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 without traverse of group I, claims 1-4 in the reply filed on 5/29/2026 is acknowledged. Claims 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/12/2026.
Information Disclosure Statement
The information disclosure statement filed 8/14/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, no copy of United Arab Emirates Examination and Search Report for Application no. P6001317/2019, mailed December 18, 2023 is present in the file wrapper.
The information disclosure statement filed 8/14/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, no copies of NC-2019/0011503 and NC-2021/0012912 are provided. It is noted that the country NC corresponds to the country of New Caledonia according to the USPTO list of countries, however, no documents from New Caledonia appear in the file record.
Claim Objections
Claims 2 and 4 are objected to because of the following informalities: There is no space between a numerical value and its associated units. Appropriate correction is required.
Claim Interpretation
Regarding claim 1, the claim recites “for a heat-not-burn capsule” in its preamble. The Courts have held that, if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See MPEP § 2111.02. Therefore, for the purposes of this Office action, the claim will be interpreted as if it required any material having the claimed chemical characteristics.
Regarding claim 2, the entire claim is directed to a process by which the claimed material is formed. The determination of patentability is based upon the product or apparatus structure itself. Patentability does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP § 2113 I. Therefore, for the purposes of this Office action, the claim will be interpreted as if it required only the product of claim 1.
Regarding claim 3, the entire claim is directed to a process by which the claimed material is formed. The determination of patentability is based upon the product or apparatus structure itself. Patentability does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP § 2113 I. Therefore, for the purposes of this Office action, the claim will be interpreted as if it required only the product of claim 2.
Regarding claim 4, the claim recites the limitation “and the temperature during the standing is 45 °C,” which is a recitation of a method by which the claimed material is made. The determination of patentability is based upon the product or apparatus structure itself. Patentability does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP § 2113 I. Therefore, for the purposes of this Office action, the claim will be interpreted as the indicated limitation did not limit the claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 are 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 1, the claim recites the limitation “50 parts by weight of 99% alcohol.” It is unclear whether this limitation refers to the alcohol previously recited as part of the material or to new alcohol, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it referred to the alcohol previously recited and required that alcohol to be 99% alcohol present at 50 parts by weight in the material. Claims 2-4 are indefinite by dependence.
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.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Son (US 2015/0197655) in view of Kyrides (US 1,907,834) and Scharlemann (US 9,944,559), as evidenced by Halter (US 3,625,225).
Regarding claim 1, Son discloses an aqueous composition for preparing a hard capsule (abstract) having water, alcohol, and a water soluble cellulose ether [0041] having 10-25 wt% water soluble ether [0043] and 5 to 30 wt% alcohol [0046]. It is evident that water must be present at 55-85 wt% since that is the remaining amount of the composition. Son does not explicitly disclose (a) the alcohol being 99% alcohol, (b) the cellulose ether being a mixture of MCC and plant cellulose, (c) the claimed ranges being obvious, and (d) cellulose ether being a plant material.
Regarding (a), Kyrides teaches absolute alcohols (page 1, lines 1-4) that are over 99% pure (page 1, lines 91-100, page 2, lines 1-13).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the pure alcohol of Kyrides as the alcohol of Son. One would have been motivated to do so since Kyrides teaches a 99% pure alcohol.
Regarding (b), Scharlemann teaches a water based binder composition including cellulose ether and microcrystalline cellulose (abstract) that increases the workability when sprayed (column 1, lines 53-67). The microcrystalline cellulose is present at 10-30 weight percent based on the total amount of both cellulosic components (column 2, lines 1-19).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the mixture of cellulose ether and microcrystalline cellulose of Scharlemann in place of the cellulose ether of Son. One would have been motivated to do since Scharlemann teaches a composition that has improved workability when sprayed.
Regarding (c), one of ordinary skill in the art would recognize that the claimed ranges are obvious since they are overlapped by the ranges of the cited references. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding (d), Halter teaches that cellulose ethers are derivatives of a plant gum (column 3, lines 34-59), which is considered to meet the claim limitation of plant cellulose.
Regarding claims 2 and 3, the claims are considered to require any additional structural features and are therefore considered unpatentable for the same reasons as set forth above with respect to claim 1.
Allowable Subject Matter
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter:
Son (US 2015/0197655) teaches an aqueous composition for preparing a hard capsule (abstract) having water, alcohol, and a water soluble cellulose ether [0041] having 10-25 wt% water soluble ether [0043] and 5 to 30 wt% alcohol [0046]. It is evident that water must be present at 55-85 wt% since that is the remaining amount of the composition.
Selby (WO 2019/178698) teaches a mixture of hydroyprpyl-methyl-cellulose and cellulose nanocrystals dissolved in a solvent containing a mixture of water and isopropyl alcohol (abstract).
Scharlemann (US 9,944,559) teaches a water based binder composition including cellulose ether and microcrystalline cellulose (abstract) that increases the workability when sprayed (column 1, lines 53-67). The microcrystalline cellulose is present at 10-30 weight percent based on the total amount of both cellulosic components (column 2, lines 1-19).
The prior art does not teach or suggest a material comprising plant cellulose, microcrystalline cellulose, and alcohol in the form of a liquid mixture, a weight proportion of the plant cellulose to the microcrystalline cellulose is 50:1, the liquid mixture including 10 parts by weight of a combination of the plant cellulose and the microcrystalline cellulose, 50 parts by weight of water, and 50 parts by weight of 99% alcohol.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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.
/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
Prosecution Insights