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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/28/2026 has been entered.
Election/Restrictions
Claim 1 is allowable. The restriction requirement between inventions I, as set forth in the Office action mailed on VII, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of 4/9/2024 is withdrawn. Claim 13, which required all the limitations of an allowable claim, previously withdrawn from consideration as a result of the restriction requirement, was canceled by applicant in the reply filed on 5/1/2025. The canceled, nonelected claim(s) may be reinstated by applicant if submitted in a timely filed amendment in reply to this action. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104.
In view of the withdrawal of the restriction requirement as set forth above, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Response to Amendment
Amendment filed 1/28/2026 has been entered and fully considered. Claims 1-6, 8-12 and 14-21 are pending. Claims 7, 13 and 22 are cancelled. Claims 1 and 8 are amended. No new matter is added.
Response to Arguments
Applicant’s arguments, see REMARKS, filed 1/28/2026, with respect to claim 1 have been fully considered and are persuasive. The rejection of the claims has been withdrawn.
Applicant argues that the amendments require that the released base contacts the tobacco material to release the nicotine from the tobacco material. The cited art comprises the base incorporating the tobacco material. Thus, there is not active contact between a separate and distinct tobacco material and base material to liberate nicotine.
Examiner agrees. The prior rejection is withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 is indefinite for being a “use” claim. See, MPEP 2173.05(q). The claim is directed towards the use of an encapsulated base and the body of the claim does not lay out any steps related to the encapsulated base. While a “provided” step may be broadly interpreted as being directed to a claimed step, the step is directed to the tobacco and the device, not the encapsulated base. Thus, the claim stands rejected for being indefinite.
Claim 18 is indefinite because it depends from claim 19, which is listed after claim 18.
Allowable Subject Matter
Claims 1-6, 8-12 and 14-21 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the cited are discloses that the nicotine is within the base, which is then encapsulated and later released. The cited art does not explicitly disclose that the base, once released, contacts the tobacco to liberate the nicotine from the tobacco itself, per se.
LI et al. (US 2017/0280769) discloses an encapsulated additive comprising a shell layer and an inner core. The encapsulated additive is configured to be released by heat or moisture (Paragraphs [0008]-[0014]). However, the base does not necessarily come into contact with the tobacco to liberate nicotine, per se.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745