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 34-38 and 40-51 are pending.
Claims 34, 35, 37, 38, 40 and 41 have been amended.
Claims 42-48 have been withdrawn.
Claim 39 has been cancelled.
Claims 49-51 are new.
Response to Arguments
Applicant' s arguments, filed 6/9/2026, have been fully considered and are persuasive. The Applicant has amended claim 34 to include limitations that were not previously presented, specifically that the additive release vessel inserter comprises a drum or wheel configured to insert the at least one additive release vessel into the longitudinally extending recess. The prior art of record does not appear to disclose the new limitations. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found prior art Deal (US 20050070409) in combination with previously applied prior art.
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.
Claim(s) 34-38, 41 and 49-51 is/are rejected under 35 U.S.C. 103 as being unpatentable over La Roux (US 20120065042) in view of Deal (US 20050070409).
Regarding claim 34, Le Roux teaches a method for making a filter element [0001] comprising the steps of:
advancing two sheets of filtering material in a longitudinal direction (the two sheets of filtering material depicted in Fig. 18);
separating the two or more sheets of longitudinally advancing filtering material (two sheets of filtering material are separated in Fig. 18);
gathering the separated sheets of longitudinally advancing filtering material to form a partially gathered rod of filtering material ([0038] and [0087]) having a longitudinally extending recess (which is formed by output tube 55C in Fig. 18, specifically the output tube forms the longitudinally extending recess);
inserting at least one additive release vessel (‘capsule’) into the longitudinally extending recess by an additive release vessel inserter (55c in Fig. 18 and [0087]);
gathering the filtering material around the at least one additive release vessel to close the recess and thereby form a rod comprising a longitudinally extending core of filtering material and at least one additive release vessel ([0038] and [0087]).
Le Roux does not expressly teach that the additive release vessel inserter comprises a drum or wheel configured to insert the at least one additive release vessel into the longitudinally extending recess.
Deal teaches a method of making filter rods having capsules positioned within the filter rods, which is accomplished by transferring the capsules from a rotating vertical wheel (“additive release vessel inserter”) and then depositing the capsules into a web of filter tow. Each capsules is positioned within the moving web of tow. The web filter material and the capsules positioned within the web are introduced into a rod-forming unit wherein the filter rod is formed. The rate of feed of the filter tow, the rate of rotation of the vertical wheel (“additive release vessel inserter”) are controlled relative to one another such that capsules are positioned at predetermined intervals along the filter rod. Cigarette filter elements having well controlled amounts of flavorant contained therein can be made from the rods (abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the additive release vessel inserter of Le Roux include a wheel configured to insert the at least one additive release vessel into the longitudinally extending recess, as suggested by Deal, with a reasonable expectation of success and predictable results, specifically by controlling the rate of rotation of the wheel of the additive release vessel inserter, filter elements having well controlled amounts of flavorant contained therein can be made from the rods (Deal, abstract).
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Regarding claim 35, modified Le Roux teaches that the two or more sheets of longitudinally advancing filtering material are separated by a separator (output tube, 55c in Fig. 18), and the gathering of the separated two or more sheets of longitudinally advancing filtering material comprises drawing the separated two or more sheets of longitudinally advancing filtering material into a gathering chamber (‘tongue’, 4 and [0087]).
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Regarding claim 36, modified Le Roux teaches that the separator (output tube’, 55c) is coupled to the gathering chamber (‘tongue’, 4) such that the two or more sheets of longitudinally advancing filtering material are separated before entering the gathering chamber (‘tongue’, 4), and the separator (‘output tube’, 55c) prevents complete gathering of the two or more sheets of longitudinally advancing filtering material to thereby form a longitudinally extending recess in the partially gathered filtering material (specifically the output tube, 55c, forms the longitudinally extending recess).
Regarding claim 37, modified Le Roux teaches wherein the gathering chamber (‘tongue’, 4) comprises an inlet for receiving the separated sheets of filtering material and an outlet for the partially gathered filtering material to exit, and the gathering chamber is tapered longitudinally away from the inlet (Fig. 18 and [0087]).
Regarding claim 38, modified Le Roux teaches wherein the separated two or more sheets of longitudinally advancing filtering material are drawn into a preliminary chamber (‘stuffer jet’, 3) before entering the gathering chamber (‘tongue’, 4).
Regarding claim 41, modified Le Roux teaches comprising a step of cutting the rod to form a filter element comprising a longitudinally extending core of filtering material and at least one additive release vessel ([0038],[0044] and [0075]-[0076]).
Regarding claim 49, modified Le Roux teaches that the preliminary chamber (‘stuffer jet’, 3) comprises an inlet (right end of 3, Fig. 1) and an outlet (left end of 3, Fig. 1), wherein the outlet of the preliminary chamber is joined to the inlet of the gathering chamber ( right end of 4, Fig. 1), and wherein the separator (output tube, 55c in Fig. 18) extends into and along at least part of the length of the preliminary chamber (3, Fig. 18).
Regarding claim 50, modified Le Roux does not expressly teach that the separator is tapered in the same direction as the gathering chamber. However, the courts have held that that changes in shape are a matter of design choice which a person of ordinary skill in the art would have found obvious in the absence of new or unexpected results that the particular configuration of the claimed container was significant. See MPEP 2144.04.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to have made the separator tapered in the same direction as the gathering chamber of modified Le Roux with a reasonable expectation of success and predictable results because the taper of the separator would match the taper of the gathering chamber, in which the separator is located.
Regarding claim 51, modified Le Roux teaches wherein the preliminary chamber tapers longitudinally away from the inlet (right end of 3, Fig. 1).
Claim(s) 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over La Roux in view of Deal as applied to claim 34 above, and further in view of Sebastian (US 20110180084).
Regarding claim 40, modified Le Roux does not expressly teach that the filtering material, specifically filter tow, is a non-woven material or paper.
Sebastian teaches a method and apparatus for making a filter rod element (abstract) and teaches that filter rods can be formed of filter materials such as paper or nonwoven polypropylene [0032]. It would have been obvious for one of ordinary skill in the art at the time of filing to have made the filter tow of modified Le Roux out of conventional filter tow material, as taught by Sebastian, with a reasonable expectation of success and predictable results.
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 YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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