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 .
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.
Claims 1, 2, and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Karles (US 2011/0232657) in view of Mishra (US 20170295842), Zheng (CN102835736), and Sun (US 2010/0170522).
Regarding claim 1, Karles discloses a tobacco material (tobacco beads 10, [0002]) comprising:
a core comprising a first tobacco mixture and a shell surrounding at least a portion of the core (core-shell structure is provided,[0016]),
wherein the first tobacco mixture comprises first tobacco particles and a flavor substance (core comprises tobacco particles and menthol [0019]).
Karles discloses a shell but does not expressly disclose a second tobacco mixture with second tobacco particles; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the shell with tobacco particles since Mishra, similarly directed towards tobacco beads, teaches providing the beads with a core-shell structure wherein the layer surrounding the core includes tobacco/tobacco flavor ([0018]). One would have been motivated to enhance the flavor profile of the tobacco beads.
Karles is silent regarding the surface roughness of the shell. Examiner notes that Karles and Mishra disclose the tobacco beads as being provided in a filter for controlled flavorant delivery (Karles, [0069,0071]; Mishra [0013]). In the same field of endeavor of tobacco articles, Zheng discloses providing particulate material within a filter and teaches that a rough surface structure of the particulate material effectively enhances the binding between the particulates and the filter rod tow, eliminating the phenomenon of material falling off the ends of the filter rod ([0024]). Thus, Zheng discloses surface roughness is an art-recognized result effective variable for controlling particulate binding within a filter rod. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tobacco material of Karles with surface roughness as claimed, since Zheng discloses surface roughness of particulate affects the binding between particulates and filter rod tow and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). Examiner notes that the instant specification discloses surface roughness as providing surface friction to fix the position of the tobacco material between acetate fibers of a filter ([0061]).
Karles does not disclose the core size as about 30 to 50 mesh and tobacco material size as about 18 to 25 mesh. Examiner notes that mesh 30-50 mesh corresponds to about 0.3 to 0.6 mm diameter while 18-25 mesh corresponds to about 0.7 to 1 mm diameter (see instant specification, [65]). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the core and shell size within the claimed ranges since (1) Karles discloses configuring the tobacco beads with diameters in the range of 0.2 to 1.2 mm ([0052]); and (2) Sun, similarly directed towards a tobacco particle having core-shell structure, teaches the thickness of the layers controls the release properties/flavor profile of the tobacco material and discloses the core/material structure as having a core diameter of 0.3 mm to 2 mm and overall diameter of 0.5 to 5 mm ([0007-0010,0055,0073]), said ranges overlapping the claimed ranges. One would have been motivated to adjust the size of the core and shell to control the flavor profile of the tobacco material (flavor release is dependent on thickness of layer, [0055,0073]).
Regarding claim 2, Karles does not disclose the first tobacco mixture as comprising 90 wt% or more of flavor substance; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tobacco mixture with 90wt% or more flavor substance since Sun, similarly directed towards tobacco granules, teaches that the flavor profile can be controlled by the concentration and/or intensity of flavorant in each layer and discloses providing a flavorant concentration of at least 50wt% (e.g., 90wt%)([0055]). One would have been motivated to configure the first tobacco mixture with 90wt% or more flavorant to enhance the flavor profile of the tobacco material.
Regarding claim 5, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the moisture content as about 5.0 to 8.0 wt% since Karles discloses drying the beads to a moisture level of 0.5% to about 25% ([0053]), said range overlapping the claimed range.
Regarding claims 6 and 7, Karles discloses the tobacco material as being provided in a filter ([0069;0071]). As to claim 7, Karles does not disclose providing the filter comprising a first filter element, a flavor portion, and a second filter portion in sequence; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the filter as claimed since Mishra discloses configuring a filter subassembly with first absorbent member 22, a second absorbent member 24, and a cavity containing flavor beads arranged therebetween ([0029,0048-0049], Figs. 1,2). One would have been motivated to employ the filter construction to contain the tobacco material therein and to control the level of dilution, resistance to flow, and deliver ([0053]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Karles (US 2011/0232657) in view of Mishra (US 20170295842), Zheng (CN102835736) and Sun (US 2010/0170522) as applied to claim 1 above, and further in view of Lewis (US 20210092994).
Regarding claim 4, Karles does not disclose the hardness of the tobacco material; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tobacco material with hardness as claimed since Lewis, similarly directed towards flavorant particles within tobacco products, teaches configuring the particles with hardness greater than 95% to make the particles more robust and less likely to break during transit ([0018]).
Response to Arguments
Applicant's arguments filed 6/29/2026 have been fully considered but they are not persuasive. Applicant argues the recited core and material sizes are not mere selection from overlapping prior art ranges. Rather, the claimed size ranges have unexpected superior effects.
Applicant argues that Karles Is directed towards controller release mentholated tobacco beads for oral or combustion use, not heated aerosol generation with stepwise flavor release. Sun's disclosure of core diameters and overall granule diameters are general size ranges for orally-consumed granules whose dissolution rate is controlled by layer composition and binder choice and not be the interplay between core size and shell thickness that determines when fine holes form during heated smoking. Karles and Sun do not disclose or suggest the unexpected superior effects.
Applicant argues that even assuming the numerical Karles and Sun overlap with those recited in claim 1, the overlap does not establish a prima facie case of obviousness where the claimed ranges are critical to achieving a specific and unexpected functional result.
Applicant's arguments are unpersuasive. Regarding Applicant's assertion of unexpected results and critical ranges, unexpected results must be established by factual evidence. MPEP 716.01(c)(I). Here, Applicant has not presented any experimental data regarding the formation of fine holes in the shell during smoking to enable a uniform, stepwise flavor release profile. Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP 716.01(c)(II). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.
Furthermore, the MPEP states: "[t]o establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)." See MPEP 716.02(d)(II). Here, applicant only points to specification paragraphs [0065-0067] and does not provide any test results that are inside or outside the claimed range support a showing of unexpected results.
Accordingly, applicant has not established a showing of unexpected results to rebut the prima facie case of obviousness based on overlapping ranges.
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 ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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, Anna Momper can be reached at (571) 270-5788. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT C DYE/Primary Examiner, Art Unit 3619
