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
This office action is in response to Applicant’s amendment filed on 21 April 2026:
Claims 1-6 and 8-32 are pending
Claims 11-32 are withdrawn
Claims 1-2, 6 and 8 are amended
Claim 7 is cancelled
Response to Arguments
Applicant’s arguments, filed 21 April 2026, have been fully considered and are persuasive.
On Pages 1-3 of Applicant’s Remarks, Applicant argues that Chong’s encasement is directed to the aluminum encasement with pre-punched holes and not to the starch coating which is not disclosed as an encasement. Furthermore, the claims have been amended to further recite that a heating step is included to form the starch coating such that it is porous which is not disclosed by Chong in combination with the other presented art.
Examiner agrees with the Applicant and therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sebastian et al (Publication No. US20200154784A1).
On Pages 3-6, Applicant has amended Claim 6 to further recite additional steps of rolling compression and stretching of the steel wool prior to the stamping step and argues that Chong only discloses the stamping step and not the subsequent compression and stretching steps. Examiner agrees with the Applicant and therefore, the rejection has been withdrawn.
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.
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 1-2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Sebastian et al (Publication No. US20200154784A1) in view of Poget et al (Publication No. US20190289903A1) and Goldoni et al (Publication No. WO2015035137A1, see attached copy).
Regarding Claim 1, Sebastian discloses a manufacturing of a consumable-containing package for use in an aerosol producing device comprising combining a susceptor with a consumable (i.e., aerosol source member) to form a consumable-containing unit [0051]. The consumable-containing package incorporates a coating of binder material such as starch [0065, 0090, 0110].
Sebastian does not explicitly teach the following steps:
b) applying a starch coating onto the consumable-containing unit;
c) heating the starch coating to form an encasement around the consumable-containing unit, wherein the encasement is made porous by the heating step, whereby the consumable-containing package is produced.
Regarding Step (b), Poget discloses a smoking article (10) (i.e., consumable-containing unit) which includes a sheet material that forms an outer wrapper (12) around the smoking article (i.e., encasement), and is provided with a starch coating layer (14/16) (see Fig. 1; Abstract; [0011, 0034-0038, 0047]). The starch is applied via spraying or dipping and subsequently dried, providing a heat resistant outer wrapper suitable to withstanding the heat generated by a heat source during use [0041].
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the starch binder coating disclosed by Sebastian to apply the coating using a spraying or dipping step as disclosed by Poget, as both are directed to a consumable with an applied starch coating, where Poget teaches the advantage of having the coating sprayed/dipped onto the consumable to generate a heat resistant outer wrapper suitable to withstanding the heat generated by a heat source during use [0041].
Regarding Step (c), Goldoni, directed to a starch coating for a smoking article plug wrap [0057], discloses that the coating can comprise a starch such as corn starch which can be applied as a solution with a specified viscosity [0049], and subjected to either ambient air or heat to dry the coating ([0032]; drying with heat implies that the coating is formed into a hardened encasement).
Examiner notes that while Goldoni does not state that the heating step makes the encasement porous, Goldoni does detail that the coating will have low permeability such as having a permeability of 10 Coresta or less [0066]. This implies that the dried coating will result in a partially, albeit mostly reduced, permeable encasement which is noted to be oil-resistant [0066-0067].
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the application of a starch coating disclosed by Sebastian in view of Poget to be dried by heating as disclosed by Goldoni, as both are directed to a consumable with an applied starch coating, where Goldoni teaches the advantage of applying the coating in such a manner as it will produce a coating with some permeability (i.e., is porous in a limited manner) that is also oil-resistant [0066-0067], and Goldoni recognizes that coatings can be dried via heating or air ([0032]).
Regarding Claim 2, Modified Sebastian further discloses the starch coating is viscous prior to the heating step (Goldoni, [0049]; discloses a viscosity range for the starch coating solution which implies that the coating is viscous prior to heating).
Regarding Claim 5, Sebastian further discloses incorporating the consumable into a medium to form the consumable-containing unit ([0053]; discloses that the substrate portion can comprise substrate sheets that are formed with fiber materials such as cotton; the fiber structure is considered equivalent to the medium).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sebastian et al (Publication No. US20200154784A1) in view of Poget et al (Publication No. US20190289903A1) and Goldoni et al (Publication No. WO2015035137A1, see attached copy) as applied to Claim 1 above, and further in view of Rojo-Calderon et al (Publication No. US20180279681A1).
Regarding Claim 3, Sebastian further discloses that the susceptor can be co-extruded with a layer of insulation [0081]. Sebastian does not disclose extruding the consumable with the susceptor to form the consumable-containing unit.
However, Rojo-Calderon, directed to an aerosol-generating article with susceptor material, discloses that the aerosol-forming substrate and susceptor material can be co-extruded to form the aerosol-generating article (i.e., consumable-containing unit) (Abstract, [0045]).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the process disclosed by Modified Sebastian to further include a step where the consumable substrate and susceptor are co-extruded as disclosed by Rojo-Calderon, as both are directed to a susceptor-consumable article, where this involves applying a known processing method (i.e., co-extrusion) of a susceptor-consumable article as disclosed by Rojo-Calderon, to another similar consumable article as disclosed by Modified Sebastian to predictably result in a susceptor-consumable article capable of being used to generate aerosol.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sebastian et al (Publication No. US20200154784A1) in view of Poget et al (Publication No. US20190289903A1), Goldoni et al (Publication No. WO2015035137A1, see attached copy) and Rojo-Calderon et al (Publication No. US20180279681A1) as applied to Claim 3 above, and further in view of Hejazi et al (Publication No. US20190281892A1).
Regarding Claim 4, Modified Sebastian does not disclose a step for rolling the extruded susceptor and consumable to form a cylinder with a spiraling pattern when viewed along a transverse cross-section. However, Hejazi, directed to an aerosol delivery device with a susceptor, discloses that the susceptor can be rolled into a spiral to form a cylinder [0018, 0082-0083].
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify process disclosed by Modified Sebastian to further include a step of rolling the susceptor and consumable into a cylinder as disclosed by Hejazi, as both are directed to a susceptor for an aerosol delivery device, where this applies a known processing step for rolling susceptor elements disclosed by Hejazi, to a similar susceptor element disclosed by Modified Sebastian to predictably result in a rolled susceptor consumable capable of generating heat.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 6, the prior art alone or in combination with references does not disclose a consumable-containing package manufacturing method wherein the method includes steps for flattening of the piece of steel wool through a series of stretching and compression steps of roll compression, followed by a stamping process. The closest prior art is considered to be Chong et al (Publication No. US20190200677A1).
Chong discloses a method of manufacturing a consumable-containing package (102/200) for use in an aerosol producing device [0037], the method comprising flattening a piece of steel wool (106) into a susceptor [0045], and placing the consumable-containing unit (102/200) into an encasement (108), whereby the consumable-containing package is produced (see Fig. 2B; [0050, 0104]).
Chong does not disclose the following steps:
a) flattening a piece of steel wool (106) into a susceptor having a thickness of less than 0.1 inch (2.54mm);
b) co-extruding the susceptor with a consumable to form a consumable- containing unit;
c) wherein flattening of the piece of steel wool is accomplished by a series of stretching and compression steps of roll compression, followed by a stamping process.
Regarding (a), Thornes, directed to an aerosol-generating article, discloses a susceptor heating element which may have a width of between 1 mm and 5 mm and may have a thickness of between 0.01 mm and 2 mm [0016]. Thornes disclosed thickness range falls overlaps with the range disclosed by the applicant (note that less than 0.1 inch is equivalent to less than 2.54 mm) and is therefore considered prima facie obvious (see MPEP § 2144.05.I).
Regarding (b), Rojo-Calderon, directed to an aerosol-generating article with susceptor material, discloses that the aerosol-forming substrate and susceptor material can be co-extruded to form the aerosol-generating article (i.e., consumable-containing unit) (Abstract, [0045]).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the process disclosed by Modified Sebastian to further include a step where the consumable substrate and susceptor are co-extruded as disclosed by Rojo-Calderon, as both are directed to a susceptor-consumable article, where this involves applying a known processing method (i.e., co-extrusion) of a susceptor-consumable article as disclosed by Rojo-Calderon, to another similar consumable article as disclosed by Modified Sebastian to predictably result in a susceptor-consumable article capable of being used to generate aerosol.
Regarding (c), Chong discloses constructing the susceptor via stamping metal material such as steel wool [0045], but fails to disclose the additional prior steps of flattening the piece of steel wool through a series of stretching and compression steps of roll compression. Though Chong does note compressing the steel wool together [0060], there is no additional stretching step along with the compression on the steel wool prior to stamping. There is also no other presented reference in combination with Chong that would disclose both stretching and compressing steel wool material for forming a susceptor through a subsequent stamping process as outlined in the presented claims.
As such, Claim 6 is indicated as being allowable. Claims 8-10 would also be allowable by virtue of their dependency on Claim 6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vu P Pham whose telephone number is (703)756-4515. The examiner can normally be reached M-Th (7:30AM-4:00PM EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights