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 .
Response to Arguments
Applicant's arguments filed 7/09/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Jacobs et al. would not be combined with Busby et al., the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this application, the Busby et al. disclose tracing cellulose acetate in cigarette filters while Jacobs et al. disclose tracking means for a wider range of articles and materials. The disclosure of treating cigarettes by Jacobs et al. further connects the art, but does not supply the motivation to combine.
The applicant argues that one of ordinary skill would not consider using polynucleotides as markers in a process before crimping and drying (as claimed) because high heat drying would render the marker useless. First, the argument is not in commensurate in scope with the claim. No heated drying is claimed. Second, the specification does not disclose heated drying. Third, Jacobs et al. disclose:
Finally, nucleic acids have proved to be very stable in numerous tests carried out by the inventors. This stability property is demonstrated in the examples below. [0072]
And,
This addition of the marker of the present invention to the product may be achieved by addition of said plurality of polynucleotides in said product during its manufacture and/or in or on (that is to say on the surface) the end product. [0082]
Therefore, it would have been expected that the polynulecotides of Jacobs et al. would be “very stable” as disclosed and their degradation by crimping or drying would not have been expected. In addition, dipping or spraying materials would also require drying of the material.
The applicant has not provided evidence to support the argument that polynucleotides would be expected to survive the final stage during making the cigarette filter. The prior art explicitly discloses that polynucleotides are “very stable”.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-7, 9-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Busby et al. (WO 2016/179220) in view of Jacob et al. (US 20110207125 A1).
Regarding claims 1, 4, 6, 7, 10, and 19 Busby et al. disclose forming cellulose acetate for use in cigarette filters in order to form traceable smoking articles and disclose in claim 1:
(a) forming tow from filaments;
(b) crimping the tow;
(c) drying the tow;
(d) baling the tow; and
(e) incorporating an additive with an identifying marking during, between or after any of steps (a) to (c), wherein the identifying marking provides origin information concerning the tow [0017].
Busby et al. disclose several identifying marking methods to combat fake products but do not disclose using polynucleotides as the identifying mark.
However, Jacob et al. disclose a method for labeling products, including tobacco products, using polynucleotides [0074]. The polynucleotide may be deposited on the the product by spraying or dipping the product in a solution of the polynucleotide [0083].
Jacob et al. further disclose detecting the polynucleotides from an article by extracting them with an aqueous solution (i.e. obtaining a sample) and performing PCR and then identifying the nucleotide sequence [0198]-[0201] and using the information to verify authenticity.
It would have been obvious to one of ordinary skill in the art at the time of invention/filing to use the DNA labeling disclosed by Jacob et al. as the identifying mark in the invention of Busby et al. Using the DNA label of Jacob et al. would result in a difficult to counterfeit marker (as disclosed by Jacob et al.) and therefore a difficult to counterfeit smoking article.
Regarding claims 2 and 11, Jacob et al. disclose using polynulceotides containing 5-200 nucleotides [0037].
Regarding claim 3 and 12, Jacob et al. disclose that synthetic “modified bases” may be used such as the dihydriuridine, inosine, or pseudo uracil [0032].
Regarding claim 5, Jacob et al. disclose adding specific amounts of markers to produces [0451]. In addition or alternatively, Jacob et al. also disclose spraying as a method of applying the nucleotide. I would have been notoriously well known in the art to spray a controlled or metered amount of product on each item. For instance, Busby et al. disclose spraying patterns of forensic markers onto cellulose acetate tow [0016]. It would have been obvious to one of ordinary skill that the amount and pattern of spray would need to be controlled to form the pattern disclosed by Busby et al.
Regarding claim 9, Busby et al. disclose that the identifying marking can be added continuously (i.e. to the entire length and not in a pattern)[0017]. In addition, dipping the product as disclosed by Jacob et al. would deposit the polynucleotide over the entire length.
Regarding claims 13-18, Busby et al. disclose that the information corresponding to the identifying marking may comprise:
Fiber or filament manufacturer (i.e. producer)
Fiber or filament manufacture date,
Fiber or filament manufacture location (i.e. product line),
Fiber or filament identifier (i.e. characteristic), [0019]
Fiber or filament bale identifier [0019] (i.e. batch),
Tow manufacturer [0021],
Tow manufacture date [0021],
Tow manufacture location [0021],
Tow identifier [0021],
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Busby et al. (WO 2016/179220) and Jacob et al. (US 20110207125 A1) as applied to claim 19 above and in further view of Connolly (US 20040166520 A1).
Jacob et al. discloses extracting polynucleotide tags from marked items but does not expressly disclose that the extraction comprises contacting with an aqueous buffer. However, Connolly discloses a similar process of identifying tagged items using nucleic acid tags and states that:
Extraction of the nucleic acid taggant from the tagged item generally involves dissolving the taggant nucleic acid from the item with aqueous or organic buffers. The dissolvent will not degrade the DNA or interfere with the recognition process.
It would have been obvious to one of ordinary skill in the art at the time of invention to use the aqueous buffer of Connolly to extract the nucleotides of Jacob et al. because Connolly discloses that the buffered solutions will not degrade the DNA or interfere with the recognition process, presenting a reasonable expectation of success for extracting and identifying the nucleotides.
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 MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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/Michael J Felton/Primary Examiner, Art Unit 1747
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