar, total nitrogen, protein, chlorine, kalium, smoke value (i.e., a smoke sensory attribute), rate of sugar to nicotine, strength (i.e., firmness), thickness (i.e., density and/or dimensions), aroma quality (i.e., a smoke sensory attribute), aroma amount (i.e., a smoke sensory attribute), aftertaste (i.e., a smoke sensory attribute), offensive gas (i.e., a smoke sensory attribute), stimulation (i.e., a smoke sensory attribute), combustibility, grey level, quality, aroma style (i.e., a smoke sensory attribute), CO, nicotine, and tar (p. 1533, col. 1, par. 1). As Gong teaches that those indexes which are examined as input are also those determined in the output (Table 2), it is considered that Gong fairly teaches at least two of the plurality of design parameters as instantly claimed. As Gong teaches at least strength and thickness, which are considered to read on tobacco rod and/or filter density and firmness or combustible tobacco product dimensions as instantly claimed, it is considered that Gong fairly teaches that at least two of the selected design parameters include at least one of the subset as instantly claimed. Gong teaches using models to determine (i.e., calculate) formulas (i.e., design parameters) for cigarettes (i.e., combustible tobacco product) based on desired schemes by designers (i.e., target) (p. 1533, col. 1, par. 1 through p. 1535, col. 2, par. 3; Tables 1-2).
Gong teaches that the optimum solution of a formula can be consulted by the designer (p. 1533, col. 1, par. 1), but does not teach providing the calculated values to a combustible tobacco product manufacturing apparatus and manufacturing the target combustible tobacco product using the calculated values as in claim 1 or a combustible tobacco product manufacturing apparatus as in claim 21.
However, the prior art to Lewis discloses a cigarette manufacturing apparatus comprising a tobacco rod maker with a PC (i.e., data processing apparatus) based controller (abstract; entire document is relevant).
Regarding claims 1 and 21, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine, in the course of routine experimentation and with a reasonable expectation of success, the system of Gong with the system of Lewis because both references disclose systems for cigarette manufacturing decisions. The motivation would have been to automate a manual activity, as the courts have held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art (In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958); see MPEP § 2144.04).
Regarding claim 2, Gong in view of Lewis teaches the method of claim 1 as described above. Claim 2 further adds that the calculation of the values for the design parameters comprises deriving a target combustible tobacco product descriptor, wherein the target combustible tobacco product descriptor comprises values for the design parameters and values for the input parameters for the target combustible tobacco product. Gong teaches calculating each proportion of tobacco set by combining different tobaccos into individuals which comprise a population with constraint conditions, restrictive conditions, and correlative indexes, constructing the fitness of the population, selecting good individuals from the population, and performing a crossover operation and a mutation operation to evolve the population and determine the most fit individuals (i.e., the target combustible tobacco product descriptors comprises values for the design parameters and values for the input parameters for the target combustible tobacco product) (p. 1533, col. 2, par. 3 through p. 1535, col. 2, par. 1).
Regarding claim 3, Gong in view of Lewis teaches the method of claims 1-2 as described above. Claim 3 further adds that deriving a target combustible tobacco product descriptor comprises performing an optimization procedure directed to deriving a target combustible tobacco product descriptor having a maximal fitness. Gong teaches obtaining a population of formulations through generation and optimization, and that individuals with high fitness have more reproducing opportunity and therefore are selected based on their fitness (i.e., maximal fitness) during population evolution (p. 1534, col. 2, par. 2 through p. 1535, col. 1, par. 1).
Regarding claims 6-9, Gong in view of Lewis teaches the method of claims 1-3 as described above. Claim 6 further adds that performing the optimization procedure comprises, repeating for each k between 1 and (n - 1), where n >2: receiving a kth generation of combustible tobacco product descriptors; deriving corresponding fitnesses for each of the kth generation of combustible tobacco product descriptors; selecting one or more subsets of the kth generation of combustible tobacco product descriptors based on the corresponding fitnesses; and deriving a (k + 1)th generation of combustible tobacco product descriptors based on the one or more subsets of the kth generation of combustible tobacco product descriptors, wherein the target combustible product descriptor is the combustible tobacco product descriptor of the nth generation having the greatest fitness. Claim 7 further adds deriving the (k + 1)th generation of combustible tobacco product descriptors comprises deriving one or more child combustible tobacco product descriptors, wherein each of the one or more child combustible tobacco product descriptors is based on a respective two or more of the subset of the kth generation of combustible tobacco product descriptors. Claim 8 further adds that each of the one or more child combustible tobacco product descriptors is a linear combination of the respective two or more of the subset of the kth generation of combustible tobacco product descriptors. Claim 9 further adds that deriving the (k + 1)th generation of combustible tobacco product descriptors comprises mutating at least one of the one or more child combustible tobacco product descriptors.
Gong teaches that chromosomes of individuals are selected and a crossover operation between chromosomes is performed to make new individuals, or children, using the notations
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(i.e., a linear combination) that random genes of random chromosomes are mutated, and that the fitness of the individuals are assessed during population evolution, where individuals with high fitness have more offspring (p. 1534, col. 2, par. 4 through p. 1535, col. 2, par. 1), which is considered to read on the instant claim.
Regarding claim 10-13, Gong in view of Lewis teaches the method of claim 1-3 as described above. Claim 10 further adds that the optimization procedure is a stochastic optimization procedure. Claim 11 further adds that the stochastic optimization procedure is a genetic algorithm. Claim 12 further adds that the genetic algorithm is a real coded genetic algorithm. Claim 13 further adds that the optimization procedure comprises at least one selected from particle swarm optimization, ant colony optimization, simulated annealing, a Monte Carlo algorithm, Runge-Kutte methods, a genetic algorithm, or any combination thereof.
Gong teaches the use of a genetic algorithm (i.e., claims 11 and 13), which is considered to read on a stochastic optimization procedure as recited in claim 10 because the claims recite that a genetic algorithm is a type of stochastic optimization procedure. Gong teaches encoding the values of the parameters of the individuals in the population as their actual values (p. 1533, col. 2, par. 2 through p. 1534, col. 2, par. 1), which reads on a real coded genetic algorithm (i.e., claim 12), as evidenced by Gaffney. Gaffney discloses that genetic algorithms use either binary or real coding where real coding is indicated when the variable of the parameter space of an optimization problem is continuous (p. C347, par. 1). As Gong does not teach binary encoding, it is considered that Gong fairly teaches a real coded genetic algorithm as instantly claimed.
Regarding claim 14, Gong in view of Lewis teaches the method of claim 1 as described above. Claim 14 further adds that the values for the plurality of design parameters are calculated based on a plurality of stored combustible tobacco product descriptors, wherein each of the stored combustible tobacco product descriptors comprises values for the plurality of design parameters and values for the plurality of input parameters for a corresponding combustible tobacco product.
Gong teaches using a large collection of data to build a learning model between chemical components and sensory and smoke indexes (i.e., stored combustible tobacco product descriptors which comprises values for the plurality of design parameters and values for the plurality of input parameters for a corresponding combustible tobacco product) (p. 1532, col. 2, par. 2 through p. 1533, col. 1, par. 1 and col. 2, par. 2 through p. 1534, col. 2, par. 1).
Regarding claim 15, Gong teaches the method of claims 1-3 and 14 as described above. Claim 15 further adds deriving one or more of the plurality of stored combustible tobacco product descriptors using chemometric analysis.
Gong teaches using a large collection of data to build a learning model between chemical components and sensory and smoke indexes (p. 1532, col. 2, par. 2 through p. 1533, col. 1, par. 1). Gong teaches that the chemical ingredients, sensory terms, and smoke indexes evaluated included total volatile nicotine, total nicotine, total sugar, total reduced sugar, total nitrogen, protein, chlorine, kalium, smoke value, rate of sugar to nicotine, combustibility, grey level, CO, nicotine, and tar (p. 1533, col. 1, par. 1), which are considered to encompass chemical aspects of tobacco which were quantitatively analyzed, which reads on a “chemometric analysis” as instantly claimed. It is noted that the instant specification does not provide any definitions or examples of a chemometric analysis. Therefore, it is considered that Gong fairly teaches a chemometric analysis.
Regarding claim 16, Gong teaches the method of claim 1 as described above. Claim 16 further adds that the plurality of input parameters comprise at least two parameters selected from: a tobacco blend composition; tar, nicotine and carbon monoxide deliveries; a smoke sensory attribute; a number of puffs associated with the target combustible tobacco product; combustible tobacco product dimensions; tobacco weight; tobacco rod and/or filter density; tobacco rod and/or filter firmness; open and/or closed combustible tobacco product pressure drop; filter pressure drop; cigarette paper porosity; and ventilation level, wherein the at least two selected input parameters include at least one of the combustible tobacco product dimensions, the tobacco weight, the tobacco rod and/or filter density: the tobacco rod and/or filter firmness the open and/or closed combustible tobacco product pressure drop; the filter pressure drop: the cigarette paper porosity and/or the ventilation level.
Gong teaches that the chemical ingredients, sensory terms, and smoke indexes evaluated included total volatile nicotine (i.e., nicotine deliveries), total nicotine (i.e., nicotine deliveries), total sugar, total reduced sugar, total nitrogen, protein, chlorine, kalium, smoke value (i.e., a smoke sensory attribute), rate of sugar to nicotine, strength (i.e., firmness), thickness (i.e., density), aroma quality (i.e., a smoke sensory attribute), aroma amount (i.e., a smoke sensory attribute), aftertaste (i.e., a smoke sensory attribute), offensive gas (i.e., a smoke sensory attribute), stimulation (i.e., a smoke sensory attribute), combustibility, grey level, quality, aroma style (i.e., a smoke sensory attribute), CO, nicotine, and tar (p. 1533, col. 1, par. 1). As Gong teaches at least strength and thickness, which are considered to read on tobacco rod and/or filter density and firmness or combustible tobacco product dimensions as instantly claimed, it is considered that Gong fairly teaches that at least two of the selected design parameters include at least one of the subset as instantly claimed.
Regarding claim 19, Gong in view of Lewis teaches the method of claim 1 as described above. Claim 19 further adds a non-transitory computer-readable storage medium comprising instructions which, when executed by a system including a computer and a combustible tobacco product manufacturing apparatus, cause the system to carry out the method 1. Gong teaches a method comprising a genetic algorithm (i.e., instructions) that results in a man-computer cooperated intelligence-aided formula design (abstract; p. 1532, col. 2, par. 2). As Gong teaches performing their method on a computer, it is considered that Gong fairly teaches a computer-readable storage medium as instantly claimed.
Regarding claim 20, Gong in view of Lewis teaches the method of claim 1 as described above. Claim 20 further adds a data processing apparatus comprising a processor and a computer-readable storage medium as claimed in claim 19. Gong teaches a method comprising a genetic algorithm (i.e., instructions) that results in a man-computer (i.e., data processing apparatus) cooperated intelligence-aided formula design (abstract; p. 1532, col. 2, par. 2).
B. Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Gong in view of Lewis, as applied to claims 1-3 above, in view of Gong et al. (CN102799741A; newly cited).
Regarding claim 4, Gong teaches the method of claims 1-3 as described above. Claim 4 further adds that the fitness of a given combustible tobacco product descriptor is based on differences between the values of the given combustible tobacco product descriptor for the input parameters and corresponding values based on the received values for the input parameters, which Gong does not teach.
However, they prior art to Gong CN discloses a genetic algorithm-based optimal design method for formula threshing of primary flue-cured tobacco (abstract). Gong CN teaches selecting n primary flue-cured tobaccos from a tobacco leaf database, and reading the inventory and m chemical indexes of the n primary flue-cured tobaccos The index value of the item; set the target value of the sheet tobacco formed by this pairing; use the n first flue-cured tobacco as n genes, and form a chromosome by randomly assigning different inventory usage ratios to each gene, and use the same method to form multiple different chromosomes to construct an initial population; use the initial population to calculate j chromosomes with high fitness using genetic algorithm and calculate whether the j chromosomes with high fitness meet the set The target value; the chromosome that meets the target value is output as the formula of primary flue-cured tobacco (abstract). Gong CN teaches that the fitness of the ith chromosome is
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, where y is the index for each chromosome (i.e., corresponding values based on the received values for the input parameters) and b is the target value ) (i.e., given combustible tobacco product descriptor for the input parameters) (claim 1; p. 3; par. 2; p. 4).
Regarding claim 5, Gong teaches the method of claims 1-3 and, in further view of Gong CN, claim 4, as described above. Claim 5 further adds that the fitness of a given combustible tobacco product is inversely related to the root mean square deviation between the values of the given combustible product descriptor for the input parameters and corresponding values based on the received values for the input parameters. Gong teaches a formula for calculating fitness which is
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(p. 1534, col. 2, par. 3), which reads on the fitness being inversely related as instantly claimed. Gong does not teach that the fitness is related to the root mean square deviation as instantly claimed.
However, Gong CN teaches that the fitness of the ith chromosome is
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, where y is the index for each chromosome (i.e., corresponding values based on the received values for the input parameters) and b is the target value ) (i.e., given combustible tobacco product descriptor for the input parameters) (claim 1; p. 3; par. 2; p. 4), which reads on the fitness as instantly claimed.
Regarding claims 4-5, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine, in the course of routine experimentation and with a reasonable expectation of success, the methods of Gong and Gong CN because both references disclose methods for using genetic algorithms to design cigarettes. The motivation would have been to use a genetic algorithm-based optimal design method for threshing leaves of primary flue-cured tobacco formula, through which the stability of the blending results can be improved, as many chemical index items as possible can be satisfied, and the repetition of manual experience design can be reduced , saving cost and time, as taught by Gong CN (p. 2, par. 5). The substitution of the equation for determining fitness taught by Gong CN for the equation of Gong thus is no more than the simple substitution of one known element for another.
Response to Applicant Arguments
At p. 11-13, Applicant submits that Gong does not teach the amended limitation where at least one of a certain subset of the design parameters are included because Gong broadly teaches sensory terms for describing smoke and not characteristics of a specific tobacco product, pointing to p. 1533, col. 1, line 12-15, and therefore does not teach the physical aspects of the tobacco products itself.
It is respectfully submitted that this is not persuasive. Gong teaches 3 separate indexes including chemical ingredients, sensory indexes, and smoke indexes which are each comprised of various sub-indexes as discussed in the above rejection. Gong does not define the sensory indexes as pertaining only to the smoke of the tobacco products and is assumed rather to describe the tobacco product because Gong has a separate index for smoke. It is also not apparent how strength and thickness would apply to smoke and not the tobacco product itself. Therefore Gong teaches at least two of the input parameters, as well as at least one which reads on being selected from the subset as instantly claimed.
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.
A. Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16, 19, and 21-24 of copending Application No. 18/262,795 (reference application) in view of Gong et al. (Proceedings of the Multiconference on "Computational Engineering in Systems Applications", 2006, 2:1532-1536; previously cited) Any newly cited portions are necessitated by claim amendment.
This is a provisional nonstatutory double patenting rejection.
Regarding instant claims 1 and 21, reference claims 1 and 23-24 discloses method comprising: receiving respective values for a plurality of input parameters; calculating respective values for a plurality of design parameters for the target non-combustible active substance delivery article based on the received values for the plurality of input parameters, the plurality of design parameters comprising at least two parameters selected from: a tobacco blend composition or an aerosol-generating material composition; tobacco or aerosol-generating material weight; nicotine or other active substance deliveries; aerosol constituent deliveries; a sensory attribute; a number of puffs associated with the target non-combustible active substance delivery article; non-combustible active substance delivery article dimensions; rod of aerosol-generating material or tobacco density; filter density; rod of aerosol-generating material or tobacco firmness; filter firmness; open or closed article pressure drop; filter pressure drop; cigarette paper porosity; ventilation level; a heating profile; and flavor composition and providing the calculated values as an output.
The reference application does not disclose a method of designing a target combustible tobacco product.
However, the prior art to Gong discloses a method based on the genetic algorithm for obtaining optimum formula scheme of tobacco groups by examining parameters including those released during burning, such as combustibility (i.e. combustible tobacco product) (abstract; p. 1532, col. 1, par. 1; p. 1533, col. 1, par. 1).
Regarding instant claim 2, reference application claim 2 discloses the limitations of instant claim 2.
Regarding instant claim 3, reference application claim 3 discloses the limitations of instant claim 3.
Regarding instant claim 4, reference application claim 4 discloses the limitations of instant claim 4.
Regarding instant claim 5, reference application claim 5 discloses the limitations of instant claim 5.
Regarding instant claim 6, reference application claim 6 discloses the limitations of instant claim 6.
Regarding instant claim 7, reference application claim 72 discloses the limitations of instant claim 7.
Regarding instant claim 8, reference application claim 8 discloses the limitations of instant claim 8.
Regarding instant claim 9, reference application claim 9 discloses the limitations of instant claim 9.
Regarding instant claim 10, reference application claim 10 discloses the limitations of instant claim 10.
Regarding instant claim 11, reference application claim 11 discloses the limitations of instant claim 11.
Regarding instant claim 12, reference application claim 12 discloses the limitations of instant claim 12.
Regarding instant claim 13, reference application claim 13 discloses the limitations of instant claim 13.
Regarding instant claim 14, reference application claim 14 discloses the limitations of instant claim 14.
Regarding instant claim 15, reference application claim 15 discloses the limitations of instant claim 15.
Regarding instant claim 16, reference application claim 16 discloses the limitations of instant claim 16.
Regarding instant claim 19, reference application claim 21 discloses the limitations of instant claim 19.
Regarding instant claim 20, reference application claim 22 discloses the limitations of instant claim 20.
Regarding claims 1-16 and 19-21, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine, in the course of routine experimentation and with a reasonable expectation of success, the reference application and Gong because both references disclose methods for designing tobacco products using genetic algorithms. The motivation to design a combustible tobacco product using the genetic algorithm of the reference application would have been to use multi-intelligent techniques and expert knowledge to overcome the very complex, nonlinear and uncertain problems associated with the complex reactions and chemical components in tobacco burning in cigarettes, as taught by Gong (p. 1532, col. 1-2).
B. Claims 1-16 and 19-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 and 21-23 of copending Application No. 18/262,786 (reference application) in view of Gong et al. (Proceedings of the Multiconference on "Computational Engineering in Systems Applications", 2006, 2:1532-1536; previously cited). Any newly cited portions are necessitated by claim amendment.
This is a provisional nonstatutory double patenting rejection.
Regarding instant claims 1 and 21, reference claims 1 and 23 disclose method comprising: receiving respective values for a plurality of input parameters; calculating respective values for a plurality of design parameters for a liquid formulation for the target vaping article based on the received values for the plurality of input parameters, the plurality of design parameters comprising at least two parameters selected from: a proportion of a component of the liquid formulation for the target vaping article, nicotine or another active substance deliveries, a sensory attribute, a number of puffs associated with the target vaping article, a heating profile, a flavor composition, physical properties of the target vaping article, and composition of the target vaping article; and providing the calculated values of the plurality of design parameters as an output.
The reference application does not disclose a method of designing a target combustible tobacco product or that the at least two selected input parameters include at least one of the combustible tobacco product dimensions, the tobacco weight, the tobacco rod and/or filter density: the tobacco rod and/or filter firmness the open and/or closed combustible tobacco product pressure drop; the filter pressure drop: the cigarette paper porosity and/or the ventilation level.
However, the prior art to Gong discloses a method based on the genetic algorithm for obtaining optimum formula scheme of tobacco groups by examining parameters including those released during burning, such as combustibility (i.e. combustible tobacco product) (abstract; p. 1532, col. 1, par. 1; p. 1533, col. 1, par. 1). Gong also teaches sensory indexes of strength and thickness (p. 1533, col. 1, par. 1), which are considered to read on tobacco rod and/or filter density and firmness or combustible tobacco product dimensions as instantly claimed, it is considered that Gong fairly teaches that at least two of the selected design parameters include at least one of the subset as instantly claimed.
Regarding instant claim 2, reference application claim 2 discloses the limitations of instant claim 2.
Regarding instant claim 3, reference application claim 3 discloses the limitations of instant claim 3.
Regarding instant claim 4, reference application claim 4 discloses the limitations of instant claim 4.
Regarding instant claim 5, reference application claim 5 discloses the limitations of instant claim 5.
Regarding instant claim 6, reference application claim 6 discloses the limitations of instant claim 6.
Regarding instant claim 7, reference application claim 72 discloses the limitations of instant claim 7.
Regarding instant claim 8, reference application claim 8 discloses the limitations of instant claim 8.
Regarding instant claim 9, reference application claim 9 discloses the limitations of instant claim 9.
Regarding instant claim 10, reference application claim 10 discloses the limitations of instant claim 10.
Regarding instant claim 11, reference application claim 11 discloses the limitations of instant claim 11.
Regarding instant claim 12, reference application claim 12 discloses the limitations of instant claim 12.
Regarding instant claim 13, reference application claim 13 discloses the limitations of instant claim 13.
Regarding instant claim 14, reference application claim 14 discloses the limitations of instant claim 14.
Regarding instant claim 15, reference application claim 15 discloses the limitations of instant claim 15.
Regarding instant claim 16, reference application claim 16 discloses the limitations of instant claim 16 except for wherein the at least two selected input parameters include at least one of the combustible tobacco product dimensions, the tobacco weight, the tobacco rod and/or filter density: the tobacco rod and/or filter firmness the open and/or closed combustible tobacco product pressure drop; the filter pressure drop: the cigarette paper porosity and/or the ventilation level.
However, Gong also teaches sensory indexes of strength and thickness (p. 1533, col. 1, par. 1), which are considered to read on tobacco rod and/or filter density and firmness or combustible tobacco product dimensions as instantly claimed, it is considered that Gong fairly teaches that at least two of the selected design parameters include at least one of the subset as instantly claimed.
Regarding instant claim 19, reference application claim 21 discloses the limitations of instant claim 19.
Regarding instant claim 20, reference application claim 22 discloses the limitations of instant claim 20.
Regarding claims 1-16 and 19-21, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine, in the course of routine experimentation and with a reasonable expectation of success, the reference application and Gong because both references disclose methods for designing tobacco products using genetic algorithms. The motivation to design a combustible tobacco product using the genetic algorithm of the reference application would have been to use multi-intelligent techniques and expert knowledge to overcome the very complex, nonlinear and uncertain problems associated with the complex reactions and chemical components in tobacco burning in cigarettes, as taught by Gong (p. 1532, col. 1-2).
Response to Applicant Arguments
At p. 13-14, Applicant submits that Gong NPL would not teach design of combustible tobacco products because Gong does not teach selected input parameters include at least one of the combustible tobacco product dimensions, the tobacco weight, the tobacco rod and/or filter density: the tobacco rod and/or filter firmness the open and/or closed combustible tobacco product pressure drop; the filter pressure drop: the cigarette paper porosity and/or the ventilation level.
It is respectfully submitted that this is not persuasive. As set forth in the above rejection regarding 18/262,795, Gong is not relied upon for teaching the various input parameters, as the copending application teaches those limitations. Gong is merely relied upon for teaching the application of those input parameters to a combustible tobacco product, which Gong clearly teaches (abstract; p. 1532, col. 1, par. 1; p. 1533, col. 1, par. 1). Regarding 18/262,786, as Gong teaches at least strength and thickness, which are considered to read on tobacco rod and/or filter density and firmness or combustible tobacco product dimensions as instantly claimed, it is considered that Gong fairly teaches that at least two of the selected design parameters include at least one of the subset as instantly claimed.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANNA NICOLE SCHULTZHAUS whose telephone number is (571)272-0812. The examiner can normally be reached on Monday - Friday 8-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Olivia Wise can be reached on (571)272-2249. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.N.S./Examiner, Art Unit 1685
/OLIVIA M. WISE/Supervisory Patent Examiner, Art Unit 1685