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 the Claims
Claims 1, 3-9, 11-12, and 14-22 are pending and are subject to this Office Action. Claims 14-19 have been withdrawn. Claim 1 is amended.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 5/26/2026 containing
amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 5/26/2026 have been fully considered but they are not persuasive.
On pages 6-10, the Applicant argues claim 1 has been amended to exclude the presence of excipients that are not a flavorant composition, and thus exclude an encapsulated material including triglycerides. The Examiner does not find this to be persuasive.
Claim 1 has been amended to recite wherein the encapsulated material consists essentially of one or more flavorant. However, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See MPEP § 2111.03.III.
The instant specification states the flavorants may include extracts, flavor enhances, bitterness receptor site blockers, sensorial receptor site activators or stimulators, sugars and/or sugar substitutes, and other additives (page 14, last paragraph). There is no evidence in the specification that the presence of triglycerides would materially affect the basic and novel characteristics of the claimed invention. If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of "consisting essentially of," applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the claimed invention. See MPEP § 2111.03.III.
Therefore, as there is absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising.
The following is the modified rejection made based on amendments to the claims.
Claim Objections
Claim 1 objected to because of the following informalities:
Line 6 recites “one or more flavorant” and should instead recite “one or more flavorants”. Appropriate correction is required.
Claim Interpretation
Claim 1, lines 5-6 recites “wherein the encapsulated material consists essentially of one or more flavorants”. However, as there is absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consists essentially of" will be construed as equivalent to "comprising.
Claim 1, lines 6-7 recites “the encapsulating material consists essentially of one or more selected from the group consisting of”. However, as there is absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consists essentially of" will be construed as equivalent to "comprising.
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 (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.
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, 3-7, 9, 11-13, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kato (WO2017/198874, cited in IDS dated 11/24/2020) in view of Besso (US2015/0034099).
Regarding claim 1, Kato teaches:
An aerosolizable material for use in an aerosol generating assembly, the aerosolizable material comprising a tobacco material, an un-encapsulated flavorant, and an encapsulated flavorant (Pg. 13, lines 13-17).
Wherein the aerosolizable material is in the form of a rod-shaped component (Figure 1, tobacco rod 1, Pg. 11, lines 23-31) comprising at least two coaxially arranged sections (where an upstream portion of the tobacco rod and a downstream portion of the tobacco rod are considered to be the two sections), and the two sections having different compositions (the capsules may be distributed through the consumable and may differ (Pg. 11, lines 10-18) and therefore the upstream and downstream ends of the tobacco rod may have different compositions).
Where the un-encapsulated flavorant is volatilized at the start of the consumption period to provide an initial flavorant delivery (As the consumable may comprise a flavorant (Pg. 13, lines 12-15), it is evident that the flavorant is volatilized once the consumable is heated, and thus at the start of the consumption period).
Kato does not appear to disclose (I) wherein release of the encapsulated flavorant from the encapsulating material is temperature dependent and as a result of the encapsulated flavorant being heated to a threshold temperature during use, and wherein the encapsulated flavorant comprises an encapsulated material encapsulated within an encapsulating material, and wherein the encapsulated material consists essentially of one or more flavorants and the encapsulating material consists essentially of one or more selected from the group consisting of: a polysaccharide or cellulosic material: a gelatin a gum: a protein material: a polyol matrix material; a gel; a wax; a polyurethane; polymerised, hydrolysed ethylene vinyl acetate, a polyester, a polycarbonate, a polymethacrylate, a polyglycol, polyethylene, polystryrene, polypropylene and polyvinyl chloride, and (II) the encapsulated flavorant is released and volatilized later in the consumption period to provide a sustained flavorant delivery profile.
In regard to (I), Besso, directed to a smoking article, teaches:
A cigarette 10 that comprises a cylindrical wrapped tobacco rod 12…and a single flavor bead 20 formed of a flavor delivery material is provided within the tobacco rod (figure 1, [0089] – [0090]). The single flavor bead defining an encapsulated flavorant.
The polymer matrix of the flavour delivery material of the present invention traps the flavour composition within the domains so that the flavourant is substantially retained within the structure of the polymer matrix until the flavour delivery material is exposed to elevated temperatures, for example 220 C and minimizes the loss of the flavorant during storage of the material ([0008]). The flavour composition trapped within the polymer matrix defines an encapsulated material (i.e. flavour composition) encapsulated within an encapsulating material (i.e. polymer matrix) and the encapsulated material consists essentially of one or more flavorants (i.e. the flavourant).
The polymer matrix comprises one or more polysaccharides ([0038]), and thus defines the encapsulating material consists essentially of one or more selected from the group consisting of: a polysaccharide or cellulosic material: a gelatin a gum: a protein material: a polyol matrix material; a gel; a wax; a polyurethane; polymerised, hydrolysed ethylene vinyl acetate, a polyester, a polycarbonate, a polymethacrylate, a polyglycol, polyethylene, polystryrene, polypropylene and polyvinyl chloride.
The flavor delivery materials of the invention can therefore be used to provide novel combinations of tastes and flavors as well as novel flavor release profiles ([0067]).
As such, the release of the flavorant until the flavor delivery material is exposed to elevated temperature, for example 220 C, defines wherein release of the encapsulated flavorant from the encapsulating material is temperature dependent and as a result of the encapsulated flavorant being heated to a threshold temperature during use.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to substitute the capsule of Kato with the flavor bead of Besso, because both Besso and Kato are directed to aerosol generation articles with flavor beads/capsules, Besso teaches this minimizes the loss of the flavorant during storage of the material, and this merely involves incorporating a known capsule type (i.e. one that is released upon heating the material to a temperature above 220 degrees) to a similar aerosol generating article to yield predictable results.
In regard to (II), Besso further teaches:
The flavor delivery material may be dispersed uniformly amongst the material in the aerosol-generating substrate, along all or a part of the length of the aerosol-generating substrate. This arrangement of the flavor delivery material can provide a more continuous delivery of the flavorant during smoking ([0068]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to make the bead of modified Kato be dispersed uniformly amongst the material, along all or a part of the length of the aerosol-generating substrate in the aerosol-generating article as taught by Besso, and thus the encapsulated flavorant is released and volatilized later in the consumption period to provide a sustained flavorant delivery profile, because both Besso and Kato are directed to aerosol generation articles with flavor beads/capsules, Besso teaches this arrangement can provide a more continuous delivery of the flavorant during smoking, and this merely involves incorporating a known way to configure an article with encapsulated flavorants to a similar aerosol generating article to yield predictable results.
Regarding claim 3, modified Kato further teaches:
Wherein the aerosolizable material is in the form of a component comprising two sections (the two sections being an upstream portion of the tobacco rod and a downstream portion of the tobacco rod as discussed previously).
Where the consumable comprises a plurality of capsules, the individual capsules may all be provided at the same location (Pg. 11, lines 11-14) and capsules may be provided in the filter or the tobacco portion of the consumable (Pg. 11, lines 14-15).
Wherein there is an un-encapsulated flavorant, and where it may be un-encapsulated menthol (Kato, Pg. 13, lines 13-17).
Kato does not appear to explicitly disclose (I) wherein only one of the two sections comprises an encapsulated flavorant and (II) the location of the un-encapsulated flavorant.
In regard to (I), as Kato teaches all the capsules may be provided in the same location and the locations includes the filter or tobacco portion of the consumable, it would be obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to try putting the capsules in the same location of the tobacco rod, as it is selecting from a finite number of options for incorporating capsules into a smoking article. As only one section of the tobacco rod would have the capsules, this reads on the claim limitation wherein only one of the two sections comprises an encapsulated flavorant.
In regard to (II), Besso further teaches that it is known in the art for un-encapsulated flavorants to be provided within the filter or the tobacco rod of the smoking article (see Besso [0003]). Therefore, it would be obvious to one having ordinary skill in the art try incorporating the un-encapsulating flavorant to be within the tobacco rod as it is selecting from a finite number of options for incorporating un-encapsulated flavorants into a smoking article, therefore reading on the claim limitation wherein both of the two sections comprise an un-encapsulated flavorant.
Regarding claims 4-6, Kato further teaches:
Wherein the aerosolizable material is in the form of a component comprising two sections (the two sections being an upstream portion of the tobacco rod and a downstream portion of the tobacco rod as discussed previously).
Where the consumable comprises a plurality of capsules, the individual capsules may all be provided at the same location (Pg. 11, lines 11-14) and capsules may be provided in the filter or the tobacco portion of the consumable (Pg. 11, lines 14-15).
Wherein there is an un-encapsulated flavorant, and where it may be un-encapsulated menthol (Pg. 13, lines 13-17)
Kato does not appear to explicitly disclose (I) wherein only one of the two sections comprises an encapsulated flavorant and (II) the location of the un-encapsulated flavorant.
In regard to (I), as Kato teaches all the capsules may be provided in the same location and the locations includes the filter or tobacco portion of the consumable, it would be obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to try putting the capsules in the same location of the tobacco rod, as it is selecting from a finite number of options for incorporating capsules into a smoking article. As only one section of the tobacco rod would have the capsules, this reads on the claim limitation wherein only one of the two sections comprises an encapsulated flavorant.
In regard to (II), Besso teaches it is known in the art for un-encapsulated flavorants to be provided within the filter or the tobacco rod of the smoking article (see Besso [0003]). Therefore, it would be obvious to one having ordinary skill in the art to try incorporating the un-encapsulating flavorant to be within the tobacco rod as it is selecting from a finite number of options for incorporating un-encapsulated flavorants into a smoking article.
Besso further teaches:
The position of the flavor delivery material within the aerosol-generating substrate can therefore be adjusted in order to control the timing of the flavorant release during smoking ([0063]).
Therefore, it would be obvious for one of ordinary skill in the art to try providing the un-encapsulated flavorant and the encapsulated flavorant in one of either section of the tobacco rod, as Besso teaches the position of a flavor material allows for different flavor release timings during smoking, and this is merely selecting from a finite number of options for incorporating flavorants into a smoking article. The finite number of options could yield wherein only one of the two sections comprises an un-encapsulated flavorant and wherein only one of the two sections comprises an encapsulated flavorant as recited in claim 4, wherein the un-encapsulated flavorant and the encapsulated flavorant are provided in different sections as recited in claim 5, and whether the un-encapsulated flavorant and the encapsulated flavorant are provided in the same section as recited in claim 6.
Regarding claim 7, the two sections are an upstream portion of the tobacco rod and a downstream portion of the tobacco rod of Kato as discussed previously, and therefore the tobacco material is provided in either of the two sections or both of the two sections.
Regarding claim 9, modified Kato has the flavor bead in the tobacco rod that releases a flavorant when the material is heated above a certain temperature, as discussed previously with claim 1, which reads on the claim limitation wherein the encapsulated flavorant provides a flavorant release profile from the encapsulated flavorant upon heating.
Kato further teaches, the consumable may comprise more than one capsule (Pg. 13, lines 7-11), therefore reading on the claim limitation a multi-modal flavorant release profile.
Regarding claim 11, Kato further teaches wherein the un-encapsulated flavorant comprises menthol, a cooling agent, or a combination thereof (menthol, Pg. 13, lines 12-20).
Regarding claim 12, Kato further teaches wherein the encapsulated flavorant comprises menthol, a cooling agent, or a combination thereof (menthol, Pg. 13, lines 12-15).
Regarding claim 20, modified Kato has the two sections of the aerosolizable material both sections of the tobacco rod, as discussed previously, and therefore reads on the claim limitation wherein the tobacco material is provided in either of the two sections or both of the two sections.
Regarding claim 21, modified Kato further teaches wherein the flavorant is a taste or aroma compound (Besso teaches the flavorant may be menthol [0028]).
Regarding claim 22, modified Kato further teaches wherein the flavorant is or is derived from licorice, hydrangea, Japanese white bark magnolia leaf, chamomile, fenugreek, clove, menthol, Japanese mint, aniseed, cinnamon, herb, wintergreen, cherry, berry, peach, apple, Drambuie, bourbon, scotch, whiskey, spearmint, peppermint, lavender, cardamom, celery, cascarilla, nutmeg, sandalwood, bergamot, geranium, honey essence, rose oil, vanilla, lemon oil, orange oil, cassia, caraway, cognac, jasmine, ylang-ylang, sage, fennel, piment, ginger, anise, coriander, coffee, or a mint oil from any species of the genus Mentha (Besso teaches the flavorant may be menthol [0028]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kato (WO2017/198874, cited in IDS dated 11/24/2020) in view Besso (US2015/0034099) as applied to claim 1 above, and further in view of Wyss-Peters (US2008/0156336).
Regarding claim 8, Kato does not teach wherein the encapsulated flavorant is applied to a wrapper arranged around the tobacco material.
Wyss-Peters, directed to a smoking article with a flavorant ([0002]), teaches:
Cells with an encapsulated flavorant may be applied on a layer of paper, film, or other material, which is affixed to the surface of a mouth end portion of the smoking article ([0008]).
The tipping paper with the encapsulated flavorant is wrapped around the entire filter and a portion of the tobacco rod ([0037]).
The encapsulated flavorants on the paper are released when in contact with a user’s saliva, and this provides enhanced gustatory sensations without modifying the flavor of the smoke ([0007]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Kato by incorporating the encapsulated flavorant to the tipping paper wrapped around the entire filter and a portion of the tobacco rod as taught by Wyss-Peters, because both Kato and Wyss-Peters are directed to smoking articles with flavorants, Wyss-Peters teaches releasing the encapsulated flavorants with a user’s saliva provides enhanced gustatory sensations without modifying the flavor of the smoke, and this merely involves applying encapsulated flavorants to a known application location (i.e. tipping paper) to a similar smoking article to yield predictable results.
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 Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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