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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/26/2026 has been entered.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 05/26/2026.
Claims 1-4 and 7-16 are pending.
Claim 1 is amended.
Claims 5-6 are cancelled.
Claim 16 is new.
Claims 9-15 are withdrawn for being directed to a non-elected group.
The rejections of claims 1-5 and 7-8 under 35 U.S.C. 112(b) are withdrawn due to amendments made to claim 1.
Response to Arguments
Applicant' s arguments, see pages 5-8, filed 05/26/2026, with respect to the rejection(s) of claims 1-5 and 7-8 under 35 U.S.C. 102 and 103, respectively, have been fully considered and are persuasive. Claim 1 has been amended to include limitations that were not previously presented. Specifically, the Applicant has introduced limitations regarding the thermally conductive element comprising graphite. Therefore, the 35 U.S.C. 102 rejection has been withdrawn. However, upon further consideration a new grounds of rejection is made in view of newly found prior art.
A modified rejection based on the amendments is provided below.
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.
Claim(s) 1-4, 7-8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Griffith et al. (US-20130255702-A1).
In regards to claim 1, Griffith et al. (US-20130255702-A1), Griffith, directed to a smoking article incorporating a conductive substrate, discloses a conductive substrate comprising an aerosol precursor material (i.e., aerosolizable material), an electrically conductive material (i.e., thermally conductive element), and a carbonaceous additive (abstract).
Griffith further discloses the thermally conductive element includes graphite ([0015]; [0100]) and the aerosolizable material can be combined with a flavorant and/or tobacco component (i.e., active constituents) ([0014]-[0015]).
Griffith discloses graphite as an electrically conductive element but does not explicitly disclose it is a thermally conductive element. However, Griffith discloses the electrically conductive element is thermally stable ([0066]) and teaches graphite is preferable which is known in the art to be a thermally conductive element. Therefore, graphite is considered to make obvious a thermally conductive element as claimed.
Griffith is silent regarding the thermal conductivity of graphite and therefore does not explicitly disclose graphite comprising a thermal conductivity of 10 W/mK to 500 W/mK. However, Griffith does disclose embodiments where the only thermally conductive element is graphite ([0081];[0097]) which is the claimed thermally conductive element, and therefore it would be obvious to one of ordinary skill in the art that the same material (graphite) used in a similar composition would comprise a range of thermal conductivity that at the very least overlaps the claimed range, and is therefore considered a prima facie obvious limitation of the claim.
Furthermore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the thermal conductivity of graphite since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed thermal conductivity is critical and has unexpected results. In the present invention, one would have been motivated to optimize the thermal conductivity of graphite motivated by the desire to achieve the desired properties of thermal conductivity which is a property that provides the efficient use of energy and rapid heating which can be beneficial to provide almost immediate volatilization of an aerosol precursor material in proximity thereto ([0066]).
In regards to claim 2, Griffith discloses the substrate can further comprise a binder ([0077]; [0120]).
In regards to claim 3, Griffith does not explicitly disclose the volume of the thermally conductive element within the aerosolizable material, specifically the thermally conductive element forming at most 20% by volume of the aerosolizable material. However, Griffith clearly shows figures wherein the thermally conductive material would obviously be less than 20% volume of the aerosolizable material, and is therefore considered prima facie obvious (Figures 4a-5f).
Furthermore Griffith discloses the conductive substrate chips (i.e., thermally conductive elements) can take on a variety of shapes and dimensions, and the sizes and dimensions can be determined so as to provide the desired total vapor and/or aerosol release desired for each chip ([0158]). Therefore, a mere change in size/proportion would be an obvious feature to change in Griffith and claimed relative dimensions that do not perform differently than the prior art device are not patentably distinct features. In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). See MPEP 2144.04 IV. A.
In regards to claim 4, Griffith discloses an embodiment wherein the electrically conductive material can be in the form of a sheath that substantially surrounds a core comprising the at least one carbonaceous additive (i.e., the thermally conductive element is arranged substantially towards an outer surface of the aerosolizable material) ([0113]).
In regards to claims 7-8, Griffith discloses the aerosolizable material can be combined with a flavorant and/or tobacco component (i.e., active constituents) ([0014]-[0015]).
In regards to claim 16, Griffith discloses the electrically conductive material further can be combined with a binder such that the electrically conductive material and the carbonaceous additive can be provided separately and be co-extruded to make the desired form ([0120]).
Griffith further teaches the binder is selected from the group consisting of guar gum, carboxymethyl cellulose, inorganic materials, and combinations thereof (i.e., at least a first and a second binding material).
Claim(s) 1-4, 7-8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Fursa et al. (US-20190216133-A1) and further in view of Griffith et al. (US-20130255702-A1).
In regards to claim 1, Fursa, directed to an aerosol-generating article comprising a susceptor assembly, discloses the susceptor comprising a coating material (abstract and [0026]).
Fursa further discloses rod-shaped aerosol forming substrate including tobacco material 22, a susceptor 11, and a coating material 3 for coating the susceptor is designed for fast aerosol-formation of the tobacco material containing coating material (i.e., both the tobacco material and the coating are aerosolizable materials) (Figure 1, [0028], and [0078]-[0080]), the aerosolizable material comprising:
an aerosol-forming substrate coating, a tobacco, or a tobacco containing coating material (i.e., active constituent) ([0026]-[0028])
the coating further comprises susceptor particles that have high thermal conductivity ([0025] and [0081]) and the coating is thermally conductive such that heat generated in the susceptor is conducted through the coating material to a surround aerosol-forming substrate (i.e., both the coating and the susceptor particles are thermally conductive elements) ([0033]-[0035]),
wherein the at least one thermally conductive element has a thermal conductivity of between 10 and 500 Watts/mK ([0035]),
wherein the at least one thermally conductive element are distributed on the surface of the coating ([0064]).
Fursa discloses preferably metals are sintered and used as the thermally conductive element ([0025]), but does not explicitly disclose the thermally conductive element comprises graphite.
Griffith, directed to a smoking article incorporating a conductive substrate, discloses a conductive substrate comprising an aerosol precursor material (i.e., aerosolizable material), an electrically conductive material (i.e., thermally conductive element), and a carbonaceous additive (abstract).
Griffith further discloses the thermally conductive element includes graphite ([0015]; [0100]).
Griffith further discloses graphite is an example of a heating element which provides the efficient use of energy and rapid heating, which can be beneficial to provide almost immediate volatilization of an aerosol precursor material in proximity thereto ([0066]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fursa by modifying the thermally conductive element to further comprise graphite, as taught by Griffith, because both are directed to aerosolizable materials comprising metals, Griffith teaches a wide range of electrically/thermally conductive elements are used in a similar manner and that graphite provides fast and efficient use of energy ([0066]), and this merely involves applying a known technique of using graphite as an element in an aerosolizable material, and either adding it as is or subjecting it to sintering (since sintering is desirable by the disclosure of Fursa), of a similar formulation to yield predictable results.
In regards to claim 2, Fursa discloses the coating (i.e., thermally conductive element) can comprise a binder ([0053]).
In regards to claim 3, Fursa does not explicitly disclose the volume of the thermally conductive element within the aerosolizable material, specifically the thermally conductive element forming at most 20% by volume of the aerosolizable material. However, Fursa clearly shows figures wherein the thermally conductive material would obviously be less than 20% volume of the aerosolizable material, and is therefore considered prima facie obvious. Refer to the thermally conductive element 12 in Figure 3 provided below.
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In regards to claim 4, Fursa discloses at least one thermally conductive element 12 towards the outside of the aerosolizable material 3. Refer to Figure 3 annotated by the Examiner provided above.
Fursa further discloses the susceptor particles are located on a surface of the coating ([0064]) (i.e., substantially toward an outer surface of the aerosolizable material).
In regards to claim 7, Fursa discloses the active constituent comprises a flavor ([0036]).
In regards to claim 8, Fursa discloses the active constituent comprises tobacco flavor or tobacco material ([0036]-[0037]).
In regards to claim 16, Fursa discloses the use of a binder ([0053]-[0054]), but does not explicitly disclose the use of at least a first and second binding material.
Griffith discloses combinations of binders are known in the art and discloses aerosolizable materials comprising thermally conductive elements can utilize more than one binder (i.e., at least two binding materials) ([0012];[0077]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fursa by modifying the thermally conductive element to further comprise an additional binding material, because both are directed to aerosolizable materials comprising metals, Griffith teaches a it is known in the art to apply more than one binding material to thermally conductive elements ([0012]), binders are useful in forming a cohesive mass of the substrates components ([0077]), and this merely involves applying a known technique of using more than one binding material in an aerosolizable material, of a similar composition to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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