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 claims 1–10 in the reply filed on 08/14/2025 is acknowledged. The traversal is on the ground(s) that " This is not found persuasive for the reasons set out in the following paragraphs.
First, inquiry into whether an “serious burden” exists is not determinative. While the MPEP states “the examiner may make a restriction requirement if a serious search and/or examination burden exists,” id. at §818, this “serious search and/or examination burden” is relevant to U.S. national applications not applications—like this one—which are national stage applications requiring a unity of invention analysis for restriction. Id. at §1893.03(d) (explaining “Examiners are reminded that unity of invention analysis (not an independent and distinct analysis) is applicable in national stage applications submitted under 35 U.S.C. 371.”)
Second, and as explained in the Restriction requirement mailed on 06/18/2025 (“Restriction”), the five groups of inventions lack unity of invention because the technical features shared among the groups are not special technical features. Id. at 3–4. Applicant’s arguments do not address the prior art cited to demonstrate the technical feature shared is not a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11–32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected device for generating aerosol, method for aerosolizing a consumable by an aerosol producing device, device for generating aerosol comprising a sign, and a method of executing an administration protocol for aerosolizing a consumable, there being no allowable generic or linking claim. Claims 1–10 are examined below.
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.
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.
Claim(s) 1–2 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20190200677 (“CHONG”) in view of WO 2017216671 (“PRESTIA”).
As to claim 1, CHONG discloses a method of manufacturing a consumable-containing package for use in an aerosol producing device (a consumable-containing package 102 and an aerosol producing device 200, para. 0037), the method comprising:
a) combining a susceptor (160) with a consumable (the additive discussed in para. 0045) to form a consumable-containing unit (Fig. 2B);
b) applying a coating onto the consumable-containing unit (104 discussed in paras. 0042–44 or the coating discussed in para. 0050).
CHONG further discloses creating an encasement around the consumable-containing unit, wherein the encasement is porous, whereby the consumable-containing package is produced (the consumable-containing unit 104 is placed inside the encasement 108 to contain the heat generated by the susceptor 106. The openings 120 (the porous portion] in the encasement 108 allow the consumable aerosol to escape when heated, para. 0050, fig.2B).
CHONG does not teach heating the coating to create an encasement.
PRESTIA is in the field of a smoking article (abstract) and teaches heating the coating to create an encasement (The plug wrap may be coated with any suitable hardness-enhancing coating composition. See page 2, lines 27-28. Alternatively, additional heating may be used to dry the coating. See page 6, lines 3-4).
It would have been obvious to one of ordinary skill in the art at the time of the invention to include heating the coating to create an encasement in the invention of CHONG so as to provide a smoking article with improved filter hardness (See page 1, line 22). The coating is heated to dry and therefore is considered to also be heated to harden (i.e. a wet coating would inherently be less hard than a dry coating).
As to claim 2, modified CHONG does not teach the coating comprises starch.
PRESTIA teaches the coating comprises starch (Examples of suitable materials that may be included in a hardness-enhancing coating composition are starch. See page 4, lines 8-9).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of PRESTIA into the disclosure of CHONG so as to provide a smoking article with improved filter hardness (as taught by CHONG at page 1, line 22).
As to claim 5, CHONG, ROJO-CALDERON, and THORENS make obvious the method of claim 1.
CHONG, as modified above, arrives at co-extruding the flattened steel wool with the consumable (either or both of 104/ the additive in para. 0045) to combine the susceptor with the consumable (para. 0045).
CHONG discloses 1) extruding the susceptor to flatten the piece of steel wool (para. 0045); 2) compressing a powdery consumable-containing unit around the susceptor (104; para. 0042); 3) the flatten steel wool may be impregnated with an additive (para. 0045) and/or powdery consumable-containing unit may contain additives (para. 0042).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to further incorporate the additives of CHONG into the above combination for the benefit of displacing air in the interstitial spaces of the consumable and/or surrounds the consumable to isolate it from the air (as taught by CHONG at para. 0042) and/or fully filling the wool with an additive, such as a humectant, flavorant, vapor-generating substance, a substance to retard oxidation of the steel wool (rust) and/or a filler to eliminate air between the steel wool filaments (as taught by CHONG at para. 0045).
This obvious combination above arrives at incorporating the consumable into a medium to form the consumable-containing unit (here consumable is the additive and the medium is the powder 104 or the liquid medium containing in which the wool is saturated)
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20190200677 (“CHONG”), WO 2017216671 (“PRESTIA”), as applied in the rejection of claim 2 above, and in further view of US 20180279681 (“ROJO-CALDERON”).
As to claim 3, modified CHONG arrives at the method of claim 2.
CHONG further discloses extruding the consumable with the susceptor to form the consumable-containing unit (once extruded, the consumable-containing unit 104 can be compressed around the susceptor 106 along the length of the susceptor 106, para. 0045).
While CHONG discloses extruding the susceptor (para. 0045), CHONG fails to explicitly disclose co-extruding the susceptor with the consumable to form the consumable-containing unit.
PRESTIA also fails to teach comprising extruding the consumable with the susceptor to form the consumable-containing unit.
ROJO-CALDERON teaches co-extruding a susceptor with other materials in a single step (paras. 0005–6).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of ROJO-CALDERON into the disclosure of modified CHONG for the benefit of fabricating the consumable-containing unit in a single extrusion step (as taught by ROJO-CALDERON at paras. 0005–6).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20190200677 (“CHONG”), WO 2017216671 (“PRESTIA”), and US 20180279681 (“ROJO-CALDERON”), as applied in the rejection of claim 3 above, and in further view of US 20190281892 (“HEJAZI”).
As to claim 4, CHONG, PRESTIA, and ROJO-CALDERON make obvious the method of claim 3.
CHONG, PRESTIA, and ROJO-CALDERON fail to dislcose rolling the extruded susceptor and consumable to form a cylinder with a spiraling pattern when viewed along a transverse cross-section.
HEJAZI teaches rolling the susceptor to form a cylinder with a spiraling pattern when viewed along a transverse cross-section (the susceptor comprises a conductive mesh sheet material rolled into a spiral to form a cylinder, para. 0018).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of HEJAZI into the disclosure of modified CHONG fort the benefit of so as to provide improved electronic cigarettes that may utilize electrically generated heat for the production of aerosol (HEJAZI at para. 0002).
The obvious incorporation above arrives at rolling the extruded susceptor and consumable to form a cylinder with a spiraling pattern when viewed along a transverse cross-section.
Claim(s) 6–8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20190200677 (“CHONG”) in view of US 20180279681 (“ROJO-CALDERON”) and US 20180007974 (“THORENS”).
As to claim 6, CHONG discloses a method of manufacturing a consumable-containing package for use in an aerosol producing device (a consumable-containing package 102 and an aerosol producing device 200, para. 0037), the method comprising:
flattening a piece of steel wool (106) into a susceptor having a thickness (para 0045);
combining the susceptor with a consumable to form a consumable-containing unit (“the steel wool pad may be doused with, immersed in, or fully filled with the additive, such as a humectant, flavorant, vapor-generating substance” para. 0045);
placing the consumable-containing unit into an encasement (108; para. 0050 or 104 in para. 0042), whereby the consumable-containing package is produced (Fig. 2B).
While CHONG discloses extruding the susceptor (para. 0045), CHONG fails to explicitly disclose co-extruding the susceptor with the consumable to form the consumable-containing unit. CHONG also fails to explicitly dislcose a susceptor having a thickness of less than 0.1 inch (2.54 mm).
ROJO-CALDERON teaches co-extruding a susceptor with other materials in a single step (paras. 0005–6).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of ROJO-CALDERON into the disclosure of CHONG for the benefit of fabricating the consumable-containing unit in a single extrusion step (as taught by ROJO-CALDERON at paras. 0005–6).
ROJO-CALDERON fails to explicitly disclose a susceptor having a thickness of less than 0.1 inch (2.54 mm).
THORENS teaches a susceptor having a thickness of less than 0.1 inch (2.54 mm) (The susceptor may have a width of between 1 mm and 5 mm and may have a thickness of between 0.01 mm and 2 mm, para. 0106).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the specific teachings of THORENS into the generic disclosure of modified CHONG for the benefit of inductively heating the aerosol according to a desired power dissipation within an electromagnetic field (as taught by THORENS at para. 0004).
As to claim 7, CHONG, ROJO-CALDERON, and THORENS make obvious the method of claim 6.
CHONG further discloses extruding the susceptor to flatten the piece of steel wool (the susceptor 106 can be machine extruded. The susceptor 106 may be made of steel wool, para. 0045).
Accordingly, the obvious combination above arrives at wherein flattening the piece of steel wool occurs during the step of co-extruding the susceptor with the consumable.
As to claim 8, CHONG, ROJO-CALDERON, and THORENS make obvious the method of claim 7.
CHONG, as modified above, arrives at co-extruding the flattened steel wool with the consumable to combine the susceptor with the consumable (the susceptor 106 can be machine extruded. Once extruded, the consumable-containing unit 104 can be compressed around the susceptor 106 along the length of the susceptor 106, para. 0045).
CHONG discloses 1) extruding the susceptor to flatten the piece of steel wool ( para. 0045); 2) compressing a powdery consumable-containing unit around the susceptor (104; para. 0042); 3) the flatten steel wool may be impregnated with an additive (para. 0045) and/or powdery consumable-containing unit may contain additives (para. 0042).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to further incorporate the additives of CHONG into the above combination for the benefit of displacing air in the interstitial spaces of the consumable and/or surrounds the consumable to isolate it from the air (as taught by CHONG at para. 0042) and/or fully filling the wool with an additive, such as a humectant, flavorant, vapor-generating substance, a substance to retard oxidation of the steel wool (rust) and/or a filler to eliminate air between the steel wool filaments (as taught by CHONG at para. 0045).
As to claim 10, CHONG, ROJO-CALDERON, and THORENS make obvious the method of claim 7.
CHONG, as modified above, arrives at co-extruding the flattened steel wool with the consumable (either or both of 104/ the additive in para. 0045) to combine the susceptor with the consumable (para. 0045).
CHONG discloses 1) extruding the susceptor to flatten the piece of steel wool (para. 0045); 2) compressing a powdery consumable-containing unit around the susceptor (104; para. 0042); 3) the flatten steel wool may be impregnated with an additive (para. 0045) and/or powdery consumable-containing unit may contain additives (para. 0042).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to further incorporate the additives of CHONG into the above combination for the benefit of displacing air in the interstitial spaces of the consumable and/or surrounds the consumable to isolate it from the air (as taught by CHONG at para. 0042) and/or fully filling the wool with an additive, such as a humectant, flavorant, vapor-generating substance, a substance to retard oxidation of the steel wool (rust) and/or a filler to eliminate air between the steel wool filaments (as taught by CHONG at para. 0045).
This obvious combination above arrives at incorporating the consumable into a medium to form the consumable-containing unit.
Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20190200677 (“CHONG”), US 20180279681 (“ROJO-CALDERON”), and US 20180007974 (“THORENS”), as applied in the rejection of claim 8 above, and in further view of US 20190281892 (“HEJAZI”).
As to claim 9, CHONG, ROJO-CALDERON, and THORENS make obvious the method of claim 8.
CHONG, ROJO-CALDERON, and THORENS fail to dislcose rolling the extruded susceptor and consumable to form a cylinder with a spiraling pattern when viewed along a transverse cross-section.
HEJAZI teaches rolling the susceptor to form a cylinder with a spiraling pattern when viewed along a transverse cross-section (the susceptor comprises a conductive mesh sheet material rolled into a spiral to form a cylinder, para. 0018).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of HEJAZI into the disclosure of modified CHONG fort he benefit of so as to provide improved electronic cigarettes that may utilize electrically generated heat for the production of aerosol (HEJAZI at para. 0002).
The obvious incorporation above arrives at rolling the extruded susceptor and consumable to form a cylinder with a spiraling pattern when viewed along a transverse cross-section.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20160295922 discloses “In some embodiments, they may be combined by extruding a slurry of aerosol generating material onto the heat source, or co-extruding the slurry of aerosol generating material with the heat source” ([0184]).
US 20190053535 [0030] The susceptor material may be embedded in or coated by aerosol-forming substrate, for example during the manufacturing process of the aerosol-forming substrate. For example, susceptor particles may be introduced into an aerosol-forming slurry or a susceptor material may be coated with aerosol-forming slurry.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANLEY L CUMMINS IV whose telephone number is (571)272-1060. The examiner can normally be reached Monday-Friday 9:30 a.m. - 6:00 p.m. (CST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MANLEY L CUMMINS IV/ Primary Examiner, Art Unit 1747