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 .
Election/Restrictions
Applicant’s election of Group I (claims 16-24) in the reply filed on 8/21/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 25-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/21/2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “cut by means of a first cutting unit” and “cut into two single rod-like articles by means of a second cutting unit” in claim 16.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The claim limitations are interpreted as follows:
“cut by means of a first cutting unit” in claim 16 is interpreted as a rotary cutting head (p. 5, ll. 10-11 of the instant specification) and equivalents thereof; and
“cut into two single rod-like articles by means of a second cutting unit” in claim 16 is interpreted as a rotary knife (p. 8, ll. 15-20 of the instant specification) and equivalent thereof.
The claim limitation “rod-like articles” has been considered under 35 U.S.C. 112(b) for indefiniteness. The Examiner finds that such a limitation definite because it is a term of art used in the tobacco industry to indicate elements (e.g., filters and tobacco rods) that are rod-shaped.
Claim Objections
Claims 16-18 are objected to because of the following informalities:
Regarding claim 16, the claim limitation “one of the streams” in lines 10-11 should be changed to “one of the streams of the at least two input streams” to remain consistent with the claimed “at least two input streams” and because “two output streams” is also claimed in claim 16.
Regarding claims 17-18, the claim limitations “the at least two streams” (appears multiple times in each of the claims) should be changed to “the at least two input streams” to remain consistent and because “two output streams” are also claimed.
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 16, the claim limitation “the other of the streams” is indefinite. First, the limitation lacks antecedent basis. Second, it is unclear which stream in the “at least two input streams” the limitation is referring to. Under a scenario where the “at least two input streams” has only two input streams, the limitation would be definite. However, under a scenario where the “at least two input streams” has three or more streams, the limitation is indefinite because the limitation can refer to two or more streams. For examination purposes, the limitation will be interpreted as “an other of the streams of the at least two input streams.” Therefore, claims 17-24 are rejected for their dependencies.
Regarding claim 18, the claim limitation “axis of the double rod-like article and moving the double rod-like article” is indefinite because it is unclear which of the double rod-like articles within the train/at least two input streams the limitation refers to. The Examiner notes that claim 18 recites “a double rod-like article,” and suggests changing that limitation to “a first double rod-like article” and the indefinite limitation to recite “axis of the first double rod-like article and moving the first double rod-like article.”
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.
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.
Claims 16, 18-21, and 23-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Esposti et al. (US 2017/0119042).
Regarding claim 16, Esposti discloses a method for producing smoking articles (abstract) comprising:
cutting (“performing a first cutting”) in which a tobacco rod (4; “continuous rod”), which is fed by a feeding assembly (18; i.e., “continuous”) is cut crosswise (relative to its longitudinal extension) by a cutting device (of a known type and not shown) (“first cutting unit”) into rod portions (5; Fig. 2; [0053], describing rod portions of four times length; illustrating rods of four-length, which includes two double-length rods and therefore “a train of double rod-like articles”);
picking up the tobacco rod (4) in a direction of fed in a direction substantially perpendicular to the sheet plane of Fig. 1 ([0023]; “first direction along an axis of the rod-like articles”) and feeding (the picking up and feeding is interpreted as “changing”) in a rotational direction (see arrow in Fig. 1; “second direction transverse to the axis of the rod-like articles”) of a transfer wheel (20), each time the conveying system is designed to pick up the rod portion (5) and feed them into a respective seat (“grooves”) of the transfer wheel (“drum conveyor”) ([0024]; “at least each time two double-rod like articles are transferred”), and cutting the rod portion (5) into two rod portions (9; Fig. 2; “two input streams of double rod-like articles are formed”);
offsetting and aligning (“transforming”) the rod portions (9) to be arranged in succession ([0018]; see Fig. 2 at aligning device 11; “transforming the at least two input streams into one intermediate stream”) by offsetting and then longitudinally moving the rod portions with respect to each other in an aligning station so be arranged in succession along the path portion TT ([0059]; “moving a double-rod like article from one of the streams between two double rod-like articles of the other of the streams”) such that geometric center of the rod portions (9) are disposed in a plane parallel to the second direction (see Fig. 2 at aligning device 11); and
cutting (“performing a second cutting”) the rod portions (9) crosswise to obtain rod portion (3) ([0020]; “double rod-like articles conveyed in the intermediate stream…are cut into two single rod-like articles”) by a cutting device (14; “means of a second cutting unit”) forming two streams of rod portions (3; Fig. 2; see parting device 15).
Regarding claim 18, Esposti discloses the offsetting and aligning (“transforming”) of the two rod portions (9) comprises offsetting the rod portions cut from the same rod portion with respect to one another (see Fig. 2 at offsetting device 10; “moving a first double rod-like article from one of the at least two streams transversely to the axis of the double rod-like article”) and arranging the rod portions in succession (see Fig. 2 at aligning device 11; “moving the double rod-like article between double rod-like articles of a second stream of at the at least two streams”) ([0018]).
Regarding claim 19, Esposti discloses the two rod portions (9) are centered (see Fig. 2 at the aligning device 11, illustrating the rods 9 are centered along a central axis).
Regarding claim 20, Esposti discloses the rod portions (3) are parted longitudinally ([0056]; “single rod-like articles are spaced apart after the second cutting”), and
remain parted by the two wheels ([0058]; see Fig. 2; “continue to move in the two output streams”).
Regarding claim 21, Esposti discloses wherein a double filter portion (17; “additional rod-like element”) is inserted into the space created between the two rod portions ([0021]; “placed between the spaced apart single rod-like articles”).
Regarding claim 23, Esposti discloses the speed at which the third rod portions are conveyed before the offsetting procedure (i.e., upstream of offsetting device 10, including the input stream) is smaller (i.e., “movement speed of the at least two input streams is lower than a movement speed of the two output streams”). than the speed at which they are conveyed after the offsetting procedure (i.e., downstream of offsetting device 10, including the output stream) (abstract).
Regarding claim 24, Esposti discloses the tobacco rod (4) having at least four lengths of a first rod portion ([0054]; “continuous rod…comprise multiple elements”) and the cigarette (2; “rod-like articles”) comprise a filter portion (45) and a rod portion (3) (i.e., “rod-like articles comprise multiple elements”).
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.
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 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 22 is rejected under 35 U.S.C. 103 as being unpatentable over Esposti et al. as applied to claim 21 above, and further in view of Bray et al. (US 2019/0142059).
Regarding claim 22, Esposti discloses the method as discussed above with respect to claim 21, wherein the filter portions (17) are connected to the relative rod portions (3) and cut crosswise ([0022]).
However, Esposti does not disclose the three elements are joined by a wrapping material.
Bray teaches a method of cutting and arranging rods for tobacco industry product assembly (abstract) wherein components, such as filter components, (31; “additional rod-like elements”) are placed between single-length tobacco rods (22-25), and joined together with a tipping paper (T) ([0043]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Bray’s tipping paper and Esposti’s filter portions and rod portions to predictably join the filter portions to the rod portions (Bray; [0043]) as suggested by Esposti (see [0022]).
Claims 16-17, 20-22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Bray et al. (US 2019/0142059) in view of Grasse et al. (US 4538629; of record).
Regarding claim 16, Bray discloses a method of cutting and arranging rods for tobacco industry product assembly (abstract) comprising:
producing four-length (i.e., 4-up) tobacco rods (11; a 4-up rod includes two double-length rods and therefore “a train of double rod-like articles”) with a tobacco rod making station (3) ([0031]);
transferring the four-length tobacco rods on a receiving station (5; “drum conveyor”), the receiving station moving in a direction that is transverse to the axis of the tobacco rods (see arrow on drum 5 in Fig. 1), each time a four-length tobacco rod is received in flutes or grooves of the receiving station ([0033]; “at least each time two double rod-like articles are transferred into grooves of a drum conveyor”), and cutting each four-length tobacco rod into first and second double length (i.e., 2-up) tobacco rods (16, 17) ([0034]; “at least two input streams of the double rod-like articles are formed”);
arranging (“transforming”) the first and second double-length tobacco rods (16, 17; “two input streams”) such that the ends of the first and second double-length tobacco rods (16, 17) are parallel (because the ends are aligned, this means that the “geometric centers…being disposed in a plane parallel to the second direction”) but spaced from each other in the rotational direction (“second direction”) of a positioning drum (18) using a turning mechanism (19) to pivot the first double-length tobacco rod (16; “moving a double rod-like article from one of the input streams”) into alignment with the second double length tobacco rod (17; “between two double rod-like articles in an other of the input streams”) ([0037]; see Fig. 2); and
cutting (“performing a second cutting”) by a second cutting wheel (27a; “means of a second cutting unit”) the first and second double-length tobacco rods (16, 17) in half and into single-length (i.e., 1-up) tobacco rods (22, 23, 24, 25) ([0041]; see Fig. 3d; “double rod-like articles conveyed in the intermediate stream are cut into two single rod-like articles…to form two output streams of single rod-like articles”).
However, Bray does not explicitly teach performing a first cutting in which a continuous rod is cut by means of a first cutting unit, and changing a direction of conveying the double-rod-like articles from a first direction along an axis of the rod-like articles to the second direction. Specifically, Bray does not disclose the details of how the 4-up tobacco rods are formed in the tobacco rod making station (3), or how the 4-up tobacco rods are transferred from the transfer station (4) to the receiving station (5).
Grasse teaches a method for production and manipulation of plain cigarettes (title) comprising:
a known cigarette rod making machine (Fig. 1; col. 5, ll. 60-65) performing the step of subdividing (“performing a first cutting”) a rod (28; col. 6, l. 52; “continuous rod”) into a single file of discrete rod-shaped section (32) of double unit length by a cutoff (31; “first cutting unit”) (col. 7, ll. 3-7; Fig. 1); and
a transfer device (34; col. 7, ll. 35-52) constituting a means for changing the direction of movement of successive sections (32) from an axial movement to a movement at right angles to the axes of the respective section into axially parallel flutes (“grooves”) at a periphery of an endless drum-shaped rotary row forming conveyor (42; “drum conveyor”) that rotate in in a direction as indicated by arrow (43; “changing a direction of conveying the double rod-like articles from a first direction along an axis of the rod-like articles to a second direction transverse to the axis of the rod-like articles”) (col. 7, l. 67-col. 8, l. 14; Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Grasse’s cutoff with Bray’s known tobacco-rod making station to obtain the predictable result of cutting a continuous rod into discrete rod-shaped sections (Grasse, col. 7, ll. 3-7) of four-length tobacco rods (Bray; [0031]). Moreover, it would have been obvious to said skilled artisan to have combined Grasse’s known transfer device with Bray’s known transfer device to predictably change the direction of the discrete rod-shaped sections from an axial movement to a rotational movement of the drum and locate the 4-up tobacco rods inside the flutes of the drum (Grasse; col. 7, l. 67-col. 8, l. 14). Said skilled artisan would appreciate that such a modification is beneficial because it is possible to mass produce cigarette and manipulate such articles during transport to storage without pronounced mechanical or other stressing of the wrappers (Grasse; col. 2, ll. 11-18).
Regarding claim 17, modified Bray discloses the turning mechanism (19) comprises a pivoting arm (20) that is configured to rotate the first double-length tobacco rod (16) by an angle of about 180 degree around a pivot axis ([0038]; Fig. 2; “rotated by 180 degrees”).
Regarding claim 20, modified Bray discloses wherein the single-length tobacco rods (22-25) are spaced apart from each other ([0043]; “spaced apart after the second cutting”); and
pass such that they are enclosed in a tipping paper ([0043]; “continue to move in two output streams of the single rod-like articles”).
Regarding claim 21, modified Bray discloses components, such as filter components, (31; “additional rod-like elements”) are placed between single-length tobacco rods (22-25) ([0043]; “placed between the spaced apart single rod-like articles”).
Regarding claim 22, modified Bray discloses wherein the components (31; “additional rod-like elements”) are placed between single-length tobacco rods (22-25) and joined together with a tipping paper (T) ([0043]; “joined with a wrapping material”).
Regarding claim 24, modified Bray discloses wherein the continuous rod (as modified by Grasse) comprises at least four length tobacco sections ([0031]; “continuous rod…comprise multiple elements”) and the smoking articles (37-40) comprise a tobacco rod (22-25) and multiple further components (31; see Fig. 3f-g; “rod-like articles comprise multiple elements”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONNY V NGUYEN whose telephone number is (571)272-8294. The examiner can normally be reached Monday - Friday; 7:00 AM - 3:00 PM EST.
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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