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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 28, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 6-10, 12-13, 15-20 and 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant has amended independent claim 1 to now recite “the shell of the one or more crushable capsules does not comprise a hydrophobic outer surface”; however, Applicant does not appear to have support in the written description for this amended recitation. Applicant submits, in its “Remarks” filed on April 3, 2026, that paragraph [0058] of the instant published application discloses that “[t]he capsule shell may additionally comprise a hydrophobic outer layer”. Applicant further submits that the MPEP provides support for instances where if alternative elements are positively recited, they may be specifically excluded from the claim and, as such, asserts that the claim which recites excluding a hydrophobic outer surface is fully supported. The Examiner disagrees, and argues that the instant written specification may support an embodiment wherein the shell of the one or more capsules does not comprise a hydrophobic outer layer, but it does not support that said shell does not comprise a hydrophobic outer surface because there is a difference in the definition of these two phrases. A “hydrophobic outer layer”, as disclosed in the instant written specification, implies the presence of a distinct, added material (a film or coating) on top of the shell surface; whereas, a “hydrophobic outer surface” describes the resulting property of the capsule, which could be achieved through a coating or outer layer, but not necessarily so because chemical modification or surface treatment could also cause the resulting property. In other words, a hydrophobic outer layer as is inferred in the instant specification - and the manner in which the Examiner is interpreting the phrase - is construed as being a distinct thickness of water-repellant material (e.g., polymers, waxes) applied over the capsule shell to create a barrier. A hydrophobic outer surface, which the Examiner believes is unsupported by the instant specification, is a descriptor of the outermost boundary of the capsule that repels water, focusing on the interface characteristic rather than a distinct added layer. Applicant is requested to amend the claim recitation at issue accordingly.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 6-10, 12-13 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Crooks et al (US Pat App Pub 2005/0066980) in view of Guyard et al (US. Pat. App. Pub. 2019/0297937).
Regarding independent claim 1, and dependent claims 6-7, Crooks et al discloses a filtered cigarette (10) which includes a tobacco rod having a tobacco blend (read: aerosol generating medium) in the form of a generally cylindrical tobacco rod (12) which includes an aerosol forming material (read: aerosol generating agent) in an amount that can be greater than 10%, and a mouth end section in the form of a generally cylindrical filter (20). Crooks et al discloses that a preferred aerosol forming material produces a visible aerosol upon the application of sufficient heat thereto, and a highly preferred aerosol forming material produces an aerosol that can be considered to be “smoke-like” (see paras. [0047]-[0048],abstract and Figs) (corresponding to the claimed “[a] heat-not-burn article for use by a user, comprising: an aerosol generating medium that is heated without being combusted during use and comprises at least 10% by weight of an aerosol generating agent based on the total weight of the aerosol generating medium”; the “wherein the aerosol generating medium comprises a tobacco material” recitation of claim 6; and the “wherein the aerosol generating medium comprises an aerosol generating agent and a tobacco material, and wherein the aerosol generating agent and the tobacco material are provided in one of: a same portion of the aerosol generating medium or in a separate section of the aerosol generating medium” recitation of claim 7).
The generally cylindrical filter (20) has disposed within it a breakable capsule (54) (corresponding to the claimed “one or more crushable capsules”) which includes a liquid payload (such as a menthol flavoring agent) and a shell surrounding the same. There is no indication that the capsule (54) has a hydrophobic outer surface, so it can be rightly presumed that the outer surface does not exhibit such property (see para. [0073], abstract) (corresponding to the claimed “a filter containing one or more crushable capsules having a core-shell structure, the core consisting of a liquid and the shell encapsulating the core…wherein the shell of the one or more crushable capsules does not comprises a hydrophobic outer surface”).
It follows to reason that during smoking, the capsule (54) of Crooks et al would be exposed to a vapor temperature of 30-100oC, and yet Crooks et al discloses that the rupture of the capsule (54) can be discerned by an audible pop, snap or rapid decrease (read: click sensation; audible feedback) in the resistance to the pressure applied by the smoker which may occur before, during or after smoking (see paras. [0073]). This is a clear indication that the Crooks et al capsule has a “heat capacity, a melting point or a glass transition temperature such that a structural integrity of the shell is not compromised when, in use the one or more crushable capsules is exposed to a temperature of 30-100oC, so that the shell remains frangible and the one or more crushable capsules can be crushed by the user before, during or after heating with a click sensation providing tactile feedback to the user that crushing has been effected”.
Lastly, while Crooks et al discloses that its capsule (54) preferably comprises a gelatin shell (see paras. [0014],[0075]), it is noted that this selection of material for the capsule shell is a preference, not a requirement. Further, Crooks et al states that gelatin has a tendency to dissolve in water over an extended period of time (see para. [0076]). Guyard, however, serves as a teaching that substances other than gelatin, such as carrageenan, can be used as shell material for a capsule located in the filter of a cigarette and intended to be crushed by a user and which emits an audible sound upon rupture (see abstract and para. [0016]). Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have fabricated the capsule shell of a material other than gelatin in order to preserve the structural integrity of the capsule over long periods of time even after exposure to moisture (corresponding to the claimed “wherein the capsule shell does not comprise gelatin”).
Regarding claim 2, Crooks et al does not disclose that the shell of its capsule (54) “has a water uptake such that the structural integrity of the shell is not compromised on exposure to 12 mg of water”; however, Guyard et al does disclose that its breakable capsule (120) absorbs less water which decreases the likelihood of premature or inadvertent breakage (i.e., keeps a certain crush strength) in an atmosphere of greater than 70% relative humidity (see para. [0012]). Hence, this disclosure would have motivated one with ordinary skill in the art as of the effective filing date of the claimed invention to have fabricated the capsule shell of Crooks et al with material that would preserve its integrity upon exposure to moisture during use of the aerosol-generating article and simple routine experimentation would have resulted in the fabrication of such a capsule of optimal water resistance being able to uptake at least 12 mg of water and still retain its crush strength (corresponding to the claimed “wherein the shell material has a water uptake such that the structural integrity of the shell is not compromised on exposure to 12 mg of water”).
Regarding claims 3 and 17, Crooks et al discloses that its capsule payload may contain a flavoring agent (see para. [0077]-[0078]), and Guyard et al discloses that its capsule shell may include a carrageenan (read: gelling agent) in the amount of from about 1.5% w/w to 100% (see para. [0016]). It would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have incorporated both of these elements in the capsule of the filter of the modified Crooks et al cigarette (corresponding to the “wherein the shell comprises 5-90% by weight based on a total capsule shell weight of a gelling agent, wherein the gelling agent comprises carrageenan” recitation of claim 3 and the “wherein the core of the one or more crushable capsules comprises a flavorant” recitation of claim 17).
Regarding claims 8-9, Crooks et al discloses that the size of its breakable capsule (54) can range from 1-6mm (see para. [0074]). Based on this disclosure, one of ordinary skill in the art would have been able to envision a filter segment (20) having no greater than 30% of its interior space occupied by the capsule (54), and the remaining portion/space (70-95%) of the filter occupied by filter material, such as the disclosed cellulose acetate, by merely undergoing routine experimentation to arrive on optimal filter sorption as well as flavor profile (corresponding to the “wherein the one or more capsules fill about 5-30% v/v of the filter” recitation of claim 8; and the “wherein the filter comprises 70-95% v/v of a filter material” recitation of claim 9).
Regarding claim 10, the filter (20) of Crooks et al may be constructed of cellulose acetate tow (see para. [0009]) and, as such, it is clear that it would have been able to withstand temps of at least about 150oC under normal smoking conditions, i.e., when the tobacco material is combusted and, therefore, meets the claimed “average melting point of at least about 150oC”.
Regarding claim 12, Crooks et al discloses that its mouth end section may be defined by the extent of a plug wrap (see para. [0030]) (corresponding to the claimed “wherein a wrapper circumscribes the filter”).
Regarding claim 13, Guyard et al further discloses that the substance forming the outer shell of its capsule can be more than one, this suggests that along with carrageenan, other polymers can be combined with it, which would lessen the weight percent of the carrageenan. It would have been obvious to one of ordinary skill in the art to have undergone routine experimentation and arrived at the claimed range for the carrageenan (mixed along with other polymers) after determining that this concentration of the carrageenan provided for optimal shell construction (corresponding to the claimed “wherein the shell of the one or more crushable capsules comprises 5-60% by weight based on the total capsule shell weight of carrageenan as the gelling agent”).
Regarding claim 15, Crooks et al does not state that its capsule shell “additionally comprises at least one of a plasticizer or a carbohydrate”; however, Guyard et al discloses that the shell of its capsule (120) includes a plasticizer. It further discloses that a starch derivative (read: carbohydrate) can be included in the shell (see para. [0017]). Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have included this substance in the shell of the modified Crooks et al capsule as such is known in capsules intended to be ruptured upon manual compression (corresponding to the claimed “wherein the shell of the one or more crushable capsules additionally comprises…a plasticizer...”).
Regarding claim 16, while Crooks et al is silent on the matter, Guyard et al states that its capsule (54) - which can be compressed before or during smoking - provides release of flavor over a range of force from about 0.01 kp to about 5 kp (see paras. [0039],[0080]). As such, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have incorporated this property into the modified capsule (54) of Crooks et al in order to ensure an audible sound when the capsule is ruptured (corresponding to the claimed “wherein the one or more crushable capsules have a crush strength, before heating is initiated, of from about 0.8 kp to about 3.5 kp”).
Claims 18-20 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Crooks et al (US Pat App Pub 2005/0066980) in view of Guyard et al (US. Pat. App. Pub. 2019/0297937), further in view of WO 2009/022232 (hereinafter referred to as Maeder et al).
Regarding independent claim 18, and dependent claim 20, as stated above, the modified Crooks et al cigarette shows all that is recited in independent claim 1. Further, it also discloses that its cigarette (read: heat-not-burn article) can produce an aerosol by the application of sufficient heat (read: heat source/heater) to the aerosol forming material (read: aerosol generating medium) (see para. [0048]). Crooks et al does not indicate that this “heat source” and its “filtered cigarette” form a combined “heat-not-burn assembly”; however, Maeder et al discloses a cigarette-like smoking article (2) (read: heat-not-burn assembly) which includes a combustible heat source (4) (read: heater/combustible fuel source) and an aerosol-generating substrate (6) which are overwrapped in an outer wrapper of cigarette paper (12). The result is a heated smoking article in which substantially no combustion or pyrolysis of the aerosol generating means occurs (see Fig. 2 and page 17) Hence, it would have been obvious to one of ordinary skill in the art to have provided the modified Crooks et al cigarette with a combustible heat source incorporated therein and at a distal (upstream) end thereof - in abutting coaxial alignment which the other elements of the modified cigarette - as such is already know in the art, from the Maeder et al reference, and in order to more efficiently operate the article (corresponding to the claimed "[a] heat-not-burn article according to claim 1 and a heater"; and the “wherein the heater comprises a combustible fuel source which is arranged such that, on ignition, the combustible fuel source heats but does not burn the aerosol generating medium of the heat-not-burn article” recitation of claim 20).
Regarding claim 19, given that the heat source (4) would be provided at a distal (upstream) end of the article, and the flavor-capsule-containing filter (30) is provided at an opposite (downstream) end of the article, there would be an inherent distance of at least 25 mm between the capsule (35) and the heat source (4), as typical smoking articles are at least 3-4 times this in length (corresponding to the claimed “wherein the one or more crushable capsules are disposed at least about 25 mm from the heater”).
Regarding claim 24, similar to above, the recitation indicating that the instantly claimed heat-not-burn assembly is “configured to expose the aerosol generating medium to at least 200oC for at least 50% of a heating period” reflects the manner in which the claimed heat-not-burn assembly is intended be operated, and such recitation does not confer any additional structural limitations to the heat-not-burn article. Applicant is reminded that the instant article claims are to be defined from the prior art by its “structure” and not “function”. As such, the recitation of claim 24 is inherently met by the modified Crooks et al invention. However, it is noted that since the tobacco rod (12) of the modified Crooks et al cigarette is intended to be heated, i.e., generating temperatures shy of combustion, it is clear that the tobacco (read: aerosol generating medium) would have been exposed to temps in excess of 200oC, for at least half of the heating period, under normal “smoking” conditions (corresponding to the claimed “configured to expose the aerosol generating medium to at least 2000C for at least 50% of a heating period”).
Response to Arguments
Applicant’s arguments, filed on April 28, 2026, with respect to the claims have been considered but are moot in view of the new grounds for rejection, presented above, which were necessitated because of the amendments made to the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DIONNE W. MAYES/Primary Examiner, Art Unit 1747
Prosecution Insights