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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/4/2026 has been entered.
Information Disclosure Statement
It is noted that the IDS filed 3/27/2024 contains an extremely large number of references for consideration by the Examiner. If the applicant and/or applicant's representative are aware of any particular reference or portion of a reference in the list which the examiner should take pay particular attention to it is requested that it be specifically pointed out in response to this Office action.
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.
Claim(s) 1, 3-10, 12-14 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Potter (U.S Pub. No. 20140261486).
Regarding claim 1, Potter discloses a capsule, comprising: a matrix including one or more portions of a filler material, the filler material including a cellulose material, the filler material being water-insoluble, the one or more portions defining interstices; a containing structure containing the matrix [0089 -0094]; and at least one first substance within the filler material, the at least one first substance being one of nicotine, at least one first flavorant, a pre-aerosol formulation, a combination thereof, or a sub-combination thereof [0048]. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have the first substance infused within the filter material since Potter discloses flavor, medication or other inhalable material can be deposited on a substrate [0048].
Potter also discloses the cellulose material can be cellulose acetate, cotton, rayon and the likes ([0078] [0094]). Cotton is a water-insoluble organic polymer material.
Regarding claim 3, Potter discloses the filler material can be paper or porous material [0048] corresponding to the claimed the filler material is a plant-based cellulose material.
Regarding claim 4, Potter discloses the filler material can be paper or porous material [0048] corresponding to the claimed the filler material is a non-tobacco plant-based cellulose.
Regarding claim 5, Potter discloses the cellulose material is a tobacco cellulose [0053].
Regarding claim 6, Potter discloses nicotine can comprise up to about 10% of the aerosol precursor [0050]; therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to perform routine experimentation to arrive to the claimed wherein the at least one first substance includes nicotine, a weight of the nicotine being between about 1 mg and 15 mg.
Regarding claim 7, Potter discloses wherein the at least one first substance includes the at least one first flavorant, the at least one first flavorant being a tobacco extract such as nicotine [0050].
Regarding claim 8, Potter discloses wherein the at least one first substance includes the at least one first flavorant, the at least one first flavorant being a non-tobacco flavorant (such as menthol) [0043].
Regarding claim 9, Potter discloses wherein the at least one first substance includes the at least one first flavorant, the at least one first flavorant being a tobacco extract such as nicotine [0050].
Regarding claim 10, Potter discloses wherein the at least one first substance includes the at least one first flavorant, the at least one first flavorant being a non-tobacco flavorant (such as menthol) [0043].
Regarding claim 12, Potter discloses wherein the one or more portions are shredded strands of the filler material [0053].
Regarding claim 14. Potter discloses the capsule further comprising: a filter (Abstract), the filter being downstream of the matrix relative to an expected direction of airflow through the capsule during a normal operational use of the capsule [0080].
Regarding claim 19, Potter discloses the containing structure is made from at least one of a mesh, cellulose, plant-based cellulose, fabric, cotton, fibers, threads, textiles, paper, tipping paper, a same material as the filler material, a sub-combination thereof, or a combination thereof [0078].
Regarding claim 20, Potter suggests that the containing structure is made from the filler material [0078].
Claim(s) 2 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Potter (U.S Pub. No. 20140261486) in view of Bradbury (U.S Pub. No. 20170145634).
Potter does not expressly disclose the paper includes alpha-cellulose and hemicellulos. However, it is well known in the art of paper material to include ash and hemicellulose; Bradbury discloses the components of cellulose, hemicellulose and ash overlapping with the claimed invention [0038]. In case of overlapping ranges, it would have been obvious to one of ordinary skill in the art at the time the invention was made to arrive to the claimed percentages.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Potter (U.S Pub. No. 20140261486) in view of Casey, III et al. (U.S Patent No. 5396911).
Potter does not expressly discloses the thickness of the shredded strands. Casey discloses filler material is in the form of strands of a sheet of the filler material that has been shredded wherein the thickness ranging from about 0.25 mm to 2.0 mm overlapping with the claimed range. In case of overlapping ranges, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the claimed range of thickness.
Claim(s) 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Potter (U.S Pub. No. 20140261486) in view of Tucker (U.S Pub. No. 20130192615).
Regarding claim 15, Potter does not expressly disclose a flow restriction section. Tucker discloses a flow restriction section for adjusting the resistance to draw and the filter being devoid of consumable substance ([0105 ] and fig. 2). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to arrange the flow restriction section as taught by Tucker wherein a flow restriction section with a first end and a second end, the first end of the flow restriction section being connected to the matrix.
Regarding claim 16, Tucker discloses a filter connected to the second end of the flow restriction section, the filter being devoid of a consumable substance ([0105 ] and fig. 2). The combination of Potter and Tucker taken together as a whole suggests the filter being downstream of the matrix and the flow restriction section relative to an expected direction of airflow through the capsule during a normal operational use of the capsule, flow restriction section being directly connected to the matrix.
Regarding claim 17, Tucker discloses the containing structure contacts at least a side surface of the flow restriction section and at least a side surface of the filter such that the containing structure holds the matrix, the flow restriction section and the filter together ([0105 ] and fig. 2).
Regarding claim 18, Tucker discloses wherein the flow restriction section defines an internal void space with a flow restrictor in the internal void space, the flow restrictor being spaced apart from one of the first end, the second end, or both the first end and the second end ([0105 ] and fig. 2).
Allowable Subject Matter
Claim 11 is allowed.
Claim 25 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 5/4/2026 have been fully considered but they are not persuasive.
Regarding claim 1, Applicant essentially argues that Potter discloses a matrix including one or more portions of a filler material, the filler material including a cellulose material (600) but submits that Potter does not teach or suggest that the filter material 600 is water insoluble. Therefore, the Examiner fails to provide a prima facie rejection of claim 1. This argument is not persuasive because cellulose material of Potter is inherently water insoluble.
Regarding claim 2, Applicant essentially argues that Potter discloses paper cellulose as filler while Bradbury is toward composite pulp that include agricultural residue fibers that contains lignin (not alpha-cellulose or hemicellulose) from 10% to 25% rather than a water-insoluble filler material. This argument is not persuasive because it is well known in the art of paper material to include ash and hemicellulose; Bradbury discloses the components of cellulose, hemicellulose and ash overlapping with the claimed invention [0038]. In case of overlapping ranges, it would have been obvious to one of ordinary skill in the art at the time the invention was made to arrive to the claimed percentages.
Regarding claim 5, Applicant essentially argues that the Examiner relies on [0045] and [0053] of Potter wherein tobacco material including tobacco aroma oil, a freeze dried tobacco extract, tobacco dust or the like and concludes that these are not a solid tobacco cellulose material. This is argument is not persuasive because at least tobacco dust is a solid tobacco cellulose material.
Regarding claim 20, Applicant essentially argues that the same material (cellulose same as the filler material) is used to make the reservoir layer which takes the form of a tube is within a reservoir and therefore does not teach a containing structure for containing a filler material. This argument is not persuasive because a reservoir/tube is a containing structure for containing a filler material.
Response to Arguments
Applicant's arguments filed 5/4/2026 have been fully considered but they are not persuasive.
Applicant essentially argues that Potter does not teach or suggest a cellulose material that is a water-insoluble organic polymer material. This argument is not persuasive because Potter discloses cellulose material such as cotton ([0078] [0094]). Cotton is a water-insoluble organic polymer material. Therefore, the claims stand rejected as presented above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHU H NGUYEN whose telephone number is (571)272-5931. The examiner can normally be reached M-F 9-5.
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/PHU H NGUYEN/Examiner, Art Unit 1747
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