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/Restrictions
Applicant’s election of Group I in the reply filed on 8/21/2026 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Claims 14-15 and 20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/21/2026.
Claim Objections
Claim 18 is objected to because of the following informalities:
Regarding claim 18, the claim limitation “CMC” should be changed to “carboxymethyl cellulose (CMC)” to better define what the term means as it is the first appearance in the claims.
Appropriate correction is required.
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.
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.
Claims 1-4, 6-7, 9, 11, 13, 17, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Griffith et al. (US 2013/0255702).
Regarding claim 1, Griffith discloses a conductive substrate for use in an electronic smoking article (abstract) comprising:
the conductive substrate (150) which functions as a resistive heating element ([0009]; “heating layer”) including at least one carbonaceous additive ([0010]), the carbonaceous additive can comprise tobacco ([0012]; “flavorant”) and an aerosol precursor material ([0010]; “aerosol forming agent”),
wherein the conductive substrate comprises an electrically conductive material ([0010]) in a particulate form ([0011], [0068]) such that all particulate ingredients are thoroughly mixed to yield a dough-like consistency ([0113], [0117], [0170]; “embedded in the heating layer”), wherein current flows through the resistive heating member to generate heat rapidly ([0058]; “conduct electrical current”) and is regulated to control heating of the resistive element and thereby temperature experienced in order to prevent overheating of the substrate or other component carrying the aerosol precursor material and/or other flavors or inhalable materials ([0047], [0058]; “heat to a temperature sufficient to aerosolize the aerosol forming agent”) using terminals that create a closed circuit ([0134]; see also [0149] describing support rods for arranging electrical wiring to deliver power from the battery to the substrate, and [0155] describing a support frame that includes a plug and electrical wiring to provide the necessary electrical connections to deliver power to the conductive substrate; “between two electrodes”).
Regarding claim 2, Griffith discloses a useful electrically conductive material can have an electrical conductivity of 103 σ or greater, for example graphite having an electrical conductivity of 3*102 to about 3*105σ ([0066]; “electrical conductivity of at least 3*102 S/m”).
Regarding claim 3, Griffith discloses the resistive heating element can be substantially rod shaped and can have a mean diameter of about 1.5 mm to about 3 mm ([0109]).
Regarding claim 4, Griffith discloses that the conductive substrate is characterized as comprising a composite of carbon and conductive material, which is combined together to form a substantially homogeneous mixture of carbon and the conductive material ([0081]). By definition, a homogeneous mixture of carbon and the conductive material means that the conductive material is uniformly/evenly distributed throughout the mixture. Therefore, the conductive material will be present both in and on the surface of the conductive substrate.
Moreover, the instant specification describes that ‘”mixing” means in this context that the ingredients of the consumable or the heating layer are diffusionable of distributionable” (p. 9, ll. 11-21), which leads to the electrically conductive material to be distributed in and on the layer (p. 5). Because Griffith discloses a product that is produced by the substantially identical process of mixing to form the claimed distribution, Griffith’s substantially homogeneous mixture of carbon and conductive material are expected to exhibit the distribution of the electrically conductive material “in and on the heating layer” as claimed. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” MPEP 2112.01(I).
Regarding claim 6, Griffith discloses the electrically conductive material can comprise graphite ([0011]).
Regarding claims 7 and 17, Griffith discloses in one example the conductive substate comprises 20% graphite (Table 1; [0169]).
Regarding claims 9 and 19, Griffith discloses one example where using 20 g glycerol and 15 g propylene glycol in a total of 145 g of material (Example 2d in Table 2A) which amounts of 24.1% aerosol forming agent.
Regarding claim 11, Griffith discloses in one example using 50g of tobacco to form 145g of total conductive substrate (Example 2b), which gives 34.5% tobacco.
Regarding claim 13, Griffith discloses that the tobacco used in example 2 was made with a mixture of tobacco having a 5:3:2 ratio of flue cured, Burley and Turkish tobaccos ([0173]). This means that Example 2b uses 17.25% flue cured tobacco (34.5*5/10).
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.
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.
Claims 10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Griffith et al. as applied to claim 1 above.
Regarding claim 10, Griffith discloses the consumable as discussed above with respect to claim 1, and further discloses that the resistive heating element and substrate retain an aerosol precursor ([0010]) that comprises up to 25% weight water ([0087]-[0088]) and about 5% to about 75% of the liquid component (i.e., aerosol precursor) ([0090]).
This means that water is present in amounts of 0%-18.75% (0*0.05*100; 25*0.75*100), which overlaps the claimed range 10-49.5%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 16, Griffith discloses the resistive heating element can be substantially rod shaped and can have a mean diameter of about 1.5 mm to about 3 mm ([0109]), which overlaps the claimed range of 0.5-2 mm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Griffith et al. as applied to claim 1 above, and further in view of Gordon (US 5023433).
Regarding claim 5, Griffith discloses the consumable as discussed above with respect to claim 1, wherein the conductive substrate is characterized as comprising a composite of carbon and conductive material, which is combined together to form a substantially homogeneous mixture of carbon and the conductive material ([0081]).
However, Griffith is silent as to the electrically conductive material is randomly distributed inside the heating layer and on a surface of the heating layer.
Gordon teaches an electrical heating unit (title) comprising a base sheet such as non-woven fibrous cellulose material having carbon particles embedded therein in a random arrangement and distributed in a more or less substantially uniform manner throughout substantially the entire area of the non-woven sheet (col. 1, ll. 31-37; col. 2, ll. 38-47; Fig. 1).
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 Griffith’s electrically conductive material to be randomly arranged in a uniform manner as in Gordon in order to reduce the hot or cold spots within the conductive substrate (Gordon; col. 2, ll. 45-47).
Moreover, the instant specification describes that ‘”mixing” means in this context that the ingredients of the consumable or the heating layer are diffusionable of distributionable” (p. 9, ll. 11-21), which leads to the electrically conductive material to be distributed in and on the layer (p. 5). Because Griffith discloses a product that is produced by the substantially identical process of mixing to form the claimed distribution, Griffith’s mixture of carbon and conductive material are expected to exhibit the distribution of the electrically conductive material “in and on the heating layer” as claimed. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” MPEP 2112.01(I).
Claims 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Griffith et al. as applied to claim 1 above, and further in view of Wang et al. (US 2023/0404151).
Regarding claim 8, Griffith discloses the consumable as discussed above with respect to claim 1, wherein the carbonaceous additive can comprise a binder ([0012]), which is used to maintain the substrate components as a cohesive mass ([0077]), wherein the binder can include cellulose esters such as methyl cellulose, hydroxymethyl cellulose and carboxymethyl cellulose ([0077]). Griffith further discloses that the resistive heating element and substrate retain an aerosol precursor ([0010]) that comprises up to 25% weight water ([0087]-[0088]) and about 5% to about 75% of the liquid component (i.e., aerosol precursor) ([0090]).
This means that water would mean that water is present in amounts of 0%-18.75% (0*0.05*100; 25*0.75*100).
However, Griffith is silent as to the binder in an amount between 0.5 and 2.5 wt%. Specifically, Griffith does not disclose the usable range of binder in the conductive substrate.
Wang teaches a heat-generating electronic paste composition (abstract) that uses a weight ratio of water-soluble binder to water of (15-30):100, which makes the water based carrier have a suitable viscosity and water retention that is not only beneficial in dispersing the functional phase, but also satisfies the requirements in processing a heat-generating circuit and improves the heat-generating effect ([0021]), wherein the water-soluble binder is selected from at least one of modified starch, methylcellulose, hydroxymethylcellulose, and carboxymethylcellulose ([0022]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used 15:30 parts of the binding agent to 100 parts of water as in Wang to Griffith’s conductive substrate to obtain the predictable result of forming a mixture of suitable viscosity that is beneficial in dispersing the functional phase and improving the heat-generating effect of the conductive substrate (Wang; [0021]). Using such a binder:water ratio would result in 0-5.625% binder (15*0/100; 30*18.75/100), which overlaps the claimed range of 0.5-2.5%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 18, modified Griffith discloses the binder is carboxymethyl cellulose ([0012] and [0077]; see also Wang at [0022]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Griffith et al. as applied to claim 1 above, and further in view of Plattner et al. (US 2019/0343168).
Regarding claim 12, Griffith discloses the consumable as discussed above with respect to claim 11, wherein the tobacco incorporated can be in the form of tobacco powder ([0071]).
However, Griffith is silent as to the tobacco comprises tobacco powder with a particle size of lower than 1000 microns.
Plattner teaches a tobacco mousse (title) comprising tobacco particles having a particle size of less than 200 µm ([0055] comprising a first fraction of less than 30 µm, and a second fraction of more than 30 µm ([0056]), for example a tobacco powder with a particle size of <30µm and a particle size of about 250 µm (Example 12; [0119]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated Plattner’s tobacco having a first fraction of 30µm and a particle size of about 250 µm as Griffith’s tobacco powder in order to reduce the harshness of the aerosol liberated upon heating in the first puffs (Plattner; [0056], [0119]).
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 1-2, 6-9, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-9, and 15 of copending Application No. 18/280721 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each because they claims vary slightly in scope.
Regarding claim 1, the copending application recites a consumable comprising: particles of at least one electrically conductive material, at least one aerosol forming agent, and at least one flavorant (claim 1).
Regarding the claim limitation “a heating layer of an aerosol substrate” and “electrically conductive material in particulate form embedded in the heating layer,” the consumable is considered to be a heating layer, and at least a portion of the electrically conductive material is embedded in the consumable because the consumable comprises the electrically conductive particles.
Regarding the claim limitation “wherein the electrically conductive material is arranged in the heating layer to conduct electrical current between two electrodes of an aerosol generating device and to heat the aerosol substrate to a temperature sufficient to aerosolize the aerosol forming agent when the heating layer is positioned between the two electrodes of the device,” this limitation has been considered, and construed as the manner of operating an apparatus that adds no additional structure to the apparatus as claimed. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP 2114. However, because the copending consumable is identical to the claimed invention, it is capable of being operated with similar if not identical claimed characteristics.
Regarding claim 2, the copending application recites wherein the electrical conductivity of the consumable is at least 3x102 S/m (at 20°C) (claim 9).
Regarding claim 6¸ the copending application recites wherein the electrically conductive carbon-containing material comprises charcoal, activated carbon, black carbon, or graphite (claim 15).
Regarding claims 7 and 17, the copending application recites wherein the particles of electrically conductive material are present in an amount of 35 to 60 wt%, based on total weight of the consumable (claim 2). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 8, the copending application recites wherein the at least one binder is present in an amount of 0.1 to 7 wt% based on the total weight of the consumable (claim 6). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 9, the copending application recites 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 7). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 18, the copending application recites the at least one binder comprises carboxymethyl cellulose (claim 8).
Regarding claim 19, the copending application recites wherein the at least one aerosol forming agent is a humectant, comprising glycerin, propylene glycol, or an alcohol (claim 7).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Chen (WO 2018/228131) discloses a consumable that includes a powdered electrical heating material (126; Figs. 11-12) that is distributed in a tobacco material (110).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONNY V NGUYEN whose telephone number is (571)272-8294. The examiner can normally be reached Monday - Friday; 7:00 AM - 3:00 PM EST.
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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