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 with traverse of Group I (claims 16-26) in the reply filed on 28 July 2026 is acknowledged. The examiner notes the omission of claim 28 and thanks the applicant for acknowledging that claim 28 should be a part of Group II, claims 27 and 28.
The traversal is on the ground(s) that:
Hejazi teaches the percentage of susceptor particles is a function of volume of the substrate and does not disclose the percentage as the weight percent.
A person having ordinary skill would not have considered Zinovik in view of Hejaz as the two inventions are directed to different technical problems. The Applicant argues that Hejaz is directed to porous susceptor particles loaded with aerosol precursor material where Zinovik does not disclose porous particles and only teaches the use of particles in in one embodiment.
This is not found persuasive because:
With respect to the argument that the prior art of Hejazi does not teach the weight percent but instead the volume percent, the examiner agrees with the Applicant’s argument; however, in consideration of additional prior art of Hajaligol (US20030041867A1) the case would still be considered restrictable. Hajaligol teaches the amount of carbon particulate material that can be in the aerosol forming material “from an effective amount up to about 75% by weight based on the total weight of the tobacco mixture.” [0005] as discussed in claim 1.
Both Hejaz and Zinovik are directed to inductively heated aerosol generating articles where the inductive portion is part of the aerosol generating article. Both teach that material for the inductive heating is contained in the aerosol generating material and may be in the form of a particulate. Further the art of Hejaz teaches a possible range of the diameter of the inductive particles but is silent with respect to the possible size distribution of said particles. Zinovik is used to teach the benefit of having particles that range in size and thus a person having ordinary skill would look to optimize the distribution to sufficiently heat the aerosol generating article.
The requirement is still deemed proper and is therefore made FINAL.
Status of the Claims
Claims 16-26 are pending and subject to this Office Action. Claims 27-30 have been withdrawn from consideration. This is the First Action on the merits of the claims.
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.
Claims 16-21, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Hejazi (US20190387787A1) , and further in view of Hajaligol, et al (US20030041867A1) and Zinovik, et al (WO2020064684A1) .
Regarding claim 16, Hejazi teaches an aerosol source member for use with an inductive heating device. The aerosol source member comprises a tobacco substrate infused with susceptor particles. (Abstract) Hejazi teaches the susceptor material can be selected from a list of possible materials including carbon. [0006] The prior art teaches the percentage of susceptor particles may be within the inclusive range of approximately 5% to approximately 35%. [0061] The susceptor particles have a diameter range of approximately 100 microns (0.1 mm) to 2 mm. [0086] The diameter of particles in this range would reasonably suggest a volume mean particle size greater than 10 microns.
Hejazi is silent with respect to the amount of carbon particles that would be in the aerosol forming material as a function of the weight of the material.
Hajaligol, directed to tobacco mixtures using an inorganic material to aid in heating, teaches a tobacco smoking mixture that includes tobacco and at least one inorganic particulate material. (Abstract, [0005]) The prior art teaches that this inorganic particulate material can be selected from a group of possible materials including a carbon material; specifically noting the possible use of graphite and activated carbon. Hajaligol teaches that the inorganic particulate material comprises “from an effective amount up to about 75% by weight based on the total weight of the tobacco mixture.” [0005] and “inorganic material may also be present in an amount effective to reduce the temperature of a burning portion of one or more components of a smoking article upon combustion/pyrolysis thereof.” [0014]
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 selecting the amount of the carbon material for the aerosol generating material from an effective amount up to 75% by weight as taught by Hajaligol because both Hejazi and Hajaligol are directed to aerosol generating articles that include carbon, Hajaligol teaches this addition reduces the temperature of a burning portion of one or more components of a smoking article upon combustion/pyrolysis thereof [0014] and may decrease the production of particular high-temperature products and/or reduce second hand smoke [0013], and this involves the use of a known technique to improve similar devices products in the same way.
Zinovik, directed to the design of a substrate for an inductively heating device, teaches an aerosol generating article with susceptor particles of varying sizes. The first susceptor size is selected with a focus on the heating function and the second susceptor size is chosen for temperature control. Thus the first susceptor is sized such that the susceptor particle presents a large surface area to the surrounding aerosol-forming substrate which advantageously enhances heat transfer. In contrast, the second susceptor primarily has a temperature control function, and therefore does not need to have a very large surface area. (p32 In 14-20)
Zinovik fails to teach the D90 particle size being less than 20 times the D10 particle size. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the relative size of two different size susceptor particles, having two unique functions, in the same aerosol forming substrate since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed the D90 particle size being less than 20 times the D10 particle size is critical and has unexpected results. In the present invention, one would have been motivated to optimize the particle size diameters of two different size particles motivated by the desire to both sufficiently heat the aerosol generating substrate and maintain temperature control within the aerosol generating material.
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 selecting susceptor particles of at least two different sizes as taught by Zinovik because both Hejazi and Zinovik are directed to aerosol generating articles for inductive heating devices, Zinovik teaches the larger particle size allows for enhanced heat transfer while the smaller particle size allows for temperature control, and this involves the use of a known technique to improve similar devices products in the same way.
Regarding claim 17, The prior art of Hejazi teaches that the susceptor particles may be comprised of carbon materials [0062] but is not specific as to the type of carbon that would be used.
Hajaligol teaches the use of various materials including inorganic carbonates and specifically notes the possible use of as the inorganic particulate material where the inorganic material may comprise an inorganic carbonate. ([0005], claims 1 and 2) Hajaligol teaches the inorganic carbonate material may be graphite, is used for the reducing the temperature of the article. ([0010], claim 3)
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 selecting graphite as the inorganic particulate material as taught by Hajaligol because both Hejazi and Hajaligol are directed to aerosol generating articles that include carbon, Hajaligol teaches this addition reduces the temperature of a burning portion of one or more components of a smoking article upon combustion/pyrolysis thereof [0014] and may decrease the production of particular high-temperature products and/or reduce second hand smoke [0013], and this involves the use of a known technique to improve similar devices products in the same way.
Regarding claim 18, Hejazi teaches the susceptor particles may be mixed with tobacco materials and further notes that the tobacco substrate may include other components such as glycerin, a known aerosol former, and a binder material, which may include a list of cellulose materials, starches, guar gum, carrageenan, locust bean gum, pectins and xanthan gum. [0079] The tobacco material is considered to read on the organic aerosol forming material.
Regarding claim 19, Hejazi teaches the tobacco material may include tobacco powder, tobacco shreds, tobacco strips, reconstituted tobacco material, or combinations thereof. [0079] As discussed in claim 16, Hejazi teaches the susceptor particles have a diameter range of approximately 100 microns (0.1 mm) to 2mm. [0086] The diameter of particles in this range would reasonably suggest a volume mean particle size that is greater than 10 microns.
Regarding claim 20, As discussed in claim 16, Hejazi teaches the susceptor particles have a diameter range of approximately 100 microns (0.1 mm) to 2mm. [0086] The diameter of particles in this range would reasonably suggest a volume mean particle size that than could be between 10 microns and 200 microns. Additionally Hejazi teaches that the tobacco substrate can comprise a sheet material ([0006], [0036], claim 5) and that the tobacco sheet may comprise a crimped sheet of reconstituted tobacco material. The prior art further teaches that the tobacco substrate may comprise overlapping layers providing the example of gathered material. [0051]
Regarding claim 21, As discussed in claim 16, Hejazi teaches the susceptor particles have a diameter range of approximately 100 microns (0.1 mm) to 2mm. [0086] The diameter of particles in this range would reasonably suggest a volume mean particle size that is between 30 microns and 150 microns.
Regarding claim 26, As discussed in claim 16, Hejazi teaches the susceptor particles have a diameter range of approximately 100 microns (0.1 mm) to 2mm. [0086] The diameter of particles in this range would reasonably suggest a volume mean particle size that is greater than could be equal to or greater than 150 microns.
Claims 22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Hejazi (US20190387787A1), Hajaligol, et al (US20030041867A1), and Zinovik, et al (WO2020064684A1) as applied to claim 16 above, and further in view of Ki, et al (WO2019245253A1, hereinafter referring to the machine translation provided).
Regarding claim 22, The prior art of Hejazi, Hajaligol, and Zinovik are silent with respect to the thermal conductivity of the aerosol forming substrate.
Ki teaches that the heat transfer material may include at least one of activated carbon, carbon nanotubes, graphene, and a polymer substrate having a thermal conductivity of 0.1 W/mK or higher. ([0009], [0073])
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, Hajaligol, and Zinovik by selecting graphene or activated carbon as taught by Ki because Hejazi, Hajaligol, Zinovik, and Ki are directed to aerosol generating articles for inductive heating devices, Ki teaches the use of the heat transfer material can increase the heat transfer efficiency of the aerosol generating structure [0072] and thus it would be obvious to select graphene having a thermal conductivity of 0.1 W/mK or higher [0073], and this involves the use of a known technique to improve similar devices products in the same way.
Regarding claim 24, The prior art of Hejazi, Hajaligol, and Zinovik is silent with respect to the use of graphene.
Ki teaches that the heat transfer material may include at least one of a selection of materials including graphene. [0073]
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, Hajaligol, and Zinovik by selecting graphene as taught by Ki because Hejazi, Hajaligol, Zinovik, and Ki are directed to aerosol generating articles for inductive heating devices, Ki teaches this provides a method of heating an aerosol generating substance to produce aerosols rather than burning a cigarette. [0002], and this involves the use of a known technique to improve similar devices products in the same way.
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, Hajaligol, and Zinovik by selecting graphene or activated carbon as taught by Ki because Hejazi, Hajaligol, Zinovik, and Ki are directed to aerosol generating articles for inductive heating devices, Ki teaches the graphene is selected for the desired thermal conductivity [0009], and this involves the use of a known technique to improve similar devices products in the same way.
Claims 23 is rejected under 35 U.S.C. 103 as being unpatentable over Hejazi (US20190387787A1), Hajaligol, et al (US20030041867A1), and Zinovik, et al (WO2020064684A1) as applied to claim 16 above, and further in view of Jordil, et al (WO2022073691A1).
Regarding claim 23, the prior art is silent with respect to the possible density of the aerosol forming substrate.
Jordil, directed to the design of aerosol generating articles, teaches an aerosol generating substrate having a density of from 150 mg/cm3 (150 kg/m3) to 500 mg/cm3 (500 kg/m3). (p8 ln 23-29, claim 11)
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, Hajaligol, and Zinovik by having the density of the aerosol generating substrate in the range as taught by Jordil because Hejazi, Hajaligol, Zinovik, and Jordil are directed to aerosol generating articles, Jordil teaches by controlling the density of the aerosol-generating substrate itself, the inventors have found that it is easier to better and more consistently control the overall RTD of the aerosol-generating article (p5 ln 16-18), and this involves the use of a known technique to improve similar devices products in the same way.
Claims 25 is rejected under 35 U.S.C. 103 as being unpatentable over Hejazi (US20190387787A1), Hajaligol, et al (US20030041867A1), and Zinovik, et al (WO2020064684A1, hereinafter referred to as Zinovik '684) as applied to claim 16 above, and further in view of Zinovik, et al (WO2020064682A1, hereinafter referred to as Zinovik '682) .
Regarding claim 25, Hejazi teaches the particle size between 100 microns and 2000 microns [0086] but is silent with respect to the particles being smaller than this.
Zinovik ‘682 teaches the susceptor particles having a spherical diameter between 10 micrometers and 100 micrometers. (p7 ln 4-5)
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, Hajaligol, and Zinovik '684 by using a particle size for the carbon particles as taught by Zinovik ‘682 because Hejazi, Hajaligol, Zinovik '684, and Zinovik ‘682 are directed to inductively heated aerosol generating articles, Zinovik ‘682 teaches the susceptor particle size is selected to optimize heat transfer (p6 ln 19), and this involves the use of a known technique to improve similar devices products in the same way.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA R BIEGER whose telephone number is (703)756-1014. The examiner can normally be reached M-Th: 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.R.B./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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