DETAILED ACTION
Response to Arguments
Applicant’s arguments in view of amendment filed 12/8/2025 with respect to the rejections of the claims under 102 have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made as detailed below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-15, and 17-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. This rejection is based upon the concept of undue experimentation associated with a determination of the metes and bounds of the invention.
There are eight factors considered by the Federal Circuit in the determination of undue experimentation, In re Wands, 8 USPQ2d 1400 (1988). These factors are: the nature of the invention, the breadth of the claims, the state of the prior art, the predictability or unpredictability of the art, the amount of direction or guidance presented, the existence of working examples, the relative skill of those in the art, and the quantity of experimentation necessary. The examiner will discuss these factors as they apply to the instant invention.
The claimed invention is directed to an aerosol provision device comprising a power source including a first temperature sensor, processing circuitry including a second temperature sensor, use sensor including a third temperature sensor, the processing circuitry configured to: determine an external temperature of the aerosol provision device based on at least two of: the temperature measured by the first temperature sensor, the temperature measured by the second temperature sensor, and the temperature measured by the third temperature sensor. The specification does not disclose how to determine an external temperature of the aerosol provision device based on temperature measurements internal to the aerosol provision device. Therefore, the burden to arrive an external temperature of the aerosol provision device is problematic.
In the prior art, temperature sensors have been used to directly measure an external temperature of the aerosol provision device, see US 2023/0013486 [0051]. It is also taught in the prior art to determine a separate internal temperature of the aerosol provision device based on temperature measurements internal to the aerosol provision device, see WO 2022/002938 [page 10, 3rd paragraph].
One of ordinary skill in the art would understand that there is correlation between temperature measurements internal to the aerosol provision device and a separate internal temperature of the aerosol provision device. However, given the absence of any described correlation between temperature measurements internal to the aerosol provision device and an external temperature of the aerosol provision device, undue experimentation would be required by one of ordinary skill in the art to make the claimed determination. The instant specification is silent to any guidance or working examples on how to arrive an external temperature of the aerosol provision device based on temperature measurements internal to the aerosol provision device. There is no indication in the prior art that such a determination would be predictable. As a result, the quantity of experimentation required of a person having ordinary skill in the art to determine how to practice the invention would be undue in the absence of further guidance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC YAARY whose telephone number is (571)272-3273. The examiner can normally be reached M-F 9-5.
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/ERIC YAARY/Examiner, Art Unit 1755
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