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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/3/2025 has been entered.
Response to Amendment
This office action is in response to Applicant’s amendment filed 12/3/2025.
Claim 9 is amended.
Claims 11 and 15 are cancelled.
Claims 1-10 and 12-16 are pending. Claims 1-8 and 14 have been withdrawn.
The Examiner withdraws the objection to claim 9 for minor informalities due to Applicant’s amendment filed 12/3/2025.
Response to Arguments
Applicant’s arguments, see pages 6-7, filed 12/3/2025, with respect to claim 9 have been fully considered and are persuasive. The rejection of 12/3/2025 in view of Atsuyuki has been withdrawn.
Particularly, Applicant argues that one of skill in the art would understand the subject matter of “wherein the second groove is open in its axial direction on its distal end with respect to the first groove” clearly refers to the longitudinal extension because the limitation referred to the “distal end” of the second groove (p. 6-7). After reconsideration of the claim limitation as a whole, the Examiner notes that the combination of “wherein the first groove and the second groove extend in a first direction” in combination with “wherein the second groove is open in its axial direction on its distal end with respect to the first groove” (emphasis added) would require the “axial direction” to be the longitudinal extension along the first direction in order for the second groove’s distal end to be open with respect to the first groove.
Applicant' s arguments, see pages 7-8, filed 12/3/2025, with respect to the rejection(s) of claim(s) 9-11, 13, and 16 under 35 U.S.C. 103 as being unpatentable over Consolante have been fully considered and are persuasive. Applicant has amended claim 9 to include the limitation “wherein a step is present in between the first groove and the second groove.” Consolante fails to disclose such a limitation. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly cited prior art.
Additionally, Applicant states that “[t]he Examiner regards the blow ring 238 of Atsuyuki as a step” (p. 8). However, the Examiner notes that the Office Action dated 9/3/2025 neither rejects claim 15 in view of Atsuyuki nor interprets the blow ring 238 of Atsuyuki as a step.
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 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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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Rudszinat (US 3164243) teaches a deflector arranged close to the periphery of a drum that shifts double length plugs in their axial direction towards the center of the grooves to form a single file (Fig. 6b; col. 4, ll. 56-70).
Sexstone (US 3513856) teaches a machine for inserting filter plug sections into plastic cigar mouthpieces (title) comprising a drum (12) comprising a plurality of flutes (37) and shoulders (38; similar to the “step”) which closely corresponds to the thickness of the tubular end (13) of the mouthpiece (14) to insure accurate entry of the filter (15) into the mouthpiece with little or no deformation at the forward end of the filter (col. 4, ll. 13-24; see Fig. 8-9).
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