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 16-29 and 31-36 are pending. Claims 19-23 and 28-29 are withdrawn. Claims 16, 32, and 35 have been amended. Claim 36 is new.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 3/26/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 3/26/2026 have been fully considered but they are not persuasive.
Applicant argues “that neither Otiaba nor Bellinger describes determining an amount of substrate or substrate residue when an article is not received in a cavity” (Remarks at Page 10). This argument is not persuasive as none of the presently submitted claims are directed to a method for “determining an amount of substrate or substrate residue”. Instead, the claims are directed to an aerosol-generating device. As the components within the devices of Otiaba and Bellinger are capable of performing the determining step, as discussed in the rejections below, the relevant claim limitations are satisfied.
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 use the word “means,” and are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use the word “means” coupled with functional language without reciting sufficient structure to perform the recited function and the word “means” is not preceded by a structural modifier. Such claim limitations are: "residue detection means for sensing aerosol-forming substrate residue" in claim 16.
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. The corresponding structure for "residue detection means for sensing aerosol-forming substrate residue" is “any device, apparatus or configuration of the aerosol-generating device to sense aerosol-forming substrate residue in the cavity or on the heater . . . . [including] both specific residue detectors and sensors provided in the aerosol-generating device to sense aerosol-forming substrate residue in the cavity or on the heater and aerosol-generating devices having heaters and controllers having a specific configuration to sense aerosol-forming substrate residue on the heater” (specification p. 5, lines 1-6). The language in claim 16 will be interpreted as requiring the disclosed structure or 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 limitations 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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 16-17, 24, 26-27, and 32-36 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Otiaba et al. (US 2020/0352245 A1).
Regarding claim 16, Otiaba discloses an aerosol-generating device (“e-cigarette 100”, Fig. 1, ¶ 0035), comprising:
a cavity (“interior space or chamber 36”, Fig. 4, ¶ 0042) configured to receive an aerosol-generating article (“cartomizer 200”, Fig. 1, ¶ 0035, 0042) comprising an aerosol-forming substrate (“Liquids . . . considered as substrate materials from which an aerosol or vapor can be generated”, ¶ 0034-0035);
a heater (“heater 22”, Fig. 1, ¶ 0035) configured to heat the aerosol-forming substrate received in the cavity (¶ 0034-0035);
a power supply (“battery 31”, Fig. 1, ¶ 0035);
residue detection means (combination of “optical source 50” and “optical detector 52”, Fig. 4, ¶ 0043) for sensing aerosol-forming substrate residue in the cavity (¶ 0046); and
a controller (combination of “control unit 62” and “controller 60”, ¶ 0091, where “control unit 62” corresponds to “control unit 300”, ¶ 0035) configured to:
control a supply of power from the power supply to the heater to heat the aerosol-forming substrate received in the cavity (“controlling the supply of electrical power to a heating element”, ¶ 0090),
receive signals from the residue detection means indicative of an amount of aerosol-forming substrate residue in the cavity (“output of the detector 52, indicating light detected, is sent to the controller 60 for processing to determine the relevant characteristic of the light and deduce from that result the presence or absence of liquid, or a depth of liquid”, ¶ 0091), and
determine an indication of the amount of aerosol-forming substrate residue in the cavity or on the heater based on one or more signals received from the residue detection means (“output of the detector 52, indicating light detected, is sent to the controller 60 for processing to determine the relevant characteristic of the light and deduce from that result the presence or absence of liquid, or a depth of liquid”, ¶ 0091),
wherein the controller is configured to determine the indication of the amount of aerosol-forming substrate residue when the aerosol-generating article comprising the aerosol-forming substrate is not received in the cavity (as seen in Fig. 4 of Otiaba, the residue detection means is operable to emit and receive “light 54” when the aerosol-generating article is not received in the cavity, as such it is configured to determine the indication of the amount of aerosol-forming substrate residue when the aerosol-generating article comprising the aerosol-forming substrate is not received in the cavity).
Regarding claim 17, Otiaba discloses the aerosol-generating device according to claim 16, as stated above. Otiaba further discloses wherein the controller is further configured to prevent power from being supplied from the power supply to the heater to heat aerosol-forming substrate in the cavity when the determined indication exceeds a threshold (“if it is determined that the reservoir is empty, the control unit may cease operation of the vapor generating element, such as to avoid overheating of a heating coil”, ¶ 0091).
Regarding claim 24, Otiaba discloses the aerosol-generating device according to claim 16, as stated above. Otiaba further discloses wherein the residue detection means comprises a residue detector disposed at or around the cavity (Fig. 4).
Regarding claim 26, Otiaba discloses the aerosol-generating device according to claim 24, as stated above. Otiaba further discloses wherein the residue detector comprises an optical detector (combination of “optical source 50” and “optical detector 52”, Fig. 4, ¶ 0043).
Regarding claim 27, Otiaba discloses the aerosol-generating device according to claim 26, as stated above. Otiaba further discloses wherein the residue detector comprises an optical detector (combination of “optical source 50” and “optical detector 52”, Fig. 4, ¶ 0043), and wherein the optical detector comprises a light source (“optical source 50 (light source)”, Fig. 4, ¶ 0043) configured to direct light into the cavity (¶ 0043) and a light sensor (“optical detector 52”, Fig. 4, ¶ 0043) configured to receive light from the cavity (¶ 0043).
Regarding claim 32, Otiaba discloses the aerosol-generating device according to claim 16, as stated above. Otiaba further discloses wherein the aerosol-forming substrate residue is residue remaining in the cavity after the aerosol-generating article has been removed from the cavity and when no aerosol-generating article is received in the cavity (as seen in Fig. 4 of Otiaba, the residue detection means is operable to emit and receive “light 54” when the aerosol-generating article is not received in the cavity, as such it is configured to sense aerosol-forming substrate residue when the aerosol-generating article has been removed from the cavity and when no aerosol-generating article is received in the cavity).
Regarding claim 33, Otiaba discloses the aerosol-generating device according to claim 16, as stated above. Otiaba further discloses wherein the determination of the indication of the amount of aerosol-forming substrate residue in the cavity or on the heater is a determination of an amount of aerosol-forming substrate residue in the cavity or on the heater (“output of the detector 52, indicating light detected, is sent to the controller 60 for processing to determine the relevant characteristic of the light and deduce from that result the presence or absence of liquid, or a depth of liquid”, ¶ 0091, a “depth of the liquid” being an amount of the residue).
Regarding claim 34, Otiaba discloses the aerosol-generating device according to claim 16, as stated above. Otiaba further discloses wherein the controller is further configured to determine when the determined indication exceeds a threshold (“detect or identify when the depth or level of liquid in the reservoir is below a predetermined depth”, ¶ 0046).
Regarding claim 35, Otiaba discloses the aerosol-generating device according to claim 16, as stated above. Otiaba further discloses wherein the residue detection means is configured to sense aerosol-forming substrate residue remaining in the cavity after the aerosol-generating article has been removed from the cavity and when no aerosol-generating article is received in the cavity (as seen in Fig. 4 of Otiaba, the residue detection means is operable to emit and receive “light 54” when the aerosol-generating article is not received in the cavity, as such it is configured to sense aerosol-forming substrate residue when the aerosol-generating article has been removed from the cavity and when no aerosol-generating article is received in the cavity).
Regarding claim 36, Otiaba discloses the aerosol-generating device according to claim 16, as stated above. Otiaba further discloses wherein the controller is configured to determine the indication of the amount of aerosol-forming substrate residue in the cavity based on the signals received from the residue detection means when the signals from the aerosol-generating detection means indicate that the aerosol-generating article is not received in the cavity (as seen in Fig. 4 of Otiaba, the residue detection means is operable to emit and receive “light 54” when the aerosol-generating article is not received in the cavity, as such it is configured to determine an indication of a zero amount of aerosol-forming substrate residue in the cavity and the signals indicate that the aerosol-generating article is not received in the cavity).
Claims 16 and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bellinger et al. (US 2013/0104916 A1).
Regarding claims 16 and 31, Bellinger discloses an aerosol-generating device (“electronic vaporizer”, ¶ 0002), comprising:
a cavity (“cartridge”, ¶ 0002) configured to receive an aerosol-generating article comprising an aerosol-forming substrate (“material” that is vaporized from the cartridge for inhalation/smoking, ¶ 0002);
a heater (“heating element”, ¶ 0002) configured to heat the aerosol-forming substrate received in the cavity (¶ 0002);
a power supply (“power source”, ¶ 0002);
residue detection means (“power detect component 310”, ¶ 0038) for sensing aerosol-forming substrate residue on the heater (“power detect component 310 is configured to measure at least one parameter associated with the heating element” such as “a resistance of the heating element”, ¶ 0038; “materials being vaporized tend to leave a residue on the heating element. This residue is conductive, so as the residue builds up, the overall resistance of the heating element changes”, ¶ 0026); and
a controller (“control component 320”, ¶ 0040) configured to:
control a supply of power from the power supply to the heater to heat the aerosol-forming substrate received in the cavity (¶ 0040),
receive signals from the residue detection means indicative of an amount of aerosol-forming substrate residue on the heater (Fig. 3, ¶ 0042), and
determine an indication of the amount of aerosol-forming substrate residue on the heater based on one or more signals received from the residue detection means (¶ 0043),
wherein the controller is configured to determine the indication of the amount of aerosol-forming substrate residue when the aerosol-generating article comprising the aerosol-forming substrate is not received in the cavity (as the controller is capable of providing and measuring power to the heater when no aerosol-forming article is received within the cartridge, the controller is ‘configured’ to perform its determining step when no aerosol-forming article is received within the cavity).
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.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Otiaba et al. (US 2020/0352245 A1) as applied to claim 24 above.
Regarding claim 25, Otiaba discloses the aerosol-generating device according to claim 24, as stated above. Otiaba also discloses wherein the determination of the indication of the amount of aerosol-forming substrate residue in the cavity is based on signals received from the residue detector “in response to other actions within the vapor provision device” (¶ 0092). One of ordinary skill in the art would have understood that “other actions” include the termination of a supply of power from the power supply to the heater (“cease operation of the vapor generating element”, ¶ 0091). 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 device taught by Otiaba such that the determination of the indication of the amount of aerosol-forming substrate residue in the cavity is based on signals received from the residue detector after termination of a supply of power from the power supply to the heater. With regards to the signals being received “at least a predetermined period of time after termination”, it is noted that the residue detector takes some finite amount of time to perform the detection operation. The amount of time needed to perform the detection operation may, therefore, be considered a “predetermined period of time” and the signals from the residue detector will, accordingly, be received at least after this predetermined period of time.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Otiaba et al. (US 2020/0352245 A1) as applied to claim 16 above, and further in view of Yanez (US 2020/0375249 A1).
Regarding claim 18, Otiaba discloses the aerosol-generating device according to claim 16, as stated above. Otiaba further discloses wherein the heater is configured to be inserted into the aerosol-generating article when the aerosol-generating article is received within the cavity (Fig. 1), and the heater comprises a resistive heating element (“resistive . . . heating element”, ¶ 0003). Otiaba also discloses that the aerosol-generating device can be a hybrid device with the aerosol-generating article comprising both liquid and solid aerosol-forming substrates (“hybrid devices . . . vaporizing aerosolizable substrate material such as a liquid and/or by heating a solid substrate such as tobacco or passing vapor through a solid substrate”, ¶ 0031); however, Otiaba does not explicitly disclose the shape of the heater for the hybrid device to determine whether the heater is an elongate heater.
Yanez, in the same field of endeavor, teaches a hybrid device (“hybrid” device, ¶ 0053) with an aerosol-generating article comprising both liquid and solid aerosol-forming substrates (“liquid” and “smokable material”, ¶ 0053). Yanez also teaches that the heater comprises an elongate heater (“tube 660”, Fig. 6, ¶ 0052) configured to be inserted into the aerosol-generating article (Fig. 6, note that the “smokeable material” is not shown in Fig. 6 but that “tube 660” inserts into the “smokable material” as well as “liquid 645”). Yanez teaches benefits of the elongate heater in that it both heats the liquid aerosol-forming substrate to vaporize the liquid and facilitates transfer of the vaporized liquid to the solid aerosol-forming substrate, further facilitating vaporization of the solid aerosol-forming substrate so that both liquid and solid substrates may be inhaled by the user (¶ 0048, 0052). 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 device taught by Otiaba to include the elongate heater taught by Yanez in order to achieve these benefits.
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.
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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