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 Claims
Claims 1-3, 5-9, 11, 14-17, 19, 23-26, and 30 are pending. Claims 10, 12-13, 18, 20-22, 27-29, and 31-32 are cancelled. Claims 19, 23-26, and 30 are withdrawn. Claim 2-3, and 6 are amended. Claims 1, 5, 7-9, 11, and 14-17 are previously presented.
Response to Amendment
The Response of 05/18/2026 is entered. The amendments to claims 2-3, and 6 overcome the 25 USC 112(b) rejection of these claims, and thus those rejections are withdrawn. The cancelation of claim 10 moots the 35 USC 112(d) rejection of claim 10, and thus it is withdrawn.
Response to Arguments
Examiner wishes to thank Applicant for the interview discussion of the arguments presented in the Response, held on June 15, 2026.
Applicant's arguments filed 05/18/2026 have been fully considered but they are not persuasive.
Applicant argues that the limitation of the breakable capsules separated by a distance of less than 2.5 mm is not disclosed nor predictable. Examiner agrees that none of the references discloses or teaches a specific separation distance of the capsules of less than 2.5 mm. Examiner disagrees with Applicant that choosing a separation distance for the capsules of less than 2.5 mm is obvious. Examiner disagrees with Applicant’s argument placing the capsules close together in an edge to edge configuration would not facilitate a user breaking the capsules simultaneously, or one after the other, while retaining the option to break them at separate times, or allow a user to choose to break only one or none of the capsules. With the capsules close together, it is hard to imagine how this would not facilitate quickly or simultaneously breaking both capsules, to achieve a maximum release of flavorant from the capsules.
Applicant argues that there is no support for the premise that placing the capsules in an edge to edge configuration automatically results in a separation distance of 2.5 mm or less. An edge to edge configuration of the capsules would result in a separation distance of approximately zero.
Applicant argues that because the filter length of England is between 8 mm and 14 mm, and England that teaches the capsules may all be provided within the filter, or distributed in the consumable, or split between the filter and consumable, one of ordinary skill in the art would recognize there are numerous valid special arrangements for multiple capsules. Examiner agrees. Applicant then argues that there is no specific motivation or teaching in England to select an edge to edge configuration or the tight proximity of less than 2.5 mm.
Examiner disagrees. For motivation, England suggests a plurality of capsules may be provided so that the user can select when/whether to break the capsule, thereby controlling the aerosol delivery profile, pg 4 lines 25-27. Arranging capsules in an edge to edge configuration is considered an obvious placement pattern to facilitate user discovery and breakage of the capsule in the filter, especially because rearrangement of parts is considered to supply sufficient legal rationale to do so, MPEP 2144 I-III, MPEP 2144.04 VI, C. Rearrangement of Parts.
Applicant argues because there are other available obvious options available from the combination of the references, this creates a conflict in asserting the combination of references renders the claimed limitations obvious. Applicant argues this both in relation to the positioning and the capsule sizes.
Examiner disagrees. It is true that there are many possible options from the combination of these references that do not read on Applicant’s invention in whole or part. Examiner asserts that this is not relevant to the issue of whether Applicant’s claims are obvious in light of the references. The rejections rely on a combination of known prior art limitations, in combination with appropriate rationale to support the conclusion of obviousness.
The arguments based on what Zhang suggests as an intended use for their filter, and Applicant’s speculation regarding a user’s inability to crush one capsule separate from another, does not preclude placement of the capsules according to the disclosure of England, based on the motivation and legal rationale presented in the rejections below.
Applicant argues that the teachings in both England and Zhang teaches away from an edge to edge capsule placement. Examiner asserts that the standard for teaching away is not met. Applicant arguments are speculative regarding the assertions pertaining to Zhang (both regarding the intended use and also the user inability to individually break the capsules) as well as irrelevant to the modification of England based on Zhang. The modification of England based on Zhang doesn’t render the filter of England unsuitable for its intended purpose. Applicant arguments regarding England are incorrect, because England discloses placement consistent with the rejection, such that the user can select when/whether to break the capsule, thereby controlling the aerosol delivery profile, pg 4 lines 25-27.
Applicant speculatively asserts that if one of ordinary skill in the art wanted to make the capsules easier to find in the filter, larger capsules would be the logical and only answer, thus further teaching away from the asserted modification. This is entirely speculative. The size of the capsule is related to the amount of liquid it may contain. Increasing the size of the capsule would either require increasing the volume within the capsule or the thickness of the shell, making it harder to break. There is no evidence that such modifications would be preferred over the spatial arrangement asserted in the rejections below, which are entirely compatible with England.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 1-3, 5-6, 9-11, and 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over England et al. (WO 2017/198876 A1) in view of Zhang (US 2010/0294290 A1).
Regarding claim 1 and 10, England discloses:
A component for an article for use in an aerosol delivery system, ([pg 1 lines 24-25] a filter for an aerosol generating device),
the component comprising a body of fibrous material comprising first and second additive release components embedded within the body of fibrous material, ([pg 1 lines 25-26] the filter comprising a capsule comprising an aerosol modifier], [pg 4 lines 18-19], the filter may comprise tow formed of cellulose acetate fibers, [pg 4 lines 23-25] the filter may comprise a plurality of capsules);
wherein the first and second additive release components may be substantially spherical (understood to have a reasonably consistent diameter) and comprise a range of acceptable maximum diameters broadly including a minimum diameter of at least about 0.4mm and a maximum diameter of about 10.0mm, ([pg 5-6 lines 31-6]),
wherein the plurality of additive release components are provided so that a user may select when/whether to break the capsule, thereby controlling the aerosol delivery profile, ([pg 4 lines 25-27]);
wherein each of the first and second additive release components is a breakable capsule having a barrier material which creates a shell around a core, and wherein the barrier material is heat resistant, ([pg 5 lines 4-17]).
Although England provides a broad range of acceptable diameters for the breakable heat resistant capsules, England does not specifically limit the diameters to about 1.5mm to 2.5mm.
Additionally, while England suggests locating the capsules such that the user may select whether/when to break a capsule, England leaves selecting the distance between the capsules as a matter of design choice to the ordinary skill in the art.
Zhang teaches a method of manufacturing a breakable capsule for incorporation into a tobacco product, ([0008]), and is thus within the inventor’s field of endeavor. Zhang teaches that the size and weight of each capsule may vary depending upon the desired properties it is to impart to the tobacco product, teaching that preferred capsules are generally spherical, but other shapes are acceptable. Zhang teaches that exemplary smaller capsules have diameters of at least about 1.5mm, 2mm, and often at least about 2.5mm, and frequently at least about 3mm, ([0037]). Zhang teaches incorporating at least one capsule incorporated within each smoking article, and suggests two or more capsules may be included, with the number based upon factors such as the size of the smoking article, the capsule size, and the effects desired (by rupturing the capsule), where different sizes of capsules and types of additives may be used, ([0040]). Zhang suggests that capsules containing different flavoring agents may be crushed at different times, ([0040]). Zhang suggest that the capsules are preferably disposed in the filter material of the filter element, and that the number of capsules is preferably predetermined, such as 1, 2, 3, or more, ([0053]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified England according to the teachings of Zhang using a known technique of selecting capsule sizes and position to improve a similar device in the same way, MPEP 2143 I. Example of Rationales (C). England discloses all of the claimed limitations, including that a range of capsules that overlaps the claimed range, and that the location of the capsules may be arranged such that the user can selectively choose whether and when to break the capsules. Zhang teaches a comparable device that has been improved in the same way as the claimed invention, having capsules with maximum diameters of 1.5mm to 2.5 mm. One of ordinary skill in the art could have applied the known improvement, selection of the capsule diameters within the narrower range, to the device of England, and the results would have been predictable since England discloses that these ranges will work with their filter.
Regarding the limitation requiring that the breakable capsules be separated by a distance of less than about 2.5 mm, one of ordinary skill in the art, before the effective filing date of the claimed invention would have found it obvious to arrive at such a configuration based on the disclosure of England and Zhang. England and Zhang, as cited above, discloses embodiments with a plurality of capsules. Little guidance as to the particular locations of the capsules is given, except that the capsules should be located such that the user can select when and whether to break the capsule, (England [pg 10 lines 18-19]), while Zhang teaches the filter preferably contains a single capsule, disposed within the filter material of the filter element, particularly towards the central region of the filter element, Zhang does not teach how the capsules should be disposed when the number of capsules selected is an embodiment comprising 2, 3, or more capsules, (Zhang [0053]), but does suggest a configuration where a user may crush a first capsule, and then later crush a second capsule, ([0040]). MPEP 2144.04 Legal Precedent as Source of Supporting Rationale, VI. C. Rearrangement of Parts. Here the particular claimed configuration is not explicitly disclosed, but one of ordinary skill in the art would have recognized that placement of two or more capsules in an edge to edge configuration would have resulted in an arrangement that would have enabled a user to easily rupture each capsule selectively, to obtain the desired amount of additive released in to the filter, and enable the user to selectively control when and how much additive to release, to obtain a desired flavor profile. One of ordinary skill in the art would have recognized that placing the capsules edge to edge would make it easier to crush the subsequent capsules, without having to determine other possible locations in the filter where the second and third capsules might be located. Such an arrangement would not have modified the basic operation of the device, squeezing the filter until one or more capsules ruptured and released the contained additive. See simple alternate depictions below:
First depiction Second depiction
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These embodiments are considered to be simple and obvious configurations of capsules within a filter, where a user could easily selectively rupture one or more capsules, merely by expanding the area squeezed to capture more of the capsules in the first depiction, or compressing the section further to break additional capsules after the first one ruptured, in the second depiction.
Regarding claim 2, modified England discloses the component of claim 1. Modified England in claim 1, was found to render obvious capsules placed in an edge to edge configuration, also rendering obvious the all of these claimed ranges, edge to edge placement having a separation of less than about 1.0mm, the smallest claimed range.
Regarding claim 3, modified England discloses the component of claim 1, where the capsules may have a spherical shape and a maximum diameter chosen in a range of 1.5mm to 2.5 mm, and configured in a longitudinal orientation. The longitudinal separation between the centers of the first and second additive release components is at least 0.75mm, because the longitudinal separation between the centers of the first and second additive release components is equal to the diameter of the capsule, here at least 1.5 mm.
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Regarding claim 5, modified Englan discloses the component of claim 1. Modified England renders obvious various configurations of capsules, arranged to allow a user to selectively compress the filter and rupture one or more capsules selectively in sequence, including arrangements where the capsules are arranged in a row, on an axial diameter across a cross-section of the filter such that a user can selectively rupture one or more capsules by compressing the filter, see second example in depicted above. Such a configuration renders obvious the limitation where at least one of the first and second release component has a center offset from the longitudinal axis by at least about 2mm, where the capsules are at least 2mm and arranged edge to edge.
Regarding claim 6, modified England discloses the component of claim 1, where the capsules may have a spherical shape and comprise capsules with a diameter of 1.5mm to 2.5 mm and are configured in an edge to edge orientation. The maximum separation between the centers of the first and second additive release components less than about 2.5mm, because the modified England includes capsules with diameters of less than about 2.5mm, and the longitudinal separation between the centers of the first and second additive release components in an edge to edge configuration is equal to the diameter of the capsule.
Regarding claim 7, modified England discloses the component of claim 1. England discloses the consumable may comprise at least 10 mg or 12mg of the aerosol modifier, ([pg 9 lines 6-8]).
Regarding claim 8, modified England discloses the component of claim 1. Modified England discloses that the capsule diameters are in a range from about 1.5mm to 2.5mm. Capsule diameters of 1.56mm to 2.5 mm all comprise capsule volumes within this range, but does not exactly coincide with the claimed volumes.
Zhang teaches to select the size of the capsules as a factor to provide desired properties, including sensory effect, ([0040]).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to select a larger size capsule to deliver more additive with the crush of a capsule. This is the use of a known technique to improve similar devices in the same way, MPEP 2143. I. Examples of Rationales, (C). Here modified England contained a base device, upon which the claimed invention can be seen as an improvement, here a larger volume of additive in the capsule. The prior art of Zhang teaches using larger capsules to deliver more additive, in the same way as the invention. One of ordinary skill in the art could have applied the teachings of Zhang in the same way as the invention, to provide a larger amount of additive in the higher end of the range disclosed by England and the results would have been predictable to one or ordinary skill in the art.
Regarding claim 9, modified England discloses the component of claim 1.
Zhang teaches that capsules of different sizes can be used to provide the desired properties, such as mouthfeel, flavor, or other sensory effect, ([0040]).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to select capsule of different sizes provide desired properties to modify the aerosol and alter the smoking experience. This is the use of a known technique to improve similar devices in the same way, MPEP 2143. I. Examples of Rationales, (C). Here modified England contained a base device, upon which the claimed invention can be seen as an improvement, here capsules of different sizes. The prior art of Zhang teaches using capsules of different sizes to alter the smoking experience, in the same way as the invention. One of ordinary skill in the art could have applied the teachings of Zhang in the same way as the invention, to provide different sensory experience to the smoker and the results would have been predictable to one or ordinary skill in the art.
Regarding claim 11 and 14, modified England discloses the component of claim 9. England teaches that the first and second additive release components comprise an shell and an additive enclosed within the shell, ([pg 4 lines 29-31]).
Regarding claim 15, modified England discloses the component of claim 1.
Zhang teaches that capsules may comprise different capsule contained components (understood to be different aerosol modifiers, to provide the desired properties, such as mouthfeel, flavor, or other sensory effect, ([0040]).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to select capsules containing different aerosol modifiers to provide desired properties to modify the aerosol and alter the smoking experience. This is the use of a known technique to improve similar devices in the same way, MPEP 2143. I. Examples of Rationales, (C). Here modified England contained a base device, upon which the claimed invention can be seen as an improvement, here capsules containing different aerosol modifiers. The prior art of Zhang teaches using capsules containing different aerosol modifiers to alter the smoking experience, in the same way as the invention. One of ordinary skill in the art could have applied the teachings of Zhang in the same way as the invention, to provide different sensory experience to the smoker and the results would have been predictable to one or ordinary skill in the art.
Regarding claim 16, modified England discloses the component of claim 1. Modified England of claim 1 discloses that a plurality of capsules may be used including 1, 2, 3, or more, (Zhang [0053]).
Regarding claim 17, modified England discloses the component of claim 1. England discloses that the filter may be formed of cellulose acetate fibers, and may comprise more than one capsule, ([pg 4 lines 18-35]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wilson et al. WO 2021/064187 A1, pg 9 lines 8-13, explicitly describing positioning storage capsules embedded into a filter member, where the capsules can be arranged next to each other, or separate, and also at the same longitudinal position with a transverse offset, similar to the obvious depicted options presented to the Applicant in the rejections above.
THIS ACTION IS MADE FINAL. 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 DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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