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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/21/2023 has been entered.
Response to Amendment
This office action is in response to Applicant’s amendment filed 2/21/2023.
Claims 3-4 and 20 are cancelled.
Claim 21 is newly added.
Claims 1-2, 5-19, and 21 are pending.
Applicant has overcome the rejection of claim 20 under 35 U.S.C. 112(b) as being indefinite by cancelling the claim.
Response to Arguments
Applicant’s arguments, see p. 6, filed 1/20/2023, with respect to the combination of Lavanchy in view of Sebastian have been fully considered and are persuasive. Particularly, the amendment to claim 1, requires that “the second indicia partially superpose the first indicia in order to distort the information,” which narrows the claim over the previously used “overlap” by requiring that the “second indicia” be located over the “first indicia.” Since the proposed modification of 10/20/2022 of Lavanchy in view of Sebastian would result in the second indicia being located under the first indicia, the rejection of 10/20/2022 has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of different teachings in Lavanchy.
Applicant' s arguments, see pp. 6-7, filed 1/20/2023, with respect to the rejection of claims 13-15 and 17-20 under 35 U.S.C. 103 as being unpatentable over Fernando in view of Pijnenburg have been fully considered and are persuasive. Applicant has amended claim 13 to include the limitation” wherein the control unit is configured to compare the read indicia to a set of pre-determined authorized information while allowing a deviation between the read indicia and the authorized information to be accepted in a determination that the read indicia is authorized.” The prior art of record fails to disclose such a limitation. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly cited prior art.
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.
Claims 10, 13-19 and 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 10, the claim limitation “the first indicia is printed on a sheet and the second indicia is printed on the same sheet as the first indicia” is indefinite because it unclear how to satisfy both the limitation and the previously claimed limitation “wherein the second indicia partially superpose the first indicia.” The limitation “superpose” is interpreted to mean “to place or lay over or above” according to Merriam-Webster dictionary. When this definition is applied to claim 1, it requires that the second indicia be placed over or above the first indicia. The claim limitation, when combined with claim 1, appears to be contradictory because being placed above an element is mutually exclusive to being on the same surface as the element.
Regarding claim 13, the claim limitation “block the heating system” lacks antecedent basis. For examination purposes, the limitation will be interpreted as “block a heating system.” Therefore, claims 14-19 and 21 are rejected for their dependencies.
Regarding claims 16-19 and 21, the claim limitation “the optical reader” lacks antecedent basis. For examination purposes, the limitation will be interpreted as “the optical reader system,” which has been previously claimed in claim 13.
Regarding claim 21, the claim limitation “the information” is indefinite because it is unclear which “information” the limitation refers to. Specifically, claim 13 recites “a set of pre-determined authorized information” and claim 21 recites “authorization information.” Therefore, it is unclear if the limitation refers back to the “authorized information,” the “authorization information” or refers to a new type of information. For examination purposes, the limitation will be interpreted as “the authorization information.”
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 10, the claim limitation “wherein the first indicia is printed on a sheet and the second indicia is printed on the same sheet as the first indicia” fails to include all the limitations of the claim upon which it depends. As discussed above, the limitation “superpose” is interpreted to mean “to place or lay over or above” according to Merriam-Webster dictionary. When this definition is applied to claim 1, it requires that the second indicia be placed over or above the first indicia. The claim limitation, when combined with claim 1, appears to be contradictory because being placed above an element is mutually exclusive to being on the same surface as the element.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 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.
Claims 1-2, 5, and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Lavanchy (US 2020/0268039; of record).
Regarding claim 1, Lavanchy discloses an aerosol generating article (abstract; “a consumable”) comprising a thermal indicator (abstract; “indicia”) in the form of texts or logos ([0077]; “containing information about the consumable” and “authorization information” since a logo is a visual entity signifying which organization made the article; see also p. 7 of instant specification describing that a brand can be authentication information),
wherein the thermal indicator comprises one or more indicia formed by applying a base layer of non-thermochromic colored material to the outer surface of the aerosol-generating article ([0081]; “first indicia that is readable before the consumable has been exposed to a temperature exceeding the temperature threshold”) and an outer layer of reversible thermochromic material onto the base layer of non-thermochromic colored material ([0081]), for example yellow or red non-thermochromic material ([0083], [0084]) and a reversible thermochromic material that undergoes a first reversible visible color change form blue to substantially colorless when the temperature rises to a first switching temperature ([0083], [0084]).
Lavanchy further teaches that, in addition to at least one reversible thermochromic material, the thermal indicator may further comprise at least one irreversible thermochromic material (“second indicia”) that undergoes an irreversible visible color change when the temperature of the thermal indicator rises to a third switching temperature ([0064]), the third switching temperature may be the same as or different to the first switching temperature ([0064], the irreversible thermochromic material that undergoes an irreversible visible color change from a substantially colorless state to a second colored state upon heating to a predetermined switching temperature ([0065]; “only readable by the optical reader after the consumable has been exposed to a temperature exceeding the temperature threshold”), and that it is appreciated that through an appropriate choice of the at least one reversible thermochromic material and, where present, the irreversible thermochromic materials the non-thermochromic materials therein the thermal indicator may advantageously provide one or more desired visual indications to a user at one or more desired temperatures ([0085]).
Regarding the claim limitations “for an inhaler comprising a heating system and an optical reader,” “a first indicia that is readable by the optical reader” and “a second indicia which is only readable by the optical reader” these claims are interpreted as an intended use which do not result in structural differences to the apparatus as claimed. A claim containing 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” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP 2114. However, because the thermal indicator of Lavanchy is structurally similar to that instantly disclosed, it is capable of being operated with similar if not identical claimed characteristics. Specifically, Lavanchy’s reversible thermochromic material is readable before the switching temperature because it has a color, and Lavanchy’s irreversible thermochromic material is only readable upon heating since it is colorless before the predetermined switching temperature (see para. 65).
However, Lavanchy does not explicitly disclose wherein the second indicia partially superpose the first indicia in order to distort the information. Specifically, while Lavanchy discloses different teachings of a non-thermochromic material and an irreversible thermochromic material, Lavanchy does not disclose a specific embodiment containing both of these materials combined together such that the irreversible thermochromic material superposes the non-thermochromic material.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Lavanchy’s irreversible thermochromic material that undergoes an irreversible visible color change from a substantially colorless state to a second colored state at predetermined third switching temperature with the thermal indicator including the base layer of non-thermochromic colored material and the outer layer of reversible thermochromic material because Lavanchy suggests that the irreversible thermochromic material may be added to the reversible thermochromic material (Lavanchy; [0064]-[0065]) and such a modification would yield the predictable result of further altering and advantageously providing one or more desired visual indications to a user at one or more desired temperatures imparted by the irreversible thermochromic material.
Moreover, it would have been obvious to said skilled artisan to have tried adding the irreversible thermochromic material such that the irreversible thermochromic material superposes (i.e., “placed above”) the non-thermochromic base material because there are a finite number of identifiable locations within the thermal indicator (i.e., (1) below the base layer of non-thermochromic colored material, (2) between the base layer of non-thermochromic colored material and the outer layer of reversible thermochromic material, or (3) on top of the reversible thermochromic material), two-thirds of which would result in the claimed configuration, with a reasonable expectation of success since Lavanchy explicitly suggests a thermal indicator including the reversible thermochromic material, irreversible thermochromic material, and non-thermochromic material to provide one or more desired visual indications to a user at one or more desired temperatures (Lavanchy; [0085]).
Regarding the claim limitation “wherein the second indicia partially superpose the first indicia in order to distort the information,” one of ordinary skill in the art would appreciate that the irreversible thermochromic material located on top of the non-thermochromic color material, changing from colorless to a colored state, would distort at least the overall color of the thermal indicator by either blending the colors and/or blocking the layer underneath (e.g., see [0083], describing that a yellow non-thermochromic material combined with a colorless thermochromic material would result in yellow indicia, and a yellow non-thermochromic material combined with a blue thermochromic material would result in green indicia; see [0084] describing that a red non-thermochromic material combined with a colorless thermochromic material results in red indicia, and a red non-thermochromic material combined with a blue thermochromic material results in only the blue layer being visible).
Regarding claim 2, modified Lavanchy discloses the thermal indicator comprises one or more indicia may be provided on the outer surface of the aerosol-generating article in different patterns (para. 76).
Regarding claim 5, modified Lavanchy discloses the irreversible thermochromic material (para. 65; “second indicia”) that undergoes an irreversible visible color change from a substantially colorless state (“transparent” since colorless objects are transparent to all visible light frequencies) to a second colored state (“optically readable”) upon heating to a predetermined switching temperature (para. 65).
Regarding claims 7-8, modified Lavanchy discloses the thermal indicator may comprise two or more irreversible thermochromic materials that when heated to the same or different predetermined switching temperatures, undergo irreversible visible color changes from the same or different third colored states to substantially colorless states (para. 68; “transparent” since colorless objects are transparent to all visible light frequencies).
Regarding claim 9, modified Lavanchy discloses wherein the first switching temperature is below about 80°C (para. 7). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 10, modified Lavanchy further discloses the thermal indicator is applied to an outer wrapper (para. 73; i.e. “same sheet”).
Regarding claim 11, modified Lavanchy discloses non-thermochromic material formed as a base layer ([0081]) and the irreversible thermochromic material is formed as an intermediate or outer layer (see rejection of claim 1 above).
Regarding claim 12, modified Lavanchy wherein the thermal indicator includes the irreversible thermochromic material (para. 65; “second indicia”) that undergoes an irreversible visible color change from a substantially colorless state to a second colored state upon heating to a predetermined switching temperature (para. 65), the first switching temperature is below about 80°C (para. 7). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lavanchy (US 2020/0268039; of record) as applied to claim 5 above, and further in view of Seeboth et al. (US 2010/0181541; of record).
Regarding claim 6, modified Lavanchy discloses the smoking article as discussed above with respect to claim 5 comprising the irreversible thermochromic material (para. 65; “second indicia”) that undergoes an irreversible visible color change from a substantially colorless state (“transparent” since colorless objects are transparent to all visible light frequencies) to a second colored state (“optically readable”) upon heating to a predetermined switching temperature (para. 65).
However, modified Lavanchy is silent as to the heated-activated ink is selected from the group comprising sodium chloride, ascorbic acid, and sucrose.
Seeboth discloses a composite with inverse thermochromic properties changing from a colorless into a colored state with increasing temperature (abstract, claim 1) comprising a colorant, a developer, a fluxing agent, and an inorganic filler (claim 1), wherein the inorganic filler is a metallic salt including sodium chloride (claim 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the irreversible thermochromic material of Lavanchy to include sodium chloride as in Seeboth in order to obtain the predictable result of changing from a colorless to colored state with increasing temperature (Seeboth, Abstract) with the benefit of creating a mechanically, thermally, and chemically stable product (Seeboth; para. 26) and reduce the cost of the technology (Seeboth; para. 5).
Claims 13-15, 17-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (US 2010/0163063; of record) in view of Gimkiewicz et al. (US 2019/0261682) and Fraser (US 7995196).
Regarding claim 13, Fernando discloses an electrically heated smoking system (“inhaler”) for use with a smoking article (“cigarette rod”) (abstract), the smoking system (101; Fig. 1) comprising a front end portion (109; “mouthpiece section”) and a rear housing portion (107; “power supply section”) for a power supply (see para. 9), the front end portion including a cavity (111) capable of receiving a smoking article (para. 59; see Fig. 1) and further comprising a detector (Fig. 2a-d; not shown in Fig. 1; “optical reader system”) for detecting the presence of an article in the cavity and distinguish between various articles usable with the system (para. 60), the detector (203, 219; “a control unit”) including a source of suitable light and a photosensor detected the reflected light, depending on the ink used, detects the reflected light to distinguish between various types of article and tailor the heating profile according to the particular cigarette type (paras. 66, 73, 76) which detects whether the cigarette has been used (para. 79) based on generally circular lines (217; “indicia”) being printed with thermally sensitive ink designed to change or alter in appearance during heating such that alteration of the line will indicate that the cigarette has been smoked or how much of the cigarette has been smoked (paras. 77-79; “consumable has been exposed to a temperature exceeding a temperature threshold”).
However, Fernando is silent as to the optical reader system is configured to block the heating system when the optical reader system has determined the read indicia is not authorized.
Gimkiewicz teaches an electrically operated smoking device (abstract) comprising a control circuitry for comparing image data form an image detector with stored image data (“control unit is configured to compare read indicia to a set or predetermined authorized information”), wherein the control circuitry may control a supply of power to an aerosol-generating element dependent on the outcome of a comparison between image data form the image detector and the stored image data; for example, if the image data from the image detector does not sufficient correlate to the stored image data, then the control circuitry may prevent the supply of power to the aerosol-generating element (“block the heating system when the optical reader system has determined that the read indicia is not authorized”) ([0028]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fernando’s detector to perform the known method of comparing image data from the detector to storage image data such that if the correlation is insufficient, the detector is configured to prevent the supply of power to the heater as in Gimkiewicz in order to effectuate such a method to only allow use with only legitimate articles (Gimkiewicz; [0028]) while preventing the problem of using of counterfeit smoking articles, which may be of inferior quality or may not be suited to the particular smoking system (Gimkiewicz; [0004]).
Moreover, modified Fernando is silent as to the control unit is configured to allowing a deviation between the read indicia and the authorized information to be accepted in a determination that the read indicia is authorized.
Fraser teaches a method for authenticating an object (abstract), the method comprising determining a physical dispersion pattern of a set of elements, determining a physical characteristic of the set of elements, determining a digital code associated with the object defining the physical dispersion pattern, and authenticating the object by verifying a correspondence of the digital code with the physical dispersion pattern, and verifying the physical characteristics (abstract), wherein the validation preferably has some tolerance for deviation of the pattern as read from the encoded information, wherein such tolerance is selected for defined based on the likely artifacts in the authentication process not due to counterfeiting, or likely changes in the article between the creation of the authentication code and its use (col. 27, ll. 43-57; “allow a deviation between read indicia and authorized information to be accepted”).
It would have been obvious said skilled artisan to have modified Fernando’s authentication method to include the step of including a tolerance for deviation of the read pattern from the encoded information as in Fraser in order to obtain the predictable result of authenticating articles with deviations not due to counterfeiting and merely due to likely changes in the article between the creation of the authentication code and its use (Fraser; col. 27, ll. 43-57), which prevents classifying an authentic article wrongly as a counterfeit article.
Regarding claim 14, modified Fernando further discloses the detector detects whether a cigarette has been inserted (para. 79) from generally circular lines (215; “first indicia”) printed in infrared, ultraviolet, visible ink, phosphorescent, fluorescent, or metallic markings (para. 62), and generally circular line (217; Fig. 2d; “second indicia”).
Regarding claim 15, modified Fernando discloses the circular lines (215, 217) are side-by-side (see Fig. 2d).
Regarding claims 17-19, modified Fernando discloses the identification information includes date of production (para. 7; “manufacturing date”), a use-by date (para. 7; “expiration date”) article-forming substrate type (para. 7; “flavor”) and a display (113) used to show any required information related to the smoking article (para. 59, 79).
Regarding claim 21, modified Fernando discloses the article includes identification information ([0007; “authorization information before the consumable has been exposed to temperature exceeding the temperature threshold” ) that is used to determine whether the article is legitimate or counterfeit (Gimkiewicz; [0028]), wherein the information configured to be altered during heating to indicate whether the article has been used (see para. 77; “indicia is altered after it has been exposed to a temperature exceeding a temperature threshold), wherein the detector determines and indicates whether the cigarette has been smoked or how much the cigarette has been smoked (para. 79) which is stored in the hardware (para. 79), including memory (para. 33, 37).
Regarding the claim limitation “wherein the indicia comprises a first indicia that is readable by the optical reader before the consumable has been exposed to a temperature exceeding the temperature threshold, wherein the indicia comprises a second indicia which is only readable by the optical reader after the consumable has been exposed to a temperature exceeding the temperature threshold, and wherein the second indicia partially superpose the first indicia in order to distort the information,” this limitation is interpreted as a material or article worked upon by the inhaler that does not limitation the inhaler claims. "Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." MPEP 2115. Here, the consumable having the indicia including the first indicia and the second indicia is merely considered an article that is merely worked upon by the optical reader system of the inhaler to generate aerosol. This is further supported by the language of claim 1, reciting “[a] consumable for an inhaler…” and claim 13, which merely recites “a cavity configured to receive a consumable.” Therefore, this limitation is not considered to impart patentability to the claims.
Claims 16 is rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (in view of Gimkiewicz et al. and Fraser as applied to claim 13 above, and further in view of Bache et al. (US 2018/0368474; of record).
Regarding claim 16, modified Fernando discloses the inhaler as discussed above with respect to claim 13.
However, modified Fernando is silent as to displaying an error message when the optical reader has determined a non-authorized indicia.
Bache teaches a vapor cartridge for a non-combustible vaping device (abstract) comprising a base (110) including a display interface device (para. 177) in which control circuitry (114) presents a graphical indication of whether a flavor cartridge (180) that is inserted into the vapor cartridge (140) is authenticated such that vapor generation is enabled (para. 177; i.e. an indication that the flavor cartridge is not authenticated is “an error message”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the inhaler of Fernando to include a display that indicates whether an inserted article is authenticated as in Bache in order to obtain the predictable result of giving a user visual information about the flavor cartridge (Bach; para. 177).
Conclusion
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
