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 16-17, 19-22, 24, and 28-30 are pending. Claims 24 and 28-30 are withdrawn. Claims 16-17, 19-22, 24, and 30 have been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 6/10/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pages 6-7 of Remarks filed 6/10/2026, with respect to the rejection of claim 16 under 35 U.S.C. 112(b) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Applicant's arguments, see pages 7 of Remarks filed 6/10/2026, with respect to the rejection of claim 16 under 35 U.S.C. 1 have been fully considered but they are not persuasive.
Applicant argues that “[n]owhere in Fernando is it disclosed or suggested that the amount of taggant actually applied is subsequently determined by a sensor.” (Remarks, Page 8). This argument is not persuasive as Fernando is not relied upon for disclosing the entirety of this feature. Instead, Fernando discloses applying a taggant, and Sikora discloses detecting an amount of a parameter with sensors. As such, it is the combination of Fernando in view of Sikora which discloses the limitation, as discussed in the rejections below. 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 “[p]aragraph 0019 of Fernando is not about detecting an amount of applied taggant.” (Remarks, Page 8). This argument is not persuasive as Fernando is not relied upon for disclosing the entirety of this feature. Instead, Fernando discloses applying a taggant, and Sikora discloses detecting an amount of a parameter with sensors. As such, it is the combination of Fernando in view of Sikora which discloses the limitation, as discussed in the rejections below. 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 “Sikora does not disclose or suggest using a downstream sensor, as part of the manufacturing process, to detecting an amount of applied taggant.” (Remarks, Page 9). This argument is not persuasive as Sikora is not relied upon for disclosing the entirety of this feature. Instead, Fernando discloses applying a taggant, and Sikora discloses detecting an amount of a parameter with sensors in a manufacturing line. As such, it is the combination of Fernando in view of Sikora which discloses the limitation, as discussed in the rejections below. 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 “neither of the cited references discloses or suggests detecting an amount of applied taggant.” (Remarks, Page 9). This argument is not persuasive as neither Fernando nor Sikora is relied upon individually for disclosing the entirety of this feature. Instead, Fernando discloses applying a taggant, and Sikora discloses detecting an amount of a parameter with sensors. As such, it is the combination of Fernando in view of Sikora which discloses the limitation, as discussed in the rejections below. 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 “neither reference teaches detecting an amount of applied taggant.” (Remarks, Page 9). This argument is not persuasive as neither Fernando not Sikora is individually relied upon for disclosing the entirety of this feature. Instead, Fernando discloses applying a taggant, and Sikora discloses detecting an amount of a parameter with sensors. As such, it is the combination of Fernando in view of Sikora which discloses the limitation, as discussed in the rejections below. 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).
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 16-17 and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (US 2016/0302488 A1) in view of Sikora et al. (US 2017/0143033 A1).
Regarding claim 16, Fernando discloses a method of manufacturing an aerosol-generating article (“aerosol-generating article”, ¶ 0019) comprising a tipping paper (“tipping papers”, ¶ 0019), a wrapper (“outer wrapper”, ¶ 0018), and a filter (“filters”, ¶ 0019), the method comprising the step of:
applying a taggant to the tipping paper (“taggant may be incorporated into any component of the aerosol-generating article, including . . . tipping papers”, ¶ 0019), where the tipping paper is secured to the filter by wrapping (Fernando discloses that the internal parts of the article are “circumscribed by an outer wrapper”, ¶ 0018).
However, Fernando does not disclose that the method of manufacturing further comprises the steps of, in a manufacturing line:
detecting an amount of the taggant that is applied via the applying, wherein the detecting is performed by a plurality of sensors, at least one of the sensors being positioned in the manufacturing line after application and securing of the tipping paper component to the filter, and at least one of the sensors positioned in the manufacturing line after wrapping with the wrapper;
determining whether the detected amount of the taggant is less than a first-predetermined amount; and
rejecting the aerosol-generating article when the detected amount of the taggant is less than the first-predetermined amount.
Sikora, in the same field of endeavor, discloses a method of manufacturing an aerosol-generating article (method of “manufacturing rod-like articles used in the tobacco industry”, ¶ 0001-0002), the method comprising the steps of, in a manufacturing line (manufacturing line of “manufacturing machine 1”, Fig. 1, ¶ 0037):
detecting a parameter of the aerosol-generating article (“check many different parameters which determine the articles quality”, which includes “measurements of the parameters”, ¶ 0004), wherein the detecting is performed by a plurality of sensors (sensors of “first measuring unit 5” and “second measuring unit 24”, “the measurements may be effected by . . . means of other sensors than the ones applied in the first measuring unit”, ¶ 0037);
determining whether the detected amount of the parameter is less than a first-predetermined amount (“The quality parameters have predetermined ranges, within which the values of the measured parameter should fall”, ¶ 0004); and
rejecting the aerosol-generating article when the detected amount of the parameter is less than the first-predetermined amount (“The control system receives the results of all measurements and takes the decision to reject an article if the actual value of any of the parameters does not fall within the required range of the acceptable parameter values”, ¶ 0004).
One of ordinary skill in the art would have understood that there was a benefit to detecting an amount of a parameter of an aerosol-generating article during manufacturing to determine if the parameter falls within a predetermined range and rejecting an aerosol-generating article with a parameter that falls outside of the predetermined range in that it removes aerosol-generating articles which have insufficient quality (¶ 0004). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to detect an amount of the taggant that is applied to the tipping paper of the aerosol-generating article of Fernando via the applying, wherein the detecting is performed by a plurality of sensors in a manufacturing line; determine whether the detected amount of the taggant is less than a first-predetermined amount; and reject the aerosol-generating article when the detected amount of the taggant is less than the first-predetermined amount, in order to obtain this benefit.
With regards to the detecting of the taggant occurring by at least one sensor positioned in the manufacturing line after application and securing of the tipping paper to the filter and at least one of the sensors positioned in the manufacturing line after wrapping with the wrapper, Sikora discloses that the sensors are placed in the manufacturing line after the assembly of the aerosol-generating article (the “forming unit 1C” is placed upstream of both the first sensor of “measuring unit 5” in Fig. 1 and the “second measuring unit 24” in Fig. 3, ¶ 0037). In the method of the combination, as both sensors are positioned in the manufacturing line after the assembly of the aerosol-generating article, both sensors are positioned in the manufacturing line after application and securing of the tipping paper to the filter, and both sensors are positioned in the manufacturing line after wrapping with the wrapper.
Regarding claim 17, Fernando in view of Sikora teaches the method of claim 16 as stated above. Fernando in view of Sikora does not explicitly disclose wherein that the first pre-determined amount of taggant is a concentration of 5 milligrams of taggant per square metre. However, the value of the first pre-determined amount corresponds to the minimum amount of taggant a component must have to not be rejected for quality assurance purposes. The efficacy of the first pre-determined amount of taggant for this result depends on its concentration. If the concentration of the first pre-determined amount is too low, then components with less than sufficient taggant would not be rejected, and if the concentration of the first pre-determined amount is too high, then components that do have sufficient taggant would be unnecessarily rejected. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the concentration of the first pre-determined amount of taggant such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 19, Fernando in view of Sikora teaches the method of claim 16, as stated above. Fernando further discloses a step of applying the taggant to an interface between a tobacco-rod and the filter (“tipping papers”, ¶ 0019).
Regarding claim 20, Fernando in view of Sikora teaches the method of claim 16 as stated above. Fernando further discloses a step of applying the component to a surface of the tipping paper (“painting or spraying it onto the component”, where the component is “tipping papers”, ¶ 0019). Fernando does not explicitly state whether the taggant is applied to an inner surface or an outer surface of the tipping paper. However, as applying the taggant to either the inner or outer surface of the tipping paper is simply choosing from a finite number of identified, predictable solutions with a reasonable expectation of success, it would have been obvious to one having ordinary skill in the art before the Application's effective filing date to apply taggant to the inner surface of the tipping paper of Fernando (MPEP § 2143(I)(E)).
Regarding claim 21, Fernando in view of Sikora teaches the method of claim 16 as stated above. Fernando further discloses a step of applying the taggant by distributing it throughout the tipping paper (¶ 0024). This includes applying the taggant substantially around a circumference of the aerosol-generating article.
Regarding claim 22, Fernando in view of Sikora teaches the method of claim 16 as stated above. Sikora further discloses a step of repeating the detecting and the determining steps, and, if applicable, the rejection step (“repeated quality inspection” and “repeated measurement”, ¶ 0005). One of ordinary skill in the art would have understood that there was a benefit to repeating the detecting and the determining steps, and, if applicable, the rejection step, in that it allows for reverification of borderline cases in order to increase the odds that an article is properly classified as falling either inside of outside of the acceptable range (¶ 0008). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to repeat the detecting and the determining steps, and, if applicable, the rejection step in the method of the combination in order to obtain this benefit.
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
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