DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
This office action is in response to Applicant’s amendment filed 4/23/2026.
Claims 11 and 15 are cancelled.
Claims 17-18 are newly added.
Claims 1-10, 12-14, and 16-18 are pending. Claims 1-8 and 14 have been withdrawn.
Response to Arguments
Applicant's arguments filed 4/23/2026 have been fully considered but they are not persuasive.
Claim 9
Applicant argues that Consolante in view of Okninski does not teach or suggest the second groove is open in its axial direction on its distal end with respect to the first groove (p. 8). Specifically, Applicant argues that Consolante merely describes seats 111 merely as seats on first supplying drum 110 that accommodate first components and supply those components to the central portion of seat 101 on flat drum 100, and that Consolante does not describe seat 111 as having a distal end that is open in the claimed axial/longitudinal direction (p. 9).
The Examiner respectfully disagrees. While the Examiner notes that Consolante does describe one incident of the seats 111 as being on the first supplying drum ([0058]), the preponderance of evidence also shows that Consolante describes seats 111 as being part of the flat drum. Specifically, 2/3 of all of Consolante’s descriptions show that the seats 111 are part of the flat drum 100. First, Consolante describes that a third detector (132a, 132b) is provided downstream of the third supplying drum 130a, 130b to check each seat 111 of the flat drum 100 for the presence of the combustible heat sources 23 ([0071]). This directly shows that the seat 111 belongs to the flat drum. Second, Consolante describes that one aspect of the invention does not place the combustion heat sources 23 in the seat 101 of the flat drum ([0096]) but instead uses the third detector 132b to detect that the combustion heat sources 23 is present with in the seat 111 ([0097]). One of ordinary skill in the art would understand that the combination of [0071] and [0096] illustrate that the flat drum 100 includes a first seat 101 that is configured to receive heat sources 23 detected by a third detector 132a and a second seat 111 that is configured to receive heat sources 23 detected by a third detector 132b. As illustrated in Fig. 1, the distal end of the second seats 111 are open to the first seats 101 outside of the ejection seats 103a and 103b.
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Applicant notes that Consolante describes ejection seats 102a, 102b, 103a, 103b and compressing guides 104a, 104b and argues that Consolante merely describes an ejection-related opening, not a disclosure of the claimed groove geometry in the assembly sense (p. 11-12).
The Examiner has noted Applicant’s argument but finds it unpersuasive. Particularly, the ejection-related opening (see Fig. 1 above for Examiner’s understanding of Applicant’s argument) is not interpreted by the Examiner as the “distal end.” Rather, the distal end of the second seat 111 is interpreted as the end of the second seat that abuts the first seat 101 (see Fig. 1 above).
Applicant notes that the instant specification describes that the distal end of the second groove is free of a counter-wall (citing p. 4, ll. 4-5) and that the open distal end reduces risk that the first component in the form of a capsule breaks when a failure of the insertion operation occurs… (citing p. 5, ll.1-5) (p. 9-10, 12). Applicant argues that Consolante neither discloses nor suggests an open end on the side toward which the components are urged during assembly (p. 12).
The Examiner notes Applicant’s argument but finds it unpersuasive. Particularly, the claims do not require any specific functional language of urging the components during assembly. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Okninski does not cure the deficiencies of Consolante for the “second groove is open in its axial direction on its distal end with respect to the first groove” (p. 12).
The Examiner finds Applicant’s argument unpersuasive because Okninski is not relied upon for such a limitation. Rather, as discussed above, Consolante discloses such a limitation.
Applicant argues that Okninski does not cure the deficiency of Consolante and does not teach or suggest that a step is present in between the first groove and the second groove (p. 8). Specifically, Applicant argues that in Okninski, each slot 4 only represents a single groove for receiving a rod-like product rather than a first and second groove arranged adjacent to each other (p. 9). Moreover, Applicant argues that Examiner’s reliance on gap 9 is misplaced because a gap or opening is associated with the introduction of a track, not a “step” between the first and second grooves (p. 9). Applicant argues that the bottom surfaces 10 on opposite sides of the gap remain on the same level (p. 9).
The Examiner respectfully disagrees.
First, “[w]hen the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art.” MPEP 2125. Here, although Okninski describes Fig. 7 as a singular slot 4, as Applicant describes, the drawings clearly show the slot comprises multiple slot segments separated by gaps (see also Fig. 2; [0044]).
Second, the Examiner notes that the instant specification does not explicitly define the word “step.” As such, one of ordinary skill in the art would understand that the term “step” simply means “a steplike offset or part usually occurring in a series” (see Merriam-Webster definition 8). The Examiner agrees that the bottoms surfaces 10 on the opposite sides of the gap remain at the same level. However, the bottom surfaces 10 transition from an elevated position in the first slot part, to a depressed position (i.e., a step down) in the gap 9, to another elevated position in the second slot part. The bottom of the gap 9 still resembles a steplike offset from the bottom surface 10 of the slot 4. The Examiner further notes that there is nothing in the claims that require opposite sides of the gap to remain at different levels.
The Examiner suggests further specifying the structural dimensions of the step to clarify Applicant’s distinction (e.g., p. 11, ll. 24-33) to overcome the current rejection.
Claim 12
Applicant argues that Okninski does not disclose that different vacuum forces are applied to different openings 11, much less that such different forces are deliberately selected to create a greater holding force for one component that another (p. 16).
The Examiner find Applicant’s argument unpersuasive because the Examiner does not infer that Okninski applies different vacuum forces to different openings, as Applicant states. Rather, the Examiner is saying that of the amount of force applied in the respective slots is proportional to the number of openings in the seats. In other words, because modified Consolante’s first seat includes one opening, and second seat includes two openings, the force applied in the second seat will be proportionally greater than the force applied in the first seat.
Claim Interpretation
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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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 use the word “means,” and are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Such claim limitation(s) is/are: a “negative pressure holding means…being adapted such that the holding force regarding the second component in the direction of the extension of the second groove is greater than the holding force regarding the first component in the direction of the extension of the first groove” in claim 12.
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 “detection system…adapted to detect the presence of the first component inside the second component in the second groove” in claim 13.
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.
Accordingly, the claim limitations are interpreted as follows:
“negative pressure holding means…being adapted such that the holding force regarding the second component in the direction of the extension of the second groove is greater than the holding force regarding the first component in the direction of the extension of the first groove” is being interpreted as “one or several air suction openings or holes which are connected to a negative pressure source” (p. 6, ll. 21-26) and equivalents thereof;
“detection system…adapted to detect the presence of the first component inside the second component in the second groove” is being interpreted as “a capacitive sensor” (p. 6, ll. 33-36) and equivalents thereof.
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 9-10, 12-13, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Consolante (US 2018/0213842; of record) in view of Okninski (US 2021/0000164).
Regarding claim 9, Consolante teaches an apparatus (10) for manufacturing a multicomponent aerosol forming article ([0049]) comprising:
a plurality of first seats (101; Fig. 1; “first groove”) for receiving a second component (22), such as an aerosol forming substrate ([0065]);
a plurality of second seats (111; “second groove”) for receiving a first component (21) such as a filter plug ([0060]); and
compressing guides (104a, 104b; Fig. 3; “guide element with an inclined engagement surface”),
wherein the first and second seats extend in a vertical direction (see Fig. 4; “first direction”),
wherein the first and second seats move to in a rightward transporting direction ([0018], [0075]; see Fig. 4; “movable relative to the guide element in a second direction”), while the guide element is arranged over the first seats (see Figs. 3-4),
wherein the first and second seats are formed on a flat drum (100), wherein the compressing guides are arranged over a surface of the flat drum (see Fig. 3), and the flat drum has a curved portion (see Fig. 1; i.e., the flat drum has a “circumferential direction” such that the compressing guides are inclined with respect to the curved portion (compare Fig. 2 and 3); and
wherein the second seats (111) are open in its vertical direction (i.e., “axial direction”) on its distal end with respect to the first seats (101) (see Fig. 1; outside the seats are open to each other outside of the ejection seats (103a, 103b).
Regarding the claim limitation “for receiving a first component of the aerosol generating article” and “for receiving an at least partially hollow second component of the aerosol generating article,” such limitations are interpreted as an article worked upon by the apparatus which does not impart patentability to the claims. MPEP 2115.
Moreover, Consolante teaches that the transporting means may comprise a flat drum ([0021]), and discloses other drums (106-109) that are cylindrical rather than flat (see Fig. 1).
However, Consolante does not explicitly teach that the guide element is arranged around a circumference of the drum. In other words, it is unclear from the figures whether the compressing guides extend to the curved portion of the flat drum.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the shape of the flat drum to be a cylindrical drum as in Consolante because such a modification involves a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04 (IV). Therefore, modified Consolante discloses the first and second seats are formed on a modified cylindrical drum (100) such that the compressing guides (104a, 104b) are arranged over the cylindrical surface of the drum (i.e., circumference).
Furthermore, Consolante discloses a check preferably takes place at a given position along the transporting direction of the transport means, where a detector (112; 122a,b; 132a, b) is placed which checks the presence or absence of components preferably in all seats of the transporting means ([0018]).
However, Consolante is silent as to a step is present between the first groove and the second groove.
Okninski teaches a device for checking quality of rod-like products (abstract) comprising a drum (15; Figs. 6-7) including a socket (4; Fig. 7; illustrating six sockets; “first groove” and “second groove”; see also sockets 4a, 4b, 4c in Fig. 2), separated by a gap (9; Fig. 7; see [0044]; “step present in between the first groove and the second groove”) and tracks (7) with a contact surface (8), wherein a vacuum is supplied into openings (11; [0054]), such that the attraction force on a product (R’) is strong enough to sustain the product within the socket but also enable a complete rotation and rolling over the contact surface ([0054]) such that a scanning device (5; equivalent to “detector”) to check the physical properties of the product ([0041]).
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It would have been obvious to said skilled artisan to have modified (1) Consolante’s first and second seats to include gaps, tracks, and openings supplied with a vacuum as in Okninski and (2) Consolante’s detectors to additionally check a physical property of the rod components as in Okninski in order to obtain the predictable result of enabling rotating of the rod components with the benefit of controlling the entire circumference surface of the rod-like product without the necessity of transferring to another transferring device (Okninski; [0008]).
Regarding claim 10, modified Consolante discloses that the drum moves in the transporting direction (see arrow in Fig. 1; [0055]) and the compressing guides (104a, 104b) are provided downstream to compress the components in a direction normal to the transporting direction ([0075]; “stationary”).
Regarding claim 12, modified Consolante discloses the first seat includes one opening (Okninski; 11; Fig. 7) and the second seat includes two openings (Okninski; 11; Fig. 7) each supplied with a vacuum (“negative pressure holding means” as interpreted under 112(f) section above) such that an attraction force on the product enables the product to be sustained within the sockets (Okninski; [0054]).
Regarding claim 13, modified Consolante discloses a gap detector (105; equivalent to “detection system” as interpreted under the 112(f) section above) to check if gaps are present between components (21, 22, 23; [0075], [0085]).
Regarding claim 16, modified Consolante discloses the compressing guide (104a, 104b) having the inclined engagement surface (see annotated Fig. 4, corresponding to the red line) that partially overlaps the first groove and the second groove in the first direction (see annotated Fig. 4, the blue line corresponds to the boundary of the first upper groove and the second lower groove such that the red line of the inclined engagement surface crosses the blue line boundary of the first and second grooves). Consolante illustrates that the inclined engagement surface first pushes the third components (23) in the first grooves towards the second components (22) in the second grooves (see Fig. 4); then the inclined engagement surface further pushes the combined third components (23) and second components located in the second grooves towards first components (21) (see Fig. 4). This further supports the position that the inclined engagement surface needs to extend into the second groove in order to push both the second components (22) and third components (23) towards the first components (21).
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Regarding claim 17, modified Consolante discloses wherein the plurality of seats (101; “first groove”) are formed in the flat drum ([0056]) and the plurality of seats (111; “second groove”) are part of the drum ([0071]). In other words, Consolante describes that the seats 101 and 111 are on the same drum 100.
Regarding claim 18, modified Consolante discloses the gap (Okninski; 9; has a “step”) having a bottom surface (i.e., “junction surface”) representing the step that is between the first socket and the second socket (see annotated Fig. 7 of Okninski).
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 SONNY V NGUYEN whose telephone number is (571)272-8294. The examiner can normally be reached Monday - Friday; 7:00 AM - 3:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Y Louie can be reached at (571) 270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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