DETAILED ACTION
Contents
I. Notice of Pre-AIA or AIA Status 4
II. Priority 4
III. Continued Examination Under 37 CFR 1.114 4
IV. Pertinent Prosecution History 5
V. Claim Status 7
VI. Reissue Requirements 7
VII. Information Disclosure Statement(s) 8
VIII. Claim Interpretation 9
A. Lexicographic Definitions 9
B. 35 U.S.C § 112 6th Paragraph 10
(1) Functional Phrase – “Control System I” 11
(3) Functional Phrase – “Control System III” 16
(4) Functional Phrase – “Control System IV” 19
IX. Double Patenting 21
A. U.S. Patent No. 11,602,019 23
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”). 23
C. U.S. Application No. 18/178,838 29
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”). 29
X. Response to Arguments 35
A. Claim Interpretation 35
(1) 35 U.S.C § 112 6th Paragraph 35
B. Double Patenting 38
(1) U.S. Application No. 17/306,192 38
(2) U.S. Application No. 18/178,838 and U.S. Patent No. 11,602,019 38
C. 35 U.S.C. § 103 Rejections 42
(1) Determine a Volume of Aerosol-Forming Substrate 42
(2) Analogous Art 44
(3) Other Dependent Claims 47
XI. Allowable Subject Matter 47
A. Claims 1, 3-10 and 12 47
B. Claims 3-10 48
C. Claim 11 48
D. Claim 13 49
XII. Conclusion 51
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 22 May 2026 has been entered.
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 under 35 U.S.C. §§ 103, 112 and Double Patenting.1
On 16 December 2025, Applicant filed a 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.
The Office issued a Final Office action on 11 March 2026 (“Mar 2026 Final Office Action”). In particular, the Mar 2026 Final Office Action provided rejections for claims 1 and 3-13 (“Rejected Claims”) under 35 U.S.C. §§ 103 and Double Patenting.3
On 07 May 2026, the Office and Applicant had an interview (“May 2026 Interview”) briefly discussing the Mar 2026 Final Office Action (see Interview Summary mailed 13 May 2026 (“May 2026 Int Summary”)).
On 08 May2026, Applicant filed a Response to Final Office Action. (“May 2026 Applicant Response”). The May 2026 Applicant Response included Remarks; a Terminal Disclaimer (“May 2026 TD”)4; and a claim amendment (“May 2026 Claim Amendment”). The May 2026 Claim Amendment comprises: amended5 original claims 1 and 11-13; original claims 3-10; and canceled6 original claim 2.
The Office issued an Advisory action on 21 May 2026 (“May 2026 Advisory Action”) not entering the proposed May 2026 Claim Amendment.
On 22 May 2026, Applicant filed a Request for Continued Examination of the instant ‘196 Reissue Application.
The instant Office Action is a Non-Final Office Action.
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 Statement filed on 10 April 2026 (“April 2026 IDS”) has been received, considered and entered into the record.
It is noted that a foreign language document was included in the April 2026 IDS. In this cases, the Office has annotated the entry in the form 1449 where applicable to indicate the degree to which the document has been considered (limited to English language disclosures).
See attached forms PTO-1449.
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 a volume 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 a volume 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. 2005/0229700 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] a volume 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.7 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 volume 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 a volume 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 a volume 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).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.)
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. 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 a volume 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 a volume 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 Publication9 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).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.)
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.
Response to Arguments
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 May 2026 Applicant Response at 11-17). Specifically, Applicant contends that the Office’s position that the algorithm must be fully claimed is misplaced. (Id. at 11; emphasis – utilizing mechanical example). Applicant contends that the control system” is not a generic placeholder and connotes sufficient structure. (Id. at 12-13). Applicant contends that the Office conflates and misapplies the WIT-2 test of sufficient structure and its application to computer-implemented function claim requirements. (Id. at 13-17).
With respect to the Owner first position, the Examiner respectfully disagrees. In examination of Applicants mechanical example (i.e., “a first cross member ‘is commented’ to a second cross member”), the Examiner finds this example misplaced as a potential structural 112(f) invocation. First, the example fails the Prong B analysis (i.e., presence of a claimed function). The Examiner finds that the phrase “is connected to” is not a functional phrase, but instead connotes actual structural. From this perspective, one of ordinary skill in the art would not look to invoke 35 U.S.C § 112(f) nor look to the Specification for the structure. The Examiner finds that the “Control System I” Functional Phrase in the instant ‘196 Reissue Application is different.
In examination of the Mar 2026 Final Office Action, the Examiner finds that there are three (3) “control system” claim requirements that had the potential of invoking 35 U.S.C § 112(f). (See Mar 2026 Final Office Action at §§ VII.B, (1), (3) and (4)). All three (3) of these “control system” claim requirements met the Prong A and B test, however, of these three (3), the Examiner found that two (2) of the three (3) did not invoke because the claim requirement had sufficient structure to perform the function. In the Examiner’s 35 U.S.C § 112(f) analysis for the ”Control System I” claim requirement, the Examiner found that the “control system” did not have sufficient structure to perform the functional requirement.
With respect to Owner’s second and third positions, the Examiner respectfully disagrees. Applicant contends that a “control system” is no different than a ”filter circuit,” “amplifier circuit,” or “switching circuit” and , thus, connotes sufficient structure. While the Examiner agrees that a control system may be interpreted as structure, 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 (i.e., “recites function without reciting sufficient structure for performing that function,” Williamson, 792 F.3d at 1349 (citations and quotations omitted)).
Again, as set forth in the Mar 2026 Final Office Action, and above, the Examiner finds there is no disclosure or suggestion from the prior art that a “control system” is a sufficient and definite structure to perform the functions recited in FP1. For example, to support the Examiner’s position, U.S. Publication No. 2005/0229700 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 control system would be required to perform the function recited in FP1.
Consequently, 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. In this instant case, it is not whether the full computer-implemented algorithm is recited, it is whether a sufficient computer-implemented algorithm is recited to perform the functional phrase.
However, Applicant has not provided sufficient evidence of what the art-recognized structure/algorithm is. If this structure/algorithm for providing these operations is so well recognized, Applicant should have been able to specifically point to the “exact structure/algorithm” 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
U.S. Application No. 17/306,192
With respect to the rejection on the ground of nonstatutory double patenting over the ‘192 Application, the Examiner finds that the May 2026 TD filed by Applicant has been approved by the Office. Thus, the rejection on the ground of nonstatutory double patenting over the ‘192 Application provided in the Mar 2026 Final Office Action is overcome and withdrawn, accordingly
U.S. Application No. 18/178,838 and U.S. Patent No. 11,602,019
Applicant contends that the Examiner has not made a prima facie case that the ‘838 Application and ‘019 Patent share the same disclosure. (May 2026 Applicant Response at 18). Applicant contends that claims 1 and 12 of the instant ‘196 Reissue Application require the aerosol generating element to include a heater and further included a first electrode, second electrode or both and neither the ‘838 Application, nor the ‘019 Patent claims recite such a structure. (Id. at 18-19). Applicant further contends that neither the ‘838 Application, nor the ‘019 Patent disclose the same invention, thus, their disclosure cannot be utilized to show shared or equivalent structure/functionality. (Id. at 19-20).
With respect to the contention that the disclosures of the ‘838 Application and ‘019 Patent cannot be utilized for a prima facie case of ODP, the Examiner respectfully disagrees. The Examiner finds that the ODP rejections provided over both the ‘838 Application and ‘019 Patent are made with respect to claim requirements and not the specification. (See mapping in Mar 2026 Final Office Action at §§ VIII.A, C). However, in that light, the Examiner finds that the only claim requirement necessitating examination of both the ‘838 Application and ‘019 Patent disclosures was the claim requirement of the “controller” which the Examiner similarly deemed to invoke 35 U.S.C. § 112, 6th paragraph. (Id.) With respect to the claim requirement of the “controller “of the ‘019 Patent, the Examiner directed Applicant to the embodiment at c.5, l.43 –
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p.6, l.7. Specifically, the ‘019 Patent states,
(‘019 Patent at c.5, l.43 – p.6, l.7). Similarly, with respect to the claim requirement of the “controller “of the ‘662 Publication11, the Examiner directed Applicant to the embodiment at ¶¶ 0035-0037). Specifically, the ‘662 Publication states,
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(‘662 Publication at ¶¶ 0035-0037). The Examiner finds these embodiments similar and equivalent to the disclosure in the instant ‘196 Application. (Compare § VIII.B.(1), supra). Thus, in light of the controller claim requirements of the ‘019 ODP Claim and ‘838 ODP Claim similarly invoking 35 U.S.C. § 112, 6th paragraph and being similar and equivalent to the disclosure in the instant ‘196 Application, the Examiner concludes and maintains that the claim requirement of the controller of the ‘019 ODP Claim and ‘838 ODP Claim sufficiently satisfies the ”control system” claim requirement of claims 1 and 12 of the instant ‘196 Application.
With respect to the contention that the ‘019 ODP Claim and the ‘838 ODP Claim do not recite an aerosol generating element to including a heater and further included a first electrode, second electrode or both, the Examiner respectfully disagrees. The Examiner finds that both the ‘019 ODP Claim and the ‘838 ODP Claim are to an aerosol generating system comprising a cartridge which includes a vaporizer and first and second capacitor plates. (See ‘019 ODP Claim and the ‘838 ODP Claim in §§ IX.A, C). From this perspective, the Examiner finds that: (1) the “cartridge” element maps to the “aerosol-generator” element; (2) the vaporizer element maps to the heater element; and (2) the first and second capacitor plates map to the “first and second electrodes,” accordingly. (See §§ IX.A, C, supra). From this perspective, the first and second capacitor plates and the vaporizer of the ‘019 ODP Claim and the ‘838 ODP Claim form part of the “cartridge.”
35 U.S.C. § 103 Rejections
Determine a Volume of Aerosol-Forming Substrate
Applicant contends that neither Kaufman, Thorens, nor Jacobson teaches determing a volume of aerosol-forming substrate. (See May 2026 Applicant Response at 21; emphasis added). Specifically, Applicant contends that,
[h]owever, Jacobson does not disclose solving C = (ε₀/d)(k₁A₁ + k₂A₂) for A1, which is the unknown determined surface area of electrode in contact with liquid, let alone subsequently calculating the liquid volume based on this determined surface area.
(See May 2026 Applicant Response at 21; emphasis added).
The Examiner respectfully agrees. With respect to the limitations of claims 1, 11 and 12, the Examiner finds that the prior art of record fails to teach the structural limitation, or its equivalent, of Functional Phrase 1 (i.e., “Control System I;” see § VIII.C.(1), supra, i.e., “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 volume 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”.
In this light, the Examiner finds 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. However, Jacobson does not determine volume of the fluids.
Similarly, with respect to the limitations of claim 13, the Examiner finds that the prior art of record fails to teach the limitation “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 determining a volume 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).
As set forth above, the Examiner finds 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. However, Jacobson does not determine volume of the fluids.
Thus, the obviousness 35 U.S.C. 103 rejection 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”) provided in the Mar 2026 Final Office Action is withdrawn, accordingly
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 May 2026 Applicant Response at 22-25).
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.
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 May 2026 Applicant Response at 25-26).
The Examiner respectfully agrees. The Examiner finds this contention the same as previously set forth by Applicant. (May 2026 Applicant Response at 21). Thus, the Examiner finds this argument addressed above. (See § X.C.(1), supra).
Allowable Subject Matter
Claims 1, 3-10 and 12
Claims 1, 3-10 and 12 would be allowable if a Terminal disclaimer is filed to overcome the Obvious Double Patenting rejection(s) as set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
As set forth in the Mar 2026 Final Office Action, the prior art of record teaches and/or renders obvious the most salient features of an aerosol-generating system and method comprising a storage system, in contact with a wick, to hold an aerosol-forming substrate; first and second electrodes spaced from each other; and an aerosol generator including: a heater and the first and second electrodes; and a control system configured to measure an electrical quantity between the first and second electrodes, calculate a surface area of the electrodes in contact with the aerosol forming substrate and determine an amount (i.e., height) of the remaining aerosol forming substrate held in the storage portion based on surface area of the electrodes. (See Mar 2026 Final Office Action at §§ IX.A, E).
Allowability of claims 1 and 12 are indicated because none of the prior art of record teaches or fairly suggest and aerosol-generating system comprising the structural limitation, or its equivalent, of Functional Phrase 1 (i.e., “Control System I;” see § VIII.C.(1), supra, i.e., “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 volume 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”. (See § X.C.(1), supra).
Claims 3-10 are similarly deemed as having allowable subject matter based on their dependency from independent claim 1, respectively.
Claims 3-10
Claims 3-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 11
Claim 11 is considered patentable for the reasons indicated below:
The following is a statement of reasons for the indication of allowable subject matter:
As set forth in the Mar 2026 Final Office Action, the prior art of record teaches and/or renders obvious the most salient features of an aerosol-generating system comprising a storage system, in contact with a wick, to hold an aerosol-forming substrate; first and second electrodes spaced from each other; and an aerosol generator including: a heater and the first and second electrodes; and a control system configured to measure an electrical quantity between the first and second electrodes, calculate a surface area of the electrodes in contact with the aerosol forming substrate and determine an amount (i.e., height) of the remaining aerosol forming substrate held in the storage portion based on surface area of the electrodes. (See Mar 2026 Final Office Action at § IX.A).
Allowability of claim 11 is indicated because none of the prior art of record teaches or fairly suggest and aerosol-generating system comprising the structural limitation, or its equivalent, of Functional Phrase 1 (i.e., “Control System I;” see § VIII.C.(1), supra, i.e., “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 volume 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”. (See § X.C.(1), supra).
Claim 13
Claim 13 is considered patentable for the reasons indicated below:
The following is a statement of reasons for the indication of allowable subject matter:
As set forth in the Mar 2026 Final Office Action, the prior art of record teaches and/or renders obvious the most salient features of an aerosol-generating method comprising a storage system, in contact with a wick, to hold an aerosol-forming substrate; first and second electrodes spaced from each other; and an aerosol generator including: a heater and the first and second electrodes; and a control system configured to measure an electrical quantity between the first and second electrodes, calculate a surface area of the electrodes in contact with the aerosol forming substrate and determine an amount (i.e., height) of the remaining aerosol forming substrate held in the storage portion based on surface area of the electrodes. (See Mar 2026 Final Office Action at § IX.A).
Allowability of claim 13 is indicated because none of the prior art of record teaches or fairly suggest and aerosol-generating method comprising the limitation “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 determining a volume 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). (See § X.C.(1), supra).
Conclusion
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(a).
Independent of the requirements under 35 U.S.C. § 112(a), 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.
In accordance with MPEP § 1406, the Examiner has reviewed and considered the prior art cited or ‘of record’ in the original prosecution of the ‘668 Patent. Applicant is reminded that a listing of the information cited or ‘of record’ in the original prosecution of the ‘668 Patent need not be resubmitted in this reissue application unless Applicant desires the information to be printed on a patent issuing from this reissue application.
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 on Monday-Friday 8:30am-5:30pm.
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.
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/Stephen J. Ralis/Primary Examiner, Art Unit 3992 Conferees:
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992 /H.B.P/Hetul PatelSupervisory Patent Examiner, Art Unit 3992
SJR
08/10/2026
1 The Examiner notes that all of claims 1-13 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 The Examiner notes that the Rejected Claims stood rejected under 35 U.S.C. 103; and claims 1 and 12 stood rejected under Obvious Double Patenting.
4 The May 2026 TD only overcomes the Obvious Double Patenting (“ODP”) rejection over copending Application No. 17/306,192 (“‘192 Application”). The May 2026 TD does not overcome the ODP rejections over copending Application No. 18/178,838 (“‘838 Application”) nor U.S. Patent No. 11,602,019 (‘’019 Patent”).
5 Claims 1 and 11-13 amended in the instant May 2026 Claim Amendment.
6 Claim 2 canceled in the Dec 2025 Claim Amendment.
7 See Applicant’s Response After Final filed 14 January 2021 (“Jan 2021 ‘726 Application Response to Final Office Action”) at 8.
8 The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, Dec 2000, p.141.
9 The ‘838 Application is published as U.S. Publication No. 2023/0209662.
10 The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, Dec 2000, p.141.
11 The ‘838 Application is published as U.S. Publication No. 2023/0209662.
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