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 .
Response to Amendment
Applicant's amendment filed on January 12, 2026 has been received. Claims 1-19 are currently pending, of which claims 16-19 are withdrawn.
Claims 1-15 are presented for examination below.
Response to Arguments
In light of Applicant’s amendments to the claims, an updated rejection is provided below.
Furthermore, Applicant’s arguments filed on January 12, 2026 have been fully considered but are not deemed to be persuasive.
Applicant argues that Mallonee fails to teach the method of claim 1 because “Mallonee is directed to liquid-transfer wicks for an entirely different technical fields such as ink delivery, lubrication, and scent or liquid transport. Mallonee’s wick is not a consumable, is not heated to form an inhalable aerosol, and is not configured for interaction with an aerosol-generating device” (see page 6 of Applicant’s Remarks).
The Examiner respectfully disagrees. Claim 1 as currently amended recites “A method of manufacturing a consumable for a non-combustible aerosol provision system.” Notably, the recitation “for a non-combustible aerosol provision system” is an intended-use limitation, and the claim does not require any aerosol-system-specific steps such as heating the consumable, as asserted by Applicant. The Examiner also notes that claim 1 is a method of manufacturing/ making a consumable, not a method of using a consumable.
Furthermore, the Examiner respectfully notes that the term “consumable” is extremely broad, and is commonly defined as “goods which are intended to be bought, used, and then replaced” (see definition 1 via CollinsDictionary.com). Mallonee’s wick can be reasonably considered a consumable, since it is designed to be consumed/used for liquid transfer or scent dispersal purposes, and can be replaced after use (see column 1, lines 5-10 and column 8, lines 13-19).
In accordance with MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow. Because Applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) ("During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow."); In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
See updated rejection(s) below.
Claim Objections
Claim 1 is objected to because of the following informalities: “the outer shape of the consumable” should read “an outer shape of the consumable” to enhance clarity and to maintain consistent antecedent basis with in the claims.
Appropriate correction is required.
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.
Claims 1-5, 7, 9, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mallonee (US Patent No. 5,124,200).
Regarding claim 1, Mallonee discloses a method of manufacturing a consumable (8) for a non-combustible aerosol provision system (see Figs. 1-5; Abstract; and column 4, line 8 – column 8, line 19; Mallonee teaches a method of manufacturing a wick, i.e., a consumable product/good, that is capable of being used for a non-combustible aerosol provision system), the method comprising:
braiding strands of material (11) around the outside of a continuous rod of absorbent material (10) to form a continuous rod of a braided absorbent material (see Fig. 1; column 4, lines 8-60; and column 8, lines 13-19); and
forming individual consumables by cutting the continuous rod of the braided absorbent material into lengths of the braided absorbent material (see individual wicks 8 in Fig. 5 after cutting, see also column 7, line 43 – column 8, line 19), wherein each length includes at least a portion of the continuous rod of the braided absorbent material (see Fig. 5 and column 7, line 43 – column 8, line 19), wherein the shape of each length of the braided absorbent material corresponds to the outer shape of the consumable (see shape of individual wicks 8 in Fig. 5 after cutting, which corresponds to the outer shape of the wicks 8 when used as a consumable in Figs. 2-3).
Regarding the limitation “for a non-combustible aerosol provision system,” it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). See MPEP 2114 (II).
Regarding claim 2, Mallonee further discloses wherein the braiding creates a uniform pattern of strands of material (11) around the outside of the continuous rod of absorbent material (10; see at least Fig. 1 and column 4, lines 8-60).
Regarding claim 3, Mallonee further discloses wherein the continuous rod of absorbent material (10) is continuous in a first direction and the cutting is performed perpendicular to the first direction (see Fig. 5 and column 7, line 43 – column 8, line 19).
Regarding claim 4, Mallonee further discloses wherein a braiding machine (24) performs the braiding, and the continuous rod of absorbent material (10) is drawn through an aperture of the braiding machine (see Fig. 5 and column 6, lines 27-63).
Regarding claim 5, Mallonee further discloses wherein the strands of material (11) are supplied from three or more bobbins on the braiding machine (24, see Fig. 5 and column 6, lines 27-63).
Regarding claim 7, Mallonee further discloses wherein the continuous rod of absorbent material (10) is supplied from a reel (reel of 21, see Fig. 5 and column 6, lines 27-50).
Regarding claim 9, Mallonee further discloses wherein the strands of material (11) comprise at least a first material and a second material, wherein the first material is different to the second material (see column 4, lines 42-60; Mallonee discloses wherein binder strands 11 may comprise a co-extruded yarn of two different materials).
Regarding claim 13, Mallonee further discloses wherein the second material is cotton thread (see column 4, lines 42-60; Mallonee discloses a wide range of different materials, including cotton, rayon, polypropylene, and nylon).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Mallonee, as applied to claim 4 above, in view of Frahmann et al. (herein Frahmann)(US PG Pub 2023/0132310).
Regarding claim 6, Mallonee discloses the limitations of claim 4, as discussed above, but fails to specifically disclose wherein the braiding machine comprises a controller configured to match the braiding to a draw speed of the continuous rod of absorbent material through the aperture of the braiding machine.
However, Frahmann teaches a braiding machine (100) comprising a controller (see at least Abstract and paragraphs 0008-0014) for matching a speed of braiding to a draw speed of a supplied material through the braiding machine (see paragraph 0003), to maintain a desired braiding angle in the braided product (see paragraphs 0003 and 0012).
Therefore, based on Frahmann’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mallonee’s braiding machine to include a controller configured to match the braiding to a draw speed of the continuous rod of absorbent material through the aperture of the braiding machine, as doing so would allow a desired braiding angle to be maintained during production of the braided product.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mallonee, as applied to claim 1 above.
Regarding claim 8, Mallonee discloses the limitations of claim 1, as discussed above. Mallonee further discloses wherein the absorbent material may include cellulosic fibers (see column 4, lines 13-25) but fails to specify wherein the cellulosic fibers are cotton fibers.
However, one of ordinary skill in the art would readily recognize that cotton is a well-known and commonly used cellulosic fiber, and provides material properties such as high absorbency, high wet strength, and biodegradability.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have specifically chosen cotton for Mallonee’s cellulosic fiber, as cotton is a well-known and commonly used cellulosic fiber, and would provide material properties such as high absorbency, high wet strength, and biodegradability.
It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Mallonee, as applied to claim 1 above, in view of Montle (US Patent No. 6,272,966).
Regarding claim 14, Mallonee discloses the limitations of claim 1, as discussed above, but fails to further disclose wherein the continuous rod of absorbent material is formed by wrapping the absorbent material around a continuous core of material.
However, Montle teaches a method of manufacturing a braided absorbent material (10, see Figs. 1-3 and column 2, line 50 – column 4, line 55), comprising the steps of: wrapping an absorbent material (12) around a continuous core of material (14); and then braiding strands of material (18) around the absorbent material (see Figs. 1-2 and column 2, line 50 – column 4, line 29), so as to allow the braided product to resist deformation when bent and/or to allow the absorbent material to maintain a smoother, more continuous cord shape when braided (see column 4, lines 14-30).
Therefore, based on Montle’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mallonee’s method, such that continuous rod of absorbent material would be formed by wrapping the absorbent material around a continuous core of material, as doing so would allow the braided product to resist deformation when bent and/or allow the absorbent material to maintain a smoother, more continuous cord shape when braided.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Mallonee, as applied to claim 1 above, in view of Rockwell et al. (herein Rockwell)(US Patent No. 5,863,196).
Regarding claim 15, Mallonee discloses the limitations of claim 1, as discussed above, but fails to further disclose wherein one or more additional materials are laid on the outside of the continuous rod of absorbent material before the braiding.
However, Rockwell teaches a method of manufacturing a braided absorbent material (10), comprising the steps of providing a continuous rod of core material (12); laying one or more additional materials (14) are laid on the outside of the continuous rod; braiding strands of material (16) around the one or more additional materials; then cutting the continuous rod of braided material into lengths of braided absorbent material (see Figs. 1-3; column 3, line 30 - column 4, line 23; and column 5, lines 1-33), so as to allow the braided product to form a fray-resistant integral structure, while maximizing absorption of the braided product (see at least column 1, lines 1-11 and column 2, lines 5-60).
Therefore, based on Rockwell’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mallonee’s method wherein one or more additional materials are laid on the outside of the continuous rod of absorbent material before the braiding, as doing so would allow the braided product to form a fray-resistant integral structure, while maximizing absorption of the braided product.
Allowable Subject Matter
As previously indicated in the Non-Final Rejection, claims 10-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOCELYN BRAVO whose telephone number is (571)270-0581. The examiner can normally be reached Monday, Tuesday, Thursday, and Friday, 12:00 pm - 4:00 pm.
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/JOCELYN BRAVO/Primary Examiner, Art Unit 3732
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