DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 13, are pending. Claims 13 and 29-30 have been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 5/28/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 5/28/2026 have been fully considered but they are not persuasive.
Applicant argues (Remarks, Page 6) that “Besso does not disclose or suggest that the flavor granules have a cooling function” and that the purpose of Besso’s coating is different from the intended purpose of the Applicant. This argument is not persuasive as “[a] claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim” (MPEP § 2114(II)). As the combination of Besso, Karles, Shi, and Sato renders obvious all of the structural limitations of amended claim 13, the claim is obvious over the prior art.
Applicant further argues (Remarks, Pages 6-7) that:
“Besso does not disclose (i) ‘a phase change material for endothermic cooling’. In particular, the coating in Besso serves an entirely different purpose than the claimed shell of the present application. In the present application, selecting a proper phase change material for the shell guarantees an excellent active cooling effect while maintaining a proper coating function, thereby significantly improving the overall thermal management performance of the cooling filter rod (see Applicant's specification, para [0008]-[0009]). In contrast, as described above, Besso's coating is designed merely to suppress the premature migration and volatilization of volatile flavorants prior to smoking (see Besso, para [0051]).”
This argument is not persuasive as “[a] claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim” (MPEP § 2114(II)). As the combination of Besso, Karles, Shi, and Sato renders obvious all of the structural limitations of amended claim 13, the claim is obvious over the prior art. Specifically, Karles discloses forming cooling particles (“capsule 350”, Fig. 3B, ¶ 0059, comprising “sensates”, ¶ 0037, 0059, which have a “sensation of cooling”, ¶ 0040) with a shell containing phase change material (“wax” such as “parrafin wax”, ¶ 0060), and Shi discloses using stearic acid which is one of the claimed options for the phase change material (“the encapsulating material is a waxy thermomeltable materal . . . . suitable materials include . . . paraffin wax . . . stearic acid”, ¶ 0042). As the combination of Besso, Karles, Shi, and Sato discloses cooling particles with the same diameter and having a shell of the same relative mass and formed of the same material as Applicant’s cooling particle, one having ordinary skill in the art would expect it to have the same property. “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent” (MPEP § 2112.01(I)).
Applicant further argues (Remarks, Page 7) that “Besso does not disclose (ii) ‘wherein the shell further comprises a flavor enhancer uniformly mixed with the phase change material, and the flavor enhancer comprises a flavor and/or a tobacco extract; wherein the flavor is selected from menthone, coffee flavor and a mixture thereof, wherein a mass ratio of the phase change material to the flavor enhancer is 100: (0.5-10)’.” This argument is not persuasive as Besso is not relied upon for disclosing the entirety of this limitation. In response to Applicant arguing against references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Karles teaches forming the shell such that a flavor enhancer (“flavorant”, ¶ 0056) comprising menthone (“Suitable flavorants . . . include . . . peppermint”, ¶ 0039; menthone is a constituent of peppermint) is uniformly mixed with the phase change material (“various components suitable for incorporation into the core component can be suitable for incorporation into a coating layer (e.g., flavorants”, ¶ 0056), and it would have been obvious to combine this teaching with Karles as Karles discloses that this configuration protects the particle body (¶ 0059).
Applicant further argues (Remarks, Pages 7-8) that “Besso does not disclose or suggest ‘a phase change material for endothermic cooling’, or ‘a flavor enhancer uniformly mixed with the phase change material’.” This argument is not persuasive as Besso is not relied upon for disclosing the entirety of this limitation (as discussed above). In response to Applicant arguing against references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues (Remarks, Page 8) that “Besso does not disclose (iii) ‘wherein the cooling particles have a diameter of 10 to 50 meshes; and wherein an effective porosity inside the cooling filter rod is 65-95%.’” This argument is not persuasive as Besso is not relied upon for disclosing the entirety of this limitation. In response to Applicant arguing against references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Besso discloses forming the particles to have a diameter within the range of 10 to 50 meshes (“The average diameter of the flavour granules is . . . more preferably between about 0.3 mm and about 1.0 mm”, ¶ 0050, where 0.3 mm corresponds to 50 mesh and 1.0 mm corresponds to 18 mesh), and Sato teaches filters with an effective porosity of 79% (Example 24, Col. 11, lines 11-12). It would have been obvious to incorporate the effective porosity of Sato as Sato teaches it allows for the filters to have good breathability (Example 24, Col. 11, lines 14-15).
Applicant further alleges (Remarks, Page 8) that the range of the mass of the shell accounting for 0.5-30% of a total mass of the cooling particle is “a critical range”. Applicant’s support for this allegation is “If the ratio is below 0.5%, the shell is too thin and will prematurely melt upon the initial impact of high-temperature smoke”. Applicant additionally alleges (Remarks, Page 8) that “If the shell exceeds 30%, the thermal energy from the smoke cannot penetrate and melt the entire phase change material matrix rapidly enough”. Applicant additionally alleges (Remarks, Page 8) that “A shell ratio above 30% causes excessive particle volume or inter-particle adhesion, blocking the ‘effective pores.’”. Applicant’s arguments are not persuasive as they are allegations for which Applicant has not provided evidence, and Arguments by Applicant cannot take the place of evidence in the record (MPEP § 716.01(c)(II)). Further, "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support" (MPEP § 716.02(d)).
Applicant further argues (Remarks, Page 10) that “Shi does not disclose or suggest that Stearic Acid can be a phase change material in a cooling particle.” This argument is not persuasive as a composition that already exists in the prior art cannot be made patentable by discovering a previously unappreciated property (MPEP § 2112(I)).
Applicant further argues (Remarks, Page 10) that “Shi treats all listed materials as equally interchangeable alternatives” and “Shi provides absolutely no guidance or indication as to which materials can effectively function as an active phase change material to absorb latent heat and reduce the filter rod outlet temperature”. This argument is not persuasive as Shi is not required to disclose this specific intended use, as it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant (MPEP § 2144(IV)).
Applicant further argues (Remarks, Page 11) that choosing stearic acid amounts to impermissible hindsight. This argument is not persuasive as “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” (MPEP § 2145(X)(A)).
Applicant further argues (Remarks, Page 11) that “The specific mass ratio of 100: (0.5-10) is not an arbitrary optimization, but a critical range”. This argument is not persuasive as criticality has not been established by evidence in the record, and Arguments by Applicant cannot take the place of evidence in the record (MPEP § 716.01(c)(II)). Further, Besso teaches optimizing the flavor profile and release of flavors included within the cooling particle (¶ 0011).
Applicant further argues (Remarks, Page 12) that “Besso prefers a particle size of 65 to 300 μm” which is “significantly smaller than the 10 to 50 mesh range”. This argument is not persuasive as Besso teaches that the cooling particles have a diameter of 18 to 50 mesh (“The average diameter of the flavour granules is . . . more preferably between about 0.3 mm and about 1.0 mm”, ¶ 0050).
Applicant further argues (Remarks, Page 12) that “Besso does not teach controlling particle morphology and size to achieve an exceptionally high effective porosity of 65-95%”. This argument is not persuasive as Besso is not relied upon for disclosing the entirety of this limitation. In response to Applicant arguing against references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues (Remarks, Page 12) that none of the prior art references provide “any teaching regarding the influence of the particle coating ratio on the cooling effect.” This argument is not persuasive as Applicant has not established in the record that particle coating ratio is critical to the cooling effect.
Applicant further argues (Remarks, Page 13) that “The technical solution of the present application achieves remarkable and unexpected technical results”. This argument is not persuasive as it is an allegation not established by evidence in the record. “Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results” (MPEP § 716.01(c)(II)).
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 13, 17-18, 31-32, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Besso et al. (US 2013/0206151 A1) in view of Karles et al. (US 2011/0104218 A1), Shi (US 2005/0000531 A1), and Sato et al. (US 3,856,025).
Regarding claim 13, Besso teaches a cooling filter rod (“filter 4” of “filter cigarette 30”, Fig. 3, ¶ 0108) formed by cooling particles (“flavour granules” in “flavour release segment 24”, Fig. 3, ¶ 0108, comprising “particles of peppermint leaf and menthol”, ¶ 0043, which have a cooling effect), wherein:
a cooling particle of the cooling particles comprises a particle body (particle body of the “flavour granules” formed of an agglomerate of materials, ¶ 0010) and a shell coated on the particle body (“the flavour granules may further comprise a coating”, ¶ 0051),
the cooling particles are stacked to form a loose and porous structure (“flavour release segment 24 comprises a cavity containing a plurality of flavour granules”, Fig. 3, ¶ 0108),
the particle body comprises plant fiber powder (“The flavour granules may comprise particles formed from any suitable part of a plant, including but not limited to the leaves, stem, root, flower and fruit.”, ¶ 0032), and
the cooling particles have a diameter of 18 to 50 mesh (“The average diameter of the flavour granules is . . . more preferably between about 0.3 mm and about 1.0 mm”, ¶ 0050, where 0.3 mm corresponds to 50 mesh and 1.0 mm corresponds to 18 mesh). The range 18 to 50 mesh falls within the claimed range of 10 to 50 mesh (MPEP § 2131.03).
Besso also teaches that the cooling particle comprises a flavor enhancer that comprises a flavor (¶ 0004). However, Besso does not explicitly disclose wherein the shell contains a phase change material; wherein the shell further comprises a flavor enhancer uniformly mixed with the phase change material, and the flavor enhancer comprises a flavor; wherein the flavor is menthone.
Karles, in the same field of endeavor, teaches a cooling filter rod (“filter”, ¶ 0070) formed by cooling particles (“capsule 350”, Fig. 3B, ¶ 0059, comprising “sensates”, ¶ 0037, 0059, which have a “sensation of cooling”, ¶ 0040), wherein a cooling particle of the cooling particles comprises a particle body (particle body formed from “core 360” and “shell 370”, Fig. 3B, ¶ 0059) and a shell (“single coating layer 380”, Fig. 3B, ¶ 0059) coated on the particle body (“a single coating layer comprising a wax that completely envelops the exterior surface of the . . . shell”, Fig. 3B, ¶ 0059), and the shell contains a phase change material (“wax” such as “parrafin wax”, ¶ 0060). Karles also teaches that the shell further comprises a flavor enhancer (“flavorant”, ¶ 0056) uniformly mixed with the phase change material (“various components suitable for incorporation into the core component can be suitable for incorporation into a coating layer (e.g., flavorants”, ¶ 0056), and the flavor enhancer comprises a flavor that is menthone (“Suitable flavorants . . . include . . . peppermint”, ¶ 0039; menthone is a constituent of peppermint 1). Karles further teaches a benefit of coating the particle body with such a coating in that it protects the particle body (¶ 0059). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the particles taught by Besso to have the shell taught by Karles in order to obtain this benefit.
Karles does not explicitly disclose wherein the mass of the shell accounts for 0.5-30% of the total mass of the cooling particle. However, Karles teaches using the shell to protect and completely envelop the exterior surface of the particle body (¶ 0059). The efficacy of the shell for this result depends on the mass of the shell relative to the mass of the cooling particle. Too little mass of shell would be insufficient to protect and completely envelop the exterior surface of the particle body, and too much mass of shell would leave too little room for the components enveloped within the shell relative to the overall size of the cooling particle. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the mass of the shell relative to the mass of the cooling particle such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Karles does not disclose that the phase change material is stearic acid. Instead, Karles teaches that the phase change material is parrafin wax (“parrafin wax”, ¶ 0060).
Shi, in the same field of endeavor, teaches a cooling filter rod (“filter”, ¶ 0086) formed by cooling particles (“microcapsules”, ¶ 0024, comprising “menthol”, ¶ 0024, which has a cooling effect, ¶ 0004), wherein a cooling particle of the cooling particles comprises a particle body (particle body of “microcapsules”, ¶ 0024) and a shell (“shell”, ¶ 0024) coated on the particle body, and the shell contains a phase change material that can be either paraffin wax or stearic acid (“the encapsulating material is a waxy thermomeltable materal . . . . suitable materials include . . . paraffin wax . . . stearic acid”, ¶ 0042). Shi teaches that both paraffin wax and stearic acid are suitable materials for the function of a waxy thermomeltable material for encapsulation, as they both have suitable melting points, melt into liquid form having low viscosity upon heating, and set again to a crystalline solid state upon cooling (¶ 0042). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have substituted stearic acid in place of the paraffin wax phase change material, as Shi teaches this interchangeability between the two materials, and the results of the substitution would have been predictable (see MPEP § 2143(I)(B)).
Further regarding the particles being cooling particles, Shi discloses that the particles may have a shell layer of stearic acid, as discussed above. Stearic acid is disclosed by the instant specification to be a phase change material that produces a cooling effect (page 2, lines 28-34). Therefore, given that the stearic acid disclosed by Shi is the same as that disclosed by the applicant, the particles taught by Besso, in view of Karles and Shi, are expected inherently to be cooling particles. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP § 2112.01(I)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); MPEP § 2112.01(I)).
With regard to the shell containing a phase change material “for endothermic cooling”, the purpose of using phase change material for endothermic cooling relates to the intended use of the apparatus and “[a] claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim” (MPEP § 2114(II)). As the combination of Besso, Karles, and Shi uses phase change material, and Applicant discloses that phase change material provides endothermic cooling, all of the structural limitations are satisfied.
Besso, in view of Karles and Shi, does not explicitly disclose wherein a mass ratio of the phase change material to the flavor enhancer is 100: (0.5-10). However, Besso teaches optimizing the flavor profile and release of flavors included within the cooling particle (¶ 0011). The efficacy of the flavor enhancer for this result depends on the mass ratio of the phase change material to the flavor enhancer. If the ratio is too large, the potency of the flavor enhancer may be too weak, not providing the desired flavor profile or flavor release. If the ratio is too small, the potency of the flavor enhancer may be too strong, not providing the desired flavor profile or flavor release. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the mass ratio of the phase change material to the flavor enhancer such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Besso does not explicitly disclose whether or not the cooling filter rod has an effective porosity of 65-95%. Sato, in the same field of tobacco filters with particles, teaches filters with an effective porosity of 79% (Example 24, Col. 11, lines 11-12). Sato teaches a benefit of filters with this effective porosity as they demonstrate good breathability (Example 24, Col. 11, lines 14-15). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the cooling filter rod with the effective porosity taught by Sato, which falls within the claimed range (MPEP § 2131.03).
Regarding claim 17, Besso, in view of Karles, Shi, and Sato, teaches the cooling filter rod according to claim 13, as stated above. Besso also teaches that
the plant fiber powder comprises tobacco powder (“The flavour granules may include particles of any plant material that is capable of releasing flavour into smoke produced by a smoking article. Preferably, the plant material is non-tobacco plant material, so that the flavour granules enrich the smoke with non-tobacco flavour.”, ¶ 0032, implicitly indicating that particles of tobacco plant material can be included to impart tobacco flavor, (compare to In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976), MPEP § 2144.01)),
the particle body comprises an inorganic material powder that comprises carbon powder (“activated carbon”, ¶ 0018), and
the particle body comprises an auxiliary molding material that comprises a binder (“binder”, ¶ 0044).
Regarding claim 18, Besso, in view of Karles, Shi, and Sato, teaches the cooling filter rod according to claim 13, as stated above. Besso further teaches wherein the particle body comprises a mixture of
base powder (“porous support material” with “liquid flavourant”, ¶ 0012),
hot melt adhesive powder (“polyvinylacetate”, ¶ 0045, 0047)2,
excipients (“microcrystalline cellulose”, ¶ 0045, 0047), and
water (“water”, ¶ 0046-0047), and
wherein the base powder comprises plant materials that comprise aromatic plants (“liquid flavourant” includes “coffee” and “clove”, ¶ 0026).
With regards to obtaining the particle body by thoroughly mixing, granulating, drying, and sieving, these limitations refer to the specific process used to make the product. Therefore, as Besso teaches the product resulting from these process steps, the claim is unpatentable. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); MPEP § 2113(I)).
Regarding claim 31, Besso, in view of Karles, Shi, and Sato, teaches a method of making a cigarette comprising using the cooling filter rod according to claim 13 (Besso ¶ 0007).
Regarding claim 32, Besso, in view of Karles, Shi, and Sato, teaches a cigarette comprising a cooling filter rod according to claim 13 (Besso ¶ 0007, “filter cigarette”).
Regarding claim 34, Besso, in view of Karles, Shi, and Sato, teaches the cooling filter rod according to claim 13, as stated above. Besso further teaches wherein the particle body comprises a mixture of
base powder (“porous support material” with “liquid flavourant”, ¶ 0012),
hot melt adhesive powder (polyvinylacetate, ¶ 0045, 0047)2,
excipients (microcrystalline cellulose, ¶ 0045, 0047), and
water (water, ¶ 0046-0047), and
wherein the base powder comprises inorganic materials that comprise carbon powder (“porous support material” includes activated carbon, ¶ 0018).
With regards to obtaining the particle body by thoroughly mixing, granulating, drying, and sieving, these limitations refer to the specific process used to make the product. Therefore, as Besso teaches the product resulting from these process steps, the claim is unpatentable. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); MPEP § 2113(I)).
Claims 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Besso et al. (US 2013/0206151 A1) in view of Karles et al. (US 2011/0104218 A1), Shi (US 2005/0000531 A1), and Sato et al. (US 3,856,025) as applied to claim 19 above, and further in view of Ogasa et al. (US 4,038,922).
Regarding claim 29, Besso, in view of Karles, Shi, and Sato, teaches the cooling filter rod according to claim 13, as stated above. Besso further teaches using the cooling particles for heat-not-burn cigarettes (“smoking articles in which material is heated to form an aerosol, rather than combusted”, ¶ 0008) and that the cooling particles are spherical or approximately spherical (“preferably substantially . . . spherical”, ¶ 0050).
However, Besso does not explicitly disclose whether or not the cooling particles have a bulk density of 0.8 to 2.5 g/ml. Ogasa, in the same field of particles for tobacco filters, teaches particles with a bulk density of 0.8 g/ml (Col. 4, Table 2, filter No. 8 with bulk density 0.76 g/cm3). Ogasa discloses a benefit of particles with this bulk density as they demonstrate increased rate of removal of certain carcinogens from smoke (Col. 5, lines 1-6). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the cooling particles taught by Besso, in view of Shi, with the bulk density taught by Ogasa, which falls within the claimed range (MPEP § 2131.03).
With regards to obtaining the cooling particles by granulating by extrusion rounding, this limitation refers to the specific process used to make the product. Therefore, as Besso, in view of Shi and Ogasa, teaches the product resulting from these process steps, the claim is unpatentable. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); MPEP § 2113(I)).
Regarding claim 30, Besso, in view of Karles, Shi, and Sato, teaches the cooling filter rod according to claim 13, as stated above. Besso further teaches using the cooling particles for conventional cigarettes (“filter cigarettes and other smoking articles in which tobacco material or another combustible material is combusted to form smoke”, ¶ 0008) and that the cooling particles are spherical (“preferably substantially . . . spherical”, ¶ 0050).
However, Besso does not explicitly disclose whether or not the cooling particles have a bulk density of 0.4 to 1.6 g/ml. Ogasa, in the same field of particles for tobacco filters, teaches particles with a bulk density of 0.8 g/ml (Col. 4, Table 2, filter No. 8 with bulk density 0.76 g/cm3). Ogasa discloses a benefit of particles with this bulk density as they demonstrate increased rate of removal of certain carcinogens from smoke (Col. 5, lines 1-6). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the cooling particles taught by Besso, in view of Shi, with the bulk density taught by Ogasa, which falls within the claimed range (MPEP § 2131.03).
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Besso et al. (US 2013/0206151 A1) in view of Karles et al. (US 2011/0104218 A1), Shi (US 2005/0000531 A1), and Sato et al. (US 3,856,025) as applied to claim 13 above, and further in view of Inagaki et al. (US 2020/0107574 A1).
Regarding claim 35, Besso, in view of Karles, Shi, and Sato, teaches the cooling filter rod according to claim 13, as stated above. Besso further teaches wherein the particle body comprises a mixture of
base powder (“porous support material” with “liquid flavourant”, ¶ 0012),
hot melt adhesive powder (polyvinylacetate, ¶ 0045, 0047)2,
excipients (microcrystalline cellulose, ¶ 0045, 0047), and
water (water, ¶ 0046-0047).
However, Besso does not explicitly disclose wherein the base powder comprises metal powder that comprises aluminum oxide. Instead, Besso discloses that the base powder comprises porous support materials which include, but are not limited to, activated carbon, polymeric resin, silica, clay and zeolites (¶ 0018).
Inagaki, in the same field of particles for tobacco filters, teaches particles (“plurality of particles 3”, Fig. 1, ¶ 0034) with a particle body that comprises base powder that comprises metal powder that comprises aluminum oxide (“porous aluminum oxide”, ¶ 0087). Inagaki teaches an advantage to including porous aluminum oxide in the base powder of the particle body of the cooling particles in that it increases variation in the smoking flavor of the smoking article by extensively removing whole vapor phase components of mainstream smoke without selectivity (¶ 0087). Inagaki further teaches that porous aluminum oxide is an alternative to activated carbon, silica, and zeolites (¶ 0087). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used porous aluminum oxide, as taught by Inagaki, as the porous support material taught by Besso in order to achieve this benefit. In the particle of the combination, the base powder comprises metal powder that comprises aluminum oxide.
With regards to obtaining the particle body by thoroughly mixing, granulating, drying, and sieving, these limitations refer to the specific process used to make the product. Therefore, as Besso, in view of Inagaki, teaches the product resulting from these process steps, the claim is unpatentable. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); MPEP § 2113(I)).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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.
/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
1 See Read, John (1930). "Recent Progress in the Menthone Chemistry". Chemical Reviews. 7 (1): 1–50. doi:10.1021/cr60025a001, a copy of which has been provided.
2 While Besso does not explicitly disclose that polyvinylacetate is a hot melt adhesive, Parrish et al. (US 2012/0325230 A1) discloses that polyvinylacetate is a hot melt adhesive (“Examples of suitable water insoluble hot melt adhesives may include, but are not limited to, polyvinyl acetate and the like.”, ¶ 0014).
Prosecution Insights