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 .
Response to Amendment
The office action is in response to Applicant’s amendment filed on 12/01/2025.
Claims 1-5 and 7-15 are pending.
Claim 1 is amended.
Claim 6 is cancelled.
Claims 9-15 are withdrawn for being directed to a non-elected group.
The rejections of claims 4 and 6 under 35 U.S.C. 112(b) are withdrawn due to amendments made to claim 1 and the cancelling of claim 6.
The drawings provided are accepted by the Examiner.
Response to Arguments
Applicant' s arguments, see pages 5-11, filed 12/01/2025, with respect to the rejection(s) of claims 1-8 under 35 U.S.C. 102 and 103, respectively, have been fully considered and are not persuasive.
On pages 9-11, the Applicant argues that the amendment to claim 1 overcomes the previously cited prior art, Fursa, because Fursa does not teach or suggest an aerosolizable material that includes a thermally conductive element which is provided in bulk in a specific location in the aerosolizable material as presently claimed.
The Examiner respectfully disagrees with the Applicants arguments.
While Fursa does teach embodiments where the conductive element is not provided in bulk, such as Figure 3 referenced by the Applicant, Fursa also discloses embodiments where the thermally conductive element is indeed provided in bulk in a specific location. For example, Fursa recites “the susceptor particles may also be applied to the slurry after having been brought into the form of a sheet or after having coated the first susceptor material, but before the sheet or coating is dried. By this, the susceptor particles are not homogeneously distributed inside the coating material but distributed on the surface of the coating ([0064]).” The thermally conductive element provided on the surface of the aerosolizable material would be provided in bulk in a specific location (the surface) in the aerosolizable material. The susceptor particles on the surface of the coating which is considered part of the aerosolizable material would still be a part of the aerosolizable material and thus be within the aerosol generating material, therefore Fursa teaches a thermally conductive element provided in bulk in a specific location in the aerosolizable material.
A modified rejection based on the amendments is provided below.
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, 2-5, and 7-8 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. Claims 2-5 and 7-8 are rejected for their dependency on claim 1.
Claim 1 is indefinite for reciting “the at least one thermally conductive element is provided in bulk” because it is unclear how “provided in bulk” is meant to be interpreted. It is unclear if bulk is meant to define an amount of the thermally conductive element thus making it a relative term which is not defined in the specification, or unclear whether the specific location is the only location the thermally conductive element is provided for in a “bulk” amount or if the element may be in bulk elsewhere. For example, in claim 4 the thermally conductive element is located “substantially towards an outer surface of the aerosolizable material” and it is unclear if that would be the only location of the bulk thermally conductive element or if there are multiple locations like a bulk amount located in the center of the material. The only mention of “bulk” in the instant specification does not make clear how the claim is to be interpreted and does not provide a definition for bulk.
For purposes of this examination “provided in bulk in a specific location” will be interpreted as the thermally conductive element is located more in one location compared to another location within the aerosolizable material.
Claims 2-5 and 7-8 are also rejected by virtue of their dependency on claim 1.
Claim Rejections - 35 USC § 102
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 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, and 7-8 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Fursa et al. (US-20190216133-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 (i.e., provided in bulk in a specific location in the aerosolizable material) ([0064]).
In regards to claim 2, Fursa discloses the coating (i.e., thermally conductive element) can comprise a binder ([0053]).
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 below.
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).
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In regards to claim 5, Fursa discloses the susceptor particles (at least one thermally conductive element) can include ceramic, metals or metal alloys ([0025]).
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]).
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fursa et al. (US-20190216133-A1).
In regards to claim 4, 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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Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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