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 .
Status of the Claims
This office action is in response to Applicant’s amendment filed on 20 November 2025:
Claims 1-24 are pending
Claims 11-24 are withdrawn
Claim 1 is amended
Response to Amendment
Applicant's amendments to the claims filed 20 November 2025 have been acknowledged.
It should be noted that Applicant’s amendments do not address Examiner’s claim interpretation of Claims 6 and 8-10 regarding "the aerosol delivery device" component being an intended use of the claimed inhaler device. Therefore, the claim interpretation to Claims 6 and 8-10 is maintained.
Response to Arguments
Applicant’s arguments filed 20 November 2025, with respect to the rejection of Claim 1 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive.
On Pages 6-7 of Applicant’s Remarks, Applicant has amended Claim 1 to now recite the following: “the communications module communicates a change in the lid position with a user device or the remote application and receives, in response to the communicating of the change in the lid position, instructions relating to operation of the case from the user device or the remote application”. Applicant argues that while Memari discloses storing data regarding the open/closing of the lid, there is no disclosure regarding to receiving instructions specifically in response to the lid position information being sent. Examiner agrees with Applicant’s argument and therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of Schennum et al (Publication No. US20160120218A1).
Below is a modified rejection based on amendments to the claims.
Claim Interpretation
An interpretation of Claims 6 and 8-10 will be made for the following claim limitation(s): “the aerosol delivery device”.
It is noted that Applicant’s specification discloses that the claimed case apparatus may further comprise an aerosol delivery device. Though Claim 1 recites that the case is intended to be used with an aerosol delivery device, the aerosol delivery device is later disclosed in Claim 7 which explicitly recites the aerosol delivery device as a structural feature of the case.
However, Claims 6 and 8-10, which are dependent on Claim 1, recites further limitations regarding the aerosol delivery device but are not dependent on either Claim 7 where the aerosol delivery device is disclosed as a component of the claimed case. Therefore, it appears that Claim 1 is reciting "the aerosol delivery device" as an intended use of the case, wherein the case is its own structure that is being claimed, separate from the aerosol delivery device.
For examination purposes, any recitations and limitations directed to "the aerosol delivery device" component is treated as an intended use of the claimed inhaler device, noting that the inclusion of material or article worked upon does not impart patentability to the claims, and that inclusion of the article formed within the body of an apparatus claim does not, without more, make the claim patentable (see MPEP § 2115).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Memari et al (Publication No. US20150245668A1) in view of Schennum et al (Publication No. US20160120218A1).
Regarding Claim 1, Memari discloses a case (100) for an electronic vaporizer system (i.e., aerosol delivery device) [0045], the case comprising:
a chassis (2) (i.e., lid) having an open and closed configuration/position (Figs. 6-7; [0321-0322]; the chassis is configured to open and close for securely storing a cigarette/aerosol PV device);
and a processor (i.e., communications module) programmed to send and/or receive (i.e., two-way communications) with a secondary computing device (i.e., user device) such as a tablet or smartphone, or a downloadable app (i.e., remote application) [0500, 0502];
wherein the processor/communications module communicates a change in the lid position to the smartphone user device ([0487, 0500]; processor is able determine and store data regarding the case being opened and/or closed; data can be sent to a secondary computing/user device);
and receives instructions relating to operation (i.e., locking or disabling) of the case from the user’s smartphone device ([0500, 05070731-0732]; a user is capable of sending instructions to the case remotely to lock, unlock and/or disable).
Memari does not explicitly disclose that the case operation instructions are received by the processor as a direct response to the communication of the change in lid position to the user device. However, it should be noted that sending signals/data to a processor to operate a case/component in response to a prior signal related to the opened/closed state of said case/component is well known in the prior art.
For example, Schennum, directed to a container (i.e., case) for an electronic vapor system, discloses that said case comprises a lid and may also include electronic and/or electrical functionality which is controlled in accordance with the open or closed position of the lid detected by a switch (Fig. 1; [0031-0037]; a processor can be considered an electronic component; closing the case lid is considered equivalent to closing the case). One ordinarily skilled in the art, upon reading Schennum disclosure, would understand that it is possible to associate and activate various case component functions based upon a trigger condition such as receiving information regarding whether the case/case lid opens or closes.
Though Schennum does not explicitly state that the electrical functionality is disablement of the case component, it should be noted that Memari already discloses an electronic component (i.e., the processor) and that is able to send data regarding the opening and closing of the case to a secondary electronic (i.e., smartphone), wherein said secondary electronic can also send data back with instructions to unlock/lock the device (i.e., the electronic functionality of the case).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the case and processor disclosed by Memari to be capable of detecting and sending the case opening/closing information to a secondary user device, and controlling an electrical function of the case (i.e., locking/unlocking) based on instructions from the user device in response to the open/closed case information as disclosed by Schennum, as this involves applying a known teaching of signal transmission response triggers to a similar device, to predictably yield a case that is capable of sending open/closed data to a secondary user device, and receiving operation instructions (i.e., unlock/lock instructions) from said user device in accordance to the received data.
Regarding Claim 2, Memari further discloses a locking mechanism for preventing the case from being opened in response to an instruction from the user’s smartphone device [0731-0732].
Regarding Claim 3, Memari further discloses a control module (i.e., processor) ([0513]; controller and processor are considered equivalent within the disclosure).
Regarding Claim 4, Memari discloses the case can be disabled (i.e., deactivated) in response to an instruction from the user’s smartphone device ([0513, 0731-0732]; the processor is disclosed to be equivalent to a controller; since the processor manages and controls the data received from the user’s device, it is implied that the disablement is being handled by the processor/controller as it receives said disablement signals).
Regarding Claim 5, Memari further discloses the case will only communicate and exchange data with an authorized (i.e., paired) user’s smartphone device ([0513, 0733]; the processor is disclosed to be equivalent to a controller; since the processor manages and controls the data received from the user’s device, that the device authorization/pairing is being handled by the processor/controller as it receives said authorization/pairing signals).
Regarding Claims 6, it should be noted that the inclusion of material or article worked
upon does not impart patentability to the claims, and that inclusion of the article formed within
the body of an apparatus claim does not, without more, make the claim patentable (see MPEP
§ 2115).
In this case, the claims are directed to a case which is intended to be used with an aerosol delivery device. Since the claim provides limitations (i.e., non-combustible aerosol provision device) that work upon a separate article (i.e., the aerosol delivery device) that is intended to be used with the case that is being claimed, it does not further limit the claims made to the case. Therefore, the claim is not patentable.
Regarding Claim 7, Memari further discloses an electronic cigarette/e-cigarette PV (i.e., aerosol delivery device) (Figs. 6-7; [0321-0322]).
Regarding Claims 8 and 9, it should be noted that the inclusion of material or article worked
upon does not impart patentability to the claims, and that inclusion of the article formed within
the body of an apparatus claim does not, without more, make the claim patentable (see MPEP
§ 2115).
In this case, the claims are directed to a case which is intended to be used with an aerosol delivery device. Since the claim provides limitations (i.e., aerosolisable material)
that work upon a separate article (i.e., the aerosol delivery device) that is intended to be used with the case that is being claimed, it does not further limit the claims made to the case. Therefore, the claim is not patentable.
Regarding Claims 10, it should be noted that the inclusion of material or article worked
upon does not impart patentability to the claims, and that inclusion of the article formed within
the body of an apparatus claim does not, without more, make the claim patentable (see MPEP
§ 2115).
In this case, the claims are directed to a case which is intended to be used with an aerosol delivery device. Since the claim provides limitations (i.e., tobacco heating system)
that work upon a separate article (i.e., the aerosol delivery device) that is intended to be used with the case that is being claimed, it does not further limit the claims made to the case. Therefore, the claim is not patentable.
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 Vu P Pham whose telephone number is (703)756-4515. The examiner can normally be reached M-Th (7:30AM-4:00PM EST).
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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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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755