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 .
Election/Restriction
Applicant’s election without traverse of Species-(a) in the reply filed on 3-30-26 is acknowledged. Claims 3 and 4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim.
Claim Objections
Claim 22 is objected to because of the following informalities: “uthe” (Ln2) should be amended to read “the”.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
●heater assembly in claim 1
●indicator assembly in claims 1, 5, 9, 10, 15, 16, 21, 23
●illuminating elements in claims 5, 6
●second indicator assembly in claims 11, 12, 13, 17, 18, 19
●user activated means in claim 23
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 10, 12, 16, and 18 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 claim(s) contains 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. The referenced claims recite the use of activities/information of various pieces of the aerosol provision system and relationships therewith. However, the referenced claims, specification, and drawings do not provide a definition for activities/information for each of the various pieces, do not provide direction (for example – a working example or data or samples or charts etc.) as how the various relationships are structurally established, do not illustrate (in the drawings) the activities/information and relationships, and do not provide direction as to how the controller(s) limits itself (reads on controller(s) being shut down) while, still, the indicator assembly operates – such that one skilled in the art cannot determine how to make and/or use the invention in the referenced claims. With respect to the limitations of the referenced claims, the specification speaks in generalities such that one skilled in the art would be required to consider necessarily infinite ideas as to what constitutes activities/information, as to how the claimed limitations are to be settled upon with respect to reducing the relationship to structural features, and how the indicator assembly operates absent a working controller(s). Also, the features of the referenced claims (and the related portions of the specification) are not shown to have any connection to the drawings (by reference numbers, structure, etc.).
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 10, 12, 16, 18, and 22-23 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.
Claims 10, 12, 16, and 18 are considered to be indefinite in that what constitutes “limits”, by the controller, is not defined in the claims, drawings, or specification such that one skilled in the art cannot determine the scope of the claim. Also, the claims are unclear as to how the indicator assembly operates when the controller is off and not functioning.
Claims 10, 12, 16, and 18 are considered to be indefinite in that what constitutes activities/information, of the various claimed pieces, is not defined in the claims, drawings, or specification such that one skilled in the art cannot determine the scope of the claim. Also, it is unclear if activities/information refers to those recited in the claims from which claims 10, 12, 16, and 18 depend.
Claim 22 recites the limitation "the color" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "the indicated level of charge" in line 2. The antecedent basis for this limitation is not clearly defined when viewing claim 1 (from which claim 22 ultimately depends).
Claim 22 recites the limitation "the level of charge indicate" in line 3. The antecedent basis for this limitation is not clearly defined when viewing claim 1 (from which claim 22 ultimately depends).
Claim 23 is considered to be indefinite in that it has several interpretations:
wherein a user activated means to cause the indicator assembly to indicate the level
of charge of the device battery or the level of charge of the base battery
(i)wherein a user activated means to cause the indicator assembly to indicate the level of charge of the device battery
---- OR ----
(ii)wherein the base battery not chosen to be displayed by the controller.
Claim 23 does not clearly state the intended scope of the claim in this respect. In interpretation (b) “the base battery not chosen” lacks a basis in claim 1 if (ii) is selected.
Claim 23 is considered to be indefinite in that the user activated means and the controller appear to perform the same function at the same time – rendering the claim unclear in this respect. Does the under activated means override the controller or does the controller have dominance?
Claim 23, the limitation “user activated means” (Ln2) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
Amend the claim so that the claim limitation will no longer be interpreted as a
limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
Amend the written description of the specification such that it expressly recites
what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
Amend the written description of the specification such that it clearly links the
structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
Amending the written description of the specification such that it expressly
recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
Stating on the record what the corresponding structure, material, or acts, which
are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10, 12, 16, 18, and 23 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 10, 12, 16, and 18 fail to further limit the subject matter of claim 1 (and the other claims from which claims 10, 12, 16, and 18 depend) in that (in view of the rejection of these claims under 35 USC 112 first and second paragraphs) when activities/information includes the activities and information of claim 1 (i.e. heat, supply, hold, connect, and indicate (and any the activity present)), claims 10, 12, 16, and 18 encompass the subject matter of claim 1 and then further broadens the claimed subject matter to include more and/or different activities/information.
Claim 23 fails to further limit the subject matter of claim 1 (in view of the rejection of claim 23 under 35 USC 112 second paragraph) when interpretation (ii) is used in that the limitation of (ii) is already recited in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-2, 5-20, and 22-23 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Greim (US 2014/0348495 A1).
Claims 1-2, 5-20, and 22-23: Greim teaches an aerosol provision system comprising:
●an aerosol provision device 102 comprising
►a heater assembly (comprising at least heater 134) configured to heat aerosol
generating material, and
►a device battery 126 configured to supply power to cause the heater assembly
to heat the aerosol generating material (para70 para74);
●a base unit 100 configured to removably hold the aerosol provision device 102, the
base unit 100 comprising a base battery 106, and the base unit 100 being configured to connect to a power supply to supply electrical charge to the base battery 106 (para17 para70);
●an indicator assembly (comprising at least (a) a series (an array (claim 5)) of indicators
120, 122, and 124 (illuminating elements) with indicator 122 necessarily having a color at illumination and indicator 120 necessarily having a color at illumination (claims 6 and 22) – wherein the indicator assembly is part of base unit 100 and (b) contacts 110 and 130 allowing for indication of indicator 122 to illustrate the level of charge of the device battery 126 – wherein the indicator assembly is part of aerosol provision device 102 (claims 9, 11, 15, and 17)) (para71 para74 para76 para81); and
●a controller (comprising at least control electronics 108 and 128 – wherein the
controller is part of base unit 100 and aerosol provision device 102 (claims 9, 11, 15, and 17) and can be without power (claims 10, 12, 16, and 18)) (para70 para74), configured to:
■determine a level of charge of the device battery 126;
■determine a level of charge of the base battery 106 (paras41-42 para51
paras59-60 paras71-72);
■determine a characteristic of the aerosol provision device 102 (aerosol
provision device 102 capable of providing sufficient power (a charge amount) to provide the user with a complete smoking experience – for example, sufficient power to aerosolize an entire aerosol forming substrate 104 or sufficient power to generate a predetermined number of puffs) (para72); and
►if the determined characteristic satisfies one or more
criterion, cause the indicator assembly (indicator 122) to indicate the level of charge of the device battery 126 (wherein such occurs while aerosol provision device 102 is held by base unit 100 (claim 2) and charging – not the base battery (claim 23: “the base battery not chosen to be displayed by the controller) (para72); and
►if the determined characteristic fails to satisfy the one or
more criterion cause the indicator assembly (indicator 120) to indicate the level of charge of the base battery 106 (indicator 120 displays an amount of charge in base battery 106 when the aerosol provision system is operating) (para71).
The limitations of claims 2, 7-8, 13-14, and 19-20 refer to a method of use of the claimed aerosol provision system and are not considered to provide a structural limitation(s) to the claimed aerosol provision system. Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims
With respect to the claimed ●heater assembly in claim 1; ●indicator assembly in claims 1, 5, 9, 10, 15, 16, 23; ●illuminating elements in claims 5, 6; ●second indicator assembly in claims 11, 12, 13, 17, 18, 19; ●user activated means in claim 23, this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches a structure for the these limitations to perform the claimed functions. Greim teaches a structure for these limitations to perform the same claimed functions. Greim is thus considered to meet these limitations of the claim.
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.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Greim (US 2014/0348495 A1), as applied to claims 1-2, 5-20, and 22-23 above, and further in view of Goetz (US 2012/0255546 A1).
Claim 21: in Greim the indicator assembly comprises at least a series (an array) of indicators 120, 122, and 124 (illuminating elements). Greim does not teach that the illuminating elements are light emitting diodes.
Light emitting diodes are conventional and well-known in the art as being the means by which illuminating elements, of an indicator assembly, are illuminated – as demonstrated by Goetz. Goetz teaches a portable vaporizer comprising an indicator assembly. The indicator assembly comprises illuminating elements 108 which are visible to a user of the portable vaporizer and which are used to illustrate various conditions of the portable vaporizer. The illuminating elements 108 are light emitting diodes (abstract; para40).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Greim that the illuminating elements are light emitting diodes in that light emitting diodes are conventional and well-known in the art as being the means by which illuminating elements, of an indicator assembly, are illuminated – as demonstrated by Goetz – where it obvious to replace one type of illuminating element (that of Greim) with another art recognized alternative illuminating element (that of Goetz – light emitting diodes) where successful use of the light emitting diodes as been demonstrated in the same art as Greim.
With respect to the claimed indicator assembly, this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches a structure for this limitation to perform the claimed function. Greim teaches a structure for this limitation to perform the same claimed function. Greim is thus considered to meet this limitation of the claim.
Prior Art of Record
The following prior are is made of record though not relied upon: Lea (GB 2533137 A) teaches a vaporizer where light emitting diodes may be the same color or may be different colors
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phil Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA L GRAY/Primary Examiner, Art Unit 1745
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