DETAILED ACTION
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 (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.
Status of the Claims
Claims 1-4 and 7-20 are pending. Claims 12-20 are withdrawn. Claims 1 and 10 have been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 8/19/2025 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see page 7 of Remarks filed 8/19/2025, with respect to the rejection of claim 10 under 35 U.S.C. 112(b) have been fully considered and are persuasive.
Applicant's arguments, see pages 7-9 of Remarks filed 8/19/2025, with respect to the rejection of claim 1 under 35 U.S.C. 1 have been fully considered but they are not persuasive.
Applicant argues that “there is no disclosure to indicate that the mandrel in Ruzycky can be turned and pushed at the same time”. This argument is not persuasive as Ruzycky discloses that the mandrel may be “turned” or “pushed” in ¶ 0350, and Figures 60A-C show that the mandrel is freely moveable in the device of Ruzycky and as such could be turned and pushed at the same time, satisfying the claim 1 limitation of “wherein the at least one conical wrapping body is configured to be rotatable in a rotational degree of freedom about the axis of symmetry of the wrapping body and translatable in a translational degree of freedom along the axis of symmetry of the wrapping body or an axis parallel thereto at the same time during a respective wrapping process” (emphasis added).
Applicant further argues that Ruzycky does not disclose translational movement of the mandrel during the wrapping process, when the wrapping process is defined as starting once the shaping mandrel has been fit across the through-holes. This argument is not persuasive as Applicant’s Specification also does not disclose translation of the conical wrapping body during the wrapping process, if the wrapping process is defined solely as the wrapping of the blank around the conical wrapping body. In fact, Applicant’s Specification discloses “translational movement of the conical wrapping bodies . . . after a wrapping process, which typically includes between 4 and 10 revolutions or wraps of the blanks” (emphasis added, see page 35 of Specification filed 5/13/2022, which corresponds to ¶ 0157 of US 2022/0395020 A1). Therefore, in order for both Ruzycky’s disclosure and Applicant’s disclosure to read on the new amendment to claim 1, “wherein the wrapping process comprises rotating and translating the conical wrapping body during the wrapping process to form the conical filter body”, “the wrapping process” must include translational movement of the conical wrapping body either before or after wrapping the blank. Ruzycky discloses this translational movement in ¶ 0350, as discussed further in the rejection of claim 1 below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 7-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 has been amended to add “the wrapping process” in lines 15-16, when claim 1 already included both “a wrapping process” in lines 7-8 (i.e., the wrapping process of the claimed method) and “a respective wrapping process” in lines 13-14 (i.e., a hypothetical wrapping process that the conical wrapping body is configured to be able to perform but does not perform as a part of the claimed method). Therefore, it is unclear to one of ordinary skill in the art which of the two wrapping processes “the wrapping process” in lines 15-16 is referencing. For the purpose of this Office Action, “the wrapping process” in lines 15-16 of claim 1 is interpreted as referring back to “a wrapping process” in lines 7-8 (i.e., the wrapping process of the claimed method).
Further, the amendment to claim 1 adds that “the wrapping process” comprises “rotating and translating the conical wrapping body during the wrapping process”. However, this conflicts with the description of the “wrapping process” in Applicant’s Specification, which sets forth that the step of translating the conical wrapping body occurs after the wrapping process (“A translational movement of the conical wrapping bodies . . . after a wrapping process, which typically includes between 4 and 10 revolutions or wraps of the blanks”, emphasis added, see page 35 of Specification filed 5/13/2022, which corresponds to ¶ 0157 of US 2022/0395020 A1). Therefore, it is unclear to one of ordinary skill in the art if “the wrapping process” of claim 1 is intended to include movement of the conical wrapping body directly before or after wrapping the blank, which is inconsistent with how the Specification described the “wrapping process”, or if “the wrapping process” of claim 1 is intended to exclude movement of the conical wrapping body directly before or after wrapping the blank (in which case, including a step of translating the conical wrapping body during this narrower wrapping process would be new matter). For the purpose of this Office Action, “the wrapping process” of claim 1, lines 15-16, is interpreted as comprising “rotating and translating the conical wrapping body” before, during, or after wrapping the blank (i.e., before, during, or after the wrapping step of “connecting at least two portions of the at least one blank to form the conical filter body”).
Claims 2-4 and 7-11 are indefinite due to their dependence from claim 1.
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.
Claims 1-4 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ruzycky (US 2021/0219598 A1) in view of Majer (GB 419,958, a copy of which was provided by applicant with IDS dated 5/13/2022).
Regarding claim 1, Ruzycky discloses a method for producing a conical filter body (“cone-shaped cigarette tubes”, ¶ 0349) for a conical filter of a smokable product (“cone-shaped cigarettes”, ¶ 0348), characterized by the following steps:
connecting at least two portions of at least one blank (“paper”, ¶ 0363) to form the conical filter body (“sealing the rolled cigarette tube or cone”, ¶ 363);
wherein a wrapping apparatus is used as a connecting apparatus which implements a wrapping process and which comprises at least one conical wrapping body (“shaping mandrel 922”, Fig. 63, ¶ 0350, which is a wrapping apparatus used as a connecting apparatus which implements a wrapping process, “wrap the paper around the shaping mandrel 922”, ¶ 0350) which is mounted so as to be movable in at least two different degrees of freedom (rotational degree of freedom “turned” and translational degree of freedom “pushed”, ¶ 0350), and
wherein the at least one conical wrapping body is configured to be rotatable in a rotational degree of freedom about the axis of symmetry of the wrapping body (“turned”, ¶ 0350) and translatable in a translational degree of freedom along the axis of symmetry of the wrapping body or an axis parallel thereto (“pushed”, ¶ 0350) at the same time during a respective wrapping process (¶ 0350),
wherein the wrapping process comprises rotating and translating the conical wrapping body during the wrapping process to form the conical filter body (¶ 0350, the wrapping process is interpreted as including the step of getting the mandrel in place for wrapping).
However, Ruzycky does not explicitly disclose the steps of
providing a strip-like or strip-shaped filter body material, and
separating at least one blank having a predefined geometry from the strip-like or strip-shaped filter body material,
as Ruzycky does not discuss the method of forming the blanks.
Majer, in the same field of endeavor, teaches a method for producing a conical body (“conical paper tubes”, Col. 1, Line 10) characterized by the following steps:
providing a strip-like or strip-shaped body material (“paper web 6”, Fig. 2, Col. 3, Line 4),
separating at least one blank having a predefined geometry from the strip-like or strip-shaped filter body material (“blank 16”, Fig. 2, Col. 3, Line 48).
Majer also teaches a benefit to forming blanks for conical bodies in this manner in that it prevents undue waste of paper (Col. 1, Lines 26-27). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used blanks formed by the method taught by Majer as the blanks for the method taught by Ruzycky in order to achieve this benefit.
Regarding claim 2, Ruzycky in view of Majer teaches the method according to claim 1, as stated above. Majer further teaches wherein the at least one blank having a curved basic shape (“chevron-shaped blanks”, Col. 1, Lines 12-13, with “curved edges”, Col. 1, Lines 29-30) is separated from the strip-like or strip-shaped filter body material (see Fig. 2).
Regarding claim 3, Ruzycky in view of Majer teaches the method according to claim 1, as stated above. Majer further teaches wherein the strip-shaped filter body material is collected in a collection apparatus after the at least one blank has been separated (as the remaining portion of the strip-shaped filter body material is described as “waste”, Col. 1, Line 27, one of ordinary skill in the art would have understood that it is collected in a collection apparatus, such as, for example, a trash can).
Regarding claim 4, Ruzycky in view of Majer teaches the method according to claim 1, as stated above. Majer further teaches wherein the at least one blank comprises a plurality of blanks (“blanks”, Fig. 2, Col. 1, Line 13), and wherein the plurality of blanks are separated from the strip-shaped filter body material in succession (“in succession”, Col. 1, Line 13). Ruzycky further teaches wherein the at least one blank comprises a plurality of blanks (“paper stack”, ¶ 0353) that are collected in a collection apparatus (“paperfeed assembly 950”, ¶ 0353).
Regarding claim 7, Ruzycky in view of Majer teaches the method according to claim 1, as stated above. However, Ruzycky does not disclose wherein a transfer apparatus, configured for transferring one or more of the at least one blank generated in a separation apparatus from the separation apparatus to a relocation apparatus arranged downstream thereof, is used which comprises at least one transfer body which is mounted so as to be movable in at least one degree of freedom.
Majer further teaches wherein a transfer apparatus (“suction nozzle 48”, Figs. 2 and 2a, Col. 3, Line 57), configured for transferring one or more of the at least one blank generated in a separation apparatus (“cutting device 2”, Fig. 1, Col. 3, Lines 38-39) from the separation apparatus to a relocation apparatus (“arm 39”, Fig. 2, Col. 5, Lines 22-27) arranged downstream thereof (Fig. 2), is used which comprises at least one transfer body (“suction nozzle 48”, Figs. 2 and 2a, Col. 3, Line 57) which is mounted so as to be movable in at least one degree of freedom (“nozzle 48 is mounted on a siding member 51 running in a guide 52”, Fig. 2a, Col. 3, Lines 63-65). Majer teaches a benefit of the transfer apparatus in that it ensures firm retention of the blank (Col. 4, Lines 76-80). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included the transfer step taught by Majer, using the transfer apparatus taught by Majer, in the method of the combination in order to obtain this benefit.
Regarding claim 8, Ruzycky in view Majer teaches the method according to claim 7, as stated above. Majer teaches wherein the transfer apparatus comprises the at least one transfer body which is mounted so as to be movable in at least one degree of freedom (as discussed in the rejection of claim 7 above), and wherein the at least one transfer body is mounted so as to be movable on at least one movement path (movement path along “guide 52”, Fig. 2a, Col. 3, Lines 64-65) into a first orientation and/or position (position at beginning of “guide 52” at which “suction nozzle 48” takes “blank 16” from “cutting device 2”, see Figs. 1 and 2a) in which it is possible to receive one or more of the at least one blank from the separation apparatus and into a second orientation and/or position (position at end of “guide 52” at which “suction nozzle 48” transfers “blank 16” to “arm 39” at “mandrel 23”, see Figs. 2 and 2a) in which it is possible to pass the one or more of the at least one blank to the relocation apparatus.
Regarding claim 9, Ruzycky in view of Majer teaches the method according to claim 1, as stated above. Ruzycky further discloses wherein a relocation apparatus (“rolling assembly 52” with “tapered rollers 990, 992”, Fig. 60C, ¶ 0348-0349), configured to relocate the at least one blank to a connecting apparatus (“shaping mandrel 922”, Fig. 63, ¶ 0350) downstream of a corresponding transfer apparatus (“paperfeed assembly 950 feeds rolling paper individually from a paper stack into the rolling assembly 52”, ¶ 0353) is used, the relocation apparatus comprises at least one relocation module (“tapered rollers 990, 992”, Fig. 60C, ¶ 0348-0349) which is mounted so as to be movable in at least one degree of freedom (“tapered rollers 990, 992 . . . have protrusions 422, 424 on each end, which rest in arched slots 917, allowing rollers to move up and down the arched slots 917 to form the cigarette tube”, ¶ 0349).
Regarding claim 10, Ruzycky in view of Majer teaches the method according to claim 9, as stated above. Ruzycky further discloses wherein the relocation apparatus is mounted so as to be movable on at least one movement path (movement path wherein “rollers 990, 992 . . . move up and down the arched slots 917 to form the cigarette tube”, ¶ 0349) into a first orientation and/or position (i.e., orientation in which the rollers receive the paper from the paperfeed) in which it is possible to receive the at least one blank from a conveying apparatus (“paperfeed assembly 950 feeds rolling paper individually from a paper stack into the rolling assembly 52”, ¶ 0353; “paperfeed assembly 950” is both a transfer apparatus and a conveying apparatus) arranged downstream of a separation apparatus (i.e., the conveying apparatus contains blanks that have been separated) and into a second orientation and/or position (i.e., orientation in which the rollers convey the paper to the mandrel) in which it is possible to pass the at least one blank to the connecting apparatus designed as a wrapping apparatus (“shaping mandrel 922”, Fig. 63, ¶ 0350; “shaping mandrel 922” is a connecting apparatus designed as a wrapping apparatus, “wrap the paper around the shaping mandrel 922”, ¶ 0350).
Regarding claim 11, Ruzycky in view of Majer teaches the method according to claim 1, as stated above. Ruzycky further discloses wherein a stabilizing apparatus (“piston 930”, Fig. 60C, ¶ 0351) configured for stabilizing the at least one blank during a wrapping process is used (“piston 930” stabilizes “shaping mandrel 922”, which in turn stabilizes the blank during a wrapping process), wherein the stabilizing apparatus is designed as a pressure apparatus (“spring-loaded”, ¶ 0351) which comprises at least one pressure element (“spring 946”, Fig. 60C, ¶ 0352) which is movable into at least one pressure position (“compress”, ¶ 0352).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747