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 1-15 are pending and are subject to this Office Action. Claims 11-15 are withdrawn. This is the first Office Action on the merits of the claims.
Election/Restrictions
Applicant’s election without traverse of Claims 1-10 in the reply filed on 01/12/2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
Claim 4 is 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.
Regarding claim 4, the claim does not make clear what the weight percentages are measured against. It is unclear whether the percentages are based on the total composition or only the medium. Further, if 100 wt% of the medium was present, it is unclear how another component could be present. For purposes of examining, the basic substance will be interpreted as being present in an amount of 12% or less of the weight of the medium, wherein the medium corresponds to 100 wt%.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, 3, 5, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Tesfatsion (WO 2021260372 A1, as cited in IDS dated 09/09/2024).
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With regard to Claim 1, Tesfatsion teaches (i) a filter rod consumable (Fig. 1: #1, Pg. 16, Lines 14-15) comprising a cavity, meeting the claim limitation of a segment. (ii) The cavity contains a capsule (Fig. 1: #4) surrounded by aerosolizable material (Pg. 16, Lines 24-27). (iii) 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).
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).
With regard to Claim 10, Tesfatsion teaches wherein the sections of the filter rod consumable may be surrounded by a wrapper (Pg. 16, Lines 21-22).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tesfatsion (WO 2021260372 A1, as cited in IDS dated 09/09/2024), as applied to claim 1 above, and further in view of Abi (US 20220079223 A1).
With regard to Claim 4, Tesfatsion teaches all the limitations of the claims as set forth above, however modified Tesfatsion is silent 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%
Abi, directed to aerosol generation, teaches wherein the weight ratio of basic material to aerosolizable material may be in the range of 0.05:1 [0033] to promote consistent delivery [0022]. The ratio is equivalent to 5% of basic material relative to the aerosolizable material, where the aerosolizable material is treated as 100%, showing a significant amount of overlap in the values of 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 in aerosol generating systems. Abi teaches a weight ratio of basic material to aerosolizable material in the range of 0.05:1 to improve consistency of nicotine delivery [0022] and this merely involves applying a known weight ratio to a known aerosol generating article ready for improvement to yield predictable results.
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), 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 ), 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
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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/O.O.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755