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, 5-9, and 11-15 are currently pending and are subject to this office action. Claim 1 is amended. Claims 4 and 10 are canceled. Claims 11-15 are withdrawn. This office action is in response to Applicant’s amendment filed on 06/05/2026.
Response to Amendments
Examiner acknowledges Applicant’s response filed on 06/05/2026 containing amendments and remarks to the claims.
In response to Applicant’s amendments filed 06/05/2026 , the Examiner withdraws the 35 U.S.C. 112(b) rejection to claim 4 for being indefinite.
Response to Arguments
Applicant’s arguments, on pages 5-7, filed 06/05/2026, with respect to the rejection of claim 1 under 35 U.S.C. 103 have been fully considered and are persuasive. The Applicant has amended claim 1 to include limitations that were not previously presented, specifically, “a plurality of segments, wherein a first segment of the plurality of segments comprises a filter, and a first wrapper at least partially surrounds the first segment, a second segment, downstream to the first segment, of the plurality of segments comprises a capsule and medium surrounding the capsule, and a second wrapper at least partially surrounds the second segment, the second wrapper is formed of a material resistant to the basic substance”. However, upon further consideration, a new ground(s) of rejection is made in view of Tesfatsion (WO 2021260372 A1), Jung (KR 20200043165 A), and Abi (US 20220079223 A1).
Applicant’s arguments, on pages, filed 8-11, with respect to the rejection of claim 1 under 35 U.S.C. 103 have been fully considered and are not persuasive. The Applicant argues that applying the device structure of Abi to Tesfatsion would impede the purpose of Tesfatsion.
The Examiner respectfully disagrees. Abi is not relied upon for making a structural change to the article of Tesfatsion. Abi is relied upon for its ratio of basic substance to medium. Abi teaches that the amount of basic material relative to aerosolizable material may be selected at a ratio of approximately 0.05:1, corresponding to approximately 5 wt% basic material relative to 100 wt% aerosolizable material, to promote consistent delivery [0022]. Tesfatsion’s basic material would remain within the capsule until rupture and the aerosolizable material would remain outside of the capsule. The capsule, delayed release mechanism, and operation of Tesfatsion would remain the same. Only the amount of basic material contained within Tesfatsion’s capsule is being modified by Abi. Thus, the modification merely applies Abi’s known quantitative relationship to the materials already present in Tesfatsion.
The following are modified rejections based on Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
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.
Claims 1, 2, 3, 5, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Tesfatsion (WO 2021260372 A1, as cited in IDS dated 09/09/2024), further in view of Jung (KR 20200043165 A, hereinafter citations referring to English language equivalent US 20210127741 A1) and Abi (US 20220079223 A1).
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With regard to Claim 1, Tesfatsion teaches (i) wherein a filter rod consumable (Fig. 1: #1, Pg. 16: Lines 14-15) comprising a plurality of segments (Fig. 1: #2a, #3, #2b). (ii) A first segment of the plurality of segments comprises a filter element (Fig. 1: #2a, Pg. 16: Lines 14-16). (iii) A second segment, downstream of the filter element (Fig. 1: #2a) comprises a capsule (Fig. 1: #4) surrounded by aerosolizable material (Pg. 16, Lines 24-27). The sections of the filter of the consumable may be held together by a wrapper (Pg. 16, Lines 21-22). (iv) The interior of the capsule (Fig. 1: #4), meeting the claim limitation of a core, comprises a basic solution and a frangible shell surrounding the solution (Pg. 16, Lines 25-30). Tesfatsion teaches all the limitations of the claims as set forth above, however Tesfatsion is silent to:
A first wrapper at least partially surrounds the first segment
A second wrapper at least partially surrounds the second segment
The basic substance is in an amount of 12% or less of weight of the medium, wherein the medium corresponds to 100%
The second wrapper is formed of a material resistant to the basic substance
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In regards to i., ii., and iv., Jung, directed to an aerosol generating article, teaches (i & ii) an article comprising multiple wrappers (Fig. 2A: #251, #252, #253, #254) over several segments of the article [0068-0072]. One of ordinary skill in the art would have found it obvious to modify the wrapper of Tesfatsion to be divided into separate wrappers to prevent the aerosol generating article from being contaminated [0071]. (iv) The second wrapper may be made of a silicon material, which has characteristics such as resistance to various drugs [0069]. One of ordinary skill in the art would have understood that silicone materials exhibit chemical resistance, including a resistance to many alkaline environments, thereby protecting the wrapper from the capsule contents.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the wrapper of Tesfatsion to wherein a first wrapper at least partially surrounds the first filter segment, a second wrapper at least partially surrounds the second segment, and wherein the second wrapper is formed of a material resistant to the basic substance because both Tesfatsion and Jung are directed to wrapped aerosol generating articles. Jung teaches an article with multiple wrappers over several segments to prevent the aerosol generating article from being contaminated [0071] and this merely involves applying a known wrapper technique to a known aerosol generating article, ready for improvement to yield predictable results.
In regards to iii., Abi, directed to aerosol generation, teaches wherein (iii) the weight ratio of basic material to aerosolizable material may be in the range of 0.05:1 [0033]. The ratio is equivalent to a weight of 5% of basic material and 100% of aerosolizable material, showing a significant amount of overlap in the values in the claimed invention and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to modify the basic substance and medium of Tesfatsion to wherein the basic substance is in an amount of 12% by weight (wt%) or less when the medium is in an amount of 100 wt% because both Tesfatsion and Abi are directed to improving user experience while inhaling aerosol. Abi teaches a weight ratio of basic material to aerosolizable material in the range of 0.05:1 to improve consistency of nicotine deliver [0022] and this merely involves applying a known weight ratio to a known aerosol generating article ready for improvement to yield predictable results.
With regard to Claim 2, Tesfatsion teaches wherein the basic solution may have a pH from about 8-10 (Pg. 1, Line 30), which anticipates the claimed range of 12 or less. Further, 25 °C is considered room temperature and one would reasonably consider that the disclosed pH is considered a value that would be at room temperature, which is standard measurement practice, absent evidence to the contrary.
With regard to Claim 3, Tesfatsion teaches wherein the basic solution comprises at least one of water, glycerol, or propylene glycol (Pg. 7, Lines 33-34).
With regard to Claim 5, Tesfatsion teaches wherein the basic solution may comprise sodium hydrogen carbonate, potassium hydrogen carbonate, sodium carbonate, or potassium carbonate (Pg. 8, Lines 5-10).
With regard to Claim 9, Tesfatsion teaches wherein the aerosolizable material comprises on or more of cut tobacco and reconstitute tobacco (Pg. 2, Lines 8-10).
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Tesfatsion (WO 2021260372 A1, as cited in IDS dated 09/09/2024), Jung (KR 20200043165 A, hereinafter citations referring to English language equivalent US 20201027741 A1), and Abi (US 20220079223 A1), as applied to claim 1 above, and further in view of Awty (WO 2014072735 A1, as cited in IDS dated 07/14/2023)
With regard to Claim 6, Tesfatsion teaches wherein the basic solution can be encapsulated by a material that melts, degrades, or dissolves at or above room temperature (Pg. 6, Lines 25-28) and all the limitations of the claims as set forth above, however modified Tesfatsion is silent to:
Wherein the shell comprises at least one material having a melting point between 40 °C and 130 °C at 1 bar
Awty, directed to a tobacco product, teaches carrier material comprising an additive that has a melting point that greater than 40 °C (Pg. 16, Lines 4-7), showing a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious. One of ordinary skill in the art would know that normal atmospheric pressure is approximately 1 bar and is considered a standard measurement condition. Further, one of ordinary skill in the art would find it obvious to combine the melting point parameters of Awty with the shell of Tesfatsion to ensure consistent release and stability of the shell (Pg. 16, Lines 14-15 & Lines 21-26).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the shell of modified Tesfatsion to wherein the shell comprises at least one material having a melting point between 40 °C and 130 °C at 1 bar because both Tesfatsion and Awty are directed to crushable capsules in aerosol generating systems. Awty teaches a carrier material with a melting point greater than 40 °C to ensure consistent release and stability of the shell (Pg. 16, Lines 14-15 & Lines 21-26) and this merely involves combining prior art elements according to known capsule material selection methods to yield predictable results.
With regard to Claim 7, Tesfatsion teaches wherein the basic solution can be encapsulated by a material that melts, degrades, or dissolves at or above room temperature (Pg. 6, Lines 25-28) and all the limitations of the claims as set forth above, however modified Tesfatsion is silent to:
Wherein the at least one material included in the shell has a melting point of 80 °C or less
Awty, directed to a tobacco product, teaches carrier material comprising an additive that has a melting point that greater than 40 °C (Pg. 16, Lines 4-7), showing a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious. One of ordinary skill in the art would find it obvious to combine the melting point parameters of Awty with the shell of Tesfatsion to ensure consistent release and stability of the shell (Pg. 16, Lines 14-15 & Lines 21-26).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the shell of modified Tesfatsion to wherein the at least one material included in the shell has a melting point of 80 °C or less because both Tesfatsion and Awty are directed to crushable capsules in aerosol generating systems. Awty teaches a carrier material with a melting point greater than 40 °C to ensure consistent release and stability of the shell (Pg. 16, Lines 14-15 & Lines 21-26) and this merely involves combining prior art elements according to known capsule material selection methods to yield predictable results.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tesfatsion (WO 2021260372 A1, as cited in IDS dated 09/09/2024 ), Jung (KR 20200043165 A, hereinafter citations referring to English language equivalent US 20201027741 A1) and Abi (US 20220079223 A1), as applied to claim 1 above, and further in view of Kim (US 20180317541 A1).
With regard to Claim 8, Tesfatsion teaches all the limitations of the claims as set forth above, however modified Tesfatsion is silent to:
Wherein the capsule has a crushing strength of 1.0 kilogram-force (kgf) to 2.5 kgf
Kim, directed to a fragrance capsule of tobacco, teaches a capsule with a crush strength of 0.8 to 2.0 kgf to allow a user to easily break the capsule and improve the quality felt by a user [0121]. The range of Kim significantly overlaps with the range of the claimed invention and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the capsule of modified Tesfatsion to wherein the capsule has a crushing strength of 1.0 kilogram-force (kgf) to 2.5 (kgf) because both Tesfatsion and Kim are directed to improving reliability of the capsule within an aerosol generating article. Kim teaches a capsule with a crush strength of 0.8 to 2.0 kgf to allow a user to easily break the capsule and improve the quality felt by a user [0121] and this merely involves applying a known crush strength parameter to a known capsule ready for improvement 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 OLUWATOSIN O DIYAN whose telephone number is (571)270-0789. The examiner can normally be reached Monday-Thursday 8:30 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/O.O.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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