0DETAILED 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 Claims
Claims 16-32 are pending. Claims 1-15 are canceled. Claims 16, 20, and 22 are currently amended. Claim 32 is new. All other claims are previously presented.
Response to Arguments
Applicant’s arguments, see Remarks bottom of page 7 - top of page 9, filed 12/29/2025, with respect to the rejection(s) of claim(s) 16-17, 20-25, and 27-28 under 25 USC 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Huang et al. (US 2019/328038 A1), anticipating claims 16, 20-23, and 28, as well as, Huang et al. (US 2019/328038 A1) further modified by Bowen et al. (US 2017/0259170 A1), Wang (WO 219/227281 A1) modified by Huang et al. (US 2019/328038 A1), and Taurino et al. (WO 2020/008008 A1) modified by Huang et al. (US 2019/328038 A1).
Applicant argues that Wang does not teach a use pause, which was required by the previous claim set. Examiner agrees. The limitation “use pause” must be interpreted consistently with the broadest reasonable interpretation in light of the present Specification. Understood in light of the Specification, the use pause does not merely require that the device heat a substrate at a second temperature in response to a user switch or sensor signal, where the second temperature is lower than the first temperature. The use pause requires that the second temperature minimize the depletion of the substrate during the pause mode, (Specification pg 2 second full paragraph “In general, the second temperature is chosen to maintain a usability of the aerosol-releasing substrate for a prolonged time…These temperatures are sufficiently low in order to minimize depletion of the substrate during the pause mode but at the same time sufficiently high in order to avoid vapor condensate in the device.”).
Wang instead discloses “The first target temperature and the second target temperature are selected so that aerosol is continuously generated during the first and second state…”, ([0025]), Wang does not disclose a use pause sufficiently to maintain the prior anticipation rejection, and thus the prior rejections are withdrawn.
Because after a review of the prior art, and in consideration of the amended claims, the Examiner believes the claims are not yet patentable, the present second Non-Final Rejection has been issued, see the rejections below.
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)(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.
(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.
Claim(s) 16, 20-23, 28, and 32 is/are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by Huang et al. (US 2019/0328038 A1).
Regarding claim 16, Huang discloses:
An aerosol-generating device, ([0021] a heating device according to the present disclosure heats tobacco at a low temperature, a preferred non-burning tobacco smoking effect is achieved), comprising:
an electrical heating arrangement, ([0014] an electric heating tube), configured to heat an aerosol-forming substrate in order to generate an aerosol, ([0021] the electric heating tube according to the present disclosure allows the tobacco to be directly and uniformly heated, a preferred non-burning tobacco smoking effect is achieved.);
a user switch configured to enable a user to initiate a use pause of the aerosol-generating device, ([0060] “when a user stops smoking and moves the base downward and the sensor detects a downward acceleration, the controller decreases the output power to a lower heating power and the device goes into an energy saving state.” Here the sensor acts as the switch, where the user’s motion with the device is used to initiate a use pause, considered to be the energy-saving standby state); and
a controller configured to generate a pause signal in response to the user initiating the use pause of the aerosol-generating device via the user switch, ([0064] “if the sensor detects a downward acceleration … the controller decreases the output power to a low heating power and the heating device goes into the energy-saving standby state.”),
wherein the electrical heating arrangement is further configured to heat the aerosol-forming substrate at a first temperature level in an aerosol-releasing mode, ([0050] the tobacco is directly heated by the electric heating tube … achieving the purpose of low-temperature heating of the tobacco preferably between 200-230 C), and in response to the pause signal to heat the aerosol-forming substrate at a second temperature level below the first temperature level in a pause mode, ([0063]-[0064] the controller decreases the output power to a low heating power and the heating device goes into the energy saving state, the decrease in output power to a low heating power reasonably anticipating heating the aerosol forming substrate at a second temperature that is configured to result in significantly reduced aerosolization of the aerosol forming substrate while still warming the aerosol forming substrate, and thus the standby mode of the Huang device is anticipates the claimed pause mode).
Regarding claim 20, Huang discloses the aerosol generating device of claim 16. Huang discloses at least one sensor comprising one of a puff sensor configured to detect a user’s puff, a motion sensor configured to detect a movement of the aerosol-generating device, and an orientation sensor configured to detect an orientation of the aerosol-generating device, ([0020] disclosing an acceleration detector), ([0060] the sensor detects a downward acceleration, and the controller decreases the output power to a lower heating power and the heating device goes into an energy saving state).
Regarding claim 21, Huang discloses the aerosol generating device of claim 16. Huang discloses the user switch is further configured to enable the user to initiate use of the aerosol generating device, ([0062] when the user holds and moves the base upward (for example, near the mouth), and the sensor detects an upward acceleration, the controller instantly outputs a high heating power to cause the temperature of the heating device to be higher than a predetermined smoke temperature, thereby facilitating the electric heating tube to heat the tobacco).
Regarding claim 22, Huang discloses the aerosol generating device of claim 16. Huang discloses the controller is further configured to generate an activity signal in response to the user initiating use of the aerosol-generating device, ([0062] where the controller instantly outputting a high heating power is considered to be the activity signal, in response to the user initiating use of the aerosol generating device, considered to be the user holding and moving the device upward near their mouth).
Regarding claim 23, Huang discloses the aerosol generating device of claim 16. Huang discloses that the device may have and enter into a standby mode based on a user-initiated movement of the device, ([0060]). Although Huang does not reasonably disclose that the electrical heating arrangement is configured to change from the pause mode to the aerosol releasing mode after elapse of a predetermined maximum pause time, Huang does disclose that in response to an activity signal the aerosol generating mode may be engaged, ([0062] the controller instantly outputting a high heating power is considered to be the activity signal, in response to the user initiating use of the aerosol generating device, considered to be the user holding and moving the device upward near their mouth), which is considered to include a change in status from standby (pause mode) to active aerosol generating mode.
Regarding claim 28, Huang discloses the aerosol generating device of claim 16. Huang discloses the heating arrangement is further configured to change from heating at the first temperature level in the aerosol-releasing mode to heating at the second temperature level in the pause mode in response to the pause signal by stopping heating the aerosol-forming substrate until the second temperature level is reached or by heating the aerosol-forming substrate with reduced heating power or in a pulsed mode until the second temperature level is reached, ([0064] in response to the detected downward acceleration the controller decreases the output power to a low heating power, the device goes into the energy saving standby state, and the aerosol forming substrate will reach a second lower temperature).
Regarding claim 32, Huang discloses the aerosol generating device of claim 16. Huang discloses at least one sensor, ([0020] acceleration detector), configured to output a sensor signal indicative of the aerosol-generating device being in use by the user, ([0062] detects an upward acceleration) or in the use pause, ([0060] detects a downward acceleration), wherein the controller is further configured to generate the pause signal in response to the sensor signal indicating that the aerosol generating device is in the use pause, ([0060] in response to the downward acceleration the controller decreases the output power to a low heating power and the device goes into an energy saving standby state).
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 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(s) 24-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (US 2019/0328038 A1) as applied to claims 16 and 23 above, and further in view of Bown et al. (US 2017/0259170 A1).
Regarding claim 24, Huang discloses the aerosol generating device of claim 23, including that the device may have and enter into a standby mode based on a user initiated movement of the device, ([0060]). Although Huang does not reasonably disclose that the electrical heating arrangement is configured to change from the pause mode to the aerosol releasing mode after elapse of a predetermined maximum pause time, Huang does disclose that in response to an activity signal the aerosol generating mode may be engaged, ([0062] the controller instantly outputting a high heating power is considered to be the activity signal, in response to the user initiating use of the aerosol generating device, considered to be the user holding and moving the device upward near their mouth), which is considered to include a change in status from standby (pause mode) to active aerosol generating mode. Huang does not disclose a predetermined maximum pause time.
Bowen teaches an aerosol generating device (vaporization apparatuses), ([0008]), and is thus considered within the inventor’s field of endeavor. Bowen teaches that vaporizer devices may have a plurality of modes, and controlling the vaporizer to perform in those modes including oven temperature on/off and standby mode, ([0009]). Bowen teaches that in normal operational mode, the device may enter a standby state after a first predetermined time period of inactivity, and provides exemplary time periods of 1 min, 2 min, 3 min, 4 min, 5 min, 6 min, 7 min, 8 min, 9 min, 10 min, etc., for the purposes of preserving battery power, ([0019]). Bowden teaches that after an extended period in standby mode, the device will turn off, to be awoken and/or turned on by the user pressing the button on the device or in some embodiments by the user puffing on the device, ([0088]). Bowden does not particularly disclose what the length of time the extended period in standby mode should be before the device is powered off and the standby mode is ended.
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Huang according to the teachings of Bowen, to program the controller of the aerosol generating device of Huang to lower the power of the heater from aerosol generating mode to pause mode after a period of inactivity, and then from standby mode to a powered off or sleep mode after another period of inactivity, for the expressed rationale of battery power conservation. Although Bowden does not explicitly describe the predetermined maximum pause time is in a range from between 1 min to 15 min, one of ordinary skill in the art would have reasonably selected similar duration ranges for the predetermined maximum pause time as those disclosed for lowering the power of the heater from aerosol generating mode to pause mode, rendering the claimed range obvious.
Regarding claim 25, Huang discloses the aerosol generating device of claim 16. Huang does not disclose the heating arrangement is further configured to stop a heating operation in both the aerosol-releasing mode and the pause mode after at least one of: a predetermined number of puffs, elapse of a predetermined operation time in the aerosol-releasing mode, elapse of a predetermined operation time in the pause mode, or elapse of a predetermined weighted cumulative operation time in the aerosol-releasing mode and the pause mode.
Bowen teaches an aerosol generating device (vaporization apparatuses), ([0008]), and is thus considered within the inventor’s field of endeavor. Bowen teaches that vaporizer devices may have a plurality of modes, and controlling the vaporizer to perform in those modes including oven temperature on/off and standby mode, ([0009]). Bowen teaches that in normal operational mode, the device may enter a standby state after a first predetermined time period of inactivity, and provides exemplary time periods of 1 min, 2 min, 3 min, 4 min, 5 min, 6 min, 7 min, 8 min, 9 min, 10 min, etc., for the purposes of preserving battery power, ([0019]). Bowden teaches that after an extended period in standby mode, the device will turn off, to be awoken and/or turned on by the user pressing the button on the device or in some embodiments by the user puffing on the device, ([0088]). Bowden does not particularly disclose what the length of time the extended period in standby mode should be before the device is powered off and the standby mode is ended.
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Huang according to the teachings of Bowen, to program the controller of the aerosol generating device of Huang to lower the power of the heater from aerosol generating mode to pause mode after a period of inactivity, and then from standby mode to a powered off or sleep mode after another period of inactivity, for the expressed rationale of battery power conservation, meeting the limitations for configuring the heating arrangement to stop a heating operation in the aerosol releasing mode and the pause mode after elapse of a predetermined operation in the aerosol releasing mode and elapse of a predetermined operation time in pause mode.
Regarding claim 26, Huang discloses the aerosol generating device of claim 25.
Bowen teaches that in normal operational mode, the device may enter a standby state after a first predetermined time period of inactivity, and provides exemplary time periods of 1 min, 2 min, 3 min, 4 min, 5 min, 6 min, 7 min, 8 min, 9 min, 10 min, etc., for the purposes of preserving battery power, ([0019]).
Regarding claim 27, Huang discloses the aerosol generating device of claim 25.
Bowen teaches that in normal operational mode, the device may enter a standby state after a first predetermined time period of inactivity, and provides exemplary time periods of 1 min, 2 min, 3 min, 4 min, 5 min, 6 min, 7 min, 8 min, 9 min, 10 min, etc., for the purposes of preserving battery power, ([0019]). As stated above, in the absence of further direction beyond an extended period in standby mode, it would be obvious to select a predetermined operation in time the pause mode similar to that of the normal operational mode, such that the device powers down from standby mode after a similar period of inactivity, e.g. 1 min, 2 min, 3 min, 4 min, 5 min, 6 min, 7 min, 8 min, 9 min, 10 min, etc., for the purposes of preserving battery power.
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (WO 219/227281 A1) (English Machine Translation relied upon) in view of Huang et al. (US 2019/0328038 A1).
Regarding claim 16, Wang discloses a heated non-combustion aerosol generating device, and in particular a control method for controlling an aerosol gorming substrate of an aerosol generating article in the device to generate an aerosol, ([0001]). Wang discloses an electrical heating arrangement configured to heat an aerosol forming substrate in order to generate an aerosol, ([0057] heating device 30, Fig 1). Wang discloses a controller configured to operate the heater at different temperatures based on sensor readings, ([0057] controller, [0108] changes from temperature 1, T1, to temperature 2, T2, may be triggered by puffs obtained by the flow sensor, so that the microprocessor may be configured to terminate the first (temperature stage) after two puffs and the second (temperature) stage after another 15 puffs).
Wang discloses controlling the temperature of the heating device to keep it within the allowable temperature range at different ranges of the smoking mode, ([0015]), where the upper limit of permissible temperature range is between 450-500 degrees Celsius, the lower limit is between 250-300 degrees Celsius, and the first target temperature is between 300-450 degrees Celsius, and the second target temperature is between 300-400 degrees Celsius, ([0016]). Wang discloses an exemplary initial first temperature T1 of 380 degrees Celsius, ([0075]), but also that the second temperature T2 may be about 350 degrees Celsius, where T2 is within the allowable temperature range (for producing aerosol), ([0076]). Wang does not disclose a lower temperature heating mode equivalent to a use pause, a user switch configured to enable a user to initiate a use pause of the aerosol generating device, nor does Wang disclose the temperature the heater should be lowered to during a use pause.
Huang teaches an aerosol-generating device, ([0021] and is thus considered within the inventor’s field of endeavor. Huang teaches a user switch configured to enable a user to initiate a use pause of the aerosol-generating device, ([0060] “when a user stops smoking and moves the base downward and the sensor detects a downward acceleration, the controller decreases the output power to a lower heating power and the device goes into an energy saving state.” Here the sensor acts as the switch, where the user’s motion with the device is used to initiate a use pause, considered to be the energy-saving standby state); and
a controller configured to generate a pause signal in response to the user initiating the use pause of the aerosol-generating device via the user switch, ([0064] “if the sensor detects a downward acceleration … the controller decreases the output power to a low heating power and the heating device goes into the energy-saving standby state.”),
wherein the electrical heating arrangement is further configured to heat the aerosol-forming substrate at a first temperature level in an aerosol-releasing mode, ([0050] the tobacco is directly heated by the electric heating tube), and in response to the pause signal to heat the aerosol-forming substrate at a second temperature level below the first temperature level in a pause mode, ([0063]-[0064] the controller decreases the output power to a low heating power and the heating device goes into the energy saving state, the decrease in output power to a low heating power reasonably anticipating heating the aerosol forming substrate at a second temperature that is configured to result in significantly reduced aerosolization of the aerosol forming substrate while still warming the aerosol forming substrate, and thus the standby mode of the Huang device is meets the claimed pause mode).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the device of Wang according to the teachings of Huang. Wang discloses an aerosol generating device configured with a heater to heat an aerosol generating substrate at different temperatures all chosen to produce aerosol for consumption. Huang teaches a compatible technique of lowering the heater temperature to below the aerosol generating temperature, putting the device into a standby or pause mode based on components including a sensor and controller, which act together to detect a user initiated pause and lower the power of the heater, for the explicit benefit of conserving energy. Wang can be seen as a base device upon which the claimed invention can be seen as an improvement. Huang is a prior art reference that can be seen as a comparable device that has been improved with the pause mode in the same way as the claimed invention. One of ordinary skill in the art could have applied the improvement of Huang, the pause mode, in the same way to the base device of Wang, and the results would have predictably improved the device of Wang such that an energy saving mode that pauses aerosol production while keeping the aerosol generating substrate warm until the user activates aerosol generation once again.
Regarding claim 17, modified Wang discloses the aerosol generating device of claim 16. Wang discloses the first temperature is in a range between 325-385 degrees Celsius, where two temperatures the device operates at to generating aerosol from the aerosol generating substrate explicitly include an exemplary initial first temperature T1 of 380 degrees Celsius, ([0075]), and a second temperature T2 may be about 350 degrees Celsius, where T2 is within the allowable temperature range (for producing aerosol), ([0076]).
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (WO 219/227281 A1) (English Machine Translation relied upon) and Huang et al. (US 2019/0328038 A1), as applied to claim 16, and in further view of Qiu (US 2018/0352860 A1).
Regarding claim 18, modified Wang discloses the aerosol generating device of claim 16. Neither Wang nor Huang disclose the second temperature range (the pause mode temperature range) is between 175-225 degrees Celsius.
Qiu teaches an electronic cigarette, with an atomizer and a power supply, ([0015], and is thus within the inventor’s field of endeavor. Qui teaches a similar mode to the pause mode called the hold mode in Qui, ([0046]), where the pause mode temperature level may be 200 degrees Celsius, a temperature chosen such that the temperature is not too low in the hold mode, and too much heat is not removed from the smoking material. ([0061]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Wang according to the teachings of Qiu. Modified Wang already comprises an aerosol generating mode and a pause mode, but lacks a teaching regarding the pause mode temperature level. Qiu teaches selecting the pause mode temperature level to be 200 degrees Celsius in order to ensure the pause mode temperature is not too low, which would allow too much heat to be removed from the smoking material. Modified Wang comprised a base device upon which the claimed pause mode temperature (second temperature level) can be seen as an improvement. The prior art reference Qiu contained a device with a comparable pause mode, where the claimed pause mode temperature is taught, and the advantages of using the claimed pause mode temperature are also taught. One of ordinary skill in the art could have applied the pause mode temperature taught by Qiu to the modified device of Wang, and the results would have been predictable to one of ordinary skill in the art. The additional modification would have resulted in the pause mode of the modified device being 200 degrees Celsius.
Regarding claim 19, modified Wang discloses the aerosol generating device of claim 16. Modified Wang as disclosed in the rejection of claim 17, discloses the first temperature is in a range from 380-350 degrees Celsius. Modified Wang as disclosed in the rejection of claim 18, discloses the second temperature (the pause mode temperature) is 200 degrees Celsius. The difference between these two temperature ranges is at least 50 degrees Celsius in all cases, meeting the claim limitation.
Claim(s) 29-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taurino et al. (WO 2020/008008 A1) in view of Huang et al. (US 2019/0328038 A1).
Regarding claim 29-31, Taurino discloses heaters for heating one or more aerosol generating substrates, where the heater arrangements may be electrically resistive or inductive in nature, ([pg 2 lines 1-13] considered to meet the limitations of an electrical heating arrangement configured to heat an aerosol forming substrate in order to generate an aerosol). Taurina discloses that the device may comprise an ambient temperature sensor spaced apart from the control circuitry, ([pg 5 line 8-24]). The ambient temperature sensor is considered to provide environmental data, be an environmental data sensor that measures at least one parameter in an environment of the aerosol generating device, and measures temperature in the environment of the aerosol generating device, meeting various limitations of claims 29-31. Taurino discloses that the ambient temperature in the vicinity of the system affects the temperature of the cartridge during an aerosol-generating system, where the ambient temperature affects the system’s ability to maintain the temperature of the cartridge at the desired operating temperature, ([pg 6 lines 11-17]). Taurino discloses the controller adjusting the target resistance profile of the heater to compensate for differences in the ambient temperature readings outside the normal ambient temperature range, to improve the consistency of the aerosol generated by the aerosol generating system, ([pg 34 lines 8-21]). In some embodiments the target apparent resistance value may be adjusted by amounts that vary over time, where the target apparent resistance value is adjusted as a function of the ambient temperature readings, based on a known relationship between temperature and the apparent resistance, ([pg 37 lines 21-27] connecting the target apparent resistance to an adjustment which is equivalent to one based on temperature).
Huang teaches an aerosol-generating device, ([0021] and is thus considered within the inventor’s field of endeavor. Huang teaches a user switch configured to enable a user to initiate a use pause of the aerosol-generating device, ([0060] “when a user stops smoking and moves the base downward and the sensor detects a downward acceleration, the controller decreases the output power to a lower heating power and the device goes into an energy saving state.” Here the sensor acts as the switch, where the user’s motion with the device is used to initiate a use pause, considered to be the energy-saving standby state); and
a controller configured to generate a pause signal in response to the user initiating the use pause of the aerosol-generating device via the user switch, ([0064] “if the sensor detects a downward acceleration … the controller decreases the output power to a low heating power and the heating device goes into the energy-saving standby state.”),
wherein the electrical heating arrangement is further configured to heat the aerosol-forming substrate at a first temperature level in an aerosol-releasing mode, ([0050] the tobacco is directly heated by the electric heating tube), and in response to the pause signal to heat the aerosol-forming substrate at a second temperature level below the first temperature level in a pause mode, ([0063]-[0064] the controller decreases the output power to a low heating power and the heating device goes into the energy saving state, the decrease in output power to a low heating power reasonably anticipating heating the aerosol forming substrate at a second temperature that is configured to result in significantly reduced aerosolization of the aerosol forming substrate while still warming the aerosol forming substrate, and thus the standby mode of the Huang device is meets the claimed pause mode).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the device of Taurino according to the teachings of Huang. Taurino discloses an aerosol generating device configured to adjust the heating profile of an aerosol generating substrate based on a measured ambient temperature to improve the consistency of the aerosol generated by the device. Huang teaches a compatible technique of lowering the heater temperature to below the aerosol generating temperature, putting the device into a standby or pause mode based on components including a sensor and controller, which act together to detect a user initiated pause and lower the power of the heater, for the explicit benefit of conserving energy. Taurino can be seen as a base device upon which the claimed invention can be seen as an improvement. Huang is a prior art reference that can be seen as a comparable device that has been improved with the pause mode in the same way as the claimed invention. One of ordinary skill in the art could have applied the improvement of Huang, the pause mode, in the same way to the base device of Taurino, and the results would have predictably improved the device of Taurino such that an energy saving mode that pauses aerosol production while keeping the aerosol generating substrate warm until the user activates aerosol generation once again.
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 16, 18-19, 21-22, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 12-15 of US 12,453,374 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 16 and 32, US 12,453,374 B2 discloses:
An aerosol-generating device, (claim 1) comprising:
an electrical heating arrangement (claim 1 where the heating element and power source are reasonably interpreted as being electrical) configured to heat an aerosol-forming substrate in order to generate an aerosol (claim 1);
a user switch (claim 1) configured to enable a user to initiate a use pause of the aerosol-generating device; and
a controller (claim 1) configured to generate a pause signal in response to the user initiating the use pause of the aerosol-generating device via the user switch,
wherein the electrical heating arrangement is further configured to heat the aerosol- forming substrate at a first temperature level in an aerosol-releasing mode, and in response to the pause signal to heat the aerosol-forming substrate at a second temperature level below the first temperature level in a pause mode, (claim 1, where the standby mode is reasonably interpreted as meeting the requirements of the pause mode, when interpreted in light of the Specification [col 2 line 40-61], [col 5 lines 18-42].
Regarding claim 18, US 12,453,374 B2 discloses the aerosol generating device of claim 16.
Wherein the second temperature level is in a range between 175 degrees Celsius and 225 degrees Celsius, (claims 12-13 establishing a standby temperature range of between 100-200 degrees Celsius, where optimizing within the claimed range would be an obvious balance of maintaining a high enough temperature to quickly resume aerosol generation balanced against the obvious advantages of greater power savings at lower temperatures, rendering obvious the selection of between 175-200 degrees Celsius).
Regarding claim 19, US 12,453,374 B2 discloses the aerosol generating device of claim 16.
wherein the second temperature level is lower than the first temperature level by at least 50 degrees Celsius, (claims 12-15 establishing a standby temperature range of between 100-200 degrees Celsius, and an aerosol generating temperature range between 160-260 degrees Celcius, where optimizing to have a differential of 50 degrees Celsius between the two modes would be an obvious balance of maintaining a high enough temperature properly aerosolize the aerosol generating substrate, while maintaining a standby temperature to quickly resume aerosol generation balanced against the obvious advantages of greater power savings at lower temperatures, rendering obvious the selection of between 175-200 degrees Celsius).
Regarding claim 21, US 12,453,374 B2 discloses the aerosol generating device of claim 16. US 12,453,374 B2 further discloses the user switch is configured to enable the user to initiate use of the aerosol generating device, (claim 1, wherein the switch detects the removal of the actuator and establishes an aerosol generating mode of the heating element).
Regarding claim 22, US 12,453,374 B2 discloses the aerosol generating device of claim 21. The controller is configured to generate an activity signal in response to the user initiating use of the aerosol generating device, (claim 1, wherein the switch detects the removal of the actuator and the controller establishes an aerosol generating mode of the heating element).
Conclusion
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/DANIEL EDWARD VAKILI/Examiner, Art Unit 1747
