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 .
Specification/Drawings/Claim Objections
Claims 14–23 were newly introduced, though contemporaneously filed with the original claim set, on 09/20/2021. Claims 14 recites a “vaporizer device system” and claims 15–23 recite similar language in their preamble. The recitation of “vaporization device” in the “vaporization device system” raises, in the mind’s eye of one of ordinary skill in the art, an implication of the presence of an actual vaporization device, e.g., an electronic cigarette with a vaporizer/atomizer, and other components in addition to the vaporization device. However, Applicant’s Specification filed on 09/20/2021 (“Specification”) does not support the understanding above. For example, the Specification only references a “vaporizer device system” twice and does not reference any structure in the Figures. Id. at paras. 11 and 12. Accordingly, the Drawings are objected to under 37 CFR 1.83(a) because they must show every feature of the invention specified in the claims, i.e., claims 14–23’s “vaporization device system.” The Specification does provide support for a “vaporizer system,” which is illustrated in Fig. 2 generally at 101. Specification at [0063] (explaining “FIG. 2 shows a schematic representation of a vaporizer system 101”).
Accordingly, claims 14–23 are objected to for the minor informality of not reciting language consistent with the Specification.
That is, Examiner submits claims 14–23 would be improved if their preambles were amended to recite “vaporization
Claim 14 is further objected for including the inadvertent drafting error of “one or more sensor” in line 6. Examiner submits this claim would be more consistent if the above limitation was amended to recite “one or more sensors.”
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 5–23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: This part of the eligibility analysis evaluates whether the claim falls within any statutory category. MPEP § 2106.03. Independent claim 1 is drawn to a wireless communication device and independent claim 14 is drawn to a vaporizer device. Thus, these claims and their dependents pass Step 1 because they are drawn to an article of manufacture or a machine, which are statutory categories of invention.
Step 2A Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP § 2106.04(II) and the October 2019 Update, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. Independent claims 1 and 14 contain the most explicit judicial exceptions and are provided first in the below list of judicial exceptions:
Independent Claim 1’s “controller configured to . . . repeatedly determine over time, based on the collected sensor data, whether the user smoked a combustible cigarette.”
This limitation falls into the “mathematical concept” and/or the “mental process” group of abstract ideas. The abstract idea of “repeatedly determine over time, based on the collected sensor data, whether the user smoked a combustible cigarette” is similar to "‘collecting information, analyzing it, and displaying certain results of the collection and analysis,’" where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind.” MPEP § 2106.04(a)(2)(III)(A). This conclusion is evidenced by at least the following portions of the Specification:
[0067] (describing determination is made by mathematical concepts, e.g., averages of data gathered or changes in data from normal routine);
[0082] (evidencing that data may “train a machine learning or other artificial intelligence algorithm, which can better predict when users have consumed combustible cigarettes based on monitored CO levels and/or other biomarker data”);
[0089] (listing various biomarker and other vital signs envisioned to be measured at a high generality);
[0090] (comparing the measured heart rate is above or below certain thresholds); and
[0091] (comparing measured perspiration, blood CO levels, or CO levels to desired ranges)
Although the above limitation falls under several exceptions there are no bright lines between the types of exceptions. MPEP § 2106.04(I).
Claim 14’s “controller configured to . . .determine, based on the sensor data, whether the user smoked a combustible cigarette”;
This limitation also falls into the “mathematical concept” and “mental process” groups of abstract ideas for the same reasons as set out for claim 1 above.
Claim 6’s “controller is further configured to… determine, based at least on the sensor data, whether the one or more biomarkers of the user exceed a threshold value”
This limitation also falls into the “mathematical concept” and “mental process” groups of abstract ideas for the same reasons as set out for claim 1 above.
Claim 11’s “wherein the use of combustible cigarettes is detected based at least on the one or more biomarkers exceeding a threshold value.”
This limitation appears to be similar to a determination step and also falls into the “mathematical concept” and “mental process” groups of abstract ideas for the same reasons as set out for claim 1 above.
Claim 12’s “wherein the threshold value comprises a blood carbon monoxide level of 3 percent and/or 9 parts per million.”
This limitation also falls into the “mathematical concept” and “mental process” groups of abstract ideas for the same reasons as set out for claim 11 above because it further defines the threshold comparison.
Claim 20’s “wherein the use of combustible cigarettes is detected based at least on the one or more biomarkers exceeding a threshold value.”
This limitation also falls into the “mathematical concept” and “mental process” groups of abstract ideas for the same reasons as set out for claim 14 above.
As explained in the MPEP, in situations like this where multiple judicial exceptions are recited, Examiners should combine all recited judicial exceptions and treat the claim as containing a single judicial exception for purposes of further eligibility analysis. See MPEP §§ 2106.04 and 2106.05(II). Thus, for purposes of further discussion, the above limitations will be treated as a single abstract idea.
Step 2A Prong Two: This part of the eligibility analysis evaluates whether claim(s) as a whole integrate the recited judicial exception into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.
In addition to the abstract idea identified above, claim 1 recites the following limitations:
1) a wireless communication device;
The recitation of “[a] wireless communication device” merely links the abstract idea to a particular field of use or technology environment. MPEP § 2106 (explaining “[a]n abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment”). The courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis. MPEP § 2106.05(I).
2) a wireless communication interface; and
The recitation of “a wireless communication interface” is generic and broad. This limitation does not impose a meaningful limit because it captures nearly every wireless communication interface envision able
3) a controller configured to:
The “controller configured” is disclosed as being generic. Specification at [0039] (explaining “a controller 104 (e.g., a processor, circuitry, and/or the like, capable of executing logic)”).
The controller is recited so generically (no details whatsoever are provided other than that it is a “controller”) that it represents no more than mere instructions to apply the judicial exceptions on a general purpose processor/circuitry.
3A) controller configured to . . . receive sensor data from a vaporizer device or accessory, the sensor data derived from one or more sensors integrated in a mouthpiece of the vaporizer device or accessory, the sensor data is indicative of one or more biomarkers of a user of the vaporizer device or accessory, wherein the one or more sensors continuously and passively collect the sensor data indicative of the one or more biomarkers of the user via skin contact during usage of the vaporizer device or accessory;
This generally amounts to an intended use limitation. Additionally or alternatively, this additional element represents mere data gathering that is necessary for use of the recited judicial exception and is recited at a high level of generality. Accordingly, this limitation is thus insignificant extra-solution activity. See MPEP § 2106.05(g) (providing “[p]erforming clinical tests on individuals to obtain input for an equation” as an example of mere data gathering which was found to be insignificant extra-solution activity). (annotation added)
Additionally, the sensor data recited in claim 1’s lines 6–11 is not limited to the passive and continuous data of claim 1’s lines 2–4
3B) controller configured to . . . provide, in response to determining that the user smoked a combustible cigarette, an indication that use of combustible cigarettes has been detected; and
Similar to Parker v. Flook’s step of in an alarm limit, which was found to be “post-solution activity.” See MPEP § 2106.05(f))
3C) controller configured to . . .adjust substance delivery level of the vaporizer device based on the sensor data in response to determining that the user smoked a combustible cigarette.
This limitation generally adjusts the level “based on” the determination. It is recited at such a high level of generality that it amounts to just generally applying the abstract idea per MPEP § 2106.05(f), and also is just generally linking the abstract idea to a field of use per MPEP § 2106.05(h), which are not particular practical applications.
Independent claim 14, is similar generic in many respects to claim 1. Claim 14 generically recites “a vaporizer device system,” without reciting any particular configuration of structures. Unlike claim 1, claim 14 actively claims “one or more sensors configured to continuously and passively collect sensor data indicative of one or more biomarkers of a user via skin contact during usage of a vaporizer device or accessory.” Although the “one or more sensors” adds more detail than that in claim 1, the limitation represents mere data gathering that is necessary for use of the recited judicial exception and is recited at a high level of generality. Accordingly, this limitation is thus insignificant extra-solution activity. See MPEP § 2106.05(g) (providing “Performing clinical tests on individuals to obtain input for an equation” as an example of mere data gathering which was found to be insignificant extra-solution activity).
Therefore, Step 2A, Prong Two is satisfied because claims 1 and 14 fail to recite additional elements that integrate the judicial exception into a practical application. Some of the dependent claims recite additional features which are not abstract. However, the dependent claims do not meaningfully limit abstract idea to a particular machine but merely indicate a field of use. See MPEP § 2106.05(h) (explaining “limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.”)
Accordingly, analysis under Step 2B may be found in the following section.
Step 2B: This part of the eligibility analysis evaluates whether the claim(s) as a whole
amount(s) to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. MPEP § 2106.05.
While similar to Step 2A Prong Two, Step 2B goes further by taking into account whether or not
the extra-solution activity is well-known. See MPEP § 2106.05(g). The following Table provides
evidence demonstrating that the features recited in addition to the abstract idea were well known:
LIMITATION
EVIDENCE
Claim 1’s “a wireless communication interface”
US 20210161213’s [0060];
US 20140378790’s smart phone [0146]; and
US 20160324469 [0043].
Claim 1’s “a controller configured”
The “controller configured” is disclosed as being generic. Specification at [0039] (explaining “a controller 104 (e.g., a processor, circuitry, and/or the like, capable of executing logic)”).The controller is recited so generically (no details whatsoever are provided other than that it is a “controller”) that it represents no more than mere instructions to apply the judicial exceptions on a general purpose processor/circuitry.
US 20210161213’s [0047];
US 20140378790’s smart phone [0146]; and
US 20160324469 [0048–49].
Claims 2–13
Depend from claim 1 and further attempt to define certain controller limitations. Many of these claims are indefinite for the reasons identified in the relevant sections below.
Claim 14’s “one or more sensors configured to continuously and passively collect sensor data indicative of one or more biomarkers of a user via skin contact during usage of a vaporizer device or accessory”
US 20140378790’s [0302]; and
US 20160324469 [0008, 0011, 0030, and 0049].
Claims 15–23
Depend from claim 14. Many of these claims are indefinite for the reasons identified in the relevant sections below.
Claim 15’s “wherein the one or more biomarkers include a heartbeat, a heart rate, a perspiration level, a pupil dilation, a body temperature, a blood sugar level, a blinking frequency, a blood carbon monoxide level, a breath carbon monoxide level, a blood pressure, a blood oxygen level, a breathing rate, a location, a blood alcohol level, and/or a motion.”
Further narrows the scope of claim 14’s sensors.
US 20140378790’s [0302]; and
US 20160324469 [0008, 0011, 0030, and 0049].
Claim 21’s “wherein the one or more sensors include an optical sensor, a touch activated sensor, an ambient air sensor, an inhalation sensor, an exhalation sensor, a gas sensor, a photoionization detector, an infrared sensor, an ultrasonic sensor, an electrochemical gas sensor, and/or a semiconductor sensor.”
Further narrows the scope of claim 14’s sensors.
US 20140378790’s [0302]; and
US 20160324469 [0008, 0011, 0030, and 0049].
Claim 22’s “wherein the vaporizer device comprises a wireless communication device and the controller. “
Is indefinite for the reasons below and is being interpreted to attempt to further narrow, albeit functionally, the structure of claim 14’s sensors by being able to collect data of bio markers during usage of vaporizer device or accessory.
US 20140378790’s [0339].
Claim 23’s “vaporizer device”
US 20210161213’s (106); and
US 20140378790’s Fig. 6.
Claim 23’s “wireless communication device separate from the vaporizer device” and “comprising the controller”
US 20210161213’s “wireless communication device (110/112) separate from the vaporizer device (106)” and “comprising the controller (e.g., 116; [0047–48])”; and
US 20140378790’ wireless communication device (Fig. 6’s smart phone) separate from the vaporizer device (Fig. 6) and comprising the controller ([0279]; phone have controllers)
As demonstrated above, those features recited in addition to the abstract idea remain insignificant extra-solution activity even upon reconsideration because the features were well-known, routine, and conventional at the time of filing.
Accordingly, claims 1 and 5–23 are not patent eligible under 35 U.S.C. 101 because the claims do not amount to significantly more than the recited exceptions identified above.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 5–23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to independent claims 1 and 14, these claims have two different types of new matter—1) skin sensor configurations which are not described; and 2) controller configurations surrounding the determination of whether a user smoked combustible cigarettes. The two issues are related but will be discussed from distinct perspectives in light of Applicant’s Specification.
Issues surrounding skin sensor configuration will be discussed first. On 10/28/2024, Applicant amended independent claims 1 and 14 to require the sensor data derived from one or more sensors were “integrated in a mouthpiece of the vaporizer device or accessory.” On 05/27/2025, Applicant amended independent claims 1 and 14 to further require that the one or more sensors passively collect the sensor data indicative of the one or more biomarkers of the user “via skin contact.” On 11/04/2025, Applicant amended claims 1 and 14 to further define that the data is of the skin contact “during usage of the vaporizer device or accessory.” The scope of these amendments attempt to capture data resulting from skin contact with a sensor in a mouthpiece of vaporizer during use. That is, as of 05/27/2025 and setting aside intended use limitations, one of ordinary skill in the art understands that the overall thrust of Applicant’s amendments are intended capture a system which uses data obtainable from the lips of a user from a mouthpiece of vaporizer while the user takes a puff.
However, when it comes to sensors in mouthpieces, Applicant’s Specification evidences these sensors measure CO levels based on the user's breath (e.g., as the user takes the puff). Id. at [0070] (explaining configurations with a sensor in the mouthpiece “would allow the one or more sensors 202 to be located on or within the vaporizer device to contact the user's lips when the user takes a puff, and/or to measure CO levels based on the user's breath (e.g., as the user takes the puff).”) One of ordinary skill in the art understands that measuring CO levels from a user’s breath are not biomarkers sensed via skin contact.
Applicant’s Specification does evidence possession of using a sensor in a handle of a vaporizer to sense other biomarkers from skin contact, see id. at [0072–74], and using a sensor on wearable devices to monitor other biomarkers, id. at [0073–75]; however, when it comes to sensors in mouthpieces, these are disclosed as monitoring CO levels in a user’s breath.
Accordingly, claims 1 and 14 are rejected because they contain subject matter, i.e., “the sensor data derived from one or more sensors integrated in a mouthpiece of the vaporizer device or accessory . . .the sensor data is indicative of the one or more biomarkers of the user via skin contact during usage of the vaporizer device or accessory,” was not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 5–13 and 16–23 are rejected for the same reasons because they fail to remedy the issues of their respective independent claims.
Turning now the controller configuration of determining of whether a user smoked a combustible cigarette(s), Applicant’s Specification evidences that this determination requires input from a user to log the number of cigarettes smoked. See id. at [0059] (explaining that since false positives can exist, “CO levels over time” together with “gross motion of a user's hand . . . can also help to track combustible cigarette use”), see also id. at [0071] (that the data obtained is used to “inform and/or assist the user, such as users participating in a cessation program,” but does not disclose using the obtained data to determine whether the user smoked a combustible cigarette), id. at [0081] (explaining that, after obtaining the data, a user interface “prompts the user to indicate whether they have smoked a combustible cigarette and how many within a given time period (e.g., within the day, since the last time combustible cigarette was logged, and/or the like)”), and id. at [0082] (explaining that, after a user indicates the quantity of cigarettes smoked, this data “can be used to train a machine learning or other artificial intelligence algorithm, which can better predict when users have consumed combustible cigarettes based on monitored CO levels and/or other biomarker data.”). That is, Applicant’s Specification evidences that the determination of whether a user smoked a combustible cigarette requires input of how many combustible cigarettes have been consumed in addition to the sensor data from the mouthpiece of the vaporizer. As currently claimed, claim 1 and 14 capture a controller configured to make such a determination with only the data obtained from the sensor.
Accordingly, claims 1 and 14 are rejected because they contain subject matter, i.e., a controller configured to determine whether the user smoked a combustible cigarette with only the data lip skin data obtained from a sensor within a mouthpice, which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 5–13 and 16–23 are rejected for the same reasons because they fail to remedy the issues of their respective independent claims.
As to claims 5 and 15, these claims are being rejected together because they conceptually have the same issues. Again, setting aside intended use limitations, one of ordinary skill in the art understands that the overall thrust of Applicant’s amendments to independent claims 1 and 14 intend to capture data obtainable from the lips of a user on a mouthpiece while the user is drawing one the vaporizer. One of ordinary skill in the art understands that sensor data indicative of the “biomarkers of the user via skin contact” captures biomarkers which are capable being sensed by contact with the skin, e.g., heart rate or activity rate. See generally Specification, [0073]. One of ordinary skill in the art is unable to envision or ascertain a sensor which is able to detect—through skin contact—at least pupil dilation (visual observation), a blood sugar level (requiring blood sample), a blinking frequency (visual observation), a blood carbon monoxide level (requiring blood sample), a breath carbon monoxide level (requiring breath sensor), a blood pressure (requiring a pressure cuff), a breathing rate (requiring elastic band around chest or air flow measurement), a location (requiring GPS as evidenced by Specification at [0089]), a blood alcohol level (based on breath analysis as evidenced by Specification at [0089]), and/or a motion (based on gross motion of hand, step-count, or activity-levels like running, walking, sleeping, and/or sitting as evidenced by Specification at [0089]). Applicant’s Specification does not evidence skin sensors able to detect the above biomarkers exist or are used in the claimed configuration.
Accordingly, claims 5 and 15 are rejected because they contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claims 13 and 21, these claims are being rejected together because they conceptually have the same issues. Again, setting aside intended use limitations, one of ordinary skill in the art understands that the overall thrust of Applicant’s amendments to independent claims 1 and 14 intend to capture data obtainable from the lips of a user on a mouthpiece while the user is drawing one the vaporizer. One of ordinary skill in the art understands that sensor data indicative of the “biomarkers of the user via skin contact” captures biomarkers which are capable being sensed by contact with the skin, e.g., heart rate or activity rate. See generally Specification, [0073]. One of ordinary skill in the art is unable to envision or ascertain a sensor which is able to detect—through skin contact—at least an optical sensor (visual), an ambient air sensor (not skin contact), an inhalation sensor (pressure sensor), an exhalation sensor (pressure sensor), a gas sensor (not related to skin contact), a photoionization detector (evidenced as being a gas sensor in Specification at [0064]), an infrared sensor (evidenced as being a gas sensor in Specification at [0064]), an ultrasonic sensor (evidenced as being a gas sensor in Specification at [0064]), an electrochemical gas sensor (evidenced as being a gas sensor in Specification at [0064]), and/or a semiconductor sensor (evidenced as being a gas sensor in Specification at [0064]).
Accordingly, claims 13 and 21 are rejected because they contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
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 5 and 7–23 are 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.
As to claims 5 and 15, these claims are being rejected together because they conceptually have the same issues. Again, setting aside intended use limitations, one of ordinary skill in the art understands that the overall thrust of Applicant’s amendments to independent claims 1 and 14 intend to capture data obtainable from the lips of a user on a mouthpiece while the user is drawing one the vaporizer. One of ordinary skill in the art understands that sensor data indicative of the “biomarkers of the user via skin contact” captures biomarkers which are capable being sensed by contact with the skin, e.g., heart rate or activity rate. See generally Specification, [0073]. One of ordinary skill in the art is unable to envision or ascertain a sensor which is able to detect—through skin contact—at least pupil dilation (visual observation), a blood sugar level (requiring blood sample), a blinking frequency (visual observation), a blood carbon monoxide level (requiring blood sample), a breath carbon monoxide level (requiring breath sensor), a blood pressure (requiring a pressure cuff), a breathing rate (requiring elastic band around chest or air flow measurement), a location (requiring GPS as evidenced by Specification at [0089]), a blood alcohol level (based on breath analysis as evidenced by Specification at [0089]), and/or a motion (based on gross motion of hand, step-count, or activity-levels like running, walking, sleeping, and/or sitting as evidenced by Specification at [0089]). Applicant’s Specification does not evidence skin sensors able to detect the above biomarkers exist or are used in the claimed configuration.
Accordingly, claims 5 and 15 are rejected because one of ordinary skill in the art unable to ascertain how much patentable weight to contribute two the following conflicting/confusing biomarkers: at least pupil dilation, a blood sugar level, a blinking frequency, a blood carbon monoxide level, a breath carbon monoxide level, a blood pressure, a breathing rate, a location, a blood alcohol level, and/or a motion.
As to claims 7 and 17, these claims are rejected together because the capture similar issues. Claims 7 and 17 both recite “the use of combustible cigarettes” in lines 3–4 and 5. This creates confusion because claim 1 already recites “provide, in response to determining that the user smoked a combustible cigarette, an indication that use of combustible cigarettes has been detected” in lines 12–13 and claim 14 recites the same in lines 14–15. Claims 7 and 17’s subsequent recitation of “the use of combustible cigarettes” creates confusion because it appears that Applicant intends these claims to capture input(s) indicative of the use of combustible cigarettes which were provided, see claim 1’s lines 12–13 and claim 14’s lines 14–15, from the controller “in response to determining that the user smoke a combustible cigarette.” That is, claims 7 and 17 create confusing circular logic.
Claims 8–9 are rejected for the same reasons via their dependency on claim 7.
Claim 18 is rejected for the same reasons via its dependency on claim 17.
As to claim 8, this claim recites “wherein the one or more inputs include a second indication that the user used combustible cigarettes, a quantity of combustible cigarettes used, and/or a time when combustible cigarettes are used.” However, these inputs are functional limitations which modifies the controller of claim 7 to be merely capable of receiving the claimed inputs. Claim 7’s controller is already configured to receive multiple inputs/indication because it recites “the controller is further configured to: receive, from the user, one or more inputs indicative of the use of combustible cigarettes.” Accordingly, one of ordinary skill in the art in unable to ascertain how claim 8 further structurally narrows the scope of claim 7.
Claim 9 is rejected for the same reasons via its dependency on claim 7.
As to claim 9, this claim recites “wherein the second indication is received via a user interface displayed at the accessory associated with the vaporizer device.” First, the recitation of “the accessory associated with the vaporizer device” lack antecedent basis. Second, this recitation raises the implication that claim 9 now requires a controller, a vaporizer device, and an accessory which is associated with the vaporizer device; however, it’s not clear if this structurally present or merely desired to be an intended use. Assuming that 1) Applicant desires claim 9 to be a functional limitation, i.e., not require the vaporizer device or the accessor, and 2) this limitation does not lack antecedent basis, e.g., if claim 9 was amended to recite “he accessory associated with the vaporizer device,” one of ordinary skill in the art is unable to ascertain how claim 9’s functional limitation modifies the structure of claims 7/8’s controller. Again, claim 7’s controller is already configured to receive multiple inputs/indication because it recites “the controller is further configured to: receive, from the user, one or more inputs indicative of the use of combustible cigarettes.” How are these inputs changed by the recitations of claim 9? Restated differently, claim 7 captures a controller configured to receive indication of some occurrence, which in controller logic amounts to a 0 (absence of the object) or a 1 (presence of the occurrence). How does claim 9, which perhaps effectively outputs a 0 or a 1 from “an interface displayed” at an intended use accessory modify claims 8 and 7 when 7 is already configured to receive multiple, similar, inputs?
As to claim 10, the recitation of “the accessory associated with the vaporizer device” lacks antecedent basis. For the purposes of searching and throughout the remainder of this action, Examiner will assume the limitation at issue recites “the accessory.”
As to claim 10, the recitation of “wherein the indication is provided via a user interface displayed at the accessory associated with the vaporizer device” creates confusion because claim 1 already recites “provide, in response to determining that the user smoked a combustible cigarette, an indication that use of combustible cigarettes has been detected” in lines 12–13. How does claim 10 further narrow claim 1’s controller which is already configured to provide an indication that the use of the combustible cigarette has been detected?
As to claim 11, this claim recites “wherein the use of combustible cigarettes is detected based at least on the one or more biomarkers exceeding a threshold value.” This appears to be more of a determination, which requires a comparison to a threshold—not a detection, which requires the presence or absence of signal. Accordingly, claim 11 appears facially indefinite. Ambiguity is, respectfully, compounded when claim 11 is read in light of claim 1. For example, claim 1 already requires that the detection is the result/display/signal provided (somewhere/somehow) “in response to determining that the user smoke a combustible cigarette.” How is one of ordinary skill in the art supposed to interpret claim 11 “wherein the use of combustible cigarettes is detected based at least on the one or more biomarkers exceeding a threshold value” to further narrow the scope of claim 1’s controller when the controller’s detection configuration is drawn to displaying the result of determination, but not the actual determination? Specification, [0081] (explaining that “the user device 205 can generate and/or display a first user interface to the user, such as via the display 430, based on the biomarker data. In some implementations, the first user interface includes an indication that notifies the user that the one or more biomarkers has exceeded a certain threshold”).
Claim 12 is rejected for the same reasons via its dependency on claim 11.
As to claim 12, this claim recites “wherein the threshold value comprises a blood carbon monoxide level of 3 percent and/or 9 parts per million”; however, this limitation is indefinite for the same reasons identified immediately above with respect to claim 11. That is, how is one of ordinary skill in the art supposed to interpret claim 12 “wherein the threshold value comprises a blood carbon monoxide level of 3 percent and/or 9 parts per million” to further narrow the scope of claim 1’s controller when the controller’s detection configuration is drawn to the displaying of the result of a determination, but not the actual determination?
As to claims 13 and 21, these claims are being rejected together because they conceptually have the same issues. Again, setting aside intended use limitations, one of ordinary skill in the art understands that the overall thrust of Applicant’s amendments to independent claims 1 and 14 intend to capture data obtainable from the lips of a user on a mouthpiece while the user is drawing one the vaporizer. One of ordinary skill in the art understands that sensor data indicative of the “biomarkers of the user via skin contact” captures biomarkers which are capable being sensed by contact with the skin, e.g., heart rate or activity rate. See generally Specification, [0073]. One of ordinary skill in the art is unable to envision or ascertain a sensor which is able to detect—through skin contact—at least an optical sensor (visual), an ambient air sensor (not skin contact), an inhalation sensor (pressure sensor), an exhalation sensor (pressure sensor), a gas sensor (not related to skin contact), a photoionization detector (evidenced as being a gas sensor in Specification at [0064]), an infrared sensor (evidenced as being a gas sensor in Specification at [0064]), an ultrasonic sensor (evidenced as being a gas sensor in Specification at [0064]), an electrochemical gas sensor (evidenced as being a gas sensor in Specification at [0064]), and/or a semiconductor sensor (evidenced as being a gas sensor in Specification at [0064]).
Accordingly, claims 13 and 21 are rejected because one of ordinary skill in the art unable to ascertain how much patentable weight to contribute two the following conflicting/confusing sensor which are understood as not being capable of providing claimed sensor data from sensors(s) “integrated in a mouthpiece of the vaporizer device” which is “indicative of one or more biomarkers on a user skin”: at least an optical sensor, an ambient air sensor, an inhalation sensor, an exhalation sensor, a gas sensor, a photoionization detector, an infrared sensor, an ultrasonic sensor, an electrochemical gas sensor, and/or a semiconductor sensor.
As to claim 13, this claim is further rejected because its recitation of “wherein the one or more sensors include an optical sensor, a touch activated sensor, an ambient air sensor, an inhalation sensor, an exhalation sensor, a gas sensor, a photoionization detector, an infrared sensor, an ultrasonic sensor, an electrochemical gas sensor, and/or a semiconductor sensor” attempts to narrow the functional language claim 1’s controller configuration without creating clearly understood limits as to how the structure of claim 1’s controller is further narrowed. Restated differently, since claim 1 already requires that the controller is configured to “receive sensor data from a vaporizer device or accessory, the sensor data derived from one or more sensors integrated in a mouthpiece of the vaporizer device or accessory, the sensor data is indicative of one or more biomarkers of a user of the vaporizer device or accessory, wherein the one or more sensors continuously and passively collect the sensor data indicative of the one or more biomarkers of the user via skin contact during usage of the vaporizer device or accessory,” how does claim 13 further narrow the scope of claim 13’s controller configuration? contra claim 21 (narrowing the one or more sensors, which is/are actively claimed in claim 14).
As to claims 14 and 16, claim 14 introduces “sensor data” first in line 2 and again in line 6. This creates confusion when the claims later recite “the sensor data” because one of ordinary skill in the art is unable to ascertain which of the two introduced sensor data Applicant intended reference. Specifically, this issue above results in ambiguity in claim 14’s recitation of “the sensor data” in lines 8, 12, and 16–17 and claim 16’s recitation of “the sensor data” in line 3.
Claims 15–23 are rejected for the same reasons via their dependency on claim 14.
As to claims 14 and 16–18, claim 14 introduces “a user” first in line 3 and again in line 9. This creates confusion when the claims later recite “the user” because one of ordinary skill in the art is unable to ascertain which of the two introduced users Applicant intended reference. Specifically, this issue above results in ambiguity in claim 14’s recitation of “the user” in lines 12, 14, and 17, claim 16’s recitation of “the user” in lines 4 and 5, claims 17’s recitation of “the user” in lines 3 and 6, and claim 18’s recitation of “the user” in line 2.
Claims 15–23 are rejected for the same reasons via their dependency on claim 14.
Claim 18 is rejected for the same reasons via its dependency on claim 17.
As to claim 15, attention is drawn to the above joint rejection of claims 5 and 15, which is incorporated here by reference in by reference, but not repeated to save space.
As to claims 15–16 and 20, claim 14 introduces “one or more biomarkers” first in line 3 and again in line 9. This creates confusion when the claims later recite “the one or more bio markers” because one of ordinary skill in the art is unable to ascertain which of the two introduced one or more bio markers Applicant intended reference. Specifically, this issue above results in ambiguity in claim 15’s recitation of “the one or more bio markers” in lines 1–2, claim 16’s three recitations of “the one or more bio markers” in lines 3, 5, and 6, and claim 20’s recitation of “the one or more bio markers” in line 20.
As to claim 17, attention is drawn to the above joint rejection of claims 7 and 17, which is incorporated here by reference in by reference, but not repeated to save space.
As to claim 17, this claim’s recitations of “the use of combustible cigarettes” in lines 3–4 and 5 creates confusion because claim 14 already recites “provide, in response to determining that the user smoked a combustible cigarette, an indication that use of combustible cigarettes has been detected.” This creates confusion because it appears that applicant intends claim 17 to capture input(s) indicative of the use of combustible cigarettes which were provided (see claim 14’s lines 14–15) from the controller.
As to claim 19, the recitation of “the accessory associated with the vaporizer device” lacks antecedent basis.
For the purposes of searching and throughout the remainder of this action, Examiner will assume the limitation at issue recites “the accessory.”
As to claim 21, attention is drawn to the above joint rejection of claims 13 and 21, which is incorporated here by reference in by reference, but not repeated to save space.
As to claim 22, this claim recites “wherein the vaporizer device comprises a wireless communication device and the controller.” However, claim 14’s recitation of “one or more sensors configured to continuously and passively collect sensor data indicative of one or more biomarkers of a user via skin contact during usage of a vaporizer device or accessory” introduces the vaporizer device as functional limitation of the data for the sensor(s). That is, claim 22 does not actively claim a vaporizer device and claim 22’s attempt to further define the functionally claimed vaporizer device is confusing because one of ordinary skill in the art is unable to ascertain what additional structure is required. Does claim 22 modify the vaporizer device system of claim 14 to now require a vaporizer device? Is the wireless communication device of claim 14 actively required or a further functional limitation of the vaporizer device? Does the controller actually need to be associated with a wireless communication device or just be capable of being associated with a wireless communication device. contra claim 23 (claiming the vaporizer device and a wireless communication device with definite claim language).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 5–11, and 13–23 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen (US 2014/0378790) (“Cohen” in view of Utley et al. (US 2016/0324469) (“Utley”) and Wensley et al. (Pub No 2015/0216237) (“Wensley”).
Regarding claims 1 and 14, Cohen discloses a Modified Risk System (MRS) (i.e., vaporizer device system) to help control the distribution of the tobacco products (i.e., cigarettes, cigars, smoking devices) ([0005, 0007]), and the Modified Risk System includes an electronic cigarette (i.e., vaporizer device), a wireless communication device (i.e., smart phone), and a charger base station (i.e., remote server) ([0146, 0199], Fig. 6). As is known in the art, a smart phone inherently features a processor (i.e., controller) for receiving, transmitting, and analyzing data from other electronic devices (i.e., electronic cigarette) through suitable applications. Cohen also discloses the sensor data derived from one or more sensors of the vaporizer device ([0370]), the sensor data based on one or more biomarkers (i.e., carbon monoxide level) of a user of the vaporizer device ([0371]). In addition, the MRS (i.e., vaporizer system), as well as the wireless communication device determines, based on the sensor data, whether the user smoked a combustible cigarette and provide, in response to determining that the user smoked a combustible cigarette, an indication that use of combustible cigarettes has been detected ([0152]). As illustrated in Fig. 6, the modified risk product (i.e., electronic cigarette 1) includes a traditional mouthpiece (i.e., a direct-contact model). When in use, the user typically places their lips around the mouthpiece (i.e., making skin contact) to create a proper seal, ensuring that the breath sample is not diluted by the surrounding air. In addition, Cohen teaches that “the modified risk product or other tobacco product can include a CO breath analysis sensor directly on the device, such as on the mouthpiece of the modified risk product” ([0370]). Therefore, the user’s lips would inherently be in direct contact (i.e., skin contact) with the CO breath analysis sensor during testing, as the sensor is positioned directly on the mouthpiece according to Cohen’s disclosure ([0370]). However, Cohen does not explicitly teach one or more sensors continuously and passively collect the sensor data via skin contact.
Utley discloses a system and method for facilitating the cessation of undesired behavior in a patient ([0008, 0011]), which comprises a light-light based test mode for detecting and determining the carbon monoxide (CO) content in blood via skin contact using a transmissive PPG (photoplethysmogram) sensor ([0030]). Utley is considered to be analogous to the claimed invention.
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 mouthpiece of Cohen to incorporate the teachings of Utley by substituting Cohen’s sensor with Utley’s transmissive PPG sensor (i.e., pulse oximeter). Doing so would allow the user’s carbon monoxide data to be p