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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/20/2026 has been entered.
Response to Amendment
The amendment filed 12/29/2025 has been entered. Claims 17-19 remain pending in the application, with claims 20-30 remaining withdrawn. The amendments to the claims have overcome the objections and 112(b) rejection previously set forth in the Final Rejection mailed 10/30/2025.
Response to Arguments
Applicant's arguments filed 09/15/2025 (“Remarks”) have been fully considered but they are not fully persuasive.
The request to rejoin claims 20-30 due to the addition of “at least one of the delivering restriction(s) is specific to a subset of the plurality of reservoirs” to claim 17 has been considered. However, the requirement for unity of invention is maintained, since the mobile inhaler verifying the identity of the respective liquid container before enabling delivery is not a special technical feature contributing over the prior art. Please refer to the rejection below over Silvestrini in view of Smith. Further, the newly added limitation of verifying an identity of the liquid container and authenticating authorization for use is not required by the withdrawn claims. Since the restriction requirement has been maintained, and claims 17-19 have not been found allowable, the withdrawn claims have not been rejoined.
The argument that the delivering restriction does not restrict delivery according to the 112(f) interpretation has been considered. Since the amended claim language has narrowed the scope of the interpretation of a delivering restriction and included the structure of the delivering restriction in the claim, the 112(f) interpretation of this claim limitation has been withdrawn.
The argument that the amended claim language overcomes the previous rejection over Silvestrini and Rostami has been considered and is persuasive. However, due to the change in the scope of the claims, a new rejection over Silvestrini in view of Smith has been applied. Please refer to the update rejection below.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“connection component” in claim 18; “component” is considered the generic placeholder term and “connection” is the functional language to connect the components. Per the specification amended 11/13/2024, a “connection component” is “a wireless or wired connection” (page 26, fourth par.).
“output interface component” in claim 18; “component” is considered the generic placeholder term and “interface” is the functional language to interface the components. Per the specification page 12, pars. 5-6: “The output interface component can be a user interface or a component configured to implement a user interface… The output interface component can be at least one of a visual interface device, such as an LED, an LED-array, a screen or a projector, an acoustic output device, such as a speaker, a buzzer or another device configured to play audio data, and a haptic element, such as a vibrating element… The output interface component can be at least one of a computer device and a display device that can be connected to a mobile inhaler, such as a smartphone, a personal computer, a printer, a screen or a virtual reality headset.”
“Restriction element” in claim 17; “element” is considered the generic place holder term and “restriction” is the functional language. The restriction element is interpreted according to the specification according to page 13: “Each of the at least one delivering restrictions is a feature configured to prevent delivering at least one component of the inhaling substance by the mobile inhaler from a liquid container without the respective restriction element(s)”. As such, the restriction element is interpreted to be the complementary component to the delivering restrictions above as described by the original specification.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The examiner notes that a “delivering restriction(s)” in claim 17, which was previously interpreted under 112(f) is no longer interpreted under 112(f) due to the added limitations including the structure of an electronic verification requirement.
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.
Claims 17 and 19 are rejected under 35 U.S.C. 103 as unpatentable over Silvestrini (US 2018/0014573), hereafter Silvestrini, in view of Smith et al. (US 2016/0089508 A1), hereafter Smith.
Regarding Claim 17, Silvestrini discloses a system comprising a mobile inhaler (fig. 3, 200, [0254]) that is configured to be connected to at least one liquid containers (fig. 3, cartridge 102, [0255] line 2), and to deliver an inhaling substance ([0254] an aerosol comprising nicotine lactate salt particles), wherein the inhaling substance comprises at least one of an amount of a first component (fig. 2, 112, first carrier material [0239] line 5) and an amount of a second component (fig. 2, 116, second carrier material [0240] line 4), wherein the mobile inhaler further comprises at least one connector (fig. 2, cap 106 of cartridge 102 [0243]; shown but not labeled in fig. 3) configured for connection of the mobile inhaler to the at least one liquid container (fig. 2, cartridge 102 having cap 106 [0243] is inserted into aerosol generating device 206, as seen in fig. 3, which then connects to mouth piece 204 [0259]) and for intaking of at least a portion of each of the liquid container's contents (figs. 2 and 3, mouthpiece 204 connects adjacent to the cap 106, which includes first air inlet 120 and second air inlet 122 [0243] and [0258-260]); wherein the system comprises furthermore the at least one liquid containers (fig. 2, cartridge 102), wherein the at least one liquid containers comprises a plurality of reservoirs (fig. 2, 102 holds two containers 112, 116), wherein each reservoir comprises a component of the inhaling substance (fig. 2, 112 holds nicotine and menthol [0239], 116 holds lactic acid [0240]); and wherein the reservoirs each comprise mutually different components of the inhaling substance (nicotine and lactic acid are mutually different substances which are inhaled, [0261]).
Silvestrini is silent on wherein the mobile inhaler comprises furthermore at least one or a plurality of delivering restriction(s),at least one of the liquid container(s) comprise(s) at least one or a plurality of matching restriction element(s), and wherein at least one restriction element of at least one of the liquid container(s) comprises an electronic element configured at least for an identification of the respective liquid container by at least one of wired communication and/or wireless communication, wherein the mobile inhaler is configured to verify the identification of the respective liquid container via the electronic element before enabling delivery of at least one component of the inhaling substance, wherein the delivering restriction(s) comprise an electronic verification requirement that prevents delivery until the electronic element provides authentication data confirming the liquid container is authorized for use with the mobile inhaler, wherein the mobile inhaler is configured to deliver at least one component of the inhaling substance only if the delivering restriction(s) are matched by at least a part of the restriction element(s) of at least one of the respective liquid container(s), wherein furthermore at least one of the delivering restriction(s) is specific to a subset of the plurality of reservoirs and the liquid container(s) comprising this subset, and/or if there is a third party authorization.
Smith teaches a mobile inhaler (abstract) with at least one or a plurality of delivering restriction(s) ([0142] the vaporizer is equipped to identify a Unique Identifying Cartridge Number (UINC) such as an integrated circuit or microchip transponder [0144]), at least one of the liquid container(s) comprise(s) at least one or a plurality of matching restriction element(s) ([0128] each cartridge is equipped with an RFID chip having a UINC), and wherein at least one restriction element of at least one of the liquid container(s) comprises an electronic element configured at least for an identification of the respective liquid container by at least one of wired communication and/or wireless communication ([0124] the device communicates with a database; see also [0134]), wherein the mobile inhaler is configured to verify the identification of the respective liquid container via the electronic element before enabling delivery of at least one component of the inhaling substance ([0128]), wherein the delivering restriction(s) comprise an electronic verification requirement that prevents delivery until the electronic element provides authentication data confirming the liquid container is authorized for use with the mobile inhaler([0128]), wherein the mobile inhaler is configured to deliver at least one component of the inhaling substance only if the delivering restriction(s) are matched by at least a part of the restriction element(s) of at least one of the respective liquid container(s) ([0128]), wherein furthermore at least one of the delivering restriction(s) is specific to a subset of the plurality of reservoirs and the liquid container(s) comprising this subset ([0128] each cartridge has its own UINC), and/or if there is a third party authorization ([0134]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the delivering restriction and matching restriction element, as described above by Smith, for the benefit of allowing for accurate information about usage levels, serving as anti-piracy and anti-tampering measures, and to allow a doctor to activate or deactivate the device for inhalation of a controlled substance (Smith [0128]).
Regarding Claim 19, the modified Silvestrini discloses a system according to claim 17, wherein the system comprises furthermore an interface suitable to connect the system to at least one of a computer device, an integrated circuit and a data storage device, by at least one of a wired and a wireless connection (as modified by Smith, once the cartridge is inserted, the vaporizer connects to a database using an integrated circuit of a microchip transponder to verify the identity of the cartridge [0144] and [0141-0142].
Claims 18 is rejected under 35 U.S.C. 103 as unpatentable over Silvestrini and Smith, further in view of Bache et al. (US 2018/0368474), hereafter Bache.
Regarding Claim 18, the modified Silvestrini discloses a system according to claim 17, but is silent on whether there is a connection component to an output interface component.
Bache teaches a mobile inhaler (fig. 1E, [0186]) wherein the mobile inhaler comprises a connection component (fig. 1B, control circuitry 114, [0180]) to an output interface component (fig. 1E, display 172 [0186]) wherein the output interface component is configured to display information relating to the mobile inhaler ([0186] lines 8-12), information relating to a recording and/or a duration of an inhalation, a summary or an analysis thereof ([0337], the display may include a remaining count meter until vapor generation is depleted, i.e. an analysis of inhalation) or information relating to at least one liquid container that is, was or can be connected to the mobile inhaler ([0335], the display may indicate whether a vapor cartridge is coupled).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a display into Silvestrini’s mobile inhaler as taught by Bache for the benefit of being able to confirm that the cartridge is fully connected (Bache [0335] lines 7-8) and to let the user know how much vapor is left in the cartridge ([0337] lines 6-10).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2015/0181945 A1 discloses a vaporizer which authorizes a user to vape ([0111] and [0166])
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA K. TOICH whose telephone number is (703)756-1450. The examiner can normally be reached M-Th 7:30 am - 4:30 pm, every other F 7:30-3:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brandy S. Lee can be reached at (571) 270-7410. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARA K TOICH/Examiner, Art Unit 3785
/BRANDY S LEE/Supervisory Patent Examiner, Art Unit 3785
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