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 .
Status of the Claims
In the communication filed on 11/14/2025 claims 1, 3-7, and 9-16 are pending. Claims 1 and 7 are amended by incorporating the limitations found in cancelled claims 2 and 8. Claim 3 has been amended for dependency purposes. Claims 1 and 7 are independent.
Response to Arguments/Amendments
Applicant's arguments and amendments filed 11/14/2025 have been fully considered but they are not persuasive.
The applicant amended independent claims 1 and 7 by adding the limitation “wherein the obtained or determined information relates to an amount of use of the aerosol generating device in a preceding period” from cancelled claims 2 and 8, respectively. The amendments made by the applicant have changed the scope of the independent claims.
With respect to the applicant’s arguments in page 9 of the Remarks dated 11/14/2025, the applicant contends that Howard and/or Baker fail to teach the amended limitations. The applicant argues that Howard focuses on a future usage pattern. However, the examiner respectfully disagrees. The examiner points to Howard in ¶[06 and 17] which teach that the usage pattern is learnt thus a historical usage pattern is accounted for. Furthermore, Fig. 10 illustrates in the first step 102 the system learns the usage patterns thus learning from historical events.
The remaining arguments are moot as the applicant’s arguments for the remaining claims were based on dependency of the independent claims.
The drawing objections remain. 37 CFR § 1.83(a) states, “The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box)”. Thus, the drawings are objected to below because the numbered boxes and the unlabeled arrows do not adequately explain the relationships or functionality required to understand the invention.
The title objection, the specification objections, and the claim objections are withdrawn.
The nonstatutory double patenting rejections remain.
This Office Action is made Final due to the amendments.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4-7 and 10-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 10-17 of U.S. Patent No. 12349741. Although the claims at issue are not identical, they are not patentably distinct from each other because swapping the limitations of the claims of the instant application with respect to the claims of the U.S. Patent No. 12349741 would render them the same.
Instant App. No. 18/001,388
U.S. Patent No. 12349741
An apparatus for an aerosol generating device, the apparatus comprising: a control module; and a charging controller, wherein: the charging controller is configured to control charging of a battery at a first charging rate in a first charging mode and to control charging of the battery at a second charging rate, lower than the first charging rate, in a second charging mode, the control module is configured to determine information relating to usage of the aerosol generating device, and the charging controller is configured to operate in the first charging mode or the second charging mode depending, at least in part, on the information relating to the usage of the aerosol generating device, and wherein the determined information relating to usage of the aerosol generating device comprises an amount of use of the aerosol generating device in a preceding period.
An apparatus for an aerosol generating device, the apparatus comprising: a control module; and a charging controller, wherein: the charging controller is configured to control charging of a battery at a first charging rate in a first charging mode and to control charging of the battery at a second charging rate, lower than the first charging rate, in a second charging mode, the control module is configured to determine whether the aerosol generating device is in use, and the charging controller, when operating in the second charging mode, is configured to change to the first charging mode if the control module determines that the aerosol generating device is in use.
The apparatus as claimed in claim 1, further comprising a user interface, wherein the user interface enables a user to provide information relating to the usage of the aerosol generating device.
The apparatus as claimed in claim 1, further comprising a user interface.
The apparatus as claimed in claim 1, wherein the apparatus further comprises a battery.
The apparatus as claimed in claim 1, further comprising the battery.
The apparatus as claimed in claim 1, further comprising an aerosol generator.
The apparatus as claimed in claim 1, further comprising an aerosol generator.
A method comprising: obtaining or determining information relating to use of an aerosol generating device; and setting a charging current of a charge controller to a first charging mode or a second charging mode depending, at least in part, on the obtained or determined information relating to the use of the aerosol generating device, wherein a charging rate of a battery of the aerosol generating device is set to a first charging rate in the first charging mode and is set to a second charging rate, lower than the first charging rate, in the second charging mode, wherein the obtained or determined information relates to an amount of use of the aerosol generating device in a preceding period.
A method comprising: determining whether a charging controller of an aerosol generating device is operating in a first charging mode or a second charging mode, wherein a charging rate is set to a first charging rate in the first charging mode and to a second charging rate, lower than the first charging rate, in the second charging mode; determining whether the aerosol generating device is in use; and changing from the second charging mode to the first charging mode if the charging controller is determined to be operating in the second charging mode and the aerosol generating device is determined to be in use.
The method as claimed in claim 7, further comprising charging the battery.
The method as claimed in claim 16, further comprising charging the battery.
A non-combustible aerosol generating device comprising the apparatus as claimed in claim 1.
A non-combustible aerosol generating device comprising the apparatus as claimed in claim 1.
The non-combustible aerosol generating device as claimed in claim 11, wherein the aerosol generating device is configured to receive a removable article comprising an aerosol generating material.
The non-combustible aerosol generating device as claimed in claim 10, wherein the aerosol generating device is configured to receive a removable article comprising an aerosol generating material.
The non-combustible aerosol generating device as claimed in claim 12, wherein the aerosol generating material comprises an aerosol generating substrate and an aerosol forming material.
The non-combustible aerosol generating device as claimed in claim 11, wherein the aerosol generating material comprises an aerosol generating substrate and an aerosol forming material.
The non-combustible aerosol generating device as claimed in claim 11, wherein the apparatus comprises a tobacco heating system.
The non-combustible aerosol generating device as claimed in claim 10, wherein the apparatus comprises a tobacco heating system.
A kit of parts comprising an article for use in a non-combustible aerosol generating system, wherein the non-combustible aerosol generating system comprises the apparatus as claimed in claim 1.
A kit of parts comprising an article for use in a non-combustible aerosol generating system, wherein the non-combustible aerosol generating system comprises the apparatus as claimed in claim 1.
The kit of parts as claimed in claim 15, wherein the article is a removable article comprising an aerosol generating material.
The kit of parts as claimed in claim 14, wherein the article is a removable article comprising an aerosol generating material.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 12349741 in view of Howard et al. (USPGPN 20230218009).
With respect to claim 9, USPN 12349741 fails to claim further comprising obtaining information relating to the use of the aerosol generating device from a user interface.
Howard teaches further comprising a user interface, wherein the user interface enables a user to provide information relating to the usage of the aerosol generating device (Fig. 14; app 142, see ¶ [99]).
Therefore, it would have been obvious for one of ordinary skill to have modified USPN 12349741 claims with Howard’s user interface input. The advantage of this modification being receiving user habits inputted by a user allows a user to prioritize fast charging or battery life (in ¶ [99] of Howard) thereby improving user experience.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12349741 in view of Baker et al. (USPGPN 20180271155).
With respect to claim 3, USPN 12349741 fails to claim wherein the preceding period is a previous 24 hours.
Baker teaches wherein the preceding period is a previous 24 hours (Fig. 6A, the number of inhalations per unit time period is denoted by the short dashed line in a preceding 24 hour period, see ¶ [58-61, esp. 60]).
Therefore, it would have been obvious for one of ordinary skill to have modified USPN 12349741 claims with Baker’s preceding 24 hour monitoring. The advantage of this modification being usage monitored over a 24-hour period allows for better control during re-charging of the battery or to control discharging of the battery during usage, thereby preventing voltage or current overload, overly long charging, and/or excessive discharging to the point of damage (see ¶ [41] of Baker).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-7, and 9-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Howard et al. (USPGPN 20230218009).
With respect to independent claims 1 and 7, Howard teaches an apparatus and a method for an aerosol generating device (Figs. 1-14; an apparatus and method for an aerosol provision device).
Howard teaches the apparatus comprising a control module (Fig. 8; adaptive charging module 82).
Howard teaches a charging controller (Figs. 1 and 8; charging controller 14).
Howard teaches wherein the charging controller is configured to control charging of a battery at a first charging rate in a first charging mode and to control charging of the battery at a second charging rate, lower than the first charging rate, in a second charging mode (In ¶ [04], “...the charging controller is configured to control charging of a battery at a first charging rate when a charge level of the battery is below a first threshold; and the charging controller is configured to control charging of the battery at a second charging rate, lower than the first charging rate...” and in ¶ [13], “...charging a battery of an aerosol generating device in a first mode of operation when a charge level of the battery is below a first threshold; and charging the battery of the aerosol generating device in a second mode of operation when the charge level of the battery is above the first threshold...”).
Howard teaches the control module is configured to determine information relating to usage of the aerosol generating device (In ¶ [06], “...an adaptive charging module may be configured to learn usage patterns of the aerosol generating device, wherein the first threshold is set depending, at least in part, on the learnt usage patterns...”).
Howard teaches the charging controller is configured to operate in the first charging mode or the second charging mode depending, at least in part, on the information relating to the usage of the aerosol generating device (In ¶ [13], “...charging a battery of an aerosol generating device in a first mode of operation when a charge level of the battery is below a first threshold; and charging the battery of the aerosol generating device in a second mode of operation when the charge level of the battery is above the first threshold. The method may further comprise setting the first threshold...” and in ¶ [14], “The first threshold may be set dependent on a use level of the aerosol generating device.”).
Howard teaches wherein the determined information relating to usage of the aerosol generating device comprises an amount of use of the aerosol generating device in a preceding period (In ¶ [15], “The first threshold may be set dependent on one or more of: a current day of the week; a current time of day; first user habits as input by the user; second user habits as determined through use; one or more properties of an aerosol generating material; one or more battery properties; and one or more user settings.” One of ordinary skill understands this is an amount of use of the aerosol generating device in a preceding period. ¶[06 and 17] teach that the usage pattern is learnt thus a historical usage pattern is accounted for. Furthermore, Fig. 10 illustrates in the first step 102 the system learns the usage patterns thus learning from historical events).
With respect to dependent claims 4 and 9, Howard teaches the invention as discussed above in claims 1 and 7, respectively. Further, Howard teaches further comprising a user interface, wherein the user interface enables a user to provide information relating to the usage of the aerosol generating device (Fig. 14; app 142, see ¶ [99]).
With respect to claim 5, Howard teaches the invention as discussed above in claim 1. Further, Howard teaches wherein the apparatus further comprises a battery (Fig. 1; battery 16).
With respect to claim 6, Howard teaches the invention as discussed above in claim 1. Further, Howard teaches further comprising an aerosol generator (Fig. 1; aerosol generator 15).
With respect to claim 10, Howard teaches the invention as discussed above in claim 7. Further, Howard teaches further comprising charging the battery (See abstract).
With respect to claim 11, Howard teaches the invention as discussed above in claim 1. Further, Howard teaches a non-combustible aerosol generating device comprising the apparatus (In ¶ [18], “...a non-combustible aerosol generating device comprising an apparatus (e.g. a tobacco heating system)...”).
With respect to claim 12, Howard teaches the invention as discussed above in claim 11. Further, Howard teaches wherein the aerosol generating device is configured to receive a removable article comprising an aerosol generating material (In ¶ [18], “The aerosol generating device may be configured to receive a removable article comprising an aerosol generating material.”).
With respect to claim 13, Howard teaches the invention as discussed above in claim 12. Further, Howard teaches wherein the aerosol generating material comprises an aerosol generating substrate and an aerosol forming material (In ¶ [18], “The aerosol generating material may comprise an aerosol generating substrate and an aerosol forming material.”).
With respect to claim 14, Howard teaches the invention as discussed above in claim 11. Further, Howard teaches wherein the apparatus comprises a tobacco heating system (In ¶ [41], “...the non-combustible aerosol provision system is a tobacco heating system, also known as a heat-not-burn system...”).
With respect to claim 15, Howard teaches the invention as discussed above in claim 1. Further, Howard teaches a kit of parts comprising an article for use in a non-combustible aerosol generating system, wherein the non-combustible aerosol generating system comprises the apparatus (In ¶ [21], “...a kit of parts comprising an article (e.g. a removable article comprising an aerosol generating material) for use in a non-combustible aerosol generating system, wherein the non-combustible aerosol generating system comprises an apparatus...”).
With respect to claim 16, Howard teaches the invention as discussed above in claim 15. Further, Howard teaches wherein the article is a removable article comprising an aerosol generating material (In ¶ [21], “...a kit of parts comprising an article (e.g. a removable article comprising an aerosol generating material) for use in a non-combustible aerosol generating system, wherein the non-combustible aerosol generating system comprises an apparatus...”).
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Howard et al. (USPGPN 20230218009), and further in view of Baker et al. (USPGPN 20180271155).
With respect to claim 3, Howard teaches the invention as discussed above in claim 1. However, Howard fails to explicitly teach wherein the preceding period is a previous 24 hours.
Baker teaches wherein the preceding period is a previous 24 hours (Fig. 6A, the number of inhalations per unit time period is denoted by the short dashed line in a preceding 24 hour period, see ¶ [58-61, esp. 60]).
Therefore, it would have been obvious for one of ordinary skill to have combined Howard’s aerosol provision device with Baker’s preceding 24 hour monitoring. The advantage of this modification being usage monitored over a 24-hour period allows for better control during re-charging of the battery or to control discharging of the battery during usage, thereby preventing voltage or current overload, overly long charging, and/or excessive discharging to the point of damage (see ¶ [41] of Baker).
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 Frank A Silva whose telephone number is (703)756-1698. The examiner can normally be reached Monday - Friday 09:30 am -06:30 pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Drew Dunn can be reached at 571-272-2312. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FRANK ALEXIS SILVA/Examiner, Art Unit 2859
/DREW A DUNN/Supervisory Patent Examiner, Art Unit 2859