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 .
Status of the Claims
Claims 1-15 are pending and are subject to this office action. Claims 1, 9, 12, 13, and 15 are amended. This is the first Office Action on the merits of the claims.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-12, drawn to an aerosol generating article in the reply filed on 06/10/2026 is acknowledged. The traversal is on the grounds that Groups I, II, and III share a special technical feature which defines a contribution over the prior art and the restriction requirement is improper. Specifically, Applicant argues Hejazi does not disclose that (A) each of the plurality of thermally conductive particles has a thermal conductivity greater than 0.3 W/(mK) in at least one direction at 25 degrees Celsius, and (B) the substrate is in the form of a tube having an outer diameter and an inner diameter, the inner diameter being between 2.5 mm and 19 mm, which are limitations added to claims 1 and 13 in the amended claims filed on 06/10/2026. This is not found persuasive because new shared technical feature does not make a contribution over the prior art over Hejazi (US 20190387787 A1, as cited on IDS dated 04/09/2024) in view of Chapman (US 5690127 A), as evidenced by Aluminum Thermal Conductivity, (NIST.gov), as presented in the prior art rejection below. The shared technical feature linking Groups I-III lacks novelty or inventive step and does not make a contribution over the prior art. Therefore, no single general inventive concept exists and the restriction requirement is still appropriate.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/10/2026.
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4 recites, “in each of the thermally conductive particles consists of”. The limitation, “in each” appear to be typographical error of the limitation, “wherein each” or “in which each.”
Appropriate correction is required.
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 2, 7, 11, and 12 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.
Regarding claims 2, 11, and 12, the phrase "for example" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of examination, claim 2 will be interpreted as the aerosol forming substrate comprising 5-95 wt% of thermally conductive particles on a dry weight basis, claim 11 will be interpreted as the hollow tubular segment is a rolled sheet of aerosol forming material, and claim 12 will be interpreted as the hollow tubular segment is an extruded tube of aerosol forming material.
Further regarding claim 2, 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 2 recites the broad recitation 5-95 wt% of thermally conductive particles, and the claim also recites 10-90 wt% of thermally conductive particles which is the narrower statement of the range/limitation. The claim is 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, claim 2 will be interpreted as the aerosol forming substrate comprising 5-95 wt% of thermally conductive particles on a dry weight basis.
Regarding claim 7, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of examination, claim 7 will be interpreted as the aerosol forming substrate comprises one or more organic materials.
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.
Claims 1, 6-7, and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hejazi (US 20190387787 A1, as cited on IDS dated 04/09/2024) in view of Chapman (US 5690127 A), as evidenced by Aluminum Thermal Conductivity, (NIST.gov).
Regarding claim 1, Hejazi discloses an aerosol source member (104, “an aerosol generating article”) for use with an inductive heating device (Fig. 2, [0007, 0035, 0064]) comprising:
A substrate portion (110, “aerosol forming substrate”) having a longitudinal opening (135, “hollow tubular segment defining a substrate cavity”, Fig. 4, [0049-0050]).
“A longitudinal opening” is considered to be an opening that extends along the length of the substrate portion from an upstream end to a downstream end.
The substrate portion (110) comprises thermally conductive susceptor particles (132) and glycerin (“an aerosol former”, Fig. 4, [0049-0050, 0062]).
Hejazi discloses the thermally conductive susceptor particles (132) may be formed of metals such as aluminum ([0062]).
Hejazi does not explicitly disclose the thermal conductivity of the aluminum susceptor particles. However, as evidenced by “Aluminum Thermal Conductivity” (NIST.gov), the thermal conductivity of aluminum at 25°C is about 205 W/mK. Therefore, the thermal conductivity of the aluminum particles taught by the prior art lies within the claimed range of greater than 0.3 W/mK at 25°C in at least one direction and is therefore considered prima facie obvious.
The Examiner notes that pure aluminum is isotropic and therefore the thermal conductivity is the same in all directions.
Hejazi is silent to the dimensions of the substrate portion (110).
However, Chapman, directed to a cigarette (20, Fig. 2), discloses:
A hollow rod (22) of aerosol forming material, having an interior passage (24) with a diameter of 0.5-6.5mm (Fig. 2, col. 5 lines 33-56). The claimed range overlaps with the inner diameter range taught by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hejazi by providing the tubular substrate with an inner diameter of 0.5-6.5mm as taught by Chapman because both Hejazi and Chapman are directed to aerosol generating articles, Hejazi is silent to the dimensions of the substrate portion, Chapman teaches a similar tubular substrate having an inner diameter of 0.5-6.5mm, and one having ordinary skill in the art would be motivated to look to similar aerosol generating substrates for workable ranges of inner diameter and this involves applying known inner diameter range to a similar tubular aerosol generating substrate to yield predictable results.
Regarding claim 6, Hejazi disclose the susceptor particle (132) are homogeneously distributed throughout the substrate portion (110, Fig. 4).
Regarding claim 7, Hejazi discloses the substrate portion comprises tobacco ([0049]).
Regarding claim 9, Hejazi is silent to the dimension of the substrate portion (110).
However, Chapman, directed to a cigarette (20, Fig. 2), discloses:
A hollow rod (22) of aerosol forming material having an external diameter of 5-10mm and length of 20-125mm (Fig. 2, col. 2 lines 63-67, col. 5 lines 33-41). The claimed ranges of outer diameter and length overlap with the ranges taught by the prior art and are therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hejazi, in view of Chapman, by providing the tubular substrate with an outer diameter of 5-10mm and length of 20-125mm as taught by Chapman because both Hejazi and Chapman are directed to aerosol generating articles, Hejazi is silent to the dimensions of the substrate portion, Chapman teaches a similar tubular substrate having an outer diameter of 5-10mm and length of 20-125mm, and one having ordinary skill in the art would be motivated to look to similar tubular aerosol generating substrates for workable ranges of outer diameter and length, and this involves applying known outer diameter range and length range to a similar tubular aerosol generating substrate to yield predictable results.
Regarding claim 10, Chapman discloses a hollow rod (22) of aerosol forming material having an inner diameter of 0.5-6.5mm, outer diameter of 5-10mm, and length of 20-125mm (Fig. 2, col. 2 lines 63-67, col. 5 lines 33-56). The claimed ranges for length, outer diameter, and inner diameter overlap with the ranges taught by the prior art and are therefore considered prima facie obvious.
Regarding claim 11, Hejazi discloses the tubular substrate portion (110) may be formed of a wound roll of reconstituted tobacco ([0051]).
Regarding claim 12, Hejazi discloses the tubular substrate portion (110) is an extruded tobacco structure ([0049-0050]).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Hejazi (US 20190387787 A1, as cited on IDS dated 04/09/2024) in view of Chapman (US 5690127 A), as evidenced by Aluminum Thermal Conductivity, (NIST.gov), further in view of Kim (US 20230292812 A1).
Regarding claim 2, Hejazi discloses susceptor particles (132) formed of aluminum which may be 5-35% of the substrate portion (110) by volume ([0061]).
Further, as evidenced by Aluminum Thermal Conductivity, (NIST.gov), the thermal conductivity of aluminum at 25°C is about 205 W/mK. The Examiner notes that pure aluminum is isotropic and therefore the thermal conductivity is the same in all directions. Therefore, the thermal conductivity of the aluminum particles taught by the prior art lies within the claimed range of greater than 1 W/mK at 25°C is in at least one direction and is therefore considered prima facie obvious
Hejazi is silent to the amount of susceptor particles by weight.
However, Kim, directed to an aerosol generating article (2000, Fig. 5, [0060]), discloses:
A tobacco medium section (220) comprising less than 20 wt % on a dry weight basis thermally conductive powder ([0065-0066, 0080]).
The tobacco medium section becomes too hot if the amount of thermally conductive powder is too high which transmits too much heat to the user ([0080]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hejazi, in view of Chapman, by providing the susceptor particles in an amount of less than 20 wt% as taught by Kim because both Hejazi and Kim are directed to aerosol generating articles, Kim teaches less than 20 wt% thermally conductive particles prevents the substrate from getting too hot, and this involves applying known amount of thermally conductive particles a similar aerosol generating substrate to yield predictable results.
Regarding claim 3, Hejazi discloses the susceptor particles (132) may be 5-35% of the substrate portion (110) by volume ([0061]).
Hejazi is silent to the amount of susceptor particles by weight.
However, Kim, directed to an aerosol generating article (2000, Fig. 5, [0060]), discloses:
A tobacco medium section (220) comprising less than 20 wt % on a dry weight basis thermally conductive powder ([0065-0066, 0080]).
The tobacco medium section becomes too hot if the amount of thermally conductive powder is too high which transmits too much heat to the user ([0080]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hejazi, in view of Chapman, by providing the susceptor particles in an amount of less than 20 wt% as taught by Kim because both Hejazi and Kim are directed to aerosol generating articles, Kim teaches less than 20 wt% thermally conductive particles prevents the substrate from getting too hot, and this involves applying known amount of thermally conductive particles a similar aerosol generating substrate to yield predictable results.
Hejazi, in view of Chapman and Kim, does not explicitly disclose the overall thermal conductivity of the substrate. However, Hejazi discloses the thermally conductive susceptor particles (132) may be formed of metals such as aluminum ([0062]), Kim discloses using less than 20 wt % of thermally conductive particles in the substrate ([0065-0066, 0080]), and the thermal conductivity of aluminum at 25°C is about 205 W/mK (as evidenced by Aluminum Thermal Conductivity, NIST.gov). Therefore, a person having ordinary skill of the art could have reasonably arrived at an aerosol generating substrate having a thermal conductivity in a range that overlaps with the claimed range of greater than 0.12 W/mK at 25°C in at least one direction and is therefore considered prima facie obvious.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hejazi (US 20190387787 A1, as cited on IDS dated 04/09/2024) in view of Chapman (US 5690127 A), as evidenced by Aluminum Thermal Conductivity, (NIST.gov), further in view of Sebastian (US 20190261685 A1) as evidenced by Thermal Properties of Graphite- Thermal Conductivity (CFC Carbon).
Regarding claim 4, Hejazi discloses the susceptor particles (132) may be formed of a carbon material ([0086]).
Hejazi does not explicitly disclose the carbon material is one or more of graphite, expanded graphite, graphene, carbon nanotubes, charcoal or diamond.
However, Sebastian, directed to an aerosol source member (104, Fig. 1, [0055]), discloses:
A substrate portion (110) comprising heat conducting constituents made of a metal material or graphite in granular or powder form (i.e. thermally conductive particles, [0058,0075]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hejazi, in view of Chapman, by forming the particles of graphite as taught by Sebastian because both Hejazi and Sebastian are directed to aerosol generating articles, Hejazi discloses the susceptor particles may be formed of a carbon material but is silent to the specific carbon material used, Sebastian discloses a similar substrate comprising thermally conductive particles made of graphite and this involves applying a known carbon material to thermally conductive particles in a similar aerosol generating substrate to yield predictable results.
Sebastian does not explicitly disclose the thermal conductivity of the graphite particles. However, as evidenced by “Thermal Properties of Graphite- Thermal Conductivity”, the thermal conductivity of graphite at 25°C is 2 W/mK or 390 W/mK depending on the direction. Thus, the thermal conductivity of the graphite particles taught by the prior art lies within the claimed range of greater than 0.3 W/mK at 25°C in at least one direction and is therefore considered prima facie obvious.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hejazi (US 20190387787 A1, as cited on IDS dated 04/09/2024) in view of Chapman (US 5690127 A), as evidenced by Aluminum Thermal Conductivity, (NIST.gov), further in view of Kim (US 20230292812 A1) and Sebastian (US 20190261685 A1) as evidenced by Thermal Properties of Graphite- Thermal Conductivity (CFC Carbon).
Regarding claim 5, Hejazi discloses the substrate portion (110) may comprise susceptor particles, tobacco material, glycerin, binder, and/or fillers ([0049]).
Hejazi is silent to the amounts of the components in the substrate portions (110) and does not explicitly disclose the substrate comprises 10-90 wt% thermally conductive particles, 7-60 wt % of an aerosol former; 2-20 wt % of fibers; and 2-10 wt % of a binder.
However, Kim, directed to an aerosol generating article (2000, Fig. 5, [0060]), discloses:
A tobacco medium section (220) comprising thermally conductive powder (Fig. 5, [0063]).
The tobacco medium (220) may comprise 60-80 wt % of tobacco powder, 5-20 wt % of thermally conductive powder, 3-7 wt % of additives, 6-10 wt % of binder, and 5 wt-12 wt % of moisturizer, based on dry weight (Fig. 6, [0071-0073, 0082]). The claimed ranges overlap with the ranges taught by the prior art and are therefore considered prima facie obvious.
The additive may include pulp (fibers) and the moisturizer may include glycerin ([0063, 0068]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hejazi, in view of Chapman, by providing the substrate with the amounts of susceptor particles/ thermally conductive powder, tobacco material, glycerin/moisturizer, binder, and fillers/additives as taught by Kim because both Hejazi and Kim are directed to aerosol generating articles, Hejazi discloses the substrate portion may comprise susceptor particles, tobacco material, glycerin, binder, and/or fillers but is silent to the specific content of each component, Kim discloses a similar substrate comprising thermally conductive particles having known amounts of susceptor particles/ thermally conductive powder, tobacco material, glycerin/moisturizer, binder, and fillers/additives, one having ordinary skill in the art would be motivated to look to similar aerosol generating substrates for workable ranges for each substrate component, and this involves applying a known proportion of susceptor particles/ thermally conductive powder, tobacco material, glycerin/moisturizer, binder, and fillers/additives in a similar aerosol generating substrate to yield predictable results.
Hejazi discloses the susceptor particles (132) may be formed of a carbon material ([0086]).
Hejazi does not explicitly disclose the carbon material is one or more of graphite, expanded graphite, graphene, carbon nanotubes, charcoal or diamond.
However, Sebastian, directed to an aerosol source member (104, Fig. 1, [0055]), discloses:
A substrate portion (110) comprising heat conducting constituents made of a metal material or graphite in granular or powder form (i.e. thermally conductive particles, [0058,0075]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hejazi, in view of Chapman and Kim, by forming the particles of graphite as taught by Sebastian because both Hejazi and Sebastian are directed to aerosol generating articles, Hejazi discloses the susceptor particles may be formed of a carbon material but is silent to the specific carbon material used, Sebastian discloses a similar substrate comprising thermally conductive particles made of graphite and this involves applying a known carbon material to thermally conductive particles in a similar aerosol generating substrate to yield predictable results.
Sebastian does not explicitly disclose the thermal conductivity of the graphite particles. However, as evidenced by “Thermal Properties of Graphite- Thermal Conductivity”, the thermal conductivity of graphite at 25°C is 2 W/mK or 390 W/mK depending on the direction. Thus, the thermal conductivity of the graphite particles taught by the prior art lies within the claimed range of greater than 0.3 W/mK at 25°C in at least one direction and is therefore considered prima facie obvious.
Claims 1 and 8 are rejected under 35 U.S.C. 103 as being unpatentable Mua (US 20220104532 A1) in view of Kim (US 20230292812 A1), and Chapman (US 5690127 A), as evidenced by as evidenced by Aluminum Thermal Conductivity, (NIST.gov).
Regarding claim 1, Mua discloses aerosol generating component (104, “an aerosol generating article”) configured to generate an aerosol by heating (Fig. 2, [0005, 0088]) comprising:
A substrate portion (110) having a cylindrical shape and central orifice (“a hollow tubular segment”, Fig. 5B, [0182]).
The central orifice in Fig. 5B is shown to extend entirely through the substrate and therefore the substrate is considered to comprise a substrate cavity extending between and upstream end and downstream end of the substrate.
The substrate comprising at least one aerosol forming material (“an aerosol former”, [0006, 0013]).
Mua does not explicitly disclose the substrate portion comprises thermally conductive particles.
However, Kim, directed to an aerosol generating article (2000, Fig. 5, [0060]), discloses:
A tobacco medium section (220) comprising a thermally conductive powder such as aluminum (Fig. 5, [0063]).
The inclusion of a thermally conductive powder in the tobacco medium section increases the heat transfer efficiency of the tobacco medium section ([0006, 0065]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Mua by providing the substrate with a thermally conductive powder as taught by Kim because both Hejazi and Kim are directed to aerosol generating articles, Kim teaches the inclusion a thermally conductive powder increases the heat transfer efficiency of the tobacco medium, and this involves applying a known thermally conductive powder to a similar aerosol generating substrate to yield predictable results.
Kim does not explicitly disclose the thermal conductivity of the aluminum particles. However, as evidenced by Aluminum Thermal Conductivity, (NIST.gov), the thermal conductivity of aluminum at 25°C is about 205 W/mK. Therefore, the thermal conductivity of the aluminum particles taught by the prior art lies within the claimed range of greater than 0.3 W/mK and is therefore considered prima facie obvious.
Mua is silent to the dimensions of the tubular substrate portion.
However, Chapman, directed to a cigarette (20, Fig. 2), discloses:
A hollow rod (22) of aerosol forming material, having an interior passage (24) with a diameter of 0.5-6.5mm (Fig. 2, col. 5 lines 33-56). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Mua by providing the tubular substrate with an inner diameter of 0.5-6.5mm as taught by Chapman because both Mua and Chapman are directed to aerosol generating articles, Mua is silent to the dimensions of the substrate portion, Chapman teaches a similar tubular substrate having an inner diameter of 0.5-6.5mm, and one having ordinary skill in the art would be motivated to look to similar aerosol generating substrates for workable ranges of inner diameter and this involves applying known inner diameter range to a similar tubular aerosol generating substrate to yield predictable results.
Regarding claim 8, Mua discloses the substrate is free of tobacco material ([0066, 0100])
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORGAN FAITH DEZENDORF whose telephone number is (571)272-0155. The examiner can normally be reached M-F 8am-430pm EST.
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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