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
This office action is in response to Applicant’s amendment filed on 26 September 2025:
Claims 1-3, 5-18, 20-21 and 24 are pending
Claims 16-18, 20-21 and 24 are withdrawn
Claims 4, 19, 22-23 and 25 are cancelled
Response to Arguments
Applicant's arguments filed 26 September 2025 have been fully considered but they are not persuasive.
On Pages 7-8 of Applicant’s Remarks, Applicant argues that Gimkiewicz’ principle of operation would be changed if modified by Rich because Gimkiewicz’s disclosure states that the sensor is specifically designed to read a printed barcode located in a small space using an imaging system and microarray lens, whereas Rich’s 3D texture code would interfere with the spacing between the smoking article cavity of the device.
Examiner respectfully disagrees, noting that while Applicant claims that the additional use of protrusions would interfere with the spacing in Gimkiewicz’s device, Applicant fails to provide specific evidence or supporting details to support such claims; though Gimkiewicz states that the use of microlenses can help reduce the size and distance between the code and imaging system, Gimkiewicz is silent on the specific spacing and/or dimensions between said code and imaging system.
It should be further noted that Applicant appears to be stating that the use of protrusions would interfere with the smoking article cavity as it would require additional space to account for said protrusions, Rich discloses two ways of generating protrusions and elevations where one is a physical bump protruding outwards (see Fig. 1A) or alternatively, through depressions within the surface (see Fig. 1B). Therefore, if spacing in relation to the cavity is a concern, Rich’s disclosure would still account for these as inward depressions for producing elevations/protrusions would not extend and interfere with the spacing between the article and article cavity.
On Pages 8-9 of Applicant’s Remarks, Applicant argues that there is no reasonable expectation that Gimkiewicz’s microlenses can be used to detect surface feature heights because the said surface features would not be at the same focal length as a printed barcode. Applicant does not provide any further evidence or details from Gimkiewicz to support Applicant’s stated claims.
Examiner respectfully disagrees, noting that Gimkiewicz merely states that the barcode/indicia is read with a sensing system, wherein said sensing system comprises of a light source and image detector; the system can include an array of microlenses which has the advantage of producing a thin sensing system by providing improved illumination and resolution [0011-0012, 0020]. In regards to Rich, a similar sensing system comprising a camera (i.e., image detector) and light source is used to detect the three-dimensional texture surface [0103-0104].
Since Gimkiewicz and Rich uses a similar imaging system comprising of an image detector and light source for detecting 1-D, 2-D, and 3-D codes, one ordinarily skilled in the art would have reasonable expectations that if Gimkiewicz’s code is modified to have a three-dimensional code as disclosed by Rich, Gimkiewicz’s imaging system would be capable of reading said 3-D textured code, and further expect that Gimkiewicz’s additional microlens array will enhance the illumination and image resolution of said code detected by the imaging system.
On Page 9 of Applicant’s Remarks, Applicant argues that Silverschotz discloses perforations that are read by placing a light source and photodetector on opposite sides of said perforations whereas Gimkiewicz has the light source and image detector located on the same side of the code. Therefore, modifying Gimkiewicz with Silverschotz would require substantial reconstruction of the device which would lead to accommodate for an increase in space occupation of the image sensing system.
Examiner respectfully disagrees, noting that Silverschotz merely states that the perforations can be optically read and that one usual optical system arrangement is having a light source placed behind the code and a photocell (i.e., detector) placed on the other side of said code (Column 3, Lines 55-60). This does not mean that an optical/imaging system must be of this arrangement for Silverschotz’s coded perforation pattern so long as the system is able to optically read said pattern. For example, Gimkiewicz’s optical sensor is capable of capturing images (i.e., optically read) a pattern with an alternative arrangement (i.e., on the same side of a code) using the same system components of a light source and image/optical detector.
Therefore, one ordinarily skilled in the art would have a reasonable expectation that if Gimkiewicz’s is capable of capturing optical/image patterns using a light source and detector, then it is capable of detecting a pattern formed by perforations using said light source and detector as disclosed by Silverschotz unless evidence of the contrary is provided.
The following rejection is maintained.
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.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Gimkiewicz et al (Publication No. US20190261682A1) in view of Rich et al (Publication No. US20140301179A1).
Regarding Claim 1, Gimkiewicz discloses a smoking article for use in an aerosol generation device [0009];
comprising a machine-readable pattern (i.e., indicia) representing coded data (i.e., barcode) on a surface area of a layer (i.e., outer wrapper) comprised by the smoking article ([033, 0036, 0052, 0061]; barcode pattern on the article’s wrapper can be read by an imaging sensing module, implying the pattern/barcode is machine-readable);
Gimkiewicz further discloses that the indicia are a printed pattern such as dots or a barcode [0061]. Gimkiewicz does not disclose the pattern is formed by a plurality of recesses in and/or protrusions from the surface area.
However, Rich, directed to a surface texture encoding method, discloses that information (i.e., data) can be encoded into a physical surface (i.e., paper wrapper) with a series of physical features such as bumps (i.e., protrusions) and recesses that can be read by a computer processor using camera (i.e., imaging) or light sensors ([0007, 0012-0014]; information is decoded by a computer processor implies pattern is machine readable).
It is noted that while Rich does not explicitly disclose that the physical features are formed on a surface area of a smoking article, paper is a physical material with a physical surface. As such, one ordinarily skilled in the art would reasonably conclude that the outer wrapper disclosed by Gimkiewicz would be capable of incorporating physical surface features such as bumps and recesses as disclosed by Rich.
Therefore, it would have been obvious for one ordinarily skilled in the art to substitute the printed coded pattern disclosed in Gimkiewicz with a pattern created from physical features (i.e., bumps and recesses) taught by Rich, as both are directed to a machine-readable pattern, where one ordinarily skilled in the art could reasonably substitute one known type of coded pattern (i.e., ink-printed), with another known type of coded pattern (i.e., bumps/recesses), to a similar physical surface (i.e., outer wrapper), and predictable result in a smoking article with physical bumps/protrusions and recesses that is machine-readable via imaging/optical sensing modules.
Regarding Claim 2, Gimkiewicz further discloses the smoking article has a cylindrical shape ([0018]; smoking article is circular cylindrical).
Regarding Claim 3, Gimkiewicz further discloses the smoking article’s the surface area is curved ([0018]; circular cylindrical shape implies surface area is curved).
Regarding Claim 5, Rich further discloses that the bumps/protrusions and recesses are recessed in and/or protruding from the surface area in multiple levels of depths and/or heights (see Figs. 1A-1B; [0008]; discloses three discrete depth variations for the bumps and recesses).
Regarding Claim 6, Rich does not explicitly disclose that there are different distances between each recess and/or protrusion. However, Rich illustrates the recess and protrusions having equidistance from each other and discloses that the lack of a recess and/or protrusion is considered part of the encoding (see Figs. 1A-1B; Abstract; [0030-0032]; lack of a recess or protrusions is considered to be a zero-elevation recess/protrusion). This would imply that if a coded pattern is formed with a series of recesses or protrusions that includes zero-elevation recesses/protrusions, additional distance would be created between two non-zero elevated recesses/protrusions (i.e., a different distance between recesses/protrusions).
Furthermore, it should be noted that rearrangement of parts without modifying the operation of the device is held to be an obvious matter of design choice that gives predictable results (see MPEP § 2144.04.VI.C). Therefore, one ordinarily skilled in the art could reasonably rearrange the series of recesses and/or protrusions such that there are varying distances between them, so long as the pattern formed by said recesses and/or protrusions is still detectable by a sensing module (i.e., is machine-readable).
Regarding Claim 7, Modified Gimkiewicz does not explicitly disclose the light reflection and/or absorption properties of the pattern are different from that of a surface of the smoking article.
However, it should be noted that Gimkiewicz and Rich discloses that the encoded pattern can vary in color (Gimkiewicz, [0061]; Rich, [0028]), where Gimkiewicz specifically discloses that IR light absorption is dependent/corresponds with the ink used [0062]. Furthermore, Rich also discloses that the degree of darkness/light that can be optically detected is influenced by the elevation and/or depth of a recess when illuminated by a diffused light [0033].
Thus, Gimkiewicz and Rich’s disclosure implies that the light absorption/reflection properties of the protrusion and/or recesses for a pattern can be inherently influenced by the coloring and/or depth of said protrusion and/or recess. As such, protrusions and/or recesses, which can be constructed to have a discrete color and/or depth, will have different light absorption/reflection properties from a surface of the smoking article, which is considered to have zero depth and no added discrete color.
Regarding Claim 8, Modified Gimkiewicz does not explicitly disclose the light reflection and/or absorption properties of the protrusions and/or recesses are different from each other.
However, it should be noted that Gimkiewicz and Rich discloses that the encoded pattern on the smoking article physical surface can vary in color (Gimkiewicz, [0061]; Rich, [0028]), where Gimkiewicz specifically discloses that the wavelength of IR light absorption corresponds with the ink used [0062]. Furthermore, Rich also discloses that the degree of darkness/light that can be optically detected is influenced by the elevation and/or depth of a recess when illuminated by a diffused light [0033].
Thus, Gimkiewicz and Rich’s disclosure implies that the light absorption/reflection properties of the protrusion and/or recesses for a pattern can be inherently influenced by the coloring and/or depth of said protrusion and/or recess. As such, protrusions and recesses with different discrete colors and/or depths will have different light absorption/reflection properties from each other.
Regarding Claim 9, Rich further discloses that the colors of recesses and/or protrusions, respectively, are different from each other ([0028, 0055, 0132]; discloses that bumps/recesses can vary in depth and color, having a discrete color/depth; implies that the color can vary between each bump/recess).
Claims 1 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Gimkiewicz et al (Publication No. US20190261682A1) in view of Silverschotz et al (Patent No. US5137304A).
Regarding Claim 1, Gimkiewicz discloses a smoking article for use in an aerosol generation device [0009];
comprising a machine-readable pattern (i.e., indicia) representing coded data (i.e., barcode) on a surface area of a layer (i.e., outer wrapper) comprised by the smoking article ([033, 0036, 0052, 0061]; barcode pattern on the article’s wrapper can be read by an imaging sensing module, implying the pattern/barcode is machine-readable);
Gimkiewicz further discloses that the indicia are a printed pattern such as dots or a barcode [0061]. Gimkiewicz does not disclose the pattern is formed by a plurality of perforations of the layer in the surface area.
However, Silverschotz, directed to encoding information on paper, discloses that a machine-readable coded pattern can be formed on said paper using small visually unnoticeable holes or perforations, allowing the code to be applied anywhere on a paper sheet without visually interfering with any printed message on the paper (Col. 3, Lines 24-40, 55-60; perforated code is machine-readable via an optical reader; disclosed paper sheet is considered equivalent to a smoking article wrapper that is also made of paper).
Therefore, it would have been obvious to one ordinarily skilled in the art to construct the machine-readable pattern disclosed by Gimkiewicz to be formed by perforations as disclosed by Silverschotz, as both are directed to a machine-readable coded pattern on a paper material, where Silverschotz teaches the advantage of using perforations which will not visually impact the paper material as they can be constructed to be extremely small and still be detectable by an optical reader (Col. 3, Lines 24-40, 55-60); this also involves applying a known information encoding method to a similar material (i.e., paper) to yield predictable results.
Regarding Claim 10, Silverschotz further discloses the machine-readable coded pattern perforations are typically seven thousandths of an inch in diameter (Col. 3, Lines 24-40; disclosed diameter of 0.007 inches is equivalent to 0.178 mm, which is within the claimed diameter range of 1 to 0.072 mm).
Regarding Claim 11, Modified Gimkiewicz further discloses the smoking article comprising a wrapper (i.e., outer paper wrapper), wherein the machine-readable pattern/code is located on the outer paper wrapper (Gimkiewicz, [0036]). Modified Gimkiewicz also discloses that the machine-readable pattern/code is formed by perforations (Silverschotz, Col. 3, Lines 24-40, 55-60).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Gimkiewicz et al (Publication No. US20190261682A1) in view of Silverschotz et al (Patent No. US5137304A) as applied to Claim 11 above, and further in view of Nappi (Publication No. US20160000141A1, cited in IDS dated 08 December 2022).
Regarding Claim 12, Modified Gimkiewicz further discloses the smoking article is wrapped by an outer paper wrapper, wherein the smoking article comprises of an aerosol generating substrate, a filter (i.e., filter plug), and a separation between the substrate and filter that can be filled with a heat exchanger such as a crimped PLA material ([0036]; separation portion is implied to be a hollow segment since you can insert material in it). The machine-readable pattern is a series of perforations (Silverschotz, Col. 3, Lines 24-40, 55-60; see Claim 11 rejection for modification) may be located on the outer paper wrapper (Gimkiewicz, [0036]).
Modified Gimkiewicz does not disclose that the following:
article is configured in a way that light can be transmitted through a cross section of the article
light can be transmitted through the cross section and then through the perforations
Regarding (I), Nappi, directed to a smoking article with indicia (i.e., machine-readable pattern), discloses that the indicia marking can be provided on a smoking article wrapper such as a tipping paper, plug, wrap, or any other suitable wrapper such as a film that is substantially or entirely transparent (i.e., allows light to be transmitted through) [0016-0018].
Since Gimkiewicz discloses a smoking article wrapped by an outer wrapper that has indicia placed on said wrapper, and Nappi discloses that a smoking article wrapper can be a substantially thin or transparent film, one ordinarily skilled in the art could reasonable construct Gimkiewicz’s wrapper to be a transparent film material, thus making the separation (i.e., hollow) section of Gimkiewicz’s wrapped smoking article capable of transmitting light through its cross-section by virtue of its transparency.
Regarding (II), it should be noted that rearrangement of parts without modifying the operation of the device is held to be an obvious matter of design choice that gives predictable results (see MPEP § 2144.04.VI.C). Modified Gimkiewicz discloses that the machine-readable perforation pattern is located on the outer wrapper but does not specify where on the outer wrapper.
As such, one ordinarily skilled in the art could form the machine-readable perforation pattern in any location on the wrapper such as where the wrapper wraps around the separation (i.e., hollow) section of modified Gimkiewicz’s smoking article. Since the wrapper is transparent, it is reasonably understood that light will pass through the hollow section and also through the perforations located on said hollow section.
Therefore, one ordinarily skilled in the art could rearrange the perforation encoded pattern disclosed by modified Gimkiewicz to be located on the transparent wrapper around the separation/hollow section so that light can transmit through the wrapper and then through the perforations, so long as the perforation patterns can still be machine-readable.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Gimkiewicz et al (Publication No. US20190261682A1) in view of Silverschotz et al (Patent No. US5137304A) as applied to Claim 11 above, and further in view of Beard et al (Publication No. US20120255569A1).
Regarding Claim 13, Gimkiewicz further discloses the smoking article comprising an aerosol generating substrate, a filter (i.e., filter plug), and a separation between the substrate and filter that can be filled with a heat exchanger such as a crimped PLA material [0036]. Gimkiewicz does not specifically disclose that the separation between the substrate and filter has a hollow tubular element.
However, Beard, directed to a cigarette (i.e., smoking article), discloses said cigarette comprises of a filter element (20) and aerosol-generating substrate (Tobacco rod 20), wherein the filter element comprises a second section (36) of filter material (i.e., filter) and a first section (38) of filter material comprising of a tube (48) (i.e., hollow tubular element) located between the first filter section and substrate (Fig. 2; [0057-0058]).
Therefore, it would have been obvious for one ordinarily skilled in the art to construct the smoking article disclosed by Gimkiewicz to further comprise a hollow tubular element as disclosed by Beard, as both are directed to a smoking article/cigarette, where one ordinarily skilled in the art could reasonably add another hollow filter section as disclosed by Beard, to a similar smoking article disclosed by Gimkiewicz, to predictably yield a modified smoking article capable of generating an aerosol and also have an encoded information pattern applied to said smoking article.
Regarding Claim 14, Modified Gimkiewicz discloses an outer wrapper that wraps the smoking article and its parts comprising of an aerosol- generating substrate, the hollow tubular element and the filter (Gimkiewicz [0036]; discloses that wrapper wraps the entire smoking article which implies it also wraps all its individual parts; see Claim 13 rejection for modification of hollow tubular element). Modified Gimkiewicz also discloses that the machine-readable pattern is formed by perforations formed on the outer wrapper (see Claim 11 rejection for modification).
Modified Gimkiewicz does not disclose the following:
the wrapper comprises a tipping paper for holding the aerosol- generating substrate, the hollow tubular element and the filter
the machine-readable pattern is formed by perforations in the tipping paper.
Regarding (I), Beard, directed to a cigarette (i.e., smoking article), discloses said cigarette comprises of a filter element (20) and aerosol-generating substrate (Tobacco rod 20), wherein the filter element comprises a second section (36) of filter material (i.e., filter) and a first section (38) of filter material comprising of a tube (48) (i.e., hollow tubular element) located between the first filter section and substrate (Fig. 2; [0057-0058]). The filter element and tobacco rod are wrapped by a plug wrap (i.e., outer wrapper) and an additional tipping material (i.e., tipping paper) [0028].
Therefore, it would have been obvious for one ordinarily skilled in the art to construct the smoking article disclosed by modified Gimkiewicz to further comprise a tipping material/paper as disclosed by Beard, as both are directed to a smoking article/cigarette, where one ordinarily skilled in the art could reasonably add another tipping paper to wrap the smoking article as disclosed by Beard, to a similar smoking article disclosed by modified Gimkiewicz, to predictably yield a modified smoking article capable of generating an aerosol and also have an encoded information pattern applied to said smoking article.
Regarding (II), Beard further discloses that the tipping material/paper are provided with a series of perforations (30) that extend through the tipping material and plug wrap (i.e., outer wrapper) [0028].
It is noted that while Bear does not disclose the perforations are used to form a machine-readable pattern, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (see MPEP § 2112.01.I). In this case, Beard discloses perforations on a tipping material which matches the recited structure of the claims (i.e., perforations in a tipping paper). As such, the claimed functionality of the perforations being a machine-readable pattern is presumed to be inherent in the perforations disclosed by Bear unless proven otherwise.
Therefore, it would have been obvious for one ordinarily skilled in the art to construct the smoking article disclosed by modified Gimkiewicz to have perforations on a tipping material/paper as disclosed by Beard, as both are directed to a smoking article/cigarette, where one ordinarily skilled in the art could reasonably add perforations to the tipping paper as disclosed by Beard, to a similar smoking article disclosed by modified Gimkiewicz, to predictably yield a modified smoking article capable of generating an aerosol and also have an encoded information pattern applied to said smoking article via perforations.
Regarding Claim 15, Modified Gimkiewicz discloses that the perforations are formed through the tipping paper and outer wrapper paper (Beard, [0028]). Modified Gimkiewicz does not explicitly disclose the following:
the perforations are positioned in an area of a hollow tubular element
the hollow tubular element is non-perforated at the location of the perforations.
Regarding (I), it should be noted that rearrangement of parts without modifying the operation of the device is held to be an obvious matter of design choice that gives predictable results (see MPEP § 2144.04.VI.C). Modified Gimkiewicz discloses that the perforations are located on the tipping paper and generally in the filter and/or hollow tubular element (Beard, see Figs. 1-2; [0028]).
Therefore, one ordinarily skilled in the art could reasonably rearrange the perforations to be specifically located around the hollow tubular segment portion of the smoking article, so long as the perforations is still positioned around the overall filter element as disclosed by Bear, and is detectable by a sensing module (i.e., is machine-readable).
Regarding (II), Modified Gimkiewicz discloses that the tipping material/paper are provided with a series of perforations (30) that extend through the tipping material and plug wrap (i.e., outer wrapper) (Beard, [0028]). Modified Gimkiewicz does not explicitly disclose that the perforations extend beyond the paper wrappings, which implies that said perforations will not extend through the hollow tubular element (i.e., element is non-perforated).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Harr et al (Publication No. US20120043377A1) – Barcode reader for consumable items comprising a light/optical image sensor for detecting two and/or three-dimensional barcodes. The reader can further comprise a microlens array to produce a thin image sensor.
Davis (Publication No. US20180154103A1) – Vaporizer device comprising a tablet with distinguishing features such as a pattern of holes, ribbed edges, or code patterns that are detectable by sensors.
Qiu (Publication No. US20180279689A1) – Control apparatus for electronic cigarettes comprising a detecting device capable of identifying one, two and three-dimensional barcodes.
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 Vu P Pham whose telephone number is (703)756-4515. The examiner can normally be reached M-Th (7:30AM-4:00PM EST).
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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755