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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1,4–7,10–12 and 14–20 are objected to because of the following informalities: Claims 1,10 and 12 should read “An apparatus” instead of “Apparatus”. Claims 4-7,11 and 14-20 should read “The apparatus” instead of “Apparatus”. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Control unit in claims 1 and 14.
Winding unit in claim 11.
Consumable forming unit in claims 12 and 24.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. There is no structural equivalent for the control unit in the specification. There is no structural equivalent for the winding unit in the specification. The consumable forming unit is defined as a garniture in the specification (paragraph 0025, lines 1-2).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1,4-7,10,11 and 14-20 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.
Claim limitations “control unit” and “winding unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification does not provide any structural equivalent for a control unit or winding unit. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim(s) 1,10-12,24 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Giannini et al (WO2019106625A1).
With regards to claim 1, Giannini et al discloses an apparatus for cutting a sheet of aerosol-generating material (method for the production of smoking article, Title) comprising a laser generator configured such that a laser emitted by the laser generator cuts the sheet (laser cutting station, paragraph 0071, line 1) as the sheet of aerosol-generating material is conveyed along a conveyance path (conveying web 2 made of heat not burn article conveyed by conveyor belt 301, Fig. 1).
With regards to claim 10, Giannini et al discloses an apparatus for manufacturing a sheet of aerosol-generating material (device for the production of smoking article, Title) comprising an apparatus for cutting a sheet of aerosol-generating material comprising a laser generator configured such that a laser emitted by the laser generator cuts the sheet (laser cutting station for cutting web 2 of a smoking article, paragraph 0071, line 1) as the sheet of aerosol-generating material is conveyed along a conveyance path (conveying web 2 made of heat not burn article conveyed by conveyor belt 301, Fig. 1).
With regards to claim 11, Giannini et al discloses a sheet of aerosol-generating material manufacturing unit (device for production of smoking article, Title) and, a winding unit for winding the manufactured sheet onto a bobbin, the apparatus for cutting a sheet of aerosol generating material being configured to cut the sheet prior to winding of the sheet onto a bobbin using the winding unit (conveyor belt 301 conveys the cut portion of web 2 along an A direction, Fig. 1).
With regards to claim 12, Giannini et al discloses an apparatus for manufacturing an aerosol-generating consumable from a sheet of aerosol-generating material (device for production of smoking article, Title), the apparatus comprising a conveyor to convey a sheet of aerosol-generating material along a conveyance path (conveying web 2 made of heat not burn article conveyed by conveyor belt 301, Fig. 1),a laser generator configured such that a laser emitted by the laser generator cuts the sheet of aerosol-generating material as the sheet of aerosol-generating material is conveyed along the conveyance path (laser cutting station, paragraph 0071, line 1), and a consumable forming unit to receive the cut sheet of aerosol-generating material as it is conveyed along the conveyance path and form it into a rod-like shape (a forming device 5 for assembling said web 2 during its travel, giving it the shape of an elongated rod 6 in the aforesaid longitudinal direction of transport A, paragraph 0077, lines 2-3).
With regards to claim 24, Giannini et al discloses a method of manufacturing an aerosol-generating consumable from a sheet of aerosol-generating material (method for the production of smoking article, Title), the method comprising conveying a sheet of aerosol-generating material along a conveyance path (conveying web 2 made of heat not burn article conveyed by conveyor belt 301, Fig. 1), cutting the sheet of aerosol-generating material using a laser emitted by a laser generator (cutting web 2 by laser cutting station, paragraph 0071, line 1) as the sheet of aerosol-generating material is conveyed along the conveyance path (conveying web 2 made of heat not burn article conveyed by conveyor belt 301, Fig. 1), and forming the cut sheet into a consumable in a consumable forming unit (a forming device 5 for assembling said web 2 during its travel, giving it the shape of an elongated rod 6 in the aforesaid longitudinal direction of transport A, paragraph 0077, lines 2-3).
With regards to claim 25, Giannini et al discloses wherein the method comprises cutting the sheet using the laser generator (laser cutting station, paragraph 0071, lines 1-2) to form discrete cut sections spaced from each other in a direction extending along the conveyance path (cuts 3 spaced apart in a length direction, Fig. 3), and so that each discrete cut section comprising a plurality of parallel, elongate strips of aerosol- generating material (cuts 3 are parallel with each other, Fig. 3).
Claim(s) 1,4-7 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bray et al (WO2015028568A1).
With regards to claim 1, Bray et al discloses an apparatus for cutting a sheet of aerosol-generating material (a laser cutting apparatus for forming laser cuts in smoking article wrapper material, page 1, line 16) comprising a laser generator configured such that a laser emitted by the laser generator cuts the sheet (laser diodes generate laser that is used for cutting tipping paper 2, Fig. 1) as the sheet of aerosol-generating material is conveyed along a conveyance path (laser cutting apparatus may include a conveying device for moving the web, page 3, lines 19-22).
With regards to claim 4, Bray et al discloses a control unit configured to control the laser generator, wherein the control unit is configured to control the laser generator to intermittently cut the sheet of aerosol-generating material to form discrete cut sections spaced from each other (a controller is provided to control the generation of laser radiation by the one or more laser sources so as to cause the laser cutting apparatus to cut a predetermined pattern in the smoking article wrapper material, page 6, lines 12-15) in a direction extending along the conveyance path (along conveying device, Fig. 1).
With regards to claim 5, Bray et al discloses wherein each discrete cut section comprises a plurality of parallel, elongate strips of aerosol-generating material extending in a direction along the conveyance path (the laser cuts formed in the smoking article wrapper material may comprise through- cuts and define a pattern on the wrapper material, page 4, lines 1-5).
With regards to claim 6, Bray et al discloses wherein the control unit is configured to control the laser generator (a controller is provided to control the generation of laser radiation by the one or more laser sources so as to cause the laser cutting apparatus to cut a predetermined pattern in the smoking article wrapper material, page 6, lines 12-15) to form a registration mark in the sheet of aerosol- generating material (the laser cuts formed on the web may form a shaped opening in the shape of a polygon, page 4, lines 1-5).
With regards to claim 7, Bray et al discloses wherein the registration mark is at least one cut or pattern of cuts, a perforation or other indicia in the sheet separate from said discrete cut sections (the laser cuts formed on the web may form a shaped opening in the tipping paper through which an underlying tipping layer is visible, and may provide ventilation and may define gaps/holes in a line along which tipping paper may be broken to allow relative rotation between two adjacent filter segments, page 4, lines 1-8).
With regards to claim 10, Bray et al discloses an apparatus for manufacturing a sheet of aerosol-generating material comprising an apparatus for cutting a sheet of aerosol-generating material (a laser cutting apparatus for forming laser cuts in smoking article wrapper material, page 1, line 16) comprising a laser generator configured such that a laser emitted by the laser generator cuts the sheet (laser diodes generate laser that is used for cutting tipping paper 2, Fig. 1) as the sheet of aerosol-generating material is conveyed along a conveyance path (laser cutting apparatus may include a conveying device for moving the web, page 3, lines 19-22).
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) 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Giannini et al as applied to claim 12 above, and further in view of Bray et al.
With regards to claim 14, Giannini et al discloses each cut section being spaced from an adjacent cut section in a direction extending along the conveyance path (discontinuous cuts 3 in web 2 extending in direction A, Fig. 1-3).
Giannini et al does not disclose a control unit configured to control the laser generator to intermittently cut the sheet to form discrete cut sections.
Bray et al teaches a control unit configured to control the laser generator to intermittently cut the sheet to form discrete cut sections (a controller is provided to control the generation of laser radiation by the one or more laser sources so as to cause the laser cutting apparatus to cut a predetermined pattern in the smoking article wrapper material, page 6, lines 12-15).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Giannini et al and Bray et al before him or her, to modify the cutting station of Giannini et al to include the controller of Bray et al because the combination allows for enhanced controllability when using a laser to make aerosol-generating material.
With regards to claim 15, Giannini et al discloses wherein each discrete cut section comprises a plurality of parallel, elongate strips of aerosol-generating material extending in a direction along the conveyance path (discontinuous cuts 3 parallel to each other in web 2 extending in direction A, Fig. 1-3).
With regards to claim 16, Bray et al teaches wherein the control unit is configured to control the laser generator (a controller is provided to control the generation of laser radiation by the one or more laser sources so as to cause the laser cutting apparatus to cut a predetermined pattern in the smoking article wrapper material, page 6, lines 12-15) to form a registration mark in the sheet (the laser cuts formed on the web may form a shaped opening in the shape of a polygon, page 4, lines 1-5).
Claim(s) 21 is rejected under 35 U.S.C. 103 as being unpatentable over Robinson et al (US20180235286A1) in view of Giannini et al.
With regards to claim 21, Robinson et al discloses a consumable comprising a sheet of aerosol-generating material formed into a wrapped rod and having a distal end for insertion into an aerosol generating device comprising a heating element that is received within the aerosol-generating material at distal end of the rod (cigarette 150 having a wrapping material 160 filled with tobacco 89 wherein a distal end of cigarette 150 is placed on heating element 72, Fig. 3).
Robinson et al does not disclose wherein a portion of the sheet of aerosol generating material at the distal end of the rod is cut into strips extending from said distal end of the wrapped rod.
Giannini et al teaches a portion of the sheet of aerosol generating material at the distal end of the rod is cut into strips extending from said distal end of the wrapped rod (web 2 consisting of tobacco having elongated cuts 3 from end to end of the web 2, paragraph 0058, lines 5-7, Fig. 13).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Robinson et al and Giannini et al before him or her, to modify the cigarette of Robinson et al to include the elongated cuts of Giannini et al because the combination allows for an aerosol product that ensures proper ventilation to maintain high quality.
Allowable Subject Matter
Claims 17-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 17, the prior art does not disclose or teach a scanner configured to read and send a signal indicative of the presence of the registration mark to the control unit. Claims 18 is dependent on claim 17, claim 19 is dependent on claim 18 and claim 20 is dependent on claim 19.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS JOHN WARD whose telephone number is (571)270-1786. The examiner can normally be reached Monday - Friday, 7am - 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, EDWARD LANDRUM can be reached at 5712725567. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS J WARD/Examiner, Art Unit 3761
/JOHN J NORTON/Primary Examiner, Art Unit 3761
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