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. Claims 13-14 are withdrawn as being directed to a non-elected invention. This is the first Office Action on the merits of the claims.
Election/Restrictions
Applicant's election with traverse of Group I claims 1-12 and 15 in the reply filed on 07/16/2026 is acknowledged. The traversal is on the grounds that Groups I and II are not distinct because both Groups I and II require that the substrate is extruded and that there is not a serious search or examination burden.
Regarding the distinctness requirement between Groups I and II, the restriction requirement filed 05/21/2026 incorrectly relied upon the product as claimed being made by a materially different process, such as forming the aerosol generating substrate into a plug and hollowing out the center even though claim 1 requires that the substrate is extruded. However, the restriction requirement is still deemed proper as the method as claimed can be used to make a materially different product, such as an aerosol forming substrate comprising fibers and a binder. Group I does not require the aerosol forming substrate comprise fibers or a binder.
Regarding the requirement for a serious search or examination burden, a serious search or examination burden exists because examination of groups would be expected to involve a different field of search and questions of patentability, as the groups have different classifications and different limitations such as Group II requiring a slurry be formed comprising fibers and a binder, and drying an extruded slurry which is not required by Group I.
The requirement is still deemed proper and is therefore made FINAL.
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.
Regarding claim 2, the phrase "such as" 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 examination, claim 2 will be interpreted as the aerosol forming substrate comprises one or more organic materials.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 8, and 15 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Hejazi (US 20190387787 A1, as cited on IDS dated 04/10/2025).
Regarding claim 1, Hejazi discloses an aerosol source member (104, “an aerosol generating article”) for generating an inhalable aerosol (Fig. 2, [0007, 0025, 0035, 0064]) comprising:
A substrate portion (110, “aerosol forming substrate”) having a longitudinal opening (135, “hollow tubular segment defining a substrate cavity”, Fig. 4, [0049-0050]). “A longitudinal opening” is considered to be an opening that extends along the length of the substrate portion from an upstream end to a downstream end.
The substrate portion (110) comprises thermally conductive susceptor particles (132) and glycerin (“an aerosol former”, Fig. 4, [0049-0050, 0062]), and;
The tubular substrate portion (110) is an extruded tobacco structure ([0049-0050]).
Regarding claim 2, Hejazi discloses the substrate portion (110) comprises tobacco ([0049]).
Regarding claim 8, Hejazi discloses the aerosol source member (104, “an aerosol generating article”) comprises a filter (114, “mouth plug filter”) at the mouth end (108) and an overwrap material (112, “a wrapper”, Fig. 2, Fig. 3, [0036, 0040]).
Regarding claim 15, Hejazi discloses an aerosol delivery device (100, “an aerosol generating system”, Fig. 1, Fig. 3, [0033, 0037]) comprising:
An aerosol source member (104, “an aerosol generating article”) for generating an inhalable aerosol (Fig. 2, [0007, 0025, 0035, 0064]), and;
A control body (102) comprising a battery (124, “an electrical aerosol generating device”, Fig. 1, Fig. 3, [0033, 0042]).
The aerosol source member (104, “aerosol generating article”) comprising:
A substrate portion (110, “aerosol forming substrate”) having a longitudinal opening (135, “hollow tubular segment defining a substrate cavity”, Fig. 4, [0049-0050]). “A longitudinal opening” is considered to be an opening that extends along the length of the substrate portion from an upstream end to a downstream end.
The substrate portion (110) comprises thermally conductive susceptor particles (132) and glycerin (“an aerosol former”, Fig. 4, [0049-0050, 0062]), and;
The tubular substrate portion (110) is an extruded tobacco structure ([0049-0050]).
Claim Rejections - 35 USC § 103
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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Mua (US 20220104532 A1, as cited on IDS dated 07/16/2026) in view of Kim (US 20230292812 A1, as cited on IDS dated 07/16/2026).
Regarding claim 1, Mua discloses aerosol generating component (104, “an aerosol generating article”) configured to generate an aerosol by heating (Fig. 2, [0005, 0088]) comprising:
A substrate portion (110) having a cylindrical shape and central orifice (“a hollow tubular segment”, Fig. 5B, [0182]).
The central orifice in Fig. 5B is shown to extend entirely through the substrate and therefore the substrate is considered to comprise a substrate cavity extending between and upstream end and downstream end of the substrate.
The substrate portion (110) is an extruded tube (Fig. 5B, [0158, 0182]).
The substrate comprising at least one aerosol forming material (“an aerosol former”, [0006, 0013]).
Mua does not explicitly disclose the substrate portion comprises thermally conductive particles.
However, Kim, directed to an aerosol generating article (2000, Fig. 5, [0060]), discloses:
A tobacco medium section (220) comprising a thermally conductive powder such as aluminum (Fig. 5, [0063]).
The inclusion of a thermally conductive powder in the tobacco medium section increases the heat transfer efficiency of the tobacco medium section ([0006, 0065]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Mua by providing the substrate with a thermally conductive powder as taught by Kim because both Hejazi and Kim are directed to aerosol generating articles, Kim teaches the inclusion a thermally conductive powder increases the heat transfer efficiency of the tobacco medium, and this involves applying a known thermally conductive powder to a similar aerosol generating substrate to yield predictable results.
Regarding claim 3, Mua discloses the substrate is free of tobacco material ([0066, 0100]).
Claims 1 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Jang (US 20240365861 A1) in view of Hejazi (US 20190387787 A1, as cited on IDS dated 04/10/2025).
Regarding claim 1, Jang discloses an aerosol generating article (Fig. 7) for producing an inhalable aerosol ([0046, 0085-0086]) comprising:
A tobacco medium portion (111) comprising an aerosol generating material (Fig. 7, [0058, 0086-0087]), and;
The aerosol generating article may include a susceptor ([0152]).
Jang does not explicitly disclose the tobacco medium (111) is an extruded hollow tube comprising thermally conductive particles.
However, Hejazi, directed to an aerosol source member (104, “an aerosol generating article”, Fig. 2, [0007, 0025, 0035, 0064]), discloses:
A substrate portion (110, “aerosol forming substrate”) having a longitudinal opening (135, “hollow tubular segment defining a substrate cavity”, Fig. 4, [0049-0050]). “A longitudinal opening” is considered to be an opening that extends along the length of the substrate portion from an upstream end to a downstream end.
The substrate portion (110) comprises thermally conductive susceptor particles (132) and glycerin (“an aerosol former”, Fig. 4, [0049-0050, 0062]), and;
The tubular substrate portion (110) is an extruded tobacco structure ([0049-0050]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Jang by substituting the tobacco medium with the substrate portion disclosed by Hejazi because both Jang and Hejazi are directed to aerosol generating articles, Jang teaches an aerosol generating article comprising a susceptor but is silent to how the susceptor is implemented in the article, Hejazi teaches a substrate comprising susceptor particles, and this involves substituting one known substrate containing a susceptor for another in a similar aerosol generating article to yield predictable results.
Regarding claim 9, Jang discloses the aerosol generating article comprises a second segment (113, “front end plug”), tobacco medium/first segment (111, “aerosol forming substrate”), a hollow third segment (115, “a first hollow support tube), a hollow cooling portion (130, “second hollow support tube”), and a filter portion (150, “mouth plug filter”) arranged sequentially (Fig. 7, [0081, 0086, 0092-0094]).
Regarding claim 10, Jang discloses the aerosol generating article comprises a wrapper (170) which circumscribes the second segment (113, “front end plug”), tobacco medium/first segment (111, “aerosol forming substrate”), hollow third segment (115, “a first hollow support tube), hollow cooling portion (130, “second hollow support tube”), and filter portion (150, “mouth plug filter”, Fig. 7, [0086, 0092-0094, 0135]).
Regarding claim 11, Jang discloses the length of the hollow cooling portion (130, “second hollow support tube”) is 4 to 10 mm ([0048]) and the length of the filter portion (150, “mouth plug filter”) is 10 to 20 mm ([0048]). The claimed ranges overlap with the ranges taught by the prior art and therefore the claimed ranges are considered prima facie obvious.
Regarding claim 12, Jang discloses a plurality of openings (160, “one or more ventilation holes”) extending through the cooling section (130, Fig. 3, Fig. 7, [0107-0108]).
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hejazi (US 20190387787 A1, as cited on IDS dated 04/10/2025) in view of Chapman (US 5690127 A, as cited on IDS dated 10/08/2025).
Regarding claim 4, Hejazi is silent to the dimensions of the substrate portion (110).
However, Chapman, directed to a cigarette (20, Fig. 2), discloses:
A hollow rod (22) of aerosol forming material having a length of 20-125mm (Fig. 2, col. 2 lines 63-66). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
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 providing the tubular substrate with an a length of 20-125mm taught by Chapman because both Hejazi and Chapman are directed to aerosol generating articles, Hejazi is silent to the dimensions of the substrate portion, Chapman teaches a similar tubular substrate having a length of 20-125mm, and one having ordinary skill in the art would be motivated to look to similar aerosol generating substrates for workable ranges of substrate length and this involves applying known length range to a similar tubular aerosol generating substrate to yield predictable results.
Regarding claim 5, Hejazi discloses a tubular substrate portion (110, Fig. 4) having a width/ outer diameter in a radial dimension and a length in a longitudinal dimension.
Hejazi is silent to the dimensions of the substrate portion (110).
However, Chapman, directed to a cigarette (20, Fig. 2), discloses:
A hollow rod (22) of aerosol forming material having an external/outer diameter of 5-10mm (Fig. 2, col. 2 lines 63-66, col. 5 lines 33-56). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
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 providing the tubular substrate with an outer diameter of 5-10mm taught by Chapman because both Hejazi and Chapman are directed to aerosol generating articles, Hejazi is silent to the dimensions of the substrate portion, Chapman teaches a similar tubular substrate having an outer diameter of 5-10mm, and one having ordinary skill in the art would be motivated to look to similar aerosol generating substrates for workable ranges of substrate outer diameter and this involves applying known outer diameter range to a similar tubular aerosol generating substrate to yield predictable results.
Regarding claim 6, Hejazi discloses a tubular substrate portion (110, Fig. 4) having an outer diameter, inner diameter, length, and wall thickness of the tube.
Hejazi is silent to the dimensions of the substrate portion (110).
However, Chapman, directed to a cigarette (20, Fig. 2), discloses:
A hollow rod (22) of aerosol forming material having an external/outer diameter of 5-10mm and an inner diameter of 0.5-6.5mm (Fig. 2, col. 2 lines 63-66, col. 5 lines 33-56).
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 providing the tubular substrate with an outer diameter of 5-10mm and inner diameter of 0.5-6.5mm as taught by Chapman because both Hejazi and Chapman are directed to aerosol generating articles, Hejazi is silent to the dimensions of the substrate portion, Chapman teaches a similar tubular substrate having an outer diameter of 5-10mm and inner diameter of 0.5-6.5mm, and one having ordinary skill in the art would be motivated to look to similar aerosol generating substrates for workable ranges of outer diameter and inner diameter and this involves applying known diameter ranges to a similar tubular aerosol generating substrate to yield predictable results.
Therefore, a person having ordinary skill in the art, in view of the inner and outer diameter ranges, could have reasonably arrived at a substrate having a wall thickness in a range that overlaps with claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding claim 7, Hejazi discloses a tubular substrate portion (110, Fig. 4) having an outer diameter, inner diameter, length, and wall thickness of the tube.
Hejazi is silent to the dimensions of the substrate portion (110).
However, Chapman, directed to a cigarette (20, Fig. 2), discloses:
A hollow rod (22) of aerosol forming material having an external/outer diameter of 5-10mm and an inner diameter of 0.5-6.5mm (Fig. 2, col. 2 lines 63-66, col. 5 lines 33-56).
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 providing the tubular substrate with an outer diameter of 5-10mm and inner diameter of 0.5-6.5mm as taught by Chapman because both Hejazi and Chapman are directed to aerosol generating articles, Hejazi is silent to the dimensions of the substrate portion, Chapman teaches a similar tubular substrate having an outer diameter of 5-10mm and inner diameter of 0.5-6.5mm, and one having ordinary skill in the art would be motivated to look to similar aerosol generating substrates for workable ranges of outer diameter and inner diameter and this involves applying known diameter ranges to a similar tubular aerosol generating substrate to yield predictable results.
Therefore, a person having ordinary skill in the art, in view of the inner and outer diameter ranges, could have reasonably arrived at a substrate where the wall thickness relative to the outer diameter is in a range that overlaps with claimed range, and therefore the claimed range is considered prima facie obvious.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of copending Application No. 18/567,668.
Although the claims at issue are not identical, they are not patentably distinct from each other. The co-pending claims and the rejected claims differ in that the features of the rejection independent claim are present in multiple claims of the cop-ending application. However, it would have been obvious to one of ordinary skill in the art to combine the features of the dependent claims to arrive at the instantly claimed invention.
Therefore, all of the elements of provisionally rejected claim 1 are present and obvious over conflicting claims 1 and 12 of co-pending Application No. 18/567,668.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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