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, 3-7, and 9-10 are pending. Claims 1 and 9 have been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 7/2/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 7/2/2026 have been fully considered but they are not persuasive.
Regarding the rejections under 35 U.S.C. § 112(b), while Applicant’s amendments have addressed some of the indefiniteness rejections noted in the prior Office action, the Amendments did not address the indefiniteness of the “entwined and entangled with one another” limitation of claim 9.
Regarding the rejections under 35 U.S.C. § 103, Applicant states that “The Office [a]ction does not identify an articulated reason why a person of ordinary skill would have modified Karakane’s cigarette filter tow band to arrive at [the particular combination of ranges] of hollow-filament proportion, hollow portion, outer diameter, and crimped-tow structure” (Remarks, Page 8). This argument is not persuasive as the rejection of claim 1 stated, regarding the hollow portion, that using the range taught by Rasouli, for the benefit of optimizing the filament’s ability to hold additive material and control flow as discussed in ¶ 0035 of Rasouli, overlaps the claimed range of 25% to 90%; regarding the outer filament diameter, that using the range taught by Rasouli, for the benefit of optimizing the filament’s ability to hold additive material and control flow as discussed in ¶ 0035 of Rasouli, overlaps the claimed range of 75 µm to 100 µm; regarding the mass fraction, that it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have combined the Y-shaped cellulose acetate filaments and hollow cellulose acetate filaments taught by Karakane to have 50% Y-shaped cellulose acetate filaments and 50% hollow cellulose acetate filaments resulting in mass fraction of the hollow cellulose acetate filaments within the claimed range of 40% to 90% per MPEP § 2144.06(I); and regarding the crimp index, that using the range taught by Dollhopf, for the benefit of producing a desired draw resistance as discussed in ¶ 0032 of Dollhopf, overlaps the claimed range of 10% to 60%.
Applicant further argues that “Although Karakane states that the filaments may have various cross-sectional shapes and ‘may also have a hollow cross section,’ Karakane identifies a Y-shaped cross section as preferred for better cigarette filter performance” (Remarks, Pages 8-9). This argument is not persuasive as “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”, MPEP § 2123(II).
Applicant further argues that “Karakane therefore does not disclose or suggest the claimed hollow portion of 25% to 90%, the claimed outer filament diameter of 75 µm to 100 µm, or a mass fraction of hollow cellulose acetate filaments of 40% to 90%” (Remarks, Page 9). This argument is not persuasive as Karakane is not relied upon for disclosing the entirety of these limitations. Instead, regarding the hollow portion, the range taught by Rasouli overlaps the claimed range of 25% to 90%; regarding the outer filament diameter, the range taught by Rasouli overlaps the claimed range of 75 µm to 100 µm; and regarding the mass fraction, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have combined the Y-shaped cellulose acetate filaments and hollow cellulose acetate filaments taught by Karakane to have 50% Y-shaped cellulose acetate filaments and 50% hollow cellulose acetate filaments resulting in mass fraction of the hollow cellulose acetate filaments within the claimed range of 40% to 90% per MPEP § 2144.06(I). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues that “Nor does Karakane teach that selecting such features would produce the balance achieved by Applicant’s invention, namely low draw resistance, low filtration performance, and cooling while maintaining a useful cellulose acetate tow structure” (Remarks, Page 9). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., namely low draw resistance, low filtration performance, and cooling while maintaining a useful cellulose acetate tow structure) are not recited in the rejected claim(s). 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 further argues that “Rasouli, however, uses hollow fibers in a materially different way” (Remarks, Page 9). This argument is not persuasive as the rejection did not rely on the manner in which Rasouli intended to use the hollow fibers; instead, Rasouli was relied upon for how Rasouli manufactured hollow fibers.
Applicant further argues that Rasouli “does not provide a reason to modify Karakane’s crimped cellulose acetate tow band into the presently claimed filter-filler material” (Remarks, Page 9). This argument is not persuasive as Rasouli is not relied upon for providing a reason to modify Karakane’s crimped cellulose acetate tow band into the presently claimed filter-filler material. Instead, Karakane discloses a material which, when modified by Rasouli and Dollhopf, renders obvious the product of claim 1.
Applicant further argues that “Applicant’s specification describes a different operating principle for the claimed hollow cellulose acetate filaments” (Remarks, Page 10). This argument is not persuasive as the claims are not directed to a manner of using hollow cellulose acetate filaments but, instead, to a method of manufacturing a filter material and a filler material.
Applicant further argues that the ranges taught by Rasouli cannot render obvious the relevant limitations of claim 1 because “Rasouli’s exemplary hollow fiber” falls outside the claimed range and Rasouli’s disclosed broader range overlaps the claimed range “only at a single endpoint”. Applicant then alleges that this rationale demonstrates that selection of a point within the claimed range “relies on hindsight selection of endpoints from Rasouli and insertion of those endpoints into Karakane without a reasoned explanation why a skilled artisan would have expected the claimed structure and function” (Remarks, Page 11). This argument is not persuasive as “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”, MPEP § 2123(II), and overlapping ranges, even if only by a single endpoint, establishes a prima facie case of obviousness, MPEP § 2144.05(I).
Applicant further argues that “Karakane identifies the Y-shaped cross section as preferred for better cigarette-filter performance, and the Office [a]ction’s proposed 50/50 mixture is not disclosed by Karakane or Rasouli” (Remarks, Page 11). This argument is not persuasive as “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”, MPEP 2123(II), and "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." (In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP § 2144.06(I)).
Applicant further argues that Dollhopf “does not provide a reason to combine Dollhopf’s crimp teaching with Karakane’s marker-containing cigarette filter tow band and Rasouli’s hollow-fiber membrane/additive teachings to arrive at amended claim 1” (Remarks, Page 12). This argument is not persuasive as Dollhopf teaches a benefit of filter tow with this crimp index in that it produces a desired draw resistance (¶ 0032). 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 modified the cellulose acetate filaments taught by Karakane to have a crimp index of more than 40%, in order to obtain this benefit.
Applicant further argues that “Dollhopf does not address that flow-around hollow-filament mechanism” (Remarks, Page 12). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that flow-around hollow-filament mechanism) are not recited in the rejected claim(s). 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 further argues that “The Office [a]ction has not explained why a person of ordinary skill would combine Karakane’s marker-containing, preferably Y-shaped tow band, Rasouli’s membrane/additive hollow fibers, and Dollhopf’s high-crimp draw-resistance teaching to arrive at the claimed crimped hollow cellulose acetate tow” (Remarks, Page 13). This argument is not persuasive as the Office action noted that Rasouli teaches benefits of optimizing the filament’s ability to hold additive material and control flow (¶ 0035); 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 modified the hollow cellulose acetate filaments taught by Karakane to have the outer and inner diameters taught by Rasouli, in order to obtain these benefits. Further, the Office action noted that Dollhopf teaches a benefit of filter tow with a crimp index over 40% in that it produces a desired draw resistance (¶ 0032); 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 modified the cellulose acetate filaments taught by Karakane to have a crimp index of more than 40%, in order to obtain this benefit.
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.
Claim 9 is 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 9 includes the limitation “entwined and entangled with one another”. It is unclear to one of ordinary skill in the art what is required by the different limitations of “entwined” and “entangled”, which are written as separate requirements despite their similarities. For the purpose of this Office action, “entwined and entangled with one another” is interpreted as “twisted together with one another”.
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, 5-7, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Karakane et al. (US 2017/0099871 A1) in view of (Rasouli et al., US 2007/0074733 A1) and Dollhopf et al. (US 2004/0237982 A1), as evidenced by Watson, Jr. (US 3,384,932).
Regarding claim 1, Karakane discloses a method for manufacturing a filter material and a filler material for mouthpieces for use in smoking products or HNB products consisting of cellulose acetate filaments and/or cellulose acetate staple fibers (¶ 0114, 0115, 0117), the method comprising the steps of:
obtaining a solution of cellulose acetate having an acetyl value of at least 53% in acetone (“a cellulose acetate having a degree of acetyl substitution of 2.5 was dissolved in acetone”, ¶ 0114, where a degree of acetyl substitution of 2.5 corresponds to cellulose acetate having between 2 and 3 acetyl substitutions, i.e., a mixture of secondary cellulose acetate and tertiary cellulose acetate; as evidenced by Watson, Jr., secondary cellulose acetate is known to have an acetyl value of 55 to 59.5%, see Watson, Jr., Col. 4, Lines 5-8; therefore, the cellulose acetate of Karakane has an acetyl value of at least 55%, which falls within the claimed range of at least 53% (MPEP § 2131.03)).
pressing the solution of cellulose acetate through a spinneret (“discharged (ejected) through spinnerets”, ¶ 0114, where the spinnerets are “spinneret 1”, Fig. 1, ¶ 0082) having multiple openings (“two or more spinning chimneys”, ¶ 0082) to form the cellulose acetate filaments (“In the step of dry spinning, cellulose acetate filaments were initially formed”, ¶ 0114);
forming a multitude of the cellulose acetate filaments and/or the cellulose acetate staple fibers obtained by cutting the cellulose acetate filaments (“cut”, ¶ 0117) into a filter tow (“a multiplicity of the cellulose acetate filaments was bundled to form a cellulose acetate tow”, ¶ 0114), wherein the filter tow is crimped (“The cellulose acetate tow . . . was subjected to crimping (crimper treatment)”, ¶ 0115),
wherein the spinneret through which the solution of cellulose acetate is pressed is configured such that Y-shaped cellulose acetate filaments are spun (“Y-shaped cross section”, ¶ 0114).
However, Karakane also teaches hollow cellulose acetate filaments in addition to Y-shaped cellulose acetate filaments (“The filaments constituting the cigarette filter tow band according to the present invention may have a cross section in any shape not limited and may have a round cross section or a cross section of any other shape, such as . . . Y-shaped . . . . The filaments may also have a hollow cross section.”, ¶ 0028). 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 modified the spinneret through which the solution of cellulose acetate is pressed to be configured such that hollow cellulose acetate filaments are spun (¶ 0029).
Karakane does not explicitly disclose the mass fraction of the hollow cellulose acetate filaments. However, it has been held that "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." (In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP § 2144.06(I)). 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 combined the Y-shaped cellulose acetate filaments and hollow cellulose acetate filaments taught by Karakane. Such a mixture with 50% Y-shaped cellulose acetate filaments and 50% hollow cellulose acetate filaments has a mass fraction of the hollow cellulose acetate filaments between 40% to 90% (MPEP § 2131.03).
Further, Karakane does not disclose the percentage of a hollow portion in the filter material and the filler material in relation to a section orthogonal to the cellulose acetate staple fibers of the filter material and filler material or an outer filament diameter of the cellulose acetate filaments.
Rasouli, in the same field of endeavor, teaches that hollow cellulose acetate filaments (“hollow fibers can be made of . . . cellulose acetate”, ¶ 0028) formed by spinning (“hollow fibers can be made by spinning”, ¶ 0040) may have an outer diameter of approximately 100 μm to approximately 2100 μm and an inner diameter of approximately 50 μm to approximately 1500 μm (“the hollow fibers can have a lumen (i.e., inner) diameter of approximately 50 microns to approximately 1500 microns . . . . and an outer diameter of approximately 100 microns to approximately 2100 microns”, ¶ 0038). Rasouli also teaches benefits of using these dimensions for the hollow filaments in that they optimize the filament’s ability to hold additive material and control flow (¶ 0035). 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 modified the hollow cellulose acetate filaments taught by Karakane to have the outer and inner diameters taught by Rasouli, in order to obtain these benefits.
In the material of the combination, a hollow portion in the filter material and the filler material in relation to a section orthogonal to the cellulose acetate staple fibers of the filter material and filler material amounts to 25% to 90% (the range taught by Rasouli overlaps the claimed range of 25% to 90% as, for example, an inner diameter of 50 μm and outer diameter of 100 μm corresponds to a 25% hollow cross-sectional area, see MPEP § 2144.05(I)), and an outer filament diameter of the cellulose acetate filaments is 75 μm to 100 μm (the range approximately 100 μm to approximately 2100 μm overlaps the claimed range of 75 μm to 100 μm, see MPEP § 2144.05(I)).
Karakane discloses that the filter tow is crimped (“The cellulose acetate tow . . . was subjected to crimping (crimper treatment)”, ¶ 0115). However, Karakane does not disclose the crimp index of the cellulose acetate filaments.
Dollhopf, in the same field of endeavor, teaches cellulose acetate filaments with a crimp index of more than 40% (¶ 0032). Dollhopf also teaches a benefit of filter tow with this crimp index in that it produces a desired draw resistance (¶ 0032). 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 modified the cellulose acetate filaments taught by Karakane to have a crimp index of more than 40%, in order to obtain this benefit. Since the range more than 40% overlaps the claimed range of 10% to 60%, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 5, Karakane in view of Rasouli and Dollhopf teaches the method according to claim 1, as stated above. Karakane further discloses wherein the cellulose acetate filaments and the cellulose acetate staple fibers comprise a plasticizer, and wherein the plasticizer is triacetin, triethylene glycol diacetate, citric acid diethyl ester, or combinations thereof (“triacetin as a plasticizer”, ¶ 0117).
Regarding claim 6, Karakane in view of Rasouli and Dollhopf teaches the method according to claim 1, as stated above. Karakane further discloses wherein the cellulose acetate filaments have a fineness of 5 denier to 30 denier (while Example 1 has a “filament denier of 3.0”, ¶ 0114, Karakane teaches that the filament denier can be within the range of 1 to 20, ¶ 0024; the range 1 denier to 20 denier overlaps the claimed range of 5 denier to 30 denier, see MPEP § 2144.05(I)).
Regarding claim 7, Karakane in view of Rasouli and Dollhopf teaches the method according to claim 1, as stated above. Karakane further discloses wherein a total titer of the filter and filler material is 4,000 denier to 40,000 denier (while Example 1 has a total denier of 35000 deniers, Karakane teaches that the total denier can be within the range of 10000 to 50000, ¶ 0021; the range 10,000 denier to 50,000 denier overlaps the claimed range of 4,000 denier to 40,000 denier, see MPEP § 2144.05(I)).
Regarding claim 9, Karakane in view of Rasouli and Dollhopf teaches the method according to claim 1, as stated above. Karakane further discloses wherein the cellulose acetate filaments are twisted together with one another (“bundled”, ¶ 0082).
Regarding claim 10, Karakane in view of Rasouli and Dollhopf teaches the method according to claim 1, as stated above. Karakane further discloses wherein a binder is provided for binding the cellulose acetate filaments (“bonded with a plasticizer”, ¶ 0068).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Karakane et al. (US 2017/0099871 A1) in view of (Rasouli et al., US 2007/0074733 A1) and Dollhopf et al. (US 2004/0237982 A1) as applied to claim 1 above, and further in view of Teufel et al. (US 6,776,168 B1).
Regarding claim 3, Karakane in view of Rasouli and Dollhopf teaches the method according to claim 1, as stated above. Karakane further discloses wherein the cellulose acetate filaments include a plasticizer (“triacetin as a plasticizer”, ¶ 0117) in even distribution thereof (“uniformly sprayed”, ¶ 0117).
However, Karakane does not disclose wherein a water-soluble adhesive is present on a surface of the cellulose acetate filaments.
Teufel, in the same field of endeavor, teaches applying a water-soluble adhesive to a surface of a cellulose acetate filament (“in the case of a non-thermoplastic cellulose ester, a water-soluble adhesive is used", Col. 7, Lines 65-66; "water soluble adhesive, which are preferably present on the surface of the fibres", Col. 10, Lines 8-9). One of ordinary skill in the art would have understood that there were benefits to including a water-soluble adhesive it that it both increases the structural integrity through adhesion and helps with disintegration by being water-soluble. 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 modified the cellulose acetate filaments of Karakane to have water-soluble adhesive present on a surface, as taught by Teufel, in order to obtain these benefits.
Regarding claim 4, Karakane in view of Rasouli and Dollhopf teaches the method according to claim 1, as stated above. Karakane further discloses wherein the cellulose acetate filaments and the cellulose acetate staple fibers comprise a plasticizer (“triacetin as a plasticizer”, ¶ 0117). However, Karakane does not disclose a plasticizer content of the plasticizer as a percentage of a total amount of filter material.
Teufel, in the same field of endeavor, teaches applying plasticizer to cellulose acetate filaments and cellulose acetate staple fibers (Col. 8, Lines 16-20) wherein a plasticizer content of the plasticizer is 1% to 40% of a total amount of filter material (“plasticiser content between 1-40%”, Claim 9). Teufel also teaches benefits to triacetin plasticizer applied in this manner in that it has a positive influence on taste while passing only a small amount of the plasticizer directly into the smoke (Col. 10, Lines 60-64). 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 applied the triacetin plasticizer taught by Karakane in the amount taught by Rasouli in order to obtain this benefit. The range 1% to 40% falls within the claimed range of 1% to 40% (see MPEP § 2131.03).
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.
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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