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 1-13 in the reply filed on 8/17/2026 is acknowledged. The examiner notes that the unity of invention requirement set forth on 4/17/2026 was given by a different examiner and the application was subsequently reclassified after the applicant elected group I. The traversal is given on the following grounds:
The applicant argues that the shared technical feature of the groups cited in the lack of unity analysis given by the previous examiner is not taught by the supplied references Karles and Flamel. Applicant argues that Karles does not teach or suggest each and every single element of claim 1.
The applicant also argues that one skilled in the art would not have combined the references in the same manner as described by the previous examiner because the capsule as taught by Flamel does not describe use in tobacco applications.
Lastly, the applicant refers to the PCT examination on the international parent application of the instant application as not containing a unity of invention requirement as evidence to an improper apply of the requirement on behalf of the Office.
This is not found persuasive because:
A single reference is not required to teach each and every single limitation of the claim containing the shared technical feature.
A person skilled in the art would see the common subject matter of Karles and Flamel is in that they both teach capsules. The previous examiner sufficiently sets forth the grounds for motivation to combine the references and to modify Karles in view of Flamel.
The decision of an international examination authority to require unity of invention or not is not a consideration of the Office. The decision to require unity of invention is at the discretion of the examiner. MPEP 1893.03(d) says, “When making a lack of unity requirement, the examiner must (1) list the different groups of claims and (2) explain why each group lacks unity with each other group (i.e., why there is no single general inventive concept) specifically describing the unique special technical feature in each group. The examiner may make a lack of unity requirement in a national stage application even if no such requirement was made by the ISA or IPEA".
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-24 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected groups II-VI, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/17/2026.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure relates to,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Drawings
The drawings are objected to because figures 1-11 which contain images of tables have elements that are illegible due to low image resolution. For visual reference, please view the PGPub of the instant application US 20250089756 A1. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 2-13 recite “Breakable capsule according to claim…”. Since the claimed subject matter of claim 1 is a “Seamless breakable capsule”, the dependent claims should recite the claimed subject matter of the independent claim. For example, the preamble of claim 2 can recite “the seamless breakable core-shell capsule according to claim 1”.
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 1-13 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 word "type" in the phrase “of the core-shell type”. The addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. See MPEP 2173.05(b)(III)(E). As a result, claims 2-13 are rejected as dependent on claim 1. For examination purposes, claim 1 is taken instead to recite “A seamless breakable core-shell capsule”.
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.
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) 1-5 and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hartmann (WO 2007/010407 A2) in view of Jorda (FR 2698561 A1). [The examiner notes that Jorda is referred to in the previous unity of invention requirement as Flamel].
Regarding claims 1, 7, 9 and 11-13, Hartman discloses seamless core-shell capsules for tobacco products (abstract), the shell comprising hydrocolloids such as gellan gum, agar, carrageenans, and pectins (page 4, line 30); and a core comprising lipophilic solvents (page 8, line 7). Hartmann’s capsule has a diameter of “even more preferably” between 3.5 - 4.5 mm with a shell thickness of “more preferably” 50-80 micrometers (page 4, lines 23-29). Hartmann further teaches that the capsule may have a coating that acts as a moisture barrier (page 5, line 18) but does not teach that this layer comprises polyvinylidene chloride.
Jorda discloses core-shell capsules with a polyvinylidene chloride (PVDC) film coating that may contain plasticizers (paragraph [0007], page 6; paragraph [0012], page 12). Jorda further teaches that the addition of an outer film to the capsule ensures superior sealing (paragraph [0007], page 5) and that this film layer is between 1-100 micrometers (paragraph [0007], page 6).
A person having ordinary skill in the art as of the effective filing date of the instant application would have considered the teaching of Jorda regarding the usefulness of a polyvinylidene chloride coating for core-shell capsules and would have applied this teaching using methods known in the art to the core-shell capsule of Hartmann and the result would have been predictable.
Regarding claims 2 and 3, the capsule of Hartmann in view of Jorda applies as described above and Hartmann further discloses that the capsule has a burst strength (referenced as crush strength) between 0.5 and 2.5 kp (meaning kilopond, which is identical to kgf) (abstract). The capsule of Hartmann modified with polyvinylidene would be expected to display burst resistance in the claimed ranges after being subjected to immersion and dissolution tests according to claims 2 and 3 because it comprises a polyvinylidene coating of a thickness between 1-100 micrometers, which is in the range of claim 7 and a shell thickness in the range of claim 13. The examiner also notes that the applicant relates the thickness of the coating layer to the property of burst resistance in paragraph [57] in the instant specification and that the applicant’s examples found in instant tables 5 and 6, wherein the capsules having a hardness (burst resistance) between 0.5-2.5 kgf and are coated with PVDC all show a hardness after test within the claimed burst resistance range.
Regarding claims 4 and 5, Jorda applies as described above regarding the PVDC coating which may comprise a plasticizer, the polymer for the capsule coating film according to Jorda can be PVDC and Jorda further discloses in Example 2 that the coating comprises 57% by weight relative to total dry weight of the coating as IXAN SG A1 by Solvay (Example 2, paragraph [0010]).
Regarding claim 8, the capsule of Hartmann in view of Jorda applies as described above regarding the structure and burst resistance of the capsule, Hartmann further teaches capsules that produce an audible pop when ruptured (page 4, lines 20-22).
Regarding claim 10, Hartmann teaches that the capsule shell can comprise gellan gum alone or in combination with gelatin (page 4, line 30 - page 5, line 11).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hartmann in view of Jorda and further in view of EASTMAN™ (Triacetin Technical Data Sheet).
Regarding claim 6, the breakable capsule of Hartmann and Jorda applies as described above regarding the PVDC comprising a plasticizer. However, neither reference discloses the claimed plasticizers for the capsule shell coating.
Eastman discloses triacetin as a plasticizer suitable for vinylidene polymers, which is food grade (Product Description).
A person having ordinary skill in the art as of the effective filing date of the instant application would have found it obvious to use the triacetin of Eastman as a plasticizer for the PVDC capsule coating of Hartmann in view of Jorda as a combination of prior art elements according to known methods and the result would have been predictable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KOLTON JONES whose telephone number is (571)272-9802. The examiner can normally be reached Generally Monday-Friday 8:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (517)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KOLTON JONES/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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