DETAILED ACTION
Response to Arguments
Applicant's arguments filed 7/15/2026 have been fully considered but they are not persuasive. Applicant argues “as indicated in Table 1 of U.S. Pat. 10,334,873, Examples 8-17 exhibit good capsule formation properties compared to shell compositions with agar but lacking carboxymethyl cellulose (Examples 1-5) or lacking carboxymethyl cellulose and locust bean gum (Examples 6 and 7). Therefore, U.S. Pat. 10,334,873 evidences the unpredictable nature of the particular combination and the Office's asserted rationale of predictability, is inapplicable.” The Examiner disagrees. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In this case, the evidence is not commensurate in scope with the claims as the claims are silent to any concentrations of the components while the evidence requires specific concentrations. In addition, evidence of unexpected results must compare the claimed invention with the closest prior art. See MPEP 716.02(e). In this case, Hartmann teaches a capsule shell comprising carboxymethyl cellulose. However, the evidence compares the claimed invention with a capsule shell that lacks carboxymethyl cellulose. The evidence does not compare the claimed invention with the closest prior art.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 11, 14, 17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hartmann (US 2009/0050163) in view of Carpenter (US 2011/0271968).
Regarding claim 1, Hartmann teaches a pressure sensitive capsule, for use in a delivery system of a smoking article [0001-0002], the pressure sensitive capsule comprising: a core material including a flavorant [0038], an outer shell including agar [0024] and carboxymethyl cellulose [0034]. Hartmann discloses a curing step [0051], which would harden the shell, and thus the agar shell is interpreted as a cross-linked matrix. Carboxymethyl cellulose filler solidifies the shell and makes it physically more resistant [0034], which is interpreted as the cross-linked agar matrix is reinforced with carboxymethyl cellulose dispersed throughout the agar matrix. Hartmann does not teach locust bean gum. However, it is known in the art to use both locust bean gum and agar as capsule shell materials, as taught by Carpenter [0016]. It would have obvious to one of ordinary skill in the art to combine one known shell forming material, locust bean gum, with another known shell forming material, agar, in the capsule of Hartman to achieve predictable results. It is prima facie obvious to combine art recognized equivalents intended for the same purpose, see MPEP 2144.06.
Regarding claim 2, Hartmann does not teach xanthan gum. However, it is known in the art to use both xanthan gum and agar as capsule shell materials, as taught by Carpenter [0016]. It would have obvious to one of ordinary skill in the art to combine one known shell forming material, xanthan gum, with another known shell forming material, agar, in the capsule of Hartman to achieve predictable results. It is prima facie obvious to combine art recognized equivalents intended for the same purpose, see MPEP 2144.06.
Regarding claim 3, Hartmann teaches the filler further comprises HPMC or dextrin [0034].
Regarding claim 4, Hartmann teaches the capsule is a spherical capsule [0058].
Regarding claim 5, Hartmann teaches the capsule has a crush strength of 0.6 to 2.4 kp [0020], or 5.9 to 24 Newtons (1 kp = 9.8 Newtons), overlapping the claimed range.
Regarding claim 6, Hartmann teaches the flavorant includes menthol [0064].
Regarding claim 7, Hartmann teaches the capsule is provided in a smoking article filter [0044]. The capsule is in a cavity of the filter [0084], i.e. in filter material of the filter. Hartmann does not specifically teach the filter comprises plug wrap surrounding filter material and the capsule is embedded in a filter segment including filter tow and the plug wrap surrounding the filter tow. Carpenter teaches a smoking article filter comprises a plug wrap surrounding filter material [0033]. It would have been obvious to one of ordinary skill in the art to surround the filter material of Hartmann with a plug wrap to achieve the predictable result of providing a wrapped filter ready read for use in a smoking article.
Regarding claim 8, Hartmann teaches a smoking article comprising the filter [0001].
Regarding claim 11, Hartmann teaches coffee flavorant [0042].
Regarding claim 14, Hartmann teaches an outer coating is optional [page 6, claim 28]. Thus, Hartmann is interpreted on reading an outer shell that is free of an outer coating.
Regarding claim 17, Hartmann teaches the capsule has an outer diameter of 3 to 5 mm [0023].
Regarding claim 19, Hartmann does not teach the core material includes solid particles. Carpenter teaches a capsule payload may include a liquid or a dry powder (solid particles) [0047]. It would have been obvious to include solid particles in the core material of modified Hartmann to achieve the predictable result of further flavoring or modifying the smoke.
Regarding claim 20, Hartmann teaches the outer shell is seamless [0047].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hartmann and Carpenter as applied to claim 8 above, and further in view of Beard (US 2012/0255569).
Modified Hartmann does not teach a heat sensitive capsule. Beard teaches a smoking article filter comprising multiple capsules containing flavorant [0069, 0074], wherein the capsules can be pressure sensitive or alternatively formed of a material that ruptures due to an increase in temperature associated with the passage of the smoke (heat sensitive) [0072]. It would have been obvious to one of ordinary skill in the art further include a heat sensitive capsule in the smoking article filter of modified Hartmann to achieve the predictable result of further flavoring or modifying the smoke. It is prima facie obvious to combine art recognized equivalents known for the same purpose, see MPEP 2144.06. In this case, pressure sensitive capsules and heat sensitive capsules are art recognized equivalents known for the same purposes of releasing an additive into the smoke.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hartmann and Carpenter as applied to claim 1 above, and further in view of Sahlen (US 20170280764).
Modified Hartmann does not teach the outer shell further includes sodium chloride. Sahlen teaches a microcapsule wherein sodium chloride helps prevent flavorant leakage during storage and prior to use [0049]. It would have been obvious to one of ordinary skill in the art to include sodium chloride in the outer shell of modified Hartmann to help prevent flavorant leakage during storage and prior to use as suggested by Sahlen.
Claims 12-13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Hartmann and Carpenter as applied to claim 1 above, and further in view of Pilch (US 2008/0292692).
Hartmann does not specify whether the carboxymethyl cellulose is a continuous or discontinuous phase of material. Pilch teaches an impermeable capsule comprising a shell that can be continuous or discontinuous [0012]. Given the finite number of options, i.e. a carboxymethyl cellulose that is a continuous phase of material or discontinuous phase of material, one of ordinary skill in the art would have found it obvious to try either in the capsule of modified Hartmann to achieve the same, predictable result of encapsulating the core material. In view of the recognition in the prior art of either of the 2 options being appropriate, one of ordinary skill in the art would have a reasonable expectation of success of apply either of the 2 configurations to the capsule of modified Hartmann. In the case of a continuous phase of material, the carboxymethyl cellulose is interpreted to fill 100% of the empty space of the cross-linked agar matrix.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hartmann and Carpenter as applied to claim 1 above, and further in view of Shi (US 2005/0000531).
Modified Hartmann does not teach the outer shell is water insoluble. Shi teaches a smoking article wherein the outer shell is water insoluble [0054]. It would have been obvious to one of ordinary skill in the art to provide an outer shell that is water insoluble in modified Hartmann to achieve the predictable result of prevent the shell from deteriorating due to moisture.
Conclusion
THIS ACTION IS MADE FINAL. 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 ERIC YAARY whose telephone number is (571)272-3273. The examiner can normally be reached M-F 9-5.
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, 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.
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.
/ERIC YAARY/Examiner, Art Unit 1755
Prosecution Insights