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 .
Response to Arguments
Applicant's arguments filed 2/17/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Ingber discloses small diameter capsules that release contents due to sheer forces, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that Ingber is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, as noted in the rejection below as well as the prior rejection (9/15/2025), Ingber is in a different field of endeavor, but is reasonably pertinent to the particular problem (formation of breakable capsules) with which the inventor was concerned.
The applicant argues that the Ingber relates to nanoparticles and therefore to a technical field totally different
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 includes the limitation “wherein said at least one flavouring agent is absorbed on particles of a PHA.” The claims fails to further limit claim 1, because claim 1 is directed to, “…and at least one flavoring agent dispersed or dissolved in said lipophilic substance”. In other words, in claim 9 the at least one flavourant of claim 1 is no longer dispersed or dissolved in a lipophilic substance and is instead absorbed on a PHA particle. Merely indicating that the flavoring agent is dispersed or dissolved in said lipophilic substance and is absorbed on particles of PHA does not remedy the failure to further limit. The flavoring agent is being claimed in claim 9 as not being dispersed or dissolved as required in claim 1, and is instead absorbed on particles. Therefore, the limitation of claim 1 has been replaced with a new limitation and therefore fails to further limit. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1,2, 4-6, 8-11 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Russell et al. (US 20140209111) in view of Sharkawy et al. (US 20200315168) and Ingber et al. (US 20130295012).
Regarding claims 1, 2, 4, 5, and 10, Russell et al. disclose a smoking article with a filter segment containing capsules that selective release flavorants such as menthol, lemon oil, bergamot, mint oil, etc.[0098], when broken by the user [0002]. The capsule can be formed of a shell containing chitosan with sizes ranging from 200 micrometers to a few millimeters [0092]. Although Russell et al. disclose that the additive may be in any suitable form including oil, Russell et al. do not expressly disclose that the flavoring agent is disperse or dissolved in a lipophilic substance. Russell et al. also do not disclose that the chitosan has a weight average molecular weight of between 25 and 400 kDa.
However, Sharkawy et al. disclose forming analogous capsules to those disclose by Russell et al. and disclose capsules that contain flavorants such as vanillin and limonene in a carrier of corn oil (i.e. lipophilic substance) [0038], and that the coating of the capsule is composed of chitosan with a molecular weight between 80 and 200 kDa [0038]. It would have been obvious to one of ordinary skill in the art at the time of invention/filing to use the capsules disclosed by Sharkawy et al. in the invention of Russell et al. because it would have been obvious to use one known flavorant capsule in place of another known flavor containing capsule with reasonable expectation of success. In particular, Russell et al. disclose that, “Although the additive release components have been described as formed of gelatine, other additive release component types can be used in combination with a filter of the present invention,” inviting one of skill to use other known capsules such as the capsule of Sharkawy et al.
Russell et al. and Sharkawy et al. do not disclose a capsule with the coating containing polyhydroxyalkanoate (PHA). However, it is known to form capsules for smoking articles with chitosan and PHA or specifically PHB. For instance, Ingber et al. disclose capsules made of biocompatible polymers such as polyhydroxybutyrates (PHB), chitosan, and mixtures thereof [0058]. Although Ingber et al. is in a different field of endeavor than the other prior art and the instant application, it would nevertheless been analogous art because one of ordinary skill in the art would be concerned with the formation of capsules as a technical problem to be solved. It would have been obvious to one of ordinary skill in the art at the time of invention to use the biodegradable polymer capsule materials of Ingber et al. in the invention of Russell et al. and Sharkawy et al. because they are known capsule forming materials, and substitution one known component with another for the same use is obvious. Doing so would have yielded predictable results (i.e. a capsule containing flavorants and an oil carrier and would have been biodegradable.
Regarding claim 6, Sharkawy et al. disclose using approximately 2% vanillin (flavorant) mixed with approximately 98% corn oil (lipophilic substance)( see table 1, corn oil 1 gram, and 0.02 grams vanillin). This is within the claimed range.
Regarding claim 8, Ingber et al. do not disclose the ranges of polymers that make up the shell or coating. However, it would have been obvious to one of ordinary skill in the art at the time of invention to mix two polymers, such as chitosan and PHB in similar mounts (i.e. 50% to 50%) as the easiest mixture of two ingredients. Such a mixture would have been within the range of 20-80% Chitosan and 20-80% PHA. Furthermore, it would have been obvious to one of ordinary skill in the art that using between 20-80% of either one of two polymers would have been obvious and yield obvious results (i.e. the benefit of using a mixture of polymers as disclosed) and the broad range of 20-80% of each lacks criticality.
Regarding claim 9, Ingber et al. do not disclose that PHB absorbs the flavoring. However, PHB (a PHA) as part of the coating would inherently be in contact with the core material and would absorb some flavoring resulting in flavoring absorbed on particles of PHA.
Regarding claim 11, the capsule as discussed above has the same composition and structure as that which is claimed and therefore would inherently have the same crush strength.
Regarding claim 18, Russell et al. disclose that capsules can have diameters of 0.5 to 4.5 mm, including 2 to 4 mm and other ranges that are within the claimed range of 0.5 to 10 mm [0067] and also less than 3.5 mm, 2-3 mm [0080]. In addition, Russell et al. indicate that “These ranges are not intended to be limiting and the skilled person would understand that larger or smaller filter diameters or additive release component could be employed.” [0068]
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Russell et al. (US 20140209111), Sharkawy et al. (US 20200315168) and Ingber et al. (US 20130295012) as applied to claim 1, with additional evidence provided by Millipore Sigma (Chitosan 448869).
Regarding claim 3, Sharkawy et al. do not disclose the viscosity of the chitosan used. However, the commercial provider Millipore Sigma indicates that low molecule weight chitosan with molecule weight between 50 and 190 kDa has a viscosity of 20-300 cP in a mixture of 1 wt% in 1% acetic acid at 25 C, using the Brookfield viscosity method. This molecular weight range significantly overlaps the range disclosed by Sharkawy et al. (80-200 kDa Sharkawy vs 50-190 kDa Sigma). One of ordinary skill in the art at the time of invention would expect the chitosan disclosed by Sharkawy et al. to have the same viscosity as that disclosed by Sigma, because the molecular weight ranges are nearly identical.
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 MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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.
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/Michael J Felton/Primary Examiner, Art Unit 1747