DETAILED ACTION
Contents
I. Notice of Pre-AIA or AIA Status 4
II. Priority 4
III. Pertinent Prosecution History 5
IV. Claim Status 5
V. Reissue Requirements 6
VI. Information Disclosure Statement(s) 7
VII. Claim Interpretation 7
A. Lexicographic Definitions 8
B. 35 U.S.C § 112 6th Paragraph 8
(1) Functional Phrase – “Control System I” 9
(3) Functional Phrase – “Control System III” 15
(4) Functional Phrase – “Control System IV” 17
VIII. Double Patenting 20
A. U.S. Patent No. 11,602,019 21
B. U.S. Application No. 17/306,192 27
C. U.S. Application No. 18/178,838 33
IX. Claim Rejections – 35 U.S.C. § 103 39
A. Claims 1, 6, 7, 9, 12 and 13 are rejected under 35 U.S.C. 103 as obvious over Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”) in view of Thorens et al. (European Publication No. EP 2399636 A1) (“Thorens”) and Jacobson et al. (U.S. Publication No. 2009/0199635) (“Jacobson”). 40
B. Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”) in view of Thorens et al. (European Publication No. EP 2399636 A1) (“Thorens”) and Jacobson et al. (U.S. Publication No. 2009/0199635) (“Jacobson”) as applied to claims 1, 6, 7, 9, 12 and 13 above, and further in view of Hingley et al. (U.S. Patent No. 11,093,397) (“Hingley”). 62
C. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”) in view of Thorens et al. (European Publication No. EP 2399636 A1) (“Thorens”) and Jacobson et al. (U.S. Publication No. 2009/0199635) (“Jacobson”) as applied to claims 1, 6, 7, 9, 12 and 13 above, and further in view of Sabet (U.S. Publication No. 2016/0345628) and Tucker et al. (U.S. Publication No. 2013/0192615) (“Tucker”). 66
D. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”) in view of Thorens et al. (European Publication No. EP 2399636 A1) (“Thorens”) and Jacobson et al. (U.S. Publication No. 2009/0199635) (“Jacobson”) as applied to claims 1, 6, 7, 9, 12 and 13 above, and further in view of Livingston et al. (U.S. Publication No. 2003/0000303) (“Livingston”). 68
E. Claim 11 is rejected under 35 U.S.C. 103 as obvious over Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”) in view of Tucker et al. (U.S. Publication No. 2013/0192615) (“Tucker”) and Jacobson et al. (U.S. Publication No. 2009/0199635) (“Jacobson”). 69
X. Response to Arguments 76
A. Specification Objection(s) 76
B. Drawings Objection(s) 77
C. Claim Interpretation 77
(1) 35 U.S.C § 112 6th Paragraph 77
D. Double Patenting 80
E. 35 U.S.C. § 103 Rejections 81
(1) Calculate Surface Area 81
(2) Other Dependent Claims 90
XI. Conclusion 91
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 .
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.
Priority
Applicant filed the instant reissue application 18/318,196 (“‘196 Reissue Application”) on 16 May 2023 for U.S. Application No. 15/429,726 (“‘726 Application”), filed 30 January 2018, now U.S. Patent No. 11,006,668 (“‘668 Patent”), issued 10 February 2017, which is a continuation of PCT Application No. PCT/EP2017/052902 (“‘902 PCT Application"), filed 09 February 2017, which claims foreign priority to European Application No. EP 16155565 (“ ‘565 EP Application”), filed 12 February 2016.
Thus, the Examiner concludes that for examination purposes the instant ‘196 Reissue Application has an effective filing data of 12 February 2016, which is the filing date of the ‘565 EP Application.
Pertinent Prosecution History
As set forth supra, Applicant filed the application for the instant ‘196 Reissue Application on 16 May 2023. The Examiner finds that the instant ‘196 Reissue Application included no Amendments to the Specification, nor Claims.
On 02 February 2024, Applicant filed a Response to a Notice to File Missing Parts which included an Oath/Declaration (“Feb 2024 Oath/Declaration”).
The Office issued a most recent Non-Final Office action on 16 September 2025 (“Sept 2025 Non-Final Office Action”). In particular, the Sept 2025 Non-Final Office Action provided rejections for claims 1-13 (“Rejected Claims”) under 35 U.S.C. §§ 103, 112 and Double Patenting.1
On 16 December 2025, Applicant filed an Response to Non-Final Office Action. (“Dec 2025 Applicant Response”). The Dec 2025 Applicant Response included Remarks; a specification amendment (“Dec 2025 Spec Amendment”); and a claim amendment (“Dec 2025 Claim Amendment”). The Dec 2025 Claim Amendment comprises: original claims 1 and 3-13; and canceled2 original claim 2.
Claim Status
The Examiner finds that the claim status in the instant ‘196 Reissue Application is as follows:
Claim(s) 1 and 3-13 (Original)
Claim(s) 2 (Original and canceled)
Thus, the Examiner concludes that claims 1 and 3-13 are pending in the instant ‘196 Reissue Application. Claims 1 and 3-13 are examined (“Examined Claims”).
Reissue Requirements
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘668 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, post-grant proceedings and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
The Examiner notes that Amendment practice for Reissue Applications is NOT the same as for non-provisional applications. See MPEP §§ 1413 and 1453. Reissue application amendments must comply with 37 CFR 1.173, while non-provisional application amendments must comply with 37 CFR 1.121. Particularly,
Manner of making amendments under 37 CFR 1.173:
All markings (underlining and bracketing) are made relative to the original patent text, 37 CFR 1.173(g) (and not relative to the prior amendment).
For amendments to the abstract, specification and claims, the deleted matter must be enclosed in brackets, and the added matter must be underlined. See 37 CFR 1.173(d).
For amendments to the drawings, any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings. See 37 CFR 1.173(d)(3).
The Examiner further notes that all amendments to the instant ‘196 Reissue Application must comply with 37 CFR 1.173(b)-(g).
Information Disclosure Statement(s)
Applicant's Information Disclosure Statements: filed on 16 December 2025 (“Dec 2025 IDS”); and filed on 05 February 2026 (“Feb 2026 IDS II”) have been received, considered and entered into the record.
Claim Interpretation
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP § 2111.01(II). Therefore, unless one of the exceptions applies below, Examiners will interpret the limitations of the pending and examined claims using the broadest reasonable interpretation.
Lexicographic Definitions
A first exception to the prohibition of reading limitations from the specification into the claims is when the Applicant for patent has provided a lexicographic definition for the term. (See MPEP § 2111.01(IV)). After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiner, the Examiner finds that he is unable to locate any lexicographic definitions (either express or implied) with reasonable clarity, deliberateness, and precision. Because the Examiner is unable to locate any lexicographic definitions with reasonable clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his/her own lexicographer. (Id.)
35 U.S.C § 112 6th Paragraph
A second exception to the prohibition of reading limitations from the specification into the claims is when the claimed feature is written as a means-plus-function or a step-plus-function. See 35 U.S.C. § 112(6th ¶) and MPEP §§ 2181-2183. As noted in MPEP § 2181, a three prong test is used to determine the scope of a means-plus-function or step-plus-function limitation in a claim:
(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"
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The Examiner finds herein that claims 1 and 3-13 include one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. §112 (6th ¶) because the claim limitations 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. Each such limitation will be discussed in turn as follows:
Functional Phrase – “Control System I”
A first means-plus-function phrase is recited in claims 1, 11 and 12 (and included in each of dependent claims 3-10) which recite “control system …” or hereinafter “Functional Phrase 1” or “FP1.” The Examiner determines herein that FP1 meets the three prong test and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(6th ¶).
The Examiner finds that claim 1 expressly recites:
a control system configured to:
measure an electrical quantity between the first electrode and the second electrode,
calculate a surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion based on the measured electrical quantity, and
determine an amount of the aerosol-forming substrate held in the storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion
[emphasis added]; and claims 11 and 12 expressly recite:
a control system configured to:
measure an electrical quantity between the first electrode and the second electrode,
calculate a surface area of the first electrode in contact with an aerosol-forming substrate stored in the liquid storage portion based on the measured electrical quantity , and
determine an amount of the aerosol-forming substrate held in the liquid storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate stored in the liquid storage portion
[emphasis added].
i. 3-Prong Analysis: Prong (A)
FP1 meets invocation prong (A) because “means ... for” type language is recited. The Examiner first finds that “system” is a generic placeholder or nonce term equivalent to “means” because while the term “system” does imply some structure, it does not convey any specific structure and/or is an ambiguous structure. Moreover, the Examiner further notes that the modifier “control” does not impart or disclose any structure for the phrase in light of the phrase imparting the same functionality. Rather, the Examiner finds that the ‘668 Patent uses this same phrase to describe several different control systems.
Furthermore, the Examiner finds there is no disclosure or suggestion from the prior art that a system is a sufficient and definite structure to perform the functions recited in FP1. For example, U.S. Publication No. 2005/022970 illustrates a control unit configured to measure an electrical quantity, calculate a surface area based on the measured electrical quantity and determine the level of fluid in a container, having different and distinct operation from any of the operations of the ‘668 Patent. Similarly, U.S. Publication No. 2009/0199635 illustrates a processor configured differently to measure an electrical quantity, calculate a surface area based on the measured electrical quantity and determine the level of fluid in a storage container, having different and distinct operation from any of the operations of the ‘668 Patent. Rather more than a simple system would be required to perform the function recited in FP1.
Accordingly, the Examiner finds nothing in the specification, prosecution history or the prior art to construe “control system …” in FP1 as the name of a sufficiently definite structure for performing the functions recited in FP1 so as to take the overall claim limitation out of the ambit of §112(6th ¶). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015).
In light of the above, the Examiner concludes that the term “control system …” is a generic placeholder having no specific structure associated therewith. Because “control system …” is merely a generic placeholder having no specific structure associated therewith, the Examiner concludes that FP1 meets invocation Prong (A).
ii. 3-Prong Analysis: Prong (B)
Based upon a review of FP1, the Examiner finds that claimed function(s) are:
[M]easur[ing] an electrical quantity between the first electrode and the second electrode;
[C]alculat[ing] a surface area of the first electrode in contact with the aerosol-forming substrate of the liquid storage/storage portion based on the measured electrical quantity; and
[D]etermin[ing] an amount of the aerosol-forming substrate held in the liquid storage/storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate of the liquid storage/storage portion.
Because FP1 recites the above recited functions, the Examiner concludes that FP1 meets Invocation Prong (B).
iii. 3-Prong Analysis: Prong (C)
Based upon a review of the entire Functional Phrase 1, the Examiner finds that Functional Phrase 1 does not contain sufficient structure for performing the entire claimed function that is set forth within Functional Phrase 1. In fact, the Examiner finds that Functional Phrase 1 recites very little structure (if any) for performing the claimed function.
Because Functional Phrase 1 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that Functional Phrase 1 meets invocation Prong (C).
Because Functional Phrase 1 meets the 3-prong analysis as set forth in MPEP § 2181 I., the Examiner concludes that Functional Phrase 1 invokes 35 U.S.C § 112 6th paragraph.
Corresponding structure for Functional Phrase 1
Once a claimed phrase invokes 35 U.S.C. § 112 6th paragraph, the next step is to determine the corresponding structure. (MPEP § 2181 II). In order to satisfy the requirements of 35 U.S.C. § 112, second paragraph, there must be identified in the applications’ disclosure a single structure and/or algorithm which performs the function of FP1.
The Examiner has carefully reviewed the original disclosure to determine the corresponding structure for FP1. In reviewing the original disclosure, the Examiner finds that the ‘668 Patent discloses,
terms such as “processing” or “computing” or “calculating” or “determining” or “displaying” or the like, refer to the action and processes of a computer system, or similar electronic computing device, that manipulates and transforms data represented as physical, electronic quantities within the computer system's registers and memories into other data similarly represented as physical quantities within the computer system memories or registers or other such information storage, transmission or display devices.
(‘668 Patent at c.4, ll.16-26). In addition, the Examiner finds that at least some portions of the embodiments may be implemented hardware, software, firmware, …, or combinations thereof; as code or code segments on computer readable mediums with code being procedures, functions, etc. implemented as instructions. (Id. at c.4, ll.39-60; also see Figure 12).
In the prosecution of the ‘726 Application, Applicant direct the original examiner to c.33, ll.12-38 of the ‘668 Patent for support of the claimed functionality above.3 With this guidance, the Examiner finds that the ‘668 Patent additionally states,
In at least one example embodiment, an aerosol-generating system may comprise a sensor comprising capacitor having first and second capacitor plates. The first and second capacitor plates may be substantially planar and have a surface area A. The second capacitor plate may be arranged substantially parallel to the first capacitor plate, and at a separation d from the first capacitor plate. The entire liquid storage portion may be arranged between the first and second capacitor plates (see FIG. 9).
The control system may be configured to notionally divide the capacitor into two capacitors connected in parallel, a first capacitor, having a capacitance C1 and a second capacitor, having a capacitance C2. This may notionally divide the liquid storage portion into two sections, a first section filled with liquid aerosol-forming substrate, arranged between the capacitor plates of the first capacitor, and a second section filled with air, arranged between the capacitor plates of the second capacitor.
The measured capacitance C is the total capacitance of the first and second capacitors. This is calculated by summing the capacitances C1, C2 of the first and second capacitors. By summing the capacitances C1, C2 of the first and second capacitors, the total capacitance C may be calculated, as shown in Equation 9.
C
=
ε
0
d
(
k
1
A
1
+
k
2
A
2
) Equation 9
As the liquid aerosol-forming substrate is consumed from the liquid storage portion, the surface area A1 of the first capacitor decreases and the surface area A2 of the second capacitor increases. The total surface area A of the first and second capacitor plates remains constant, and is the sum of the surface areas of the first and second capacitors. Equation 9 may be rearranged to determine the surface area A1 of the first capacitor, which may be calculated using the known values for the total surface area A of the capacitor, the separation d between the first and second capacitor plates, the permittivity of the liquid aerosol-forming substrate k1 and the permittivity of air k2. The volume V1 of the first section, which is the volume of liquid aerosol-forming substrate held in the liquid storage portion, may be determined by multiplying the surface area A1 of the first section and the separation d between the capacitor plates.
(Id. at c.32, ll.61 – c.336, l.38).
From this perspective, the Examiner finds that: (1) the measured electrical quantity between the first and second electrodes must be capacitance; (2) the calculation of the surface area is based upon capacitance derived from the first electrode in contact with the aerosol-forming substrate and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determination of the amount of the aerosol-forming substrate (e.g., volume) is based upon the determined surface area of the first electrode in contact with the aerosol-forming substrate and the distance between the electrodes.
Thus, in light of the portions of the ‘668 Patent cited above, the Examiner concludes the corresponding structure for performing the claimed functions of Functional Phrase I as simply hardware, software, or combinations thereof that provide for: (1) measuring the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with the aerosol-forming substrate and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determining the amount of the aerosol-forming substrate in the storage portion based upon the calculated surface area and the distance between the electrodes, as described above, or its equivalent.
Functional Phrase – “Control System III”
A third means-plus-function phrase is recited in claim 3 which recite “control system …” or hereinafter “Functional Phrase 3” or “FP3.” The Examiner determines herein that FP3 does not meet the three prong test and thus will be not interpreted as a means-plus-function limitation under 35 U.S.C. §112(6th ¶).
The Examiner finds that claim 3 expressly recites:
wherein the control system configured to:
compare the determined amount of the aerosol-forming substrate to a threshold amount stored in the control system and prevent operation of the aerosol-generator if the determined amount of the aerosol-forming substrate is below the threshold amount
[emphasis added].
i. 3-Prong Analysis: Prong (A)
FP3 meets invocation prong (A) because “means ... for” type language is recited. The Examiner first finds that “system” is a generic placeholder or nonce term equivalent to “means” because the term “system” does not convey any particular structure. This is evidenced by Applicant use of this phrase in Functional Phrase 1 above. (See § VII.B.(1).i, supra). The Examiner further notes that the phrase “control” does not impart or disclose any structure for the phrase in light of the phrase imparting the same functionality. Rather, the Examiner finds that the ‘668 Patent uses this same phrase to describe several different control systems.
Furthermore, as set forth above, the Examiner finds there is no disclosure or suggestion from the prior art that a system is a sufficient and definite structure to perform the functions recited in FP3. (Id.) Rather more than a simple system would be required to perform the function recited in FP3.
Accordingly, the Examiner finds nothing in the specification, prosecution history or the prior art to construe “control system …” in FP3 as the name of a sufficiently definite structure for performing the functions recited in FP3 so as to take the overall claim limitation out of the ambit of §112(6th ¶). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015).
In light of the above, the Examiner concludes that the term “control system …” is a generic placeholder having no specific structure associated therewith. Because “control system …” is merely a generic placeholder having no specific structure associated therewith, the Examiner concludes that FP3 meets invocation Prong (A).
ii. 3-Prong Analysis: Prong (B)
Based upon a review of FP3, the Examiner finds that claimed function(s) are:
[C]ompar[ing] the determined amount of the aerosol-forming substrate to a threshold amount stored in the control system and prevent operation of the aerosol-generator if the determined amount of the aerosol-forming substrate is below the threshold amount.
Because FP3 recites the above recited functions, the Examiner concludes that FP3 meets Invocation Prong (B).
iii. 3-Prong Analysis: Prong (C)
Based upon a review of the entire Functional Phrase 3, the Examiner finds that Functional Phrase 3 does contain sufficient structure for performing the entire claimed function that is set forth within Functional Phrase 3. The Examiner finds that FP3 includes the algorithm of “compar[ing] the determined amount of the aerosol-forming substrate to a threshold amount stored in the control system and prevent operation of the aerosol-generator if the determined amount of the aerosol-forming substrate is below the threshold amount.” In examination of the ‘668 Patent, the Examiner finds that the ‘668 Patent discloses comparing the determined amount of liquid aerosol-forming substrate to threshold values and if less than the threshold values, provide: (1) a control signal to the aerosol generator to prevent operation; or (2) prevent power from being supplied to the aerosol generator. (‘668 Patent at c.7, l.36 – c.8, l.2). From this perspective, the Examiner finds that the further inclusion of the structure/algorithm above provides sufficient structure for performing the entire Function of Functional Phrase 3.
Because the Functional Phrase does contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP3 does not meet Invocation Prong (C).
In conclusion, because FP3 does not meet the three prong analysis set forth in MPEP §2181 I, the Examiner concludes that Functional Phrase 3 does not invoke 35 U.S.C. § 112, 6th paragraph.
Functional Phrase – “Control System IV”
A fourth means-plus-function phrase is recited in claim 5 which recite “control system …” or hereinafter “Functional Phrase 4” or “FP4.” The Examiner determines herein that FP4 does not meet the three prong test and thus will be not interpreted as a means-plus-function limitation under 35 U.S.C. §112(6th ¶).
The Examiner finds that claim 5 expressly recites:
wherein the control system configured to:
supply the first electrode and the second electrode with an oscillating measurement signal
[emphasis added].
i. 3-Prong Analysis: Prong (A)
FP4 meets invocation prong (A) because “means ... for” type language is recited. The Examiner first finds that “system” is a generic placeholder or nonce term equivalent to “means” because the term “system” does not convey any particular structure. This is evidenced by Applicant use of this phrase in Functional Phrase 1 above. (See § VII.B.(1).i, supra). The Examiner further notes that the phrase “control” does not impart or disclose any structure for the phrase in light of the phrase imparting the same functionality. Rather, the Examiner finds that the ‘668 Patent uses this same phrase to describe several different control systems.
Furthermore, as set forth above, the Examiner finds there is no disclosure or suggestion from the prior art that a system is a sufficient and definite structure to perform the functions recited in FP4. (Id.) Rather more than a simple system would be required to perform the function recited in FP4.
Accordingly, the Examiner finds nothing in the specification, prosecution history or the prior art to construe “control system …” in FP4 as the name of a sufficiently definite structure for performing the functions recited in FP4 so as to take the overall claim limitation out of the ambit of §112(6th ¶). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015).
In light of the above, the Examiner concludes that the term “control system …” is a generic placeholder having no specific structure associated therewith. Because “control system …” is merely a generic placeholder having no specific structure associated therewith, the Examiner concludes that FP4 meets invocation Prong (A).
ii. 3-Prong Analysis: Prong (B)
Based upon a review of FP4, the Examiner finds that claimed function(s) are:
[S]upply[ing] the first electrode and the second electrode with an oscillating measurement signal .
Because FP4 recites the above recited functions, the Examiner concludes that FP4 meets Invocation Prong (B).
iii. 3-Prong Analysis: Prong (C)
Based upon a review of the entire Functional Phrase 4, the Examiner finds that Functional Phrase 4 does contain sufficient structure for performing the entire claimed function that is set forth within Functional Phrase 4. The Examiner finds that FP4 includes the algorithm of “supply[ing] the first electrode and the second electrode with an oscillating measurement signal.” In examination of the ‘668 Patent, the Examiner finds that the ‘668 Patent discloses simply supplying an oscillating measurement signal to the first and second electrodes at particular known range of frequencies. (‘668 Patent at c.10, l.53 – c.11, l.2). From this perspective, the Examiner finds that the further inclusion of the structure/algorithm above provides sufficient structure for performing the entire Function of Functional Phrase 4.
Because the Functional Phrase does contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP4 does not meet Invocation Prong (C).
In conclusion, because FP4 does not meet the three prong analysis set forth in MPEP §2181 I, the Examiner concludes that Functional Phrase 4 does not invoke 35 U.S.C. § 112, 6th paragraph.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
U.S. Patent No. 11,602,019
Claims 1 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12, respectively, (“‘019 ODP Claim”) of U.S. Patent No. 11,602,019 (“‘019 Patent”) in view of Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”).
Claims of ‘196 Reissue Application Claims of ‘019 Patent
Pending Claim 1:
1. An aerosol-generating system comprising:
a storage portion configured to hold an aerosol-forming substrate, the storage portion in contact with a wick;
a first electrode and a second electrode spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion:
an aerosol-generator including,
at least one aerosol-generating element, the at least one aerosol-generating element including a heater and further including the first electrode, the second electrode, or both the first electrode and the second electrode; and
a control system configured to
measure an electrical quantity between the first electrode and the second electrode,
calculate a surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion based on the measured electrical quantity, and
determine an amount of the aerosol-forming substrate held in the storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion.
Pending Claim 12:
12. An aerosol-generating system comprising:
a liquid storage portion in contact with a wick;
a first electrode; and
a second electrode spaced from the first electrode, at least a portion of the liquid storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the liquid storage portion:
an aerosol-generator including at least one aerosol-generating element, the at least one aerosol-generating element including a heater and at least one of first electrode and the second electrode; and
a control system configured to
measure an electrical quantity between the first electrode and the second electrode,
calculate a surface area of the first electrode in contact with an aerosol-forming substrate of the liquid storage portion based on the measured electrical quantity, and
determine an amount of the aerosol-forming substrate held in the liquid storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate of the liquid storage portion.
Patent Claim 12:
12. An apparatus for generating an aerosol, comprising:
a main unit including,
a power supply; and
a cartridge removably coupled to the main unit, the cartridge including,
a sensor including,
a capacitor, the capacitor including,
a first capacitor plate, and a second capacitor plate,
a storage portion configured to store an aerosol-forming substrate, a permittivity of the storage portion configured to change upon a change of a volume of the aerosol-forming substrate held in the storage portion, the storage portion defining a central air passage, the central air passage extending perpendicular to the first capacitor plate and the second capacitor plate,
a wick in communication with the storage portion and extending perpendicular to the central air passage, such that at least a portion of the wick is between the first capacitor plate and the second capacitor plate,
a vaporizer in the central air passage and surrounding at least a portion of the wick, the sensor configured to measure a capacitance of the capacitor, the measured capacitance relating to a corresponding permittivity of the aerosol-forming substrate held in the storage portion,
a controller configured to, based on the measured capacitance, calculate a remaining amount of the aerosol-forming substrate, and
a memory, the capacitor, the controller, and the memory each included in one of the main unit and the cartridge.
With respect to the limitations of claims 1 and 12, although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the pending claims 1 and 12 are identical or similar and/or covered by the ‘019 ODP Claim. The Examiner finds that claims 1 and 12 of the ‘196 Reissue Application have essentially the same claim requirements as the ‘019 ODP Claim. Moreover, since the ‘019 ODP Claim recites a “controller,” which the Examiner finds is similar to the recited “control system” elements, which: 1) the Examiner deems also invoke 35 U.S.C. § 112, 6th paragraph; and 2) share the same disclosure as the ‘196 Reissue Application, the Examiner finds that the corresponding structures of claims 1 and 12 of the ‘196 Reissue Application and the ‘192 ODP Claim are the same. (Compare § X.B.(1), supra with the ‘019 Patent embodiment at c.5, l.43 – p.6, l.7). In addition, where claims 1 and 12 of the ‘196 Reissue Application and the ‘019 ODP Claim are not exactly the same, the Examiner finds that claims 1 and 12 of the ‘196 Reissue Application would be obvious variants to one of ordinary skill in the art based on engineering expediency of the ‘019 ODP Claim.
The Examiner finds that the ‘019 ODP Claim discloses the limitations, as set forth above, except for specifically calling for the first electrode and the second electrode being spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion.
However, a first electrode and second electrode being spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion is known in the art.
In this regard, the Examiner finds that Kaufman discloses an aerosol-generating system (combination apparatus 1 and insertable smokable material article 5) (Kaufman at Title; Abstract; p.7, l.15 – p.8, l.24; see Figures 1, 2). In examination of annotated Figure 3 of Kaufman below, the Examiner finds that Kaufman discloses a first electrode 12 (i.e., left side) and a second electrode 12 (i.e., right side) spaced form the first electrode 12 (i.e., left side). (Kaufman at p.12, l. 23 – p.13, l.3; see annotated Figure 3 below). In addition, the Examiner finds that Kaufman discloses the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side) being position on the opposite side of the smokable material article 5 with the smokable material article 5 being arranged between the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Kaufman at p.12, l. 15 – p.13, l.3; p.13, ll.15-20; p.16, ll.6-16; p.18, ll.8-11; see annotated Figure 3
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With respect to the first and second electrodes 12 being separate and disconnected from each other, the Examiner finds that Kaufman discloses the first and second electrodes 12 being provided “which in effect provided a pair of ‘plates’ of a capacitor.” ( Kaufman, at p.12, ll.15-32; see Figure 3). In this regard, The Examiner finds that Kaufman states,
[w]hen the smokable material article 5 is inserted into the apparatus 1, it is inserted between the electrodes. As a result the capacitance formed between the electrodes of the apparatus 1 changes.
(Kaufman at p.12, ll.16-18; also see p.12, ll.23-32). From this perspective, the Examiner finds that the first and second electrode 12 are separate since they are referred to as two separate, distinct electrodes and form the two plates of the capacitor. The first electrode 12 (i.e., left side) is disconnected from the second electrode 12 (i.e., right side), in the sense at least of being electrically disconnected from the second electrode 12 (i.e., right side), because this is an inherent feature of a capacitor (since a capacitor is defined as: “(2) An element within a circuit consisting of two conductors, each with an extended surface exposed to that of the other, but separated by a layer of insulating material called the dielectric,” emphasis added).4 In this light, if the two electrodes (“plates”) were not electrically disconnected, then they would not be a pair of conductors separated and by an insulator, and would not form a capacitor; rather, charge would be conducted from one electrode to the other and not through the dielectric. Since Kaufman discloses that the two electrodes act as plates of a capacitor, with the smokable material article 5 being the “dielectric material” between the “plates” such that the material 5 changes the capacitance between the two electrodes, the Examiner finds that the first and second electrodes 12 are electrically disconnected.)
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the first electrode and the second electrode being spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion as described in Kaufman, in the aerosol-generating system of the ‘019 ODP Claim.
A person of ordinary skill in the art would be motivated to incorporate the first electrode and the second electrode being spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion, since it provides a mechanism to provide a capacitive sensor configuration to easily and effective determine whether a smokable material is inserted within the aerosol-generating system. (Kaufman at Abstract; p.12, l. 15 – p.13, l.3; p.13, ll.15-20; p.16, ll.6-16). In other words, such a modification would increase the versatility of the aerosol-generating system, thereby inherently increasing the operational efficiency.
U.S. Application No. 17/306,192
Claims 1 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14, respectively, (“‘192 ODP Claim”) of copending Application No. 17/306,192 (“‘192 Application”) in view of Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”).
Claims of ‘196 Reissue Application Claims of ‘192 Application
Pending Claim 1:
1. An aerosol-generating system comprising:
a storage portion configured to hold an aerosol-forming substrate, the storage portion in contact with a wick;
a first electrode and a second electrode spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion:
an aerosol-generator including,
at least one aerosol-generating element, the at least one aerosol-generating element including a heater and further including the first electrode, the second electrode, or both the first electrode and the second electrode; and
a control system configured to
measure an electrical quantity between the first electrode and the second electrode,
calculate a surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion based on the measured electrical quantity, and
determine an amount of the aerosol-forming substrate held in the storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion.
Pending Claim 12:
12. An aerosol-generating system comprising:
a liquid storage portion in contact with a wick;
a first electrode; and
a second electrode spaced from the first electrode, at least a portion of the liquid storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the liquid storage portion:
an aerosol-generator including at least one aerosol-generating element, the at least one aerosol-generating element including a heater and at least one of first electrode and the second electrode; and
a control system configured to
measure an electrical quantity between the first electrode and the second electrode,
calculate a surface area of the first electrode in contact with an aerosol-forming substrate of the liquid storage portion based on the measured electrical quantity, and
determine an amount of the aerosol-forming substrate held in the liquid storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate of the liquid storage portion.
Application Claim 1:
1. An apparatus for generating an aerosol, comprising:
a housing defining a cavity, the cavity configured to receive a cartridge, the cartridge configured to hold an aerosol-forming substrate, the cartridge including a cartridge housing, the cartridge housing having a first end and a second end, the cartridge housing containing the aerosol-forming substrate, and the cartridge housing including;
a platform of electrically insulating material between the first end of the cartridge housing and the second end of the cartridge housing, the platform forming a portion of the cartridge housing, the platform formed of a flexible, polymer sheet, the flexible, polymer sheet adhered to a surface of the cartridge housing between and entirely spaced from the first end of the cartridge housing and the second end of the cartridge housing, such that the platform conforms to a shape of the cartridge housing, the cartridge housing being cylindrical;
a vaporizer adjacent a first end of the cartridge housing;
a sensor within the cartridge, the sensor including,
a first electrode, and
a second electrode, the first electrode and the second electrode coupled to the platform; and
a control system in the housing, the control system configured to
measure an electrical quantity between the first electrode and the second electrode, the electrical quantity including a capacitance, and
determine an amount of the aerosol-forming substrate held in the cartridge based on the electrical quantity.
Application Claim 14:
14. The apparatus according to claim 1, further comprising:
a wick configured to receive the aerosol-forming substrate from the cartridge;
a heater configured to heat the wick and vaporize the aerosol-forming substrate; and
a power source configured to supply power to the heater;
wherein the control system is further configured to control the supply of power from the power source to the heater based on the amount of the aerosol- forming substrate held in the cartridge.
With respect to the limitations of claims 1 and 12, although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the pending claims 1 and 12 are identical or similar and/or covered by the ‘192 ODP Claim. The Examiner finds that claims 1 and 12 of the ‘196 Reissue Application has essentially the same claim requirements as the ‘192 ODP Claim. Moreover, since the ‘192 ODP Claim similarly recite “control system” elements, which: 1) the Examiner deems also invoke 35 U.S.C. § 112, 6th paragraph; and 2) share the same disclosure as the ‘196 Reissue Application, the Examiner finds that the corresponding structures of claims 1 and 12 of the ‘196 Reissue Application and the ‘192 ODP Claim are the same. In addition, where claims 1 and 12 of the ‘196 Reissue Application and the ‘192 ODP Claim are not exactly the same, the Examiner finds that claims 1 and 12 of the ‘196 Reissue Application would be obvious variants to one of ordinary skill in the art based on engineering expediency of the ‘192 ODP Claim.
The Examiner finds that the ‘192 ODP Claim discloses the limitations, as set forth above, except for specifically calling for the first electrode and the second electrode being spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion.
However, a first electrode and second electrode being spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion is known in the art.
In this regard, the Examiner finds that Kaufman discloses an aerosol-generating system (combination apparatus 1 and insertable smokable material article 5) (Kaufman at Title; Abstract; p.7, l.15 – p.8, l.24; see Figures 1, 2). In examination of annotated Figure 3 of Kaufman below, the Examiner finds that Kaufman discloses a first electrode 12 (i.e., left side) and a second electrode 12 (i.e., right side) spaced form the first electrode 12 (i.e., left side). (Kaufman at p.12, l. 23 – p.13, l.3; see annotated Figure 3 below). In addition, the Examiner finds that Kaufman discloses the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side) being position on the opposite side of the smokable material article 5 with the smokable material article 5 being arranged between the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Kaufman at p.12, l. 15 – p.13, l.3; p.13, ll.15-20; p.16, ll.6-16; p.18, ll.8-11; see annotated Figure 3
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With respect to the first and second electrodes 12 being separate and disconnected from each other, the Examiner finds that Kaufman discloses the first and second electrodes 12 being provided “which in effect provided a pair of ‘plates’ of a capacitor.” ( Kaufman, at p.12, ll.15-32; see Figure 3). In this regard, The Examiner finds that Kaufman states,
[w]hen the smokable material article 5 is inserted into the apparatus 1, it is inserted between the electrodes. As a result the capacitance formed between the electrodes of the apparatus 1 changes.
(Kaufman at p.12, ll.16-18; also see p.12, ll.23-32). From this perspective, the Examiner finds that the first and second electrode 12 are separate since they are referred to as two separate, distinct electrodes and form the two plates of the capacitor. The first electrode 12 (i.e., left side) is disconnected from the second electrode 12 (i.e., right side), in the sense at least of being electrically disconnected from the second electrode 12 (i.e., right side), because this is an inherent feature of a capacitor (since a capacitor is defined as: “(2) An element within a circuit consisting of two conductors, each with an extended surface exposed to that of the other, but separated by a layer of insulating material called the dielectric,” emphasis added).5 In this light, if the two electrodes (“plates”) were not electrically disconnected, then they would not be a pair of conductors separated and by an insulator, and would not form a capacitor; rather, charge would be conducted from one electrode to the other and not through the dielectric. Since Kaufman discloses that the two electrodes act as plates of a capacitor, with the smokable material article 5 being the “dielectric material” between the “plates” such that the material 5 changes the capacitance between the two electrodes, the Examiner finds that the first and second electrodes 12 are electrically disconnected.)
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the first electrode and the second electrode being spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion as described in Kaufman, in the aerosol-generating system of the ‘192 ODP Claim.
A person of ordinary skill in the art would be motivated to incorporate the first electrode and the second electrode being spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion, since it provides a mechanism to provide a capacitive sensor configuration to easily and effective determine whether a smokable material is inserted within the aerosol-generating system. (Kaufman at Abstract; p.12, l. 15 – p.13, l.3; p.13, ll.15-20; p.16, ll.6-16). In other words, such a modification would increase the versatility of the aerosol-generating system, thereby inherently increasing the operational efficiency.
U.S. Application No. 18/178,838
Claims 1 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16, respectively, (“‘838 ODP Claim”) of copending Application No. 18/178,838 (“‘838 Application”) in view of Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”).
Claims of ‘196 Reissue Application Claims of ‘838 Application
Pending Claim 1:
1. An aerosol-generating system comprising:
a storage portion configured to hold an aerosol-forming substrate, the storage portion in contact with a wick;
a first electrode and a second electrode spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion:
an aerosol-generator including,
at least one aerosol-generating element, the at least one aerosol-generating element including a heater and further including the first electrode, the second electrode, or both the first electrode and the second electrode; and
a control system configured to
measure an electrical quantity between the first electrode and the second electrode,
calculate a surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion based on the measured electrical quantity, and
determine an amount of the aerosol-forming substrate held in the storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion.
Pending Claim 12:
12. An aerosol-generating system comprising:
a liquid storage portion in contact with a wick;
a first electrode; and
a second electrode spaced from the first electrode, at least a portion of the liquid storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the liquid storage portion:
an aerosol-generator including at least one aerosol-generating element, the at least one aerosol-generating element including a heater and at least one of first electrode and the second electrode; and
a control system configured to
measure an electrical quantity between the first electrode and the second electrode,
calculate a surface area of the first electrode in contact with an aerosol-forming substrate of the liquid storage portion based on the measured electrical quantity, and
determine an amount of the aerosol-forming substrate held in the liquid storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate of the liquid storage portion.
Application Claim 11:
11. An aerosol-generating system comprising:
a main unit including,
a power supply; and
a cartridge removably coupled to the main unit, the cartridge including,
a capacitor, a first capacitor plate defining a central air passage, and
a second capacitor plate,
a storage portion configured to store an aerosol-forming substrate, the storage portion between the first capacitor plate and the second capacitor plate,
a wick in communication with the storage portion, at least a portion of the wick extending perpendicular to the central air passage and at least a portion of the wick between the first capacitor plate and the second capacitor plate,
a vaporizer in the central air passage and surrounding at least a portion of the wick,
a controller configured to, based on the measured capacitance of the capacitor, calculate a remaining amount of the aerosol-forming substrate, and
a memory, the capacitor, and the controller each included in one of the main unit and the cartridge.
Application Claim 16:
16. The apparatus according to claim 11, further comprising:
a sensor configured to measure a capacitance of the capacitor; and
wherein the controller is configured to determine a volume of the storage portion dependent on an output of the sensor.
With respect to the limitations of claims 1 and 12, although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the pending claims 1 and 12 are identical or similar and/or covered by the ‘838 ODP Claim. The Examiner finds that claims 1 and 12 of the ‘196 Reissue Application have essentially the same claim requirements as the ‘838 ODP Claim. Moreover, since the ‘838 ODP Claim recites a “controller,” which the Examiner finds is similar to the recited “control system” elements, which: 1) the Examiner deems also invoke 35 U.S.C. § 112, 6th paragraph; and 2) share the same disclosure as the ‘196 Reissue Application, the Examiner finds that the corresponding structures of claims 1 and 12 of the ‘196 Reissue Application and the ‘838 ODP Claim are the same. (Compare § X.B.(1), supra with the ‘662 Publication6 embodiment at ¶¶ 0035-0037). In addition, where claims 1 and 12 of the ‘196 Reissue Application and the ‘838 ODP Claim are not exactly the same, the Examiner finds that claims 1 and 12 of the ‘196 Reissue Application would be obvious variants to one of ordinary skill in the art based on engineering expediency of the ‘838 ODP Claim.
The Examiner finds that the ‘838 ODP Claim discloses the limitations, as set forth above, except for specifically calling for the first electrode and the second electrode being spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion.
However, a first electrode and second electrode being spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion is known in the art.
In this regard, the Examiner finds that Kaufman discloses an aerosol-generating system (combination apparatus 1 and insertable smokable material article 5) (Kaufman at Title; Abstract; p.7, l.15 – p.8, l.24; see Figures 1, 2). In examination of annotated Figure 3 of Kaufman below, the Examiner finds that Kaufman discloses a first electrode 12 (i.e., left side) and a second electrode 12 (i.e., right side) spaced form the first electrode 12 (i.e., left side). (Kaufman at p.12, l. 23 – p.13, l.3; see annotated Figure 3 below). In addition, the Examiner finds that Kaufman discloses the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side) being position on the opposite side of the smokable material article 5 with the smokable material article 5 being arranged between the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Kaufman at p.12, l. 15 – p.13, l.3; p.13, ll.15-20; p.16, ll.6-16; p.18, ll.8-11; see annotated Figure 3
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With respect to the first and second electrodes 12 being separate and disconnected from each other, the Examiner finds that Kaufman discloses the first and second electrodes 12 being provided “which in effect provided a pair of ‘plates’ of a capacitor.” ( Kaufman, at p.12, ll.15-32; see Figure 3). In this regard, The Examiner finds that Kaufman states,
[w]hen the smokable material article 5 is inserted into the apparatus 1, it is inserted between the electrodes. As a result the capacitance formed between the electrodes of the apparatus 1 changes.
(Kaufman at p.12, ll.16-18; also see p.12, ll.23-32). From this perspective, the Examiner finds that the first and second electrode 12 are separate since they are referred to as two separate, distinct electrodes and form the two plates of the capacitor. The first electrode 12 (i.e., left side) is disconnected from the second electrode 12 (i.e., right side), in the sense at least of being electrically disconnected from the second electrode 12 (i.e., right side), because this is an inherent feature of a capacitor (since a capacitor is defined as: “(2) An element within a circuit consisting of two conductors, each with an extended surface exposed to that of the other, but separated by a layer of insulating material called the dielectric,” emphasis added).7 In this light, if the two electrodes (“plates”) were not electrically disconnected, then they would not be a pair of conductors separated and by an insulator, and would not form a capacitor; rather, charge would be conducted from one electrode to the other and not through the dielectric. Since Kaufman discloses that the two electrodes act as plates of a capacitor, with the smokable material article 5 being the “dielectric material” between the “plates” such that the material 5 changes the capacitance between the two electrodes, the Examiner finds that the first and second electrodes 12 are electrically disconnected.)
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the first electrode and the second electrode being spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion as described in Kaufman, in the aerosol-generating system of the ‘838 ODP Claim.
A person of ordinary skill in the art would be motivated to incorporate the first electrode and the second electrode being spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion, since it provides a mechanism to provide a capacitive sensor configuration to easily and effective determine whether a smokable material is inserted within the aerosol-generating system. (Kaufman at Abstract; p.12, l. 15 – p.13, l.3; p.13, ll.15-20; p.16, ll.6-16). In other words, such a modification would increase the versatility of the aerosol-generating system, thereby inherently increasing the operational efficiency.
Claim Rejections – 35 U.S.C. § 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.
Claims 1, 6, 7, 9, 12 and 13 are rejected under 35 U.S.C. 103 as obvious over Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”) in view of Thorens et al. (European Publication No. EP 2399636 A1) (“Thorens”) and Jacobson et al. (U.S. Publication No. 2009/0199635) (“Jacobson”).
With respect to the limitations of claim 1, and
[1] [a]n aerosol-generating system comprising:
In this regard, the Examiner finds that Kaufman discloses an aerosol-generating system (combination apparatus 1 and insertable smokable material article 5) (Kaufman at Title; Abstract; p.7, l.15 – p.8, l.24; see Figures 1, 2).
a storage portion configured to hold an aerosol-forming substrate, the storage portion in contact with a wick;
In this regard, the Examiner finds that Kaufman discloses an insertable smokable material article 5 that is configured to hold a smokable material. (Id. at p.5, ll.8; 6, ll.25-26; p.7, ll.1-3, 15-21).
Kaufman discloses all the limitations, as previously set forth, except for specifically calling for the storage portion being in contact with a wick.
However, providing a storage portion being in contact with a wick is known in the art. The Examiner finds that Thorens, for example, teaches a an aerosol generator 100 comprising a liquid storage portion/cartridge 113 configured to hold an aerosol-forming substrate/liquid 115¸wherein the liquid storage portion/cartridge 113 is in contact with a wick 117. (Thorens at Abstract; ¶¶ 0084-0085, 0089; see Figures 1, 2).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate providing a storage portion being in contact with a wick as described in Thorens, in the aerosol-generating system of Kaufman.
A person of ordinary skill in the art would be motivated to incorporate providing a storage portion being in contact with a wick, since it provides a mechanism to: (1) create a supersaturated vapour; and (2) provide a capillary/pumping action to more easily convey the liquid. (Id. at ¶ 0085). In other words, such a modification would optimize the flow of an aerosol-forming substrate/liquid through the apparatus during use, thereby inherently increasing the operational efficiency.
In addition, modifying the apparatus of Kaufman by replacing the element 5 (or 1005) with a storage portion 113 and wick 117 as taught by Thorens would have been obvious to one of ordinary skill in the art before the effective filing date because it amounts to a simple substitution of one type of storage portion known in the art (i.e., storage portion 113 and wick 117 of Thorens) for another (5/1005 which directly contacts the heater) with predictable results (i.e., the invention of Thorens allows a liquid cartridge to be inserted, and the wick conveys the liquid to the aerosol-generator).
a first electrode and a second electrode spaced from the first electrode, at least a portion of the storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the storage portion;
In this regard, in examination of annotated Figure 3 of Kaufman below, the Examiner finds that Kaufman discloses a first electrode 12 (i.e., left side) and a second electrode 12 (i.e., right side) spaced form the first electrode 12 (i.e., left side). (Kaufman at p.12, l. 23 – p.13, l.3; see annotated Figure 3 below). In addition, the Examiner finds that Kaufman discloses the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side) being position on the opposite side of the smokable material article 5 with the smokable material article 5 being arranged between the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Kaufman at p.12, l. 15 – p.13, l.3; p.13, ll.15-20; p.16, ll.6-16; p.18, ll.8-11; see annotated Figure 3
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Greyscale
below).
With respect to the first and second electrodes 12 being separate and disconnected from each other, the Examiner finds that Kaufman discloses the first and second electrodes 12 being provided “which in effect provided a pair of ‘plates’ of a capacitor.” ( Kaufman, at p.12, ll.15-32; see Figure 3). In this regard, The Examiner finds that Kaufman states,
[w]hen the smokable material article 5 is inserted into the apparatus 1, it is inserted between the electrodes. As a result the capacitance formed between the electrodes of the apparatus 1 changes.
(Kaufman at p.12, ll.16-18; also see p.12, ll.23-32). From this perspective, the Examiner finds that the first and second electrode 12 are separate since they are referred to as two separate, distinct electrodes and form the two plates of the capacitor. The first electrode 12 (i.e., left side) is disconnected from the second electrode 12 (i.e., right side), in the sense at least of being electrically disconnected from the second electrode 12 (i.e., right side), because this is an inherent feature of a capacitor (since a capacitor is defined as: “(2) An element within a circuit consisting of two conductors, each with an extended surface exposed to that of the other, but separated by a layer of insulating material called the dielectric,” emphasis added).8 In this light, if the two electrodes (“plates”) were not electrically disconnected, then they would not be a pair of conductors separated and by an insulator, and would not form a capacitor; rather, charge would be conducted from one electrode to the other and not through the dielectric. Since Kaufman discloses that the two electrodes act as plates of a capacitor, with the smokable material article 5 being the “dielectric material” between the “plates” such that the material 5 changes the capacitance between the two electrodes, the Examiner finds that the first and second electrodes 12 are electrically disconnected.)
an aerosol-generator including,
In this regard, the Examiner finds that Kaufman discloses apparatus 1 that is configured to heat an insertable smokable material article 5. (Kaufman at Title; Abstract; p.7, l.15 – p.8, l.24; see Figures 1, 2, 10)).
at least one aerosol-generating element, the at least one aerosol-generating element including a heater and further including the first electrode, the second electrode, or both the first electrode and the second electrode; and
In this regard, the Examiner finds that Kaufman discloses the apparatus 1 comprising a heater chamber 4 which includes heater segments 10 and further includes both the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Kaufman at p.7, ll.15-24p.8, ll.16-20; p.8, l.26 – p.10, l.5; p.12, ll.15-32; see Figure 2).
a control system configured to
measure an electrical quantity between the first electrode and the second electrode,
calculate a surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion based on the measured electrical quantity, and
determine an amount of the aerosol-forming substrate held in the storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion
As set forth supra, and with respect to claim 1, the Examiner finds that Functional Phrase 1 does invoke 35 U.S.C. §112, 6th paragraph. (See § VII.B.(1) supra). In this light, the Examiner construes the ‘control system …’ as simply hardware, software, or combinations thereof that provide for: (1) measuring the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with the aerosol-forming substrate and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determining the amount of the aerosol-forming substrate in the storage portion based upon the calculated surface area and the distance between the electrodes, as described above, or its equivalent, respectively.
From this perspective, the Examiner finds that Kaufman discloses a control system utilizing the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side) as a capacitance sensor to determine the presence of the insertable smokable material article 5. (Id. at p.11, ll.23-31; p.12, ll.15-21).
Kaufman and Thorens discloses all the limitations, as previously set forth, except for specifically calling for the control system to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with the aerosol-forming substrate and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the aerosol-forming substrate in the storage portion based upon the calculated surface area and the distance between the electrodes.
However, a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes is known in the art. The Examiner finds that Jacobson, for example, teaches an apparatus and method for sensing levels of fluids within a storage container comprising a processor configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with the fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrode. (Jacobson at Title; Abstract; ¶¶ 0034-0035; 0038-0045; see Figure 1, 2).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes as described in Jacobson, in the aerosol-generating system of Kaufman and Thorens.
A person of ordinary skill in the art would be motivated to incorporate a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes, since it provides a mechanism to allow for the levels of individual fluids, having different dielectric constants, to be determined with known dimensions of each sensor. (Id. at ¶ 0035; 0045). In other words, such a modification would utilize the structure of a capacitance senor in an aerosol-generating system to accurately sense the levels of separate fluids having different dielectric constants, thereby inherently increasing the operational efficiency. (Id. at ¶¶ 0009; 0035).
Similarly, the Examiner asserts that applying a known technique to a known device ready for improvement would yield predictable results. That is, it would have been recognized by one of ordinary skill in the art that applying the known technique taught by Jacobson to the system and method of Kaufman and Thorens would have yielded predicable results and resulted in an improved system, namely, providing the aerosol-generating system and method utilizing a capacitance sensor configuration with a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes, in Kaufman and Thorens, to deliver a mechanism to allow for the levels of individual fluids, having different dielectric constants, to be determined with known dimensions of each sensor.
With respect to the limitations of claim 6, the Examiner finds that Kaufman, Thorens and Jacobson teaches and/or renders obvious
[6] wherein the electrical quantity to be measured by the control system is capacitance between the first electrode and the second electrode :
In this regard, the Examiner finds that Kaufman discloses the electrical quantity to be measured by the control system being capacitance between the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Kaufman at p.12, ll.19-21; see Figures 2).
With respect to the limitations of claim 7, the Examiner finds that Kaufman, Thorens and Jacobson teaches and/or renders obvious
[7a] a cartridge including the storage portion; and
[7b] a main unit including the control system, the main unit configured to removably receive the cartridge, and when the cartridge is received by the main unit the first electrode and the second electrode are arranged such that a portion of the storage portion of the cartridge is arranged between the first electrode and the second electrode.
In this regard, the Examiner finds that Kaufman discloses the smokable material article 5 storing a smokable material (Id. at p.5, ll.4-6). Moreover, the Examiner finds that the aerosol-generating system (combination apparatus 1 and insertable smokable material article 5) including an apparatus 1 including electrical control circuitry 7. (Id. at Figure 2). In addition, the Examiner finds that Kaufman discloses the apparatus 1 receiving a portion of the insertable smokable material article 5 between the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Id. at p.12, l. 15 – p.13, l.3; p.13, ll.15-20; p.16, ll.6-16; p.18, ll.8-11; see Figures 1, 2).
With respect to the limitations of claim 9, the Examiner finds that Kaufman, Thorens and Jacobson teaches and/or renders obvious
[9] wherein the main unit includes the aerosol-generator, the first electrode, and the second electrode :
In this regard, the Examiner finds that Kaufman discloses the apparatus 1 including the heater chamber 4 and both the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Id. at Figure 2).
With respect to the limitations of claim 12, and
[12] [a]n aerosol-generating system comprising:
In this regard, the Examiner finds that Kaufman discloses an aerosol-generating system (combination apparatus 1 and insertable smokable material article 5) (Kaufman at Title; Abstract; p.7, l.15 – p.8, l.24; see Figures 1, 2).
a liquid storage portion in contact with a wick;
In this regard, the Examiner finds that Kaufman discloses an insertable smokable material article 5 that is configured to hold a smokable material. (Id. at p.7, ll.15-21).
Kaufman discloses all the limitations, as previously set forth, except for specifically calling for the liquid storage portion being in contact with a wick.
However, providing a liquid storage portion being in contact with a wick is known in the art. The Examiner finds that Thorens, for example, teaches a an aerosol generator 100 comprising a liquid storage portion/cartridge 113 configured to hold an aerosol-forming substrate/liquid 115¸wherein the liquid storage portion/cartridge 113 is in contact with a wick 117. (Thorens at Abstract; ¶¶ 0084-0085, 0089; see Figures 1, 2).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate providing a liquid storage portion being in contact with a wick as described in Thorens, in the aerosol-generating system of Kaufman.
A person of ordinary skill in the art would be motivated to incorporate providing a storage portion being in contact with a wick, since it provides a mechanism to: (1) create a supersaturated vapour; and (2) provide a capillary/pumping action to more easily convey the liquid. (Id. at ¶ 0085). In other words, such a modification would optimize the flow of an aerosol-forming substrate/liquid through the apparatus during use, thereby inherently increasing the operational efficiency.
In addition, modifying the apparatus of Kaufman by replacing the element 5 (or 1005) with a storage portion 113 and wick 117 as taught by Thorens would have been obvious to one of ordinary skill in the art before the effective filing date because it amounts to a simple substitution of one type of storage portion known in the art (i.e., storage portion 113 and wick 117 of Thorens) for another (5/1005 which directly contacts the heater) with predictable results (i.e., the invention of Thorens allows a liquid cartridge to be inserted, and the wick conveys the liquid to the aerosol-generator).
a first electrode and a second electrode spaced from the first electrode, at least a portion of the liquid storage portion being arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the liquid storage portion;
In this regard, in examination of annotated Figure 3 of Kaufman below, the Examiner finds that Kaufman discloses a first electrode 12 (i.e., left side) and a second electrode 12 (i.e., right side) spaced form the first electrode 12 (i.e., left side). (Kaufman at p.12, l. 23 – p.13, l.3; see annotated Figure 3 below). In addition, the Examiner finds that Kaufman discloses the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side) being position on the opposite side of the smokable material article 5 with the smokable material article 5 being arranged between the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Kaufman at p.12, l. 15 – p.13, l.3; p.13, ll.15-20; p.16, ll.6-16; p.18, ll.8-11; see annotated Figure 3
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Greyscale
below).
With respect to the first and second electrodes 12 being separate and disconnected from each other, the Examiner finds that Kaufman discloses the first and second electrodes 12 being provided “which in effect provided a pair of ‘plates’ of a capacitor.” ( Kaufman, at p.12, ll.15-32; see Figure 3). In this regard, The Examiner finds that Kaufman states,
[w]hen the smokable material article 5 is inserted into the apparatus 1, it is inserted between the electrodes. As a result the capacitance formed between the electrodes of the apparatus 1 changes.
(Kaufman at p.12, ll.16-18; also see p.12, ll.23-32). From this perspective, the Examiner finds that the first and second electrode 12 are separate since they are referred to as two separate, distinct electrodes and form the two plates of the capacitor. The first electrode 12 (i.e., left side) is disconnected from the second electrode 12 (i.e., right side), in the sense at least of being electrically disconnected from the second electrode 12 (i.e., right side), because this is an inherent feature of a capacitor (since a capacitor is defined as: “(2) An element within a circuit consisting of two conductors, each with an extended surface exposed to that of the other, but separated by a layer of insulating material called the dielectric,” emphasis added).9 In this light, if the two electrodes (“plates”) were not electrically disconnected, then they would not be a pair of conductors separated and by an insulator, and would not form a capacitor; rather, charge would be conducted from one electrode to the other and not through the dielectric. Since Kaufman discloses that the two electrodes act as plates of a capacitor, with the smokable material article 5 being the “dielectric material” between the “plates” such that the material 5 changes the capacitance between the two electrodes, the Examiner finds that the first and second electrodes 12 are electrically disconnected.)
an aerosol-generator including,
In this regard, the Examiner finds that Kaufman discloses apparatus 1 that is configured to heat an insertable smokable material article 5. (Kaufman at Title; Abstract; p.7, l.15 – p.8, l.24; see Figures 1, 2, 10)).
at least one aerosol-generating element, the at least one aerosol-generating element including a heater and at least one of the first electrode and the second electrode; and
In this regard, the Examiner finds that Kaufman discloses the apparatus 1 comprising a heater chamber 4 which includes heater segments 10 and further includes both the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Kaufman at p.7, ll.15-24p.8, ll.16-20; p.8, l.26 – p.10, l.5; p.12, ll.15-32; see Figure 2).
a control system configured to
measure an electrical quantity between the first electrode and the second electrode,
calculate a surface area of the first electrode in contact with an aerosol-forming substrate stored in the liquid storage portion based on the measured electrical quantity, and
determine an amount of the aerosol-forming substrate held in the liquid storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate stored in the liquid storage portion
As set forth supra, and with respect to claim 12, the Examiner finds that Functional Phrase 1 does invoke 35 U.S.C. §112, 6th paragraph. (See § VII.B.(1) supra). In this light, the Examiner construes the ‘control system …’ as simply hardware, software, or combinations thereof that provide for: (1) measuring the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with the aerosol-forming substrate and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determining the amount of the aerosol-forming substrate in the storage portion based upon the calculated surface area and the distance between the electrodes, as described above, or its equivalent, respectively.
From this perspective, the Examiner finds that Kaufman discloses a control system utilizing the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side) as a capacitance sensor to determine the presence of the insertable smokable material article 5. (Id. at p.11, ll.23-31; p.12, ll.15-21).
Kaufman and Thorens discloses all the limitations, as previously set forth, except for specifically calling for the control system to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with the aerosol-forming substrate and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the aerosol-forming substrate in the storage portion based upon the calculated surface area and the distance between the electrodes.
However, a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes is known in the art. The Examiner finds that Jacobson, for example, teaches an apparatus and method for sensing levels of fluids within a storage container comprising a processor configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with the fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrode. (Jacobson at Title; Abstract; ¶¶ 0034-0035; 0038-0045; see Figure 1, 2).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes as described in Jacobson, in the aerosol-generating system of Kaufman and Thorens.
A person of ordinary skill in the art would be motivated to incorporate a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes, since it provides a mechanism to allow for the levels of individual fluids, having different dielectric constants, to be determined with known dimensions of each sensor. (Id. at ¶ 0035; 0045). In other words, such a modification would utilize the structure of a capacitance senor in an aerosol-generating system to accurately sense the levels of separate fluids having different dielectric constants, thereby inherently increasing the operational efficiency. (Id. at ¶¶ 0009; 0035).
Similarly, the Examiner asserts that applying a known technique to a known device ready for improvement would yield predictable results. That is, it would have been recognized by one of ordinary skill in the art that applying the known technique taught by Jacobson to the system and method of Kaufman and Thorens would have yielded predicable results and resulted in an improved system, namely, providing the aerosol-generating system and method utilizing a capacitance sensor configuration with a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes, in Kaufman and Thorens, to deliver a mechanism to allow for the levels of individual fluids, having different dielectric constants, to be determined with known dimensions of each sensor.
With respect to the limitations of claim 13, and
[13] [a] method of determining an amount of liquid aerosol-forming substrate held in a storage portion of an aerosol-generating system, the aerosol-generating system including an aerosol-generator including one or more aerosol-generating elements, the one or more aerosol-generating elements including a heater, the method comprising
In this regard, the Examiner finds that Kaufman discloses an aerosol-generating system (combination apparatus 1 and insertable smokable material article 5) determining a property of the smokable material article 5 inserted therein with the apparatus 1 including a heating chamber 4 including one or more aerosol-generating elements (i.e., heater 10 and electrodes 12). (Kaufman at Title; Abstract; p.7, l.15 – p.8, l.24; p.8, l.26 – p.10, l.5; p.10, l.7. – p.11, l.2; p.11, ll.4-31; p.12, ll.15-32; see Figures 1, 2).
holding a liquid aerosol-forming substrate in the storage portion of the aerosol-generating system, the liquid aerosol-forming substrate in contact with a wick;
In this regard, the Examiner finds that Kaufman discloses an insertable smokable material article 5 that is configured to hold a smokable material. (Id. at p.7, ll.15-21).
Kaufman discloses all the limitations, as previously set forth, except for specifically calling for the storage portion being in contact with a wick.
However, providing a storage portion being in contact with a wick is known in the art. The Examiner finds that Thorens, for example, teaches a an aerosol generator 100 comprising a liquid storage portion/cartridge 113 configured to hold an aerosol-forming substrate/liquid 115¸wherein the liquid storage portion/cartridge 113 is in contact with a wick 117. (Thorens at Abstract; ¶¶ 0084-0085, 0089; see Figures 1, 2).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate providing a storage portion being in contact with a wick as described in Thorens, in the aerosol-generating system of Kaufman.
A person of ordinary skill in the art would be motivated to incorporate providing a storage portion being in contact with a wick, since it provides a mechanism to: (1) create a supersaturated vapour; and (2) provide a capillary/pumping action to more easily convey the liquid. (Id. at ¶ 0085). In other words, such a modification would optimize the flow of an aerosol-forming substrate/liquid through the apparatus during use, thereby inherently increasing the operational efficiency.
In addition, modifying the apparatus of Kaufman by replacing the element 5 (or 1005) with a storage portion 113 and wick 117 as taught by Thorens would have been obvious to one of ordinary skill in the art before the effective filing date because it amounts to a simple substitution of one type of storage portion known in the art (i.e., storage portion 113 and wick 117 of Thorens) for another (5/1005 which directly contacts the heater) with predictable results (i.e., the invention of Thorens allows a liquid cartridge to be inserted, and the wick conveys the liquid to the aerosol-generator).
arranging at least a portion of the storage portion between a first electrode and a second electrode, the first electrode separate and disconnected from the second electrode, the first electrode and the second electrode positioned on opposite sides of the storage portion, and at least one of the aerosol-generating elements including at least one of the first electrode and the second electrode;
In this regard, in examination of annotated Figure 3 of Kaufman below, the Examiner finds that Kaufman discloses a first electrode 12 (i.e., left side) and a second electrode 12 (i.e., right side) spaced form the first electrode 12 (i.e., left side). (Kaufman at p.12, l. 23 – p.13, l.3; ; see annotated Figure 3 below). In addition, the Examiner finds that Kaufman discloses the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side) being position on the opposite side of the smokable material article 5 with the smokable material article 5 being arranged between the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Kaufman at p.12, l. 15 – p.13, l.3; p.13, ll.15-20; p.16, ll.6-16; p.18, ll.8-11; see annotated Figure 3
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542
790
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Greyscale
below).
With respect to the first and second electrodes 12 being separate and disconnected from each other, the Examiner finds that Kaufman discloses the first and second electrodes 12 being provided “which in effect provided a pair of ‘plates’ of a capacitor.” ( Kaufman, at p.12, ll.15-32; see Figure 3). In this regard, The Examiner finds that Kaufman states,
[w]hen the smokable material article 5 is inserted into the apparatus 1, it is inserted between the electrodes. As a result the capacitance formed between the electrodes of the apparatus 1 changes.
(Kaufman at p.12, ll.16-18; also see p.12, ll.23-32). From this perspective, the Examiner finds that the first and second electrode 12 are separate since they are referred to as two separate, distinct electrodes and form the two plates of the capacitor. The first electrode 12 (i.e., left side) is disconnected from the second electrode 12 (i.e., right side), in the sense at least of being electrically disconnected from the second electrode 12 (i.e., right side), because this is an inherent feature of a capacitor (since a capacitor is defined as: “(2) An element within a circuit consisting of two conductors, each with an extended surface exposed to that of the other, but separated by a layer of insulating material called the dielectric,” emphasis added).10 In this light, if the two electrodes (“plates”) were not electrically disconnected, then they would not be a pair of conductors separated and by an insulator, and would not form a capacitor; rather, charge would be conducted from one electrode to the other and not through the dielectric. Since Kaufman discloses that the two electrodes act as plates of a capacitor, with the smokable material article 5 being the “dielectric material” between the “plates” such that the material 5 changes the capacitance between the two electrodes, the Examiner finds that the first and second electrodes 12 are electrically disconnected.)
measuring an electrical quantity between the first electrode and the second electrode,
In this regard, the Examiner finds that Kaufman discloses a control system utilizing the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side) as a capacitance sensor to determine the presence of the insertable smokable material article 5. (Id. at p.11, ll.23-31; p.12, ll.15-21).
calculate a surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion based on the measured electrical quantity, and
determine an amount of the aerosol-forming substrate held in the storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion.
As set forth above, the Examiner finds that Kaufman discloses a control system utilizing the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side) as a capacitance sensor to determine the presence of the insertable smokable material article 5. (Id. at p.11, ll.23-31; p.12, ll.15-21).
Kaufman and Thorens discloses all the limitations, as previously set forth, except for specifically calling for: (1) calculating a surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion based on the measured electrical quantity; and (2) determining an amount of the aerosol-forming substrate held in the storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate of the storage portion.
However, a control system configured to (1) measure the capacitance between two electrodes; (2) calculate a surface area of the first electrode in contact with a fluid/liquid of the storage portion based on the measured electrical quantity; and (3) determining an amount of the fluid/liquid held in the storage portion based on the surface area of the first electrode in contact with the fluid/liquid of the storage portion is known in the art. The Examiner finds that Jacobson, for example, teaches an apparatus and method for sensing levels of fluids within a storage container comprising a processor configured to (1) measure the capacitance between two electrodes; (2) calculate a surface area of the first electrode in contact with a fluid/liquid of the storage portion based on the measured electrical quantity; and (2) determining an amount of the fluid/liquid held in the storage portion based on the surface area of the first electrode in contact with the fluid/liquid of the storage portion. (Jacobson at Title; Abstract; ¶¶ 0034-0035; 0038-0045; see Figure 1, 2).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a control system configured: (1) calculate a surface area of the first electrode in contact with a fluid/liquid of the storage portion based on the measured electrical quantity; and (2) determining an amount of the fluid/liquid held in the storage portion based on the surface area of the first electrode in contact with the fluid/liquid of the storage portion as described in Jacobson, in the aerosol-generating system of Kaufman and Thorens.
A person of ordinary skill in the art would be motivated to incorporate a control system configured to: (1) calculate a surface area of the first electrode in contact with a fluid/liquid of the storage portion based on the measured electrical quantity; and (2) determining an amount of the fluid/liquid held in the storage portion based on the surface area of the first electrode in contact with the fluid/liquid of the storage portion, since it provides a mechanism to allow for the levels of individual fluids, having different dielectric constants, to be determined with known dimensions of each sensor. (Id. at ¶ 0035; 0045). In other words, such a modification would utilize the structure of a capacitance senor in an aerosol-generating system to accurately sense the levels of separate fluids having different dielectric constants, thereby inherently increasing the operational efficiency. (Id. at ¶¶ 0009; 0035).
Similarly, the Examiner asserts that applying a known technique to a known device ready for improvement would yield predictable results. That is, it would have been recognized by one of ordinary skill in the art that applying the known technique taught by Jacobson to the system and method of Kaufman and Thorens would have yielded predicable results and resulted in an improved system, namely, providing the aerosol-generating system and method utilizing a capacitance sensor configuration with a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes, in Kaufman and Thorens, to deliver a mechanism to allow for the levels of individual fluids, having different dielectric constants, to be determined with known dimensions of each sensor.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”) in view of Thorens et al. (European Publication No. EP 2399636 A1) (“Thorens”) and Jacobson et al. (U.S. Publication No. 2009/0199635) (“Jacobson”) as applied to claims 1, 6, 7, 9, 12 and 13 above, and further in view of Hingley et al. (U.S. Patent No. 11,093,397) (“Hingley”).
With respect to the limitations of claim 3, and
[3a] wherein the aerosol-generator is configured to receive the aerosol-forming substrate from the storage portion, and
[3b] wherein the control system is further configured to compare the determined amount of the aerosol-forming substrate to a threshold amount stored in the control system and prevent operation of the aerosol-generator if the determined amount of the aerosol-forming substrate is below the threshold amount.
As set forth above, and with respect to claim 3, the Examiner finds that Functional Phrase 3 does not invoke 35 U.S.C. §112, 6th paragraph. (See § VII.B.(2) supra).
From this perspective, the Examiner finds that Kaufman discloses the heating chamber 4 being configured to receive the smokable material from the smokable material article 5. (Kaufman at p.7, ll.15-20). In addition, the Examiner finds that Kaufman discloses the control system being further configured to prevent the operation of the heating chamber 4 under certain conditions. (Id. at p.10, ll.18-20; p.11, ll.23-31; p.17, l.30 p.18, l.2).
Kaufman, Thorens and Jacobson discloses all the limitations, as previously set forth, except for specifically calling for the control system being configured to compare the determine amount of the aerosol-liquid to a threshold amount and prevent operation if the determined amount is below the threshold amount. However, a control system configured to compare the determine amount of the aerosol-forming substrate to a threshold amount and prevent operation if the determined amount is below the threshold amount is known in the art. The Examiner finds that Hingley, for example, teaches an aerosol-generating system configured to receive liquid aerosol-forming substrate from the liquid storage portion (Hingley at ¶ 0061). In addition, the Examiner finds that Hingley teaches a controller 10 being configured to compare the determined amount of aerosol-liquid to a threshold amount stored in the control system (id. at ¶ 0069) and prevent operation of the aerosol-generating system if the determined amount of aerosol-liquid is below the threshold amount (id. at ¶ 0063; the transducer will be “switched off” if it is determined the reservoir is “empty”).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a control system being configured to compare the determine amount of the aerosol-liquid to a threshold amount and prevent operation if the determined amount is below the threshold amount as described in Hingley, in the aerosol-generating system of Kaufman, Thorens and Jacobson.
A person of ordinary skill in the art would be motivated to incorporate a control system being configured to compare the determine amount of the aerosol-liquid to a threshold amount and prevent operation if the determined amount is below the threshold amount, since it provides a mechanism to prevent “destructive consequences” from occurring. (Id. at ¶ 0061). In other words, such a modification would increase the safety of the aerosol-generating system, thereby inherently increasing the operational longevity.
With respect to the limitations of claim 4, and
[4] wherein the first electrode and the second electrode are arranged on a platform of electrically insulating material.
Kaufman, Thorens and Jacobson discloses all the limitations, as previously set forth, except for specifically calling for the first electrode and the second electrode being arranged on a platform of electrically insulating material. However, a first electrode and a second electrode being arranged on a platform of electrically insulating material is known in the art. The Examiner finds that Hingley, for example, teaches an aerosol-generating system comprising a first electrode 5 (Hingley at Figure 5) and a second electrode 14 (id.) being arranged on a platform of electrically insulating material 1 (i.e., cup; id.) Specifically, Hingley teaches the cup 1 being “not conductive.” (Id. at ¶ 0078).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the first electrode and the second electrode being arranged on a platform of electrically insulating material as described in Hingley in the aerosol-generating system of Kaufman, Thorens and Jacobson.
A person of ordinary skill in the art would be motivated to incorporate the first electrode and the second electrode being arranged on a platform of electrically insulating material, since it provides a mechanism to prevent a short circuit between electrodes. In other words, such a modification would increase the safety of the aerosol-generating system, thereby inherently increasing the operational longevity.
With respect to the limitations of claim 5, and
[5] wherein the control system is further configured to supply the first electrode and the second electrode with an oscillating measurement signal.
As set forth above, and with respect to claim 5, the Examiner finds that Functional Phrase 5 does not invoke 35 U.S.C. §112, 6th paragraph. (See § VII.B.(2) supra).
Kaufman, Thorens and Jacobson discloses all the limitations, as previously set forth, except for specifically calling for the control system being further configured to supply the first electrode and the second electrode with an oscillating measurement signal.
However, a control system being further configured to supply the first electrode and the second electrode with an oscillating measurement signal is known in the art. The Examiner finds that Hingley, for example, teaches an aerosol-generating system comprising a controller 10 that is configured to supply the first electrode and the second electrode with an oscillating measurement signal. (Hingley at ¶ 0066).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a control system being configured to supply the first electrode and the second electrode with an oscillating measurement signal as described in Hingley, in the aerosol-generating system of Kaufman, Thorens and Jacobson.
A person of ordinary skill in the art would be motivated to incorporate a control system being configured to supply the first electrode and the second electrode with an oscillating measurement, since it provides a mechanism to prevent DC potential on the sensor electrode and avoid problems with electrolysis of the liquid. (Id.). In other words, such a modification would increase the safety of the aerosol-generating system, thereby inherently increasing the operational longevity.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”) in view of Thorens et al. (European Publication No. EP 2399636 A1) (“Thorens”) and Jacobson et al. (U.S. Publication No. 2009/0199635) (“Jacobson”) as applied to claims 1, 6, 7, 9, 12 and 13 above, and further in view of Sabet (U.S. Publication No. 2016/0345628) and Tucker et al. (U.S. Publication No. 2013/0192615) (“Tucker”).
With respect to the limitations of claim 8, and
[8] wherein the cartridge includes the aerosol-generator, the first electrode, and the second electrode.
Kaufman, Thorens and Jacobson discloses all the limitations, as previously set forth, except for specifically calling for the cartridge to include the aerosol-generator, the first electrode, and the second electrode.
However, a cartridge including the first electrode and the second electrode is known in the art. The Examiner finds that Sabet, for example, teaches an aerosol-generating system comprising a cartridge 1 including the first electrode 85a and the second electrode 85b. (Sabet at ¶ 0098).
Similarly, a cartridge including the aerosol-generator is known in the art. The Examiner finds that Tucker, for example, teaches an aerosol-generating system comprising a cartridge 70 including the aerosol generator/heater 14. (Tucker at ¶¶ 0002; 0026; 0034; 0051; 0053; see Figures 1-3).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a cartridge including the first electrode and the second electrode as described in Sabet in the aerosol-generating system of Kaufman, Thorens and Jacobson.
A person of ordinary skill in the art would be motivated to incorporate a cartridge including the first electrode and the second electrode, since it provides a mechanism to utilize two different cartridges. (Sabet at ¶ 0098). In other words, such a modification would increase the versatility of the aerosol-generating system, thereby inherently increasing the operational efficiency.
Similarly, the Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a cartridge including the aerosol-generator as described in Tucker in the aerosol-generating system of Kaufman, Thorens and Jacobson.
A person of ordinary skill in the art would be motivated to incorporate a cartridge including the aerosol-generator, since it provides a mechanism to design the cartridge based upon specific boiling points of the liquid compositions. (Tucker at ¶ 0051). In other words, such a modification would increase the safety and versatility of the aerosol-generating system, thereby inherently increasing the operational longevity and efficiency.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”) in view of Thorens et al. (European Publication No. EP 2399636 A1) (“Thorens”) and Jacobson et al. (U.S. Publication No. 2009/0199635) (“Jacobson”) as applied to claims 1, 6, 7, 9, 12 and 13 above, and further in view of Livingston et al. (U.S. Publication No. 2003/0000303) (“Livingston”).
With respect to the limitations of claim 10, and
[10] wherein the cartridge includes one of the first electrode and the second electrode, and the main unit includes another one of the first electrode and the second electrode.
In this regard, as set forth above, the Examiner finds that Kaufman discloses the apparatus 1 including both the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Id. at p.12, l. 15 – p.13, l.3; p.13, ll.15-20; p.16, ll.6-16; p.18, ll.8-11; see Figures 1, 2).
Kaufman, Thorens and Jacobson discloses all the limitations, as previously set forth, except for specifically calling for the cartridge to include one of the first electrode and the second electrode, and the main unit includes another one of the first electrode and the second electrode.
However, a cartridge including one of the first electrode and the second electrode, and the main unit includes another one of the first electrode and the second electrode is known in the art. The Examiner finds that Livingston, for example, teaches an aerosol-generating system comprising a first electrode 32 as part of the cartridge. (Livingston at ¶ 0098).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a cartridge including the first electrode and the main unit including the second electrode as described in Livingston in the aerosol-generating system of Kaufman, Thorens and Jacobson.
A person of ordinary skill in the art would be motivated to incorporate cartridge including the first electrode and the main unit including the second electrode, since it provides a mechanism to utilize the aerosol-generating system with stratified liquids. (Sabet at ¶ 0098). In other words, such a modification would increase the versatility of the aerosol-generating system, thereby inherently increasing the operational efficiency.
Claim 11 is rejected under 35 U.S.C. 103 as obvious over Kaufman et al. (International Publication No. WO 2015/140312 A1) (“Kaufman”) in view of Tucker et al. (U.S. Publication No. 2013/0192615) (“Tucker”) and Jacobson et al. (U.S. Publication No. 2009/0199635) (“Jacobson”).
With respect to the limitations of claim 11, and
[11] [a] main unit, for an aerosol-generating system, the main unit comprising:
In this regard, the Examiner finds that Kaufman discloses an aerosol-generating system (combination apparatus 1 and insertable smokable material article 5) (Kaufman at Title; Abstract; p.7, l.15 – p.8, l.24; see Figures 1, 2).
an aerosol-generator including,
In this regard, the Examiner finds that Kaufman discloses apparatus 1 that is configured to heat an insertable smokable material article 5. (Kaufman at Title; Abstract; p.7, l.15 – p.8, l.24; see Figures 1, 2, 10)).
at least one aerosol-generating element including a heater; and
In this regard, the Examiner finds that Kaufman discloses the apparatus 1 comprising a heater chamber 4 which includes heater segments 10 and further includes both the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Kaufman at p.7, ll.15-24p.8, ll.16-20; p.8, l.26 – p.10, l.5; p.12, ll.15-32; see Figure 2).
a first electrode;
a second electrode, the main unit configures to removably receive a cartridge having a liquid storage portion and a wick;
In this regard, in examination of Figure 2 of Kaufman, the Examiner finds that Kaufman discloses the apparatus 1 comprising a first electrode 12 (i.e., left side) and a second electrode 12 (i.e., right side) in which the apparatus 1 is able to removably receive the smokable material article 5 that is configured to hold a smokable material. (Id. at p.7, ll.15-21; p.12, l. 23 – p.13, l.3; also see annotated Figure 3 below).
Kaufman discloses all the limitations, as previously set forth, except for specifically calling for the cartridge having a wick.
However, providing a cartridge having a wick is known in the art. The Examiner finds that Tucker, for example, teaches a an aerosol generator 60 comprising a cartridge 70 configured to have a wick 28. (Tucker at Abstract; ¶¶ 0002; 0026; 0053); see Figure 2).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate providing a cartridge having a wick as described in Tucker, in the aerosol-generating system of Kaufman.
A person of ordinary skill in the art would be motivated to incorporate providing a storage portion being in contact with a wick, since it provides a mechanism to provide a capillary/pumping action to more easily convey the liquid. (Id. at ¶ 0053). In other words, such a modification would optimize the flow of an aerosol-forming substrate/liquid through the apparatus during use, thereby inherently increasing the operational efficiency.
In addition, modifying the apparatus of Kaufman by replacing the element 5 (or 1005) with a cartridge 70 and wick 28 as taught by Tucker would have been obvious to one of ordinary skill in the art before the effective filing date because it amounts to a simple substitution of one type of storage portion known in the art (i.e., cartridge 70 and wick 28 of Tucker) for another (5/1005 which directly contacts the heater) with predictable results (i.e., the invention of Tucker allows a liquid cartridge to be utilized with a reusable second section, and the wick conveys the liquid to the aerosol-generator).
when the cartridge having the liquid storage portion is removably received by the main unit, the first electrode and the second electrode are arranged such that a portion of the liquid storage portion of the cartridge is arranged between the first electrode and the second electrode, the first electrode separate and disconnected from the second electrode, and the first electrode and the second electrode positioned on opposite sides of the liquid storage portion; and
In this regard, in examination of annotated Figure 3 of Kaufman below, the Examiner finds that Kaufman discloses a first electrode 12 (i.e., left side) and a second electrode 12 (i.e., right side) spaced form the first electrode 12 (i.e., left side). (Kaufman at p.12, l. 23 – p.13, l.3; see annotated Figure 3 below). In addition, the Examiner finds that Kaufman discloses the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side) being position on the opposite side of the smokable material article 5 with the smokable material article 5 being arranged between the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side). (Kaufman at p.12, l. 15 – p.13, l.3; p.13, ll.15-20; p.16, ll.6-16; p.18, ll.8-11; see annotated Figure 3
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below).
With respect to the first and second electrodes 12 being separate and disconnected from each other, the Examiner finds that Kaufman discloses the first and second electrodes 12 being provided “which in effect provided a pair of ‘plates’ of a capacitor.” ( Kaufman, at p.12, ll.15-32; see Figure 3). In this regard, The Examiner finds that Kaufman states,
[w]hen the smokable material article 5 is inserted into the apparatus 1, it is inserted between the electrodes. As a result the capacitance formed between the electrodes of the apparatus 1 changes.
(Kaufman at p.12, ll.16-18; also see p.12, ll.23-32). From this perspective, the Examiner finds that the first and second electrode 12 are separate since they are referred to as two separate, distinct electrodes and form the two plates of the capacitor. The first electrode 12 (i.e., left side) is disconnected from the second electrode 12 (i.e., right side), in the sense at least of being electrically disconnected from the second electrode 12 (i.e., right side), because this is an inherent feature of a capacitor (since a capacitor is defined as: “(2) An element within a circuit consisting of two conductors, each with an extended surface exposed to that of the other, but separated by a layer of insulating material called the dielectric,” emphasis added).11 In this light, if the two electrodes (“plates”) were not electrically disconnected, then they would not be a pair of conductors separated and by an insulator, and would not form a capacitor; rather, charge would be conducted from one electrode to the other and not through the dielectric. Since Kaufman discloses that the two electrodes act as plates of a capacitor, with the smokable material article 5 being the “dielectric material” between the “plates” such that the material 5 changes the capacitance between the two electrodes, the Examiner finds that the first and second electrodes 12 are electrically disconnected.)
a control system configured to
measure an electrical quantity between the first electrode and the second electrode,
calculate a surface area of the first electrode in contact with an aerosol-forming substrate stored in the liquid storage portion based on the measured electrical quantity, and
determine an amount of the aerosol-forming substrate held in the liquid storage portion based on the surface area of the first electrode in contact with the aerosol-forming substrate stored in the liquid storage portion
As set forth supra, and with respect to claim 1, the Examiner finds that Functional Phrase 1 does invoke 35 U.S.C. §112, 6th paragraph. (See § VII.B.(1) supra). In this light, the Examiner construes the ‘control system …’ as simply hardware, software, or combinations thereof that provide for: (1) measuring the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with the aerosol-forming substrate and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determining the amount of the aerosol-forming substrate in the storage portion based upon the calculated surface area and the distance between the electrodes, as described above, or its equivalent, respectively.
From this perspective, the Examiner finds that Kaufman discloses a control system utilizing the first electrode 12 (i.e., left side) and the second electrode 12 (i.e., right side) as a capacitance sensor to determine the presence of the insertable smokable material article 5. (Id. at p.11, ll.23-31; p.12, ll.15-21).
Kaufman and Tucker discloses all the limitations, as previously set forth, except for specifically calling for the control system to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with the aerosol-forming substrate and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the aerosol-forming substrate in the storage portion based upon the calculated surface area and the distance between the electrodes.
However, a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes is known in the art. The Examiner finds that Jacobson, for example, teaches an apparatus and method for sensing levels of fluids within a storage container comprising a processor configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with the fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrode. (Jacobson at Title; Abstract; ¶¶ 0034-0035; 0038-0045; see Figure 1, 2).
The Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes as described in Jacobson, in the aerosol-generating system of Kaufman and Tucker.
A person of ordinary skill in the art would be motivated to incorporate a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes, since it provides a mechanism to allow for the levels of individual fluids, having different dielectric constants, to be determined with known dimensions of each sensor. (Id. at ¶ 0035; 0045). In other words, such a modification would utilize the structure of a capacitance senor in an aerosol-generating system to accurately sense the levels of separate fluids having different dielectric constants, thereby inherently increasing the operational efficiency. (Id. at ¶¶ 0009; 0035).
Similarly, the Examiner asserts that applying a known technique to a known device ready for improvement would yield predictable results. That is, it would have been recognized by one of ordinary skill in the art that applying the known technique taught by Jacobson to the system and method of Kaufman and Tucker would have yielded predicable results and resulted in an improved system, namely, providing the aerosol-generating system and method utilizing a capacitance sensor configuration with a control system configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with a fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the a fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrodes, in Kaufman and Tucker, to deliver a mechanism to allow for the levels of individual fluids, having different dielectric constants, to be determined with known dimensions of each sensor.
Response to Arguments
Specification Objection(s)
With respect to the Specification Objections, the Dec 2025 Applicant Response, including the Dec 2025 Spec Amendment and “Remarks,” has been fully considered and is persuasive. (See Dec 2025 Applicant Response at 13-14).
Drawings Objection(s)
With respect to the Drawings Objections, the Dec 2025 Applicant Response, including the Dec 2025 Spec Amendment and “Remarks,” has been fully considered and is persuasive. (See Dec 2025 Applicant Response at 14).
Claim Interpretation
35 U.S.C § 112 6th Paragraph
Applicant contends that the claimed element (i.e., Functional Phrase 1) denotes structure and, thus, does not invoke 35 U.S.C § 112(f). (See Dec 2025 Applicant Response at 15).
The Examiner respectfully disagrees. The Examiner finds that without the application of 35 U.S.C. §112(6th ¶) to the claimed functional phrase, Applicant would be obtaining a right to exclude others for all ways and methods for performing the Functions of limitations FP1, etc. For example, without the invocation of §112(6th ¶), FP2 utilizes pure functional language since such claims, as currently drafted, will cover all methods and manner of performing the Functions of the functional limitations. Yet the Federal Circuit is clear that §112(6th ¶) was promulgated by Congress in order to limit such ‘purely functional language.’ As noted in Greenberg12:
As this court has observed, the record is clear on why paragraph six was enacted. In Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3, 71 USPQ 175 (1946), the Supreme Court held invalid a claim that was drafted in means-plus- function fashion. Congress enacted paragraph six, originally paragraph three, to overrule that holding. In place of the Halliburton rule, Congress adopted a compromise solution, one that had support in the pre-Halliburton case law: Congress permitted the use of purely functional language in claims, but it limited the breadth of such claim language by restricting its scope to the structure disclosed in the specification and equivalents thereof. [Emphasis added.]
Additionally, the legal standard for determining if a claimed phrase, that does not recite “means,” invokes §112(6th ¶) was set forth in Williamson13. In the section of the Williamson opinion designated as en banc,14 and with respect to claim terms that do not recite the word “means,” Williamson held:
When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term [1] fails to “recite sufficiently definite structure” or else [2] recites “function without reciting sufficient structure for performing that function.” Watts [v. XL Sys., Inc.], 232 F.3d [877] at 880.
Williamson, 792 F.3d at 1349 (en banc)(emphasis added; bracketed numbering added).15
Because “or else” is an idiom used to express alternatives16 and in light of the “or else” noted in the Williamson quotation above, Williamson essentially provides two distinct (i.e. alternative) tests (collectively the “Williamson Invocation Tests” or “WIT”) for overcoming the presumption that §112(6th ¶) is not invoked when a phrase does not use the word “means.”
In summary, and in accordance with the WIT, when a claim term lacks the word “means,” the presumption to not invoke §112(6th ¶) can be overcome and § 112 ¶ 6 will apply if:
Williamson Invocation Test (1) (or “WIT-1”): the claim term fails to recite sufficiently definite structure; or
Williamson Invocation Test (2) (or “WIT-2”): the claim term recites function without reciting sufficient structure for performing that function.
In light of the “or else,” Williamson recites two alternative tests joined by “or else,” either of which can be used to overcome the presumption that §112(6th ¶) is not invoked. To be clear, while Applicant is arguing WIT-1, the Examiner is relying exclusively on WIT-2 i.e. “or else recites function without reciting sufficient structure for performing that function.” Williamson, 792 F.3d at 1349 (citations and quotations omitted).
Because Applicant’s argument that §112(6th ¶) is not invoked in the Dec 2025 Applicant Response apply WIT-1 (the part of the invocation test that the Examiner is not using), and because the Examiner is relying solely on the second WIT (i.e., WIT-2), Applicant’s arguments regarding “control system” is not persuasive. In other words, because Applicant’s arguments are only addressing WIT-1, Applicant’ WIT-1 arguments, no matter how meritorious, cannot be considered persuasive.
Moreover, the Examiner agrees that a control system may be interpreted as structure. However, simply because a claimed term may be interpreted as structural is not determinative when, as the Examiner is doing in this case, the Examiner is using WIT-2 to overcome the presumption.
As an initial matter, the question is not whether a claim term recites any structure (such as a “control system”) but whether it recites sufficient structure—a claim term is subject to §112(6th ¶) if it recites function without reciting sufficient structure for performing that function.
The Examiner also notes that two of the cases were decided before Williamson which specifically overruled the “strong” presumption being applied before its decision. In Williamson, the Federal Circuit stated the presumption against means-plus-function claiming is not “strong” and that a challenger need not show that the limitation is essentially devoid of anything that can be construed as structure; rather a challenger need only show that the structure is not sufficient for performing the claimed function. Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.
However, Applicant has not provided any evidence of what the art-recognized structure is. If this structure for providing these operations is so well recognized, Applicant should have been able to specifically point to the “exact structure” required when using the various “control systems” in association with their “clearly recited” operations without resorting to the Applicant’s specification.
Thus, the Examiner concludes that the claim requirements of the “control system” in functional phrases FP1 does in fact invoke 35 U.S.C. § 112 6th paragraph and will be examined as such.
Double Patenting
Applicant contends that the Obvious Double Patenting (ODP) rejections provided in the Sept 2025 Non-Final Office Action do not properly address/map the “[control system configured to] calculate surface area…” claim requirement of pending claims 1 and 12 to the corresponding claim requirements of the claims of the ‘019 Patent, the‘192 Application and the ‘838 Application. (See Dec 2025 Applicant Response at 15-17).
The Examiner respectfully disagrees. As set forth in the Sept 2025 Non-Final Office Action, the Functional Phrase “control system” of claims 1, 11 and 12 in the instant ‘196 Reissue Application invokes 35 U.S.C § 112 6th paragraph. (See Sept 2025 Non-Final Office Action at § X.B.(1); also see VII.B.(1), supra). In the ODP rejections, the Examiner asserted that the “controller” claim requirements in the ‘019 Patent, the‘192 Application and the ‘838 Application were similarly invoking 35 U.S.C § 112 6th paragraph and disclose the same corresponding structures. (See Sept 2025 Non-Final Office Action at §§ XII.A-C; also see §§ VIII.A-C, supra). Thus, since the “control system” and “controller” both invoke the 35 U.S.C § 112 6th paragraph and disclose the same corresponding structures, the Examiner finds that the Sept 2025 Non-Final Office Action did properly address/map the “[control system configured to] calculate surface area…” claim requirement of pending claims 1 and 12 to the corresponding claim requirements of the claims of the ‘019 Patent, the‘192 Application and the ‘838 Application.
35 U.S.C. § 103 Rejections
Calculate Surface Area
Kaufman and Thorens alone
Applicant contends that neither Kaufman, nor Thorens, teach electrode surface area calculation. (See Dec 2025 Applicant Response at 15-17).
The Examiner respectfully agrees. The Examiner finds that Jacobson is cited for this teaching. (See Sept 2025 Non-Final Office Action at §§ XIII.(A.(1).(c).ii; XIII.A.(6).(d); XIII.F.(1).(e); also see §§ IX.(A.(1).(c).ii; IX.A.(6).(d); IX.E.(1).(e), supra).
Jacobson’s Teaching Inapplicable
Since Jacobson teaches measuring levels of multiple fluids, Applicant contends that Jacobson is not applicable to the claimed invention measuring the amount of a single fluid. (See Dec 2025 Applicant Response at 20).
The Examiner respectfully disagrees. The Examiner finds that air is a fluid. To support the Examiner’s position, the Examiner fins that Jacobson states,
[t]he dielectric constant is the electric property of each fluid that allows the capacitive sensor to distinguish between the different fluids. C describes the capacitance measured by each main capacitive sensor in the array. The number of fluids (counting air as one fluid) can then be measured by this apparatus and method.
(Jacobson at ¶ 0045; also see Equation 3a). From this perspective, the Examiner finds Jacobson sufficiently teaches measuring the capacitance/height of both a single fluid (i.e., a fluid in a container fluid) and air in a container. Thus, the Examiner concludes and maintains that Jacobson’s teaching is applicable to measuring the amount of a single fluid.
Jacobson’ Teaching Incompatible
Since Jacobson teaches multiple capacitive sensors having different geometries, Applicant contends that Jacobson is incompatible with the claimed two electrode system. (See Dec 2025 Applicant Response at 20-21). Applicant further contends that one would not know how to combine Jacobson’s multiple sensor approach to function with only two electrodes of the claimed invention. (Id. at 21). Applicant, further contends that the mathematical approach of Jacobson can only be applied to the array of sensors with different geometries. (Id.)
The Examiner respectfully disagrees. First, while Jacobson does teach the utilization of an array of sensors with the geometries being distinct, the Examiner finds that Jacobson’s teaching is applicable and compatible with a single two electrode system with a single fluid and air. (Jacobson at ¶ 0034). The physical properties of the two electrode plate system (i.e., Equations 1) are still relevant to each two electrode system as Equations 3(a), 3(b), 4 illustrate. Specifically, Jacobson states,
The epsilon value (ε0) represents the dielectric constant, while the epsilon values (εa, εb,… εn) represent the permittivity of the fluids in question;
The integrals taken of the w functions provide the area (A) of the main capacitive sensor encompassed by each fluid as it is denoted; and
The integrals taken of the d functions divided by the length of the definite integral taken provide the average distance between the conductive plates of the main capacitive sensor for the height (z) of the fluid in question.
By having an array of main capacitive sensors that has the properties described by the following equations, the main capacitive sensor described herein allows the levels of the individual fluids to be determined with known dimensions of each sensor.
(Jacobson at ¶¶ 0042-0045; emphasis added). The Examiner finds that electrodes having the same geometry are illustrate in Figures 1 and 3A. Even though the Equations of Jacobson are based upon changes in width of the electrodes and/or distance between the electrodes, the Examiner finds that the mathematics of the equations would still apply to a single two electrode pair system and integrate over both constant width of the electrodes and constant distance between the electrodes to attain the area that the fluid is interacting with the two electrodes and thus, deduce the level of the fluids in question (i.e., that is multiple fluids and air; or even a single fluid and air). While the one ordinary skill in the art can recognize that Jacobson teaches a multiple array of pairs of conductor plates, the Examiner concludes and maintains that the teaching of Jacobson is still relevant and compatible to the instant invention.
Hindsight
Applicant further contends that the Office used the information of the ‘668 Patent to provide a conclusion of obviousness (i.e., hindsight). (See Dec 2025 Applicant Response at 21-22).
With respect to the contention that the Office used the information of the ‘668 Patent to provide a conclusion of obviousness (i.e., hindsight), the Examiner respectfully disagrees. In response to Applicant’s argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
From this perspective, in the instant ‘196 Reissue Application, the obviousness determination is not in any way based on Applicant’ disclosure, therefore there is no improper use of hindsight. As can be seen in the rejections, the determination is based on the teachings of the references and rationales that are set forth in the MPEP and find their basis in KSR. The reasoning therefore comes from the prior art, not from the ‘668 Patent, and is not improper hindsight.
Bodily Incorporation
Applicant contends that: (1) the combination of Jacobson would require modifications to Kaufman not addressed by the Examiner (i.e., bodily incorporation). (See Dec 2025 Applicant Response at 21-22).
The Examiner respectfully disagrees. The Examiner finds that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In addition, the MPEP states,
“A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396.
(MPEP at § 2141.II.C).
From this perspective, The Examiner finds that it is not the bodily incorporation of every element of Jacobson that must be incorporated into the structure of the primary reference, but whether one of ordinary skill in the art of fluid level sensor systems would look to the teachings of Jacobson and the utilization of a pair of electrodes to measure the level of fluids in a container based upon the physical structure and properties of the pair of electrodes.
In this light, the Examiner finds that Jacobson teaches a method and apparatus for sensing fluid levels within a storage vessel. (Jacobson at Tile; Abstract). While the Examiner acknowledges that Jacobson teaches a multiple array of electrode pairs with the electrode pairs potentially having different geometries to measure fluid levels, the Examiner finds that Jacobson teaches the utilization of the capacitance and surface area relationship between each electrode pair to measure the fluid level of fluids including air. (Id. at ¶¶ 0034-0035; 0038-0045; see Figure 1, 2; also see Equation 3(a), 3(b), 4 and discussions thereof). Even though the Equations of Jacobson are based upon changes in width of the electrodes and/or distance between the electrodes, the Examiner finds that the mathematics of the equations would still apply to a single two electrode pair system and integrate over both constant width of the electrodes and constant distance between the electrodes to attain the area that the fluid is interacting with the two electrodes and thus, deduce the level of the fluids in question (i.e., that is multiple fluids and air; or even a single fluid and air).
Accordingly, since Kaufman discloses an aerosol-generating system (combination apparatus 1 and insertable smokable material article 5) comprising a first electrode 12 (i.e., left side) and a second electrode 12 (i.e., right side) spaced form the first electrode 12 (i.e., left side). (Kaufman at p.12, l. 23 – p.13, l.3; see Figure 3) utilizing capacitance to determine the presence of the insertable smokable material article 5. (Id. at p.11, ll.23-31; p.12, ll.15-21), the Examiner finds that one of ordinary skill in the art would look to improve the sensing capabilities of Kaufman with the processing hardware/software to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with the fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrode. (Jacobson at Title; Abstract; ¶¶ 0034-0035; 0038-0045; see Figure 1, 2). Thus, again, the Examiner concludes and maintains that one or ordinary skill in the art would look to these teachings in Jacobson and the utilization of the capacitance and surface area relationship between an electrode pair to measure the fluid level of fluids including air. Therefore, the Office has properly established a prima facie case of obviousness.
Analogous Art
Applicant contends that Jacobson is neither in the field of endeavor as the claimed invention nor reasonably pertinent to the problem the inventor was trying to solve. (See Dec 2025 Applicant Response at 23-25).
The Examiner respectfully disagrees. It has been held that a prior art reference must either be in the field of Applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the Examiner finds that Jacobson is analogous because it is in the field of Applicant’s endeavor and reasonably pertinent to the particular problem with which Applicant was concerned.
First, the Examiner finds that Applicant’s field of endeavor of the claimed invention is an aerosol fluid delivery system comprising a pair of electrodes, a storage portion therebetween having fluid therein, and a control system measuring capacitance between the electrodes and determining the level of the fluid in the storage portion based upon surface area. (‘668 Patent at Abstract; c.30, ll.23-42; c.32, l.61 – c.33, l.38). While the Examiner agrees that Jacobson is directed to a system for sensing levels of insoluble fluids (i.e., (1) oil and water; (2) milk and cream; etc., (Jacobson at ¶ 0074)) in a storage container, the Examiner finds that Jacobson is still in Applicant’s field of endeavor because Jacobson is directed to providing a fluid storage system comprising a pair of electrodes, a storage portion therebetween having fluid therein, and a control system measuring capacitance between the electrodes and determining the level of the fluid in the storage portion. The Examiner finds that Jacobson further specifically teaches an apparatus and method for sensing levels of fluids within a storage container comprising a processor configured to (1) measure the capacitance between two electrodes; (2) calculate the surface area of the first electrode based upon capacitance derived from the first electrode in contact with the fluid/liquid and a relationship of the permittivity, area and capacitance established in Equation 9; and (3) determine the amount of the fluid/liquid in the storage portion based upon the calculated surface area and the distance between the electrode. (Jacobson at Title; Abstract; ¶¶ 0034-0035; 0038-0045; see Figure 1, 2). The Examiner finds that both Applicant and Jacobson are directed to a fluid storage system that provides the utilization of the capacitance and surface area relationship between an electrode pair to measure the fluid level of fluids including air. Thus, the Examiner reasonably concludes that Jacobson is in the field of Applicant’s endeavor.
In addition, the Examiner finds that Jacobson is reasonably pertinent to the particular problem with which the applicant was concerned. The Examiner finds that Applicant’s invention is directed to a fluid delivery system utilizing a pair of electrodes, a storage portion therebetween having fluid therein, and a control system measuring capacitance between the electrodes and determining the level of the fluid in the storage portion. (‘668 Patent at Abstract; c.30, ll.23-42; c.32, l.61 – c.33, l.38). In this light, the Examiner finds that Jacobson teaches a fluid storage system utilizing of the capacitance and surface area relationship between each electrode pair to measure the fluid level of fluids including air. (Id. at ¶¶ 0034-0035; 0038-0045; see Figure 1, 2; also see Equation 3(a), 3(b), 4 and discussions thereof). Thus, the Examiner reasonably concludes that Jacobson is reasonably pertinent to the particular problem with which the applicant was concerned.
Therefore, the Examiner concludes and maintains that Jacobson is analogous art.
Kaufman Teaches Away
Applicant contends that Kaufman teaches away from liquid level measurement. (See Dec 2025 Applicant Response at 25-26).
The Examiner respectfully disagrees. The Examiner finds that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).” (See MPEP § 2123). In addition, “[a] reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.975 (1989). (Id.). From this perspective, the Examiner disagrees with Applicant that Kaufman is not concerned, to any degree, with using the capacitance and surface area relationship between each electrode pair to measure the fluid level of fluids including air.
While one of ordinary skill in the art would recognize that Kaufman does teach a preference to a method and apparatus for determining the presence of the insertable smokable material article (Kaufman at p.11, ll.23-31; p.12, ll.15-21), the Examiner finds insufficient teaching away within Kaufman from using the more complex calculations to determine the fluid level of fluids including air. Thus, the Examiner concludes that Kaufman does not teach away from using the complex calculations of Jacobson to determine the amount of fluid in the insertable smokable material article.
Other Dependent Claims
Applicant contends that the features of dependent claims 3-5, 8 and 10 are based on at least the same deficiencies of Kaufman, Thorens, and Jacobson. (See Dec 2025 Applicant Response at 27-28).
The Examiner respectfully disagrees. The Examiner finds this contention the same as previously set forth by Applicant. (Dec 2025 Applicant Response at 19-27). Thus, the Examiner finds this argument addressed above. (See § X.E, supra).
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 extension fee 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 date of this final action.
Because this application is now final, Applicant are reminded of the USPTO’s after final practice as discussed in MPEP §714.12 and §714.13 and that entry of amendments after final is not a matter of right. “The refusal of an examiner to enter an amendment after final rejection of claims is a matter of discretion.” In re Berger, 279 F.3d 975, 984, 61 USPQ2d 1523, 1529 (Fed. Cir. 2002) (citations omitted). Furthermore, suggestions or examples of claim language provided by the Examiner are just that—suggestions or examples—and do not constitute a formal requirement mandated by the Examiner. Unless stated otherwise by an express indication that a claim is “allowed,” exemplary claim language provided by the Examiner to overcome a particular rejection or to change claim interpretation has not been addressed with respect to other aspects of patentability (e.g. §101 patentable subject matter, §112, first paragraph written description and enablement, §112, second paragraph indefiniteness, and §102 and §103, prior art). Therefore, any claim amendment submitted under 37 C.F.R. §1.116 that incorporates an Examiner suggestion or example or simply changes claim interpretation will nevertheless require further consideration and/or search and a patentability determination as noted above.
Applicant is respectfully reminded that any suggestions or examples of claim language provided by the Examiner are just that—suggestions or examples—and do not constitute a formal requirement mandated by the Examiner. To be especially clear, any suggestion or example provided in this Office Action (or in any future office action) does not constitute a formal requirement mandated by the Examiner.
Should Applicant decide to amend the claims, Applicant is also reminded that—like always—no new matter is allowed. The Examiner therefore leaves it up to Applicant to choose the precise claim language of the amendment in order to ensure that the amended language complies with 35 U.S.C. § 112 1st paragraph.
Independent of the requirements under 35 U.S.C. § 112 1st paragraph, Applicant is also respectfully reminded that when amending a particular claim, all claim terms must have clear support or antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o). Should Applicant amend the claims such that the claim language no longer has clear support or antecedent basis in the specification, an objection to the specification may result. Therefore, in these situations where the amended claim language does not have clear support or antecedent basis in the specification and to prevent a subsequent ‘Objection to the Specification’ in the next office action, Applicant is encouraged to either (1) re-evaluate the amendment and change the claim language so the claims do have clear support or antecedent basis or, (2) amend the specification to ensure that the claim language does have clear support or antecedent basis. See again MPEP § 608.01(o) (¶3). Should Applicant choose to amend the specification, Applicant is reminded that—like always—no new matter in the specification is allowed. See 35 U.S.C. § 132(a). If Applicant has any questions on this matter, Applicant is encouraged to contact the Examiner via the telephone number listed below.
Applicant is reminded of the obligation to apprise the Office of any prior or concurrent proceedings in which the ‘668 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, other reissues, reexaminations, or litigations and the results of such proceedings.
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN J RALIS whose telephone number is (571)272-6227. The examiner can normally be reached Monday-Friday 8:30am-5:30pm.
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, Hetul Patel can be reached on 571-272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Stephen J. Ralis/Primary Examiner, Art Unit 3992 Conferees:
Ken WhittingtonPrimary Examiner, Art Unit 3992 /H.B.P/Hetul PatelSupervisory Patent Examiner, Art Unit 3992
SJR
03/04/2026
1 The Examiner notes that all of the Rejected Claims stood rejected under 35 U.S.C. 103; claim 2 stood rejected under 35 U.S.C. 112(a) and (b); and claims 1 and 12 stood rejected under Obvious Double Patenting.
2 Claim 2 canceled in the instant Dec 2025 Claim Amendment.
3 See Applicant’s Response After Final filed 14 January 2021 (“Jan 2021 ‘726 Application Response to Final Office Action”) at 8.
4 The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, Dec 2000, p.141.
5 The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, Dec 2000, p.141.
6 The ‘838 Application is published as U.S. Publication No. 2023/0209662.
7 The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, Dec 2000, p.141.
8 The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, Dec 2000, p.141.
9 The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, Dec 2000, p.141.
10 The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, Dec 2000, p.141.
11 The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, Dec 2000, p.141.
12 Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1582 (Fed. Cir. 1996) (select citations and quotations omitted) (“Greenberg”).
13 Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (“Williamson”)
14 “Part II.C.1. of this opinion has been considered and decided by the court en banc.” Williamson, 792 F.3d at 1343, n1.
15 See also MPEP § 2181.I. quoting a very similar Williamson statement.
16 “’or’ 1 — used as a function word to indicate an alternative < coffee or tea>” Merriam-Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., Springfield, M.A., 1997; “’or else’ —used to say what another possibility is. He either thinks he can't do it or else he just isn't interested.” Merriam Webster’s Dictionary at Merriam-Webster.com, Merriam-Webster, www.merriam-webster.com/dictionary/or else. Last accessed 01 Feb 2019.
…
“’or else’ — used to say what another possibility is [.] He either thinks he can't do it or else he just isn't interested.”
Merriam-Webster.com Dictionary, s.v. “or else,” https://www.merriam-webster.com/dictionary/or%20else. Last accessed 13 March 2025.