DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/12/2025 has been entered.
Response to Amendment
This office action is in response to Applicant’s amendment filed 12/8/2025.
Claim 1 is amended.
Claim 18 is cancelled.
Claim 21 is newly added.
Claims 1-17 and 19-21 are pending.
Response to Arguments
Applicant's arguments filed 12/8/2025 have been fully considered but they are not persuasive.
Applicant argues that Oliver, Chida, Washington, De Roos, Zhang, Mishra, and Ergle, considered alone or in combination, fail to disclose or suggest the claimed combination of claim 1, including “the second aqueous solution including greater than or equal to 7 weight percent to less than or equal to 10 weight percent of the metal cations” (p. 7). Applicant further notes that Oliver provides a multivalent cation solution of 4-6% by weight calcium chloride (p. 7).
The Examiner agrees with Applicant’s characterization of Oliver, but disagrees that none of the cited references teach the claimed limitation. First, Washington teaches that aqueous solution of a calcium compound forms a solution concentration of about 5 weight percent or higher (col. 2, ll. 41-45). Second, De Roos teaches that calcium ions in the concentration range of 1-10% by weight are preferred multivalent cations for gelation of alkali metal alginate, pectin and gellan gum because of their high effectiveness, low costs and low toxicity (col. 8, ll. 32-35). Therefore, one of ordinary skill in the art would be motivated to modify Oliver’s multivalent cation solution to have a concentration range of 1-10% as in De Roos or 5% or higher as in Washington because such a modification (a) involves mere optimization within prior art conditions and (b) is highly effective, lowers costs, and lowers toxicity. The concentration range of 1-10% and 5% or higher overlaps the claimed range of “greater than or equal to 7 weight percent to less than or equal to 10 weight percent.” In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Applicant argues that the nonstatutory double patenting rejection is traversed for the same reasons above (p. 8).
The Examiner finds Applicant’s argument unpersuasive because both Washington and De Roos teach a second aqueous solution having greater than or equal to 7 weight percent to less than or equal to 10 weight percent of metal cations (see above).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
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 factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Claims 1-3, 5-7, 9-11, 13-17 and 19-21 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Oliver (US 2003/0029466; of record) evidenced by Chida et al. (US 2009/0235941; of record) and in view of Washington (US 5221502; of record) or De Roos et al. (US 6,325,859; of record).
Regarding claim 1, Oliver discloses a process for the manufacture of a homogeneous fibriform element (“encapsulated component”) for a smoking article (abstract) comprising:
heating a mixture to an elevated temperature of, for example, 45 °C ([0010]; “temperature to melt the additive”), the mixture comprising a solution of a polysaccharide ([0006]; “first aqueous solution including a polysaccharide”) and smoke-modifying agent ([0006]; “additive”), wherein the smoke-modifying agent is menthol ([0031]; see also Abstract);
continuously stirring the mixture whilst at the elevated temperature ([0010]; “preparing an emulsion using the first heated aqueous solution;” see also [0009], describing the non-solid mixture may take the form of a dispersion or an emulsion); and
jetting the mixture from nozzle means ([0011]; “extruding the emulsion”) into a body of solution containing multivalent cations ([0011]; “second aqueous solution including metal cations”) to effect solidification of the mixture ([0006], [0011]; “form the encapsulated component”),
In one example, Oliver discloses the multivalent cation solution being an aqueous solution of 4-6% by weight calcium chloride ([0041]).
Regarding the claim limitation “heating…to a temperature to melt the additive,” Chida evidences that menthol has a melting point of 42 °C ([0031]). Therefore, heating Oliver’s menthol to a temperature of 45 °C, which is higher than menthol’s melting point, will result in melting the menthol.
However, Oliver is silent as to the first aqueous solution including greater than or equal to about 2 weight percent to less than or equal to about 7 weight percent of the polysaccharide Particularly, Oliver does not disclose how much of the polysaccharide is present in the mixture of polysaccharide and smoke-modifying agent. Moreover, Oliver is silent as to the second aqueous solution including greater than or equal to 7 weight percent to less than or equal to 10 weight percent of the metal cations. While Oliver discloses an exemplary range of 4-6 calcium chloride, Oliver does not teach the suitable range of the calcium chloride solution in the broader disclosure.
Washington teaches a process for making flavorant-release filaments (title) comprising extruding an aqueous mixture of flavorant compound and polysaccharide binder in an aqueous solution (col. 2, ll. 13-22) and contacting the extruded filament with an aqueous calcium compound to convert sodium alginate into insoluble calcium alginate to encapsulate the flavorant (col. 2, ll. 22-26), wherein the polysaccharide binder is incorporated in a quantity of about 0.5-5 weight percent of the aqueous mixture and is selected from water-soluble or water-dispersible polysaccharides such as pectin and alginate (col. 2, ll. 31-37), and the aqueous solution of calcium compound is about 5 weight percent or higher (col. 2, ll. 41-45).
It would have been obvious to one of ordinary skill in the art at the time of the claimed invention to have (1) modified the concentration of the polysaccharide in Oliver to be about 0.5-5% as in Washington and (2) modified the concentration of the calcium chloride in Oliver to be greater than 5% as in Washington because such a modification involves mere optimization within prior art conditions. “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” MPEP 2144.05(II)(A). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Moreover, De Roos teaches a method for preparing beads containing at least one active ingredient, such as a flavor or fragrance (abstract) comprising encapsulating the flavors in a heat stable polysaccharide matrix (col. 5, ll. 3-12) by dripping an emulsion consisting of the flavoring and alkali metal alginate into an aqueous solution to multivalent cations (col. 5, ll. 43-58), wherein the particles of the invention can have different shapes varying from round beads to long fibers (col. 6, ll. 7-12), and the particles are formed from an alkali metal alginate, especially sodium alginate, which is dissolved in water to produce a solution containing about 1 and 10% by weight of the alginate, wherein concentrations of alginate below about 0.5% by weight are increasingly ineffective in producing defect free microbeads, and alginate concentrations above 10% by weight are often too viscous to allow formation of small beads of uniform size (col. 6, ll. 21-31), and wherein the calcium ions are in the concentration range of 1-10% for gelation of the alkali metal alginate, pectin, and gellan gum because of their high effectiveness, low costs, and low toxicity (col. 8, ll. 32-35).
Therefore, De Roos teaches that the concentration of polysaccharides, such as alginate, in forming encapsulated particles is a result-effective variable in which (a) too low of a concentration would affect the number of defects in the particles and (b) too high of a concentration would affect the viscosity of the solution, which consequently affects the formation of uniformly sized particles.
Alternatively, it would have been obvious to said skilled artisan to have changed the amount of polysaccharide in the solution, such as in an amount of about 1% to 10% by weight as in De Roos, to obtain various amounts defects in the final particle (if the concentration is too low) and viscosities affecting uniform size of the particles (if the concentration is too high) because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 II(B). See MPEP 2144.05(I). Furthermore, it would have been obvious to said skilled artisan to have modified Oliver’s calcium chloride solution to be in an amount of 1-10% as in De Roos because such a modification involves mere optimization within prior art conditions and such a modification is highly effective, lowers costs, and lowers toxicity for the gelation of alkali metal alginates and pectins (De Roos, col. 8, ll. 32-35). “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” MPEP 2144.05(II)(A). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claim 2, modified Oliver discloses the mixture comprises the solution of the polysaccharide and the smoke-modifying agent ([0006]; “contacting the additive and the polysaccharide”).
Regarding claim 3, modified Oliver discloses winding the solidified fibriform element onto a rotating drum ([0018]) and placed in an oven ([0020]; “removing the encapsulated component from the second aqueous solution”).
Regarding claim 5, modified Oliver discloses that the oven is set a pre-determined temperature to dry the fibriform element ([0020]).
Regarding claim 6, modified Oliver discloses wherein the fibriform element uses air drying means for a pre-determined period of time and temperature ([0020]).
However, Oliver is silent as to air drying the encapsulated component for 8 hours to 16 hours.
Washington further teaches wherein the filament is subjected to drying conditions to remove water from the filament matrix (col. 2, ll. 26-27).
Thus, drying conditions like time and temperature are result-effective variables that affect the water content in the filament matrix.
It would have been obvious to one of ordinary skill in the art at the time of the claimed invention to have to change the amount of time and temperature for air drying to obtain various amounts water because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 II(B).
Regarding claim 7, modified Oliver discloses incorporating the fibriform element into a rod of tobacco (51) of a smoking article ([0038]; see also Fig. 6).
Regarding claim 9, modified Oliver discloses the polysaccharide may be an alginate, pectin, or carrageenan ([0025]).
Regarding claims 10-11, modified Oliver discloses the menthol ([0031]; “flavorant is menthol”).
Regarding claims 10 and 13, modified Oliver discloses using plasticizers such as glycerol and/or propylene glycol ([0022]).
Regarding claim 14, modified Oliver discloses the fibriform component (2) being an elongated structure having a length that is larger than a thickness (Fig. 6).
Regarding claim 15, modified Oliver discloses the fibriform structure is a strand (see Fig. 6).
However, modified Oliver is silent as to a solid shell having an average thickness of 10 to 50 micrometers.
Washington further teaches a cigarette product containing an encapsulated flavorant-release filament wherein menthol is encapsulated in a filament of pectin or alginate (Column 2, lines 34-36 and 46-48) having a coextensive sheath coating or outer solid shell of calcium alginate having a thickness ranging between about 5 microns and about 20 microns (Column 2, lines 55-63) to control the release of the flavorant under normal smoking conditions (Column 3, lines 14-16).
It would have been obvious to said skilled artisan to have added Washington’s a solid shell having a thickness between about 5 microns and about 20 microns to Oliver’s fibriform element because the modification would ensure that there is essentially no migration of a volatile-type flavorant during storage (Washington; Column 3, lines 36-38). Moreover, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 16, modified Oliver further discloses the fibriform element is of a constant circular cross-section and will have a diameter of preferably not exceeding about 1 mm ([0028]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 17, modified Oliver discloses the solution containing multivalent cation may be calcium and aluminum ([0026]).
Regarding claim 19, modified Oliver discloses continuously stirring the mixture whilst at an elevated temperature ([0010]; “homogenizing”) to form the emulsion such that the fibriform element is homogeneous ([0006]).
Regarding claim 20, modified Oliver discloses jetting (“extruding”) the mixture through a nozzle means (“one or more orifices”) into a body of the solution containing multivalent cation (“adjacent to a surface of the second aqueous solution”) ([0011]).
Regarding claim 21, modified Oliver discloses the multivalent cation may be calcium ions ([0026]), and wherein the plasticizers includes glycerol ([0022]; glycerol is the same compound as “glycerine”).
Modified Oliver further discloses that the polysaccharide may be gellan gum ([0025]).
However, modified Oliver is silent as to the metal cation in the second aqueous solution includes sodium, potassium, magnesium or any combination thereof.
De Roos further teaches that instead of sodium alginate and low ester pectin, gellan gum may also be used, wherein gellan gum forms gels with several counter ions of which the divalent ions, such as calcium and magnesium, to give maximum gel hardness (col. 6, l 66-col. 7, l. 6).
It would have been obvious to said skilled artisan to have substituted Oliver’s calcium ions for De Roos’s magnesium ions to obtain the predictable result of gelling gellan gum because (a) calcium and magnesium are equivalents known for the same purpose of gelling gellan gum (De Roos; col. 6, l. 66-col. 7 l. 6) and (b) such a modification would yield a gel having maximum hardness (De Roos; col. 6, l. 66-col. 7, l. 6), thus allowing one of skill in the art to tailor the hardness of the fibriform element.
Claim 4 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Oliver as evidenced by Chida et al. and in view of Washington or De Roos et al. as applied to claim 3 above, and in further view of Zhang (US 2010/0294290; of record).
Regarding claim 4, modified Oliver discloses the method as discussed above with respect to claim 3, wherein the solidified fibriform element is wound onto a rotating drum ([0018]) and placed in an oven ([0020]; “removed”).
However, Oliver is silent as to the encapsulated component is removed from the second aqueous solution 30 minutes after extruding.
Zhang teaches a method for manufacturing breakable capsule (abstract) it has been discovered that one disadvantage of using single ionic baths for manufacturing breakable gel capsules is the difficulty in controlling gelling time, hardness, and thickness of the outer layer of the capsules ([0014]), wherein the method control the gelling time using a novel two-step process ([0015]), wherein the coating composition uses alginates ([0018]; i.e., a polysaccharide) and multivalent ions ([0018]) such that a first multivalent ion solution using calcium ions in a concentration of less than about 5%, more preferably less than about 3%, and most preferably less than about 1% ions ([0019]; “second aqueous solution”) and maintaining droplets of the coating composition in the first solution for less than about 30 minutes ([0019]; includes “30 minutes”) and using a second multivalent ion solution having a concentration of more than about 5% for more than about 1 hour ([0020]).
It would have been obvious to one of ordinary skill at the time of the claimed invention to have applied Zhang’s two-step gelling method, including gelling an alginate solution in a concentration of less than about 5% calcium ions for less than about 30 minutes, to Oliver’s solidification step in order to obtain the predictable result of hardening polysaccharide compositions by controlling the gelling time, thickness and hardness of the capsules in order to form breakable capsules without disadvantages of single phase gelling methods (Zhang; [0014]-[0015]). Moreover, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Claim 8 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Oliver as evidenced by Chida et al. and in view of Washington or De Roos et al. as applied to claim 7 above, and in further view of Mishra et al. (US 2006/0144412; of record).
Regarding claim 8, modified Oliver discloses the method as discussed above with respect to claim 7.
However, Oliver is silent as to washing the encapsulated component, after the drying and before the incorporating of the encapsulated component into the filter, the rod, or both the filter and the rod, using a third aqueous solution.
Mishra teaches a method of making encapsulated additives (title) comprising a first step of co-ionic cross-linking (CICL) to form encapsulated additives ([0033], [0040]) which are then rinsed ([0040]) and dried ([0041]) and an additional step of step-growth overcoating or step-growth layer (SGO) in which one or more shell layers is formed on an outer surface of an encapsuled additive ([0059]; Fig. 3) such that the encapsulated additive is then partially coated with another multivalent cation solution (340) followed by placing into a secondary reactive solution (360) (either the multivalent cation solution or secondary reactive solution are considered “washing the encapsulated component”) to form shell layers (380; [0063]) before incorporating into a tobacco mat ([0066]).
It would have been obvious to one of ordinary skill in the art at the time of the claimed invention to have added the SGO step in Mishra to the fibriform element of Oliver in order to obtain the predictable result of forming additional shell layers with the benefit of providing different polymers with complementary properties to increase resistance of migration of additives from the encapsulation by filling naturally occurring voids and/or fissures in the fibriform element (Mishra; [0065]).
Claim 12 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Oliver as evidenced by Chida et al. and in view of Washington or De Roos et al. as applied to claim 11 above, and in further view of Ergle et al. (US 2009/0038629; of record).
Regarding claim 12, modified Oliver discloses the method as discussed above with respect to claim 11.
However, modified Oliver is silent as to heating to a temperature of about 60°C.
Ergle teaches a flavoring bearing sheet (abstract) which are prepared from solutions or emulsions comprising a film-coagulating material, volatile flavorants, and a solvent ([0044]), wherein the film-coagulating material may be natural polymers and derivatives thereof ([0014]) such as alginate, carrageenan, and pectin ([0031]; i.e., polysaccharides), wherein the volatile flavorants include menthol ([0011]), and solvents include protic solvents such as water ([0044]), wherein the film-forming coagulating materials and volatile flavorants may be added to the solvent in any order and stirred or agitated in order to achieve a homogenous solution or emulsion ([0044]) and wherein heating may be employed to increase solubility or dispersibility of poorly miscible components using a temperature of about 40 to 60 °C ([0044]).
It would have been obvious to one of ordinary skill in the art at the time of the claimed invention to have heated the mixture Oliver containing water, polysaccharide, and flavoring to a temperature of 40 to 60 °C as in Ergle to in order to increase solubility of dispersibility of the components in the solvent (Ergle; [0044]). Moreover, In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5-12, 14-17 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 9,034,107 in view of Washington (US 5221502; of record) or De Roos et al. (US 6,325,859). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, the copending application recites a method for providing an encapsulated flavorant or chemesthetic agent in a smoking article comprising:
(a) forming a mixture comprising: (i) a first aqueous solution comprising one or more cross-linkable polysaccharides; and (ii) a hydrophobic additive; heating the mixture until the hydrophobic additive is melted;
(c) processing the mixture to form an emulsion; and
(d) extruding said emulsion into a second aqueous solution comprising one or more metal cation; (e) cross-linking at least a portion of said one or more cross-linkable polysaccharides, thereby forming a cross-linked elongated structure (claim 1; claim 21).
The claims differ in that the conflicting claims include additional steps and limitations that are not included in the rejected claim. However, the conflicting claims include each and every limitation of the rejected claim and therefore make obvious the method of claim 1.
Moreover, the copending application is silent as to the first aqueous solution including greater than or equal to about 2 weight percent to less than or equal to about 7 weight percent of polysaccharide and that the second aqueous solution including greater than or equal to about 7 weight percent to less than or equal to about 10 weight percent of the metal cations.
Washington teaches a process for making flavorant-release filaments (title) comprising extruding an aqueous mixture of flavorant compound and polysaccharide binder in an aqueous solution (col. 2, ll. 13-22) and contacting the extruded filament with an aqueous calcium compound to convert sodium alginate into insoluble calcium alginate to encapsulate the flavorant (col. 2, ll. 22-26), wherein the polysaccharide binder is incorporated in a quantity of about 0.5-5 weight percent of the aqueous mixture and is selected from water-soluble or water-dispersible polysaccharides such as pectin and alginate (col. 2, ll. 31-37), and the aqueous solution of calcium compound is about 5 weight percent or higher (col. 2, ll. 41-45).
It would have been obvious to one of ordinary skill before the date of the claimed invention to have modified the concentration of the polysaccharide in the copending application to be about 0.5-5% as in Washington and modified the aqueous solution of calcium compound in the copending application to be about 5 weight percent or higher as in Washington because such a modification involves mere optimization within prior art conditions. “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” MPEP 2144.05(II)(A). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Moreover, De Roos teaches a method for preparing beads containing at least one active ingredient, such as a flavor or fragrance (abstract) comprising encapsulating the flavors in a heat stable polysaccharide matrix (col. 5, ll. 3-12) by dripping an emulsion consisting of the flavoring and alkali metal alginate into an aqueous solution to multivalent cations (col. 5, ll. 43-58), wherein the particles of the invention can have different shapes varying from round beads to long fibers (col. 6, ll. 7-12), and the particles are formed from an alkali metal alginate, especially sodium alginate, which is dissolved in water to produce a solution containing about 1 and 10% by weight of the alginate, wherein concentrations of alginate below about 0.5% by weight are increasingly ineffective in producing defect free microbeads, and alginate concentrations above 10% by weight are often too viscous to allow formation of small beads of uniform size (col. 6, ll. 21-31), and wherein the calcium ions are in the concentration range of 1-10% for gelation of the alkali metal alginate, pectin, and gellan gum because of their high effectiveness, low costs, and low toxicity (col. 8, ll. 32-35).
Therefore, De Roos teaches that the concentration of polysaccharides, such as alginate, in forming encapsulated particles is a result-effective variable in which (a) too low of a concentration would affect the number of defects in the particles and (b) too high of a concentration would affect the viscosity of the solution, which consequently affects the formation of uniformly sized particles.
Alternatively, it would have been obvious to said skilled artisan to have modified the amount of the metal cations of the copending application to be a calcium ion having a concentration of 1-10% as in De Roos because to increase effectiveness, lower the costs, and lower the toxicity of the product (De Roos; col. 8, ll. 32-35). Moreover, it would have been obvious to said skilled artisan to have changed the amount of polysaccharide in the copending application to be about 1% to 10% by weight as in De Roos to avoid forming encapsulated microbeads with defects and form small beads of a uniform size (De Roos; col. 6, ll. 21-31). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 2, the copending application recites forming a mixture comprising one or more cross-linkable polysaccharides and a hydrophobic additive (claim 1; necessarily includes contacting the additive and the polysaccharide).
Regarding claim 3, the copending application recites (f) removing said cross-linked elongated structure from said second aqueous solution (claim 1).
Regarding claim 5, the copending application recites further including drying said cross-linked elongated structure (claim 19).
Regarding claim 6, the copending application recites wherein the drying step includes air-drying said cross-linked elongated structure for about 8 hours to about 16 hours (claim 20).
Regarding claim 7, the copending application recites (g) introducing said cross-linked elongated structure into a filter or into a rod comprising a smoking composition, or both (claim 1).
Regarding claim 8, the copending application recites washing said cross-linked elongated structure in an aqueous liquid (claim 2).
However, the copending application does not recite that the washing occurs after drying but before the incorporating.
It would have been obvious to one ordinary skill in the art to have change the sequence of the washing, drying, and incorporating steps because the “selection of any order of performing process steps if prima facie obvious in the absence of new or unexpected results.” MPEP 2144.04(IV)(C).
Regarding claim 9, the copending application recites wherein the one or more cross-linkable polysaccharides is elected from the group consisting of pectins, alginates, carrageenans, and combinations thereof (claim 5).
Regarding claim 10, the copending application recites a the hydrophobic additive comprising one or more flavorant or chemesthetic agent (claim 1).
Regarding claim 11, the copending application recites said one or more flavorants or chemesthetic agents comprise menthol (claim 14).
Regarding claim 12, the copending application recites heating to a temperature of about 60 °C (claim 22).
Regarding claim 14, the copending application recites extruding…in the form of an elongated structure (claim 1; necessarily has a length that is larger than a thickness).
Regarding claim 15, the copending application recites said elongated structure is a strand h (claim 11) having solid shell has a thickness ranging between about 10 µm to 50 µm (claim 13).
Regarding claim 16, the copending application recites said elongated structure is a strand having an average diameter of 0.5 to about 1.5 mm (claim 11).
Regarding claim 17, the copending application recites said monovalent metal cations comprise potassium cation, said divalent metal cations comprise calcium cations, and said trivalent metal cations comprise aluminum cations (claim 7).
Regarding claim 19, the copending application recites said forming of said emulsions comprises homogenizing a mixture of said aqueous solution and said hydrophobic additive (claim 9).
Regarding claim 20, the copending application recites wherein said extruding comprises causing said emulsion to flow through one or more orifices disposed at or adjacent to a surface of said second aqueous solution (claim 17).
Conclusion
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755