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 .
Status of the Claims
Claims 1, 5, 10-15, 17-28, 30 and 32-33 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Election/Restrictions
The Examiner notes that claims 34 (Group II) and 35 (Group III), originally subject to restriction requirement, have been cancelled. Group I, claims 1, 5, 10-15, 17-28, 30 and 32-33, remain pending. As all remaining claims relate to a single general inventive concept, the restriction requirement is withdrawn.
Applicant's traversal is on the ground(s) that prior art Ryter (US 20140224268 A1) does not appropriately teach the inventive concept is thus irrelevant.
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.
Claims 10-13 and 18-22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 10, the claim recites the limitation "the further wrapper" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, “the further wrapper” will be interpreted to refer to the wrapper recited by claim 1.
Regarding claim 11, the claim recites the limitation "the further wrapper" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, “the further wrapper” will be interpreted to refer to the wrapper recited by claim 1.
Claim 12 is rejected by virtue of its dependency on claim 11.
Regarding claim 13, the claim recites the limitation "the further wrapper" in lines 2-3 and line 5. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, “the further wrapper” will be interpreted to refer to the wrapper recited by claim 1.
Regarding claim 18, the claim recites the limitation “the…filtering material is wrapped in a paper” in line. It is unclear as to whether or not the paper wrapping recited by claim 18 is the same wrapper as recited in claim 1. For examination purposes, the paper wrapping of claim 18 will be interpreted as a separate wrapping element. The Examiner recommends that the applicant amend all claims to better clarify/distinguish wrapping layers.
Claim 19 is rejected by virtue of its dependency on claim 18.
Regarding claim 20, the claim recites the limitation "the further wrapper" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, “the further wrapper” will be interpreted to refer to the wrapper recited by claim 1.
Claim 21 is rejected by virtue of its dependency on claim 20.
Regarding claim 22, the claim recites the limitation "the further wrapper" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, “the further wrapper” will be interpreted to refer to the wrapper recited by claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 13, 15, 17-18, 20, 22-23, 27, 30 and 32-33 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Ryter (US 20140224268 A1).
Regarding claim 1, Ryter teaches a tobacco smoke filter or filter element (filter 14; Figs. 1-2; [0085]) comprising:
a longitudinally extending core (14) which includes a paper or other non-cellulose acetate containing filtering material ([0003], [0044]) and a wrapper (tipping paper 18; [0085]) engaged around the longitudinally extending core, wherein the filter or filter element is readily biodegradable ([0003], [0037]) and wherein:
the paper or other non-cellulose acetate containing filtering material comprises two plugs of paper or other non- cellulose acetate containing filtering material distanced longitudinally from each other (first filter segment 20 and second filter segment 22; Fig. 2; [0086]) and the wrapper engaged around the plugs of paper or other non-cellulose acetate containing filtering material defines a cavity between the plugs of paper or other non-cellulose acetate containing filtering material (cavity 34, 36; [0088]); and/or
at least one end of the wrapper 18 extends beyond an end of the longitudinally extending core to define a cavity or recess at an end of the filter or filter element (Fig. 1; [0085]).
Regarding claim 13, Ryter teaches that a first end of the wrapper extends beyond a first end of the core, to define a cavity or recess at the end of the filter or filter element; and a second end of the wrapper is flush or substantially flush with a second end of the core (Fig. 1).
Regarding claim 15, Ryter teaches that the filter or filter element is of perimeter or circumference 14 to 28 mm ([0064] teaches a diameter of 5-8.5mm, which would result in a circumference that anticipates the claimed range).
Regarding claim 17, Ryter teaches that the longitudinally extending core is a substantially cylindrical core (Fig. 1; [0085]).
Regarding claim 18, Ryter teaches that the paper or other non-cellulose acetate containing filtering material is wrapped in a paper (plug wrap 26; [0055], [0086]).
Regarding claim 20, Ryter teaches that the wrapper is paper (tipping paper 18; [0085]).
Regarding claim 22, Ryter teaches that the wrapper is a stiff paper tube (tipping paper 18; [0085]).
Regarding claim 23, Ryter teaches an outer wrapper (plug wrap 26; [0055], [0086]).
Regarding claim 27, Ryter teaches one or more further plugs of filtering material ([0044]).
Regarding claim 30, Ryter teaches that the filter or filter element further comprises a capsule or capsules ([0031]).
Regarding claim 32, Ryter teaches that the filter or filter element further comprises an additive ([0031-0032]).
Regarding claim 33, Ryter teaches that the additive is contained within a capsule or the cavity ([0031-0032]).
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.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ryter (US 20140224268 A1) as applied to claim 1 above, and further in view of Mccormack et al. (US 20150059789 A1).
Regarding claim 5, Ryter teaches that biodegradable materials may preferably comply with the Strum test ([0037]).
Ryter does not explicitly teach that the filter or filter element has 'Ready Biodegradability' level of biodegradability as measured according to OECD 301B 'Ready Biodegradability' method (modified Sturm test).
Mccormack, directed to a tobacco smoke filter or filter element ([0001], [0025-0026]) comprising a core which includes a paper or other non-cellulose acetate containing filtering material ([0017-0018]) a wrapper ([0024]) wherein the filter or filter element is readily biodegradable ([0009]), teaches that OECD 301B 'Ready Biodegradability' standards are known for biodegradable filter elements ([0009], [0050]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Ryter by making the filter or filter elements to comply with the OECD 301B ‘Readily Biodegradable’ standard as taught by Mccormack because both Ryter and Mccormack are directed to biodegradable filter elements, Mccormack teaches that it is known in the art to use OECD 301B 'Ready Biodegradability' to assess the biodegradability of a filter, and this involves applying a known teaching to a similar product to yield predictable results.
Claims 10, 14, 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ryter (US 20140224268 A1) as applied to claims 1 and 18 above.
Regarding claim 10, Ryter does not explicitly teach a length to which the wrapper extends beyond the end of the core.
However, one having ordinary skill in the art would recognize that the wrapper length could be varied to a length of 3 to 14 mm to best attach the filter core to a tobacco rod segment. Furthermore, changes in size and proportion, such as altering the length of the cavity, are prima facie obvious. See MPEP 2144.04 (IV)(A).
Regarding claim 14, Ryter teaches that the cavity between the plugs of paper or other non-cellulose acetate containing filtering material is of length 3.5 mm to 32 mm ([0035] teaches that a polymeric insert within the cavity is about 10-20mm, indicating that the cavity is at least 10-20mm. The claimed range overlaps the range taught by the prior art and is therefore prima facie obvious).
Furthermore, changes in size and proportion, such as altering the length of the cavity, are prima facie obvious. See MPEP 2144.04 (IV)(A).
Regarding claim 19, Ryter teaches that the paper is of basis weight from about 27 to about 80 g/m2 ([0055] teaches 40-130 gsm. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious).
Regarding claim 21, under another interpretation, Ryter teaches a tobacco smoke filter or filter element (filter 14; Figs. 1-2; [0085]) comprising:
as required by claim 1, a longitudinally extending core (14) which includes a paper or other non-cellulose acetate containing filtering material ([0003], [0044]) and a wrapper (plug wrap 26; [0086]) engaged around the longitudinally extending core, wherein the filter or filter element is readily biodegradable ([0003], [0037]) and wherein:
the paper or other non-cellulose acetate containing filtering material comprises two plugs of paper or other non- cellulose acetate containing filtering material distanced longitudinally from each other (first filter segment 20 and second filter segment 22; Fig. 2; [0086]) and the wrapper engaged around the plugs of paper or other non-cellulose acetate containing filtering material defines a cavity between the plugs of paper or other non-cellulose acetate containing filtering material (cavity 34, 36; [0088]);
wherein, as required by claim 20, the wrapper 26 is paper ([0055]);
and wherein, as required by claim 21, the wrapper 26 is a paper of basis weight from about 27 to about 120 g/m2 ([0055] teaches about 40-130 gsm. The claimed range overlaps with the range taught by the prior art and is therefore prima facie obvious).
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Ryter (US 20140224268 A1) as applied to claim 1 above, and further in view of Ho et al. (WO 2013187676 A1).
Regarding claim 11, Ryter teaches that one end of the wrapper extends beyond the end of the core to define a cavity or recess (Fig. 1; [0085]).
Ryter does not teach that both ends of the wrapper extend beyond the end of the core to define a cavity or recess.
Ho, directed to a tobacco smoke filter (cigarette filter portion 20; [39]) comprising a core including a filtering material (sub-filter portions 21, 22, 23; [42], [79]) and a wrapper (tipping paper 29; [40]), teaches that both ends of the wrapper may extend beyond the end of the core to define a cavity or recess at each end of the filter or filter element (space portion 24 at the mouth end of the core and cavity formed by the tipping paper at the opposite end of the core, see Figs. 2, 4, 5; [42]). Ho further teaches that the space portion 24 at the mouth-end of the filter may prevent damage to the core from saliva ([44]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Ryter by extending the wrapper beyond the other end of the core to define a cavity as taught by Ho because both Ryter and Ho are directed to tobacco smoke filters, Ho teaches that a wrapper may be extended beyond a mouth end portion of a filter core to protect the core from saliva, and this involves applying a known teaching to a similar device to yield predictable results.
Regarding claim 12, Ho teaches that one end of the wrapper may extend beyond the core by a length of 3 to 14 mm (Table 1 teaches a length of 8mm, which anticipates the claimed range).
Neither Ryter nor Ho explicitly teach a length to which the wrapper extends beyond the other end of the core.
However, one having ordinary skill in the art would recognize that the wrapper length could be varied to a length of 3 to 14 mm to best attach the filter core to a tobacco rod segment. Furthermore, changes in size and proportion, such as altering the length of the cavity, are prima facie obvious. See MPEP 2144.04 (IV)(A).
Claims 24 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Ryter (US 20140224268 A1) as applied to claim 1 above, and further in view of Jordil et al. (US 20200281260 A1).
Regarding claim 24, Ryter teaches that the paper or other non-cellulose acetate containing filtering material may be a fiber ([0003], [0044]).
Ryter does not teach that the paper or other non-cellulose acetate containing filtering material is paper.
Jordil, directed to a tobacco smoke filter or filter element (mouthpiece 14; Fig. 2; [0075]) comprising a filtering material (filter segments 18, 20; [0076]) and a wrapper (plug wrap 28; [0079]), wherein at least one end of the wrapper extends beyond an end of the longitudinally extending core to define a cavity or recess (cavity 26; [0078]) at an end of the filter or filter element, teaches that paper is a known fibrous filter materials that may be used instead of cellulose acetate ([0041]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Ryter by making the filter material of paper as taught by Jordil because both Ryter and Jordil are directed to tobacco smoke filters comprising fibrous filter materials, Ryter does not further specify the composition of the filter material and one with ordinary skill would be motivated to look to prior art for a known and suitable fibrous filter material, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 28, Ryter does not teach that the plugs of paper filtering material are comprised of different paper filtering materials.
Jordil, directed to a tobacco smoke filter or filter element (mouthpiece 14; Fig. 2; [0075]) comprising two plugs of filtering material (filter segments 18, 20; [0076]) and a wrapper (plug wrap 28; [0079]), wherein at least one end of the wrapper extends beyond an end of the longitudinally extending core to define a cavity or recess (cavity 26; [0078]) at an end of the filter or filter element, teaches that the plugs of paper filtering material 18, 20, may comprise paper ([0041]) and may be different filtering materials ([0054]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Ryter by making the plugs of filtering material of different paper filtering materials as taught by Jordil because both Ryter and Jordil are directed to tobacco smoke filters or filter elements comprising filtering material plugs, Jordil teaches that it is known in the art to use paper plugs and further teaches that plugs may comprise different materials, one having ordinary skill in the art would recognize that this may improve the ability to filter different compounds, and this involves applying a known teaching to a similar product to yield predictable results.
Claims 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Ryter (US 20140224268 A1) as applied to claim 1 above, and further in view of Lisauskas et al. (US 20150374030 A1).
Regarding claim 25, Ryter teaches that the paper or other non-cellulose acetate containing filtering material may be a fiber ([0003], [0044]).
Ryter does not explicitly teach that the paper or other non-cellulose acetate containing filtering material is a natural fiber.
Lisauskas, directed to a tobacco smoke filter or filter element (filter element 20; [0049]) comprising paper or other non-cellulose acetate containing filtering material and a wrapper (wrapper layers 18; [0049]) wherein the filter is biodegradable, teaches a natural fiber ([0021], [0050]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Ryter by using a natural fiber for the filtering material as taught by Lisauskas because both Ryter and Lisauskas are directed to biodegradable tobacco smoke filters, Lisauskas teaches an alternative biodegradable fiber composition, and this involves substituting one alternative fibrous, biodegradable filter material for another to yield predictable results.
Regarding claim 26, Ryter does not explicitly teach that the paper or other non- cellulose acetate containing filtering material comprises a blend of different paper or other non-cellulose acetate containing filtering materials.
Lisauskas, directed to a tobacco smoke filter or filter element (filter element 20; [0049]) comprising paper or other non-cellulose acetate containing filtering material and a wrapper (wrapper layers 18; [0049]) wherein the filter is biodegradable, teaches that the filter comprises a blend of filtering materials ([0021], [0050]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the filter of Ryter by using the blend of filtering materials as taught by Lisauskas because both Ryter and Lisauskas are directed to biodegradable tobacco smoke filters, Ryter is silent to a specific filter material composition and one with ordinary skill would be motivated to look to prior art for a known and suitable biodegradable filter material, and this involves applying a known teaching to a similar product to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755