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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-15 in the reply filed on 12/24/2025 is acknowledged. The traversal is on the ground(s) that the claims allegedly share a single general inventive concept under PCT Rule 13.1 based on a common feature of porous cellulose flavor filler having a specified porosity, and that Besso et al. allegedly fails to disclose the claimed porosity threshold. This is not found persuasive because unity of invention under PCT Rule 13 requires that the groups share a special technical feature that makes a contribution over the prior art, and the asserted feature does not provide such a contribution.
As set forth in the restriction requirement, Groups I and II both recite a flavor filler comprising porous cellulose particles carrying a flavor layer. However, this feature is not a special technical feature because flavor-bearing porous cellulose structures are already known in the art, as evidenced by Besso et al. (US 2008/0230079 A1), which discloses flavor-releasing segments comprising porous cellulose beads including flavor component-containing materials (see Besso ¶¶[0021]–[0036], [0035]). Applicant’s argument that Besso does not explicitly disclose a porosity of “40% or more” is not persuasive, because merely specifying a numerical porosity value does not establish a technical contribution over the prior art for purposes of unity of invention where the underlying porous cellulose flavor carrier itself is already known.
Further, the alleged advantageous properties attributed to the porosity value are not relied upon in the claims as a technical feature linking Groups I and II, but instead relate to performance characteristics that would naturally result from routine optimization of known porous cellulose materials. As such, the claimed porosity does not serve as a special technical feature common to both groups within the meaning of PCT Rule 13.2.
Accordingly, the requirement remains proper because Groups I and II lack a common special technical feature that makes a contribution over the prior art..
The requirement is still deemed proper and is therefore made FINAL.
Claim 1 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/24/2025.
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 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.
Claim(s) 1-4, 6-15 are rejected under 35 U.S.C. 103 as being unpatentable over Besso et al. (US 2008/0230079), and further in view of Sun et al. (US 2010/0170522).
Regarding claim 1, Besso teaches a flavor filler for a smoking article comprising porous cellulose particles that carry flavor material and release flavor during use. Specifically, Besso teaches incorporating porous cellulosic beads into a filter so that flavor is released as air or smoke is drawn through the article (Besso ¶¶[0011]–[0014], [0033]–[0036]). Besso further teaches that the beads are porous and function as carriers for flavor materials, thereby enabling flavor delivery during inhalation (Besso ¶¶[0039]–[0041]).
Besso additionally teaches the use of commercially available porous cellulose beads, including Viscopearl® cellulose beads, as suitable flavor-carrying particles (Besso ¶[0040]). These beads are expressly described as porous and suitable for holding and releasing flavor materials, and the porosity of the beads facilitates uptake and release of flavor during airflow through the smoking article (Besso ¶¶[0036], [0039]–[0041]).
Although Besso does not expressly recite a numerical porosity value, the degree of porosity of the cellulose beads directly affects flavor loading and release performance. Accordingly, porosity is a result-effective variable for the porous cellulose particles taught by Besso.
Selecting a porosity of 40% or more, as recited in claim 1, would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention as a matter of routine optimization to achieve the flavor release performance taught by Besso. (See MPEP § 2144.05.)
Besso does not explicitly teach that a flavor layer is carried on an outer surface of each porous cellulose particle and includes flavor component-containing particles.
Sun, however, discloses particulate flavor delivery granules for smokeless tobacco products, wherein each granule comprises a core and at least one layer formed on the outer surface of the core, the layer including flavor component-containing particles, such as tobacco particles and/or flavorant particles, combined with a binder (Sun ¶¶[0022]–[0024], [0028]–[0033]; FIGS. 1A–1D). Sun further discloses that the flavor-containing particles are carried in the outer layer to control flavor release during consumer use (Sun ¶¶[0054]–[0059]).
Although Sun is directed to smokeless (oral) tobacco products and does not describe inhalation, Besso and Sun are analogous art, as both references are directed to particulate flavor delivery systems and address the same technical problem of how to store flavor on particulate carriers and release it in a controlled manner during use. The structural teachings of Sun regarding surface-carried flavor layers are therefore reasonably pertinent to improving the flavor-carrying cellulose particles taught by Besso. (See MPEP § 2141.01(a)).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porous cellulose particles taught by Besso to include a surface flavor layer containing flavor component-containing particles, as disclosed by Sun, in order to improve control over flavor release from the particles. Such a modification represents the predictable use of a known technique to improve a similar device in the same way. (See MPEP § 2143).
Therefore, Besso in view of Sun teaches or renders obvious all limitations of claim 1.
Claim 2 depends from claim 1 and further recites that the flavor component-containing particles are tobacco particles.
As set forth in the rejection of claim 1, Besso as modified by Sun teaches porous cellulose particles having a flavor layer carried on an outer surface (Besso ¶¶[0035]–[0039]; Sun ¶¶[0022]–[0024]). Sun expressly discloses that the flavor component-containing particles included in an outer layer may comprise tobacco particles (Sun ¶¶[0028]–[0033]).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ tobacco particles as the flavor component-containing particles in the flavor layer of the porous cellulose particles taught by Besso as modified by Sun, since tobacco particles are expressly disclosed as suitable flavor components and represent a predictable selection from a finite number of identified options. (See MPEP § 2144.04).
Claim 3 depends from claim 1 and further recites that the flavor component-containing particles are flavorant particles.
As discussed with respect to claim 1, Besso as modified by Sun teaches a flavor layer carried on the outer surface of particulate structures (Besso ¶¶[0035]–[0039]; Sun ¶¶[0022]–[0024]). Sun further discloses that such flavor layers may include flavorant particles, such as mint or other flavor agents, as an alternative to tobacco particles (Sun ¶¶[0037]–[0040]).
Thus, selecting flavorant particles as the flavor component-containing particles would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as this represents the selection of a known alternative expressly disclosed for the same purpose within Besso as modified by Sun. (See MPEP § 2143).
Claim 4 depends from claim 1 and further recites that the porous cellulose particles each have a porosity of 50% or more.
As set forth above, Besso as modified by Sun teaches porous cellulose particles used as carriers for flavor materials (Besso ¶¶[0035]–[0041]). The degree of porosity of such particles directly affects flavor loading and release characteristics and therefore constitutes a result-effective variable.
Selecting a porosity of 50% or more, which represents a higher value within the same general porosity regime already rendered obvious by claim 1, would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention as a matter of routine optimization to improve known performance characteristics. (See MPEP § 2144.05).
Claim 6 further recites that the flavor component-containing particles have an average particle diameter larger than an average pore diameter of the porous cellulose particles.
Besso teaches porous cellulose particles having internal pores configured to receive and retain flavor component-containing particles (Besso ¶¶[0035]–[0039]). Besso further teaches that the porous structure of the cellulose particles is selected to hold flavor components while permitting controlled release (Besso ¶¶[0037]–[0038]).
Sun discloses controlling the relationship between particle size and structural dimensions in porous and particulate systems to ensure retention and proper placement of particles within a matrix (Sun ¶¶[0026], [0037]–[0039]). Sun teaches that particle size selection relative to surrounding structures directly affects whether particles are retained or pass through the structure.
From these teachings, it would have been understood by one of ordinary skill in the art that, in order for the flavor component-containing particles to be retained by the porous cellulose particles of Besso, the average pore diameter must be smaller than the average particle diameter of the flavor component-containing particles. Selecting such a size relationship represents optimization of a result-effective variable to achieve predictable retention behavior.
Accordingly, claim 6 is unpatentable under 35 U.S.C. § 103 as being obvious over Besso in view of Sun (see MPEP §§ 2143, 2144.05).
Claim 7 further limits the relative sizing relationship between the porous cellulose particles and the flavor component-containing particles.
As discussed with respect to claim 6, Besso teaches porous cellulose particles designed to receive and retain flavor component-containing particles within internal pores (Besso ¶¶[0035]–[0039]). Sun further discloses that adjusting particle size relative to structural features is a known and predictable design consideration to control particle retention and release in particulate systems (Sun ¶¶[0026], [0037]–[0039]).
Further specifying or refining the size relationship between particle diameter and pore diameter, as recited in claim 7, would have been an obvious matter of routine optimization, since relative sizing directly governs retention and release behavior in porous materials and yields predictable results.
Accordingly, claim 7 is unpatentable under 35 U.S.C. § 103 as being obvious over Besso in view of Sun (see MPEP §§ 2143, 2144.05).
Claim 8 depends from claim 1 and recites that the porous cellulose particles have an average particle diameter of 300 to 2000 μm.
As set forth above, Besso teaches using porous cellulose particles as carriers for a flavor layer (Besso ¶¶[0035]–[0037]). While Besso does not expressly recite a numerical particle size range for the porous cellulose particles, Besso teaches selecting particle size to achieve desired flavor loading and release characteristics (Besso ¶¶[0038]–[0039]).
Sun discloses smokeless tobacco granules having particle diameters that overlap with and encompass the claimed range. Specifically, Sun discloses granules having diameters of between 500 micrometers and 5 millimeters (500–5000 μm) (Sun ¶[0026]). This expressly includes granules having diameters within the claimed range of 300 to 2000 μm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select porous cellulose particles of modified Besso having an average particle diameter within the claimed range, as disclosed by Sun, as this represents a routine selection from a known and disclosed particle size range to achieve predictable handling and flavor release behavior (MPEP § 2144.05).
Claim 9 depends from claim 1 and recites that the porous cellulose particles have an average pore diameter of 0.3 to 1000 μm.
Besso teaches porous cellulose particles having internal pore structures capable of receiving flavor components (Besso ¶¶[0035]–[0037]). Besso further teaches that pore characteristics affect flavor loading and release (Besso ¶[0038]).
Sun discloses that tobacco particles used in granules may have average particle diameters of less than 100 micrometers, including specific examples where tobacco particles have average diameters of about 27 micrometers and about 120 micrometers (Sun ¶[0026]). These particle sizes correspond to structural dimensions that inherently fall within the claimed 0.3 to 1000 μm range recited for pore diameters.
Further, Sun teaches that controlling internal structural dimensions (including voids and interstitial spaces formed by particle packing and binders) is a known design consideration for granules to control release behavior (Sun ¶¶[0037]–[0039]).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select pore diameters within the claimed range when practicing modified Besso, as such dimensions fall squarely within the sizes disclosed and routinely manipulated in Sun (MPEP § 2144.05).
Claim 10 depends from claim 1 and recites that the flavor component-containing particles have an average particle diameter of 0.3 to 1000 μm.
Besso teaches flavor component-containing particles applied to porous cellulose particles to form a flavor layer (Besso ¶¶[0035]–[0039]).
Sun expressly discloses tobacco and flavorant particles having particle sizes that fall entirely within the claimed range. In particular, Sun discloses tobacco particles having average particle diameters of less than 100 micrometers, including specific examples of about 27 micrometers and about 120 micrometers (Sun ¶[0026]). Sun further teaches that flavorants and additives may be provided in particulate form suitable for coating and layering processes (Sun ¶¶[0037]–[0039]).
Thus, Sun expressly discloses flavor component-containing particles having average particle diameters within the claimed range of 0.3 to 1000 μm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select flavor component-containing particles of modified Besso having particle sizes within the claimed range, as disclosed by Sun, since such selection represents routine optimization of a known result-effective variable (MPEP § 2144.05).
Claim 11 depends from claim 1 and further recites a barrier layer on the flavor layer.
As discussed with respect to claim 1, Besso teaches porous cellulose particles carrying flavor components and controlling flavor release through layered particulate structures (Besso ¶¶[0035]–[0039]).
Sun discloses tobacco granules comprising multiple layers, including outer layers surrounding inner flavor-containing regions, where the layers may include binders and functional materials that control release and separation of components (Sun ¶¶[0006]–[0008], [0012], [0016]–[0019], [0028]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a barrier layer on the flavor layer of modified Besso as disclosed by Sun, in order to control flavor release and interaction between layers, which is a predictable use of known layered particulate structures (MPEP §§ 2141, 2143).
Claim 12 depends from claim 11 and recites that the barrier layer includes a binder but is free from a flavor-contributing substance.
Sun expressly discloses layers containing binders without flavorants, where binders are used to form and maintain layer integrity while flavor components are located in other layers (Sun ¶¶[0009]–[0012], [0028], [0030]).
Thus, providing a binder-containing, non-flavor barrier layer in modified Besso is an obvious design choice consistent with Sun’s layered granule structures (MPEP § 2143).
Claim 13 depends from claim 11 and recites that the barrier layer includes a flavor-contributing substance that provides a flavor different from the flavor of the flavor component-containing particles.
Sun discloses multi-layer granules in which different layers include different flavorants, allowing sequential or distinct flavor delivery from separate layers (Sun ¶¶[0037]–[0039], [0054]–[0056]).
Accordingly, modifying Besso to include a barrier layer that provides a different flavor than the underlying flavor layer would have been obvious to achieve predictable flavor differentiation (MPEP §§ 2141, 2144).
Claim 14 depends from claim 13 and recites that:
the flavor component-containing particles are first tobacco particles, and
the flavor-contributing substance is second tobacco particles different from the first tobacco particles or flavorant particles.
Sun discloses tobacco granules incorporating multiple tobacco particle populations, including tobacco particles differing in composition, processing, or flavor contribution, as well as flavorant particles in separate layers (Sun ¶¶[0006]–[0008], [0037]–[0039]).
Selecting different tobacco particle populations or substituting flavorant particles in different layers represents a predictable variation using known tobacco materials (MPEP § 2144.05).
Claim 15 depends from claim 13 and recites that:
the flavor component-containing particles are first flavorant particles, and
the flavor-contributing substance is tobacco particles or second flavorant particles different from the first flavorant particles.
As noted above, Besso teaches flavorant-carrying cellulose particles (Besso ¶¶[0035]–[0039]), and Sun discloses layered granules including different flavorants and tobacco particles in separate layers to provide distinct flavor profiles (Sun ¶¶[0037]–[0039], [0054]–[0056]).
Thus, selecting different flavorant or tobacco particles for different layers in modified Besso would have been obvious as a predictable design choice (MPEP §§ 2143, 2144).
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Besso et al. (US 2008/0230079) and Sun et al. (US 2010/0170522) as applied to claim 1 above, and further in view of Hejazi (US 2021/0169140).
Claim 5 further recites “wherein each of the porous cellulose particles has a plurality of pores extending radially from a center of each of the porous cellulose particles toward the outer surface thereof.”
Besso, as modified by Sun, teaches porous cellulose particles having defined porosity and pore size relationships suitable for containing flavor components (Besso ¶¶[0035]–[0039]; Sun ¶¶[0022]–[0024]).
However, Besso in view of Sun does not explicitly describe the internal orientation of the pores within the porous cellulose particles, specifically whether the pores extend radially from a center of the particle toward the outer surface.
Morimoto teaches a method of manufacturing porous cellulose beads in which coagulation of a cellulose solution produces beads having a plurality of pores distributed throughout the interior of each bead and extending from an interior region toward the outer surface (Morimoto, col. 3, ll. 1–20; col. 6, ll. 1–15).
In particular, FIG. 7 of Morimoto is a scanning electron micrograph showing a cross-section of a cellulose bead having numerous pores extending outwardly from the interior region of the bead toward the bead surface, evidencing a radially extending pore structure (Morimoto, FIG. 7; col. 6, ll. 1–15). Morimoto further explains that the coagulation process forms porous cellulose beads with pores uniformly distributed throughout the bead to provide desired functional characteristics (Morimoto, col. 2, ll. 35–55).
Morimoto is in the same field of endeavor or at least reasonably pertinent to the same problem as Besso and Sun because all references relate to porous cellulose particles or beads and their internal pore structures. Morimoto specifically addresses how pore morphology is formed within cellulose beads during manufacture, which is directly relevant to the structure of the porous cellulose particles taught by Besso (Morimoto, col. 1, ll. 10–25; col. 2, ll. 35–55). A person of ordinary skill in the art seeking to control or define pore structures in porous cellulose particles would reasonably look to Morimoto for known cellulose bead pore configurations (see MPEP § 2141.01(a)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the porous cellulose particles of Besso, as modified by Sun, to have the radially extending pore structure taught by Morimoto, because Morimoto teaches a known and predictable internal pore morphology for porous cellulose beads formed by coagulation. Applying Morimoto’s pore structure to the porous cellulose particles of Besso would have been a routine design choice to achieve a predictable internal pore configuration within porous cellulose particles (see MPEP § 2143).
Accordingly, claim 5 is unpatentable under 35 U.S.C. § 103 as being obvious over Besso in view of Sun and further in view of Morimoto.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
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/JENNIFER A KESSIE/Examiner, Art Unit 1747