DETAILED ACTION
Notice of Pre-AIA or AIA Status
(1 ) The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
(2 ) The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the filter must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
(3 ) Applicant is reminded of the proper language and format for an abstract of the disclosure:
abstract should be in narrative form and generally limited to a single paragraph on
a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details,
the language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because of the following: use of “The present disclosure relates” (reference “b” above). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
(4 ) The substitute specification filed 5-26-2022 has been entered.
Claim Rejections - 35 USC § 112
(5 ) 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.
(6 ) Claims 3, 5, 15, and 17-18 is/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 3 is considered to be indefinite in that “the temperature” (L21) lacks antecedent basis.
Claim 5 is considered to be indefinite in that “the form” (L2) lacks antecedent basis.
Claim 15 is considered to be indefinite in that the following lack antecedent basis: the pressure difference, the user, the range.
Claim 17 is considered to be indefinite in that “the total weight” (L2) lacks antecedent basis.
Claim 18 is considered to be indefinite in that the antecedent of “the aerosol-modifying agent” (L2-3) is not clearly defined. It could be interpreted to be referencing the first agent in claim 1.
Claim 19 is considered to be indefinite in that “the range” (L2) lacks antecedent basis.
Claim Rejections - 35 USC § 102
(7 ) 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.
(8 ) The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(9 ) Claim(s) 1-2, 4-5, 8-9, 11-12, 14, 16, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deng (WO 2019019909 A1).
Claim 1: Deng teaches an article 10 (pg5 para7) for use within a non-combustible aerosol provision system (pg2 “Background technique” paras2-3; pg4 para6), the article comprising:
●a filter 11 (pg5 para7)
●an aerosol-generating portion 13 (pg5 para7; pg6 para5)
●wherein the aerosol-generating portion 13 comprises an aerosol-generating material
(pg6 para6; pg7 paras7-8) and an encapsulated first aerosol-modifying agent (pg7 para9: “one or more capsules” of tobacco volatile flavoring compound, for example; emphasis added)
●wherein the encapsulated first aerosol-modifying agent is released on heating to at
least a threshold release temperature (pg7 para4)
●wherein the filter 11 comprises a component 31 holding a second aerosol-modifying
agent, wherein the second aerosol-modifying agent is selectively releasable from the component 31 (pg8 para8: broken by heating or other means).
The non-combustible aerosol provision system comprises a heater (abstract). Other locations in the reference may be included in the above recited referenced locations to demonstrate further the features as claimed.
Claim 2: the first aerosol-modifying agent comprises a flavorant (pg7 para9).
Claim 4: the aerosol-generating portion 13 includes a wrapper 12 circumscribing at least part of the aerosol-generating material (pg7 para2).
Claims 5 and 11-12: the encapsulated first aerosol-modifying agent is in the form of a plurality of elements (pg7 para9: “one or more capsules”) which are mixed with the aerosol-generating material such that some of the capsules are considered to be a third aerosol-modifying agent. The aerosol-generating portion 13 also comprises, as part of the first and third aerosol-modifying agent, an unencapsulated flavorant (pg7 para7).
Claim 8: the aerosol-generating material comprises a tobacco material (pg7 para9).
Claim 9: the filter 11 is in the form of a plug (Fig1) and retains the component 31 holding a second aerosol-modifying agent and the filter plug comprises a non-aerosolizable filtration material (i.e. “air permeable”) (pg6 para9).
Claim 14: Deng teaches the component is a bead (i.e. capsule: pg8 para8) and that it is breakable (pg8 para8).
Claim 16: Deng teaches the breakable capsule has a core (second aerosol-modifying agent) shell (the encapsulated second aerosol-modifying agent is encapsulated in an encapsulating material) structure.
Claim Rejections - 35 USC § 103
(10 ) 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.
(11 ) 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.
(12) Claim(s) 3 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deng.
Claim 3: the second aerosol-modifying agent has a release temperature (pg8 para8). Deng does not teach this release temperature is in excess (over) a temperature to which it is exposed on heating. With respect to this limitation, the choice of material(s) of the second aerosol-modifying agent and its release temperature thereof, which one skilled in the art would consider, is a function of, among other variables, the degree of modification desired and other properties of the agent. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the available choice of materials of the second aerosol-modifying agent and its release temperature thereof, which one skilled in the art would consider, based on known variables, such as those listed; and thus, the claimed temperature limitation cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A. Further, in excess incorporates values that close to the exposure temperature (for example, just one degree). It has been held that a prima facie case of obviousness is made in a predictable art wherein a claimed range and the prior art range are so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality. See MPEP 2144.05(I).
Claim 15: Deng does not teach the pressure difference across the filter 11 when a user inhales is in a range of 30-90 mmH20 when the capsule is in an unbroken state. This pressure difference, which one skilled in the art would consider, is a function of, among other variables, the density of portions of the article, air humidity therethrough, operating temperature, and materials used. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the pressure difference across the filter 11 when a user inhales when the capsule is in an unbroken state, which one skilled in the art would consider, based on known variables, such as those listed; and thus, the claimed pressure difference range value cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
(13 ) Claim(s) 6-7, 10, 13, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deng, as applied to claims 1-2, 4-5, 8-9, 11-12, 14, 16, and 21 above, and further in view of Hepworth (WO 2019/166640 A1).
Claims 6-7, Deng does not teach that the first and second aerosol-modifying agents are the same (claim 6) and are different (claim 7).
Hepworth teaches an article (pg5 Ln26) for use within a non-combustible aerosol provision system (pg2 L4), the article comprising: a filter (pg17 L15) and an aerosol-generating portion (pg17 L15) wherein the aerosol-generating portion comprises an aerosol-generating material 103 (pg19 L16-21) and a first encapsulated aerosol-modifying agent (pg2 L29-32; pg19 L16-21). The aerosol-generating material 103 comprises tobacco alone or with other agents and/or flavorants (pg19 L16-21). Other locations in the reference may be included in the above recited referenced locations to demonstrate further the features as claimed.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Deng that the first and second aerosol-modifying agents are the same in that Hepworth teaches, in the same art, that aerosol-modifying agents and/or other agents (flavorants) may be used together or separate as desired where Deng teaches flavor is a significant feature of the invention (pg7 para7-9; pg8 para11) – sensory quality is enhanced, as one example.
Claim 10: Deng does not teach a specific material for the non-aerosolizable filter material i.e. comprises one or more of cellulose acetate, a ceramic material, a polymer matrix and activated carbon.
Hepworth teaches the filter to comprise cellulose acetate, a ceramic material, a polymer matrix, and/or activated carbon.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Deng that the filter material comprises one or more of cellulose acetate, a ceramic material, a polymer matrix and activated carbon in that Hepworth teaches, in the same art, that these material are conventional and well-known filter material where it is obvious to replace one filter material (that of Deng, not specifically disclosed) with another art recognized alternative filter material (that of Hepworth) for the inherent benefits provided therein.
Claim 13: the encapsulated first aerosol-modifying agent is encapsulated in an encapsulating material. Deng does not reach a specific material for the encapsulating material such as the list of material in claim 13.
Hepworth teaches an encapsulating material of, for example, a cellulosic material or wax (pg9 L12-28). The other materials listed in claim 13 are conventional and well-known in the art.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Deng that the encapsulating material is a cellulosic material or wax in that Hepworth teaches, in the same art, that these material are conventional and well-known encapsulating material where it is obvious to replace one encapsulating material (that of Deng, not specifically disclosed) with another art recognized alternative encapsulating material (that of Hepworth) for the inherent benefits provided therein.
Claim 17: Deng does not teach that the core comprises at least about 25% w/w flavorant based on a total weight of the core. Hepworth teaches at least 10% on page 13, paragraph 1. This range completely encompasses the claimed range.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Deng that the core comprises at least about 10% w/w flavorant based on a total weight of the core in that Hepworth teaches, in the same art, that such is conventional and well-known in the art where it is obvious to replace one percent w/w (that of Deng, not specifically disclosed) with another art recognized alternative percent w/w (that of Hepworth) where successful results have been demonstrated.
Claim 18: Deng does not teach that the capsule includes a barrier material which retains the second aerosol-modifying agent wherein the barrier material comprises one or more of a gelling agent, a bulking agent, a coloring agent, a plasticizer, and a filler.
Hepworth teaches the encapsulation is with a core-shell structure, the shell comprising one or more of a gelling agent (pg1 L29-32), a bulking agent, a coloring agent, a plasticizer, and a filler (pg8 L19 to pg9 L20).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Deng that the capsule includes a barrier material which retains the second aerosol-modifying agent wherein the barrier material comprises one or more of a gelling agent, a bulking agent, a coloring agent, a plasticizer, and a filler in that Hepworth teaches, in the same art, that such are conventional and well-known in the art, wherein one skilled in the art would have been motivated to provide these materials in Deng for the inherent benefits provided therein.
Claim 19: Deng does not teach that the capsules are substantially spherical and has a diameter in a range of about 0.4 mm to about 8.0 mm. Hepworth teaches substantially spherical capsules having a diameter at least 0.4 mm (pg7 L4-12) which completely encompasses the claimed range.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Deng that the capsules are substantially spherical and has a diameter in a range of at least 0.4 mm in that Hepworth teaches, in the same art, that such is conventional and well-known in the art where it is obvious to replace capsule shape/diameter (that of Deng, not specifically disclosed) with another art recognized alternative capsule shape/diameter (that of Hepworth) where successful results have been demonstrated.
Claim 20: Deng does not teach that the capsules weighs about 5 mg to about 60 mg. Hepworth teaches capsule weights of about 5 mg to about 60 mg (pg7 L14-16).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Deng that the weight about 5 mg to about 60 mg in that Hepworth teaches, in the same art, that such is conventional and well-known in the art where it is obvious to replace capsule weight (that of Deng, not specifically disclosed) with another art recognized alternative capsule weight (that of Hepworth) where successful results have been demonstrated.
Prior Art of Record
(14 ) The following prior art made of record and not relied upon is considered pertinent to applicant’s invention: Jordil teaches a filter having a capsule.
Conclusion
(15 ) Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phil 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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/LINDA L GRAY/Primary Examiner, Art Unit 1745