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
Claims 34 and 35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6-26-2026.
Applicant’s election without traverse of group I in the reply filed on 6-26-2026 is acknowledged.
Drawings
The drawings are all objected to under 37 CFR 1.84(u)(1). The view numbers for a plurality of drawings must be all preceded by the abbreviation “FIG.”
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 26 is objected to because of the following informalities: the claim recites at line 1: “The article of claim] 1…”. The stray bracket character appears to be a typographical error and should be removed. 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.
Claim 21 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 21, the term “preferably” 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 this office action and broadest reasonable interpretation, the limitations following preferably are interpreted to not be required by the claim.
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.
Claims 1-10, 14, 17, 23, 26, 28 are rejected under 35 U.S.C. 103 as being unpatentable over Roudier (US20150053219A1)
Regarding Claim 1-4, Roudier teaches an article for use in or as part of an aerosol provision system, the article comprising an aerosol generating material (substrate 6 includes tobacco 18); see [0123] and [0130] and FIG 3 and
a heat transfer material (heat conducting material 30’ (See FIG 3 and [0142] is the heat transfer material and can be a metal foil for distributing heat from a first region of the aerosol generating material to a second region of the aerosol generating material, e.g., the heat transfer material in the second heat conducting element conducts heat beyond the first heat conducting element in the downstream direction [0059], [0142], for the purposes of this office action the first region is interpreted to be the upstream front portion of the substrate adjacent to the heat transfer material, and the second region is interpreted to be the downstream portion of the substrate just beyond the heat transfer material.
Roudier teaches at [0033] that the heat transfer material has a thermal conductivity of between about 10 W/mK to about 500 W/mK which overlaps with the claim requirement that the heat transfer material having a thermal conductivity of at least 220 W/mK, less than about 5000 W/mK, greater than about 300 W/mK, and in the range of about: 220-5000 W/mK. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 5, modified Roudier teaches the heat transfer material can be aluminum in a form such as a foil [0035] that is according to table 1 on page 9, the device has a diameter of 7.8mm which surrounded with foil gives a circumference of 24.5 mm with a length of 11 mm (see [0142], 3mm longer than element 22) and a thickness of 20 microns and the weight of aluminum present is directly related to the size and therefore a change in weight is merely just a change in the total volume of aluminum provided in the article. Considering aluminum has a density of 2.70 mg/mm3, heat transfer material 30’ has a mass of about 14.5 mg which falls within the claimed range of about 1-25 mg.
Regarding Claim 6, modified Roudier teaches the claim limitations as set forth above. Additionally Roudier teaches in Table 1 that the aerosol forming substrate has a suitable density of 0.73 g/cm3, a length of 10mm and a diameter of 7.8mm which calculates a cylindrical mass of about 348.8 mg, which compared against the heat transfer material mass of 14.5 mg calculates to a ratio of heat transfer material to aerosol generating material of about 1:24 by weight which falls within the claimed range of the ratio of heat transfer material to aerosol generating material is in the range of about 1:10 to 1:100 by weight.
Regarding Claim 7, modified Roudier teaches the claim limitations as set forth above. Additionally, Roudier teaches the heat transfer material comprises at least one discrete portion of material in thermal contact with the first and second regions of the aerosol generating material, see FIG 3, e.g., Roudier’s second heat conducting foil 30’ transfers heat from the heat source and away from the heat source along the aerosol forming substrate region and beyond as illustrated in FIG 3 thereby dispersing heat along the aerosol forming substrate, see also [0148], and claim interpretation in 112b rejection above.
Regarding Claim 9, modified Roudier teaches the claim limitations as set forth above. Additionally, Roudier teaches the heat transfer material is elongate and extends parallel to the axis of the article, see FIG 3, the foil heat transfer material extends longitudinally along the article, see also [0039].
Regarding Claim 10, modified Roudier teaches the claim limitations as set forth above. Additionally, Roudier teaches the heat transfer material extends along the length of the aerosol generating material, see [0038]-[0039] and FIG 3 the heat conducting element may extend along the length of the aerosol generating substrate, the second heat conducting element is provided over at least a part of the article including the first heat conducting element.
Regarding Claim 14, modified Roudier teaches the claim limitations as set forth above. Additionally, Roudier teaches the aerosol forming substrate is about 10 mm long (See table 1 on page 9) and that the heat transfer material is about 8 mm long. Therefore, the length of the heat transfer material is about 80% of the length of the aerosol generating material which falls within the claimed range the heat transfer material is in the range of 10-90% of the length of the aerosol generating material.
Regarding Claim 17, modified Roudier teaches the claim limitations as set forth above. Additionally, Roudier teaches the heat transfer material comprises a plurality of discrete portions of material in thermal contact with respective first and second regions of the aerosol generating material (e.g., Roudier teaches heat transfer material portions 22 and 30’ which together comprise a plurality of discrete portions of material in thermal contact with respective first and second regions of the aerosol generating material [0148] and [0152]).
Regarding Claim 23, modified Roudier teaches the claim limitations as set forth above. Additionally, Roudier teaches the heat transfer material can be perforated [0028] which an ordinary artisan would appreciate perforations would include apertures, pores or cavities. Additionally, Roudier teaches the article comprises a further comprises tobacco [0087] which is an active substance and includes tobacco flavor and additionally teaches flavorants [0087], and
the active substance or flavor is located in one or more cavities of the heat transfer material (e.g., the heat transfer material is perforated, the tobacco material/aerosol forming substrate is within the cavity in the heat transfer material. Therefore, the active substance/flavor is located in/through one or more cavities of the heat transfer material as claimed (see FIG 3).
Regarding Claim 26, modified Roudier teaches the claim limitations as set forth above. Additionally, Roudier teaches further comprising a heating element (e.g., [0129] heat source 40, see FIG 3).
Regarding Claim 28, modified Roudier teaches the claim limitations as set forth above including the article of claim 1. Roudier teaches an aerosol provision system comprising a noncombustible aerosol provision device (see FIG 3), and a heating element (heat source 40, see also [0142] Roudier teaches the heat source can be an electric heat source [0062]). E.g., although the heat source alone can be configured to be combustible the aerosol provision device of Roudier itself is not combustible. Heat from the heat source 40 is used to heat the heat conducting element 30’ which in turn heats the aerosol generating material which produces aerosol and which is not configured to combust. [0148].
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mironov (US 20160150825 A1) as evidenced by Engineering Toolbox (https:// www.engineeringtoolbox.com/thermal-conductivity-metals-d_858.html# gsc.tab=0)
Regarding Claim 8, Mironov teaches an article for use in or as part of an aerosol provision system, the article comprising an aerosol generating material and a heat transfer material e.g., a first susceptor (aluminum first susceptor heat transfer material, [0010], and [0016]), for distributing heat from a first region of the aerosol generating material to a second region of the aerosol generating material (e.g., along the length of the susceptor), the heat transfer material having a thermal conductivity of at least 220 W/mK, e.g., the first susceptor is aluminum which has a thermal conductivity of 237 W/mK as evidenced by engineering toolbox.com.
Mironov teaches the heat transfer material is in the form of an elongate strip of aluminum [0020] which is interpreted to be equivalent to an elongate ribbon of aluminum extending through at least part of the aerosol generating material (e.g., within the aerosol generating material, see FIG 3 and [0014]).
Claims 19 is rejected under 35 U.S.C. 103 as being unpatentable over Roudier (US 20150053219 A1) as applied to claim 17, and in view of Sebastian (US20190261685A1).
Regarding Claim 19, modified Roudier teaches the claim limitations as set forth above. However, Roudier fails to explicitly disclose the heat transfer material is in the form of particles or powder
However, Sebastian similarly teaches tobacco aerosol generating materials and teaches heat transfer material (heat conducting constituents) can be incorporated within the aerosol generating material and that such heat conducting constituents can be in a granular or powder form [0075] and teaches that the heat conducting constituents can be located within the substrate [0065], and teaches that when the heat conducting constituents are implemented within the substrate the heat conducting constituents increase heat conduction within the substrate portion. Sebastian further teaches that when the heat conducting constituents are mixed into the substrate that the heat conduction throughout the aerosol generating material is increased in all directions [0078].
It would be obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify Roudier’s heat conducting element by providing the high thermal conductivity material in the granular or powder form of Sebastian and incorporating in in the aerosol forming substrate of Roudier, because Roudier expressly seeks to transfer heat along the substrate and disperse heat through a larger volume of aerosol forming substrate (Roudier [0148]). Sebastian teaches that powder/granular form heat conducting constituents in an aerosol forming substrate increase heat conduction within the substrate in all directions within the substrate. Therefore it would be obvious for a person of ordinary skill to make such a modification so that the substrate of Roudier can promote increased heat conduction within the substrate and promoting more uniform heating within the substrate as taught by Sebastian.
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Roudier (US 20150053219 A1) as applied to claim 1, and in view of Zhang (CN 110150722A), English machine translation relied upon and as evidenced by Graphene Info (https://www.graphene-info.com/graphene-thermal)
Regarding Claim 20, modified Roudier teaches the claim limitations as set forth above. Additionally, Roudier teaches the aerosol generating material comprises homogenized tobacco material [0087]. However, Roudier is silent to reconstituted tobacco and fails to explicitly disclose the tobacco material comprises reconstituted tobacco and that heat transfer material is mixed with the reconstituted tobacco.
However, Zhang teaches methods for producing suitable tobacco material for similar smoking devices and teaches the tobacco material (thermally conductive graphene [0037] comprises reconstituted tobacco and that heat transfer material is mixed with the reconstituted tobacco. (see [0092] and [0093]). Graphene has a thermal conductivity of between 3000 and 5000 W/mK evidenced by Graphene Info.
Zhang teaches that a problem exists with poor heat transfer performance and that by uniformly distributing thermally conductive materials into the reconstituted tobacco products, the method of Zhang can endow heated tobacco products with a rich aroma, sufficient smoke volume, excellent physical processing properties, and good smoking quality [0089].
Accordingly, it would be obvious for a person of ordinary skill in the art to replace the thermally conductive material of Roudier with the thermally conductive material of Zhang and to add and uniformly distribute the thermally conductive material of Zhang into the aerosol generating material of Roudier as taught by Zhang in order to endow the aerosol generating material of Roudier better heat transfer performance which would result with a rich aroma, sufficient smoke volume, excellent physical processing properties, and good smoking quality.
Regarding Claim 21, modified Roudier teaches the claim limitations as set forth above. However, Roudier fails to explicitly disclose the heat transfer material contains or comprises carbon.
Zhang teaches the heat transfer material contains or comprises graphene [0037] which contains carbon and graphene has a thermal conductivity of between 3000 and 5000 W/mK evidenced by Graphene Info.
Zhang teaches that a problem exists with poor heat transfer performance and that by uniformly distributing thermally conductive materials into the reconstituted tobacco products, the method of Zhang can endow heated tobacco products with a rich aroma, sufficient smoke volume, excellent physical processing properties, and good smoking quality [0089].
It would be obvious for a person of ordinary skill in the art to modify the aerosol generating composition of Roudier to replace the thermally conductive material of Roudier with the thermally conductive graphene material of Zhang and uniformly distribute it into the aerosolizable product of Roudier as taught by Zhang, in order to endow the aerosol generating material of Roudier with a rich aroma, sufficient smoke volume, excellent physical processing properties, and good smoking quality.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael T Fulton whose telephone number is (703)756-1998. The examiner can normally be reached Monday-Friday 7:00 - 4:30 ET.
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/M.T.F./Examiner, Art Unit 1747
/RUSSELL E SPARKS/Primary Examiner, Art Unit 1755
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