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 .
Response to Preliminary Amendment
Receipt is acknowledged of a preliminary amendment, filed 21 January 2025, which has been placed of record and entered in the file.
Status of the claims:
Claims 12-31 are pending.
Claims 12-31 are new.
Claims 1-11 are canceled.
Specification and Drawings:
Amendments to the specification and drawings have not been submitted in the amendment filed 21 January 2025.
Information Disclosure Statement
Receipt is acknowledged of Information Disclosure Statement(s) (IDS), filed 13 November 2024, which have been placed of record in the file. An initialed, signed, and dated copy of each PTO-1449 or PTO-SB-08 form is attached to the Office action.
Claim Objections
Claims 12-26 are objected to because of the following informalities:
In claim 12, line 10, there is an editorial error. It appears that “creates” should be changed to --create--.
In claim 22, line 11, there is an editorial error. It appears that “creates” should be changed to --create--.
Claims 13-21 and 23-26 depend from claims 12 and 22, respectively, and are likewise objected to.
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 24-26 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 24, lines 3-4 is ambiguous as “an abnormal has been output” since it is not clear to what “an abnormal” refers. It appears that --signal-- should be added after “abnormal”.
Claims 25-26 depend from claim 24, and are likewise rejected.
Correction and/or clarification is required.
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.
Claims 12 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tonn (US Patent Publ. No. 2022/0034752).
With respect to claim 12, Tonn discloses a measurement device (measurement assembly 1, fig. 1, [0054]) for measuring an outer circumference of a rod- shaped article in a transport section in which the rod-shaped article is transported, the measurement device comprising: a camera configured to capture an image of an end surface of the rod-shaped article (OCT imaging device 12 that captures image of the end surface of the article CL, fig. 1); and circuitry configured to identify an outer circumferential edge of the end surface in the captured image (the locations of the edge points on the edge of the article CL are determined from the OCT image; the processes are carried out by running software on a computer, [0059], [0060], [0061]); create an imaginary circle based on the outer circumferential edge (an imaginary circle is created by the radial lines, fig. 3); create n straight lines passing through a center point of the imaginary circle (a plurality of straight lines, each straight line passing through center C of the circle, fig. 3); identify two intersections at which each of the straight lines crosses the outer circumferential edge (Esub1, Esub2…Esubi edge points that cross the outer circumferential edge, fig. 3); measure distances between the intersections adjacent to each other on the outer circumferential edge (adjacently arranged edge points Esubi are connected by individual straight lines Usub1, Usub2, Usubi, fig. 3, [0058]); and calculate the outer circumference by adding the distances between the intersections measured along an entire circumference of the outer circumferential edge (the length U of the circumference is determined by the sum of the lengths Usub1, Usub2, Usubi, fig. 3, [0058]).
During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963) (The claims were directed to a core member for hair curlers and a process of making a core member for hair curlers. The court held that the intended use of hair curling was of no significance to the structure and process of making.); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962) (statement of intended use in an apparatus claim did not distinguish over the prior art apparatus). To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (anticipation rejection affirmed based on Board’s factual finding that the reference dispenser (a spout disclosed as useful for purposes such as dispensing oil from an oil can) would be capable of dispensing popcorn in the manner set forth in appellant’s claim 1 (a dispensing top for dispensing popcorn in a specified manner)) and cases cited therein. MPEP 2111.02
Tonn discloses the measurement device for measuring an outer circumference of an article, the device comprising a camera and circuitry. Thus one is fully capable of using the measurement device for measuring an outer circumference of a rod- shaped article in a transport section in which the rod-shaped article is transported.
The intended use recitation language (some of which has been italicized supra) carries no weight in the absence of any distinguishing structure. Tonn discloses the structure as claimed and is thus capable of performing the functions. See MPEP 2114 which states: APPARATUS CLAIMS MUST BE STRUCTURALLY DISTINGUISHABLE FROM THE PRIOR ART While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210,212-13, 169 USPQ 226,228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528,531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
In the present case, the statements in the preamble reciting the purpose or intended use of the claimed invention do not result in a structural difference between the claimed invention and the prior art.
With respect to claim 27, Tonn discloses a measurement method (measurement assembly 1, fig. 1, [0054]) for measuring an outer circumference of a rod- shaped article in a transport section in which the rod-shaped article is transported, the measurement method comprising: an imaging step of capturing an image of an end surface of the article (OCT imaging device 12 captures image of the end surface of the article CL, fig. 1); and an image processing step of calculating the outer circumference by processing the image captured in the imaging step (outer circumference is calculated; the processes are carried out by running software on a computer, [0058], [0059], [0060], [0061]), wherein the image processing step includes an edge identification process of identifying an outer circumferential edge of the end surface in the captured image step (the locations of the edge points on the edge of the article CL are determined from the OCT image; the processes are carried out by running software on a computer, [0059], [0060], [0061]), an intersection identification process of creating an imaginary circle based on the outer circumferential edge (an imaginary circle is created by the radial lines, fig. 3), creating n straight lines passing through a center point of the imaginary circle (a plurality of straight lines, each straight line passing through center C of the circle, fig. 3), and identifying two intersections at which each of the straight lines crosses the outer circumferential edge (Esub1, Esub2…Esubi edge points that cross the outer circumferential edge, fig. 3), and an adding process of measuring distances between the intersections adjacent to each other on the outer circumferential edge and calculating the outer circumference by adding the distances between the intersections measured along an entire circumference of the outer circumferential edge (the length U of the circumference is determined by the sum of the lengths Usub1, Usub2, Usubi, fig. 3, [0058]).
During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963) (The claims were directed to a core member for hair curlers and a process of making a core member for hair curlers. The court held that the intended use of hair curling was of no significance to the structure and process of making.); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962) (statement of intended use in an apparatus claim did not distinguish over the prior art apparatus). To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (anticipation rejection affirmed based on Board’s factual finding that the reference dispenser (a spout disclosed as useful for purposes such as dispensing oil from an oil can) would be capable of dispensing popcorn in the manner set forth in appellant’s claim 1 (a dispensing top for dispensing popcorn in a specified manner)) and cases cited therein. MPEP 2111.02
Tonn discloses the measurement method for measuring an outer circumference of an article. Thus one is fully capable of using the measurement method for measuring an outer circumference of a rod- shaped article in a transport section in which the rod-shaped article is transported.
The intended use recitation language (some of which has been italicized supra) carries no weight in the absence of any distinguishing structure and manipulative step. Tonn discloses the structure and manipulative steps as claimed and is thus capable of performing the functions. See MPEP 2114 which states: APPARATUS CLAIMS MUST BE STRUCTURALLY DISTINGUISHABLE FROM THE PRIOR ART While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210,212-13, 169 USPQ 226,228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528,531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
In the present case, the statements in the preamble reciting the purpose or intended use of the claimed invention do not result in a manipulative difference between the claimed invention and the prior art.
Allowable Subject Matter
Claims 13-21 would be allowable if rewritten to overcome the objection, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 22-26 would be allowable if rewritten or amended to overcome the objection and the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 28-31 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 an examiner’s statement of reasons for the indication of allowable subject matter:
With respect to claim 13, the prior art fails to disclose or teach the apparatus of claim 12, and further comprising: a sensor configured to detect the rod-shaped article when the rod-shaped article is transported into the transport section.
Claims 14-21 depend from claim 13, and would likewise be allowable.
With respect to claim 22, claim 22 includes the following limitations which in combination with the other limitations of the claim are not taught or suggested by the prior art:
“a measurement device for measuring an outer circumference of the rod-shaped article in a transport section in which the rod-shaped article is transported, the measurement device comprising: a camera configured to capture an image of an end surface of the rod-shaped article; and circuitry configured to identify an outer circumferential edge of the end surface in the captured image; create an imaginary circle based on the outer circumferential edge; creates n straight lines passing through a center point of the imaginary circle; identify two intersections at which each of the straight lines crosses the outer circumferential edge; measure distances between the intersections adjacent to each other on the outer circumferential edge; and calculate the outer circumference by adding the distances between the intersections measured along an entire circumference of the outer circumferential edge; and a post-processing section to which the rod-shaped article transported through the transport section is transported”.
Wilson et al. (US Patent Publ. No. 2006/0098214) is considered to be the closest prior art. Wilson et al. disclose an apparatus for determining circumference of a rod-shaped article, including a camera for imaging an end of the rod-shaped article, and circuitry for determining the diameter of the article, and calculating the circumference from the diameter.
Tonn (US Patent Publ. No. 2022/0034752) discloses a measurement device including a camera configured to capture an image of an article, and circuitry configured to identify an outer circumferential edge, create an imaginary circle, create n straight lines, identify two intersections and measure distances, and calculate the outer circumference by adding the distances.
Otokawa et al. (US Patent Publ. No. 2020/0302594) discloses a cigarette filter inspection device including moving cigarettes on a transport device, sensing a cutting position, and inspecting the cigarette filters for placement of a flavor element.
The difference between the claimed subject matter and Wilson et al., or a combination of Wilson et al., Tonn, and Otokawa et al., is that Wilson et al., or a combination of Wilson et al., Tonn, and Otokawa et al. do not disclose or teach “a measurement device for measuring an outer circumference of the rod-shaped article in a transport section in which the rod-shaped article is transported, the measurement device comprising: a camera configured to capture an image of an end surface of the rod-shaped article; and circuitry configured to identify an outer circumferential edge of the end surface in the captured image; create an imaginary circle based on the outer circumferential edge; creates n straight lines passing through a center point of the imaginary circle; identify two intersections at which each of the straight lines crosses the outer circumferential edge; measure distances between the intersections adjacent to each other on the outer circumferential edge; and calculate the outer circumference by adding the distances between the intersections measured along an entire circumference of the outer circumferential edge; and a post-processing section to which the rod-shaped article transported through the transport section is transported”.
The difference between the claimed subject matter and Wilson et al., or a combination of Wilson et al., Tonn, and Otokawa et al., would not have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, since such modifications to the Wilson et al. structure would have gone beyond mere substitution or incorporation of a known structure capable of achieving predictable results. Any modification to the Wilson et al. structure to arrive at the claimed subject matter would have required a reworking of the structure and the principle of operation in a manner which would not have been apparent to a person having ordinary skill in the relevant art, and would have required the improper benefit of the teachings of Applicant’s disclosure.
Claims 23-26 depend from claim 22, and would likewise be allowable.
With respect to claim 28, the prior art fails to disclose or teach the method of claim 27, further comprising: an article detection step of detecting the rod-shaped article when the rod-shaped article is transported into the transport section and outputting an imaging start signal, wherein, in the imaging step, the image of the end surface is captured in response to the imaging start signal at a time when the rod-shaped article to be measured that has been transported into the transport section is transported to an imaging position.
Claims 29 -31 depend from claim 28, and would likewise be allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lohse et al. (WO 2019/115209) disclose a cigarette inspecting device.
Garst et al. (CN 103504471) disclose a cigarette inspecting device.
Wood et al. (US Patent Publ. No. 2015/0257437) disclose a cigarette inspecting device.
Garst et al. (CN 103504472) disclose a cigarette inspecting device.
Kawai et al. (US Patent Publ. No. 2007/0100554) disclose a rod-shaped article measuring device.
Schroeder (DE 19528815) disclose a cigarette inspecting device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Linda J. Hodge whose telephone number is (571)272-0571. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/LINDA J. HODGE/Examiner, Art Unit 3731