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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/02/2026 has been entered.
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) 1, 5, 7-11, and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ahn Ki Jin (KR102177116).
Regarding claim 1: Jin discloses a method of preparing a cigarette filter, comprising:
preparing crimped paper by crimping base paper (Figs. 1 & 4; via web 101 crimped to 102);
applying a wetting agent to the crimped paper through a plurality of nozzles (Fig. 1; via 140 and/or Fig. 2; via 221);
injecting granules onto paper containing the wetting agent (Fig. 2; via 231); and
wrapping paper on which the granules are seated with a filter wrapper (Fig. 1; via 150 and/or Fig. 3; via 360).
Jin may not suggest the claimed applying step of the wetting agent is performed by
spraying 0.5 mg/mm to 5 mg/mm of the wetting agent based on a longitudinal direction of the crimped paper. However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Jin’s method by having the wetting step to be performed by spraying 0.5 mg/mm to 5 mg/mm of the wetting agent based on a longitudinal direction of the crimped paper, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215.
Further, Jin may not suggest that the axis of the nozzles to be with an angle of 15 to 45 degrees in respect to a vertical direction of the crimped paper. However, Jin clearly suggests the use of un-angled nozzles (Fig. 2; via nozzles 221).
Therefore, it would have been obvious to those skill in the art, to have modified and repositioned Jin’s nozzles to be angled between 15 – 45 degrees in respect to the direction of the paper, since re-orientation and/or rearranging of parts is only a matter of design choice to be made and involves only routine skill in the art (In re Karlson, 136 USPQ 184).
Jin neither discloses the granules to comprise at least one of activated carbon, cut tobacco leaf granules, or red ginseng granules with an average diameter of 0.45 mm to 0.60 mm. However, Jin clearly suggests the use and spraying of some type of granules (Fig. 2; via 231).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention to have selected Jin’s granules to comprise at least one of activated carbon, cut tobacco leaf granules, or red ginseng granules, with an average diameter of 0.45 mm to 0.60 mm, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 5: Jin discloses that the nozzles are arranged to be spaced apart from each other (Fig. 2; via 221 distanced away from each other in equal manner).
Regarding claim 7: Jin may not suggest that the applying step of the wetting agent to the crimped paper comprises:
heating the wetting agent to 80°C to 120°C. However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Jin’s method by heating the wetting agent to 80°C to 120°C, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 8: Jin does not disclose that the wetting agent has viscosity of 0.008 Ns/m2 to 0.08 Ns/m2. However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Jin’s method by having the wetting step of the agent to have a viscosity of 0.008 Ns/m2 to 0.08 Ns/m2, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 9: regarding the claimed wetting agent comprises at least one of glycerin, guar gum, starch, methylcellulose, ethylene vinyl acetate (EVA), gum arabic, or propylene glycol. The Office takes an official notice that a use of wetting agent comprises any of glycerin, guar gum, starch, methylcellulose, ethylene vinyl acetate (EVA), gum arabic, and/or propylene glycol is very old and know in the gluing arts.
Regarding claim 10: regarding the claimed step of obtaining the wetting agent by adding a tobacco extract. The Office takes an official notice that adding a tobacco extract to a wetting agent, is very old and know in the gluing/tobacco arts.
Regarding claim 11: the Office further takes an official notice that the tobacco extract comprises at least one of nicotine salt, nicotine, nicotine base, free nicotine, and/or nicotine derivatives is old and well knowing in the tobacco art.
Regarding claim 14: Jin discloses that the preparing of the crimped paper, the applying of the wetting agent, the injecting of the granules, and the wrapping with the filter wrapper are performed through transfers along respective preset paths, see for example (Fig. 1; via the shown travel path of web 101, 102, 103, and 150).
Regarding claim 15: Jin discloses that the injecting of the granules onto the paper containing the wetting agent is performed by a granule injector, see for example (Fig. 2; via injector means 231 and/or 220).
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ahn Ki Jin (KR102177116) in view of Akahane et al. (U.S. Pub. No. 2024/0315321).
Regarding claim 12: Jin does not disclose that the filter wrapper comprises a material to be heated by an induced magnetic field. However, Akahane discloses similar method with the step of using an induced magnetic field for heating, see for example (paragraph 0030; “The flavor element 4 is heated by a heater of a device…the device generates a magnetic field…the flavor material 20 is heated by an induced current of the magnetic field”).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date, to have modified Jin’s method by using an induced magnetic field for heating, as suggested by Akahane, in order to come up with uniform addition of a liquid additive without spilling (paragraph 0008).
Regarding claim 13: Akahane discloses that the material to be heated by the induced magnetic field comprises at least one of an aluminum foil, a copper foil, or a silver foil, see for example (paragraph 0030; “the flavor material 20may be mixed with a conductive member, such as a metallic plate or metallic particles…the flavor material 20 is heated by an induced current of the magnetic field”).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 5, 7-11, and 14-15 have been considered but are moot because the new ground of rejection adjusted to address the newly added limitations.
Applicant argues that the applied art of Jin ‘116 does not suggest the amended claims referring to the use of a specific type of granules comprise at least one of activated carbon, cut tobacco leaf granules, or red ginseng granules with an average diameter of 0.45 mm to 0.60 mm. As set forth above, the Office believes that as long as ‘116 indeed injecting some type of granules material, coming up with a specific type of that injected “granules” would be nothing more than a design choice to be made by those skilled in the art, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Applicant continue to argue that ‘116 used granules is moisturizer to the paper and contains glycerin, propylene glycol, and tobacco extract, which is different than the once claimed. As explained above, coming up with a specific type of the injected granules, would only be a matter of design choice, based on what is being made and how.
Applicant further argues that ‘116 “moisturizer” is not analogous to the “granules” in the application as filed. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, ‘116 indeed suggests the injection of some type of granules material (Fig. 2; via 231).
It appears that applicant is giving too much weight to the used type of “granules” material on the claimed preparation of cigarette filter. It is noted that, since the applied art ‘116 discloses similar steps and means for manufacturing the same cigarette filter material, what type of “granules” to be used is nothing more than a choice to be made by those skilled in the art.
Conclusion
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/SAMEH TAWFIK/Primary Examiner, Art Unit 3731
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