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 .
Response to Amendment
Claims 1, 4, 8-9 and 11 are amended. Claims 2-3, 5-7 and 10 are cancelled. Claims 1, 4, 8-9 and 11 are presently examined.
Applicant’s arguments regarding the objections to the claims have been fully considered and are persuasive. The objections of 1/25/2026 are overcome.
Applicant’s arguments regarding the rejections under 35 USC 102(a)(2) have been fully considered and are persuasive. The rejections of 1/28/2026 are overcome.
Applicant’s arguments regarding the rejections under 35 USC 103 have been fully considered and are persuasive. The rejections of 1/28/2026 are overcome.
Specification
The use of the terms Bluetooth [0067] and WIFI [0067], which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the terms.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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, 4, 8-9 and 11 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.
Regarding claim 1, the claim requires the limitation “a smoking substitute system comprising a base unit and a smoking substitute apparatus, wherein the smoking substitute apparatus is removably engageable with the base unit, the base unit comprising a puff sensor configured to detect inhalation by a user,” which is not supported by the specification. The specification discloses a puff sensor located in the consumable or the main body [0068], and a base unit [0046], but does not disclose the base unit containing the puff sensor. The claim therefore introduces new matter into the disclosure. Claims 4 and 8-9 introduce new matter by dependence.
Regarding claim 11, the claim requires the limitation “a smoking substitute system comprising a base unit and a smoking substitute apparatus, wherein the smoking substitute apparatus is removably engageable with the base unit, the base unit comprising a puff sensor configured to detect inhalation by a user,” which is not supported by the specification. The specification discloses a puff sensor located in the consumable or the main body [0068], and a base unit [0046], but does not disclose the base unit containing the puff sensor. The claim therefore introduces new matter into the disclosure.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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