DETAILED ACTION
Response to Arguments
Applicant's arguments filed 6/8/2026 have been fully considered but they are not persuasive.
Applicant argues “Applicant respectfully disagrees and submits that a person of ordinary skill in the art would not require undue experimentation. A person of ordinary skill in the art would clearly understand that an external temperature of the device could be obtained via the determined internal temperature. For example, a person of ordinary skill in the art would recognize that directly measuring an external temperature is not necessary when internal temperature data is available. Such a person would understand that the internal temperature of a device is thermally related to its external temperature through predictable heat transfer mechanisms, including conduction through the device housing, convection at its surface, and, in some cases, radiative effects. By applying well-established principles of thermodynamics and heat transfer, the internal temperature can therefore serve as the basis from which the external temperature could be reasonably determined. Moreover, a person of skill in the art would recognize that extrapolation techniques, such as those mentioned above, are commonly employed to reduce the need for additional hardware, to minimize cost, and to simplify system design structures. Therefore, a person of ordinary skill in the art would find it intuitive to determine an external temperature of the device by extrapolating from the internal temperature, particularly where the thermal behavior of the system is sufficiently known or can be reasonably approximated.”
The Examiner disagrees. While the general concept of there being a correlation between an internal temperature an external temperature may be understood, it is not clear to one of ordinary skill in the art what correlation is required to practice the invention. For instance, does Applicant require a certain correlation to determine the correct external temperatures that can then be used as a basis for controlling charging? There is simply no guidance or explanation provided in the specification relating to how an external temperature is determined from internal temperature measurements. Applicant argues that this involves heat transfer and principles of thermodynamics and heat transfer. However, it seems like undue experimentation for one of ordinary skill in the art know all of those factors and determine which factors are being considered when being used to control the claimed device. In addition, the claim requires determining external temperature based on at least two of the measured temperatures. It appears that the factors would change based on which sensors are used and where they located. However, there is no discussion of these consideration in the instant specification. For these reasons, the 112 enablement rejection is maintained.
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
THIS ACTION IS MADE FINAL. 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 ERIC YAARY whose telephone number is (571)272-3273. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC YAARY/Examiner, Art Unit 1755
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