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 .
Election/Restriction
Applicant’s election of Species (b) (Figure 2) in the reply filed on 8-125 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement (i.e. applicant did not indicate that the election was made with or made without traverse), the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 12-13 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species. The examiner notes that claims 11, 14, and 18-19 are also drawn to nonelected species and are withdrawn from further consideration. Claims 1-7, 9-10, and 15-17 are examined.
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:
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;
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
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:
●Heating Element in claim(s) 1, 2, 17
●Audio Assembly in claim(s) 1, 17
●User Input Component in claim(s) 7, 16, 17
●Means for Selecting in claim(s) 16, 17
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.
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 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.
Claim(s) 16 is/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 16 is considered to be indefinite in that “the user input component” (L1) lacks antecedent basis.
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.
Claim(s) 1-7, 9, and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lord (US 2015/0245660 A1) in view of Liu (US 2013/0333711 A1).
Claims 1-7, 9, and 15-17: Lord teaches an audio playing vaporizer device with a cylindrical profile (¶s3-8 Fig6-7). The audio playing vaporizer device comprising:
●a main unit including
●a mouthpiece 31 (¶124)
●a reservoir storing a vaporizable material (¶125)
●a heating element 32 configured to vaporize the vaporizable material (¶126)
●a rechargeable battery 44 (¶127)
●a sensor 50 disposed about the mouthpiece 31, the sensor 50 configured to detect a user
contact and, upon detection of the user contact, output a sensor signal with, for
example, a speaker (i.e. the claimed “loud” speaker in that the speaker has a volume
(¶9 ¶129 ¶132 Fig9) at a bottom end of the main unit (¶115-115 ¶133-138 Figs6-8)
●a controller 47 disposed within the main unit, the controller 47 configured to receive the
sensor signal from the sensor 50 and, upon receipt of the sensor signal, output at least one of an audio signal and a heating element signal (¶130-132) with the heating element 32 configured to receive the heating element signal from the controller 47 and, upon receipt of the heating element signal, vaporize the vaporizable material
●a memory disposed within the main unit (¶87), the memory storing at least one audio file (a
plurality in that a sound may be a buzz or a beep which are different (¶104 ¶109)) (¶8-9 ¶15-16 ¶23 ¶35 ¶52-59 ¶104-119)
●an audio assembly 51 disposed within the main unit, the audio assembly 51 configured to
receive the audio signal from the controller 47 and, upon receipt of the audio signal, play the at least one audio file (¶130)
●a user input component (¶99) at an exterior of the main unit which provides a user with a
means of selecting (part of computer 20) one of the plurality of audio files for the audio assembly to play (¶37 ¶50 ¶99-112)
The sensor 50 is considered to be about the mouthpiece 31 in that the sensor detects a user at the mouthpiece by user inhalation and device pressure drop, i.e. the sensor for/about/provided-to detect action at the mouthpiece.
Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
Claim 1, with respect to claimed heating element and audio assembly, 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. The instant specification teaches a structure for the heating element and audio assembly to perform the claimed functions. Lord teaches a structure for the heating element and audio assembly to perform the same claimed functions. Lord is thus considered to meet this/these limitation of the claim.
Claims 1 and 17, Lord teaches that the battery 44 is rechargeable. Lord not teach that the main unit includes a micro universal serial bus (USB) port.
However, providing a micro universal serial bus (USB) port as part of an electronic cigarette is conventional and well-known in the art when the electronic cigarette provides power by way of a battery – as demonstrated by Liu. Liu teaches an electronic cigarette having rechargeable batteries which are recharged using an micro universal serial bus (USB) port (¶72).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Lord that the main unit includes a micro universal bus (USB) port for recharging the battery 44 as is conventional and well-known in the art when the electronic cigarette provides power by way of a battery – as demonstrated by Liu; further, a micro universal serial bus (USB) port provides one with the ability to recharge their electronic cigarette at almost any location.
Claim 2, with respect to claimed heating element, 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. The instant specification teaches a structure for the heating element to perform the claimed functions. Lord teaches a structure for the heating element to perform the same claimed functions. Lord is thus considered to meet this/these limitation of the claim.
Claims 3 and 17, with respect to timing of the output of the audio signal and heating element signal (i.e. at the same time or at different times in any particular order) the timing of the outputs to which one skilled in the art would consider performing (when making the device to operate) is a function of, among other variables, the type of audio response (for example, buzz or beeps) desired, the audio purpose, how the heating element receives the heating element signal, and when heating is desired relative to inhalation. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the timing of the output of the audio signal and heating element signal (i.e. at the same time or at different times in any particular order) to which one skilled in the art would consider based on known variables, as those listed; and thus, the claimed timing cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges (i.e. timing) by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). The mere carrying forward of an original patented conception involving only change of form (timing) by substantially the same means, is not such an invention as will sustain a patent, In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Claim 7, with respect to claimed user input component, 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. The instant specification teaches a structure for the user input component to perform the claimed functions. Lord teaches a structure for the user input component to perform the same claimed functions. Lord is thus considered to meet this/these limitation of the claim.
Claim 16, with respect to claimed user input component and means for selecting, 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. The instant specification teaches a structure for the user input component and the means for selecting to perform the claimed functions. Lord teaches a structure for the user input component and the means for selecting to perform the same claimed functions. Lord is thus considered to meet this/these limitation of the claim.
Claim 17, with respect to claimed (a) heating element, (b) audio assembly, (c) user input component, and (d) means of selecting, 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. The instant specification teaches a structure for (a)-(d) above to perform the claimed functions. Lord teaches a structure for (a)-(d) above to perform the same claimed functions. Lord is thus considered to meet this/these limitation of the claim.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lord (US 2015/0245660 A1) in view of Liu (US 2013/0333711 A1) as applied to claims 1-7, 9, and 15-17 above and further in view of Bellinger (US 2013/0104916 A1).
Claim 10, Lord does not teach that the user input component includes a dial.
However, dials are a conventional and well-known means for operating upon an electronic vaporizer – as demonstrated by Bellinger (¶20 ¶30).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Lord that the user input component includes a dial as is conventional and well-known in the art – as demonstrated by Bellinger – where successful results have been demonstrated.
Prior Art of Record
The following prior art made of record and not relied upon is considered pertinent to applicant’s invention: Zeng teaches an electronic cigarette that plays music.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phil Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA L GRAY/Primary Examiner, Art Unit 1745