DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of claims 1-15 in the reply filed on 7/22/2026 is acknowledged. The traversal is on the ground(s) that there is no undue burden to examine all of the claims in the application. This is not found persuasive because the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-6, 8, and 10-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rodrigues (US 2008/0163879).
Regarding claim 1, Rodrigues teaches tobacco (aerosol-generating material), the aerosol-generating material having embedded therein a flavor encapsulated in an encapsulating material [0021]. The limitation “for use in an aerosol provision system” is directed to intended use and does not limit the composition of the claimed material to distinguish from that material of Rodrigues. The material of Rodrigues thus reads on the present limitations.
Regarding claim 2, Rodrigues teaches the aerosol-generating material is extruded to embed the encapsulated flavor therein [0021]. In any case, this is considered a product by process limitation that does not distinguish the claimed product from the product of Rodrigues. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 3, Rodrigues teaches encapsulated flavor is menthol [0016].
Regarding claim 5, this is considered a product by process limitation that does not distinguish the claimed product from the product of Rodrigues. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 6, Rodrigues teaches the encapsulating material comprises alginate or starch [0017], which are stabilizers according to the instant specification [page 8, l. 25-30].
Regarding claim 8, Rodrigues teaches the encapsulating material comprises starch (carbohydrate) [0017].
Regarding claims 10-11, Rodrigues teaches the encapsulating material is β-cyclodextrin [0017].
Regarding claim 12, Rodrigues teaches the aerosol-generating material comprises tobacco (nicotine source) [0021].
Regarding claim 13, Rodrigues teaches the aerosol-generating material comprises a binder [0021].
Regarding claim 14, Rodrigues teaches the aerosol-generating material comprises a carbonate (pH modifier) [0019].
Regarding claim 15, Rodrigues teaches the aerosol-generating material comprises propylene glycol [0047] or glycerol [0048] (aerosol-former).
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Rodrigues as applied to claim 1 above, and further in view of Rees (WO 2019/224366).
Rodrigues teaches any flavor may be encapsulated [0016] but does not teach the claimed flavors. Rees teaches an encapsulated flavor provided in tobacco, wherein the encapsulated flavor is apple [page 5, l. 26-27; page 14, l. 13-17; page 17, l. 10-12]. As this is a conventional encapsulated flavor known in the art, it would have been obvious to one of ordinary skill in the art to use apple as encapsulated flavor in the material of Rodrigues to achieve predictable results.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Rodrigues as applied to claim 6 above, and further in view of McLaughlin (US 2008/0314401).
Rodrigues teaches the encapsulating material comprises cyclodextrin [0017] but does not teach a gum material. McLaughlin teaches a smoking article wherein an encapsulating material comprises cyclodextrin or a gum material [0022]. As it is prima facie obvious to substitute or combine art recognized equivalents known for the same purpose, it would have been obvious to one of ordinary skill in the art to alternatively or additionally use a gum material for the encapsulating material of Rodrigues to achieve predictable results. See MPEP 2144.06.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Rodrigues as applied to claim 8 above, and further in view of Yamauchi (US 2020/0281261).
Rodrigues teaches the encapsulating material comprises starch [0017] but does not teach a sorbitol. Yamauchi teaches a smoking article wherein an encapsulating material comprises starch or a sorbitol [0023]. As it is prima facie obvious to substitute or combine art recognized equivalents known for the same purpose, it would have been obvious to one of ordinary skill in the art to alternatively or additionally use a sorbitol for the encapsulating material of Rodrigues to achieve predictable results. See MPEP 2144.06.
Conclusion
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/ERIC YAARY/Examiner, Art Unit 1755
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