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
The Response of 01/20/2026 is entered. The Response amends claims 1, 3, 5-6, and 13 and cancels claim 14.
Status of Claims
Claims 1, 3-8, 10-13, 15-16 and 26-28 are pending. Claims 2, 9, 14, and 17-25 are canceled.
Response to Arguments
Applicant amendments necessitated the change in the ground of rejection for some of the claims, from 102 anticipation to 103 rejections grounded in obviousness. Applicant further arguments filed 01/20/2026 have been fully considered but they are not persuasive.
Applicant disagrees with the interpretation made regarding the disclosure of Nakamura, Response pg 6-7, under Remarks paragraphs 5 -8. Applicant cites to one disclosed embodiment, where the second plasticizer is applied before the steam is applied to the tow in support of their argument. This was not the embodiment relied upon but is relevant to distinguish the embodiment that the rejections rely upon.
The disclosure of Nakamura has three figures that depict 2 primary embodiments:
Fig 1 depicts an overview of the Nakamura process, reproduced below:
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Fig 2 depicts an embodiment where the second plasticizer is applied before the steam is applied to the filter tow
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Fig 3 depicts an embodiment where the second plasticizer is applied in the presence of steam
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Applicant argues that the embodiment disclosed by Fig 3 must apply the plasticizer outside of the unit 12. As seen in an embodiment depicted in Fig 2, unit 14, the second plasticizer addition unit sprays the additive onto the tow slightly before the steam is applied to the outer surfaces of the tow, with the mandrel 13 forming the center channel in the tow. Fig 3 shows the relied upon embodiment where the plasticizer flowing from inside of mandrel 13 to the outside. Fig 1 shows where the mandrel 13 is located. It is within unit 12, where the steam is applied to the tow. Even Fig 2 shows the rod 13 as substantially within unit 12, where the steam is applied. Suggesting the part of mandrel 13 where the plasticizer flows out of the holes is external to 12, is inconsistent with the drawings and the described function of the embodiment. Looking at the end of Fig 3, closest to ref 23, you can see an end wall in the tube. If the Fig 3 mandrel 13 were positioned outside the forming tube 12, the through hole would not form properly and would likely collapse. Applicant seizes on the words “which is to form” the surface of the through hole of the hollow surface to suggest that this must mean that the application happens outside of the forming tube 12. This is contrary to the figures and description, and thus the argument is unpersuasive.
Review the entire paragraph, with no words taken out of context.
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The mandrel applies the second plasticizer efficiently and locally only to the portion (of the tow) which is to form the surface of the through hole of the hollow surface. The meaning of the words “which is to form the surface of the through hole of the hollow filter” becomes clear, the forming process is not yet considered complete by merely adding the second plasticizer to the interior surfaces of the through hole formed by the mandrel. Applicant is misconstruing the Specification.
Nakamura does not disclose that the plasticizer comprises a flavoring. Yakamura teaches that a flavoring may be added to a plasticizer, which is then applied to a tow. The technique relied upon from Yakamura is combining the flavoring with a plasticizer. Applicant arguments attack the references individually rather than looking at the combination. 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). Yakamura teaches that the flavoring may be combined with the plasticizer. One of ordinary skill in the art would have applied this technique to Nakamura. This is an obvious application of a known technique to a known device ready for improvement to yield predictable results, MPEP 2143 Examples of Basic Requirements of a Prima Facie Case of Obvious I. Examples of Rationales (D). The prior art of Nakamura contained a base process of applying the plasticizer in the presence of steam, upon which the claimed method of applying the flavorant in the presence of steam could be seen as an improvement. The prior art of Yakamura contained a known technique, the combination of a flavorant with a plasticizer that is applicable to the base method of Nakamura. One of ordinary skill in the art would have recognized that applying the flavorant and plasticizer taught by Yakamura instead of the plasticizer alone would have yielded predictable results and resulted in an improved method where the hollow tube filter element would not only be formed with a through hole, but would also be flavored.
Applicant argues that the general skill in the art teaches away from adding a flavorant in the presence of steam, suggesting that the flavorant would be too dilute in the filter, Remarks pg 9 2nd full paragraph. Applicant has not claimed a particular concentration of flavorant. Applicant may be correct that at one of ordinary skill in the art would not have a reasonable expectation of success in achieving a high concentration of flavorant, but that has not been claimed nor has it been examined. Even so, it does not appear that a flavorant added with plasticizer in the method of Nakamura would be diluted substantially. The tow has been pretreated with a first plasticizer. It is formed into a hollow tube. The steam is applied to the outside of the tube, while the inside has the second plasticizer and flavorant applied with the steam, and at locations continuing down the tube. There is no suggestion that significant steam migrates through the outside of the tow to the interior. There is nothing to suggest that one of ordinary skill in the art would believe the outcome Applicant speculates would occur based on these references and the prior art of record. Other inventors were experimenting with the application of a flavorant in forming tubes where steam was added, See Yang et al. (US 2022/0304370 A1) made previously of record in the restriction requirement of 10/08/2024, although in that application the flavorant is added by a nozzle spaced apart from a steam nozzle by at least 180 mm and no more than 600mm, their testing did not find a large loss of flavoring as the separation distance between the steam nozzle and flavoring nozzle was decreased, Table 3 [108]:
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Nakamura was relied upon. Nakamura has a mandrel that extends from before where the steam is applied to well pass that location. The disclosure tends to show, the flavorant application is applied both in the presence of steam, and at locations spaced apart from the nozzle. Even if one of ordinary skill in the art were considering the teaching of Yang that the steam could impact the amount of flavorant retained in the filter, Yang also teaches that applying the flavorant downstream works. Modified Nakamura could be considered to disclose a variant of Yang, where the flavorant application merely starts earlier than taught by Yang. One of ordinary skill in the art would expect that before the steam hardens the tow modified with plasticizer, the flavorant would penetrate the tow more deeply to the outside of the hollow tube, with the nozzles applying additive downstream from the steam nozzles not subject to the concerns of loss. Further, the degree of flavoring is unclaimed, as are limitations requiring no loss of flavorant during the process. It is stressed, Yang was not relied upon in the rejection. The prior art upon which the rejection relies does not teach away from the combination, no art of record teaches away from the combination, and argument that one of ordinary skill in the art would not believe the combination would be successful is not persuasive based on the evidence of record.
Claim Rejections - 35 USC § 103
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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1, 3-8, 10-13, 15, 26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable Nakamura (US 2013/0023395 A1), in further view of Yamaji et al. (US 3,344,796).
Regarding claim 1, 10-11, 13, and 15, Nakamura discloses:
a method of making a filter element or mouthpiece, ([0007] a filter manufacturing machine), comprising the steps of:
advancing filtering material in a longitudinal direction, ([0027] the feed path continuously conveys filter fibers (tow) and a sheet material containing the filter fibers); and
drawing the advancing filtering material into a shaping element, ([0028] the feed path is connected at its terminating end to the forming device), to thereby form a longitudinally extending rod of filtering material comprising a channel extending longitudinally through an entire length of the rod of filtering material, ([0028] the forming device forms the sheet material into a hollow rod-shaped continuous filter body);
wherein the shaping element comprises a chamber, ([0029]-[0031] forming device 3, see fig 1-2 the forming tube comprising a cavity anticipating the chamber limitation), and a shaping rod which extends longitudinally within the chamber, ([0029]-[0031] in particular element ref 13 depicted in Fig 2-3, Fig 3 depicting described as an alternative embodiment of the mandrel ref 13), an inner surface of the chamber shaping the advancing filtering material to form the longitudinally extending rod of filtering material, ([0029]-[0031]), and the shaping rod shaping the advancing filtering material to form the channel extending longitudinally through the entire length of the rod of filtering material, ([0029]-[0031]); and wherein the shaping element applies an additive to the advancing filtering material, ([0031]), wherein the additive is applied to the advancing filtering material in a presence of steam, ([0029]-[0031] Fig 2 steam is added applied to the advancing filter material, see ref 18 holes for steam, while Fig 3 depicts the second plasticizer is spouted directly from holes formed in the peripheral wall of the mandrel in the same area where the steam is applied); and wherein the channel extends longitudinally through the entire length of the rod of filtering material after removal of the shaping element, ([0008] the sheet material and filter tow is formed into a hollow rod-shaped continuous filter body, ([0027]-[0028]).
Nakamura discloses the additive is a plasticizer, but Nakamura does not disclose that the additive may include a smoke modifying material, that the additive is a flavoring agent, that the additive is one or more of menthol, spearmint, clove, nutmeg, and cinnamon.
Yamaji teaches a method of making an improved tobacco smoke filter, ([Col 1 lines 9-10]), and is thus within the inventor’s field of endeavor. Yamaji concerns incorporating a flavoring substance such as menthol to provide a flavored smoke filter that preserves the flavor substance by an extremely simple flavoring procedure, ([col 1 lines 21-31]). Yamaji teaches that adding flavoring substance to the filter is better than adding the flavor substance to the combustible material, ([col 3 lines 34-47]). Yamaji teaches dissolving the higher fatty acid ester of sucrose and a flavoring substance in a plasticizer, which can be used in a conventional apparatus for the production of the filter, ([col 3 lines 8-18]). In the case of flavoring an acetate filter, the flavoring is effected by dissolving the flavoring substance in either a plasticizer or a resin solution for bonding, and where menthol is the flavoring used, the higher fatty acid ester of sucrose is added upon dissolving the menthol or other flavors in plasticizers, to result in a flavoring solution that is homogeneous, where the higher acid ester of sucrose acts to prevent the menthol from precipitating out of solution,([col 3-4 lines]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Nakamura according to the teachings of Yamaji.
Nakamura discloses a filter making apparatus that applies an additive in the form of a plasticizer to an advancing filter tow within a shaping element, through a shaping rod (the mandrel of Nakamura Fig 3 ref 13). Yamaji teaches a method of applying a flavoring agent in the form of a plasticizer, a higher fatty acid ester of sucrose, and a flavoring substance dissolved together and applied to a filter tow to flavor the filter formed from the tow. One of ordinary skill in the art would have applied this technique to Nakamura. This is an obvious application of a known technique to a known device ready for improvement to yield predictable results, MPEP 2143 Examples of Basic Requirements of a Prima Facie Case of Obvious I. Examples of Rationales (D). The prior art of Nakamura contained a base process of applying the plasticizer in the presence of steam, upon which the claimed method of applying the flavorant in the presence of steam could be seen as an improvement. The prior art of Yakamura contained a known technique, the combination of a flavorant with a plasticizer that is applicable to the base method of Nakamura. One of ordinary skill in the art would have recognized that applying the flavorant and plasticizer taught by Yakamura instead of the plasticizer alone would have yielded predictable results and resulted in an improved method where the hollow tube filter element would not only be formed with a through hole, but would also be flavored. One of ordinary skill in the art would be motivated to make this modification to provide a flavored filter and have believed such a modification would work because Yamaji suggests that the modification may be used with conventional filter forming.
Regarding claim 3-6, modified Nakamura discloses the method according to claim 1. Nakamura discloses the shaping rod comprises a cavity and a plurality of holes which are coupled to the cavity, wherein the additive, modified by Yanaji to comprise the flavoring agent, travels from the cavity and exits the shaping rod through the plurality of holes as the advancing filtering material passes through the shaping element, ([0031] Fig 3).
Regarding claim 7-8, Nakamura discloses the method according to claim 1. Nakamura further discloses that a plasicizer is applied to the advancing filter material before the advancing filter material is drawn into the shaping element, (Fig 1 ref 9 anticipating the limitations of both claims).
Regarding claim 12, 16, and 26, Nakamura discloses the method according to claim 1. Nakamura further discloses overwrapping the rod and then cutting the elements to form segments, ([0032]).
Regarding claim 28, modified Nakamura discloses a filter comprising a filter segment according to claim 16. Nakamura does not disclose a smoking article comprising a mouthpiece or filter segment joined end to a rod of smokeable material.
Yamaji teaches a method of making an improved tobacco smoke filter, ([Col 1 lines 9-10]). Yamaji teaches that attaching a menthol flavored filter, to a tobacco [rod]m the filter of the present invention gives a better taste than the control, ([col4-5 lines 75-2]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have combined the modified filter of Nakamura with a tobacco rod of smokable material as taught by Yamaji. Nakamura’s filters are clearly intended to be affixed to aerosol generating material, and Yamaji provides explicit support for attaching the modified filter element of Nakamura to such a rod, for improved flavor.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable Nakamura (US 2013/0023395 A1) in view of Yamaji et al. (US 3,344,796), as applied to claim 16, and in further view of Berger (US 3,847,064).
Regarding claim 27, modified Nakamura discloses a filter comprising a filter segment according to claim 16. Nakamura does not disclose forming a multiple rod comprising a plurality of mouthpieces
Berger teaches modifications and improvements in the means for making stable, elongated elements suitable for use in making smoke filters and the like, ([col 1 lines 10-14]), and is thus with in the inventor’s field of endeavor. Berger teaches a conventional tobacco rod overwrapped with cigarette paper and secured in an end to end relationship with a filter element according to the invention, ([col 6 65-68]). Berger discloses that the filter means can be used singly, doubly, or in fact in any multiple units, ([col 7 lines 28-30]).
It would be obvious to one of ordinary skill in the art, to have modified Nakamura according to the teachings of Berger, to have provided a plurality of filter elements joined end to end and to a tobacco rod, for the obvious reason of increasing the filtering area/capacity and remove more harmful elements from the smoke.
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 DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747