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 Arguments
Applicant's arguments filed 2/23/2026 have been fully considered but they are not persuasive.
Applicant argues that Holderman, para. [0010], describes folding finger actuators that push the support structures toward the folding block, and cause the distal end of the cone to deform. Claim 6 requires at least the following features:
“a pre-treatment station” to reduce structural stability
“a folding station” in which the pre-treated portion is folded inwards by at least 90 degrees
And, a pre-folding station comprising a concavely shaped folding head for folding and angle smaller than 90 degrees.
The rejection depends on collapsing these distinct structural features into a single element. Even assuming Holdermans’ folding tip includes concave features, Holderman still does not disclose feature C- i.e., a folding station that includes a pre-folding station having a concavely shaped folding head that performs the defined <90 degree folding. Holderman’s figures shows that the operation corresponding to initial shaping is performed by fingers acting on the distal end.
Examiner respectfully disagrees. Holderman explicitly discloses that the contact edge, 674, of the folding tip, 670, presses the paper of the cone into the leaves within the cone, crimping the paper of the cone in on itself (see generally, folding lines 1130 of the folded portion of the cone (Paragraph [0103]). Thus, the folding element represents the device in which the crimps are formed, not the fingers as argued. Holderman also explicitly discloses that the folding tip presses the convex cone into the concave one (Paragraphs [0101]-[0106]; Figures 6E and 6F). Thus, the folding tip itself crimps the end of the tube (e.g., Feature A), folds the pre-treated portion inwards by at least 90 degrees (Feature B) and prior to the end of the tube being inverted, it is folded inwards from an angle of smaller than 90 degrees (Feature C).
As seen in figure 6N (annotated below), the folding tip comprises a concave portion (at 673).
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As seen in figures 6E and 6F, the folding tip starts pressing the tubular end inward.
[AltContent: arc][AltContent: textbox (Folding tip starts folding end at this angle)][AltContent: arrow][AltContent: connector][AltContent: connector]
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[AltContent: textbox (Folding tip ends up folding the end to this angle. From convex to concave. And thus implicitly from less than 90 degrees to more than 90 degrees. )][AltContent: arrow][AltContent: arc][AltContent: connector][AltContent: connector]
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Applicant argues that Sagawa does not cure the deficiencies described above.
Examiner notes that Sagawa was cited for teaching the capsule, not Features A-C of claim 1.
Applicant argues that Simpson does not cure the deficiency of Holderman. Simpson does not teach a pre-folding station. It is also argued that Kaljura does not cure the deficiency of Holderman in the same way Simpson doesn’t. It is also argued that Crowe does not cure the deficiency of Holderman in the same way Kaljura doesn’t.
Examiner notes that Simpson, Crowe and Kaljura were not cited for teaching features A-C noted above.
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 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.
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Claim(s) 6, 7, 9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over HOLDERMAN et al. (US 2019/0329514) in view of SAGAWA et al. (US 5,065,800).
With respect to claim 6, HOLDERMAN et al. discloses an ignitable device having plant matter therein (Paragraph [0106]) comprising a body, 603, (Paragraph [0096]) a cavity holding a liquid therein, 1124, (Paragraph [0103]); a mouthpiece element, 1101 (Paragraph [0103]) and a deformable tubular element having an open distal end (Paragraphs [0103]-[0105]; See item 1123 in figures 6P and 6O). The deformable end is placed into a folding element (e.g., device for manufacturing an inhaler article) causing the end to form folds, 1130, in the form of crimps (e.g., pre-treating the distal end to reduce structural stability) and then continuing to fold the end past 90 degrees and into the plant matter by means of a concavely shaped folding head (See figures 6L, 6N) (Paragraphs [0103]-[0106]). As seen in figures 6D-6F, and paragraph [0101] of HOLDERMAN et al., the tip of the deformable tubular element goes from a pre-folded end, to an end that is folded into an end with a convex shape, and then ultimately to a concave shaped end, and thus implicitly past 90 degrees into the plant matter.
[AltContent: textbox (Starting of fold forms obtuse angle)][AltContent: arrow]
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[AltContent: textbox (Final fold forms acute angle)][AltContent: arrow]
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The folding tip, 670, is an equivalent pre-treatment station in that it is a crimping head for reducing structural stability.
The active step of folding the tip inwardly creates the pretreatment noted above, while also the claimed first folding step by turning the end inwardly upon itself. Once the fold inverts into the plant matter (Figure 6P) the second folding step has been performed. While this series of events may be performed in a single continuous motion, and not in distinct stepwise manner, the claims do not preclude such an operation. Thus, the pretreatment head is also the folding head.
HOLDERMAN et al. discloses that within the inhaler body is placed a fluid, 1124 (Paragraph [0103]), but does not explicitly disclose that the liquid comprises a capsule.
SAGAWA et al. discloses a liquid filled capsule that is loaded into the cigarette (Abstract) which can be broken by pressure to let the liquid seep into the surrounding contents (Background/Summary).
Thus, it would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the liquid of HOLDERMAN et al. within a capsule as taught by SAGAWA et al., so that the liquid is sealed and only released prior to use. This would prevent any fragrance from escaping the cigarette during storage and transport and only be released immediately prior to use.
The area that the capsule occupies represents the claimed capsule cavity.
With respect to claim 7, HOLDERMAN et al. discloses that the pre-treatment head crimps the distal end of the tubular element (Paragraph [0103]).
With respect to claim 9, HOLDERMAN et al. discloses that the deformable end is placed into a folding head causing the end to form folds, 1130, in the form of crimps (e.g., pre-treating the distal end to reduce structural stability) and then continuing to fold the end past 90 degrees and into the plant matter by means of a concavely shaped folding head (See figures 6L, 6N) (Paragraphs [0103]-[0106])
With respect to claim 11, HOLDERMAN et al. discloses that the concave head also includes a convex structure, 671 (figures 6L and 6N) and the head folds the end past 90 degrees (Paragraphs [0103]-[0106]; Figure 6P).
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Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over HOLDERMAN et al. (US 2019/0329514) in view of SAGAWA et al. (US 5,065,800) as applied to claims 6, 7, 9 and 11 above, and further in view of SIMPSON et al. (US 2020/0015516).
With respect to claim 8, modified HOLDERMAN et al. does not explicitly disclose that the head includes edges for providing 8 or 10 crimping lines. SIMPSON et al. discloses the crimping is performed by a crimping die that is shaped to form the desired crimp shape (Paragraphs [0172]-[0174]; Figures 8B and 8C). As seen in Figure 8B, the dies comprise edges within the wells. Such a shape includes polygons with 5 or more sides (Paragraph [0016]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the crimp head of modified HOLDERMAN et al. with more than 5 edges therein, as taught by SIMPSON et al. so that the crimp can be formed with more than 5 sides, thereby preventing the tobacco material from falling out of the tube.
The courts have generally held that “more than 5 sides” makes obvious 8 or 10 ridges to make 8 or 10 sided polygon crimps. See, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) MPEP 2144.05, I.
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Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over HOLDERMAN et al. (US 2019/0329514) in view of SAGAWA et al. (US 5,065,800) as applied to claims 6, 7, 9 and 11 above, and further in view of KALJURA et al. (US 2010/0269839).
With respect to claim 10, modified HOLDERMAN et al. does not explicitly disclose that the flat folding head for folding the tubular element by about 90 degrees. KALJURA et al. discloses that the folding station includes a flat folding head portion, 114 (Figure 13A and 13B) that fold the tubular component approximately 90 degrees (Paragraphs [0112]-[0119]; Figures 13A and 13B). Thus, preventing spillage of the tobacco from the cigarette (Paragraph [0002]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide a flat portion on the head of modified HOLDERMAN et al., as taught by KALJURA et al., so as to form the first about 90 degree fold in the pre-folding station, thereby preventing spillage of the tobacco from the cigarette.
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Claim(s) 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over HOLDERMAN et al. (US 2019/0329514) in view of SAGAWA et al. (US 5,065,800) as applied to claims 6, 7, 9 and 11 above, and further in view of CROWE (US 2020/0288768).
With respect to claim 12, modified HOLDERMAN et al. does not explicitly disclose the claimed advancement mechanism. CROWE discloses a cigarette closure device (Abstract; Title). Comprising a drive, 122, (Paragraphs [0028]-[0030]) and a movable support, 112 and 114, (e.g., structures equivalent to the “mechanism” to move) (Paragraphs [0032], [0033]; Figures 1-5). The drive moves the support to the tubular element (Paragraphs [0030]-[0039]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide a drive and movable support to the head of modified HOLDERMAN et al., as taught by CROWE so that the user can reduce the amount of labor to close the cigarette (Paragraph [0008]).
With respect to claim 13, CROWE discloses a spacer, 104 and 106, that implicitly limits the axial movement of the drive element (Paragraph [0026]). Specifically, because the advancement mechanism is confined within an area of the spacer, it is limited to movement within said confines.
With respect to claim 14, CROWE discloses that the spacer is a circular ring (Paragraph [0026]) implicitly having a length (Figures 1 and 3) and thus implicitly represent a short, tubular elements
Conclusion
THIS ACTION IS MADE FINAL. 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 ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745
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