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 remarks filed on 2026 February 4 have been entered. Claims 1-15 are pending. Claims 13-15 remain withdrawn.
Claims 1-12 and 16-20 are presently examined.
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 1-12 and 16-20 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 sensor configured to sense a change in capacitance and a processor configured to set a temperature profile based on the change in capacitance and thus recites the abstract idea of using a computer as a tool to perform the mental process of observing a sensor and choosing a temperature profile. A human could observe the sensor output and choose a temperature profile based on said output. 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 processor and thus adds generic computer components to perform the mental process of observing a sensor and choosing a temperature profile. The claim does not recite particular elements to improve the technology of sensing a change in capacitance or of recreational smoking and instead recites the mere combination of a capacitance sensor and a processor. 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 generic to 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 sensor and choosing a temperature profile.
MPEP 2106.05(e): the claim generally links the mental process of observing a sensor and choosing a temperature profile 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, because they merely linked the use of 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 processor as a tool to apply the mental process of observing a sensor and choosing a temperature profile 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 a sensor that gathers data and a processor that acts on the data, 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 a sensor and choosing a temperature profile. The mental process could be applied to any field of use wherein a change in capacitance or insertion of an article is detected.
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 a sensor and choosing a temperature profile 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 heater, a processor, and a capacitive insertion sensor. Moreover, Lim (US 20200352244 A1) discloses that it is typical in the recreational smoking art to design an aerosol-generating device with a capacitive insertion sensor ([160], a capacitive insertion sensor can be typical, i.e., such a sensor is typical in the art).
Claims 2-13 and 16-20: 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 aerosol-generating devices with the elements of the dependent claims.
Response to Arguments
Applicant’s arguments of 2026 February 4 have been carefully considered but are not fully persuasive.
Applicant argues (p. 9-13, “Claim Rejections – 35 USC § 103”) that Frake teaches detecting high water content and applying low power, while Bessant teaches detecting high water content and applying high power, such that Frake in view of Bessant does not teach claim 1. Although the tension between Frake and Bessant does not amount to disparagement, the examiner agrees that Frake in view of Bessant fails preponderance in motivating claim 1.
Applicant argues (p. 13-15, “Claim Rejections – 35 USC § 101”) that the instant claims recite physical elements including a heater, a sensor, a processor, and an aerosol-generating article additional to a control scheme, and that “such claims are routinely allowed under § 101”. However, as in the above analysis, the physical elements highlighted by applicant do not appear to integrate the method of control into a practical application beyond mere instruction to apply the method of control in the aerosol-generating field. See MPEP 2106.05(f and h).
The instant claims do not reflect a clear improvement to technology, often described as “a technical solution to a technical problem”. The step of setting a preheating temperature profile “based on” a capacitance signal is conclusory and non-technical and thus encompasses the idea of a solution or outcome without encompassing the actual solution. To become patent-eligible, the claims should reflect in detail how the capacitance signal improves operation of the aerosol-generating device. See MPEP 2106.05(a): “if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology.”
Applicant refers to Subject Matter Eligibility Example 26: Internal Combustion Engine and argues that each physical element of the engine was well-understood, routine, and conventional (WURC), yet the claims were deemed eligible. However, Example 26’s physical elements were combined into a “specific structure” that exceeded WURC, per MPEP 2106.05(d)(I)(3). Moreover, Example 26’s claim language reflected integrating the abstract idea into the specific structure to yield a clear improvement to engine technology, per MPEP 2106.05(a).
In contrast, the instant claims’ physical elements do not combine to a specific structure that exceeds WURC. An aerosol-generating device comprising a heater, a sensor configured to output a signal indicating a change in capacitance, and a processor is conventional in the art as evidenced by Lim. Furthermore, as in the above response, the instant claims do not clearly reflect an improvement to technology.
Conclusion
THIS ACTION IS MADE FINAL. 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 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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/TOBEY C LE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747