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
This Office Action is responsive to the amendments and argument filed 4 November 2025. As directed by applicant, Claim 1 is amended. No further claims are cancelled, and claim 27 is added. Thus claims 1, 4-9 and 12-27 are pending. Claims 17-26 have been withdrawn from consideration.
Election/Restrictions
Pursuant to the Election/Restriction Requirement filed 2 June 2022, and applicant’s reply on 2 August of 2022 of an election without traverse, this requirement is made Final.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 4-9, 12-16, and 27 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
This judicial exception is not integrated into a practical application because the claim is directed to a controller for “determining” characteristics, but not doing anything with the determination, and generic “controller” does not add a meaningful limitation to the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because a conventional controller determining or comparing from data is recognized as routine and conventional functions of a controller.
With respect to step 1, claim 1 is directed to an apparatus which is eligible at step 1.
With respect to set 2A, the following elements are considered to be abstract:
“wherein at one or more of: substantially on start-up of the aerosol generating device, substantially on installation of a new or replacement susceptor into the aerosol generating device, or substantially on installation of a new or replacement inductor into the aerosol generating device, the controller is configured to:
determine a frequency characteristic of a peak of a frequency response of the RLC resonance circuit at a reference temperature; and
store the frequency characteristic as a stored reference characteristic, and
wherein, at a later stage when the susceptor is being inductively heated, the controller is arranged to:
determine the frequency characteristic again, and
determine the temperature of the susceptor based on a comparison of the frequency characteristic to the stored reference characteristic;
wherein the RLC resonance circuit is contained within a hand-held body of the aerosol generating device; and
wherein the frequency characteristic is a resonant frequency of the RLC resonance circuit, and/or the frequency characteristic is, or is indicative of, a bandwidth of the peak of the frequency response of the RLC circuit, wherein the controller determines the temperature of the susceptor."
The above limitations appear to be directed to mental processes and/or mathematical operations and/or certain methods of human activity because the limitations concern data collection, data analysis and recording the results of data analysis which could be done mentally or by hand with pen and paper).
The following are additional elements that do not amount to a practical application at step 2A:
“1. (Currently Amended) An apparatus for determining a temperature of a susceptor of an aerosol generating device, the susceptor being for inductive heating by a RLC resonance circuit, the apparatus comprising a controller”
This appears to be a field of use limitation limiting the data collection/analysis to controlling a temperature for heating. The additional element of a controller as described at a high level of generality on p. 26 lines 30 p. 27 line 2 (including a processor and a memory) of the specification and therefore appears to be merely a general purpose computer used to implement the abstract idea.
In re-evaluating the additional elements under step 2B, general purpose computers are not “significantly more” as determined in Alice.
The limitations of claim(s) 1, 4-9, 12-16, and 27 , when considered individually and as an ordered combination do not amount to significantly more than the abstract idea for the reasons set forth above. The dependent claims only do further determining and/or further characterizing the data or previously done determinations. The claims are not patent eligible.
Specification
The amendment filed 25 September 2019 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Under the heading Priority Claim, the clause that GB Patent Application No 1705208.5, filed March 31, 2017, “which is hereby fully incorporated herein by reference” is new matter. Specifically, the effective filing date of the National Application is the filing date of the PCT application which, was, in this case PCT/EP2018/057834 filed 27 March 2018. Any further incorporation by reference beyond this date is improper, so the Incorporation by Reference, filed for the first time on 25 September 2019, is improper.
Applicant is required to cancel the new matter in the reply to this Office Action.
Response to Arguments
Applicant's arguments filed 4 November 2025 have been fully considered but they are not persuasive.
In response to applicant’s argument against the Specification Objection, MPEP § 608.01(p) states clearly “An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date”, and since the effective filing date the national stage application of a PCT application is the PCT filing date, no new matter may be added after that date (MPEP §1893.03(b)). Regarding the check box on the PCT application referred to by applicant, that provision only provides that for any material inadvertently left out from the application, that material may be incorporated by reference (the MPEP has a similar provision for U.S. applications), but it does not fully incorporate the entirety of the foreign application. The subsequent incorporation by reference of the entire foreign document at the filing of the national stage U.S. Application is ineffective.
In response to applicant’s argument that the amendment overcomes the §101 rejection, it is further noted that the amendment is just another “determining step”, an abstract idea that is able to be performed by hand and is not integral to the invention. Applicant even argues that this is an “important feedback mechanism for controlling the inductive heating process to prevent overheating and ensure proper aerosol generation (Remarks, p. 10, 3rd paragraph). But the claim does not state this, nor does it say how this helps to control the aerosol generation (e.g. controlling the heater to turn off should the susceptor overheat, for instance). As well, applicant argues that even if the claims were considered directed to an abstract idea, the additional elements provide “significantly more” than the abstract idea itself, as per the current §101 test (Remarks, p. 10, 4th paragraph). However, the Specification itself does not describe any of the additional elements as required to the determining (for instance, the RLC circuit or the susceptor)(Current Specification, p. 28, line 15 through p. 29 line 14) . Rather, these additional elements are well known for generic heating, but the abstract “determining” steps remain so.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please See previously filed and attached forms PTO-892.
THIS ACTION IS MADE FINAL. 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 LAWRENCE H SAMUELS whose telephone number is (571)272-2683. The examiner can normally be reached 9AM-5PM M-F.
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/LAWRENCE H SAMUELS/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761