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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/4/2026 has been entered.
Status of the Claims
Claims 13, 16-19, 21-24, 26-32, and 34-35 are pending. Claims 13, 21, and 26 have been amended.
Response to Arguments
Applicant's arguments filed 2/4/2026 have been fully considered but they are not persuasive.
Applicant argues that Besso does not explicitly mention the cooling effect of the particles. This argument is not persuasive as whether a given particle has a “cooling effect” is an inherent property of said particle, and the prior art is not required to explicitly discuss an inherent property (MPEP § 2112(III)). Besso discloses that the cooling particles are “particles of peppermint leaf and menthol”, ¶ 0043, and such particles have a cooling effect (see ¶ 0003 of Shi).
Applicant further argues that Shi does not disclose or suggest wherein the shell further comprises a flavor enhancer. This argument is not persuasive as Shi is not relied upon for this feature. Instead, Marquez discloses using a shell with a flavor enhancer, as discussed in the rejection of claim 15 in the Final Rejection mailed 11/7/2025. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues that “Shi also does not disclose or suggest ‘the shell contains a phase change material’”. This argument is not persuasive as Applicant has not provided any evidence to support this statement, and Arguments presented by the applicant cannot take the place of evidence in the record (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), MPEP § 716.01(c)). The rejection of claim 1 in the Final Rejection mailed 11/7/2025 discusses how Shi discloses this feature.
Applicant further argues that Marquez does not disclose that the shell comprises a flavor enhancer because the flavor enhancer molecules are not within the shell. This argument is not persuasive as Marquez discloses that the molecules “interact with the polymeric shell 54, either chemically or physically, such that the additive molecules bind to the surface of the polymeric shell” (¶ 0046). One having ordinary skill in the art would understand that if molecules are chemically or physically bound to the shell, then the shell can be considered to comprise those molecules.
Applicant further argues that Marquez does not disclose wherein the flavor is selected from menthone, coffee flavor and a mixture thereof. This argument is not persuasive as Marquez discloses that the flavor can be peppermint (¶ 0039), and menthone is a constituent of peppermint.1
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, 16-19, 21-23, 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 Shi (US 2005/0000531 A1) and Marquez et al. (US 2008/0149119 A1).
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), and
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).
However, Besso does not explicitly disclose that the shell contains a phase change material that is stearic acid.
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 is stearic acid (“stearic acid”, ¶ 0042). Shi also teaches a benefit of coating the particle body with the stearic acid shell in that it blocks loss of the flavorant by volatilization (¶ 0035). 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 Shi in order to obtain this benefit.
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 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)).
Besso also teaches that the cooling particle comprises a flavor enhancer that comprises a flavor (¶ 0004). However, Besso does not teach that the shell of the cooling particles further comprises a flavor enhancer, and the flavor enhancer comprises a flavor, wherein the flavor is selected from menthone, coffee flavor and a mixture thereof.
Marquez, in the same field of endeavor, teaches a shell comprising a flavor enhancer ("Additives suitable for incorporation into various filter components of smoking articles include flavor-enhancing agents ("flavorants")", ¶ 0027; flavorant additives bind to “shell 54”, ¶ 0045-0046), and further, that the flavor enhancer comprises a flavor wherein the flavor is menthone (“suitable flavorants include . . . peppermint”, ¶ 0039; menthone is a constituent of peppermint1).
One of ordinary skill in the art would have understood that incorporation of a flavor enhancer that comprises a flavor into the shell, as taught by Marquez, would provide a benefit of further enhancing the flavor of the filter. 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 cooling filter rod taught by Besso, in view of Shi, to include a flavor enhancer that comprises a flavor that is menthone in the shell of the cooling particles, as taught by Marquez, in order to obtain the benefit of enhancing the flavor.
Besso, in view of Shi and Marquez, 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)).
Regarding claim 16, Besso, in view of Shi, teaches the cooling filter rod according to claim 13, as stated above. Shi does not explicitly disclose wherein the mass of the shell accounts for 0.5-30% of the total mass of the cooling particle. However, Shi teaches using a shell to block loss of the flavorant by volatilization (¶ 0035). 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 block volatilization of the flavorant, and too much mass of shell would leave too little room for the flavorant. 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)).
Regarding claim 17, Besso, in view of Shi, 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 Shi, 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 claims 19, 21, 22, and 23, Besso, in view of Shi, teaches the cooling filter rod according to claims 13, 13 (again), 16, and 17, respectively, as stated above. Besso further 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”, ¶ 0042, 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).
Regarding claim 31, Besso, in view of Shi, 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 Shi, teaches a cigarette comprising a cooling filter rod according to claim 13 (Besso ¶ 0007, “filter cigarette”).
Regarding claim 34, Besso, in view of Shi, 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 24, 26, 27, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Besso et al. (US 2013/0206151 A1) in view of Shi (US 2005/0000531 A1) and Marquez et al. (US 2008/0149119 A1) as applied to claims 13, 13 (again), 16, and 17, respectively, above, and further in view of Sato et al. (US 3,856,025).
Regarding claims 24, 26, 27, and 28, Besso, in view of Shi and Marquez, teaches the cooling filter rod according to claims 13, 13 (again), 16, and 17, respectively, as stated above. However, 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 taught by Besso, in view of Shi, with the effective porosity taught by Sato, which falls within the claimed range (MPEP § 2131.03).
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 Shi (US 2005/0000531 A1) and Marquez et al. (US 2008/0149119 A1) 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 Shi, teaches the cooling filter rod according to claim 19, 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 Shi, teaches the cooling filter rod according to claim 19, 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 Shi (US 2005/0000531 A1) and Marquez et al. (US 2008/0149119 A1) 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 Shi, 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
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/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).