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
This office action is in response to Applicant’s amendment filed 6/24/2022.
Claims 1 and 13-14 are amended.
Claims 3-4 are cancelled.
Claims 15-20 are newly added.
Claims 1-2 and 5-20 are pending.
Response to Arguments
Applicant's arguments filed 6/24/2022 regarding Lavanchy and Sebastian have been fully considered but they are not persuasive.
The Applicant notes that claim 1 defines “first indicia” as being “readable by the optical reader before the consumable has been exposed to a temperature exceeding the temperature threshold” and the “second indicia” as “only readable by the optical reader after the consumable has been exposed to a temperature exceeding the temperature threshold.” The Applicant then argues that the first indicia best corresponds to the thermochromatic ink of Sebastian and the second indicia best corresponds to the permanent ink of Sebastian. The Applicant then argues that the thermochromic ink is on top of the permanent ink whereas the claim requires the second indicia partially overlaps the first indicia (p. 5-6).
The Examiner finds Applicant’s argument unpersuasive. The Examiner notes that the instant specification does not define the word “overlap,” and therefore broadest reasonable interpretation is used in defining the word. The Applicant appears to be arguing that since the first indicia is disposed on top of the second indicia (i.e. the second indicia is underneath the first indicia), the second indicia cannot overlap the first indicia. While Merriam-Webster defines one “overlap” as “to extend over or past and cover a part of” (appears to be the definition Applicant is arguing), Merriam-Webster also defines “overlap” as “to occupy the same area” or “to have something in common with.” According to the second definition in Merriam-Webster, both the first indicia and second indicia of Sebastian occupy the same area (longitudinal and radial spatial area) on the cigarette (see Figs. 1-2). Therefore, Sebastian’s thermochromic ink and permanent ink overlap regardless of which ink is on top.
Moreover, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, the Applicant attacks only Sebastian and does not address Lavanchy’s use of a first reversible thermochromic material (para. 65; “first indicia”) or the irreversible thermochromic material (para. 65; “second indicia”) which was modified to achieve the overlapping indicia.
Applicant’s arguments with respect to amended claim 13 filed 6/24/2022 have been considered but are moot because the arguments do not apply to the combination of references being used in the current rejection. Specifically, the Examiner has added Pijnenburg (US 2017/0360088) to address the newly added limitation of “the optical reader system is configured to block the heating system when the optical reader system has determined a non-authorized indicia).
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.
Claim 20 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 20, the claim limitation “minor changes” is indefinite because the term “minor” is relative term that is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 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) in view of Sebastian et al. (US 2017/0340008).
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 (para. 77; “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 at least a first reversible thermochromic material (para. 65; “authorization information before the consumable has been exposed to a temperature exceeding a temperature threshold”) and at least one irreversible thermochromic material (para. 65; “indicia is altered after it has been exposed to a temperature exceeding the temperature threshold”), wherein the reversible thermochromic material (“first indicia”) undergoes a first reversible visible color change from a first colored state to a substantially colorless state upon heating to the first switching temperature (para. 65; “readable by an optical reader before the consumable has been exposed to a temperature exceeding the temperature threshold”) and
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; “only readable by the optical reader after the consumable has been exposed to a temperature exceeding the temperature threshold”).
Lavanchy further teaches that the thermal indicator may comprise applying a base layer of non-thermochromic colored material to the outer surface of the aerosol-generating article, then applying an outer layer of reversible thermochromic material onto the base layer of the non-thermochromic colored material (para. 81), such that at temperature above the first switching temperature, the one or more indicia appear one color (e.g. yellow), and at temperature below the second switching temperature, the one or more indicia appear a different color (e.g. green) (para. 83).
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 teach the second indicia partially overlaps the first indicia in order to distort the information.
Sebastian discloses a smoking article (abstract) comprising a permanent ink layer (32; Fig. 3) printed in the form of a text, image, or pattern (para. 28) and a temperature dependent material (30) such as a thermochromic ink layer (para. 28) applied over the permanent ink layer to at least partially obstruct the content of the permanent ink layer (see Fig. 3; para. 28), and when temperature rises above the transition temperature, the thermochromic ink becomes transparent and the permanent ink layer becomes visible to the viewer (para. 29).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the known method of overlapping the inks to at least partially obstruct the content of the bottom layer as in Sebastian to the reversible and irreversible thermochromic inks of Lavanchy in order to obtain the predictable result of making the bottom layer visible to the viewer (Sebastian; para. 29) with the beneficial result of warning a user that the smoking article is hot or confirmation that the appropriate or necessary heating is occurring (Sebastian; para. 5).
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 the thermal indicator may comprise the two inks are printed over each other (Sebastian; para. 28; “different sheet”).
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) in view of Sebastian et al. (US 2017/0340008) as applied to claim 5 above, and further in view of Seeboth et al. (US 2010/0181541).
Regarding claim 6, modified Lavanchy discloses the smoking article as discussed above with respect to claim 1 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 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (US 2010/0163063) in view of Pijnenburg et al. (US 2017/0360088).
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; “an optical reader”) 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 a non-authorized indicia.
Pijnenburg teaches a sachet of aerosol-forming substrate for an electrically heated aerosol-generating device (abstract) comprising an electrical heater (210), a controller (208) configured to provide power to the heater (para. 65), and a detector (302; Fig. 3; “optical reader system”) adjacent the cavity (202) configured to detect the presence of a sachet in the cavity and identify various sachets which may be usable with the system (para. 73) using a light source and light sensor (para. 74), wherein if the sachet is not recognized by the detector, the control circuitry may prevent power from being supplied to the heater to prevent the use of unauthorized aerosol-generating articles (para. 76).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the known method of preventing power from being supplied to the heater if an aerosol generating article is not recognized as in Pijnenburg to smoking system of Fernando in order to prevent the use of unauthorized articles (Pijnenburg; para. 76).
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 20, modified Fernando discloses the article includes information configured to be altered during heating to indicate whether the article has been used (see para. 77; “deviation between read information and authorized information to accommodate for minor changes of the indicia”), wherein the detector determines and indicates whether the cigarette has been smoke or how much the cigarette as been smoked (para. 79; “compensation”) which is stored in the hardware (para. 79), including memory (para. 33, 37; “memory unit”).
Claims 16 is rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (US 2010/0163063) in view of Pijnenburg et al. (US 2017/0360088) as applied to claim 13 above, and further in view of Bache et al. (US 2018/0368474).
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
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONNY V NGUYEN whose telephone number is (571)272-8294. The examiner can normally be reached Monday - Thursday; 8:00 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached on (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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/SONNY V NGUYEN/Examiner, Art Unit 1747
/FRANCISCO W TSCHEN/Primary Examiner, Art Unit 1712
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