DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to the amendments filed on 12/01/2025.
Claims 1-14 and 17-24 are currently pending in this application. Claims 1, 11-13, 17, 21, 22 and 24 have been amended. Claims 15 and 16 are cancelled.
No new IDS has been filed.
Examiner’s note
Applicant is suggested to include information from figures 1-3 with related text of the disclosure in the claims to provide the application in a better position for an allowance.
Response to Arguments
The previous objection to claim 24 has been withdrawn in response to the applicant’s amendment/remarks.
Regarding the previous 112(b) rejections, the applicant has amended the claims and argued, in page 6 of the remarks, that “… in view of these amendments … under 112(b) have been addressed and should be withdrawn”. However, the applicant’s amendments do not overcome all of the previous rejections or/and the current amendments cause the new rejections stated in the 112 rejections section below.
The previous 101 rejections to claim 22 have been withdrawn in response to the applicant’s amendment/remarks.
Regarding the 102 rejections, the applicant, in page 7 of the remarks, has argued that “…In Barbaric, no image is received … a code is received from the capsule … accordingly, Barbaric also fails to teach the step of reading the code from the image using it to generate consumable data and digital signature …”.
The applicant’s these arguments are not persuasive.
As taught in Barbaric, Barbaric clearly teaches that “… the identifier(s) 123 can include any suitable data configured to identify the vaporizer 100A (e.g., a serial number, a barcode, a QR code, code stored in a memory, an identifier assigned to a chip on which an authentication signature stored in a memory is based … a tracking component including a code or an authentication signature stored in a memory, such that the vaporizer 100A may be identified and recognized by an external entity or device (e.g., a manufacturing station, a fill station, a mobile device, etc. and/or the pen portion 126A … The first identifier 123A can be configured to be read or scanned by a filing station configured to fill the reservoir 104 of the capsule 126B with carrier material. The second identifier 123B can be configured to be read or scanned by the processor 124 of the pen 126A …” – see par. 0024. Moreover, Barbaric further teaches that “… the processor 124 can be configured to be loaded with a firmware during a manufacturing phase of the processor 124 such that the firmware can be programmatically used to perform authentication of the capsule 126B … the identifier 123 can include a digital signature stored in the memory of the tracking component of the capsule 126B that can be based on a private key …” – see par. 0026 and fig. 1B. Therefore, it is clear that Barbaric clearly teaches receiving an image containing a code (e.g., the scanned QR code) by the computing device (e.g., the processor 124 of the pen portion 126A) and reading the code from the image using it to generate consumable data and digital signature (e.g., generating the information/identifier of the consumable capsule and digital signature) to perform authentication of the capsule 126B.
The applicant, in page 7 of the remarks, further argued that “… the processor of Barbaric is located in the aerosol provision device, and therefore Barbaric fails to teach the final step of claim 1, namely sending of the instruction to the aerosol provision system in response to the determining to approve the consumable … but since the processor is part of the aerosol provision device (and therefore the aerosol provision system), no such instruction could be sent to the system … no teaching as to how to provide this functionality on a separate computing device …”.
Examiner respectfully disagrees with the arguments.
First of all, the applicant argued that the aerosol provision device is same as (or a part of) the aerosol provision system (e.g., describing the processor is part of the aerosol provision device and therefore the aerosol provision system, no such instruction could be sent to the system). However, such description is not in the claim.
Secondly, the processor 124 of the Barbaric is located in the computing device (e.g., the pen portion 126A, which can perform the functions of the mobile devices, 228A, 228B, etc. – see paras. 0024, 0026), and it sends the instruction to the aerosol provision system (e.g., the capsule 126). See the rejections section below for detail.
The applicant also, in pages 7-8 of the remarks, argued that “… the computing device of claim 1 advantageously allows the entire aerosol provision system to be disabled or otherwise rendered inoperable until an instruction is sent from the remote computing device to the aerosol provision system. This not only prevents unauthorized or counterfeit cartridges … provide an inventive improvement over this reference …”.
The applicant’s this argument is not persuasive.
It is noted that the features upon which applicant argues (e.g., … advantageously allows the entire aerosol provision system to be disabled or otherwise rendered inoperable until an instruction is sent from the remote computing device to the aerosol provision system. This not only prevents unauthorized or counterfeit cartridges … provide an inventive improvement over this reference …”) is NOT recited in the claims. Although the claims are interpreted in light of the specification, limitations for the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). See the examiner’s note above for providing the claims in a condition for an allowance.
The applicant’s argument regarding the claims 21, 22 and dependent claims 2-14, 17-20, 23 and 24 for the limitations of claim 1 described above is not persuasive and the response for the argument is similar to the response stated above for the claim 1.
Thus, the applicants’ arguments are not persuasive. Please see amended rejections below for the amended claims. This action is final.
Claim Rejections - 35 USC § 112
The following is a quotation 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.
Claims 1-14, 17-21, 23 and 24 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirements (e.g., a new matter issue).
Claim 1 (claim 21 includes similar limitation) is amended to include a subject matter, “… read the code and generate, from the code, consumable data and digital signature …”, however, these amended limitations were not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Examiner noted that the specification describes “… the codes 33, 53 are generated or otherwise encoded with consumable data and a digital signature. The digital signature is generated using a private key of a key pair …” – see page 8; “… having decoded the code 33, 53 to generate the consumable data and the digital signature …” – see page 13. However, this information cannot be read as the recited limitations, “… read the code and generate, from the code, consumable data and digital signature …” (note: the code is decoded, NOT generated, to obtain the consumable data and digital signature, etc.).
Claims 2-14, 17-20, 23 and 24 depend from the claim 1, and are analyzed and rejected accordingly.
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.
Claims 1-14 and 17-24 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 1 (claims 21 and 22 include similar limitations) recites:
“… read the code and generate, from the code, consumable data and a digital signature; validate the digital signature using a public key of a key pair …”, however, it is not clear (1) how the consumable data and the digital signature are generated using the code (e.g., executing the code calculates/provide a link/location for the consumable data and the signature, etc.) - or omitting necessary step/component which cause the limitations unclear; (2) whether “the public key” has any relationship with the claimed computing device or not; (3) whether “a key pair” is “two public keys” or not - or it is not clear to define a boundary of the limitations;
“… determine whether to approve the consumable based on the consumable data … send an instruction to the aerosol provision system in response to the determining to approve the consumable …”, however, it is not clear (1) whether the consumable is actually approved/denied or just determining to do it (e.g., the intended use); (2) whether the instruction is sent in response to the result of determination or not - or it is not clear to define a boundary of the limitations.
Claims 2-14, 17-20, 23 and 24 depend from the claim 1, and are analyzed and rejected accordingly.
Claim 11 recites “… provide a notification in response to the reading the code not being successful”, however, it is not clear to who/where the notification is provided to (e.g., saving to a memory of the computing device, broadcasting to a network, etc.) - or omitting necessary step/component which cause the limitations unclear.
Claim 12 recites “… wherein the image is a first image and … to capture a second image containing the code”, however, it is not clear whether the second image is the same as the first image or the image of the claim 1 or not, because they both contain the same code (e.g., defining two different names/terms to a same image) - or is not clear to define a boundary of the limitations.
Claim 13 recites “… wherein the image is a first image and … to capture a second image containing a different code”, however, it is not clear how to know the second image contains the different code before capturing the second image - or omitting necessary step/component which cause the limitations unclear.
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 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.
Claims 1-14 and 17-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barbaric et al. (US 2020/0085105 A1).
As per claim 1, Barbaric teaches a computing device [see figs. 1B, 2] configured to:
receive an image containing a code associated with a consumable of an aerosol provision system; read the code and generate, from the code, consumable data and a digital signature [figs. 1B, 2; par. 0024, lines 1-41; par. 0025, lines 1-21; par. 0026, lines 1-31; par. 0036, lines 1-5 of Barbaric teaches a computing device (e.g., the pen portion 126A, which can perform the functions of the mobile devices, 228A, 228B, etc. – see par. 0024) configured to receive an image containing a code (e.g., a code, QR code, barcode or identifier included in the tracking component upon the attachment of the capsule 126B to the interface of the pen portion 126A) associated with a consumable (e.g., the consume substances) of an aerosol provision system (e.g., the capsule 126B of the vaporizer); read the code, and generate, from the code, consumable data and a digital signature (e.g., the unique identifier and the digital signature)];
validate the digital signature using a public key of a key pair; determine whether to approve the consumable based on the consumable data in response to the digital signature being validated; and send an instruction to the aerosol provision system in response to the determining to approve the consumable, wherein the computing device is separate from the aerosol provision system [fig. 1B; par. 0026, lines 1-40 of Barbaric teaches to validate the digital signature using a public key of a key pair (e.g., the public key associated with the private key); and determine whether to approve the consumable based on the consumable data (e.g., authenticating the capsule of the vaporizer with the substances) in response to the digital signature being validated (e.g., verifying the digital signature); and send an instruction to the aerosol provision system (e.g., initiating activation of heating control circuitry of the capsule 126B) in response to the determining to approve the consumable (e.g., authenticating the capsule of the vaporizer with the substances), wherein the computing device (e.g., the pen portion 126A, which can perform the functions of the mobile device) is separate from the aerosol provision system (e.g., the capsule 126B)].
As per claim 2, Barbaric teaches the computing device of claim 1.
Barbaric further teaches wherein the consumable data comprises an identifier for the consumable [par. 0018, lines 17-40; par. 0026, lines 16-30 of Barbaric teaches wherein the consumable data comprises an identifier for the consumable (e.g., the unique identifier of the vaporizer or capsule with the substances) – see also the rejections to the claim 1].
As per claim 3, Barbaric teaches the computing device of claim 2.
Barbaric further teaches wherein determining whether to approve the consumable comprises comparing the identifier to a list of identifiers [fig. 1B; par. 0026, lines 16-30; par. 0038, lines 1-6 of Barbaric teaches wherein determining whether to approve the consumable comprises comparing the identifier to a list of identifiers (e.g., the list or database of capsules/identifiers)].
As per claim 4, Barbaric teaches the computing device of claim 1.
Barbaric further teaches to provide a notification to the user based on the determining whether to approve the consumable [figs. 1B, 4; par. 0003, lines 15-19; par. 0061, lines 1-10 of Barbaric teaches to provide a notification (e.g., the unlock message or alert) to the user (e.g., the requestor or the compute device) based on the determining whether to approve the consumable (e.g., authenticating the capsule of the vaporizer with the substances) – see also rejections to the claim 1].
As per claim 5, Barbaric teaches the computing device of claim 4.
Barbaric further teaches wherein the notification is provided to the user in response to determining not to approve the consumable [figs. 1B, 4; par. 0003, lines 15-19; par. 0061, lines 1-10 of Barbaric teaches wherein the notification (e.g., the alert) is provided to the user in response to determining not to approve the consumable (e.g., not authenticating/valid the capsule of the vaporizer with the substances)].
As per claim 6, Barbaric teaches the computing device of claim 1.
Barbaric further teaches to verify an age of a user of the aerosol provision system based on information associated with the user [fig. 2; par. 0040, lines 1-18 of Barbaric teaches to verify an age of a user of the aerosol provision system (e.g., the vaporizer with a specific capsule) based on information associated with the user].
As per claim 7, Barbaric teaches the computing device of claim 6.
Barbaric further teaches to provide a notification to the user based on the verifying the age of the user [fig. 3A; par. 0040, lines 1-18; par. 0052, lines 1-4, 28-42 of Barbaric teaches to provide a notification to the user based on the verifying (e.g., the validation) the age of the user (e.g., the validation for the user)].
As per claim 8, Barbaric teaches the computing device of claim 1.
Barbaric further teaches to provide a notification to a user of the aerosol provision system based on the validating of the digital signature [figs. 1B, 4; par. 0003, lines 15-19; par. 0026, lines 16-30; par. 0061, lines 1-10 of Barbaric teaches to provide a notification to a user of the aerosol provision system (e.g., the vaporizer) based on the validating of the digital signature – see also rejections to the claim 1].
As per claim 9, Barbaric teaches the computing device of claim 8.
Barbaric further teaches wherein the notification is provided to the user in response to the validating indicating that the consumable is not authentic [figs. 1B, 4; par. 0003, lines 15-19; par. 0036, lines 1-5; par. 0063, lines 16-27 of Barbaric teaches wherein the notification is provided to the user in response to the validating indicating that the consumable is not authentic (e.g., not authenticating/valid the capsule of the vaporizer with the substances)].
As per claim 10, Barbaric teaches the computing device of claim 1.
Barbaric further teaches wherein the code is located on the consumable [par. 0027, lines 1-14 of Barbaric teaches wherein the code is located on the consumable (e.g., the capsule of the vaporizer with the substances)].
As per claim 11, Barbaric teaches the computing device of claim 1.
Barbaric further teaches to provide a notification in response to the reading the code not being successful [par. 0024, lines 1-41; par. 0027, lines 1-14 of Barbaric teaches to provide a notification in response to the reading the code not being successful (e.g., the first identifier can be read or scanned by the filling station not by the processor of the pen)].
As per claim 12, Barbaric teaches the computing device of claim 11.
Barbaric further teaches wherein the image is a first image and wherein the notification indicates to the user to capture a second image containing the code [par. 0024, lines 1-41; par. 0027, lines 1-14; par. 0063, lines 13-27 of Barbaric teaches wherein the image is a first image and wherein the notification indicates to the user to capture a second image containing the code (e.g., the second identifier) – see also rejections to the claim 1].
As per claim 13, Barbaric teaches the computing device of claim 11.
Barbaric further teaches wherein the image is a first image and wherein the notification indicates to the user to capture a second image containing a different code [par. 0024, lines 1-41 of Barbaric teaches wherein the image is a first image and wherein the notification indicates to the user to capture a second image containing a different code (e.g., the second identifier can be configured to be read or scanned by the processor of the pen)].
As per claim 14, Barbaric teaches the computing device of claim 13.
Barbaric further teaches wherein the different code is located on packaging for the consumable [par. 0024, lines 1-41of Barbaric teaches wherein the different code is located on packaging for the consumable (e.g., printed on the capsule)].
As per claim 17, Barbaric teaches the computing device of claim 1.
Barbaric further teaches wherein the instruction comprises one or more operational parameters for the aerosol provision system [par. 0054, lines 47-57 of Barbaric teaches wherein the instruction comprises one or more operational parameters (e.g., the particular current to be applied) for the aerosol provision system (e.g., the vaporizer or capsule with the substance)].
As per claim 18, Barbaric teaches the computing device of claim 17.
Barbaric further teaches wherein the one or more operational parameters comprise an enabling of an aerosol generator of the aerosol provision system [par. 0054, lines 47-57 of Barbaric teaches wherein the one or more operational parameters comprise an enabling of an aerosol generator of the aerosol provision system (e.g., heating element to be heated for the vaporizer)].
As per claim 19, Barbaric teaches the computing device of claim 18.
Barbaric further teaches wherein the enabling of the aerosol generator is for a number of inhalations by a user of the aerosol provision system [par. 0052, lines 1-9; par. 0062, lines 11-20 of Barbaric teaches wherein the enabling of the aerosol generator is for a number of inhalations (e.g., determined number of inhalations or draws) by a user of the aerosol provision system (e.g., the vaporizer)].
As per claim 20, Barbaric teaches the computing device of claim 1.
Barbaric further teaches comprising a camera configured to capture the image [fig. 1B; par. 0018, lines 32-40; par. 0027, lines 1-21 of Barbaric teaches comprising a camera configured to capture the image (e.g., the barcode, the QR code, etc.)].
Claims 21 and 22 are method and medium claims that correspond to the device claim 1, and are analyzed and rejected accordingly.
As per claim 23, Barbaric teaches an aerosol provision device comprising the computing device of claim 1 [figs. 1B, 2 of Barbaric teaches an aerosol provision device comprising the computing device of claim 1].
As per claim 24, Barbaric teaches a system comprising: the computing device of claim 1; and an aerosol provision device [see figs. 1B, 2 of Barbaric].
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 MAUNG T LWIN whose telephone number is (571)270-7845. The examiner can normally be reached Monday - Friday 10:00 am - 6:00 pm.
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/MAUNG T LWIN/Primary Examiner, Art Unit 2495