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 without traverse of Group I in the reply filed on 8/20/2026 is acknowledged.
Claims 25-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/20/2026.
Claim Objections
Claims 13-14 and 17-18 are objected to because of the following informalities:
Regarding claim 13-14 and 17-18, the claim limitation “planer blank” should be changed to “planar blank” to stay consistent with the claimed “planar blank” in claim 12.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 11, the claim limitations “a cylindrical inner circumference” and “a substantially conical outer circumference” are indefinite. Specifically, the word “circumference” denotes a circular perimeter, which is a two-dimensional entity. The words “cylindrical” and “conical” are three-dimensional shapes. Therefore, it is unclear how a circumference can be cylindrical or conical. For examination purposes, the limitations will be interpreted as “a cylindrical inner surface” and “a substantially conical outer surface” respectively. Therefore, claims 11-24 are rejected for their dependencies.
Regarding claim 21, the claim limitation “the cylindrical inner circumference” is indefinite for the same reasons stated above. For examination purposes, the limitation will be interpreted as “the cylindrical inner surface.”
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.
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.
Claims 11-13, 17, and 21-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Creuziger (US 3113575).
Regarding claim 11, Creuziger discloses collapsible filter-containing mouthpiece (col. 1, ll. 18-20; “filter”) for tobacco-containing products (title), the tubular mouthpiece (11; Fig. 4) comprising:
a filtering element (25; “filling which is made of a filter material”); and
a cylinder (20; “filter body comprising a tubular covering body”) for accommodating the filtering element (col. 3, ll. 38-41; see Fig. 4; “radially surround the filling”),
wherein the tubular covering body comprises a plurality of helices (15; each helix, separately, has “a cylindrical surface;” the helices, together, form a “substantially conical outer surface”).
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Regarding claim 12, Creuziger discloses the entire mouthpiece may be made of a strip of waxed paper or the like (col. 3, ll. 20-21; “planar blank”).
Regarding claim 13, Creuziger discloses the strip of waxed paper is convoluted to form a spiral (col. 3, ll. 21-22; “wound at least partially in an overlapping manner”).
Regarding claim 17, Creuziger discloses the entire mouthpiece may be made of a strip of waxed paper or the like (col. 3, ll. 20-21; “paper blank”).
Regarding claim 21, Creuziger discloses the cylinder comprises one end portion (see annotated Fig. 4; “axial end”) and a disk-shaped filter member (32; “end element”), and
wherein the disk-shaped filter member is received and secured to the cylinder the cylindrical inner surface of the cylinder (col. 3, ll. 41-44; “bears on the end element of the filter body”).
Regarding claim 22, Creuziger discloses cylindrical inner surface of the cylinder accommodate the filter element (25; col. 3, ll. 40-41; “cylindrical inner circumference…bears on the filling”), with the substantially conical outer surface, to form the circumferential outer face of the filter body (see annotated Fig. 4).
Regarding claim 23, Creuziger discloses the circumferential outer face extends the entire mouthpiece (see annotated Fig. 4).
Regarding claim 24, Creuziger discloses the cylinder (20) further comprises a disk-shaped filter member (32; ”at least one end element”), and
the cylinder is at least formed from a strip of waxed paper which is convoluted into a spiral such that the outermost helix (15a) is secured to, as by means of a suitable adhesive, to the inner side of the cylinder (col. 3, ll. 20-25; “at least partially connected to itself in a materially engaging manner”).
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 14-16 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Creuziger and/or rejected under 35 U.S.C. 103 as being unpatentable over Creuziger, as applied to claim 13 and 17 above.
Regarding claims 14-15 and 18-19, Creuziger discloses the filter as discussed above with respect to claims 13 and 17, comprising the cylinder (20) having the cylindrical inner surface and the substantially conical outer circumference (see annotated Fig. 4 above).
Regarding the claim limitation “wherein the planar blank comprises a first region which is configured in a substantially rectangular manner, and a second region which is configured in a substantially triangular manner and which adjoins the first region” and “wherein the second region comprises a longitudinal side, and a portion of the longitudinal side forms an outer circumferential face of the tubular covering,” these limitations are considered to be product-by-process limitations. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." MPEP 2113(I). Here, because the planar blank is an intermediate product that is wound in an overlapping manner (see claim 13) to form the tubular covering body, these limitations do not impart any patentably distinct features into the claim. Because of such an interpretation, claims 14-15 merely require a “tubular covering body” that has a “cylindrical inner circumference” and a “substantially conical outer circumference.” Therefore, because Creuziger discloses a tubular body that is identical to the claimed invention (see rejection of claim 11 above), claims 14-15 and 18-19 are unpatentable even though the prior product was made by a different process.
Regarding claim 16 and 20, Creuziger discloses the cylinder has as a plurality of outer-most helices (15a; Fig. 4; “outer circumferential face” that is a “visible region”).
Regarding the claim limitation “which is configured to be printed,” this limitation is considered to be product-by-process limitations. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." MPEP 2113(I). Here, because the outermost helices are identical to the claimed “outer circumferential face,” claims 16 and 20 are unpatentable even though the prior product is made from a different process than printing as claimed.
Conclusion
The art made of record and not relied upon is considered pertinent to applicant's disclosure”
Haddad (US 2019/0142061) discloses in Fig. 4 a connector 2 having an outer conical surface and a filter 5 assuming the form of a cylindrical cartridge;
Koshiishi (US 2011/0088709) discloses in Fig. 26 a tobacco filter having a frustoconical outer surface and a cylindrical inner surface.
Rodenas Sanabria (WO 2023/017205) discloses in Fig. 1 a paper blank having the same rectangular shape connected to a triangular shape.
Holzinger (DE 202022000853) discloses in Figs. 2-3 a filter having a conical outer surface and a cylindrical inner surface. However, Holzinger is not considered prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONNY V NGUYEN whose telephone number is (571)272-8294. The examiner can normally be reached Monday - Friday; 7:00 AM - 3:00 PM EST.
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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