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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/24/2026 has been entered.
Status of the Claims
Claims 15-17, 19-23, 25-27, and 30-32 are pending. Claims 15 and 30-32 have been amended.
Response to Arguments
Applicant’s cancellation of claim 29 and amendment to claim 30 have rendered moot the rejections under 35 U.S.C. § 112 presented in the Final Rejection mailed 11/24/2025.
Applicant's arguments filed 3/24/2026 have been fully considered and are persuasive with regard to the specific combination of Kaljura and Naenen used in the Final Rejection mailed 11/24/2025 not disclosing the newly added limitation to claim 1. A new combination of Kaljura and Naenen is presented in the rejections below to address this newly added limitation.
Regarding claim 31, Applicant argues that adjust wheel 9A of Kaljura cannot be equated to the at least partial disc of claim 31 because because the adjust wheel 9A of Kaljura does not comprise a contact surface as claimed. This argument is not persuasive as claim 31, as presently written, does not require the rim to comprise the contact surface. Claim 31 may be read as the device body is what comprises the contact surface (“a device body . . . comprising a contact surface”). Further, Applicant’s choice of language that it is a “contact surface on the rim”, as opposed to a “contact surface of the rim”, conveys that the contact surface is distinct from the rim.
Regarding claim 32, Applicant argues that “[f]ibrous tow . . . may be crimped in a direction transverse to its direction of conveyance, but would not be crimped in a direction parallel to its direction of conveyance.” This argument is not persuasive as it is a conclusory statement not supported by evidence, and “[t]he arguments of counsel cannot take the place of evidence in the record.” (MPEP § 716.01(c), citing In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)).
Claim Rejections - 35 USC § 102
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.
Claim 31 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaljura et al. (WO 2011/033121 A1, a copy of which was provided by the applicant with the IDS dated 7/17/2023).
Regarding claim 31, Kaljura discloses an apparatus (“filter rod making machine 1”, Fig. 1, Page 3, Line 9) for manufacturing a component of an aerosol-generating article (component of a “smoking article”, Page 1, Line 29), the apparatus comprising:
a conveyor (one of the plurality of “conveying rollers (not shown)”, Page 3, Line 11) configured to convey a band of material (“filter rod material 3”, Fig. 1, Page 3, Line 10) through the apparatus along a first path (see Fig. 1); and
a device (“granule insert unit 2”, Fig. 1, Page 3, Lines 9-10) disposed along the first path, the device comprising:
one or more nozzles (see Fig. 2 below, annotated by the examiner) configured to apply additive (“granules”, Page 3, Line 24) to the band of material, when the band of material passes the device, and
a device body (combination of “hopper 7”, “venturi insert device 8”, “insert tube 9”, and “insert tube adjustment wheel 9A”, Fig. 1, Page 3, Lines 20-23) in the form of an at least partial disc having a rim (this language is interpreted as the device body comprises an at least partial disc; “insert tube adjustment wheel 9A” in Fig. 1 is a full disc having a rim), comprising a contact surface (combination of the outer surfaces of 7, 8, 9, and 9A) on the rim of the at least partial disc (as the contact surface is interpreted as the combination of all exterior surfaces (i.e., the surfaces that can be contacted), a portion of this contact surface is on the rim of the at least partial disc) configured to contact the conveyed band of material as the band of material passes the device (Fig. 2, as the contact surface is interpreted as the combination of all exterior surfaces (i.e., the surfaces that can be contacted), a portion of this contact surface contacts the conveyed band of material),
wherein the contact surface has a convex profile as viewed in a direction of the first path at the device (Figs. 1-2).
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Figure 2, Annotated by Examiner
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 15-17, 19-23, and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Kaljura et al. (WO 2011/033121 A1, a copy of which was provided by the applicant with the IDS dated 7/17/2023) in view of Naenen et al. (US 2012/0080043 A1).
Regarding claim 15, Kaljura discloses an apparatus (“filter rod making machine 1”, Fig. 1, Page 3, Line 9) for manufacturing a component of an aerosol-generating article (component of a “smoking article”, Page 1, Line 29), the apparatus comprising:
a conveyor (one of the plurality of “conveying rollers (not shown)”, Page 3, Line 11) configured to convey a band of material (“filter rod material 3”, Fig. 1, Page 3, Line 10) through the apparatus along a first path (see Fig. 1); and
a device (“granule insert unit 2”, Fig. 1, Page 3, Lines 9-10) disposed along the first path, the device comprising:
one or more nozzles (see Fig. 2 below, annotated by the examiner) configured to apply additive (“granules”, Page 3, Line 24) to the band of material, when the band of material passes the device, and
a device body (combination of “hopper 7”, “venturi insert device 8”, “insert tube 9”, and “insert tube adjustment wheel 9A”, Fig. 1, Page 3, Lines 20-23) comprising a contact surface (combination of the outer surfaces of 7, 8, 9, and 9A) configured to contact the conveyed band of material as the band of material passes the device (Fig. 2),
wherein the contact surface has a convex profile as viewed in a direction of the first path at the device (Figs. 1-2).
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Figure 2, Annotated by Examiner
However, Kaljura does not disclose a funnel having a first open end configured to receive the band of material and a second open end providing an exit point for the band of material, the first open end being positioned downstream of the device, wherein the funnel is configured to directly contact the band of material and to gather the band of material into a rod after the band of material has moved past the device.
Naenen, in the same field of endeavor, teaches a funnel (funnel of “forming block 13”, ¶ 0065, 0074, see Fig. 3b below, annotated by the examiner) having a first open end (wider end, see Fig. 3b below, annotated by the examiner) configured to receive a band of material (“ribbon R”, Fig. 1, ¶ 0065, 0074) and a second open end (narrower end, see Fig. 3b below, annotated by the examiner) providing an exit point for the band of material. One of ordinary skill in the art would have understood that there was a benefit to using a funnel in that it allows the band of material to have a uniform size and shape. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used a funnel as taught by Naenen in the apparatus of Kaljura to shape the band of material of Kaljura in order to obtain this benefit.
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Figure 3b, Annotated by Examiner
As Naenen discloses that the shaping funnel is placed downstream of where additive is applied to the band of material (additive “capsules 7” applied to “ribbon R”, Fig. 1, ¶ 0065, 0074) and upstream of where the band of material is wrapped in plugwrap (“through the tongue 4 of garniture 5, where it is paper wrapped with a plugwrap”, Fig. 1, ¶ 0049, 0055), in the apparatus of the combination, the funnel will be positioned downstream of the device applying additive to the band of material and upstream of where the band of material of Kaljura is wrapped in plugwrap (see “plugwrap 6” in Fig. 1 of Kaljura). Therefore, in the apparatus of the combination, the funnel will have a first open end configured to receive the band of material and a second open end providing an exit point for the band of material, the first open end being positioned entirely downstream of the device. Further, in the apparatus of the combination, the funnel is configured to directly contact the band of material and to gather the band of material into a rod after the band of material has moved past the device.
Regarding claim 16, Kaljura in view of Naenen teaches the apparatus of claim 15, as stated above. Kaljura further discloses wherein each of the one or more nozzles has an outlet defined by the contact surface (Fig. 2).
Regarding claim 17, Kaljura in view of Naenen teaches the apparatus of claim 15, as stated above. Kaljura further discloses wherein the one or more nozzles are a plurality of nozzles having outlets distributed along the convex profile of the contact surface (Fig. 2).
Regarding claim 19, Kaljura in view of Naenen teaches the apparatus of claim 15, as stated above. Kaljura further discloses wherein the device body further comprises a central element (“venturi insert device 8”, Fig. 1, Page 3, Line 20) and a plurality of spaced apart walls (walls of “air jet inlets 10a-10c”, Fig. 1, Page 3, Line 26) radially extending outwardly from the central element and following one another in a circumferential direction around the central element (Fig. 1), and wherein the contact surface comprises an end surface of each of the plurality of spaced apart walls (Fig. 1).
Regarding claim 20, Kaljura in view of Naenen teaches the apparatus of claim 15, as stated above. Kaljura further discloses wherein the device body has a hole (hole in the interior of the device body through which the additive passes) extending through the device body from a first end of the device body to a second end of the device body (Fig. 2).
Regarding claim 21, Kaljura in view of Naenen teaches the apparatus of claim 15, as stated above. Kaljura further discloses wherein the one or more nozzles are attached to an external portion of the device body (Fig. 2).
Regarding claim 22, Kaljura in view of Naenen teaches the apparatus of claim 15, as stated above. Kaljura further discloses wherein the contact surface also has a convex profile as viewed in a direction perpendicular a first axis of the body of the device (Figs. 1-2).
Regarding claim 23, Kaljura in view of Naenen teaches the apparatus of claim 15, as stated above. Kaljura further discloses wherein the device body further comprises a first part (“venturi insert device 8”, Fig. 2, Page 3, Line 20) configured to be held in a fixed position in the apparatus, and a second part (“hopper 7”, Fig. 2, Page 3, Line 20) configured to be attachable to and removable from the first part (7 is shown as attached to 8 in Fig. 2, and 7 can be removed from 8).
Regarding claim 25, Kaljura in view of Naenen teaches the apparatus of claim 15, as stated above. Kaljura further discloses the apparatus comprises a second conveyor (another of the plurality of “conveying rollers (not shown)”, Page 3, Line 11) configured to convey a band of susceptor material through the apparatus (as the band of susceptor material is not itself part of the apparatus and the second conveyor could convey such a band of susceptor material should it be inserted into the apparatus, the second conveyor of Kaljura satisfies this limitation).
Alternatively regarding claim 15, Kaljura discloses an apparatus (“filter rod making machine 1”, Fig. 1, Page 3, Line 9) for manufacturing a component of an aerosol-generating article (component of a “smoking article”, Page 1, Line 29), the apparatus comprising:
a conveyor (one of the plurality of “conveying rollers (not shown)”, Page 3, Line 11) configured to convey a band of material (“filter rod material 3”, Fig. 1, Page 3, Line 10) through the apparatus along a first path (Fig. 1); and
a device (“insert tube 9”, Fig. 2, Page 3, Line 21) disposed along the first path, the device comprising:
one or more nozzles (nozzle at the end of “insert tube 9”, Fig. 2, Page 3, Line 21) configured to apply additive (“granules”, Page 3, Line 24) to the band of material, when the band of material passes the device, and
a device body (tube body of “insert tube 9”, Fig. 2, Page 3, Line 21) comprising a contact surface configured to contact the conveyed band of material as the band of material passes the device (Fig. 2),
wherein the contact surface has a convex profile as viewed in a direction of the first path at the device (Fig. 2).
However, Kaljura does not disclose a funnel having a first open end configured to receive the band of material and a second open end providing an exit point for the band of material, the first open end being positioned downstream of the device, wherein the funnel is configured to directly contact the band of material and to gather the band of material into a rod after the band of material has moved past the device.
Naenen, in the same field of endeavor, teaches a funnel (funnel of “forming block 13”, ¶ 0065, 0074, see Fig. 3b below, annotated by the examiner) having a first open end (wider end, see Fig. 3b below, annotated by the examiner) configured to receive a band of material (“ribbon R”, Fig. 1, ¶ 0065, 0074) and a second open end (narrower end, see Fig. 3b below, annotated by the examiner) providing an exit point for the band of material. One of ordinary skill in the art would have understood that there was a benefit to using a funnel in that it allows the band of material to have a uniform size and shape. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used a funnel as taught by Naenen in the apparatus of Kaljura to shape the band of material of Kaljura in order to obtain this benefit.
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Figure 3b, Annotated by Examiner
As Naenen discloses that the shaping funnel is placed downstream of where additive is applied to the band of material (additive “capsules 7” applied to “ribbon R”, Fig. 1, ¶ 0065, 0074) and upstream of where the band of material is wrapped in plugwrap (“through the tongue 4 of garniture 5, where it is paper wrapped with a plugwrap”, Fig. 1, ¶ 0049, 0055), in the apparatus of the combination, the funnel will be positioned downstream of the device applying additive to the band of material and upstream of where the band of material of Kaljura is wrapped in plugwrap (see “plugwrap 6” in Fig. 1 of Kaljura). Therefore, in the apparatus of the combination, the funnel will have a first open end configured to receive the band of material and a second open end providing an exit point for the band of material, the first open end being positioned entirely downstream of the device. Further, in the apparatus of the combination, the funnel is configured to directly contact the band of material and to gather the band of material into a rod after the band of material has moved past the device.
Regarding claim 26, Kaljura in view of Naenen teaches the apparatus of claim 15, as stated in the alternative rejection of claim 15 above. Kaljura further discloses wherein the device is a first device (“insert tube 9”, Fig. 2, Page 3, Line 21), and
wherein the apparatus further comprises a second device (“venturi insert device 8”, Fig. 2, Page 3, Line 20) configured to apply additive to the conveyed band of material (additive flows through 8 and then 9 to reach the conveyed band of material).
Regarding claim 27, Kaljura in view of Naenen teaches the apparatus of claim 26, as stated above. Kaljura further discloses wherein the first device is configured to apply additive to a first portion of the conveyed band of material (Fig. 7 shows multiple portions of the conveyed band of material, each of which has additive applied to it which was supplied by both the first and second devices; one such portion may be considered the first portion), wherein the second device is further configured to apply additive to a second portion of the conveyed band of material (another of the portions of the conveyed band of material shown in Fig. 7), and wherein the first portion is different from the second portion (Fig. 7).
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Kaljura et al. (WO 2011/033121 A1) in view of Naenen et al. (US 2012/0080043 A1) as applied to claim 16 above, and further in view of Sampson et al. (US 2013/0137561 A1).
Regarding claim 30, Kaljura in view of Naenen teaches the apparatus of claim 16, as stated above. However, Kaljura does not disclose a crimping device positioned upstream of the device, the crimping device being configured to crimp the band of material.
Sampson, in the same field of endeavor, teaches crimping bands of material upstream of additive insertion devices (“The additive may even be added to the crimped material as it is gathered to form the filter rod”, ¶ 0049). One of ordinary skill in the art would have understood that there was a benefit to crimping the band of material upstream of the additive insertion device in that it increases the adherence of the additive to the material (¶ 0049). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included a crimping device positioned upstream of the device of Kaljura, the crimping device being configured to crimp the band of material, in order to obtain this benefit.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Kaljura et al. (WO 2011/033121 A1, a copy of which was provided by the applicant with the IDS dated 7/17/2023) in view of Sampson et al. (US 2013/0137561 A1).
Regarding claim 32, Kaljura discloses an apparatus (“filter rod making machine 1”, Fig. 1, Page 3, Line 9) for manufacturing a component of an aerosol-generating article (component of a “smoking article”, Page 1, Line 29), the apparatus comprising:
a conveyor (one of the plurality of “conveying rollers (not shown)”, Page 3, Line 11) configured to convey a band of material (“filter rod material 3”, Fig. 1, Page 3, Line 10) through the apparatus along a first path (see Fig. 1);
a device (“granule insert unit 2”, Fig. 1, Page 3, Lines 9-10) disposed along the first path, the device comprising:
one or more nozzles (see Fig. 2 below, annotated by the examiner) configured to apply additive (“granules”, Page 3, Line 24) to the band of material, when the band of material passes the device, and
a device body (combination of “hopper 7”, “venturi insert device 8”, “insert tube 9”, and “insert tube adjustment wheel 9A”, Fig. 1, Page 3, Lines 20-23) comprising a contact surface (combination of the outer surfaces of 7, 8, 9, and 9A) configured to contact the conveyed band of material as the band of material passes the device (Fig. 2),
wherein the contact surface has a convex profile as viewed in a direction of the first path at the device (Figs. 1-2).
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Figure 2, Annotated by Examiner
However, Kaljura does not disclose a crimping device positioned upstream of the device, the crimping device being configured to crimp the band of material.
Sampson, in the same field of endeavor, teaches crimping bands of material upstream of additive insertion devices (“The additive may even be added to the crimped material as it is gathered to form the filter rod”, ¶ 0049). One of ordinary skill in the art would have understood that there was a benefit to crimping the band of material upstream of the additive insertion device in that it increases the adherence of the additive to the material (¶ 0049). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included a crimping device positioned upstream of the device of Kaljura, the crimping device being configured to crimp the band of material to form ridges and grooves on the crimped band of material, in order to obtain this benefit.
With regards to the orientation of the ridges and grooves, it would have been obvious to one having ordinary skill in the art before the Application's effective filing date to orient the ridges and grooves on the crimped band of material to run in a direction parallel to the direction of conveyance of the band of material for the benefit of not flattening out the ridges and grooves as the band of material is pulled along its direction of conveyance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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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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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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