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 Claims
This office action is in response to Applicant’s Amendment/Request for Reconsideration filed on 25 June 2026.
Claims 1 – 11 are pending.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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) 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) 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) because the claim limitations use 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 limitations are:
“a steam distribution system” in claim 1.
“a temperature influencer” in claim 1 and 10
“a pressure influencer” in claim 4
“a temperature control unit” in claim 10
“a plasticizer application device” in claim 10
“a cutting device” in claim 11
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
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.
Claims 10 – 11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 10, the limitation, “a plasticizer application device”, invokes 35 U.S.C. 112(f). 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. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b).
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);
(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.
Regarding claim 11, the limitation, “a cutting device”, invokes 35 U.S.C. 112(f). 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. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b).
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);
(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.
Examiner’s Note
Regarding claims 1 and 10, the examiner interprets the term, “overheated steam” to refer to steam having a temperature higher than 100 degrees Celsius at standard atmospheric pressure.
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 is incorrect, any correction of the statutory basis 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.
Claims 1 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Gudang Garam (EP 3 123 877 A1) in view of Zhang (CN 103 340 220 B).
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Regarding claim 1, Gudang Garam discloses a method for forming a continuous tubular rod from a continuous tow material, the method comprising:
providing a continuous tow material (2A, 2B, annotated fig. 10);
forming the continuous tow material to a continuous tubular rod (2C, annotated fig. 10);
heating the continuous tow material during forming by providing overheated steam ([0056]; “superheated steam”) from a steam generator (43, fig. 10. [0058]) via a steam distribution system (39, fig. 2 and 35, 40, 41, fig. 10) to the continuous tubular rod, and
providing a temperature influencer (44, fig. 10) in the steam distribution system downstream of the steam generator, the temperature influencer capable of changing a temperature of the overheated steam delivered from the steam generator to the continuous tow material during forming ([0058] – [0059]).
Gudang Garam further discloses the overheated steam in the steam distribution system injected at several injection sites (The examiner deems the sites within a format device 35 having injection channels/blow-in ducts 39, shown in fig. 2, as the claimed, “several injection sites”) to the continuous tubular rod along a forming path (37, fig. 10) of the continuous tow material.
Gudang Garam does not explicitly disclose measuring the temperature of the overheated steam in the steam distribution system at the several injection sites of the overheated steam to the continuous tubular rod along a forming path of the continuous tow material.
However, Zhang, which is reasonable pertinent to the problem faced by the inventor, teaches measuring the temperature of the overheated steam (via air inlet temperature sensors 11) in the steam distribution system at a plurality of injection sites (The examiner deems the sites within the machine body having nozzles 8 as the claimed, “several injection sites”, wherein [0034] describes the air intake temperature sensors 11 installed at these nozzles) of the overheated steam to a material along a forming path of that material (One having ordinary skill in the art would recognize that with the incorporation of the teachings of Zhang with the invention of Gudang Garam, injection channels/blow-in ducts 39 that open into the through-passage 30 of a format device 35 in Gudang Garam would have the nozzles 8 and the air inlet temperature sensors 11 of Zhang to measure the temperature of the overheated steam at each of the (several) injection channels/blow-in ducts 39 in Gudang Garam).
Zhang is evidence that measuring the temperature of the overheated steam in the steam distribution system at the several injection sites of the overheated steam to the material along the forming path of that material was known and within the skill of one having ordinary skill in the art. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the method for forming a continuous tubular rod from a continuous tow material of Gudang Garam to include the control mechanisms of Zhang comprising the structures of the nozzles, the air inlet temperature sensors, and the control system with the motivation to ensure precise temperature and pressure control in the formation of the continuous tubular rod of tow material.
Regarding claim 2, Gudang Garam, as modified by Zhang, discloses the invention as recited in claim 1.
Gudang Garam discloses heating the overheated steam (via the steam superheater 44, fig. 10) delivered from the steam generator (42, fig. 10) before delivering the overheated steam (via injection channels/blow-in ducts 39 in the format device 35) to the continuous tow material (2A, 2B, annotated fig. 10).
Regarding claim 3, Gudang Garam, as modified by Zhang, discloses the invention as recited in claim 1.
The modified Gudang Garam discloses measuring the temperature of the overheated steam at a plurality of injection sites (The examiner deems the sites within the format device 35 of Gudang Garam having the injection channels/blow-in ducts 39 as the claimed, “a plurality of injection sites”, wherein, with the combination of the teachings of Zhang with the invention of Gudang Garam, the air inlet temperature sensors 11 of Zhang would be at each of the plurality of injection channels/blow-in ducts 39 to measure the temperature of the overheated steam) along a forming path (Gudang Garam – 37, fig. 10) of the continuous tow material (2A, 2B, annotated fig. 10).
Regarding claim 4, Gudang Garam, as modified by Zhang, discloses the invention as recited in claim 1.
The modified Gudang Garam discloses measuring the pressure of the overheated steam (Gudang Garam – [0058] describes a pressure control system 45 regulating the pressure of the steam to 0.4 – 2 bars wherein the term, “regulating”, implies the pressure is measured in some form of closed loop control in order to maintain the pressure of the steam to 0.4 – 2 bars. Alternatively, Zhang – via pressure sensor 4 and/or pressure gauge 5, fig. 1) and providing a pressure influencer (Gudang Garam – 45, fig. 10) in the distribution system, the pressure influencer being capable of changing the pressure of the overheated steam delivered to the continuous tow material (Gudang Garam – [0058] describes the evaporator 43 producing steam having a pressure of 5 – 10 bars wherein [0060] describes a pressure control system 45 reducing and regulating this pressure to 0.4 – 2 bars).
The modified Gudang Garam discloses the measuring of the pressure of the overheated steam (Zhang – via pressure sensor 4 and/or pressure gauge 5, fig. 1) on the interior of the frame (Zhang – 1, fig. 1 – which is an analogous structure to the format device 35 in Gudang Garam).
Gudang Garam, as modified by Zhang, does not explicitly disclose measuring the pressure of the overheated steam at at least one of the injection sites.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the location of the pressure sensor of the modified Gudang Garam to be at at least one of the injection sites because it has been held that rearranging known elements to produce predictable results (i.e., measuring of the pressure of the overheated steam) without achieving a new, unexpected function or synergistic effect lacks the necessary inventive step. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) In Japikse, claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device. Similarly, in the instant application, applicant’s claim to measuring the pressure of the overheated steam reads on the prior art except with regard to where the pressure measurement is taken or, in other words, the position of the pressure sensor and/or gauge, and the position of the pressure sensor and/or gauge does not modify the operation of the pressure sensor and/or gauge or modify the measuring of the pressure of the overheated steam.
Regarding claim 5, Gudang Garam, as modified by Zhang, discloses the invention as recited in claim 4.
Gudang Garam discloses the pressure influencer (45, fig. 10) diminishes the pressure of the overheated steam delivered to the continuous tow material (2A, 2B, annotated fig. 10) ([0058] describes the evaporator 43 producing steam having a pressure of 5 – 10 bars wherein [0060] describes a pressure control system 45 reducing and a regulating this pressure to 0.4 – 2 bars).
Regarding claim 6, Gudang Garam, as modified by Zhang, discloses the invention as recited in claim 1.
Gudang Garam discloses applying plasticizer to the continuous tow material (2A, 2B, annotated fig. 10) before forming the continuous tubular rod (2C, annotated fig. 10) ([0047] describes an application device 22 for applying a plasticizer wherein annotated figure 10 shows the application of plasticizer occurs prior to the formation of the continuous tubular rod 2C).
Regarding claim 7, Gudang Garam, as modified by Zhang, discloses the invention as recited in claim 1.
Gudang Garam discloses cutting the continuous tubular rod (2C, annotated fig. 10) into individual segments ([0063] describes that after a filter tow strip 2 leaves the format device 35, the filter tow strip 2 is fed to a filter strand machine of type KDF4 or KDF5 from Hauni Maschinenbau AG wherein [0004] describes when the filter tow strip 2 is fed to a filter strand machine of type KDF4 or KDF5 from Hauni Maschinenbau AG, the filter rod is wrapped with paper and cut up).
Regarding claim 8, Gudang Garam, as modified by Zhang, discloses the invention as recited in claim 1.
Gudang Garam discloses the continuous tow material (2A, 2B, annotated fig. 10) is cellulose acetate ([0061] describes the filter tow strip 2 produced of cellulose acetate).
Regarding claim 9, Gudang Garam, as modified by Zhang, discloses the invention as recited in claim 1.
Gudang Garam discloses the continuous tubular rod is a continuous hollow acetate tube (HAT) ([0053] describes the filter tow strip 2 prior to entering the format device 35 as a hollow cylindrical filter tow wherein [0061] describes the filter tow strip 2 produced of cellulose acetate).
Allowable Subject Matter
Claim 10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Upon examination of the art of record, it has been decided that the art considered as a whole, alone or in combination, neither anticipates nor renders obvious the claimed limitation, “more than one fluid conduit of the plurality of fluid conduits comprises a temperature control unit including a temperature sensor and a temperature influencer.” The closest prior art is Gudang Garam (EP 3 123 777 A1) in view of Zhang (CN 103 340 220 B). Gudang Garam as modified by Zhang discloses a single temperature influencer for all the fluid conduits – not a temperature influencer for each or more than one fluid conduit as required by the claim. The prior art of record does not suggest or make obvious having a temperature influencer for each fluid conduit. Thus, it is examiner’s opinion that it would not have been obvious to one having ordinary skill in the art at the time of the invention to combine or modify the prior art in order to arrive at applicant's invention as claimed.
Response to Arguments
Applicant’s amendments and arguments, with respect to the claim objections of claims 3 and 10 have been fully considered and are persuasive. The claim objections of claims 3 and 10 has been withdrawn.
Applicant’s amendments and arguments, with respect to the rejections of claims 1 – 11 under 35 U.S.C. 112(b) have been fully considered and are persuasive in part.
Regarding the rejection of claim 10 under 35 U.S.C. 112(b) where the limitation, “a plasticizer application device”, invokes 35 U.S.C. 112(f) and the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function, applicant argues:
Claim 10 has been rejected under 35 U.S.C. § 112(b) based on the limitation "a plasticizer application device." The Office Action states that this limitation invokes 35 U.S.C. § 112(f), but alleges that the written description fails to disclose corresponding structure, material, or acts for performing the entire claimed function and to clearly link such structure, material, or acts to the claimed function. See Office Action, page 8. Applicant respectfully traverses the rejection. For purposes of responding to the present rejection, Applicant does not dispute that "a plasticizer application device" may be interpreted under 35 U.S.C. § 112(f). However, the written description discloses a corresponding structure for performing the recited function and clearly links that structure to the function. The recited function is applying plasticizer to the continuous tow material. The corresponding structure is the plasticizer unit described in the application as filed in connection with Figure 5. The application as filed states that "[i]n the embodiment of Fig. 5, the plasticizer unit is part of the preparation unit 7. Plasticizer units are known in the art. The plasticizer unit may also be located upstream of the preparation unit 7. Downstream of the preparation unit 7, the manufacturing line includes a forming apparatus 4, arranged in series to the preparation unit 7." See page 14, lines 18-22. A person of ordinary skill in the art would therefore understand the disclosed plasticizer unit to be a known structure for applying plasticizer to continuous tow material, for example, by spraying or similar known plasticizer application techniques.
In response that a person of ordinary skill in the art would understand the disclosed plasticizer unit to be a known structure for applying plasticizer to continuous tow material, the claim’s scope under § 112(f) is the structure, material, or act described in the specification that performs the claimed function, not to known equivalents in the prior art that are not described in the specification. Thus, applicant’s argument is unpersuasive.
Regarding the rejection of claim 11 under 35 U.S.C. 112(b) where the limitation, “a cutting device”, invokes 35 U.S.C. 112(f) and the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function, applicant argues:
Claim 11 has been rejected under 35 U.S.C. § 112(b) based on the limitation "a cutting device." The Office Action states that this limitation invokes 35 U.S.C. § 112(f), but alleges that the written description fails to disclose corresponding structure, material, or acts for performing the entire claimed function and to clearly link such structure, material, or acts to the claimed function. See Office Action, page 9. Applicant respectfully traverses the rejection. For purposes of responding to the present rejection, Applicant does not dispute that "a cutting device" may be interpreted under 35 U.S.C. § 112(f). However, the written description discloses corresponding structure for performing the recited function and clearly links that structure to the function. The application as filed states that "[t]he main control unit may be used to control further devices of a manufacturing line in a rod forming process, for example a cutting device for cutting the continuous rod into individual segments." See page 8, lines 16-18. This disclosure identifies the cutting device as a structure in the manufacturing line and clearly associates that structure with the claimed function of cutting the continuous tubular rod into individual segments. A person of ordinary skill in the art would understand the disclosed cutting device to be a known structure for cutting a continuous tubular rod into individual segments in a manufacturing line.
In response that a person of ordinary skill in the art would understand the disclosed cutting device to be a known structure for cutting a continuous tubular rod into individual segments in a manufacturing line, the structure’s placement in the manufacturing line does not provide the structure for performing the entire claimed function of “for cutting the continuous tubular rod into individual rod segments.” Additionally, the claim’s scope under § 112(f) is the structure, material, or act described in the specification that performs the claimed function, not to known equivalents in the prior art that are not described in the specification. Thus, applicant’s argument is unpersuasive.
Applicant’s arguments, with respect to the rejection of claims 1 – 9 under 35 U.S.C. 103 have been fully considered and are not persuasive. Applicant argues:
Zhang is Non-Analogous Art
For a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. See MPEP 2141.01(a). A prior art reference is considered analogous if it fits either of two prongs:
1. Is the art from the same field of endeavor, regardless of the problem addressed; or
2. Is the reference reasonably pertinent to the particular problem with which the inventor is
involved. See also Netflix, Inc. v. DivX, LLC, 80 F.4th 1352 (Fed. Cir. 2023).
The recent decision NETFLIX, INC. v. DIVX, LLC , No. 22-1138 (Fed. Cir. 2023) (11 September 2023) holds when a patent or pending application identifies the purpose or advantage of the invention in its claims, it limits the scope of applicable prior art compared to a patent with vague, generic claims. If the cited art addresses a different problem, then the pending application, it is not likely "reasonably pertinent to the particular problem with which the inventor is involved".
Zhang does not satisfy either prong.
Regarding the first prong, Zhang is directed to food processing equipment. See English translation of Zhang, para. [0002]. The pending claims are directed to a method for forming a continuous tubular rod from a continuous tow material. The primary reference Gudang Garam is directed to a method and to a system for processing a strip of filter material for producing paperless filter rods for rod-shaped smoking articles of the tobacco processing industry. See English translation of Gudang Garam, para. [0001]. Clearly, Zhang is not art 'from the same field of endeavor' of either Gudang Garam or the pending claims.
Regarding the second prong, Zhang is not reasonably pertinent to the particular problem with which the inventor is involved. The specification as filed of the present application identifies the problem on page 1 and states that "[w]hile heat treatment with saturated steam provides high and rapid heat transfer to the tow material, it also may create water droplets. Water droplets may negatively affect the material and the rod forming process. It is desirable to have a forming apparatus and a method improving the forming process of a tubular rod. In particular, it is desirable to have better control of the forming process to improve the quality and consistency of formed rods."
Thus, the problem addressed by the present application is not merely temperature measurement or steam control in the abstract. Rather, the problem is improving control of the forming process of a tubular rod made from continuous tow material, including avoiding adverse effects associated with saturated steam and improving the quality and consistency of formed rods. Claim 1 addresses this problem by measuring the temperature of overheated steam in the steam distribution system at a plurality of injection sites to the continuous tubular rod along a forming path of the continuous tow material.
Zhang addresses a different problem in a different technological context. Zhang specifically states:
[0006] In order to solve the shortcomings of the prior art, the present invention designs a baking device, which combines the existing superheated steam technology to enable the heat source to directly act on the heating or baking of food, shortening the baking time and improving the utilization rate of the heat source.
Zhang is directed to a baking device for food and uses superheated steam in a food- baking environment. Zhang's nozzle and temperature-sensor arrangement is not directed to controlling overheated steam delivered to moving tow material along a forming path, nor to improving the quality and consistency of formed tubular rods. A person of ordinary skill seeking to improve control of a continuous tow-material rod-forming process would not logically have looked to a food-baking device for a solution.
The Office Action relies on Zhang for allegedly teaching temperature measurement at injection sites. However, the fact that Zhang includes a temperature sensor associated with a superheated-steam nozzle does not make Zhang reasonably pertinent to the problem addressed by claim 1. The relevant inquiry is not whether Zhang can be characterized at a high level as involving steam and temperature control, but whether Zhang would have commended itself to a person of ordinary skill addressing the particular problem identified in the present application. Because Zhang is directed to food baking rather than continuous tow-material rod formation, Zhang is non-analogous art and is not properly combinable with Gudang Garam to support the rejection of claim 1. Thus, the reference is not reasonably pertinent to the particular problem with which the inventor is involved.
Regarding applicant’s argument that Zhang is not analogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Zhang is reasonably pertinent to the particular problem with which the inventor was concerned. Page 2 of applicant’s specification describes a temperature control unit to ensure a constant temperature of overheated steam delivered from the overheated steam generator to a tow material wherein the inventor is concerned with precise measurement of temperature of the steam acting on the tow material and regulation of that temperature.
The temperature control unit may be arranged in the forming apparatus between the steam generator and the tow material in the tubular element. Preferably, the temperature control unit, in particular a temperature sensor, is arranged close to the position where the tow material is treated with overheated steam. This advantageously allows to very precisely measure the temperature of the steam acting on the tow material. With a temperature influencer present close to the injection site of the overheated steam, temperature differences of the overheated steam at the injection site to a desired temperature of steam that shall be acting on the tow material may be set or adjusted by the temperature influencer. The temperature influencer may be used, for example, to make up for temperature losses of the overheated steam delivered from the generator to the tow material [Applicant’s Specification – Pg.2]
Zhang teaches a temperature control unit to ensure a constant temperature overheated steam delivered from the overheated steam generator to a food product. Thus, in the same way, Zhang is concerned with the precise measurement of temperature of the steam acting on a product and the regulation of that temperature. Thus, Zhang is pertinent to the particular problem of temperature measurement and regulation with which the inventor was concerned.
Applicant’s strawman argument recites one concern of the inventor of “improving control of the forming process of a tubular rod made from continuous tow material” and then attacks Zhang for having nothing to do with improving control of the forming process of a tubular rod since Zhang is not in the same field of endeavor. However, as shown above, the inventor had other concerns too – such as the particular problem of temperature measurement and regulation with which Zhang addresses. The fact that Zhang is directed towards a different field of endeavor is irrelevant. Zhang is pertinent to the particular problem of temperature measurement and regulation with which the inventor was concerned.
Please note, since the applicant’s specification specifically describes a concern with the precise measurement of the temperature of the steam acting on the tow material and regulation of that temperature, arguments concerning NETFLIX, INC. v. DIVX, LLC , No. 22-1138 (Fed. Cir. 2023) (11 September 2023) are inapposite.
Therefore, in light of the above response, the applicant’s arguments that Zhang is not analogous art are not persuasive.
Applicant further argues:
The Proposed Combination Relies on Hindsight and Lacks an Adequate Motivation to Combine
Even if Zhang were considered analogous art (which Applicant disagrees with), the Office Action has not provided an adequate reason why a person of ordinary skill in the art would have modified Gudang Garam using Zhang's nozzle and temperature-sensor arrangement.
The Office Action cites Gudang Garam as teaching "a method for forming a continuous tubular rod from a continuous tow material," and "heating the continuous tow material during forming by providing overheated steam from a steam generator (43, fig. 10. [0058]) via a steam distribution system (39, fig. 2 and 35, 40, 41, fig. 10) to the continuous tubular rod". See Office Action, page 12. The Office Action further acknowledges that "Gudang Garam does not explicitly disclose measuring the temperature of the overheated steam in the steam distribution system at the several injection sites of the overheated steam to the continuous tubular rod along a forming path of the continuous tow material." See Office Action, page 13. The Office Action then cites Zhang and states that the proposed modification would "ensure precise temperature and pressure control in the formation of the continuous tubular rod of tow material." See Office Action, page 14. Applicant respectfully submits that this stated rationale is insufficient. The stated motivation is a generalized objective rather than a specific reason to combine the cited teachings in the manner proposed.
Gudang Garam is directed to a method and to a system for processing a strip of filter material for producing paperless filter rods for rod-shaped smoking articles of the tobacco processing industry. Specifically, Gudang Garam describes that the filter rod "is usually made of cellulose acetate", and the cellulose acetate "has been processed into a bundle of continuous filaments." See English translation of Gudang Garam, paras. [0002]-[0003], emphasis added. Gudang Garam further describes that "in the method ... for producing paperless filter rods for stick-shaped smoking articles of the tobacco processing industry, a filter tow strip, drawn from a supply and spread out, is stretched along a conveying line, a plasticizer, preferably triacetin, which dissolves the filter material, is applied to the filter tow strip, the filter tow strip is then gathered and formed (bundled) in a transport nozzle, and dry steam, preferably dry water vapor, is blown into the formed filter tow strip." See English translation of Gudang Garam, para. [0011], emphasis added.
Zhang is directed to a baking device for food, and its nozzles and temperature sensors are used in that food-baking environment. Regarding the nozzles 8, Zhang describes:
[0031] The nozzle 8, as shown in FIG2, is arranged on the wall of the concave cavity, and the direction of the nozzle faces the grill 7. Each grill layer corresponds to a group of nozzles, and each group of nozzles is distributed on the wall of the concave cavity at a certain interval, as shown in FIG3;
[0033] The superheated steam generated by the superheated steam generator enters the concave cavity through the first air inlet pipe and then the superheated steam in the concave cavity is sprayed onto the food 14 on the grill through the nozzle.
Regarding the air inlet temperature sensor 11, Zhang describes:
[0034] The control system 10 has an air intake temperature sensor 11 disposed at the nozzle and a material temperature sensor 12 disposed on the grill. The pressure sensor 5, the pressure reducing valve 6, the air intake temperature sensor 11, and the material temperature sensor 12 are all electrically connected to the control system.
[0035] A temperature sensor is designed at the nozzle to monitor the temperature of the heat medium transmitted from the outside. The nozzle will only open when the set temperature is reached, and the temperature control is precise. Since the size of the nozzle and the spray range can be customized according to the actual size of the material and the baking requirements, it can be ensured that the material is completely within the spray range of the hot medium during baking and the material is heated evenly.
The Office Action does not explain why a person of ordinary skill, starting from Gudang Garam's tobacco-industry filter-tow process, would have looked to Zhang's food-baking device to modify Gudang Garam's injection channels/blow-in ducts 39. Gudang Garam already concerns applying plasticizer to a cellulose acetate filter tow strip, gathering and forming the tow in a transport nozzle, and blowing dry steam into the formed filter tow strip to produce paperless filter rods for rod-shaped smoking articles. Zhang, by contrast, uses nozzles and temperature sensors in a food-baking environment. The mere fact that Zhang discloses a temperature sensor associated with a superheated-steam nozzle does not provide an articulated reason with rational underpinning to incorporate Zhang's food-baking nozzle/sensor arrangement into Gudang Garam's continuous tow-forming apparatus.
Furthermore, the Office Action appears to use the Applicant's own disclosure as a roadmap. The present application identifies the desirability of better control of the forming process to improve the quality and consistency of formed rods. The Office Action's rationale mirrors that objective, but does not identify a teaching or suggestion in Gudang Garam or Zhang that would have led a person of ordinary skill to the specific proposed modification.
Therefore, Applicant respectfully submits that even if Zhang were considered analogous art, the Office Action has not established a sufficient motivation to combine Zhang with Gudang.
Regarding applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation of “ensur[ing] precise temperature and pressure control in the formation of the continuous tubular rod of tow material” was given in the Office action filed 6 April 2026 (Pg. 13 – 14, para. 28). Please note, [0056] of Gudang Garam describes superheated steam fed into a distribution pipe 41 at a specific temperature and pressure range; however, Gudang Garam does not describe a method or system to regulate or ensure that this superheated steam is fed into a distribution pipe 41 at this specific temperature and pressure range. Thus, one having ordinary skill in the art would have been motivated to look to the teachings of Zhang for this method or system.
Regarding applicant’s argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Therefore, in light of the above response, the applicant’s arguments that there is no teaching, suggestion, or motivation to combine the references and that the examiner's conclusion of obviousness is based upon improper hindsight reasoning are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID G SHUTTY whose telephone number is (571)272-3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday - Friday.
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/DAVID G SHUTTY/Examiner, Art Unit 3731
14 July 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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