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 with traverse of Group I (claims 15-22 and 28) in the reply filed on 5-20-26 is acknowledged. The traversal is on the ground(s) that Molins does not form elevations in or on the lining paper itself. This is not found persuasive because the elected claims do not require forming elevations in or on the paper itself. Also, in Molins the filter plug 2, filter plug 3, and filtering mixture 4 are held together within cylindrical paper wrapping 1 thereabout. Claims 23-25 and 26-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
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:
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;
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
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:
●a first machine for printing in claim 28
●a second machine for hot stamping in claim 28
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.
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 (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 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.
Claim(s) 15-20 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Molins (US 3,595,137).
Claims 15-20: Molins teaches a mouthpiece lining paper comprising: the filter tip of Molins is for use with cigarettes wherein the filter tip is between a user’s lips and a tobacco portion of the cigarette. Thus, one of the two ends of the filter tip, in Figure 1, is a mouth piece. In Figure 1, items 2 and 3 are filter plugs and item 4 represents a filtering mixture comprising thermally expandable particles within a compartment. The filter plug 2, filter plug 3, and filtering mixture 4 (with the thermally expandable particles) are held together within a cylindrical paper wrapping 1 thereabout. The mouthpiece lining paper, upon heating, is configured to provide at least one elevation in that the thermally expandable particles expand to take up excess space in the compartment (are elevated) (Abstract; col1 Lns34-42; col2 Lns42-48; col3 Lns16-20; claim 8). Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
Also, for claim 18: the mouthpiece lining paper includes a layer of print wherein the thermally expandable particles are present in the printing layer also – in that the filter plug 2, filter plug 3, and filtering mixture 4 (with the thermally expandable particles) are held together within cylindrical paper wrapping 1 (having the printing layer) hereabout (col1 Ln66 to col2 Ln10).
Also, for claim 19: the printing layer is only present in limited areas on the mouthpiece lining paper in that such includes images smaller than the paper wrapper such as brand names (col1 Ln66 to col2 Ln10). The mouthpiece lining paper has at least one surface area in which the thermally expandable particles are present (surface area covering the compartment) and at least one further surface area in which there are no thermally expandable particles (surface area not covering the compartment (Fig1).
Also for claim 20: the at least one surface area in which there are thermally expandable particles is optically identical to the at least one further surface area in which there are no thermally expandable particles (the paper wrapping 1 is identical all about the wrapping) (“after exposure to heat the at least one surface area and the at least one further surface area become distinguishable due to expanded particles formed from the thermally expandable particles” refers to an intended use of the claimed mouthpiece lining paper and is not considered to provide a structural limitation to the claimed structure).
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.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Molins as applied to claim(s) 15-20 above, and further in view of Anthony (GB 2148690 A).
Claim 21, Molins does not teach that the composition of the print is ink.
However, printing ink on a cigarette wrapper to make an image (such as a brand) is conventional and well-known in the art as demonstrated by Anthony’690. Anthony teaches that marking cigarette paper wrappings with printing ink is well established for printing brands thereon (col1 Lns9-17).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Molins that the composition of the print (for the brand) is ink given that such is conventional and well-known in the art as demonstrated by Anthony’690 – where it obvious to replace one print composition (that of Molins – powder (col1 Ln66 to c2 Ln10)) with another art recognized alternative print composition (that of Anthony’690 i.e. ink) where successful and useful results have been illustrated.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Molins as applied to claim(s) 15-20 above, and further in view of Cai (CN 1888308 A).
Claim 22, Molins does not teach a foil element with the paper wrapping 1.
However, Cai teaches using a combination of foil and paper wrapping, for a cigarette. The combination has good gas barrier property and good water vapor barrier property.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Molins a foil element with the paper wrapping 1 in that Cai teaches using a combination of foil and paper wrapping, for a cigarette, because combination has good gas barrier property and good water vapor barrier property.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Molins in view of Anthony (FI 82591 B).
Claim 28: the above discussion of Molins applies herein. Molins teaches a method and apparatus for producing the mouthpiece lining paper according to claim 15. There is provided a first machine for printing the mouthpiece lining paper. A second machine is for tube formation. A band is transportable through the apparatus with the band being composed in a transverse direction (that being the machine direction) of a plurality of mouthpiece lining papers, the plurality of mouthpiece lining papers including the mouthpiece lining paper, each of the plurality of mouthpiece lining papers being for one aerosol-generating consumer article (col1 Ln66 to col2 Ln61).
Claim 28: Molins does not teach a machine for hot stamping the paper wrapper 1.
Anthony’591 teaches making a paper wrapper for a cigarette which comprises a printer (pg1 paras1-3) and a hot presser to simulate pores of natural cork (pg2 para4).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Molins a machine for hot stamping the paper wrapper 1 in that Anthony’591 teaches that such allows one to simulate pores of natural cork, if so desired.
Claim 28: with respect to the claimed first and second machines, 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. The instant specification teaches structures for the first and second machines to perform the claimed function. Molins teaches structures for the first and second machines to perform the same claimed functions. Molins is thus considered to meet these limitations of the claim.
Prior Art of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sinclair teaches a cigarette filter having a swellable means.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
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/LINDA L GRAY/Primary Examiner, Art Unit 1745
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