DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-3, 5, and 9-20 are pending. Claims 12-20 are withdrawn.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 1/30/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 1/30/2026 have been fully considered but they are not persuasive.
Applicant argues that “the Minskoff reference cannot anticipate the elements of claim 1.” This argument is not persuasive as Minskoff was not relied upon for anticipating any of the claims (i.e., Minksoff was not used in a rejection under 35 U.S.C. § 102).
Applicant further argues that Chen does not disclose “the diagnostic is determined from [a] measured amount of current delivered to a battery associated with the electronic smoking article.” This argument is not persuasive as Chen discloses that a diagnostic for determining an amount of juice is determined by a measured amount of current (“the amount value of the tobacco liquid is an electric current value”, claim 2), and in the obvious combination of Minskoff and Chen, it would have been obvious to one having ordinary skill in the art to determine the diagnostic from a measured amount of current delivered to a battery associated with the electronic smoking article (as discussed in the rejection of claim 1 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.
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 1-3 and 10 are rejected under 35 U.S.C. 103 as being kinda obvious over Minskoff et al. (US 2014/0246035 A1) in view of Chen (US 2015/0366266 A1).
Regarding claim 1, Minskoff discloses a non-transitory computer-readable medium (“non-transitory computer readable medium”, claim 14, ¶ 0212) storing instructions executable by a computer (“computer”, claim 14) to cause the computer to:
create a connection (“communication link”, claim 14) with an electronic smoking article (“personal vaporizing unit”, claim 14);
transfer data (“first data” and “second data”, claim 14, ¶ 0096) between the computer and electronic smoking article, upon connection with the electronic smoking article (claim 14, ¶ 0096);
determine a diagnostic (extrapolated data, ¶ 0183) associated with the electronic smoking article based upon the transferred data (¶ 0183, 0212), wherein:
the diagnostic is associated with a battery associated with the electronic smoking article (Minskoff discloses that the data which is used to determine the diagnostic is transferred via two contacts such that the flow of electric charge for transferring that data is delivered to a battery of a case configured to hold the electronic smoking article, ¶ 0096), and
the battery associated with the electronic smoking article is a battery of a pack (“case”, ¶ 0096) configured for storing a plurality of individual electronic cigarettes (e.g., “two personal vaporizer units”, ¶ 0096), and
determine a total amount of juice used by at least one of the plurality of individual electronic cigarettes (“liquid cartridge usage status”, ¶ 0169, 0212).
Minskoff does not disclose how the amount of juice is determined. As such, Minskoff does not disclose that the diagnostic is determined from a measured amount of current delivered to the battery associated with the electronic smoking article and that the total amount of juice used by the at least one of the plurality of individual electronic cigarettes is based upon the measured amount of current.
Chen, in the same field of endeavor, discloses that a diagnostic for determining an amount of juice is determined by a measured amount of current (“the amount value of the tobacco liquid is an electric current value”, claim 2).
As Minskoff does not disclose how the amount of juice is determined, one of ordinary skill in the art would be motivated to combine the teachings of Minskoff with the teachings of Chen in order to program the non-transitory computer-readable medium with instructions to determine an amount of juice. Further, there is a reasonable expectation for success in combining the teachings as Minskoff requires a method for determining an amount of juice and Chen provides a method for determining an amount of juice. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Minskoff and Chen to determine the diagnostic from a measured amount of current delivered to a battery associated with the electronic smoking article and determine the total amount of juice used by at least one of the plurality of individual electronic cigarettes based upon the measured amount of current delivered to the battery of the pack configured for storing the plurality of individual electronic cigarettes (MPEP § 2143(I)(G)).
Regarding claim 2, Minskoff in view of Chen teaches the medium of claim 1, as stated above. Minskoff further discloses wherein the diagnostic includes a version of instructions (“software configuration”, ¶ 0183) stored on the electronic smoking article (¶ 0183, 0212).
Regarding claim 3, Minskoff in view of Chen teaches the medium of claim 2, as stated above. Minskoff further discloses the medium comprising instructions to transfer a different version of instructions (“firmware update”, ¶ 0183) to the electronic smoking article in response to a determination of the version of instructions stored on the electronic smoking article (¶ 0183, 0212).
Regarding claim 10, Minskoff in view of Chen teaches the medium of claim 1, as stated above. Minskoff also discloses the medium further comprising instructions executable to provide a credit (“incentives”, ¶ 0189) to the user in response to the transfer of data between the computer and electronic smoking article (¶ 0189, 0212).
Claims 5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Minskoff et al. (US 2014/0246035 A1) in view of Chen (US 2015/0366266 A1) as applied to claim 1 above, and further in view of in view of Henry et al. (US 2015/0224268 A1).
Regarding claim 5, Minskoff in view of Chen teaches the medium of claim 1, as stated above. Chen does not teach using a coloumb counter configured to determine the current delivered to the battery associated with the electronic smoking article. However, it is known in the art that a coulomb counter can function to determine a current delivered to a battery. For instance, Henry teaches that a coulomb counter can function to determine a current delivered to a battery associated with an electronic smoking article so that a diagnostic can be associated with data received from the coulomb counter (¶ 0069-0070). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to include instructions on the medium taught by Minskoff executable to receive data from the coulomb counter taught by Henry, which is configured to determine the current delivered to the battery associated with the electronic smoking article, as it has been held to be within the general skill of a worker in the art to select a known device based on its suitability for the intended use. (Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988); MPEP § 2144.07).
Regarding claim 9, Minskoff, in view of Chen and Henry, teaches the medium of claim 5, as stated above. Minskoff also discloses the medium further comprising instructions executable to determine a usage behavior of a user (“user specific usage data”, ¶ 0179) of the electronic smoking article based upon the current delivered to the battery associated with the electronic smoking article (¶ 0179, 0212).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Minskoff et al. (US 2014/0246035 A1) in view of Chen (US 2015/0366266 A1) as applied to claim 10 above, and further in view of Henry et al. (US 2015/0224268 A1).
Regarding claim 11, Minskoff in view of Chen teaches the medium of claim 10, as stated above. Minskoff does not teach the medium further comprising instructions executable to provide a credit to a user in response to the determination of the diagnostic. Henry, in the same field of endeavor, teaches providing a credit to a user in response to the determination of usage data (“electronic coupons selected based at least in part on usage data”, ¶ 0118). There was a benefit to providing credits in response to the determination of usage data in that it incentivizes the user to continue using the electronic smoking article. Therefore, 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 medium of Minskoff to include instructions, as taught by Henry, executable to provide a credit to a user in response to the determination of the diagnostic associated with the electronic smoking article (which is a usage data) for this benefit. In the medium of the combination, the credit provided in response to the determination of the diagnostic associated with the electronic smoking article is different than the credit provided in response to the transfer of data (see discussion, above).
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 COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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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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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
