DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/04/2026 has been entered.
Examiner’s remark
With respect to “a high thermal mass” in claim 4 is considered as definite because para.0084 of instant publication application states “[0084] High thermal mass may be taken to mean, herein, that the heater 230 is capable of storing around 50 J or more of energy”. MPEP 2111.01, IV and V.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“an aerosol generating mechanism for providing aerosol from an aerosol generating medium” in claim 2.
“the energy store provides energy to the heater to reach an operational temperature for a first smoking session” in claim 7.
“An aerosol provision means” in claim 13.
“a heating means” in claim 13.
“the energy store means” in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
(1) “an aerosol generating mechanism” (claim 2) is interpreted as “In an example the aerosol generating mechanism 230 may be a heater 230. The heater 230 may be for providing heat to an aerosol generating medium. The heater 230 may be a resistive heater 230” (para.0079 of instant publication application).
(2) “the energy store” (claim 7) is interpreted as “a battery” (para.0076 of instant publication application).
(3) “An aerosol provision means” (claim 13) is interpreted as “an aerosol provision system 100” (0072 of instant publication application and fig.1, 100).
(4) “a heating means” (claim 13) is interpreted as “a heater” ([0079-0083] of instant publication application).
(5) “the energy store means” (claim 13) is interpreted as “battery”. (Para.0076 of instant publication application. The energy store 120 may, in an example, be a battery).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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, 4-6, 8-10, 13 and 20 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.
Claim 1 recites “wherein a discharge current of the energy store when powering the heater for the first smoking session is less than 2C and the discharge current of the energy store when powering the heater for the second smoking session is less than 0.5 C”. However, the above claim limitation was not described in the original specification in such way as to reasonably convey to one skilled in the relevant art that the inventor at the time the application was filed had possession of the claimed invention. For example, the original specification states “wherein the discharge current of the energy store is less than 2 C or less than 0.5 C” (see abstract and [0007, 0020, 0025, 0072] of instant publication application), “ the second smoking session is subsequent to the first smoking session” ([0013] of instant publication application), “wherein the second smoking session occurs at least 30 s after the step of cease providing energy the heater” ([0017] of instant publication application), “The aerosol generating mechanism retains the energy provided by the energy store so that aerosol can be provided from an aerosol generating medium during a second smoking session. The second smoking session is after the first smoking session and occurs after the cessation of provision of energy to the aerosol generating mechanism. The second smoking session may occur up to 5 seconds after the first smoking session, up to 10 seconds after the first smoking session, up to 15 seconds after the first smoking session, up to seconds after the first smoking session, up to 25 seconds after the first smoking session, up to 30 seconds after the first smoking session, up to 35 seconds after the first smoking session, up to 50 seconds after the first smoking session, up to 45 seconds after the first smoking session etc.” ([0096] of instant publication application). However, the specification does not disclose that 2C corresponds to a first smoking session and 0.5C corresponds to a second smoking session.
Claim 13 recites “wherein a discharge current of the energy store when powering the heating means for the first smoking session is less than 2C and the discharge current of the energy store means when powering the heating means for the second smoking session is less than 0.5C”. However, the above claim limitation was not described in the original specification in such way as to reasonably convey to one skilled in the relevant art that the inventor at the time the application was filed had possession of the claimed invention. For example, the original specification states “wherein the discharge current of the energy store is less than 2 C or less than 0.5 C” (see abstract and [0007, 0020, 0025, 0072] of instant publication application), “ the second smoking session is subsequent to the first smoking session” ([0013] of instant publication application), “wherein the second smoking session occurs at least 30 s after the step of cease providing energy the heater” ([0017] of instant publication application), “The aerosol generating mechanism retains the energy provided by the energy store so that aerosol can be provided from an aerosol generating medium during a second smoking session. The second smoking session is after the first smoking session and occurs after the cessation of provision of energy to the aerosol generating mechanism. The second smoking session may occur up to 5 seconds after the first smoking session, up to 10 seconds after the first smoking session, up to 15 seconds after the first smoking session, up to seconds after the first smoking session, up to 25 seconds after the first smoking session, up to 30 seconds after the first smoking session, up to 35 seconds after the first smoking session, up to 50 seconds after the first smoking session, up to 45 seconds after the first smoking session etc.” ([0096] of instant publication application). However, the specification does not disclose that 2C corresponds to a first smoking session and 0.5C corresponds to a second smoking session.
Response to Arguments
Applicant's arguments filed on 09/04/2026 have been fully considered but they are not persuasive.
(1) Applicant argues “35 USC 112 b … 35 USC 103 …” on pages 5-9 of remark.
In response, the amendment to claims overcome 35 USC 112b and 35 USC 103 rejections. However, the amendment to claims raises 35 USC 112 (a) issues. For example: the original specification states “wherein the discharge current of the energy store is less than 2 C or less than 0.5 C” (see abstract and [0007, 0020, 0025, 0072] of instant publication application). However, claims states “wherein a discharge current of the energy store when powering the heater for the first smoking session is less than 2C and the discharge current of the energy store when powering the heater for the second smoking session is less than 0.5 C”. That is, the specification does not disclose that 2C corresponds to a first smoking session and 0.5C corresponds to a second smoking session.
Allowable Subject Matter
The allowability cannot be determined with respect to claims 1,4-6,8-10,13 and 20 due to 35 USC 112 1st paragraph.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIMMY CHOU whose telephone number is (571)270-7107. The examiner can normally be reached Mon-Friday.
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/JIMMY CHOU/Primary Examiner, Art Unit 3761
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