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 subject to this Office Action. This is the First Action on the merits of the claims.
Claim Objections
Claim 13 objected to because of the following informalities: the word “sued” should read “used” (p3 ln 4). Appropriate correction is required.
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.
Claims 1-8, 10, 12-14, and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ormaza (US11076632B1).
Regarding independent claim 1, Ormaza teaches a system for a pre-rolled tip for housing/ holding at least on flavor capsule securely within the tip. (cl2 ln 4-7) The assembly includes:
A tip sheet having a pre-rolled configuration(cl3 ln 12)
A corrugated section (cl 3 ln 52-53) with a cut portion that extends horizontally across the corrugated section (cl3 ln 56-60). The art teaches this portion has two foldable extensions that are separated by a channel or cut out portion (slot). (cl4 ln 13-15) The two foldable extensions are considered to read on the pair of leg members of the claim limitations.
The prior art discloses a tip sheet having a front side, a rear side, a top edge, a bottom edge, and a pair of opposing side edges. (Fig 2, annotated figure 1 below)
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Annotated Figure 1
Ormaza teaches that the portion that holds the flavor capsule is a corrugated section that can form patterns such as spirals (cl4 ln 49-52) such that the corrugated section secures the flavor capsule and prevents the flavor capsule from falling or escaping from the tip assembly. (cl5 ln 6-9) The use of a spiral configuration of the corrugated section is considered to read on the rolled configuration of the claim. (Fig. 7)
Regarding claims 3 to 5 and 7, as shown in annotated figure 1 above, Ormaza discloses a pre-rolled shape that includes:
A convex top edge
Concave bottom edge
The material being a curved shape.
The legs (extensions) being a curved shape
Regarding claim 6, Ormaza teaches the cut portion (slot) includes a suitable width for receiving the flavor capsule and further that the width of the cut portion is dependent on the flavor capsule inserted. (cl3-4 ln 66-3) This teaching of the cut portion (slot) width being dependent on the flavor capsule that is to be inserted and that the cut portion is used to prevent the capsule from falling or escaping the assembly (cl5 ln 6-9) would lead a person having ordinary skill in the art to understand that the cut portion (slot) would be sized equal to the diameter of the capsule in order to secure the capsule in the assembly.
Regarding independent claim 8, Ormaza teaches a system for a pre-rolled tip for housing/ holding at least on flavor capsule securely within the tip. (cl2 ln 4-7) The assembly includes: a tip sheet having a pre-rolled configuration (cl3 ln 12-12) where the tip sheet has a front side, a rear side, a top edge, a bottom edge, and a pair of opposing side edges. The prior art discloses the tip sheet is planar and has a convex top edge, a concave bottom edge, and the shape of the paper forms an arch. (Fig 2, annotated figure 1)
A corrugated section (cl 3 ln 52-53) with a cut portion that extends horizontally across the corrugated section (cl3 ln 56-60). The art teaches this portion has two foldable extensions that are separated by a channel or cut out portion (slot). (cl4 ln 13-15) The two foldable extensions are considered to read on the pair of leg members of the claim limitations.
Ormaza teaches that the portion that holds the flavor capsule is a corrugated section that can form patterns such as spirals (cl4 ln 49-52) such that the corrugated section secures the flavor capsule and prevents the flavor capsule from falling or escaping from the tip assembly. (cl5 ln 6-9) The use of a spiral configuration of the corrugated section is considered to read on the rolled configuration of the claim.
Regarding claim 10, Ormaza teaches the cut portion (slot) includes a suitable width for receiving the flavor capsule and further that the width of the cut portion is dependent on the flavor capsule inserted. (cl3-4 ln 66-3) This teaching of the cut portion (slot) width being dependent on the flavor capsule that is to be inserted and that the cut portion is used to prevent the capsule from falling or escaping the assembly (cl5 ln 6-9) would lead a person having ordinary skill in the art to understand that the cut portion (slot) would be sized equal to the diameter of the capsule in order to secure the capsule in the assembly.
Regarding claim 12, Ormaza teaches the tip sheet is made from a standard tip sheet material such as stiff paper. (cl3 ln 15-16)
Regarding independent claim 13, Ormaza teaches a system for a pre-rolled tip for housing/ holding at least on flavor capsule securely within the tip. (cl2 ln 4-7) The assembly includes:
A tip sheet having a pre-rolled configuration(cl3 ln 12-12) and where the tip sheet has a front side, a rear side, a top edge, a bottom edge, and a pair of opposing side edges. (Fig 2, annotated figure 1)
A corrugated section (cl 3 ln 52-53) with a cut portion that extends horizontally across the corrugated section (cl3 ln 56-60). The art teaches this portion has two foldable extensions that are separated by a channel or cut out portion. (cl4 ln 13-15) The two foldable extensions are considered to read on the pair of leg members of the claim limitations. (Fig 2, annotated figure 1 below) Ormaza teaches that the portion that holds the flavor capsule is a corrugated configured in such a way the corrugated section secures the flavor capsule and prevents the flavor capsule from falling or escaping from the tip assembly. (cl5 ln 6-9)
Regarding claim 14, Ormaza teaches a corrugated section (cl 3 ln 52-53) with a cut portion that extends horizontally across the corrugated section (cl3 ln 56-60). The art teaches this portion has two foldable extensions (legs) that are separated by a channel or cut out portion (slot). (cl4 ln 13-15) The two foldable extensions are considered to read on the pair of leg members of the claim limitations.
Ormaza teaches that the portion that holds the flavor capsule is a corrugated section (cl4 ln 49-52) such that the corrugated section secures the flavor capsule and prevents the flavor capsule from falling or escaping from the tip assembly. (cl5 ln 6-9)
Regarding claim 16 and 17, as shown in annotated figure 1 above, Ormaza discloses a pre-rolled shape that includes:
A convex top edge
Concave bottom edge
The legs (extensions) being a curved shape
Regarding claim 18, Ormaza teaches the cut portion (slot) includes a suitable width for receiving the flavor capsule and further that the width of the cut portion is dependent on the flavor capsule inserted. (cl3-4 ln 66-3) This teaching of the cut portion width being dependent on the flavor capsule that is to be inserted and that the cut portion is used to prevent the capsule from falling or escaping the assembly (cl5 ln 6-9) would lead a person having ordinary skill in the art to understand that the cut portion (slot) would be sized equal to the diameter of the capsule in order to secure the capsule in the assembly.
Regarding claim 19, Ormaza teaches a corrugated section (cl 3 ln 52-53) with a cut portion that extends horizontally across the corrugated section (cl3 ln 56-60). The art teaches this portion has two foldable extensions that are separated by a channel or cut out portion (slot). (cl4 ln 13-15) The two foldable extensions are considered to read on the pair of leg members of the claim limitations.
Ormaza teaches that the portion that holds the flavor capsule is a corrugated section that can form patterns such as spirals (cl4 ln 49-52) such that the corrugated section secures the flavor capsule and prevents the flavor capsule from falling or escaping from the tip assembly. (cl5 ln 6-9) The use of a spiral configuration of the corrugated section is considered to read on the rolled configuration of the claim.
Regarding claim 20, Ormaza teaches the tip sheet is made from a standard tip sheet material such as stiff paper. (cl3 ln 15-16)
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, 9 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Ormaza (US11076632B1) as applied to claim 1, 8, and 13 above, and further in view of Jespersen, et al (US20120138075A1).
Regarding claim 2, Ormaza is silent with respect to the tip apparatus having a notch section below the two foldable extensions (legs).
Jespersen, directed to the design teaches a filter tip for rolled sheets, where the filter strip (sheet) is semicircular (curved) pre-rolled/ encasing form. This form has a removable portion 400 [0123] that when removed provides a notch under the folded section. (Fig 5 and 6) To assemble the filter strip portion is folded along perforated lines (310/350) along a radial length (170) towards radial length (180) and then radial length 170 is rolled about radial length 180 to form a cone shaped tip. ([0125-0127], Fig 5 and 6, annotated figure 2 below)
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Annotated Figure 2.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Ormaza by adding a notch the folded portion of the filter paper as taught by Jespersen because both Ormaza and Jespersen are directed to rolled filter tips, Jespersen teaches this design assists the user in forming filter, prevents smoking material from being drawn through the cigarette and into a user's mouth; and permits the entire amount of smoking material to be consumed without risking burned hands and/or lips [0057], and this involves the use of known technique to improve similar devices (methods, or products) in the same way.
Regarding claim 9, Ormaza is silent with respect to the tip apparatus having a notch section below the two foldable extensions (legs).
Jespersen, directed to the design teaches a filter tip for rolled sheets, where the filter strip (sheet) is semicircular (curved) pre-rolled/ encasing form. This form has a removable portion 400 [0123] that when removed provides a notch under the folded section. (Fig 5 and 6) To assemble the filter strip portion is folded along perforated lines (310/350) along a radial length (170) towards radial length (180) and then radial length 170 is rolled about radial length 180 to form a cone shaped tip. ([0125-0127], Fig 5 and 6, annotated figure 2 above)
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Ormaza by adding a notch the folded portion of the filter paper as taught by Jespersen because both Ormaza and Jespersen are directed to rolled filter tips, Jespersen teaches this design assists the user in forming filter, prevents smoking material from being drawn through the cigarette and into a user's mouth; and permits the entire amount of smoking material to be consumed without risking burned hands and/or lips [0057], and this involves the use of known technique to improve similar devices (methods, or products) in the same way.
Regarding claim 15, Ormaza is silent with respect to the tip apparatus having a notch section below the two foldable extensions (legs).
Jespersen, directed to the design teaches a filter tip for rolled sheets, where the filter strip (sheet) is semicircular (curved) pre-rolled/ encasing form. This form has a removable portion 400 [0123] that when removed provides a notch under the folded section. (Fig 5 and 6) To assemble the filter strip portion is folded along perforated lines (310/350) along a radial length (170) towards radial length (180) and then radial length 170 is rolled about radial length 180 to form a cone shaped tip. ([0125-0127], Fig 5 and 6, annotated figure 2 above)
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Ormaza by adding a notch the folded portion of the filter paper as taught by Jespersen because both Ormaza and Jespersen are directed to rolled filter tips, Jespersen teaches this design assists the user in forming filter, prevents smoking material from being drawn through the cigarette and into a user's mouth; and permits the entire amount of smoking material to be consumed without risking burned hands and/or lips [0057], and this involves the use of known technique to improve similar devices (methods, or products) in the same way.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ormaza (US11076632B1) as applied to claim 8 above, and further in view of Wahidi (US20230110370A1).
Regarding claim 11, Ormaza discloses the cut portion is made in the corrugated section, as shown above in annotated figure 1, and thus the extended portions are equal in length; however, the embodiment shown in figure 3 does not show the foldable extensions having equal width. The prior art does teach an embodiment, Figure 3, where the extended portions are of equal size and length.
Therefore it would be obvious to modify the corrugated section such that the cut section would create foldable extensions having the same width and length. Ormaza teaches the cut portion is configured to prevent the flavor capsule from falling out or escaping the assembled tip. (cl5 ln 6-9) A person having ordinary skill would recognize that by centering the cut out portion and having the foldable extensions being equal in size would provide the best support to prevent the capsule from falling out or escaping the tip assembly. .
Additionally or alternatively, Wahidi, directed to the design of cone shaped inserts having flavor releasing mechanisms, teaches a pre-rolled cone that has a cutout (slot), used to form a cavity, that secures a flavor releasing mechanism (flavor pod). (Abstract) The prior art teaches this cutout is generally centered between the top side and the bottom side. [0028] The centering of the cutout would cause the foldable portions above and below the cutout portion to be equal in width.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Ormaza by using as taught by Wahid because both Ormaza and Wahid are directed to filter tips for holding a capsule, Wahidi teaches that the flavor releasing mechanism is located in the insert such that the sidewalls can fully encircle the flavor releasing mechanism and ensure the flavor releasing mechanism is held securely within the cavity. [0038], and this involves the use of known technique to improve similar products in the same way.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA R BIEGER whose telephone number is (703)756-1014. The examiner can normally be reached M-Th: 7:30-4:30.
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/V.R.B./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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