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 .
DETAILED ACTION
This Office Action is in response to the Amendment filed 08/18/2026. In the instant Amendment, claim 1 was amended; claims 4-5 and 11-20 are cancelled; claim 1 is an independent claim. Claims 1-3 and 6-10 are pending in this 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/18/2026 has been entered.
Response to Arguments
The non-statutory double-patenting rejection of claims 1-3 and 6-10 over claims 1-9 of U.S. Patent No: 11,882,438, both alone and in view of Tremblay et al (“Tremblay,” US 20150181945), Minskoff et al (“Minskoff,” US 20140246035) and Conley et al (“Conley,” US 20130220315) is maintained.
In the attempt to promote compact prosecution, the Examiner contacted the applicant’s representative to see if he would file an e-terminal disclaimer to place the case in condition for allowance. The attorney wasn’t able to contact the inventor and did not have power of attorney to file an e-terminal disclaimer on the inventor’s behalf. Thus, the Examiner is sending out a non-final rejection with only non-statutory obvious double patenting rejection.
Applicant’s arguments filed 08/18/2026 have been fully considered but they are not persuasive.
Applicant argues (on pages 5-6): that U.S. Patent No: 11,882,438 does not, standing alone, expressly disclose several limitations of pending claim 1.
The Examiner respectfully disagrees with the applicant. . This argument is not persuasive because the rejection does not solely upon the express disclosure of U.S.Patent No: 11,882,438 for each disputed limitation. Rather, as explained in the previous Office Action, claims 1-9 of U.S. Patent No; 11,882,438 disclose the underlying claimed system and functionality, while Tremblay, Minskoff, and Conley are relied upon for the additional limitations identified in the rejection. Thus, Applicant’s argument that the reference patent alone does not expressly disclose each additional limitation does not address the rejection as actually presented.
Applicant argues (on pages 5-6): that regarding to the limitation requiring the application to “determine that the identification data of the user is associated with an identifier of the nicotine dispenser and satisfies a first verification technique.” Applicant argues that Tremblay merely discloses authorization information such as alphanumeric identifier, passcode, biometric identifier or age indication for determining whether a user is authorized to vape.
The Examiner respectfully disagrees with the applicant. Tremblay is relied upon for associating user-identification/authorization information with the electronic vaping device and for verifying the user before use. As set forth in the previous Office Action, Tremblay in [0171]-[0172], [0160]-[0161] describes determining user authorization based upon user information, including age, passcode, and biometric information, in connection with an identified electronic cigarette/device. The rejection does not require that Tremblay employ Applicant’s precise terminology. Further, the proposed combination is not a bodily incorporation of the exact wording of Tremblay into U.S. Patent No: 11,882,438. Rather, one of a person of ordinary skill in the art would have found it obvious to employ Tremblay’s know user-verification and device-association functionality in the system claimed in U.S. Patent No: 11,882,438 in order to enhance or facilitate controlled use of an electronic vaping device, as previously stated in the rejection. The use of known verification techniques for their established purpose would have produced a predictable result.
Applicant argues (on pages 6-7): that Minskoff does not teach “comparing an age of the user specified in the identification data to an age stored in a user profile of the user because Minskoff in [0210] allegedly merely discloses verifying the user’s age at the time a unique identification profile is established.
The Examiner respectfully disagrees with the applicant. Minskoff expressly teaches establishing and using a user identification profile containing demographic information including age, and verifying age in connection with that profile. The claimed distinction between an age supplied as identification data and an age maintained in a user profile represents the predictable use of Minskoff’s stored user profile information for comparison during verification. When considered together with the user-identification functionality of U.S. Patent No: 11,882,438, the claimed comparison would have been an obvious implementation of the verification process. The obviousness inquiry does not require the secondary reference to recite the claimed invention verbatim. A combination of known elements is properly found obvious where the elements perform their known functions and the combination would have yielded predictable results, (See MPEP 2143).
Applicant argues (on page 7): that Conley does not teach or suggest the limitation requiring “responsive to the first verification technique and the second verification technique being satisfied, communicate the identification signal from the application on the personal communication device to the nicotine dispenser via the wireless communication link in order to physically unlock the nicotine dispenser.”
The Examiner respectfully disagrees with the applicant. Conley discloses in [0063] and [0067]-[0070] an electronic vaporizer in which authorization information obtained using biometric and/or RFID/Bluetooth/NFC functionality is used to verify an authorized user or article before enabling operation of the vaporizer. Conley further describes communication between a personal communication device and the vaporizer and the enabling of device operation upon successful verification. Thus Conley teaches communicating an authorization and identification result to the vaporizer after verification so that use of the vaporizer is enabled (See Conley, [0067]-[0069]). Applicant’s argument focuses on whether Conley alone expressly recites every step of pending claim 1 in the identical sequence and terminology. This is not the basis of the rejection. Conley is relied upon for the known concept of wirelessly communicating verified authorization information to an electronic vaporizer to enable or unlock its operation. US Patent No: 11,882,438 supplies the underlying nicotine-dispenser and personal-communication-device architecture, while Tremblay and Minskoff supply the additional user and age verification teachings. A person of ordinary skill in the art would have recognized that transmitting the successful verification result to the dispenser to enable its operation is a predictable application of those teachings.
Applicant argues (on page 7): that Tremblay, Minskoff and Conley each fail individually to disclose the entire claimed verification and unlocking process, the claims are patentably distinct.
The Examiner respectfully disagrees with the applicant. This argument is not persuasive because it addresses the references separately rather than the combined teachings relied upon in the rejection.
Nonstatutory obviousness-type double patenting asks whether the pending claims are merely an obvious variant of the invention claimed in the reference patent. The analysis is similar to obviousness inquiry, and the prior art may be considered in determining whether the additional limitations distinguish the pending claim patentably from the reference claims. Applicant has not show that the particular combination of known user verification, age-profile comparison, wireless authorization signaling and device enabling produces an unexpected result or requires more than the predictable use of known elements according to their established functions.
Applicant argues (on page 7): that pending claim 1 recites an additional imitation requiring the application to determine, based on at least one use signal received from the nicotine dispenser, that use exceeds a policy associated with the user, and to transmit a lock signal in response.
The Examiner respectfully disagrees with the applicant. Tremblay discloses determine from the use signal that use exceeds a user policy (See Tremblay, [0111]-[0118], [0136]). Tremblay further discloses transmitting a lock signal in response (See Tremblay, [0136]-[0137]). Minskoff discloses a user policy and allowable usage threshold (See Minskoff, [0169], [0198], Table 1; also see [0095], [0178]-[0179]). Thus, Applicant’s argument has been considered but does not establish patentable distinctness from the reference claims and the teachings relied upon in the rejection. The mere recitation of an additional known control function does not, without more, establish that the claimed invention as a whole is patentably distinct from the reference patent. Applicant’s arguments do not overcome the determination that claims 1-3 and 6-10 are not patentably distinct from claims 1-9 of U.S. Patent No; 11,882,438, particularly when considered in view of the teachings of Tremblay, Minskoff, and Conley. Claims 2-3 and 6-10 depend directly or indirectly from claim 1 and applicant has not presented separate arguments demonstrating patentable distinctness of those claims. The rejection of claims 1-3 and 6-10 on the ground of nonstatutory obviousness-type double patenting is therefore maintained. A timely terminal disclaimer meeting the requirements of 37 C.F.R 1.321 may be used to obviate an appropriate nonstatutory obviousness-type double-patenting rejection.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US Patent No: 11,882,438. Although, the claims at issue are not identical they are not patentably distinct because claims 1-9 of the Patent No. 11,882,438 anticipated all limitations recited in claims 1-3 and 6-10 of the instant application.
Further, claims 1-3 and 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US Patent No: 11,882,438 in view of Tremblay et al (“Tremblay,” US 20150181945), Minskoff et al (“Minskoff,” US 20140246035) and further in view of Conley et al (“Conley, US 20130220315).
Regarding claim 1 of the instant application, claim 1 of US Patent No: 11,882,438 discloses all limitations of claim 1 but does not explicitly disclose wherein the application is configured to: determine that the identification data of the user is associated with an identifier of the nicotine dispenser and satisfies a first verification technique
However, in an analogous art, Tremblay discloses wherein the application is configured to: determine that the identification data of the user is associated with an identifier of the nicotine dispenser and satisfies a first verification technique, (Tremblay, [0171]-[0172], [0160]-[0161] describes responsive to determining the user’s age [identification data of the user] is associated with the serial numbers/IP addresses [identifier of nicotine dispenser] of the electronic cigarette [nicotine dispenser] retrieve the verified age [user information] by passcode or biometric identifier; also see [0240], [0207], [0148])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Tremblay with US Patent No: 11,882,438 to include wherein the application is configured to: determine that the identification data of the user is associated with an identifier of the nicotine dispenser and satisfies a first verification technique. One would have been motivated to and electronic vaping device to enhance or facilitate its use (Tremblay, [0007]).
US Patent No: 11,882,438 fails to explicitly disclose the first verification technique comprising comparing an age of the user specified in the identification data to an age stored in a user profile of the user.
However, in an analogous art, Minskoff discloses the first verification technique comprising comparing an age of the user specified in the identification data to an age stored in a user profile of the user, (Minskoff, [0210] describes verifying the user’s age by comparing the user’s age at the time of establishing a unique identification profile for the end user to prevent unintended use or abuse of the device by minors. Demographic data can be used to establish a user profile)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Minskoff with US Patent No: 11,882,438 to include the first verification technique comprising comparing an age of the user specified in the identification data to an age stored in a user profile of the user. One would have been motivated to provide electronic flameless vapor inhaler unit that stores and outputs data and that may simulate a cigarette or deliver nicotine and other medications to the oral mucosa, pharyngeal mucosa, tracheal, and pulmonary membranes (Minskoff, [0002]).
US Patent No: 11,882,438 fails to explicitly disclose responsive to the first verification technique and the second verification technique being satisfied, communicate the identification signal from the application on the personal communication device to the nicotine dispenser via the wireless communication link in order to physically unlock the nicotine dispenser; and wherein the nicotine dispenser is configured to physically unlock and allow use of the nicotine dispenser responsive to receipt of the identification signal from the application on the personal communication device
However, in an analogous art, Conley discloses responsive to the first verification technique and the second verification technique being satisfied, communicate the identification signal from the application on the personal communication device to the nicotine dispenser via the wireless communication link in order to physically unlock the nicotine dispenser; and wherein the nicotine dispenser is configured to physically unlock and allow use of the nicotine dispenser responsive to receipt of the identification signal from the application on the personal communication device, (Conley describes [0063], [0067]-[0070], responsive to the first verification technique and the second verification technique being satisfied, communicate the identification signal [0067], from the application [0065] on the personal communication device [0065]-[0066] to the nicotine dispenser [0003],[0078] via the wireless communication link [0065] in order to physically unlock ([0067]-[0069] describes authenticating by using a signed certificate to access the vaporizer) the nicotine dispenser; [0003],[0078])
and wherein the nicotine dispenser [0003],[0078] is configured to physically unlock and allow use [0067]-[0070], of the nicotine dispenser [0003],[0078], responsive to receipt of the identification signal [0067] from the application [0065] on the personal communication device [0065]-[0066])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Conley with US Patent No: 11,882,438 to include responsive to the first verification technique and the second verification technique being satisfied, communicate the identification signal from the application on the personal communication device to the nicotine dispenser via the wireless communication link in order to physically unlock the nicotine dispenser; and wherein the nicotine dispenser is configured to physically unlock and allow use of the nicotine dispenser responsive to receipt of the identification signal from the application on the personal communication device. One would have been motivated to provide an electronic vaporizer (Conley, [0003]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES J WILCOX whose telephone number is (571)270-3774. The examiner can normally be reached M-F: 8 A.M. to 5 P.M..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luu T. Pham can be reached on (571)270-5002. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES J WILCOX/Examiner, Art Unit 2439
/LUU T PHAM/Supervisory Patent Examiner, Art Unit 2439
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