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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/2/2026 has been entered.
Status of the Claims
Claims 16-24 and 28-30 are pending. Claims 24 and 28-30 are withdrawn. Claims 16, 24, and 30 have been amended.
Response to Arguments
Applicant's arguments filed 2/2/2026 have been fully considered but they are not persuasive.
Applicant argues that “Fernando does not disclose or suggest anything about a manufacturing process and the particular problem that may arise in such a process. Accordingly, Fernando clearly does not disclose or suggest the method recited in amended Claim 16 that includes a plurality of sensors positioned in the manufacturing line.” (Remarks, Page 7). This argument is not persuasive as Fernando is not relied upon for disclosing the entirety of these features. Instead, it is the combination of Fernando in view of Sikora which discloses these limitations, 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 a plurality of sensors positioned in the specified locations on a manufacturing line.” (Remarks, Page 7). This argument is not persuasive as Sikora discloses positioning the sensors at points on the manufacturing line that are after the assembly of the component which, in the method of the combination, is both after application and securing of the tipping component and after wrapping of the component (see rejection of claim 16 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 16-23 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.
Regarding claim 16, the preamble introduces “a component” and then the body of the claim recites “a tipping paper component” and “another component”. As such, it is unclear which of these components is being referenced in the limitations “wrapping of the component” and “rejecting the component”. Further adding to this confusion is that claim 18 states that the component may be the tipping paper. As such, it is unclear if claim 16 requires three distinct components (i.e., “a component”, “a tipping paper component”, and “another component”) or if the “component” introduced in the preamble of claim 16 may be the “tipping paper component”. For the purpose of this office action, “wrapping of the component” and “rejecting the component” in claim 16 and “the component” in claims dependent from claim 16 are interpreted as referencing “a component” in the preamble of claim 16 which may be the same as “a tipping paper component” in claim 16.
Claims 17-23 are rejected due to their dependence from claim 16.
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 16-23 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 a component for an aerosol-generating component (“component of the aerosol-generating article”, ¶ 0019), the method comprising the step of:
applying the taggant to the component (“taggant may be incorporated into any component of the aerosol-generating article”, ¶ 0019), where the component may be a tipping paper component (“tipping papers”, ¶ 0019), and the tipping paper component is secured to another component by wrapping (“The aerosol-generating article may comprise an aerosol-forming substrate, a hollow tubular element, an aerosol cooling element and a mouthpiece arranged sequentially in co-axial alignment and 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 the component comprises, 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 another component, and at least one of the sensors positioned in the manufacturing line after wrapping of the component;
determining whether the detected amount of the taggant is less than a first-predetermined amount; and
rejecting the component 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 a component for an aerosol-generating component (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 a component (“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 component 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 a component during manufacture to determine if the parameter falls within a predetermined range and rejecting a component with a parameter that falls outside of the predetermined range in that it removes components 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 the component of Fernando comprises, 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 component 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 component to the another component and at least one of the sensors positioned in the manufacturing line after wrapping of the component, Sikora discloses that the sensors are placed in the manufacturing line after the assembly of the component (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 component, both sensors are positioned in the manufacturing line after application and securing of the tipping component to the another component, and both sensors are positioned in the manufacturing line after wrapping of the component.
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 18, Fernando in view of Sikora teaches the method of claim 16 as stated above. Fernando further discloses wherein the component is a tipping paper (“tipping papers”, ¶ 0019).
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 component and a filter component (“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 a tipping paper component (“painting or spraying it onto the component”, 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 component. However, as applying the taggant to either the inner or outer surface of the tipping paper component 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 component 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 component (¶ 0024). This includes applying the taggant substantially around a circumference of the component.
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.
Regarding claim 23, Fernando in view of Sikora teaches the method of claim 16 as stated above. Sikora further discloses a step of detecting the amount of parameter that the component comprises (“rod-like articles undergo an inspection, during which the quality parameters of the manufactured rod-like articles are checked”, ¶ 0002), after a step of applying and securing a tipping paper (“wrapper”, ¶ 0002) to another component (“component parts, for instance filter rods, are put together with each other . . . and subsequently wrapped in a wrapper”, as the detection step applies to “rod-like articles” including “cigarettes”, ¶ 0002). One of ordinary skill in the art would have understood that there was a benefit to testing the component after assembly of multiple components of the aerosol-generating article as it ensures that the combined multi-component assembly meets the quality parameters (¶ 0002). 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 the amount of taggant that the component of Fernando comprises (as Fernando discloses that the component may be “tipping paper”, ¶ 0019), after a step of applying and securing the tipping paper component to another component (i.e., after this portion of the aerosol-generating article has been assembled) in order to obtain this benefit.
Conclusion
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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