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/Restriction
Applicant’s election of Group I in the reply filed on 01/27/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11-14 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/27/2026.
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.
Claim 10 is 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 10: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation the weight ratio of gel to electrically conductive material between 0.01:1 to 100:1, and the claim also recites the weight ratio of gel to electrically conductive material between 2:1 to 1:1 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, since both ranges appear to be required by the claim, the claim will be considered to require the narrower recited limitation.
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.
Claim(s) 1-4, 6-7, 9-10 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Griffith et al. (EP 2833744 B1).
Regarding claim 1, Griffith discloses:
A consumable for a vaporizer, ([0009]), wherein the consumable comprises:
- particles of at least one electrically conductive material, ([0011], [0052], [0054] and
at least one binding agent for binding the particles, ([0012], [0065])
- at least one aerosol forming agent, ([0010], [0014], [0071]), and
- at least one flavorant material, ([0012], [0072] tobacco or a tobacco material, [0073]-[0074]).
Examples 2b, 2c, and 2d, provide graphite (an electrically conductive material), with carboxymethyl cellulose (a binder), at least one aerosol forming agent (glycerol and glycol), with tobacco, ([0154]).
Regarding claim 2, Griffith discloses the consumable according to claim 1,
wherein the particles of electrically conductive material are present in an amount of 35 to 60 wt%, based on total weight of the consumable, ([0154] example 2c has a total weight of 58g and 30g graphite, yielding a weight percent of 51.72% graphite) and
wherein the binding agent, the aerosol forming agent and the flavorant material together are present in an amount of 40 to 65 wt%, based on the total weight of the consumable, ([0154) example 2c comprises 28 g total of carboxymethyl cellulose, aerosol forming agent, and flavorant, yielding a weight percent of 48.28%.
Regarding claim 3, Griffith discloses the consumable according to claim 2, wherein the electrically conductive material is an electrically conductive carbon- containing material, ([0011] disclosing the electrically conductive material can comprise graphite (a material known to be carbon) and the electrically conductive material specifically can be used in a particulate form, [0052] disclosing several exemplary materials that are carbon containing electrically conductive materials, [0154] disclosing graphite used in several examples).
Regarding claim 4, Griffith discloses the consumable according to claim 1, wherein the particles of the electrically conductive material have a particle size in the range of 1 µm to 10 mm, ([054] disclosing a preferred range of 1 µm to 100 µm, the narrower disclosed range anticipating the broader claimed range).
Regarding claim 6, Griffith discloses the consumable according to claim 1. Griffin discloses the at least one binding agent is present in an amount of 0.1 to 7 wt% based on the total weight of the consumable,wherein the at least one binding agent comprises a cellulose derivative, and wherein the cellulose derivative comprises carboxymethyl cellulose, ([0154] examples 2b, 2c, and 2d disclosing carboxymethyl cellulose as the binder at 6.9%.
Regarding claim 7, Griffith discloses the consumable according to claim 1, wherein the at least one aerosol forming agent is present in an amount of 5 to 75 wt% based on the total weight of the consumable, ([0078]), and wherein the at least one aerosol forming agent is a humectant, comprising glycerin, propylene glycol, or an alcohol, ([0014], [0079]), examples 2b, 2c, and 2d further anticipating the claim each comprising mixtures of glycerol (glycerin) and propylene glycol in a combined amount of about 24% .
Regarding claim 9, Griffith discloses the consumable according to claim 1, wherein the electrical conductivity of the consumable is at least 3x102 S/m (at 20°C), ([0052] disclosing the electrically conductive material has an electrically conductivity of 3x103 S/m). Griffith discloses using graphite as an exemplary electrically conductive material, with a known conductivity of 3x102 to about 3x105 S/m. Because Griffith anticipates claim 9 but for the claimed functional property, and is otherwise indistinguishable from the claim, and given that the conductive property is reasonably expected to be based on the electrically conductive material, the expected property is expected to be inherent in the consumable according to claim 1, as disclosed by Griffith. Here, the functional properties of the prior art and the instantly claimed invention are inherently based on the composition and structure. The electrical conductivity of the consumable of the prior art would inherently be the same as that of the
instantly claimed invention because the prior art and the instant claims have identical chemical compositions. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches an identical chemical composition, the properties applicant discloses and/or claims are necessarily present. (MPEP 2112.01 (II)).
Regarding claim 10, Griffith discloses the consumable according to claim 1, wherein the at least one binding agent and the least one aerosol forming agent form a gel, wherein the weight ratio of gel to electrically conductive material is between 0.01:1 to 100:1, and wherein the weight ratio of gel to electrically conductive material is 2:1 and about to 1:1, ([0154] examples 2b, 2c, 2d all disclose a gel (a composition with at least one binding agent carboxymethyl cellulose and at least one aerosol forming agent) and an electrically conductive material (graphite), where the ratio of gel to electrically conductive material for 2b is 1:1.1, for 2c is 1.7, and for 2d is 2.0
Regarding claim 15, Griffith discloses the consumable according to claim 3, wherein the electrically conductive carbon-containing material comprises charcoal, activated carbon, black carbon or graphite, ([0011] disclosing the electrically conductive material can comprise graphite (a material known to be carbon) and the electrically conductive material specifically can be used in a particulate form, [0052] disclosing several exemplary materials that are carbon containing electrically conductive materials, [0154] disclosing graphite used in several examples).
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) 8 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Griffith et al. (EP 2833744 B1).
Regarding claim 8, Griffith discloses the consumable according to claim 1, which as disclosed in the examples 2b, 2c, and 2d include tobacco particles, carboxymethyl, and glycerol (glycerin), ([0154]). Griffith discloses the substrate, or at least part thereof is carbonized ([0010] carbonization is understood to produce charcoal within the substrate). Griffin discloses that the carbonaceous additive can comprise a binder, where the binder can be a gum, a cellulose material or a cellulose derivative, and further suggests that non-limiting examples include combinations of gums and cellulose derivatives, with a specific example of guar gum and carboxymethyl celluloses listed, ([0012]). Griffin discloses that the binder may comprise gellan gum and cellulose esters such as carboxymethyl cellulose, ([0065]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Griffin to include charcoal in the consumable as part of the carbonization technique disclosed by Griffin to be compatible with the invention, and to have used combination a cellulose derivative and gum as the binder, where the cellulose derivative comprises carboxymethyl cellulose and gum comprises gellan gum. Griffin suggests that the two types of binders may be used together, suggests a combination of the claimed cellulose derivative and an alternate type of gum.
It would have been obvious to one of ordinary skill in the art to have modified Griffin to have substituted gellen gum for guar gum on the basis of simple substitution, MPEP 2143 I. Examples of Rationales (B) Simple Substitution of One Known Element for Another to Obtain Predictable Results. Griffing disclosed the product which differed from the known device by the substitution of gellen gum for guar gum. The functions of gellen and guar gums were known in the art to act as binders. One of ordinary skill in the art could have substituted one gum for the other, and the results of the substitution would have been predictable.
Regarding claim 16, Griffith discloses the consumable according to claim 4, wherein the particles of the electrically conductive material have a particle size in the range of 100 µm to 500 µm, ([0054] Griffith discloses that a preferred range for the size of the particles of electrically conductive material is 0.1 µm to 500 µm). Griffith discloses a range of particles sizes that work, and which substantially overlap the claimed range. One of ordinary skill in the art would reasonably expect any particle sizes within the disclosed range to work, and thus it would be obvious to select particle sizes from within the claimed part of the disclosed range for any reason, which include ease of handling a powder with a larger particle size, availability, and cost, all of which are manufacturing considerations known to one of ordinary skill in the art.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Griffith et al. (EP 2833744 B1) as applied to claim 1 above, and further in view of Bell et al. (US 2016/0205992 A1).
Regarding claim 5, Griffith discloses the consumable according to claim 1, wherein the flavorant material is in particulate form, and the particles of the flavorant material are tobacco particles obtained from ground tobacco leaves, pulverized tobacco leaves or flue cured tobacco (FCT), ([0056] the tobacco may be flue cured tobacco, [0057] the tobacco may be employed in various forms, and can include tobacco dust powder, agglomerated tobacco powders, or the like). Griffin is silent as to the size of the tobacco particles having a particle size in the range of 200 pm to 5 mm.
Bell teaches a technique of treating tobacco material to have a pH of at least about 9, ([0004]), and is thus within the inventor’s field of endeavor. Bell teaches that the particle size of the tobacco is from about 1-3mm. Bell teaches that untreated tobacco is generally acidic and that raising the pH of the tobacco will result in more of the nicotine present in the tobacco being in the form of nicotine free base, which is more readily released upon heating the tobacco, ([0028]).
It would be obvious to one of ordinary skill in the art, to modify the consumable of Griffin according to the technique of Bell, to improve the release of nicotine contained in the tobacco of Griffin upon heating the consumable, MPEP 2143 I. Examples of Rationales (D) Applying a known technique to a known product ready for improvement to yield predictable results. Here Griffin disclosed the base product upon which the claimed invention can be seen as an improvement, requiring a particular particle size for the tobacco particles. The prior art of Bell contained a known technique of providing tobacco particles in a range of 1-3mm having a modified pH, to improve the release of nicotine from the tobacco on heating, which is applicable to the base product. One of ordinary skill in the art would have recognized that applying the technique of providing tobacco particles in the size range of 1-3mm with the modified pH would have yielded predictable results, improving the product to release more nicotine with less heat.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5, 7, and 9 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 8-9, 12, and 19 of copending Application No. 18281172. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, 18281172discloses:
A consumable for a vaporizer, (claim 1), wherein the consumable comprises:
- particles of at least one electrically conductive material, (claim 1), and
at least one binding agent for binding the particles, (claim 8),
- at least one aerosol forming agent, (claim 1), and
- at least one flavorant material, (claim 1).
Regarding claim 5, modified 18281172 discloses the consumable according to claim 1, wherein the flavorant material is in particulate form, and the particles of the flavorant material are tobacco particles obtained from ground tobacco leaves, pulverized tobacco leaves or flue cured tobacco (FCT), the size of the tobacco particles having a particle size in the range of 200 pm to 5 mm, (claim 12).
Regarding claim 7, modified 18281172 discloses the consumable according to claim 1, wherein the at least one aerosol forming agent is present in an amount of 5 to 75 wt% based on the total weight of the consumable, (claim 9), and wherein the at least one aerosol forming agent is a humectant, comprising glycerin, propylene glycol, or an alcohol, (claim 19).
Regarding claim 9, modified 18281172 discloses the consumable according to claim 1, wherein the electrical conductivity of the electrically conductive material is at least 3x102 S/m (at 20°C), (claim 2) Because 18281172 anticipates claim 9 but for the claimed functional property, and is otherwise indistinguishable from the claim, and given that the conductive property is reasonably expected to be based on the electrically conductive material, the expected property is expected to be inherent in the consumable according to claim 1. Here, the functional properties of the prior art and the instantly claimed invention are inherently based on the composition and structure. The electrical conductivity of the consumable of the prior art would inherently be the same as that of the
instantly claimed invention because the prior art and the instant claims have identical chemical compositions. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches an identical chemical composition, the properties applicant discloses and/or claims are necessarily present. (MPEP 2112.01 (II)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747