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. 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 , 3-9, 11, 13 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 -3, 10, 13-15 and 17 of copending Application No. 18/576,790 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because With respect to claims 1 and 4, copending Application No. 18/576,790 claims An aerosol-forming substrate comprising, on a dry weight basis: between 70 and 90 wt % carbon particles; between 7 and 26 wt % of an aerosol former; between 2 and 20 wt % of fibres ; and between 2 and 10 wt % of a binder, wherein each of the carbon particles consists of one or more of graphite, expanded graphite, graphene, carbon nanotubes, charcoal, and diamond (Claim 1). An aerosol-generating system comprising an aerosol-generating article according to claim 16 and an electrical aerosol-generating device for heating the combined aerosol-forming substrate of the aerosol-generating article (Claim 17). The claimed ranges overlap with the ranges for each material of copending Application No. 18/576,790 . MPEP 2144.05, I. With respect to claims 3 and 5, copending Application No. 18/576,790 claims that the carbon particles are expanded graphite and are in an amount 70 to 90 wt % (Claim 1). With respect to claims 6 and 7, copending Application No. 18/576,790 claims a particle size distribution having a volume D10 particle size between 1 and 20 microns and a particle size distribution having a volume D90 particle size between 50 and 300 microns (Claims 2 and 3). With respect to claim 8, copending Application No. 18/576,790 claims the carbon particles are substantially homogeneously distributed throughout the aerosol-forming substrate (Claim 9) and the carbon particles are the expanded graphite (Claim 1). With respect to claim 9, copending Application No. 18/576,790 claims the aerosol-forming substrate is a tobacco-free aerosol-forming substrate (Claim 10). With respect to claim 11, copending Application No. 18/576,790 claims A method of forming an aerosol-forming substrate according to claim 1 or a combined aerosol-forming substrate according to claim 12,the method comprising: forming a slurry comprising the carbon particles, the aerosol former, the fibres , and the binder; and casting and drying the slurry to form the aerosol-forming substrate or a precursor for forming into the aerosol-forming substrate (Claim 15). Claim 13 is rejected by claim 13 of copending Application No. 18/576,790 . Clam 15 is rejected by claim 14 of copending Application No. 18/576,790 . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. _________________________________________________________________ Claims 1- 3, 5, 8, 11, 13 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 6, 17, 22, 27, 29, 30 of copending Application No. 18/575,989 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: With respect to claim 1, copending Application No. 18/575,989 claims An aerosol-forming substrate for a heatable aerosol-generating article, the aerosol-forming substrate comprising: an aerosol-forming material and between 0.1 and 15 weight percent carbon particles, wherein the carbon particles have a volume mean particle size of greater than 10 microns, wherein the carbon particles have a particle size distribution having a D10 particle size and a D90 particle size, and wherein the D90 particle size is less than 20 times the D10 particle size (Claim 1 6 ), wherein the carbon particles consist of one or more of: graphite particles, expanded graphite particles, and graphene particles (Claim 17). With respect to claim 2, copending Application No. 18/575,989 claims the aerosol- forming substrate has a thermal conductivity of greater than 0.06 W/ mK (Claim 22). Greater than 0.06 W/ mK includes values greater than 0.06 W/ mK and including the claimed value. See, MPEP 2144.05, I. With respect to claims 3 and 5, copending Application No. 18/575,989 claims 0.1 to 15 wt % expanded graphite particles (Claims 16 and 17). With respect to claim 8, copending Application No. 18/575,989 claims homogenizing the slurry comprising the particles (Claim 27). With respect to claim 11, copending Application No. 18/575,989 claims A method of forming an aerosol-forming substrate according to claim 16, the method comprising: forming a slurry comprising an organic material and carbon particles having a volume mean particle size of greater than 10 microns and a particle size distribution having a D10 particle size and a D90 particle size, wherein the D90 particle size is less than 20 times the D10 particle size; homogenizing the slurry; and casting and drying the slurry to form the aerosol-forming substrate (Claim 27). With respect to claim 13, copending Application No. 18/575,989 claims An aerosol-generating article comprising an aerosol-forming substrate (Claim 29). With respect to claim 15, copending Application No. 18/575,989 claims An aerosol-generating system comprising an aerosol-generating article according to claim 29 and an electrical aerosol-generating device configured to heat the aerosol-generating article so as to generate an aerosol. (Claim 30). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. ______________________________________________________________________ Claims 1- 5 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 , 8, 9, 14 and 15 of copending Application No. 18/576,782 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because With respect to claim 1, copending Application No. 18/576,782 claims an aerosol forming substrate comprising a second material (Claim 1) comprising expanded graphite particles (Claim 8). With respect to claim 2, copending Application No. 18/576,782 a thermal conductivity of greater than .22 W/ mK (Claim 9). With respect to claims 3 and 5, copending Application No. 18/576,782 claims that the second material is 10 to 90 wt % of the substrate (Claim 14). With respect to claim 4, copending Application No. 18/576,782 claims overlapping ranges for the carbon material ( e.g. , expanded graphite; claim 8), aerosol former , fibers, and binder (Claim 14). With respect to claim 13, copending Application No. 18/576,782 claims an aerosol generating article comprising the substrate of claim 1 (Claim 15). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 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 , 3, 5 , 8 and 13 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by ZHOU et al. (CN 109763378 A, machine translation) . With respect to claim 1 , ZHOU et al. discloses an aerosol-forming substrate for use in a heat-not-burn article ( Abstract; Paragraphs [0001]-[0006]). The aerosol-forming substrate comprises expanded graphite particles (Paragraphs [0008]-[0014] , [0018] ). With respect to claim s 3 and 5 , ZHOU et al. discloses that the coating fluid is 50-90 parts tobacco extracts, 10-50 parts expanded graphite particles, 0.5-1.5 parts dispersing agent, 0.1-0.5 parts aromatics in a solution (Paragraphs [0018]-[0022]). At 60 parts extracts, 10 parts expanded graphite, 0.5 parts dispersing agent and 0.1 parts aromatics , the expanded graphite is present in the aerosol forming substrate in an amount of about 14 wt %. With respect to claim 8 , ZHOU et al. discloses that the components of the aerosol-forming substrate are uniformly mixed (Paragraph [0019]). With respect to claim 13 ¸ ZHOU et al. discloses a tobacco product cigarette paper (aerosol-generating article) comprising the coating liquid (of claim 1; see rejection of claim 1) (Abstract; Title). 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 . This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. ___________________________________________________________________ Claim (s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over GARCIA-DOTY (US 2022/0151285) having an earliest effective filing date of 8/8/2019 FILLIN "Insert the prior art relied upon." \d "[ 2 ]" . With respect to claim 2, ZHOU et al. does not explicitly disclose the thermal conductivity of the aerosol-forming substrate. GARCIA-DOTY disclose a vaporizable material (Abstract). The vaporizable material is provided with thermally conductive powders in order to provide the vaporizable material with a thermal conductivity between 0.2 and 0.6 W/ mK (Paragraph [0014]) in order to overcome heating difficulties of lower thermally conductive vaporizing materials (Paragraph [0009]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the aerosol generating substrate of ZHOU et al. with thermally conductive powders as taught by GARCIA-DOTY , so that the thermal conductivity is increased to 0.2 to 0.6 W/ mK thereby overcoming heating difficulties. _____________________________________________________________________________ Claim (s) 4 and 10- 12, 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over ZHOU et al. (CN 109763378 A, machine translation) in view of MUA et al. (US 2021/0195938) . With respect to claim 4 , ZHOU et al. discloses ZHOU et al. discloses that the coating fluid is dried is 50-90 parts tobacco extracts (e.g., aerosol former), 10-50 parts expanded graphite particles, 0.5-1.5 parts dispersing agent, 0.1-0.5 parts aromatics in a solution (Paragraphs [0018]-[0022]). At 50 parts extracts, 50 parts expanded graphite, 0.5 parts dispersing agent and 0.1 parts aromatics , the expanded graphite is present in the aerosol forming substrate in an amount of about 49.7 wt %, and the aerosol former is present in an amount of 49.7 wt %. Without the dispersing agents (e.g., dried) the expanded graphite and aerosol former are roughly 50 wt % each. ZHOU et al. does not explicitly disclose the claimed fibers and biner, per se. MUA et al. discloses an aerosol generating component including an aerosol forming material (Abstract). The substrate may include tobacco fibers and binders (Paragraphs [0014] and [0015]). The fibers are present in an amount of 5-55 wt % (Paragraph [0017]) and the binders are present in an amount of about 5 wt % (Paragraph [0073]). This allows a slurry to be formed of the aerosol forming material that can then be cas t (Paragraph [0087]), and the resulting material to form visible mainstream aerosol that resembles the appearance of tobacco smoke (Paragraph [0112]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide tobacco fibers between the claimed 2 and 20 wt % and a binder in an amount of 5 wt % in the aerosol-forming substrate of ZHOU et al. , as taught by MUA et al. , so that the slurry can be formed and cast onto the paper of ZHOU et al. and visible mainstream aerosol that resembles the appearance of tobacco smoke can be formed. Adding additional components to the dry graphite and aerosol former of ZHOU et al. would necessarily change the total wt % for each in the mixture. Assuming 50 grams for each of the expanded graphite and aerosol former, 10 grams of fiber and 6 grams of binder, the wt % for the graphite is about 43.1 wt %, aerosol former is about 43.1 wt %, fiber is about 8.6 wt % and the binder is about 5 wt %, of the dried aerosol forming substrate. With respect to claim 10, ZHOU et al. does not explicitly disclose that the aerosol forming tobacco material comprises tobacco particles. MUA et al. discloses an aerosol generating component including an aerosol forming material (Abstract). The substrate may include tobacco and binders (Paragraphs [0014] and [0015]). The tobacco being in powder form (Paragraph [0152]). This forms aerosol forming material that be cast and can then form visible mainstream aerosol that resembles the appearance of tobacco smoke (Paragraph [0112]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide tobacco powder in the aerosol forming substrate of ZHOU et al. , as taught by MUA et al. so that visible mainstream aerosol that resembles the appearance of tobacco smoke can be made. With respect to claim 11 , ZHOU et al. discloses an aerosol-forming substrate for use in a heat-not-burn article (Abstract; Paragraphs [0001]-[0006]). The aerosol-forming substrate comprises expanded graphite particles (Paragraphs [0008]-[0014], [0018]). The aerosol-forming substrate is formed by forming a fluid by combining all of the aforesaid ingredients and uniform mixing the ingredients in the dispersant . Then the fluid is coated onto cigarette paper and dried to form the aerosol forming substrate (Paragraphs [0010]-[00 22]) ZHOU et al. does not explicitly disclose forming a slurry that also includes fibers and a binder, and then casting the slurry to form the substrate. MUA et al. discloses an aerosol generating component including an aerosol forming material (Abstract). The substrate may include tobacco fibers and binders (Paragraphs [0014] and [0015]). The fibers are present in an amount of 5-55 wt % (Paragraph [0017]) and the binders are present in an amount of about 5 wt % (Paragraph [0073]). This allows a slurry to be formed of the aerosol forming material that can then be cast (Paragraph [0087]), and the resulting material to form visible mainstream aerosol that resembles the appearance of tobacco smoke (Paragraph [0112]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide tobacco fibers between the claimed 2 and 20 wt % and a binder in an amount of 5 wt % in the aerosol-forming substrate of ZHOU et al. , as taught by MUA et al. , so that the slurry can be formed and cast onto the paper of ZHOU et al. and visible mainstream aerosol that resembles the appearance of tobacco smoke can be formed. With respect to claim 12 , ZHOU et al. discloses mixing all of the ingredients to form a combined mixture (e.g., aerosol former, fibers, expanded graphite powder, binder; see rejection of claim 11) in water (Paragraphs [0010]-[0022]). Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans , 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious. MPEP 2144.04, IV, C. Thus, forming a first mixture comprising the aerosol former, fibers and water, then forming a second mixture comprising the expanded graphite powder and binder, and then mixing the two mixtures together is prima facie obvious absent new or unexpected results. With respect to claim s 14 and 15 , ZHOU et al. does not explicitly disclose a plurality of elements, including the aerosol forming substrate, assembled within a wrapper. MUA et al. discloses a filter at one end of the cigarette, a substrate (the filter and coated substrate represent a plurality of elements) coated with the aerosol forming material are wrapped in a wrapper (Paragraph [0056]-[0060]). It would have been obvious to provide the components of MUA et al. along with the aerosol forming substrate of ZHOU et al. so as to produce a cigarette that can be used in an electrical aerosol generating device for heating the aerosol forming substrate _____________________________________________________________________ Claim (s) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over ZHOU et al. (CN 109763378 A, machine translation) in view of CASHMORE et al. (US 2009/0038632) . With respect to claims 6 and 7 , ZHOU et al. discloses that the expanded graphite particles have a particle diameter of 15 microns (Paragraph [0018]). ZHOU et al. does not explicitly disclose that the D10 particle size is between 1 and 20 microns. CASHMORE et al. discloses smoking articles , such as cigarettes that comprise porous carbon materials (Abstract; Title) in order to reduce certain harmful chemicals (Paragraphs [0002]) in heat-not-burn applications (Paragraph [0046]). The carbon material is provided with a particle size distribution that prevents interference with manufacturing (Paragraphs [0041]-[00 43]). The D10 is greater than 10 microns and the D90/D10 particle size distribution is at least 10 (Paragraphs [0043]-[0045]). Thus it would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the 15 micron expanded graphite particles of ZHOU et al. as the D10 and provide a D90 of 150 microns, as taught by CASHMORE et al. so that interference with manufacturing can be prevented. ______________________________________________________________________ Claim (s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over ZHOU et al. (CN 109763378 A, machine translation) in view of ROUSSEAU et al. (US 2020/0275688) . With respect to claim 9, ZHOU et al. does not explicitly disclose that the aerosol generating material is tobacco free. ROUSSEAU et al. discloses an aerosol generating material that is tobacco free is provides a very mild and natural taste without any harsh components (Abstract). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide a cocoa bean husk as the aerosol generating material of ZHOU et al. so that the user is provided with a very mild taste without any harsh components. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT ALEX B EFTA whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (313)446-6548 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT 8AM-5PM EST M-F . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Philip Tucker can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-1095 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ALEX B EFTA/ Primary Examiner, Art Unit 1745