DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 2 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,595,562 in further view of Denyer (US 5,842,486 A1) in further view of Thorens et al. (US 2011/0155153 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because despite ‘592 not claiming a progressive display as claimed in the instant application. Denyer teaches an inhalation device (col. 1, lines 4-6) comprising a progressive display (35) and totaling an amount of vaporized substance that has been produced by sequentially summing up the amounts for each said predetermined amount of time (col. 5, lines 26-42) and causing the progressive display to display a then totaled amount (col. 6, lines 24-37).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ‘592 to include a progressive display, and totaling an amount of vaporized substance that has been produced by sequentially summing up the amounts for each said predetermined amount of time and causing the progressive display to display a then totaled amount as taught by Denyer for the benefit of communicating a currently delivered amount to a user.
Thorens teaches it is known to activate a heater every time a user puffs [0087].
Thus it would have been obvious to one having ordinary skill in the art to have modified ‘592 such that the heater is activated only when a user puffs as taught by Thorens, for the benefit of ensuring the vaporized substance is only delivered when the user is inhaling such that vaporized substance is not wasted into the environment.
Claims 3, 4 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,595,562 in further view of Denyer (US 5,842,486 A1) in further view of Thorens et al. (US 2011/0155153 A1) in further view of Edwards et al. (US 2014/0243749 A1).
Edwards teaches it is known to use a display of a smart phone [0212] to display information related to the administration of a medicament delivery device [0212] wherein the display screen is connected wirelessly to the main body of the device [0194]. (see also figure 1 and 39) The examiner notes the modification is presenting the display/information disclosed by Denyer on to a display of a phone.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Cameron such that the display is a display screen of a smart phone connected wirelessly to said main body as taught by Edwards for the benefit of having an additional and well known way of presenting information to the user.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,595,562 in further view of Denyer (US 5,842,468 A1) in further view of Thorens et al. (US 2011/0155153 A1) in further view of Parker et al. (US 2007/0157931 Al). Although the claims at issue are not identical, they are not patentably distinct from each other because despite ‘592 not claiming an indication of flashing lights when the full amount has been reached, Parker teaches that it is known to provide an indication of flashing lights when treatment (equivalent to a full amount) is complete [0110].
Thus it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Cameron to include flashing lights when the full amount has been reached for the benefit of providing the user with an easy visual indication that the full amount has been delivered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1- 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “the vaporized substance” in line 4. There is a lack of antecedent basis for this claimed limitation.
Claim 1 recites “the inhalation device” in line 7. There is a lack of antecedent basis for this claimed limitation.
Claim 1 recites “the substance” in line 8. There is a lack of antecedent basis for this claimed limitation.
Claim 4 recites “the displayed indication”. There is a lack of antecedent basis for this claimed limitation. It appears applicant is referring to the progressive display and it has been interpreted as such.
Claim 4 recites “a progressive inhalation of the substance”. Claim 3 recites “progressive inhalation” and thus it is unclear if this is another progressive inhalation. Further is “the substance” referring to “the vaporized substance” or a different substance?
Claim 6 recites “the meter”. There is a lack of antecedent basis for this claimed limitation. Claim 6 is also unclear because it states the LEDs are on the main body, however claim 6 depends from claim 3 which states the display is part of a smart phone, not the main body of an inhalation device.
Claim 7 recites “the threshold amount”. There is a lack of antecedent basis for this claimed limitation. There is also a lack of antecedent basis for “the lights”.
Dependent claims inherit the rejections from the claims from which they depend.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 2 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cameron (US 2016/0325055 A1) (provisional filed 5/08/2015) in further view of Denyer (US 5,842,468 A1) in further view of Thorens et al. (US 2011/0155153 A1).
Regarding claim 1, Cameron discloses: An inhalation display device (1411) for providing metering information regarding vaporized substance inhalation by a user to the user, the inhalation display device comprising:
a main body (body of 1411) comprising a channel (1403) through which the vaporized substance can flow (figure 14); and
a processor (1407) or circuit configured to:
after a user inhales using the inhalation device [0161]-[0162]:
start the heating element to begin vaporizing the substance [0161]- [0162] (figure 16);
determine, based on information received from the sensor (1401) regarding the intensity of the light emitted from a light signal device, an amount of vaporized substance that has been produced for each predetermined amount of time (optical sensors; [0135]-[0134] [0153]- [0154]; vapor opacity [0162]).
Cameron does not explicitly state that the heating element is started to begin vaporizing the substance based on a user inhaling each time although the examiner notes that the heating element is started once an initial puff is determined [0161]. Cameron also does not disclose a progressive display, or totaling an amount of vaporized substance that has been produced by sequentially summing up the amounts for each said predetermined amount of time and causing the progressive display to display a then totaled amount, the progressive display being one of integrated with said main body, and wirelessly connected to said main body. Cameron does disclose determining a total amount equaling a predetermined threshold amount [0161]-[0162].
However, Denyer teaches an inhalation device (col. 1, lines 4-6) comprising a progressive display (35) and totaling an amount of vaporized substance that has been produced by sequentially summing up the amounts for each said predetermined amount of time (col. 5, lines 26-42) and causing the progressive display to display a then totaled amount (col. 6, lines 24-37), the progressive display (35) being one of integrated with said main body (see figure 16; col. 3, lines 24-26; claim 2).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Cameron to include a progressive display, and totaling an amount of vaporized substance that has been produced by sequentially summing up the amounts for each said predetermined amount of time and causing the progressive display to display a then totaled amount, the progressive display being one of integrated with said main body as taught by Denyer for the benefit of communicating a currently delivered amount to a user (col. 3, lines 24-26).
Thorens teaches it is known to activate a heater every time a user puffs [0087].
Thus it would have been obvious to one having ordinary skill in the art to have modified Cameron such that the heater is activated only when a user puffs as taught by Thorens, for the benefit of ensuring the vaporized substance is only delivered when the user is inhaling such that vaporized substance is not wasted into the environment.
Regarding claim 2, Cameron as modified discloses the device of claim 1 as set forth above. Cameron as modified by Denyer discloses wherein said processor or circuit further signals an indication that a preset threshold amount of the vaporized substance has been consumed (Denyer: figure 16; col. 5, lines 39-42; col. 6, lines 24-37).
Regarding claim 5, Cameron as modified discloses the device of claim 1 as set forth above. Cameron as modified by Denyer discloses wherein the progressive display includes at least one of: a sequence of LEDs (col. 6, lines 33-37), a meter (col. 6, lines 33-37), a mechanical indicator, a dial, a screen, a display (col. 6, lines 33-37), a wirelessly connected device including a wireless mobile phone, and a sound sequence (Denyer: figure 16; col. 6, lines 24-37).
Claims 3-4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cameron et al. (US 2016/0325055 A1) in further view of Denyer (US 5,842,468 A1) in further view of Thorens et al. (US 2011/0155153 A1) in further view of Edwards et al. (US 2014/0243749 A1).
Regarding claim 3, Cameron as modified discloses the device of claim 1 as set forth above. Cameron as modified by Denyer discloses a progressive display (Denyer: 35) which indicates progressive inhalation of the vaporized substance (col. 6, lines 24-37). Cameron as modified by Denyer does not disclose wherein the display is a display screen of a smart phone connected wirelessly to said main body.
However, Edwards teaches it is known to use a display of a smart phone [0212] to display information related to the administration of a medicament delivery device [0212] wherein the display screen is connected wirelessly to the main body of the device [0194]. (see also figure 1 and 39) The examiner notes the modification is presenting the display/information disclosed by Denyer on to a display of a phone.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Cameron such that the display is a display screen of a smart phone connected wirelessly to said main body as taught by Edwards for the benefit of having an additional and well known way of presenting information to the user.
Regarding claim 4, Cameron as modified discloses the device of claim 3 as set forth above. Cameron as modified by Denyer discloses wherein the displayed indication is a part of an integrated meter that indicates a progressive inhalation of the substance in discrete quantities (Denyer: figure 16; col. 6, lines 24-37).
Regarding claim 6, Cameron as modified discloses the device of claim 3 as set forth above. Cameron as modified by Denyer discloses wherein the meter includes a sequence of two or more light emitting diodes (LED) on the main body that each indicate a different graduated amount of the vaporized amount that has been inhaled (Denyer: figure 16; col. 6, lines 24-37).
Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cameron et al. (US 2016/0325055 A1) in further view of Denyer (US 5,842,468 A1) in further view of Thorens et al. (US 2011/0155153 A1) in further view of Parker et al. (US 2007/0157931 Al).
Regarding claim 7, Cameron as modified discloses the device of claim 7 (the examiner has examined this as if it depends from claim 1) as set forth above. Cameron as modified by Denyer discloses wherein when a full amount has been taken, the lights are programmed to indicate to the user that the full amount has been reached by lighting up (Denyer: figure 16; col. 6, lines 24-37). Cameron as modified does not explicitly state the lights flash when a full amount has been delivered.
However, Parker teaches that it is known to provide an indication of flashing lights when treatment (equivalent to a full amount) is complete [0110].
Thus it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Cameron to include flashing lights when the full amount has been reached for the benefit of providing the user with an easy visual indication that the full amount has been delivered.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA MURPHY whose telephone number is (571)270-7362. The examiner can normally be reached M-F 8:00am-4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kendra Carter can be reached on (571) 272-9034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VICTORIA MURPHY/ Primary Examiner, Art Unit 3785
Prosecution Insights