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 with traverse of Species-II in the reply filed on 9-1-2026 is acknowledged. The grounds of traversal (pg2, para1 to pg3, para3) are persuasive. Figures 2 and 3 are not considered to be separate species. The restriction requirement mailed 7-1-26 is withdrawn.
Specification
(a)The disclosure is objected to because of the following informalities:
●last two lines (pg1) refer to claims 1 and 13 which may not be the correct claim
numbers should the application issue (suggestion: delete “1 and 13”)
●page 4 recites “250o” (Ln8) and “45o” (Ln11) -- but lacks a temperature scale
●“FIG s” (Ln21) should be amended to read “FIGs”.
(b)The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. With respect to claim 15, “controller” is not recited in the specification. Correction is required. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
Claim Objections
Claim(s) 13 is/are objected to because of the following informalities: “the” should be inserted before “thermochromic” (Ln3). Appropriate correction is required.
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:
(A) 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;
(B) 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
(C) 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 limitation(s) is/are:
●heat transfer structure (transfers heat) in claims 1, 5, 6, 7, 8, 13, and 16.
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 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.
Claim(s) 1-16 is/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.
Claim 1 is considered to be indefinite in that the antecedent of “the longitudinal direction” (Lns7-8) is lacking or the antecedent is unclear. Claim 1 previously recites two longitudinal directions: that of the thermochromic material (Lns2-3) and that of the heat transfer structure (Lns4-5). Does “the longitudinal direction” (Lns7-8) refer to that of the thermochromic material or that of the heat transfer structure (which is “substantially” the same longitudinal direction of the thermochromic material)? Also, see the same in claims 7, 10, and 12.
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.
Claim(s) 1-3 and 8-15 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Batista (WO 2017/186477 A1).
Claims 1-3 and 8-15, Batista teaches an aerosol generating device 100 having a thermochromic material at the segments 96 of the segmented visual feedback device 94. The thermochromic material is visible from outside the device 100 by way of the transparent window 102. The thermochromic material extends (1) in a direction along the device 100 and (2) in a direction across the device 100. The device 100 comprises a heat transfer structure comprising at least the array 30 of the heaters 22 and the walls of the cavity 14 (see first Fig8 annotated below). The heat transfer structure is inside the device 100 -- and is located relative (near/thereunder/overlaps with location of the thermochromic material) to the thermochromic material of the segments 96. The heat transfer structure extends along the same directions as the thermochromic material. The heat transfer structure transfers heat from the heaters 22 to the plurality of discrete aerosol-forming substrates 64 while changing the color of the thermochromic material. With respect to the claim limitation that “a thermal resistance of the heat transfer structure increases in the longitudinal direction”: a thermal resistance of the wall of the cavity 14 (for example, see second Figure 8 annotated below) is higher (increased at the mouthpiece end of the device 100; “mouthpiece 18”: pg13 Ln20 (claim 2)) than a thermal resistance of the designated heaters 22 as shown in the second Figure 8 annotated below (for example) -- in that the housing 12 is safely held in the user’s hand without burning the skin whereas the heaters 22 would burn the skin (see Fig2 Fig7 Fig8) (see pg13 Lns17-28; pg14 Lns12-26; pg15 Ln24 to pg16 Ln17).
First Figure 8
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Second Figure 8
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Claim 1, with respect to claimed heat transfer structure, 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. The instant specification teaches a structure for the heat transfer structure to perform the function. Batista teaches a structure for the heat transfer structure to perform the same function. Batista is thus considered to meet this limitation of the claim.
Claim 3, the thermochromic material is filled in at least one recess formed on a surface of the device 100 (see Fig8 annotated below).
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The claim limitation of “is filled” is written as a method limitation and is not considered to provide a structural limitation to the claimed aerosol generating device. How the thermochromic material is applied or provided in the recess (by filling) does not changed the structure of the thermochromic material.
Claim 8, the heat transfer structure is adapted to be heated by an electrical resistance (pg7 Ln17-29).
Claim 8, with respect to claimed heat transfer structure, 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. The instant specification teaches a structure for the heat transfer structure to perform the function. Batista teaches a structure for the heat transfer structure to perform the same function. Batista is thus considered to meet this limitation of the claim.
Claim 9, the thermochromic material is provided in at least one portion of a surface of the device (i.e. the surface the array 30 and the surface of the recess where the array 30 is positioned).
Claim 10, the heat transfer structure comprises at least the array 30 of the heaters 22 and the walls of the cavity 14 (see first Fig8 annotated below). The material of heaters 22 is different from the material of the wall of the cavity 14. The content of these material changes in the longitudinal direction in that the heaters 22 are of one material at the right end of the device 100 and the wall is of
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Claims 11-12, the different materials are provided with at least one step and at least two projections having different thicknesses measured in the longitudinal direction. See Figure 8 annotated below. Note the thickness of the projections are different.
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Claim 13, Batista teaches an aerosol generating device 100, and a method, having a thermochromic material at the segments 96 of the segmented visual feedback device 94. The thermochromic material is visible from outside the device 100 by way of the transparent window 102. The thermochromic material extends (1) in a direction along the device 100 and (2) in a direction across the device 100. The device 100 comprises a heat transfer structure comprising at least the array 30 of the heaters 22 and the walls of the cavity 14 (see first Fig8 annotated below). The heat transfer structure is inside the device 100 -- and is located relative (near/thereunder/overlaps with location of the thermochromic material) to the thermochromic material of the segments 96. The heat transfer structure extends along the same directions as the thermochromic material. The heat transfer structure transfers heat from the heaters 22 to the plurality of discrete aerosol-forming substrates 64 while changing the color of the thermochromic material (indicating an operational state).
The heaters 22 are activated in groups in succession sequentially. A thermal resistance of the wall of the cavity 14 (for example, see second Figure 8 annotated below) is higher (increased at the mouthpiece end of the device 100; “mouthpiece 18”: pg13 Ln20) than a thermal resistance of the designated heaters 22 as shown in the second Figure 8 annotated below (for example) -- in that the housing 12 is safely held in the user’s hand without burning the skin whereas the heaters 22 would burn the skin. Viewing the device 100 (for example, in Figure 8) -- each thermochromic material at each of the segments 96 has a heated thermochromic material before itself in succession from right to left. The thermal resistance at the wall ends the array of the thermochromic material such that the thermochromic material closest to the wall does not have one before itself (see Fig2 Fig7 Fig8) (see pg13 Lns17-28; pg13 L34 to pg14 Ln26; pg15 Ln24 to pg16 Ln17).
First Figure 8
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Second Figure 8
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Claim 13, with respect to claimed heat transfer structure, 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. The instant specification teaches a structure for the heat transfer structure to perform the function. Batista teaches a structure for the heat transfer structure to perform the same function. Batista is thus considered to meet this limitation of the claim.
Claim 14, heat is transferred to the thermochromic material from an electrical resistance of the heaters 22 (pg7 Lns17-29; pg13 Lns17-28; pg16 Lns10-16).
Claim 15, the electrical resistance is controlled by a controller 42 (abstract).
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(s) 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Batista.
Claims 5 and 16, with respect to the heat transfer structure reducing a temperature by at least 75% (claim 5) and reduce a temperature by a maximum of 90% (claim 16), the aerosol delivery device 100 has the inside temperature and the temperature at the surface contacted by the user -- Batista does not recite the temperature percent difference between the two (at least 75%; maximum of 90%). However, the temperature percent difference between the inside temperature and the surface temperature, which one would consider providing, is a function of, among other variables, the particular consumable material in the device, the dimensions of the device, the materials of the heat transfer structure, and the type of heater. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the temperature percent difference between the inside temperature and the surface temperature, to which one skilled in the art would consider providing, based on known variables, such as those listed; and thus, the claimed temperature percent difference cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). Accordingly, Batista teaches the general conditions of the claim in the prior art. “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Claims 5 and 16, with respect to claimed heat transfer structure, 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. The instant specification teaches a structure for the heat transfer structure to perform the function. Batista teaches a structure for the heat transfer structure to perform the same function. Batista is thus considered to meet this limitation of the claim.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Batista, as applied to claims 1-3 and 8-15 above, and further in view of Park (RU-2681600-C1).
Claim 4, Batista teaches that the thermochromic material is a thermochromic dye -- using a Leuco dye (pg11 L32 to pg12 Ln6). Batista does not teach the form comprising the dye, i.e. in paint form.
Park teaches a printed material on a package with a heat-sensitive paint 120 which acts as a temperature indicator; and, the paint includes Leuco dye which changes the color of the paint in response to temperature. Park teaches that a Leuco dye is functional, when used in a paint form, for a heat-sensitive temperature indicator (pg3 Lns12-17; pg4 Lns30-32; pg5 Lns30-38).
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 Batista that the form which contains the thermochromic dye is a paint form in that such as conventional and well-known in the art of heat-sensitive temperature indicator (as Park teaches) -- where successful results have been demonstrated (by Park).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Batista, as applied to claims 1-3 and 8-15 above, and further in view of Yamaguchi (WO 2020/053009 A1)
Claim 6-7, Batista does not teach using an oven for heating. However, ovens are a conventional and well-known means for heating in the art of personal aerosol delivery device as demonstrated by Yamaguchi; and, 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 Batista an over for heating where it is obvious to replace one type of heater (electrical) with another art recognized alternative heater (oven).
Claims 6-7, with respect to the relative sizes between the thermochromic material, heat transfer structure, and oven, the relative sizes are a function of, among other variables, the particular consumable material in the device, the overall size of the device, the material making up each structure, and operating temperatures. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the relative sizes of the thermochromic material, heat transfer structure, and oven based on known variables, such as those listed; and thus, the relative sizes cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). Accordingly, Batista teaches the general conditions of the claim in the prior art. “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Claims 6-7, with respect to claimed heat transfer structure, 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. The instant specification teaches a structure for the heat transfer structure to perform the function. Batista teaches a structure for the heat transfer structure to perform the same function. Batista is thus considered to meet this limitation of the claim.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
●Joyetech discusses the use of thermochromic finishes on the outside a smoking pod which responds to environmental temperatures -- the instant application discusses thermochromic material, of an aerosol-generating device, which responds to temperatures in the device;
●Dabbing-Warehouse discusses using thermochromic material, in a banger, which changes color as the temperature of the banger increases -- and is used to determine when to start using the banger -- the instant application discusses thermochromic material, of an aerosol-generating device, which changes color as the temperature increases -- and is used to determine when to start using the device;
●Carstickers discusses using stickers on a vaping device which is visible from outside the device -- the instant application uses a thermochromic material with an aerosol-generating device where the material is visible from outside the device;
●Applied-Energy discusses thermochromic temperature sensors (Abstract) which can be used in a variety of different area such as thermal regulation clothing, intelligent textiles, wearable temperature sensors, and food and medicine packaging (pg28) -- the instant application uses the thermochromic material as a measure of temperature;
●Phillips teaches a thermochromic material on the outside of a smoking apparatus which indicates when a target temperature has been reaches and inhalation may begin (para119) -- the instant application uses the thermochromic material as a measure of temperature to determine when to begin inhalation;
●Rogan teaches a smoking consumable having a thermochromic material thereon to share information to the user -- the instant application uses the thermochromic material to share information to the user.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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