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 .
Status of the Claims
Claims 1-20 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
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.
Claims 1, 3-5, 8-12, 16-18, and 20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Schur (US 2,905,184 A).
Regarding Claim 1, Schur, directed to cigarette filters (col 1, ln 14-16), teaches a cigarette filter rod (col 2, ln 3-17, col 3, ln 30-71, Figs. 1-2; Rod 11 is a cigarette filter), comprising:
a filter substrate including opposite surfaces (col 2, ln 3-17, col 3, ln 30-71, Figs. 1-2; Rod 11 is formed from a crepe paper 1 having opposite surfaces);
a plurality of binding areas on at least one of the opposite surfaces (col 2, ln 10-17, it has been found that the rigidity of a tobacco smoke filter formed of layers of light weight paper can be improved by incorporating an adhesive type stiffening agent in the filter medium prior to its formation into a rod and thereafter activating the adhesive to bind the layers of the medium together at places of contact (binding areas) therebetween),
wherein the filter substrate is folded multiple times into a rod shape and the plurality of binding areas bind at least one of the opposite surfaces together (col 2, ln 36-42, The paper web, after it has been treated with the adhesive material, is longitudinally gathered and compressed to form a rod having a plurality of layers of paper with tortuous passageways extending longitudinally therebetween. This rod is then treated in such a way as to activate the adhesive contained therein; and col 3, ln 30-71, Figs. 1-2 show that the crepe paper 1 is provided with binding areas of resin 3, then folded by passing the paper 1 through a forming cone 5. The resulting rod 11 may be heated to melt the resin 3 and adhesively bond the at least one of the opposite surfaces of paper 1 together).
The limitations: “the binding areas forming airflow barriers that function as air obstacles and cavities that trap gases and particulate matters and produce airstream flow turbulence, reducing airflow speed and increasing friction coefficient, enhancing entrapments for solids and gases as they travel through the filter rod” are functional limitations relating to an intended use of the tobacco sheet of Claim 1. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. Because Schur discloses all of the positively recited structural and compositional elements of the cigarette filter rod of Claim 1, the cigarette filter rod of Schur would necessarily be capable of behaving as claimed.
Regarding Claim 3, Schur teaches the cigarette filter rod of claim 1, wherein the filter substrate is embossed with an embossing pattern, promoting filtration performance (col 5, ln 54-57, In order to improve the absorption characteristics of the paper, it may be mechanically worked by crumbling or embossing before it is gathered and compressed to form the rod of filtering medium).
Regarding Claims 4-5, Schur teaches the cigarette filter rod of claim 1, wherein the filter substrate is a biodegradable material, wherein the filter substrate includes mono-fiber (col 2, ln 28 – col 3, ln 3, The paper substrate may consist of paper making fibers; and Claim 1, said paper comprising cellulosic fibers; It is reasonably understood that cellulose is biodregradable).
Regarding Claim 8, Schur teaches the cigarette filter rod of claim 1, wherein the binding areas include an adhesive from one or more of water, glue, plant-based binder, synthetic binder, adherent, and agglutinant (col 3, ln 32-38; A continuous web of crepe paper 1 was dusted with particles of the co-polymer of vinyl chloride and vinyl acetate 3 sold under the trade name "Vinylite VYHH”. Copolymer resins are synthetic binders).
Regarding Claim 9, Schur teaches the cigarette filter rod of claim 1, further including a plug wrap that surrounds the filter substrate (col 3, ln 40-44, Fig. 1; The paper 1 was then longitudinally gathered and compressed by passing it through the forming cone 5 of a cigarette making apparatus. A paper wrapper 4 (plug wrap) was placed about the compressed web 1 (filter substrate) and the overlapping edges were adhesively bound together).
Regarding Claim 10, Schur teaches a method of manufacturing the cigarette filter rod of claim 1 (col 3, ln 30-71, Figs. 1-2 show a method of manufacturing the cigarette filter rod 11), comprising:
providing the filter substrate (col 3, ln 30-71, Figs. 1-2 show that crepe paper 1 (filter substrate) is provided);
adding binding material at a plurality of areas on at least one of the opposite surfaces of the filter substrate (col 3, ln 30-71, Figs. 1-2 show that crepe paper 1 (filter substrate) is dusted with particles
of resin 3 (binding material) at random on the paper web 1 from a suitable hopper 2, in such a manner that the resin was fairly well distributed over the at least one of the opposite surfaces of the crepe paper web 1);
folding the filter substrate multiple times into an elongated rod so that the plurality of binding areas bind at least one of the opposite surfaces together where the binding material was added to the plurality of areas (col 3, ln 30-71, Figs. 1-2 show that the crepe paper 1 is provided with binding areas of resin 3, then folded by passing the paper 1 through a forming cone 5. The resulting rod 11 may be heated to melt the resin 3 and adhesively bond the at least one of the opposite surfaces of paper 1 together);
cutting the elongated rod into a plurality of individual filter rods (col 3, ln 30-71, Figs. 1-2; The rod 11 was then cut into lengths of about 66 millimeters by means of a conventional cigarette cutter 10.
This rod 11 weighed about 379 milligrams. A filter unit was obtained by cutting the rod 11 to 11
millimeters in length).
Regarding Claim 11, Schur teaches the method of claim 10, wherein adding binding material including at least one of spraying a distribution of dots of binding material on at least one of the opposite surfaces of the filter substrate (col 2, ln 21-28, Particles (dots) of the resin, either synthetic or natural, may be applied to the web as a suspension or solution thereof in a suitable liquid medium. In the latter process, the suspension or solution may be sprayed on one of the opposite surfaces of the web).
Regarding Claim 12, Schur teaches the method of claim 11, further including funneling the sprayed filter material with a funnel (col 2, ln 21-28, col 3, ln 30-71, Figs. 1-2 show that the crepe paper 1 is sprayed to provide binding areas of resin 3, then folded (funneled) by passing the paper 1 through a forming cone 5 (funnel)).
Regarding Claim 16, Schur teaches the method of claim 10, wherein the binder material is an adhesive from one or more of water, glue, plant-based binder, synthetic binder, adherent, and agglutinant (col 3, ln 32-38; A continuous web of crepe paper 1 was dusted with particles of the co-polymer of vinyl chloride and vinyl acetate 3 sold under the trade name "Vinylite VYHH”. Copolymer resins are synthetic binders).
Regarding Claim 17, Schur teaches the method of claim 10, further comprising surrounding the filter substrate with a plug wrap (col 3, ln 40-44, Fig. 1; The paper 1 was then longitudinally gathered and compressed by passing it through the forming cone 5 of a cigarette making apparatus. A paper wrapper 4 (plug wrap) was placed about the compressed web 1 (filter substrate) and the overlapping edges were adhesively bound together).
Regarding Claim 18, Schur teaches a method of using the cigarette filter rod of claim 1, comprising: providing a cigarette including a filter rod that is one of the individual filter rods (col 3, ln 30-71, Figs. 1-2 show a method of manufacturing the cigarette filter rod of Claim 1, wherein a filter unit (rod) was obtained by cutting the rod 11 to 11 millimeters in length);
forming airflow barriers and cavities with the binding areas that function as air obstacles that trap gases and particulate matters and produce airstream flow turbulence, reducing airflow speed and increasing friction coefficient, enhancing entrapments for solids and gases as they travel through the filter rod (col 3, ln 30-71, Figs. 1-2 show a method of manufacturing the cigarette filter rod of Claim 1, wherein crepe paper 1 is provided with binding areas of resin 3, then folded by passing the paper 1 through a forming cone 5. The resulting rod 11 may be heated to melt the resin 3 and adhesively bond the at least one of the opposite surfaces of paper 1 together. The step of adhesively bonding at least one of the opposite surfaces of paper 1 necessarily forms airflow barriers at the binding areas and cavities within the tortuous pathways within the rod 11. The airflow barriers and cavities would necessarily function as air obstacles that trap gases and particulate matters and produce airstream flow turbulence, reducing airflow speed and increasing friction coefficient, enhancing entrapments for solids and gases as they travel through the filter rod).
Regarding Claim 20, Schur teaches the method of claim 18, wherein the binding areas include an adhesive from one or more of water, glue, plant-based binder, synthetic binder, adherent, and agglutinant (col 3, ln 32-38; A continuous web of crepe paper 1 was dusted with particles of the co-polymer of vinyl chloride and vinyl acetate 3 sold under the trade name "Vinylite VYHH”. Copolymer resins are synthetic binders).
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.
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.
Claims 2, 6-7, 13, 15, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Schur (US 2,905,184 A) as applied to Claims 1, 10, and 18, in view of Volgger (US 2024/0349782 A1).
Regarding Claims 2 and 13, Schur does not teach the cigarette filter rod wherein the filter substrate is crimped, exposing filter substrate fibers and enhancing filtration capability; and does not teach the method further comprising crimping filter substrate, exposing filter substrate fibers and enhancing filtration capability, prior to adding the binder material to the filter substrate.
Volgger, directed to cigarette filters ([0001]-[0002]), teaches a method of forming a cigarette filter rod ([0019], The processing of the filter material into a segment of a smoking article), the method comprising:
providing a filter substrate ([0019], A filter material is provided as a web);
crimping the filter substrate, exposing filter substrate fibers and enhancing filtration capability ([0019], A filter material is provided as a web, the web is crimped. Crimping necessarily exposes filter substrate fibers and enhances filtration capability);
folding the filter substrate multiple times into a rod ([0019], A filter material is provided as a web, the web is crimped, then gathered (folded along the cross direction) to form a rod-shaped segment).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to crimp the filter substrate prior to folding the filter substrate, exposing filter substrate fibers and enhancing filtration capability, as taught by Volgger because Schur and Volgger are directed to cigarette filters, Volgger demonstrates that crimping the filter substrate prior to folding the substrate allows the filter substrate to be folded and gathered more easily (Volgger, [0019]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to perform the crimping step prior to adding the binder material to the filter substrate because Volgger demonstrates that the crimping step occurs before the folding step (Volgger, [0019]), and Schur demonstrates that the that the binder addition step also occurs before the folding step (col 3, ln 30-71, Figs. 1-2). Based on the combined disclosures of Schur and Volgger, the crimping step may occur either directly before the binder addition step or directly before the folding step. As there are only a finite number of options presented for the sequence of process steps, one of ordinary skill in the art would have had a reasonable expectation of success by selecting from this finite list of options, and thus it would have been obvious to try performing the crimping step prior to adding the binder material to the filter substrate, as claimed, because there are a finite number of identified, predictable solutions.
Regarding Claims 6-7, 15, and 19, Schur does not teach the cigarette filter rod or the methods, wherein the filter substrate includes multi-fiber, wherein the filter substrate includes a fiber blend of at least one of abaca, sisal, and wood pulp, and 0-50% hemp, 0-50% flax, 0-95% abaca, 0-95% sisal, 0-50% wood pulp, 0-50% cotton, 0-50% regenerated cellulose, 0-30% natural binder.
Volgger, directed to cigarette filters ([0001]-[0002]), teaches a method of forming a cigarette filter rod ([0019], The processing of the filter material into a segment of a smoking article), the method comprising:
providing a filter substrate ([0019], A filter material is provided as a web),
wherein the filter substrate includes multi-fiber, wherein the filter substrate includes a fiber blend of at least one of abaca, sisal, and wood pulp ([0045]-[0047], The filter material according to the invention contains cellulose fibers. The cellulose fibers can be pulp fibers or fibers from regenerated cellulose or mixtures thereof. The pulp fibers are preferably sourced from coniferous woods, deciduous woods, or other plants such as hemp, flax, jute, ramie, kenaf, kapok, coconut, abaca, sisal, bamboo, cotton or from esparto grass).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to providing a filter substrate of Schur wherein the filter substrate includes multi-fiber, wherein the filter substrate includes a fiber blend of at least one of abaca, sisal, and wood pulp because Schur and Volgger are directed to cigarette filters, Volgger demonstrates that paper filter substrates can be easily replaced with analogous fiber blends including abaca, sisal, wood pump, cotton, or regenerated cellulose (Volgger, [0039]-[0047]), and this involves replacing one filter substrate composition with another to yield predictable results.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Schur (US 2,905,184 A).
Regarding Claim 14, Schur teaches the method of claim 10, further comprising embossing the filter substrate with an embossing pattern, promoting filtration performance, prior to folding the filter substrate (col 5, ln 54-57, In order to improve the absorption characteristics (filtration performance) of the paper, it may be mechanically worked by crumbling or embossing before it is gathered (folded) and compressed to form the rod of filtering medium. Embossing necessarily requires a pattern),
but does not teach the method wherein the embossing step occurs prior to adding the binder material to the filter substrate.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to perform the embossing step prior to adding the binder material to the filter substrate because Schur demonstrates that the embossing step occurs before the folding step, and that the binder addition step also occurs before the folding step (col 3, ln 30-71, Figs. 1-2). Based on the disclosures of Schur, the embossing step may occur either directly before the binder addition step or directly before the folding step. As there are only a finite number of options presented for the sequence of process steps, one of ordinary skill in the art would have had a reasonable expectation of success by selecting from this finite list of options, and thus it would have been obvious to try performing the embossing step prior to adding the binder material to the filter substrate, as claimed, because there are a finite number of identified, predictable solutions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M. MARTIN whose telephone number is (703)756-1270. The examiner can normally be reached M-F 8:00-5:00.
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/J.M.M./
Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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