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. This is the first Office Action on the merits of the claims.
Election/Restriction
Applicant's election with traverse of Claims 1-7 in the reply filed on July 17, 2026 is acknowledged.
On page 3-4, Applicant argues that because Kong relates to improving the heat conductivity of the non-combustion cigarette cut tobacco module, while Johaentges relates to electrically conductive tobacco with a heating layer as a consumable for an aerosol generating device, a person of ordinary skill in the art would have no motivation to look towards Johaentges to modify Kong. Examiner respectfully disagrees with the arguments because Johaentges has been relied upon for its disclosure that graphite or charcoal particles can be added to a layer of reconstituted material to improve its thermal conductivity. Specifically, Johaentges states that the consumable comprises a heating layer of aerosol substrate, wherein electrically conductive material (e.g. carbon particles) is arranged in the heating layer to conduct electrical current between the two electrodes and/or to heat the aerosol substrate to a temperature sufficient to aerosolize the aerosol forming agent (Johaentges, [0005]-[0006]). Therefore, while Johaentges relates to an electrically conductive tobacco substrate, the carbon particles serve the dual purpose of increasing thermal conductivity and electrical conductivity. Though Kong and Johaentges provide thermally conductive aerosol generating substrates which are used in different heating configurations, Johaentges has not been relied upon for its specific heating configuration. As such, one of ordinary skill in the art would have been motivated by Johaentges’ disclosure that carbon particles can be added to a substrate to increase its thermal conductivity to modify Kong as argued by the Examiner. Additionally, Sebastian (US 2019/0261685 A1) provides an explicit recitation that graphite can be added to an aerosol generating substrate as a heat conducting component (Sebastian, [0075]).
On pg. 5, Applicant argues that a person of ordinary skill in the art would not isolate the teaching of Johaentges to provide electrically conductive carbon particles in the consumable and apply this teaching to Kong when the particles serve completely different purposes in each disclosure. Examiner respectfully disagrees with the arguments because, as described above, Johaentges and Sebastian provide explicit disclosures that graphite (carbon particles) can be added to an aerosol generating substrate to improve its thermal conductivity. As the modification only requires a simple material substitution of metal particles to graphite particles, which are known in the art to be thermally conductive, one of ordinary skill in the art would have sufficient motivation to make the proposed modification.
On pg. 6, Applicant argues that a person of ordinary skill in the art would not arbitrarily include the aerosol forming agent of Johaentges in the heat conductive sheet base 1 of Kong because the consumable of Johaentges has a completely different form to the tobacco module of Kong, and there is no teaching in Kong that the tobacco module has an issue with elasticity. Examiner respectfully disagrees with the arguments because Johaentges demonstrates that the addition of an aerosol forming agent improves the elasticity of the substrate and its ability to be shaped (Johaentges, [0027]). While there is no disclosed issue with elasticity in Kong, one of ordinary skill in the art would have still been motivated by the disclosure in Johaentges to improve the substrate’s ability to shaped into a roll as required by Kong (Kong, [0013], Figs. 1-2). Further, Kong states that the layer of thermally conductive material may comprise a flavor (Kong, [0030]) and Johaentges demonstrates that a substrate comprising an aerosol forming agent including flavors can be heated to modify a tobacco based aerosol (Johaentges, [0029]).
On pg. 6, Applicant argues that the Examiner's proposed combination appears to rely on improper hindsight because the proposed modification selects isolated features from Johaentges, despite their different functions in an electrically heated consumable. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, it would have been obvious to one of ordinary skill in the art to replace the thermally conductive particles of Kong with the thermally conductive particles of Johaentges because Kong and Johaentges are directed to aerosol-forming substrates, Johaentges demonstrates that graphite particles are suitable for forming a conductive aerosol forming substrate (Johaentges, [0023]), and this involves substituting one known thermally conductive particle for another to yield predictable results. Further, it would have been obvious to one of ordinary skill in the art to provide an aerosol former in the layer of thermally conductive material of Kong because Kong states that the layer of thermally conductive material may comprise a flavor (Kong, [0030]), Johaentges demonstrates that a substrate comprising an aerosol forming agent including flavors can be heated to modify a tobacco based aerosol (Johaentges, [0029]), Johaentges demonstrates that the addition of an aerosol forming agent improves the elasticity of the substrate and its ability to be shaped (Johaentges, [0027]), and this involves combining prior art elements according to known methods to yield predictable results.
The requirement is still deemed proper and is therefore made FINAL.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kong (CN 109567258 A, English Translation) in view of Johaentges (US 2024/0138471 A1) and Sebastian (US 2019/0261685 A1), as evidenced by Meehan (US 2012/0034499 A1).
Regarding Claims 1 and 4, Kong, directed to aerosol-forming substrates ([0001]-[0008]), teaches an aerosol-forming substrate for use in a heated aerosol-generating article ([0047], Fig. 2 is a structural schematic diagram of the finished product of the heated noncombustible cigarette tobacco module of the present invention. Heated tobacco generates an aerosol), the aerosol-forming substrate comprising
a co-laminated sheet comprising a layer of aerosol-forming material and a layer of thermally conductive material different to the aerosol-forming material ([0013], Fig. 2; A heated non-combustible cigarette tobacco module includes a heat-conducting tobacco structure distributed around the central axis of the tobacco module. The heat-conducting tobacco structure is composed of alternating heat-conducting sheet bases and tobacco sheets. The heat-conducting tobacco structure is composed of alternating heat-conducting sheet base 1 (a layer of thermally conductive material) and tobacco sheet 2 (a layer of aerosol-forming material)),
wherein: the layer of thermally conductive material comprises a reconstituted material, the reconstituted comprising thermally conductive particles; and the thermally conductive particles each have a thermal conductivity of at least 1 Watt per metre Kelvin in at least one direction at 25 degrees Celsius ([0013], Fig. 2; The heat-conducting sheet base 1 is made by wet papermaking and high-pressure pressing of raw materials including plant fibers, metal powder and binder. [0024], the metal powder is one or more of copper, aluminum, zinc, tin, iron, silver, gold, and their alloys; Copper has a
thermal conductivity of between about 395 and about 405 W/m-K; see Meehan, [0020]),
but does not teach the substrate wherein the layer of thermally conductive material is a reconstituted carbon-based material, the reconstituted carbon-based material comprising an aerosol former on a dry weight basis of between 7 and 60 wt %.
Johaentges, directed to aerosol-forming substrates ([0001]), teaches an aerosol-forming substrate comprising a layer of thermally conductive material ([0005], A consumable for an aerosol generating device according to the invention comprises a heating layer of an aerosol substrate; and [0062], Fig. 1; Consumable 1 is formed as a layer, in particular being or comprising a heating layer 3),
wherein the layer of thermally conductive material is a reconstituted carbon-based material, the reconstituted carbon-based material comprising: thermally conductive particles ([0062], Fig. 1; Consumable 1 comprises at least flavorant material 5, electrically conductive material 7 and optionally aerosol forming agent 6; and [0023], the electrically conductive material is graphite or charcoal particles. The material may take the form of powder, loose or agglomerated particles; and [0034]-[0037] describe a process for forming the heating layer 7 involving reconstituting a carbon powder to form a paste; and [0005]-[0006], electrically conductive material (e.g. carbon particles) is arranged in the heating layer to conduct electrical current between the two electrodes and/or to heat the aerosol substrate to a temperature sufficient to aerosolize the aerosol forming agent); and
an aerosol former on a dry weight basis of between 7 and 60 wt % ([0062], Fig. 1; Consumable 1 comprises at least flavorant material 5, electrically conductive material 7 and optionally aerosol forming agent 6; and [0027], the aerosol forming agent comprises an amount of at least 5 wt. % and less than 25 wt. % regarding the consumable; and [0028], the layer further comprises water in an amount comprised between 10 and 49.5 wt. %. At a water content of 10 wt%, the consumable 1 comprises aerosol forming agent at an amount of 4.5 wt% - 22.5 wt% on a dry weight basis), and
the thermally conductive particles each have a thermal conductivity of at least 1 Watt per metre Kelvin in at least one direction at 25 degrees Celsius ([0023], the electrically conductive material is graphite; Graphite has a thermal conductivity of at least 1 Watt per metre Kelvin in at least one direction at 25 degrees Celsius; see instant specification, pg 5, ln 23-33).
Sebastian, directed to aerosol forming substrates ([0001]), teaches an aerosol-forming substrate ([0075], [0078], Fig. 4; Aerosol generating substrate sheet 200) comprising
a layer of thermally conductive material, wherein the layer of thermally conductive material is a reconstituted carbon-based material, the reconstituted carbon-based material comprising: thermally conductive fibers having a thermal conductivity of at least 1 Watt per metre Kelvin in at least one direction at 25 degrees Celsius ([0078], Fig. 4; The fibrous filler material, aerosol forming material, binder material, and the plurality of heat conducting constituents may be blended together to form a slurry, which may be cast onto a surface and dried. The resulting substrate sheet 200 includes the plurality of metal fibers 202 randomly; and [0075], The aerosol generating substrate may also include a plurality of heat conducting constituents. The heat conducting constituents comprise a plurality of metal fibers 202 such as graphite; Graphite has a thermal conductivity of at least 1 Watt per metre Kelvin in at least one direction at 25 degrees Celsius; see instant specification, pg 5, ln 23-33).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the thermally conductive particles of Kong with the thermally conductive particles of Johaentges because Kong, Johaentges, and Sebastian are directed to aerosol-forming substrates, Johaentges and Sebastian both demonstrate that graphite particles are suitable for imparting thermal conductivity to an aerosol forming substrate (Johaentges, [0005]-[0006], [0023]; and Sebastian, [0075]), and this involves substituting one known thermally conductive particle for another to yield predictable results.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide an aerosol former in the layer of thermally conductive material of Kong at the aerosol former amount disclosed by Johaentges because Kong and Johaentges are directed to aerosol-forming substrates, Kong states that the layer of thermally conductive material may comprise a flavor (Kong, [0030]), Johaentges demonstrates that a substrate comprising an aerosol forming agent including flavors can be heated to modify a tobacco based aerosol (Johaentges, [0029]), Johaentges demonstrates that the addition of an aerosol forming agent at an amount of 4.5 wt% - 22.5 wt% on a dry weight basis improves the elasticity of the substrate and its ability to be shaped (Johaentges, [0027]), and this involves combining prior art elements according to known methods to yield predictable results.
The range for the aerosol former amount disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious. See MPEP § 2144.05 (I).
Regarding Claim 2, Kong in view of Johaentges and Sebastian teaches the aerosol-forming substrate according to claim 1. Kong further teaches the substrate wherein the layer of carbon-based thermally conductive material is in the form of a film or foil ([0013], Figs. 1-2; The heat-conducting sheet base 1 is made by wet papermaking and high-pressure pressing of raw materials including plant fibers, metal powder and binder. It is reasonably understood that the papermaking process would yield a layer of carbon-based thermally conductive material is the form of a film or foil).
Regarding Claims 3 and 6, Kong in view of Johaentges and Sebastian teaches the aerosol-forming substrate according to claim 1. Johaentges further teaches the substrate wherein the layer of carbon-based thermally conductive material comprises carbon fibres, graphite or graphene, wherein some or all of the thermally conductive particles comprise one or more of graphite, expanded graphite, graphene, carbon nanotubes and charcoal ([0023], the electrically conductive material is graphite or charcoal particles).
Regarding Claim 5, Kong in view of Johaentges and Sebastian teaches the aerosol-forming substrate according to claim 1. Kong further teaches the substrate wherein the co-laminated sheet comprises or is in the form of a gathered sheet ([0082], The heat-conducting sheet prepared in Example 8 was stacked on top of a tobacco sheet on the top and bottom. The sheet was then gathered by rolling into a heated non-combustible cigarette tobacco module with the structure shown in Figure 2).
Regarding Claim 7, Kong in view of Johaentges and Sebastian teaches the aerosol-forming substrate according to claim 1. Kong further teaches the substrate wherein the reconstituted carbon-based material comprises one or both of fibres and a binder ([0013], Fig. 2; The heat-conducting sheet base 1 is made by wet papermaking and high-pressure pressing of raw materials including plant fibers, metal powder and binder).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M. MARTIN whose telephone number is (703)756-1270. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PHILIP Y. LOUIE can be reached on (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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/J.M.M./
Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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