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 Submission
The amendments and remarks filed on 2025 October 7 have been entered. Claims 1-24 are pending. Claim 24 remains withdrawn.
Claims 1-23 are presently examined.
A new NON-FINAL ground of rejection is made over 35 U.S.C. § 101.
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 1-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1
Step 1: the claim is to a machine.
Step 2A-1: the claim recites a detector configured to detect an inhalation strength and a controller configured to generate an indication proportional to the inhalation strength and thus recites the abstract idea of using a computer as a tool to perform the mental process of observing the detector and adjusting an indication strength proportional to the observation. A human could process the detector’s gathered data in the mind and adjust the indicator proportional to said processing. See MPEP 2106.04(a)(2)(III).
Step 2A-2: the claim does not integrate the mental process into a practical application pursuant to the following analyses.
MPEP 2106.05(a): the claim recites a detector, an indicator, and a controller and thus adds generic computer components to perform the mental process of observing the detector. The claim does not recite particular structural elements to improve the technology of detecting a strength of inhalation and instead recites the mere combination of the detector, the indicator, and the controller. The courts have held that gathering and analyzing information using conventional techniques and displaying the result does not improve a technology. TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48.
MPEP 2106.05(b): the claim recites a generic aerosol-generating device which does not amount to a particular machine. The aerosol-generating device is ordinary in the recreational smoking art as will be further discussed in Step 2A-2.
MPEP 2106.05(c): the claim recites vaporization of a precursor which does not amount to a particular transformation. The vaporization is generic to the recreational smoking art and at most nominally contributes to the mental process of observing a detector.
MPEP 2106.05(e): the claim generally links the mental process of observing a detector to the recreational smoking field of use and thus does not meaningfully limit the mental process. The courts have held that a data processing system and communications controllers do not meaningfully limit an abstract idea and instead merely link the abstract idea to a particular technological environment. 573 U.S. at 225-26, 110 USPQ2d at 1984-85.
MPEP 2106.05(f): the claim recites a controller as a tool to apply the mental process of observing a detector which amounts to mere application. The courts have held that using a computer in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) does not integrate a judicial exception into a practical application. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016).
MPEP 2106.05(g): the claim recites insignificant extra-solution activity beyond necessary data-gathering. The claim recites that the detector gathers data of the strength of inhalation, the controller processes the data into an indication signal, and the indicator indicates based on the indication signal, all of which is generic to the data-gathering process.
MPEP 2106.05(h): the claim indicates recreational smoking as a field of use in which to apply the mental process of observing an indicator. The mental process could be applied to any field of use wherein a detector measures a strength of flow or input.
Step 2B: the claim does not recite significantly more.
MPEP 2106.05(a-c, e-f, and h): analyses of integration into a practical application are carried from Step 2A-2.
MPEP 2106.05(d and g): recited elements additional to the mental process of observing an indicator encompass well-understood, routine, and conventional activity in the recreational smoking art. The examiner takes official notice that it is well-understood, routine, and conventional in the recreational smoking art to design an aerosol-generating device with a housing enclosing an air channel, an inhalation detector, an indicator, and a controller connected to the inhalation detector and the indicator. Moreover, Braunshteyn (US 20070074734 A1) discloses that it is conventional in the recreational smoking art to design an aerosol-generating device with an inhalation detector and an indicator ([27], a pressure sensor to indicate inhalation is considered conventional in the art; [28], the indication can be a visible indication to a user).
Claims 2-23: the dependent claims recite additional elements which have a high degree of generality analogous to the independent claim and thus do not constitute integration into a practical application or significantly more than the mental process of observing the state of an aerosol-generating device and adjusting operation thereof. The examiner takes official notice that it is well-understood, routine, and conventional in the recreational smoking art to design an aerosol-generating device with the elements of the dependent claims.
Claim Rejections - 35 USC § 103
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.
Claims 1-5, 9-13, 16-18, 20, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Fornarelli (US 20190021400 A1) in view of Lim (WO 2018190586 A2 with reference made to machine translation).
Claim 1: Fornarelli teaches an aerosol provision system (fig. 6, #10) for generating an aerosol for inhalation by a user [92] comprising:
a housing (shell of 10) enclosing at least partially an air channel ([95], airway) and an aerosol generating element (#20 which is not labelled but is housed within #10 as in [99]);
a detector (27) configured to detect an instantaneous strength of inhalation by detecting a pressure difference in the air channel ([95-96], #27 detects an inhalation pressure) during an inhalation by the user;
a first indicator (9) configured to provide a first indication (vibration) to the user;
and a controller (#9 indicates based on #27’s detection) connected to the detector and the first indicator, the controller configured to control the first indicator (9) to generate the first indication (vibration) to the user during the inhalation (#9 indicates while inhalation pressure is detected), the indication (vibration) varying based on a strength of inhalation ([101], vibration time varies based on each user’s inhalation strength).
Fornarelli does not explicitly teach that the strength of inhalation upon which the indication varies is instantaneous.
Lim teaches an aerosol provision system configured to generate an indication ([98], vibration) varying based on an instantaneous strength of inhalation (vibration intensity is proportional to puff intensity), such that the indication can give immediate feedback to a user and thereby guide the user’s inhalations [130].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to make Fornarelli’s indication vary based on an instantaneous strength of inhalation as taught by Lim, because doing so would enable the indication to give immediate feedback to a user and thereby guide the user’s inhalations.
Claim 2: modified Fornarelli teaches a system according to claim 1, wherein no indication is generated ([95-96], #9 indicates while inhalation pressure is detected) unless the instantaneous strength of inhalation exceeds a first predetermined threshold (zero inhalation pressure).
Claim 3: modified Fornarelli teaches a system according to claim 1, wherein the first indication ([95-96], vibration) is a haptic indication.
Claim 4: modified Fornarelli teaches a system according to claim 3, wherein an intensity of the haptic indication ([Fornarelli 95-96], vibration) is varied based on the instantaneous strength of inhalation detected by the detector ([Lim 98], vibration intensity is proportional to puff intensity).
Claim 5: modified Fornarelli teaches a system according to claim 3, wherein the intensity of the haptic indication ([Fornarelli 95-96], vibration) is varied based on the instantaneous strength of inhalation detected by the detector ([Lim 98], vibration intensity is proportional to puff intensity) while the instantaneous strength of inhalation is below a second threshold ([Fornarelli 95-96], maximum inhalation pressure detectable by #28), and the intensity of the haptic indication (vibration) is constant while the instantaneous strength of inhalation is at or above the second threshold (when inhalation strength is at or above the maximum detectable value, Lim’s proportional inhalation-indication relationship has been truncated to its detection limit such that the detected inhalation strength and indication strength are both constant).
Claim 9: modified Fornarelli teaches a system according to claim 1, wherein the controller is configured to control the first indicator ([96], #9) to generate a second indication (vibration at the end of the draw) to the user after the inhalation (after the end of the inhalation is detected, #9 vibrates to indicate that the inhalation has ended).
Claim 10: modified Fornarelli teaches a system according to claim 9.
Modified Fornarelli does not explicitly teach that the second indication is based on the instantaneous strength of inhalation detected by the detector during the inhalation.
Lim teaches an aerosol provision system configured to generate an indication ([98], vibration) varying based on an instantaneous strength of inhalation (vibration intensity is proportional to puff intensity), such that the indication can give immediate feedback to a user and thereby guide the user’s inhalations [130].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to make Fornarelli’s indication vary based on an instantaneous strength of inhalation as taught by Lim, because doing so would enable the indication to give immediate feedback to a user and thereby guide the user’s inhalations.
Claim 11: modified Fornarelli teaches a system according to claim 1, wherein the system comprises a second indicator ([103], LEDs) for providing a third indication (light) to the user during or after the inhalation.
Claim 12: modified Fornarelli teaches a system according to claim 11, wherein the third indication ([103], light) is a visual indication.
Claim 13: modified Fornarelli teaches a system according to claim 11, wherein the controller is configured to control the second indicator ([103], LEDs) to generate the third indication (light) to the user after the inhalation (light shines when a second draw is initiated which comes after a first draw, i.e., “the inhalation” of claim 1).
Claim 16: modified Fornarelli teaches a system according to claim 1, wherein the system comprises a third indicator ([55 and 59], fig. 6 and 11 show different portions of the same device embodiment; [122], #126 is an additional indicator) for providing a fourth indication (haptic feedback) to the user.
Modified Fornarelli does not explicitly teach that the third indicator is for providing the fourth indication during the inhalation.
Fornarelli’s third indicator ([122], #126) provides haptic feedback which can be audible, tactile, or a combination thereof [122].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to combine Fornarelli’s fourth, audible indication with Fornarelli’s first, haptic indication during the inhalation as suggested by Fornarelli’s disclosed combination of audible and haptic feedback, because doing so would combine feedback mechanisms, thereby reducing chance of failure in providing the first indication to the user.
Claim 17: modified Fornarelli teaches a system according to claim 16, wherein the fourth indication ([122], haptic feedback) is an audible indication (haptic feedback may be audible).
Claim 18: modified Fornarelli teaches a system according to claim 16, wherein the first indication and fourth indication are provided under the same conditions to reduce chance of failure (claim 16).
Modified Fornarelli does not explicitly teach that the controller is configured to control the third indicator to generate the fourth indication during the inhalation based on the instantaneous strength of inhalation detected by the detector.
Lim teaches an aerosol provision system configured to generate an indication ([98], vibration) varying based on an instantaneous strength of inhalation (vibration intensity is proportional to puff intensity), such that the indication can give immediate feedback to a user and thereby guide the user’s inhalations [130].
Fornarelli’s first indication and fourth indication are both haptic in nature and are coincident (claim 16) to yield expectation to succeed in applying the same teachings of Lim to both indications.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to make Fornarelli’s fourth indication vary based on an instantaneous strength of inhalation as taught by Lim, because doing so would enable the indication to give immediate feedback to a user and thereby guide the user’s inhalations.
Claim 20: modified Fornarelli teaches a system according to claim 1, comprising a user input control ([55 and 59], fig. 6 and 11 show different portions of the same device embodiment; [116], #130 is an input/output device) for setting an operating mode of the system as one of a plurality of modes (#130 defines operating modes which correspond to various active ingredients; when different active ingredients are used, the system is set to the corresponding operating mode) including a first operating mode and a second operating mode, wherein the aerosol generating element is configured to generate the aerosol such that during an exhalation by the user following the inhalation, exhalate is less visible to the user in the first operating mode (dosage varies between operating mode such that a first operating mode delivers a lower volume of vapor) as compared to the second operating mode (a second operating mode delivers a higher volume of vapor).
“Exhalate is less visible” is interpreted to include the meaning of “a lower volume of exhalate is visible”, consistent with applicant p. 3, lines 2-4.
Claim 23: Fornarelli teaches an aerosol provision device (fig. 6, #10) for generating an aerosol for inhalation by a user [92] comprising:
a housing (shell of 10) partially enclosing an air channel ([95], airway), wherein the air channel ([95], airway) is configured to fluidly communicate with an aerosol generating element (#20 which is not labelled but is housed within #10 as in [99]);
a detector (27) configured to detect an instantaneous puff strength by detecting a pressure difference in the air channel ([95-96], #27 detects an inhalation pressure) during an inhalation by the user;
a first indicator (9) configured to provide a first indication (vibration) to the user;
and a controller (#9 indicates based on #27’s detection) connected to the detector and the first indicator, the controller configured to control the first indicator (9) to generate the first indication (vibration) to the user during the inhalation (#9 indicates while inhalation pressure is detected), the indication (vibration) varying based on a puff strength ([101], vibration time varies based on each user’s inhalation strength).
Fornarelli does not explicitly teach that the puff strength upon which the indication varies is instantaneous.
Lim teaches an aerosol provision system configured to generate an indication ([98], vibration) varying based on an instantaneous puff strength (vibration intensity is proportional to puff intensity), such that the indication can give immediate feedback to a user and thereby guide the user’s inhalations [130].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to make Fornarelli’s indication vary based on an instantaneous puff strength as taught by Lim, because doing so would enable the indication to give immediate feedback to a user and thereby guide the user’s inhalations.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Fornarelli (US 20190021400 A1) in view of Lim (WO 2018190586 A2) as applied to claim 3 in further view of Bowen (US 20190158938 A1).
Claim 6: modified Fornarelli teaches a system according to claim 3.
Modified Fornarelli does not explicitly teach that the haptic indication comprises a plurality of pulses having a first duration, the pulses separated by a time period of a second duration.
Bowen teaches an aerosol provision system configured to generate a haptic indication which comprises a plurality of pulses having a first duration and separated by a second duration [143], such that the haptic indication comprises tunable duration and frequency parameters additional to Fornarelli’s intensity parameter [143].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to make Fornarelli’s haptic indication comprise pulses as taught by Bowen, because doing so would add tunable duration and frequency parameters, thereby enabling further control for a user.
Claims 7-8: modified Fornarelli teaches a system according to claim 6.
Modified Fornarelli does not explicitly teach that the first duration is varied based on the instantaneous strength of inhalation detected by the detector,
or that the second duration is varied based on the instantaneous strength of inhalation detected by the detector.
Bowen teaches an aerosol provision system configured to generate a haptic indication which comprises a plurality of pulses, wherein the pulses have equivalent tunable parameters of intensity, a first duration (duration), and a second duration (frequency) [143].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify Fornarelli’s function of varying the time of the haptic indication such that the first duration of the haptic indication varies based on the instantaneous strength of inhalation, and such that the second duration of the haptic indication varies based on the instantaneous strength of inhalation, because doing so would be reasonably suggested by the parameter equivalence set forth in Bowen. Intensity, first duration, and second duration are disclosed as interchangeable.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Fornarelli (US 20190021400 A1) in view of Lim (WO 2018190586 A2) as applied to claim 11 in further view of Qiu (US 20120199663 A1).
Claims 14-15: modified Fornarelli teaches a system according to claim 11.
Modified Fornarelli does not explicitly teach that the controller is configured to control the second indicator to generate an indication that the system is in a standby mode,
wherein the indication generated when in the standby mode differs from the third indication provided to the user during or after the inhalation.
Qiu teaches an aerosol provision system configured to control a visual indicator ([55], LED) to generate an indication (flashing) that the system is entering standby mode, wherein the indication (flashing) differs from a third indication ([51], gradual highlighting), such that the two indications can be differentiated and thus controlled (fig. 5).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Qiu’s standby indication to Fornarelli, because doing so would enable a standby mode to be indicated while differentiating the standby indication from the third indication.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Fornarelli (US 20190021400 A1) in view of Lim (WO 2018190586 A2) as applied to claim 1 in further view of Cameron (US 20170119040 A1).
Claim 19: modified Fornarelli teaches a system according to claim 1.
Modified Fornarelli does not explicitly teach that the aerosol generating element is configured to generate the aerosol such that during an exhalation by the user following the inhalation, no exhalate is visible to the user.
Cameron teaches an aerosol provision system comprising an aerosol generating element ([8], dispersion element) configured to generate substantially invisible vapor [8], such that a user can discreetly use the aerosol provision system [2].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to make Fornarelli’s aerosol generating element capable of generating substantially invisible vapor as taught by Cameron, because doing so would enable a user to discreetly use the aerosol provision system.
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Fornarelli (US 20190021400 A1) in view of Lim (WO 2018190586 A2) as applied to claim 1 in further view of Kobal (US 20070006889 A1).
Claims 21-22: modified Fornarelli teaches a system according to claim 1.
Modified Fornarelli does not explicitly teach that the system comprises an obstructing part such that during an exhalation by the user following the inhalation, no exhalate is visible to the user,
or that the obstructing part comprises a head-mountable display.
Kobal teaches an aerosol provision system (fig. 2, #200) comprising an obstructing part (400) such that during an exhalation by the user following the inhalation, no exhalate is visible to the user ([43], #400 surrounds the user’s axes of vision), wherein the obstructing part (400) comprises a head-mountable display (450), such that a user can be immersed into a virtual smoking experience [4-5].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Kobal’s head-mountable display to Fornarelli such that during an exhalation by the user following the inhalation, no exhalate is visible to the user, because doing so would immerse the user into a virtual smoking experience.
Response to Arguments
Applicant’s arguments of 2025 October 7 have been carefully considered but are not persuasive.
Applicant argues (p. 9, [3-5]) that Fornarelli in view of Lim does not render obvious an indication varying during inhalation based on an instantaneous strength of inhalation. However, [Fornarelli 96] originally cited by the examiner discloses that the indicator (#9) can indicate during inhalation (“the vibrator feature could also be activated at the beginning and remain active as long as inhalation pressure”). [Fornarelli 101] discloses that the indication can vary with respect to inhalation time. The indicator is capable of both functions which do not preclude each other ([96], the indicator can indicate during inhalation and can “also” indicate at the end of inhalation). One of ordinary skill looking to optimize all aspects of Fornarelli would see Fornarelli’s function of indication during inhalation and consider adding Lim’s teaching of indication varying with respect to inhalation intensity for Lim’s benefit of guiding a user’s inhalations.
Applicant further argues that Lim’s indication varying immediately based on inhalation strength [Lim 130] does not require an indication varying during inhalation. However, in plain language, Lim’s variation being “immediate” is interpreted to include the meaning of “instant” or “without intervening time” which requires that the variation occur during inhalation. Fornarelli and Lim both disclose indication during inhalation to yield expectation to succeed in applying Lim’s variation teachings to Fornarelli.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tobey C. Le whose telephone number is (703)756-5516. The examiner can normally be reached Mon-Thu 8:30-18:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TOBEY C LE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747