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/Restrictions
Claims 21-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 27, 2025.
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, 6-7, 9-10, 12-13, 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 7-10, 12, 14, 16-19, 22 of copending Application No. 18/004984 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 is taught by copending claims 1 and 2; wherein the “the amount of ingredient delivered from the aerosol-generating material to the user during each inhalation in a predetermined period” of claim 2 reads on the “determine a duration of the inhalation based on the inhalation detection signals received from the sensor” of instant claim 1. Instant claim 4 is taught by copending claims 10 and 14. Instant claim 6 is taught by copending claims 7. Instant claim 7 is taught by copending claim 8. Instant claim 9 is taught by copending claim 10. Instant claim 10 is taught by copending claim 12. Instant claim 12 is taught by copending claim 1. Instant claim 13 is taught by copending claim 9. Instant claim 15 is taught by copending claim 9. Instant claim 16 is taught by copending claim 16. Instant claim 17 is taught by copending claim 17. Instant claim 18 is taught by copending claim 18. Instant claim 19 is taught by copending claim 19. Instant claim 20 is taught by copending claims 2 and 22. See the discussion of instant claim above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1, 3, 15, and 20 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 1 recites “determine an indication of an amount of an ingredient delivered from the aerosol- generating material to the user during the inhalation based on the duration of the inhalation and an indication of the operational parameter during the inhalation”. It is unclear whether the determination of an indication of an amount of an ingredient delivered from the aerosol- generating material to the user during the inhalation is based on both the duration of the inhalation and an indication of the operational parameter during the inhalation or if the determination of an indication of an amount of an ingredient delivered from the aerosol- generating material to the user during the inhalation is based on the duration of the inhalation and followed by a step to determine an indication of the operational parameter during inhalation.
Claim 3 recites “the control circuitry is configured to determine the indication of the amount of the ingredient delivered from the aerosol-generating material to the user during the session based on the duration of the session and an indication of the operational parameter during the session”. It is unclear whether the determination of the indication of the amount of the ingredient delivered from the aerosol-generating material to the user during the session is based on both the duration of the session and an indication of the operational parameter during the session or if the determination of the indication of the amount of the ingredient delivered from the aerosol- generating material to the user during the session is based on the duration of the session and followed by a step to determine an indication of the operational parameter during the session.
Claim 15 recites the limitation "the rolling predetermined period" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 20 recites “determine an indication of an amount of an ingredient delivered from the aerosol-generating material to the user during the inhalation based on the duration of the inhalation and an indication of an operational parameter of the aerosol provision system during the inhalation”. It is unclear whether the determination of an indication of an amount of an ingredient delivered from the aerosol- generating material to the user during the inhalation is based on both the duration of the inhalation and an indication of the operational parameter during the inhalation or if the determination of an indication of an amount of an ingredient delivered from the aerosol- generating material to the user during the inhalation is based on the duration of the inhalation and followed by a step to determine an indication of the operational parameter during inhalation.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 7-9, 11-12, 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MAYLE et al. (US 2017/0266397).
Mayle teaches an aerosol provision system comprising control circuitry (172) for determining an operational parameter of the aerosol provision system; an aerosol generator (para. 0033) configured to aerosolize an aerosol-generating material; and a sensor (70) configured to detect an inhalation on the aerosol provision system by a user of the aerosol provision system, and output corresponding inhalation detection signals to the control circuitry (para. 0041). Mayle teaches the control circuitry is configured to determine a duration of the inhalation based on the inhalation detection signals received from the sensor (para. 0042), and determine an indication of an amount of an ingredient delivered from the aerosol- generating material to the user during the inhalation based on the duration of the inhalation and an indication of the operational parameter during the inhalation (para. 0042).
Regarding claim 7, Mayle teaches the ingredient is nicotine or a cannabinoid (para. 0005).
Regarding claim 8, Mayle teaches a power source configured to supply electrical power to the aerosol generator, and wherein the operational parameter of the aerosol provision system is an amount of electrical power supplied to the aerosol generator by the power source (para. 0032).
Regarding claim 9, Mayle teaches the control circuitry is configured to determine default user behavior based on the indication of the amount of the ingredient delivered from the aerosol-generating material to the user for a plurality of inhalations (para. 0011).
Regarding claim 11, Mayle teaches the control circuitry is configured to alter a mode of operation of the aerosol provision system based on the default user behavior (para. 0011).
Regarding claim 12, Mayle teaches the control circuitry is configured to provide a notification to the user based on the indication of the amount of the ingredient delivered from the aerosol-generating material to the user during the inhalation and the default user behavior (para. 0042).
Regarding claim 16, Mayle teaches the notification is provided on the aerosol provision system (para. 0047).
Regarding claim 17, Mayle teaches the notification is provided on an application on a remote device (para. 0042).
Regarding claim 18, Mayle teaches the notification is a haptic notification (para. 0047).
Regarding claim 19, Mayle teaches a parameter of the haptic notification is adjustable by the user (para. 0047).
Regarding claim 20, Mayle teaches an aerosol provision system (figure 1) configured to generate aerosol from an aerosol-generating material; and a computer (66) configured to receive inhalation detection signals from a sensor (70) configured to detect an inhalation on the aerosol provision system by a user of the aerosol provision system (para. 0041); determine a duration of the inhalation based on the inhalation detection signals received from the sensor (para. 0042); and determine an indication of an amount of an ingredient delivered from the aerosol-generating material to the user during the inhalation based on the duration of the inhalation and an indication of an operational parameter of the aerosol provision system during the inhalation (para. 0042).
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.
Claim(s) 2-3, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over MAYLE et al. (US 2017/0266397) in view of FREEMAN et al. (US 2019/0343184).
Mayle teaches an aerosol provision system comprising control circuitry (172).
Freeman teaches an aerosol provision system comprising control circuitry (abstract). Freeman teaches that the control circuitry comprises a timer to control dosage of the aerosol provision system (abstract).
Regarding claim 2, Freeman teaches the control circuitry is configured to determine a duration of a session based on a duration of a plurality of inhalations, wherein a time between each of the plurality of inhalations is less than a predetermined time (para. 0032). It would have been obvious to one of ordinary skill in the art to modify the control circuitry of Mayle to determine a duration of a session based on a duration of a plurality of inhalations as taught by Freeman because Freeman teaches that this doesn’t require the user to consume a single dose in one inhalation (para. 0032).
Regarding claim 3, Freeman teaches the control circuitry is configured to determine the indication of the amount of the ingredient delivered from the aerosol-generating material to the user during the session based on the duration of the session and an indication of the operational parameter during the session (para. 0032).
Regarding claim 6, Freeman teaches the determination of the indication of the amount of the ingredient delivered from the aerosol-generating material to the user is further based on a concentration of the ingredient in the aerosol-generating material (para. 0023-0025). It would have been obvious to one of ordinary skill in the art to modify the control circuitry of Mayle to determine an amount of the ingredient delivered based on a concentration of the ingredient in the aerosol-generating material as taught by Freeman because Freeman teaches that knowing the concentration of the ingredient in the aerosol-generating material provides additional information to the user (para. 0025).
Claim(s) 2, 4, 5, 10, 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over MAYLE et al. (US 2017/0266397) in view of SPINKA et al. (US 2015/0272220).
Mayle teaches an aerosol provision system comprising control circuitry (172).
Spinka teaches an aerosol provision system comprising control circuitry that determines an amount of nicotine consumed by a user based on the duration of an inhalation (abstract).
Regarding claim 2, Spinka teaches the control circuitry is configured to determine a duration of a session based on a duration of a plurality of inhalations, wherein a time between each of the plurality of inhalations is less than a predetermined time (para. 0042 0047). It would have been obvious to one of ordinary skill in the art to modify the control circuitry of Mayle to determine a duration of a session based on a duration of a plurality of inhalations as taught by Spinka because Spinka teaches that this system may aid the user in the reduced consumption of nicotine (para. 0008-0009).
Regarding claim 4, Spinka teaches the control circuitry is configured to determine the indication of the amount of the ingredient delivered from the aerosol-generating material to the user during a rolling predetermined period based on the duration of each inhalation during the rolling predetermined period and an indication of the operational parameter during each inhalation during the rolling predetermined period (para. 0050).
It would have been obvious to one of ordinary skill in the art to modify the control circuitry of Mayle to determine the indication of the amount of the ingredient delivered from the aerosol-generating material to the user during a rolling predetermined period as taught by Spinka because Spinka teaches that this system may aid the user in the reduced consumption of nicotine (para. 0008-0009).
Regarding claim 5, Spinka teaches the control circuitry is configured to determine a time between each inhalation based on the inhalation detection signals, and wherein the determination of the indication of the amount of the ingredient delivered from the aerosol-generating material to the user during the rolling predetermined period is also based on the time between each inhalation during the rolling predetermined period (para. 0025, 0031).
Regarding claim 10, Spinka teaches the control circuitry is configured to determine a time between each of the plurality of inhalations based on the inhalation detection signals, and wherein determining default user behavior is also based on the time between each of the plurality of inhalations (para. 0025, 0031).
Regarding claim 13, Spinka teaches the control circuitry is configured to provide a notification to the user when the indication of an amount of an ingredient delivered from the aerosol-generating material to the user during the inhalation exceeds a puff threshold (para. 0042). It would have been obvious to one of ordinary skill in the art to modify the control circuitry of Mayle to provide a notification to the user when the indication of an amount of an ingredient delivered from the aerosol-generating material to the user during the inhalation exceeds a puff threshold as taught by Spinka because Spinka teaches that this system may aid the user in the reduced consumption of nicotine (para. 0008-0009).
Regarding claim 14, Spinka teaches the control circuitry is configured to provide a notification to the user when the indication of the amount of an ingredient delivered from the aerosol-generating material to the user during the session exceeds a session threshold (para. 0042).
Regarding claim 15, Spinka teaches the control circuitry is configured to provide a notification to the user when the indication of the amount of an ingredient delivered from the aerosol-generating material to the user during the rolling predetermined period exceeds a period threshold (para. 0042).
Conclusion
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/CYNTHIA SZEWCZYK/ Primary Examiner, Art Unit 1741