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
Applicant’s submission filed on 2026 July 21 has been entered. Claims 6 and 9-18 are pending.
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 6 and 9-18 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 6, lines 11-17; claim 13, lines 13-19; claim 14, lines 11-17: the limitation “subtracting the first remaining capacity” makes objective reference to a subjective, estimated value. The first remaining capacity is a remaining capacity of a battery required to “complete heating” of one substrate (final four lines of each claim), which would change depending on the type of the substrate and the strength of a user’s inhalations, so a controller would not be able to subtract a subjective, estimated value (first remaining capacity) from an objective, measured value (remaining battery capacity) without further explanation. Indeed, the claims give no indication as to how the first remaining capacity can be objectively determined and thereafter subtracted. See MPEP 2173.05(b)(II): Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989). The courts have held that a claim reciting a bicycle with “front and rear wheels so spaced as to give a wheelbase that is between 58 percent and 75 percent of the height of the rider” is indefinite, because the wheelbase dimensions are not based on an objective standard but are instead based on a rider of unspecified build. The limitation “by subtracting the first remaining capacity from the acquired remaining battery capacity” is interpreted as omitted to make the claim examinable.
Claims 9-12 and 15-18 are rejected by dependence on claim 6.
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 6 and 9-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 6 and 13-14
Step 1: each claim is to a machine or a method.
Step 2A-1: each claim recites gathering battery capacity data and calculating a display mode from the data and thus recites the abstract idea of using a computer as a tool to perform the mental process of calculating a display mode. A human could process the data in the mind and determine a display mode based on said processing. See MPEP 2106.04(a)(2)(III).
Step 2A-2: each claim does not integrate the mental process into a practical application pursuant to the following analyses.
MPEP 2106.05(a): the claim recites a heating unit, a plurality of display units, a remaining capacity meter IC, and a control unit and thus adds generic computer components to perform the mental process of calculating a display mode. The claim does not recite particular elements to improve the technology of displaying or of recreational smoking and instead recites the mere combination of an inhaler device and the mental process of calculating a display mode of said inhaler device. 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 2B.
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 calculating a display mode.
MPEP 2106.05(e): the claim generally links the mental process of calculating a display mode 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 controller as a tool to apply the mental process of calculating a display mode 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 reading battery capacity from a remaining capacity meter IC, 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 calculating a display mode. The mental process could be applied to any field of use wherein a battery capacity decreases over time.
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 calculating a display mode 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 inhaler device with a heating unit, a plurality of display units, and a remaining capacity meter IC. Moreover, Austin (US 20170334606 A1) discloses that it is well-known and conventional in the recreational smoking art to design an inhaler device [18] with a heating unit (inductor), a plurality of display units (LEDs), and a remaining capacity meter (a battery is rechargeable which requires a meter to read the battery capacity and stop charging when the battery is fully recharged).
Claims 9-12 and 15-17: the dependent claims recite no physical elements additional to the independent claims and thus do not constitute integration into a practical application or significantly more than the mental process of calculating a display mode.
Claim 18: the dependent claim recites 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 calculating a display mode. The examiner takes official notice that it is well-understood, routine, and conventional in the recreational smoking art to design an inhaler device with a panel configured to be deformed to engage a button. Moreover, Ware (US 20160020048 A1) teaches that it is traditional in the recreational smoking art to design an inhaler device [3] with a panel (flexing metal dome) configured to be deformed to engage a button (switch).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 6 and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Talbot (US 20210059314 A1) in view of Lim (WO 2018190586 A2 with reference made to machine translation), Ferrie (WO 2020193225 A1), Chia (US 20210022409 A1), and Xie (CN 109556099 A with reference made to machine translation).
Claims 6 and 13-14: Talbot teaches an inhaler device (fig. 3a-b and [143-146]), a display method in an inhaler device [143-146], and a non-transitory computer-readable medium storing a program for controlling an inhaler device [143-146], the inhaler device comprising:
a heating unit (162) that heats a substrate (150) holding an aerosol source with electric power from a battery (128) to generate an aerosol [145];
a plurality of display units (fig. 7a-d, #137a-c) for displaying a remaining capacity of the battery [174];
a remaining capacity meter IC ([136], control circuit) configured to acquire remaining battery capacity information ([174], battery capacity is indicated which requires that battery capacity is measured by the control circuit);
and a control unit (fig. 3a-b, #130) in electrical communication with [150] the heating unit (162), the plurality of display units (fig. 7a-d, #137a-c), and the remaining capacity meter IC ([136], control circuit), and configured to:
acquire remaining battery capacity information from the remaining capacity meter IC ([174], battery capacity is indicated, so battery capacity must be measured by the control circuit);
change a display mode of all of the plurality of display units (fig. 7a-c; [176-178], the first, second, and third visual indication states), in a case where the remaining capacity of the battery is larger than a first remaining capacity ([179], battery capacity corresponding to more than ten remaining activations), to present a change of the remaining capacity of the battery ([176-178], the first, second, and third visual indication states correspond to remaining activations) within a range larger than the first remaining capacity (ten remaining activations), wherein the change of the display mode comprises determining a number of LEDs to be lit (fig. 7a-c) in proportion to usage data [92];
enable the heating unit to perform at least one heating cycle (a user can continue to heat the device until zero activations remain) when the remaining capacity of the battery is larger than a first remaining capacity (ten remaining activations);
change a display mode of at least one display unit (fig. 7a-d, #137a) among the plurality of display units (137a-c) to a first display mode (fig. 7d; [179], fourth visual indication state), in a case where the remaining capacity of the battery becomes less than or equal to the first remaining capacity ([179], ten or fewer remaining activations);
wherein the first remaining capacity ([179], ten remaining activations) is a remaining capacity of the battery required to complete heating of one substrate (the device becomes inoperable after ten activations, at which point heating is completed, i.e., ended).
Talbot does not explicitly teach that the control unit performs control to change the display mode of the at least one display unit to a second display mode, in a case where the remaining capacity of the battery becomes less than or equal to a second remaining capacity lower than the first remaining capacity, wherein the second remaining capacity is a predetermined remaining capacity less than the remaining capacity of the battery required to complete heating of one substrate,
the number of display units to be lit is determined by dividing the remaining battery capacity information by a predetermined percentage represented by each display unit to yield a result, and rounding the result to an integer value,
the control unit is further configured to perform a remaining battery capacity display step animation that sequentially transitions a plurality of display units from a baseline luminance to a normal lighting state at a predetermined time interval to indicate a capacity range;
and an increased brightening animation concurrently applied to each display unit as each display unit enters the normal lighting state, wherein the luminance of said display unit is non-linearly increased from the baseline luminance to a maximum luminance according to a predefined sine curve table.
Lim teaches an inhaler device (fig. 1 and [56-60], #1) comprising a display unit (122) and a control unit (fig. 2 and [62], #120) that performs control to change the display mode of the display unit (122) from a first display mode ([69], the LED blinks more slowly) to a second display mode ([69], the LED blinks more quickly), corresponding to a remaining capacity of the battery decreasing [69], such that the display unit alone can indicate a remaining capacity to a user [69].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add Lim’s second display mode to Talbot such that the control unit performs control to change the display mode of the at least one display unit to a second display mode, in a case where the remaining capacity of the battery becomes less than or equal to a second remaining capacity lower than the first remaining capacity, wherein the second remaining capacity is a predetermined remaining capacity less than the remaining capacity of the battery required to complete heating of one substrate, because doing so would enable the at least one display unit alone to further indicate a number of remaining puffs to a user, thereby protecting the display function against failure of the other display units.
Ferrie teaches an inhaler device (title) comprising a plurality of display units ([26-27], LEDs), wherein the number of display units to be lit is determined by dividing a remaining battery capacity information (remaining usable lifetime) by a predetermined percentage (n lit LEDs = remaining usable lifetime / (100% total lifetime / N total LEDs); for example, 3 lit LEDs = (75% remaining usable lifetime / (100% total lifetime / 4 total LEDs) = 75% remaining usable lifetime / 25% interval = 3 lit LEDs) represented by each display unit to yield a resulting value (n), and rounding the resulting value (n) to an integer value (“a” number of LEDs is lit, i.e., each LED is either lit or unlit).
Talbot’s method of processing remaining battery capacity information into display instructions uses a lookup table [Talbot 63] but no specific calculations, while Ferrie’s method of processing remaining battery capacity information into display instructions uses arithmetic division [Ferrie 26-27], but both Talbot’s and Ferrie’s method achieve the same outcome of displaying a remaining battery capacity information to yield expectation to succeed.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as Talbot’s generic method of calculating remaining battery capacity information into display instructions, Ferrie’s specific method of dividing the remaining battery capacity information by a predetermined percentage to yield an integer number of display units to light, because doing so would apply Ferrie’s known arithmetic method onto Talbot’s similar lookup method to achieve the same outcome of displaying a remaining battery capacity.
Chia teaches an inhaler device (title) comprising a control unit configured to perform a remaining battery capacity display step animation ([11], animate LEDs in sequence) that sequentially transitions a plurality of display units (LEDs) from a baseline luminance (not illuminated) to a normal lighting state (illuminated state) at a predetermined time interval (in sequence) to indicate a capacity range (level of battery charge);
and an increased brightening animation (lighting) concurrently applied to each display unit (LED) as each display unit (LED) enters the normal lighting state (illuminated state), such that the device can display battery level and charging status to a user [11].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add, to Talbot’s battery animations during operation of the device, Chia’s remaining battery capacity display step animation during charging of the device that sequentially transitions a plurality of display units from a baseline luminance to a normal lighting state at a predetermined time interval to indicate a capacity range, and Chia’s increased brightening animation concurrently applied to each display unit as each display unit enters the normal lighting state, because doing so would display battery level and charging status to a user during charging.
Xie teaches a control unit configured to perform an increased brightening animation where luminance of lights is non-linearly changed with a sine curve effect (fig. 4, brightening phase across Δt2; [27], lights are brightened along a sine brightness curve), such that a user can select a desired brightening curve [30].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add, as modified Talbot’s brightening curve of generic shape, Xie’s specific brightening curve of sine shape, because doing so would enable a user to select a desired brightening curve shape.
Claim 10: modified Talbot teaches the inhaler device according to claim 6, wherein, in a case where the remaining capacity of the battery is larger than the first remaining capacity ([179], more than ten activations), the control unit performs control to change states of the plurality of display units (fig. 7a-d, #137a-c) to one of two reduced-luminance states (either turned off or blinking) one by one with a decrease in the remaining capacity of the battery ([176-178], the first, second, and third visual indication states correspond to remaining activations).
Modified Talbot does not explicitly teach that the two reduced-luminance states are one and the same reduced-luminance state.
Lim teaches an inhaler device (fig. 1 and [56-60], #1) comprising a display unit (122) and a control unit (fig. 2 and [62], #120) that performs control to change the display mode of the display unit (122) to a reduced-luminance state ([69], the LED emits light at a stronger output; the opposite is possible) with a decrease in the remaining capacity of a battery (as the remaining number of puffs decreases), such that the display unit can indicate a remaining capacity to a user [69].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to consolidate Talbot’s turned-off state and blinking state into one blinking reduced-luminance state as suggested by Lim, because doing so would enable the display units to indicate a remaining capacity to a user.
Claim 11: modified Talbot teaches the inhaler device according to claim 10, wherein the at least one display unit (fig. 7a-d, #137a) is one display unit whose state is changed last among the plurality of display units (137a-c) to the reduced-luminance state (either turned off or blinking) with a decrease in the remaining capacity of the battery ([176-178], the first, second, and third visual indication states correspond to remaining activations).
Claim 12: modified Talbot teaches the inhaler device according to claim 6, wherein the first display mode is a mode of blinking at a first speed ([Lim 69], the LED blinks more slowly), and wherein the second display mode is a mode of blinking at a second speed ([Lim 69], the LED blinks more quickly) faster than the first speed.
Claim 15: modified Talbot teaches the inhaler device according to claim 6, wherein the control unit is further configured to perform a remaining battery capacity display step animation where LEDs are lit one by one in a timed sequence ([176-178], as battery capacity increases, the control unit can activate LEDs one by one for no longer than a pre-determined length of time).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Talbot (US 20210059314 A1) in view of Lim (WO 2018190586 A2 with reference made to machine translation), Ferrie (WO 2020193225 A1), Chia (US 20210022409 A1), and Xie (CN 109556099 A with reference made to machine translation) as applied to claim 6 in further view of Xiang (US 20170042247 A1).
Claim 9: modified Talbot teaches the inhaler device according to claim 6.
Modified Talbot does not explicitly teach that the predetermined remaining capacity is a remaining capacity of the battery required to change the display mode of the at least one display unit to the second display mode.
Xiang teaches an inhaler device (title) comprising a control unit that performs control to change a display mode of a display unit when the remaining capacity of a battery decreases to a predetermined remaining capacity required to change the display mode [52], such that a user can be notified of imminent power shortage [52].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the predetermined remaining capacity a remaining capacity of the battery required to change the display mode of the at least one display unit to the second display mode, because doing so would enable a user to be notified of imminent power shortage.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Talbot (US 20210059314 A1) in view of Lim (WO 2018190586 A2 with reference made to machine translation), Ferrie (WO 2020193225 A1), Chia (US 20210022409 A1), and Xie (CN 109556099 A with reference made to machine translation) as applied to claim 6 in further view of Xie (CN 109556099 A with reference made to machine translation) and Osborn (US 7976189 B2).
Claim 16: modified Talbot teaches the inhaler device according to claim 6, wherein the control unit is further configured to perform an increased brightening animation ([176-178], #137a-d are lit) where luminance of the display units is changed.
Modified Talbot does not explicitly teach that the brightening is non-linear in 100 steps over one second with a sine curve effect.
Xie teaches a control unit configured to perform an increased brightening animation where luminance of lights is non-linearly changed with a sine curve effect (fig. 4, brightening phase across Δt2; [27], lights are brightened along a sine brightness curve), such that a user can select a desired brightening curve [30].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Xie’s sine brightening curve to Talbot, because doing so would enable a user to select a desired brightening curve.
Osborn teaches that the number of steps in a brightness curve is a result-effective variable which controls smoothness of brightening (col. 5, lines 4-14).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to routinely optimize Xie’s generic number of steps as taught by Osborn and arrive at 100 steps in one second, because doing so would routinely optimize smoothness of brightening.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Talbot (US 20210059314 A1) in view of Lim (WO 2018190586 A2 with reference made to machine translation), Ferrie (WO 2020193225 A1), Chia (US 20210022409 A1), and Xie (CN 109556099 A with reference made to machine translation) as applied to claim 6 in further view of Kim (KR 20190079726 A with reference made to machine translation).
Claim 17: modified Talbot teaches the inhaler device according to claim 6, wherein the first display mode is a slower blinking ([Lim 69], the LEDs blink more slowly), and the second display mode is a faster blinking ([Lim 69], the LEDs blink more quickly).
Modified Talbot does not explicitly teach that the slower blinking has a cycle of one second, or that the faster blinking has a cycle of 500 milliseconds.
Kim teaches a control unit configured to set a slower blinking with a cycle of one second or a faster blinking with a cycle of 0.5 seconds [71], such that the slower blinking and the faster blinking indicate different levels of urgency while still being recognizable by a user [71].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as Lim’s generic slower blinking period and generic faster blinking period, Kim’s slower blinking every one second and faster blinking every half second, because doing so is exemplified by Kim as indicating different levels of urgency while still being recognizable to a user.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Talbot (US 20210059314 A1) in view of Lim (WO 2018190586 A2 with reference made to machine translation), Ferrie (WO 2020193225 A1), Chia (US 20210022409 A1), and Xie (CN 109556099 A with reference made to machine translation) as applied to claim 6 in further view of Wright (US 20190208824 A1).
Claim 18: modified Talbot teaches the inhaler device according to claim 6, further comprising a body (fig. 3a-b and [138], #120) and an operation button [138] on the body (120) in order to activate the inhaler device [138].
Modified Talbot does not explicitly teach a panel attached to the body to form a housing of the inhaler device, wherein the panel is configured to be deformed, upon a press on a surface of the panel, to form a recess toward the body and to engage the operation button.
Wright teaches an inhaler device (fig. 8-9 and [41]) comprising a panel (510) attached to a body (375B) to form a housing of the inhaler device, wherein the panel (510) is configured to be deformed (a user presses 510 which deforms inward), upon a press on a surface of the panel (510), to form a recess toward the body (375A) and to engage (510 engages 340) an operation button (340) on the body (375A) in order to activate the inhaler device [27], such that the panel mechanism is robust, reliable, cheap, and simple [44].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Wright’s panel to Talbot’s body, wherein the panel is configured to be deformed upon a press on the panel to form a recess toward the body and engage an operation button, because doing so would yield a robust, reliable, cheap, and simple button mechanism and would predictably enable a user to operate the button.
Response to Arguments
Applicant’s arguments of 2026 July 21 have been carefully considered but are not persuasive.
Applicant argues (p. 9) that the specification “provides clear support” for interpreting the claimed “first remaining capacity [that] is a remaining capacity of the battery required to complete heating of one substrate” as an objective, fixed value. However, the instant specification portions cited by applicant only disclose that:
the control unit compares acquired battery capacity against fixed battery capacity thresholds, not against a battery capacity required to complete heating.
the device stores “various kinds of information”.
the second remaining capacity is predetermined and fixed, so the first remaining capacity “functions as a corresponding predetermined value”.
The above disclosures do not appear to resolve or define the root issue of objective reference to a subjective value. As in the above 35 U.S.C. § 112(b) analysis, the first remaining capacity is a remaining capacity of a battery required to complete heating of one substrate (final four lines of each claim), which would change depending on the type of the substrate and the strength of a user’s inhalations, so a controller would not be able to subtract a subjective, estimated value (first remaining capacity) from an objective, measured value (remaining battery capacity) without further explanation. One of ordinary skill would not glean, from the claims in view of the specification, how to calculate or estimate the first remaining capacity in order to subtract it. See MPEP 2173.05(b)(II): Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989). The courts have held that a claim reciting a bicycle with “front and rear wheels so spaced as to give a wheelbase that is between 58 percent and 75 percent of the height of the rider” is indefinite, because the wheelbase dimensions are not based on an objective standard but are instead based on a rider of unspecified build.
Applicant argues (p. 10-11, “A. Step 1A, Prong 1: The Claimed Combination is Not a Human Mental Process”) that a human mind cannot interact via electrical communication, nor measure an electrochemical threshold. However, using computers as tools to measure and process battery information does not distinguish the processing as non-mental. See MPEP 2106.04(a)(2)(III)(C)(3): Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018). The courts have held that claims to parsing and evaluating data merely use a computer as a tool and are thus directed to mental processes of parsing and comparing data.
Applicant further argues that a human mind cannot adjust a luminance according to a predefined sine curve table. However, adjusting luminance according to a sine curve table can be performed by a human and a notebook. See MPEP 2106.04(a)(2)(III): Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016). The courts have held that claims to translating a functional description of a logic circuit into a hardware component description of the logic circuit read on a human translating with pencil and paper and are thus directed to an abstract idea.
Applicant argues (p. 11-12, “B. Step 2A, Prong 2: The Claim Integrates the Feature into a Practical Application (MPEP § 2106.05)”) that the amended claims require logic “tailored to the hardware configuration”. However, such logic contributes only nominally to the mental process as insignificant post-solution activity, rather than integration of the mental process. See MPEP 2106.05(b)(III), with emphasis added: use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more. Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)). CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690 (Fed. Cir. 2011).
Applicant further argues that a control unit determines whether a heating unit can perform a heating cycle. However, such a determination (if a remaining battery capacity is larger than a first remaining capacity, then heating is enabled) is insignificant extra-solution activity arising from the smoking field of use, not from the mental process itself. See MPEP 2106.05(f): Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). The courts have held that adjusting an alarm limit variable to a figure computed according to a mathematical formula is non-integrating, post-solution activity.
Applicant argues (p. 12-13, “C. Step 2B: The Claims Recite “Significantly More””) that subtracting, dividing, and rounding remaining battery capacity to determine a number of display units to light and brightening the display units according to a sine curve table is unconventional. However, WURC pertains to elements additional to a judicial exception, whereas subtracting, dividing, and rounding and calculating brightness according to a sine curve table fall under a mental process, as in the above analysis. The examiner maintains official notice that it is well-understood, routine, and conventional in the recreational smoking art to design an inhaler device with a heating unit, a plurality of display units, and a remaining capacity meter IC. Moreover, Austin (US 20170334606 A1) discloses that it is well-known and conventional in the recreational smoking art to design an inhaler device [18] with a heating unit (inductor), a plurality of display units (LEDs), and a remaining capacity meter (a battery is rechargeable which requires a meter to read the battery capacity and stop charging when the battery is fully recharged). Still further, Faulstich (US 20100026963 A1) discloses that it is known to brighten a plurality of display units (fig. 3A and [37], projection grid) according to a sine curve table (sine function).
Applicant argues (p. 15, [4]) that Ferrie does not teach subtracting a first remaining capacity from an acquired remaining battery capacity. However, as in the above 35 U.S.C. § 112(b) analysis, it is unclear to the examiner how the first remaining capacity that is a remaining capacity required to complete heating would be calculated in order to be subtracted, and therefore the subtraction limitation was not examined over art in the non-final rejection of 2026 April 21.
Applicant argues (p. 16, [2]) limitations which are not claimed, e.g., a high-speed, operational step animation versus a charging step animation. However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicant has not identified how the amended claims, wherein a control unit is configured to perform a remaining battery capacity display step animation, diverges from Chia, wherein a control unit is configured to perform a remaining battery capacity display step animation [Chia 11].
Applicant argues (p. 16, [3]) that Talbot and Xie address different technical purposes. However, combined prior art need not be analogous to each other and need only be analogous to the instant invention. See MPEP 2141.01(a).
Talbot is in the same field of endeavor as (inhalers) and reasonably pertinent to (designing inhalers and display units therefor) the instant invention.
Xie is reasonably pertinent to (designing display units for inhalers) the instant invention. Talbot teaches display units of generic shape, and Xie teaches display units of specific shapes such as a sine-curve for the benefit of enabling a user to select desirable brightening curves [Xie 30].
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 Tobey C. Le whose telephone number is (703)756-5516. The examiner can normally be reached Mon-Thu 8:30-18:30 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, Michael H. Wilson can be reached on 571-270-3882. 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.
/TOBEY C LE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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