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 .
Claim Status
Applicant’s arguments, filed on 10/29/2025, (“Remarks”) were in response to the Non-Final Rejection mailed on 07/29/2025 (“Non-Final Rejection”).
Claim(s) 6 and 9 is/are canceled.
Claim(s) 1–5, 7–8, and 10–13 is/are pending and is/are addressed below.
Specification
The amendment filed 03/19/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the embodiment in claim 1 which combines two distinct method embodiments (claim 1’s second limitation and claim 1’s third limitation in a single method). Please see lengthy discussion below.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112 (Indefinite)
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 1–5, 7–8, and 10–13 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.
Claim 1 is rejected for being unduly confusing when read in light of the specification.
The last limitation in claim 1 is indefinite because claim 1 already makes determinations and variations to this effect based on measured voltage of the power source. Accordingly, one of ordinary skill in the art is unable to ascertain whether the power source voltage is used to vary to duty cycle, or are the measurements from the heating element, heater coil resistance, or temperature, used or some combination? Restated differently, claim 1 already requires a measuring component which measures a power source voltage. Does the last limitation require additional measurement components or use the same information from the measurement component because the current in the heating element, a heater coil resistance, and a temperature would all fluctuate according to the voltage supplied from the battery.
Next, claim 1 combines language from distinct methods of regulating power applied to the heater—one that uses a comparative look up table and one that plugs measured data into a function. The blended embodiments in claim 1 adds a layer of confusion that prevents Examiner from applying prior art.
Claim 1’s second limitation requires looking up a measured power source voltage within a range/table or ascertaining whether the measured power source is above/below a threshold. In these embodiments, see e.g., [0033–35], the power delivered to the smoking device is supplied with either a first or second duty cycle depending on whether measurement falls within a first range of duty cycles or above/below a voltage measurement threshold. However, embodiments captured within the last limitation simply plug the measurement into an equation. Within the context of Applicant’s overall disclosure both the table look-up method and the equation can arrive at the same outcome, but they do so by distinct methods.
Method 1 in Applicant’s Specification ascertains the appropriate duty cycle by comparing the measurement a look-up table like Table 1. This is best explained within the context of Applicant’ Table 1 reproduced below:
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As evidenced above, each cell within the first column above can correspond to the first or second power source voltage range of claim 1’s second limitation. If the measured power source voltage “V” falls within the boundaries of one of the cells in the left column, then the duty cycle —a single non-variable duty cycled — applied corresponds to the cell in right column. See also Specification, [0035] (explaining “the first duty cycle regime and the second duty cycle regime may respectively be a first duty and a second duty cycle”). Restated differently, although the applied duty cycle may fall within a range of possible duty cycles, only a single duty cycle is applied.
Method 2 in Applicant’s disclosure arrives at similar outcomes to Method 1, but does so by different utilizing a variable duty cycle. In this method, ascertaining the range a measurement falls within is unnecessary because an equation is used. Please see annotated reproduction below from Applicant’s Specification:
Assuming Vreference is 4 volts, see Specification, [0036], one simply use the measured voltage (Vmeasured) in the following equation from [0035]:
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Within the context of Table 1 and assuming Vreference is 4 volts (again see [0036]), one arrives at the duty cycle in the right column by using the higher voltage of each range as Vmeasured. Examiner submits that the below graphic is easier to understand than the previous sentence:
This output duty cycle can be graphically illustrated as follows:
[Chart]
In this second method, the controller does not “switch between a first duty cycle regime and a second duty cycle regime” because switching between distinct regimes are not necessary. Similarly, the above disclosure does not provide support for “varying, by the controller, a duty cycle for delivering power to the heating element within a first range of duty cycles when in the first duty cycle regime and within a second range of duty cycles when in the second duty cycle regime.” One of ordinary skill in the art understands that the measured voltage is plugged into above referenced equation and a corresponding duty cycle is output as a function of the equation. That is, different regimes are not necessary for controller embodiments with the above equation.
As evidenced above, claim 1 captures a blended embodiment which was not supported. The blended embodiments in claim 1 adds a layer of confusion that prevents Examiner from applying prior art.
Claims 2–5, 7–8, and 10–13 are rejected for the same reasons via their dependency on claim 1.
Claim Rejections - 35 USC § 112 (New Matter)
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 1–5, 7–8, and 10–13 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.
As explained in the section above, claim 1 blends two embodiments from the Specification, which is not fully supported. See also Claims filed on 02/24/2022 (“Original Claims”), claim 5 (claiming the first method drawn to the look up table), contra id., claims 6–7 (explicitly not dependent on claim 5 and claiming a variable duty cycle regime, which varies a function of a parameter). Accordingly, claim 1 contains new matter.
Additionally, claim 1 was amended to recite “varying, by the controller, a duty cycle for delivering power to the heating element within a first range of duty cycles when in the first duty cycle regime and within a second range of duty cycles when in the second duty cycle regime.” One of ordinary skill in the art understands this limitation to require that the duty cycle delivered varies/changes/increases/decreases—i.e., is not a singular duty cycle applied— within a bounded range of duty cycles when within one of the first or second duty cycle regimes. This concept is not consistent with Applicant’s disclosure, which discloses two distinct methods/controller arrangements.
Method 1 in Applicant’s Specification ascertains the appropriate duty cycle by comparing the measurement a look-up table like Table 1. This is best explained within the context of Applicant’ Table 1 reproduced below:
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As evidenced above, each cell within the first column above can correspond to the first or second power source voltage range of claim 1’s second limitation. If the measured power source voltage “V” falls within the boundaries of one of the cells in the left column, then the duty cycle —a single non-variable duty cycled — applied corresponds to the cell in right column. See also Specification, [0035] (explaining “the first duty cycle regime and the second duty cycle regime may respectively be a first duty and a second duty cycle”). Restated differently, although the applied duty cycle may fall within a range of possible duty cycles, only a single duty cycle is applied. Accordingly, the first method disclosed cannot provide support for “varying, by the controller, a duty cycle for delivering power to the heating element within a first range of duty cycles when in the first duty cycle regime and within a second range of duty cycles when in the second duty cycle regime” because the first method does not disclose the duty cycle delivered varies/changes/increases/decreases within a bounded range of duty cycles when within one of the first or second duty cycle regimes.
Method 2 in Applicant’s disclosure arrives at similar outcomes to Method 1, but does so by different utilizing a variable duty cycle. In this method, ascertaining the range a measurement falls within is unnecessary because an equation is used. Please see annotated reproduction below from Applicant’s Specification:
Assuming Vreference is 4 volts, see Specification, [0036], one simply use the measured voltage (Vmeasured) in the following equation from [0035]:
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Within the context of Table 1 and assuming Vreference is 4 volts (again see [0036]), one arrives at the duty cycle in the right column by using the higher voltage of each range as Vmeasured. Examiner submits that the below graphic is easier to understand than the previous sentence:
This output duty cycle can be graphically illustrated as follows:
[Chart]
In this second method, the controller does not “switch between a first duty cycle regime and a second duty cycle regime” because switching between distinct regimes are not necessary. Similarly, the above disclosure does not provide support for “varying, by the controller, a duty cycle for delivering power to the heating element within a first range of duty cycles when in the first duty cycle regime and within a second range of duty cycles when in the second duty cycle regime.” One of ordinary skill in the art understands that the measured voltage is plugged into above referenced equation and a corresponding duty cycle is out put as a function of the equation. That is, different regimes are not necessary for controller embodiments with the above equation.
Accordingly, the second method disclosed cannot provide support for “varying, by the controller, a duty cycle for delivering power to the heating element within a first range of duty cycles when in the first duty cycle regime and within a second range of duty cycles when in the second duty cycle regime” because the second method does not disclose the duty cycle delivered varies/changes/increases/decreases within a bounded range of duty cycles when within one of the first or second duty cycle regimes. Again, the measured voltage is plugged into above referenced equation and a corresponding duty cycle is output as a function of the equation.
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 1–5, 7–8, and 10–13 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 method and independent claim 13 is drawn to a smoking substitute device. Thus, the independent claims and their dependents pass Step 1 because they are drawn to either an article of manufacture, a machine, or a process, 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: Subject Matter Eligibility Life Sciences & Data Processing Examples (“October 2019 Update”), a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. The claims recite recites abstract ideas in the following underlined locations:
Claim 1’s “determining, by the controller, whether the measured power source voltage falls within a first power source voltage range or a second power source voltage range, wherein all power source voltages in the second power source voltage range are greater than all power source voltages in the first power source voltage range”;
Claim 1’s “varying, by the controller, a duty cycle regime based on a result of the determination”;
Claim 1’s “wherein the duty cycle is varied by the controller in at least one of the first or second duty cycle regimes as a function of a current in the heating element, a heater coil resistance, or a temperature”;
Claim 4’s “a first predetermined power source voltage threshold is defined, and the step of determining whether the power source voltage falls with the first power source voltage range or the second power source voltage range comprises comparing the measured power source voltage with the first predetermined power source voltage threshold, and the step of varying the duty cycle regime is based on a result of that comparison”;
Claim 5’s “wherein the first range of duty cycles is higher than the second range of duty cycles.”;
Claim 7’s “the duty cycle is varied by the controller in the first duty cycle regime as a function of the current in the heating element, the heater coil resistance, or the temperature; and the duty cycle is varied by the controller in the second duty cycle regime as a function of the current in the heating element, the heater coil resistance, or the temperature.”;
Claim 8’s “the duty cycle is varied by the controller in the first duty cycle regime or the second duty cycle regime as a function of the measured power source voltage”;
Claim 10’s “determining, by the controller, whether the measured power source voltage falls within a third power source voltage range, wherein all power source voltages within the third power source voltage range are greater than all power source voltages which fall within the second power source range . . . wherein the first duty cycle regime is higher than the second duty cycle regime, and the second duty cycle regime is higher than the third duty cycle regime”;
Claim 11’s “a first predetermined power source voltage threshold and a second predetermined power source voltage threshold is defined, wherein the first predetermined power source voltage threshold is a power source voltage on a boundary of the first power source voltage range and the second power source voltage range, and the second predetermined power source voltage threshold is a power source voltage on a boundary of the second power source voltage range and the third power source voltage range; the step of determining in which power source voltage range the measured power source voltage falls includes: comparing the measured power source voltage with the first predetermined power source voltage threshold; and comparing the measured power source voltage with the second predetermined power source voltage threshold”;
Claim 12’s “a plurality of power source voltage ranges is defined, where all power source voltages in each successive power source voltage range of the plurality of power source voltage ranges are greater than power source voltages in all previous power source voltage ranges of the plurality of power source voltage ranges; each power source voltage range of the plurality of power source voltage ranges has a respective associated duty cycle regime, where each successive duty cycle regime of the duty cycle regimes respectively associated with the plurality of power source voltage ranges is lower than a previous duty cycle regime of the duty cycle regimes respectively associated with the plurality of power source voltage ranges; and the method includes: determining in which power source voltage range of the plurality of power source voltage ranges the measured power source voltage falls”; and
Claim 13 will be treated the same as claim 1 because it includes “control circuitry configured to perform the method of claim 1.”
The above limitations fall into the “mental process” group of abstract ideas similar to other mental processes identified as abstract ideas, e.g., observations, evaluations, judgments, and opinions. See MPEP § 2106.04(a)(2)(III)(A). The above limitation is recited at such a high level of generality that they is capable of being performed in the human mind. See MPEP § 2106.04(a)(2)(III)(A) (explaining "collecting information, analyzing it, and displaying certain results of the collection and analysis” was found to be a mental process capable of being performed in the human mind because the data analysis steps were recited at a high level of generality.)
The above limitations also fall within evaluation of data, comparing to a look up table, or a calculation. See MPEP 2106.04(I) (explaining there are no bright lines between the types of exceptions). These abstract ideas are similar to a look up table or an evaluation that is taking place which can be done mentally. See Specification, [0035–49] (discussing comparing to a look up table or a calculation), and Table 1 (providing a look-up table).
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.
MPEP § 2106.05(f)(2) provides helpful context for what is not considered an integration of a judicial exception, e.g., when a claim invokes computers or other machinery merely as a tool to perform an existing process. Please see reproduction below:
TLI Communications provides an example of a claim invoking computers and other machinery merely as a tool to perform an existing process. The court stated that the claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner. 823 F.3d at 612, 118 USPQ2d at 1747. The court then turned to the additional elements of performing these functions using a telephone unit and a server and noted that these elements were being used in their ordinary capacity (i.e., the telephone unit is used to make calls and operate as a digital camera including compressing images and transmitting those images, and the server simply receives data, extracts classification information from the received data, and stores the digital images based on the extracted information). 823 F.3d at 612-13, 118 USPQ2d at 1747-48. In other words, the claims invoked the telephone unit and server merely as tools to execute the abstract idea. Thus, the court found that the additional elements did not add significantly more to the abstract idea because they were simply applying the abstract idea on a telephone network without any recitation of details of how to carry out the abstract idea.
Other examples where the courts have found the additional elements to be mere instructions to apply an exception, because they do no more than merely invoke computers or machinery as a tool to perform an existing process include:
i. A commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 U.S. 208, 223, 110 USPQ2d 1976, 1983 (2014); Gottschalk v. Benson, 409 U.S. 63, 64, 175 USPQ 673, 674 (1972); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015);
ii. Generating a second menu from a first menu and sending the second menu to another location as performed by generic computer components, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1243-44, 120 USPQ2d 1844, 1855-57 (Fed. Cir. 2016);
iii. A process for monitoring audit log data that is executed on a general-purpose computer where the increased speed in the process comes solely from the capabilities of the general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016);
iv. A method of using advertising as an exchange or currency being applied or implemented on the Internet, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715, 112 USPQ2d 1750, 1754 (Fed. Cir. 2014);
v. Requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015); and
vi. A method of assigning hair designs to balance head shape with a final step of using a tool (scissors) to cut the hair, In re Brown, 645 Fed. App'x 1014, 1017 (Fed. Cir. 2016) (non-precedential).
MPEP § 2106.05(f)(2). (annotations removed)
Returning now to the pending claims, in addition to the abstract idea identified above, the claims also recite:
Claim 1’s “measuring, by a measuring component, a power source voltage of a power source of a smoking substitute device, the power source electrically connected to a heating element of the smoking substitute device” amounts to insignificant extra-solution activity of merely data gathering and does not meaningfully limit abstract idea to a particular machine but merely indicate a field of use. See MPEP § 2106.05(g) (describing explaining that a similar data gathering step of performing clinical tests on individuals to obtain input for an equation” was insignificant extra-solution activity), 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.”).
Claim 1’s “varying . . . by switching between a first duty cycle regime and a second duty cycle regime; varying, by the controller, a duty cycle for delivering power to the heating element within a first range of duty cycles when in the first duty cycle regime and within a second range of duty cycles when in the second duty cycle regime” to amounts to mere instructions to apply the abstract idea. See MPEP § 2106.05(f)(1) (explaining “limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words ‘apply it.’”).
Claim 2’s “the electrical connection between the heating element and the power source is controlled or controllable by an electronic switch including a field-effect transistor” amounts to an intended use limitation that does not meaningfully limit the structure of the smoking substitute device. See 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);
Claim 3’s “the step of varying the duty cycle is performed using pulse-width modulation, PWM” amounts to mere instructions to apply the judicial exception. MPEP § 2106.05(e).
Claim 10’s “the step of varying a duty cycle regime comprises: if the measured power source voltage falls within the third power source voltage range, operating the smoking substitute device in a third duty cycle regime, wherein the first duty cycle regime is higher than the second duty cycle regime, and the second duty cycle regime is higher than the third duty cycle regime” amounts to mere instructions to apply the abstract idea. See MPEP § 2106.05(f)(1)
Claim 11’s “the step of varying a duty cycle regime includes: if the measured power source voltage is less than the first predetermined power source voltage threshold, operating the smoking substitute device in the first duty cycle regime; if the measured power source voltage is greater than or equal to the first predetermined power source voltage regime and less than the second predetermined power source voltage threshold, operating the smoking substitute device in the second duty cycle regime; and if the determined measured power source voltage is greater than or equal to the second predetermined power source voltage threshold, operating the smoking substitute device in the third duty cycle regime” amounts to mere instructions to apply the abstract idea. See MPEP § 2106.05(f)(1); and
Claim 12’s “the step of varying a duty cycle regime comprises operating the smoking substitute device in a duty cycle regime which is associated with the determined power source voltage range of the plurality of power source voltage ranges” amounts to mere instructions to apply the abstract idea. See MPEP § 2106.05(f)(1).
Accordingly, the claims fail to recite any additional features which integrate the judicial exception into a practical application of the exception.
Therefore, Step 2A, Prong Two is satisfied because the claims fail to recite additional elements that integrate the judicial exception into a practical application. 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(s) were well-understood, routine, conventional activity in the field aerosol generating devices:
Features recited in addition to the abstract idea(s)
Conclusions from Step 2A Prong Two
Evidence that the additional features were well-understood, routine, conventional activity in the field aerosol generating devices
Claim 1’s “measuring, by a measuring component, a power source voltage of a power source of a smoking substitute device, the power source electrically connected to a heating element of the smoking substitute device”
amounts to insignificant extra-solution activity of merely data gathering and does not meaningfully limit abstract idea to a particular machine but merely indicate a field of use.
Applicant’s Specification filed on 02/24/2022 (“Specification”) evidences that the “power source of a smoking substitute device, the power source electrically connected to a heating element of the smoking substitute device” are well understood, routine and conventional. See Drawings filed on 02/24/2022 (“Drawings”), Figs. 1–4 (illustrating structures generically), and Specification, [0011–19] (explaining that the claimed structures are typical of a known vaping smoking devices).
“measuring, by a measuring component, a power source voltage of a power source of a smoking substitute device” Yamada US 20190247597’s [0206];
Zitzke US 20180325182’s [0041–42]; and
Fournier US 20030154991 [0061–63]
Claim 1’s “varying . . . by switching between a first duty cycle regime and a second duty cycle regime; varying, by the controller, a duty cycle for delivering power to the heating element within a first range of duty cycles when in the first duty cycle regime and within a second range of duty cycles when in the second duty cycle regime”
to amounts to mere instructions to apply the abstract idea
Yamada US 20190247597’s [0121] discusses a full charge range and a less than full charge range. When within the full charge range the controller “may adjust the pulse width in accordance with the change in the output voltage of the battery such that the value of the power supplied to the atomizing part becomes constant.” When if the voltage of the battery is equal to or lower than “full-charge voltage −Δ” the controller does not carry out the pulse width modulation on the power from the battery and energizes the atomizing part at a duty ratio=100%.
Zitzke US 20180325182’s [0050–53]; and
Fournier US 20030154991 [0061–63]
Claim 2’s “the electrical connection between the heating element and the power source is controlled or controllable by an electronic switch including a field-effect transistor”
amounts to an intended use limitation that does not meaningfully limit the structure of the smoking substitute device
Yamada US 20190247597’s [0126];
Zitzke US 20180325182’s [0042]; and
Fournier US 20030154991 [0055]
Claim 3’s “the step of varying the duty cycle is performed using pulse-width modulation, PWM”
amounts to mere instructions to apply the judicial exception
Yamada US 20190247597’s [0121];
Zitzke US 20180325182’s [0042]; and
Fournier US 20030154991 [0045]
Claim 10’s “the step of varying a duty cycle regime comprises: if the measured power source voltage falls within the third power source voltage range, operating the smoking substitute device in a third duty cycle regime, wherein the first duty cycle regime is higher than the second duty cycle regime, and the second duty cycle regime is higher than the third duty cycle regime”
amounts to mere instructions to apply the abstract idea
Zitzke US 20180325182’s [0050–53]; and
Fournier US 20030154991 [0061–63]
Claim 11’s “the step of varying a duty cycle regime includes: if the measured power source voltage is less than the first predetermined power source voltage threshold, operating the smoking substitute device in the first duty cycle regime; if the measured power source voltage is greater than or equal to the first predetermined power source voltage regime and less than the second predetermined power source voltage threshold, operating the smoking substitute device in the second duty cycle regime; and if the determined measured power source voltage is greater than or equal to the second predetermined power source voltage threshold, operating the smoking substitute device in the third duty cycle regime”
amounts to mere instructions to apply the abstract idea
Zitzke US 20180325182’s [0050–53]; and
Fournier US 20030154991 [0061–63]
Claim 12’s “the step of varying a duty cycle regime comprises operating the smoking substitute device in a duty cycle regime which is associated with the determined power source voltage range of the plurality of power source voltage ranges”
amounts to mere instructions to apply the abstract idea
Yamada US 20190247597’s [0121];
Zitzke US 20180325182’s [0050–53]; and
Fournier US 20030154991 [0061–63]
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 1–5, 7–8, and 10–13 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.
Response to Arguments
Specification Objection(s)
The Non-Final Rejection explained that “[t]he amendment filed 03/19/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure.” Id. at 3. The claims continue to combine two distinct method embodiments. Accordingly, the objection to the Specification remains.
Claim Objection(s)
The Non-Final Rejection objected to claim(s) 4, 7–8, and 11 because of various informalities.
Examiner would like to thank Applicant for amending the claim(s) to provide greater consistency. The objection(s) referenced above is/are withdrawn.
Claim Rejections - 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph
Claim(s) 1–5, 7–8, and 10–13 was/were rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Applicant states:
The Office action asserts that the use of the word "alternatively" in paragraph [0035] evidences distinctiveness between the use of look-up tables and the use of a function for varying the duty cycle. This reasoning cannot be followed. Paragraph [0035] describes the step of varying the duty cycle as a function of a parameter as an alternative to an embodiment in which the first duty cycle regime and the second duty cycle regime correspond to a first duty cycle and a second duty cycle respectively. There is no implication whatsoever that the use of look-up tables cannot be combined with the use of a function to determine the duty cycle for operating the heating element. On the contrary, as explained above, this combination is disclosed by paragraphs [0035] and [0048] and also defined in original claim 7.
Remarks at 9. Examiner respectfully disagrees. A plain reading of [0035] and [0048] evidences that the variable duty cycle is an alternative/distinct method to the look up table method. This is discussed at lengths below. With respect to Applicant’s reference to claim 7 as originally filed, Examiner submits that original claims evidence that two distinct embodiments are claimed. See Claims filed on 02/24/2022 (“Original Claims”), claim 5 (claiming the first method drawn to the look up table), contra id., claims 6–8 (depending from claims 1–4—but not claim 5—and claiming a variable duty cycle regime, which varies a function of a parameter). Accordingly, claim 1 contains new matter.
As explained in the rejections below, new matter issues remain.
Claim Rejections - 35 USC § 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
Claim(s) 1–5, 7–8, and 10–13 was/were rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Examiner would like to thank Applicant for amending the claim(s) at issue. Many of the rejection(s) made under 35 U.S.C. 112(b) in the Non-Final Rejection is/are moot and withdrawn. However, outstanding issues remain.
Claim Rejections - 35 USC § 101
Applicant’s Remarks on page 11 have been fully considered, but are not persuasive for the reasons set out in the following paragraphs.
Applicant argues:
Claim 1 contains limitations that cannot practically be performed in the human mind. A claim is not considered to be a mental process when the human mind is not equipped to perform the claim limitations. See page 2 of the Office's MEMORANDUM dated August 4, 2025 (hereinafter referred to as the "MEMORANDUM"). For instance, the human mind is not equipped to measure a power source voltage of a power source and output the measured power source to a controller as required in claim 1, as amended.
Remarks at 11. Respectfully, this is not persuasive. The question is not whether the entire claim is capable of being performed in the human mind. At issue is whether the claim recites abstract idea’s/mental process which are capable of being performed in the human mind. As explained at length above, Applicant’s Specification evidences that the variable duty cycle is determined according to a look up table or an equation. The human mind is capable of making comparisions to look up table and performing the disclosed calculation.
Applicant argues:
Claim 1 as amended, merely involves a judicial exception, it does not recite a judicial exception. In particular, claim 1 does not recite any specific mathematical calculations. See page 3 first and second paragraphs of the MEMORANDUM. Therefore, claim 1, as amended, only involves a judicial exception and is eligible and does not require further eligibility analysis. Reconsideration and withdrawal of the rejection under 35 USC §101 is respectfully requested.
Remarks at 11. Examiner respectfully disagrees. Claim recites “determining, by the controller, whether the measured power source voltage falls within a first power source voltage range or a second power source voltage range, wherein all power source voltages in the second power source voltage range are greater than all power source voltages in the first power source voltage range”, “varying, by the controller, a duty cycle regime based on a result of the determination” “wherein the duty cycle is varied by the controller in at least one of the first or second duty cycle regimes as a function of a current in the heating element, a heater coil resistance, or a temperature.” As explained above, these recitations are similar to mental processes and/or math equations. See also MPEP § 2106.04(I) (explaining there are no bright lines between the types of exceptions).
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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/MANLEY L CUMMINS IV/Primary Examiner, Art Unit 1747