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 1-11 in the reply filed on 7-7-2026 is acknowledged. The traversal is on the ground(s) that the limitation between 70 and 90 wt% carbon particles is special in view of Griffith (US20210112860A1). This is not found persuasive because as explained in the restriction, Griffith teaches an aerosol forming substrate comprising greater than 50% carbon particles (See [0080] and [0099]) which overlaps with the claimed range of between 50 and 90 wt% carbon particles. Therefore, this shared feature is not a special shared technical feature as it does not make a contribution over the art in view of Griffith. (For clarity, Examiner notes that the emphasized term “special” was inadvertently omitted in the final phrase of paragraph 5 in the Requirement for restriction which might be a source of confusion but is included above in the restatement for clarity as emphasized (and was included in paragraph 4 of the Restriction).
Additionally the Applicant has focused attention on the tables and examples therein but has failed to explain how the overlapping ranges taught by Griffith (e.g., [0080], greater than 50% carbon particles) fails to overlap with the claim limitation between 70 and 90 wt% carbon particles.
The technical consideration arguments related to Griffith is not found persuasive because while applicant argues that high carbon particle content may provide a more even temperature distribution throughout the substrate during use, this technical consideration/unexpected results argument is not supported with any evidence.
Therefore, the groupings of claims lack unity in view of Griffith under PCT Rule 13.2.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7-7-2026.
Drawings
The drawings are objected to for failing to comply with 37 CFR 1.84(u)(1) which requires that when multiple drawing views are included in the drawings, the abbreviation “FIG” is required for the drawing view numbering (e.g., “Figure 1” in the drawings must be replaced with “FIG.1” etc. for Figures 1-5).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "26" and "50" have both been used to designate intermediate hollow section (See page 38 second to last paragraph of specification as filed).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "28" and "34" have both been used to designate second hollow tubular segment (see page 39 second paragraph).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “28” has been used to designate both internal cavity (page 38 last paragraph) and second hollow tubular segment (page 39 second paragraph).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “26” has been used to designate both intermediate hollow section (page 38 second to last paragraph) and first hollow tubular segment (page 38 last paragraph).
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.
Specification
The disclosure is objected to because of the following informalities:
The title includes the informality “subtrate” instead of “substrate”.
The specification on page 40 halfway down the page, and page 47 first paragraph, each includes the informality “fodd” instead of “food”.
The specification on page 41 includes the informality “lap dispenser” instead of “lab dispenser”.
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 7 and 8 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.
Specifically Claim 7 and claim 8 are rejected as indefinite because its unclear if “at least … wt% of the carbon particles” (emphasis added) is relative to the total dry weight of the aerosol forming substrate, a portion of the carbon particles, or another basis. The grammar is ambiguous. The inclusion of “of the” appears to be an informality and for the purposes of this office action and compact prosecution the underlined portion of the quoted portion “of the” is interpreted to be omitted for clarity which is consistent with claim 1.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 5, and 7, 8, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Griffith (US 20130255702A1).
Regarding Claim 1, Griffith teaches an aerosol-forming substrate [0089] comprising, on a dry weight basis: between 70 and 90 wt % carbon particles (e.g., see [0080] and [0099] which discloses the carbon in the substrate can be 50% or more by weight, which overlaps with the claimed range of between 70% and 90% wt 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).
between 7 and 26 wt % of an aerosol former (see Griffith Ex 2e in Table 2B on page 26 [0176], which discloses 40g of glycerol/aerosol former in a 260g dry formulation which equates to a 15.4 wt% aerosol former and falls within the claimed range);
between 2 and 10 wt % of a binder (see Ex 2e in table 2B on page 26, 20g of CMC in a 260g formulation is 7.7 wt% which falls within the claimed range),
each of the carbon particles consists of graphite (see [0066], see also table 2B).
Griffith teaches the composition comprises 5% tobacco plant material [0170] see table 1, tobacco plant material is plant fiber, which is fibres, which falls within the claimed range of between 2 and 20 wt % of fibres;
Regarding Claim 5, modified Griffith teaches the claim limitations as set forth above.
However modified Griffith is silent to the shape of the carbon particles and therefore fails to explicitly disclose some or all of the carbon particles are substantially spherical.
However, it would be obvious to modify the shape of the carbon particles of modified Griffith to be any shape (e.g., such as spherical) as a matter of design choice. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Regarding Claim 7, modified Griffith teaches the claim limitations as set forth above. Additionally Griffith teaches the substrate comprises, on a dry weight basis, at least 50 wt % carbon particles (e.g., see [0080] and [0099] which discloses the carbon in the substrate can be 50% or more by weight), which overlaps with the claimed range of which overlaps with the substrate comprises, on a dry weight basis, at least 75 wt % carbon particles. 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 8, modified Griffith teaches the claim limitations as set forth above, Additionally Griffith teaches the substrate comprises, on a dry weight basis, at least 50 wt % carbon particles (e.g., see [0080] and [0099] which discloses the carbon in the substrate can be 50% or more by weight), which overlaps with the claimed range of which overlaps with the substrate comprises, on a dry weight basis, at least 80 wt % of the carbon particles. 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 9, Griffith teaches at [0117], that particles in the substrate mixture should be mixed to be substantially evenly distributed, which meets the carbon particles are substantially homogeneously distributed throughout the aerosol-forming substrate.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Griffith (US 20130255702A1) in view of Sebastian (US20190261685A1)
Regarding Claim 10, modified Griffith teaches the claim limitations as set forth above. However, Griffith fails to explicitly disclose the aerosol-forming substrate is a tobacco-free aerosol-forming substrate.
However, Sebastian teaches a related non-tobacco implementation of the aerosol forming substrate compositing cellulose pulp, glycerin, ammonium alginate, and ammonium phosphate rather than cut tobacco. [0077]. Thus Sebastian establishes that tobacco is an optional substrate component and that a cellulose-pulp/glycerin/binder aerosol forming substrate can be tobacco free.
A person of ordinary skill in the art before the filing date of the claimed invention would have omitted the tobacco from modified Griffith and retained cellulose pulp as the fibrous filler within the previously discussed claimed composition ranges because Sebastian expressly teaches cellulose pulp as a suitable component of a related non-tobacco aerosol-forming substrate [0077]. A person of ordinary skill in the art would have reasonable expected the modified substrate to retain aerosol forming functionality because Sebastian’s non-tobacco substrate retains glycerin and binder.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Griffith (US 20130255702A1) in view of Casey (US 5396911)
Regarding Claim 11, modified Griffith teaches the claim limitations as set forth above.
However, Griffith fails to explicitly disclose the aerosol-forming substrate comprises between 1 and 20 wt % water.
However, Casey teaches stabilized aerosol formulations can be prepared and the formulation should be dried to a final moisture content of from about 8% to about 12%. Which falls within the claimed range the aerosol-forming substrate comprises between 1 and 20 wt % water. (see Ex 3 and 4 in column 22)
A person of ordinary skill in the art before the filing date of the claimed invention would have controlled the drying of modified Griffith substrate to Caseys 8-12 wt% because Griffith forms a wet tobacco mixture with water and dries the substrate [0173] and Casey teaches drying away excess water without significant aerosol former loss when dried to 8-12 wt%. (See column 3 lines 35-40).
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Griffith (US 20130255702A1) as applied to claim 1, and further in view of Neograf (https://www.technicome.com/wp-content/uploads/2021/07/NGS_TDS_456_Graf_ Graphite_Powders.pdf).
Regarding Claim 2, modified Griffith teaches the claim limitations as set forth above. Additionally, Griffith teaches carbon particles such as graphite as set forth above.
However, Griffith is silent to suitable volume D10 particle size distribution suitable for graphite particles and therefore fails to explicitly disclose the carbon particles have a particle size distribution having a volume D10 particle size between 1 and 20 μm (microns).
Neograf teaches graphite carbon particles that are of high purity and suitable for various uses (see page 1) and a D10 of 9 microns (see page 3, typical properties table, Graf+27-A-NG) which falls within the claimed range of 1-20 microns.
It would have been obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify the particle size distribution of modified Griffith with the particle size and distribution D10 of 9 microns as taught by Neograf because both Griffith and Neograf are directed to graphite particles, Griffith is silent in regards to suitable volume particle size distribution for such particles and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable particle size distribution of carbon particles suitable for use. Neograf teaches suitable particle size distribution as set forth above, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Additionally, it would be obvious because Neograf teaches carbon particles of high purity and that are suitable for various uses and one would be motivated to modify Griffith with graphite particles of high purity that are suitable for various uses as taught by Neograf.
Regarding Claim 3, modified Griffith teaches the claim limitations as set forth above. Modified Griffith fails to explicitly disclose a volume D90 between 50 and 300 microns.
However, Neograf teaches graphite particles that are of high purity and suitable for various uses having a volume D90 particle size of 56 microns (see page 3, typical properties table, Graf+27-A-NG) which falls within the claimed range of between 50 and 300 microns.
It would have been obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify the particle size distribution of modified Griffith with the particle size and distribution D90 of 56 microns as taught by Neograf because both Griffith and Neograf are directed to graphite particles, Griffith is silent in regards to suitable volume particle size distribution for such particles and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable particle size distribution of carbon particles suitable for use. Neograf teaches suitable particle size distribution as set forth above, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Additionally, it would be obvious because Neograf teaches carbon particles of high purity and that are suitable for various uses and one would be motivated to modify Griffith with graphite particles of high purity that are suitable for various uses as taught by Neograf.
Regarding Claim 4, modified Griffith teaches the claim limitations as set forth above. However, Griffith fails to explicitly disclose the carbon particles have a particle size distribution having a volume D10 particle size and a number D90 particle size, wherein the volume D90 particle size is no more than 50 times the number D10 particle size.
Neograf teaches graphite carbon particles that are of high purity and suitable for various uses (see page 1) and a D10 of 9 microns (see page 3, typical properties table, Graf+27-A-NG)
Neograf teaches graphite particles that are of high purity and suitable for various uses having a volume D90 particle size of 56 microns (see page 3, typical properties table, Graf+27-A-NG)
The D90 of 56 is no more than 50 times the D10 particle size of 9 which meets the claim requirement.
It would have been obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify the particle size distribution of modified Griffith with the particle size and distribution D10 of 9 microns and D90 of 56 microns as taught by Neograf because both Griffith and Neograf are directed to graphite particles, Griffith is silent in regards to suitable volume particle size distribution for such particles and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable particle size distribution of carbon particles suitable for use. Neograf teaches suitable particle size distribution for use as set forth above, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Additionally, it would be obvious because Neograf teaches carbon particles of high purity and that are suitable for various uses and one would be motivated to modify Griffith with graphite particles of high purity that are suitable for various uses as taught by Neograf.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Griffith (US 20130255702A1) as applied to claim 1, and further in view of Grivei (US20160145107A1).
Regarding Claim 6, modified Griffith teaches the claim limitations as set forth above. Griffith teaches the particles can be carbon as set forth above and in [0012].
However Griffith fails to explicitly disclose each of the carbon particles consists of one or more of expanded graphite, graphene, and diamond.
However, Grivei teaches expanded graphite particles (see title) comprising ground expanded graphite particles that can be used in materials that are prepared to be thermally or electrically conductive materials [0084] and teaches that expanded graphite can be added to a substrate to increase its thermal conductivity and mechanical stability [0085].
Therefore, it would be obvious to a person of ordinary skill in the art to substitute the carbon particles of Griffith with the expanded graphite particles taught by Grivei in order to impart the advantage of increased thermal conductivity and mechanical stability to the substrate of modified Griffith. The substitution is a predictable selection of one thermally conductive graphite material for another with a reasonable expectation of retaining thermally conductive behavior in the aerosol forming substrate.
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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