6Notice 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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 34 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 34 contains the phrase “where the weigh modules are 1 mg resolution weigh modules”. However the Applicant has not provided paragraph(s) in the instant application’s specification that supports the above phrase.
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(s) 20-22 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Sullivan (U.S Pub. No. 20210022388).
Regarding claim 20, Sullivan discloses a method of manufacturing a plurality of prerolled cones containing a product, the method comprising:
receiving the product into a vibratory bowl (164, fig. 21);
metering the product from the vibratory bowl to a weigh bowl; measuring the product in the weigh bowl using weigh modules [0095];
determining that the product in the weigh bowl is within a predetermined tolerance of a predetermined amount of product; moving the product from the weigh bowl to a plurality of cavities in a puck responsive to determining that the product weight in the weigh bowl is within a predetermined tolerance of a predetermined amount of product; transferring the puck to a tamping station;
vibrating the puck to tamp the product from the plurality of cavities into the plurality of prerolled cones, wherein the actual weight of the product received in each cone is within a predetermined tolerance of a predetermined amount; and receiving the prerolled cones on a receiving tray for packaging (fig. 30, [0023-0024] and [0095-0096].
Regarding claim 21, Sullivan discloses feeding the product into feeders from the weigh bowl if the product in the weigh bowl is within a predetermined tolerance of the predetermined amount of product (fig. 26).
Regarding claim 22, Sullivan discloses feeding the product into the plurality of cavities from the feeders (fig. 26).
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.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sullivan (U.S Pub. No. 20210022388). It would have been obvious to one of ordinary skill in the art at the time the invention was made to use an air nozzle to seat the plurality of prerolled cones.
Claim(s) 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sullivan (U.S Pub. No. 20210022388) in view of Kamer (U.S Pub. No. 20200367549). Sullivan does not expressly disclose a sweep. Kamer discloses using a sweeper mechanism for sweeping material in a bowl [0034]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have a sweep of Kamer in the vibratory bowl and rotating the sweep and feeding the swept product to the weigh bowl.
Claim(s) 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sullivan (U.S Pub. No. 20210022388) in view of Gunter et al. (U.S Patent No. 5727573).
Regarding claims 34-35, Sullivan discloses a desired to have correct weight [0024] but does not expressly disclose a numerical value to the correctness. Gunter discloses typical range of weight accuracy can be approximately 5% [0009] overlapping with the claimed range of within +/- 3% of the predetermined weight. Furthermore, since Sullivan discloses the weight range can be 0.5 to 4 gram, the resolution of the weigh modules in view of Gunter would be overlapping with the claimed range.
Response to Arguments
Applicant's arguments filed 4/21/2025 have been fully considered but they are not persuasive.
Applicant essentially argues that Sullivan merely describes a powder weighing and cone-filling station 1, 2 including a cup 162 and a load cell 162a for measuring a weight of the powder in cup 162 [0095]; the load cell 162 merely measures the weight of the powder and does not ensure that the weight is within a predetermined tolerance of a predetermined weight. Since Sullivan is silent regarding how accurately the powder is weighed, Sullivan does not describe or suggest a weigh module configure to weigh a predetermined amount of smokable product within a predetermined tolerance of the predetermined amount as recited in claim 20. This argument is not persuasive because Sullivan discloses that the weighing cup uses computer controlled timing to drive the receiving funnel into the cone when the correct weight (corresponding to the product weight in the weigh bowl is within a predetermined tolerance of a predetermined amount of product) has been dispensed from the load cell [0024]. Sullivan further discloses vibrating the cones to ensure that all of the weighted product goes into the cone without spillage [0024].
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.
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/PHU H NGUYEN/Examiner, Art Unit 1747