DETAILED ACTION
Response to Arguments
Applicant's arguments filed 11/6/2025 have been fully considered but they are not persuasive.
Applicant argues claim 1 requires inductively transferring power from the secondary battery in the PV to the heating element. The Examiner maintains that this is not the case. During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." In all 999 paragraphs of the instant specification (published application US 2023/0413923), there are only 2 paragraphs which mention anything related to induction [0842, 0926]. These sections do not mention inductive heating. In fact, these sections do not mention the heating element at all. In Sun as modified by Alarcon as described in the rejection of claim 1, the secondary battery, which inductively receives power from the main battery, is part of the “inductive power transfer sub-system”. The heating element that draws power from the secondary battery thereby “draws power from the inductive power transfer sub-system” as claimed, with the claims being given their broadest reasonable interpretation consistent with the specification. There is no requirement that the heating element is heated inductively.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 30 is 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. The combination of claims 1 and 30 with respect to inductive and electrical contact power transfer is supported by [0842] of the published application: “the electrical charging contacts inductively transfer power from the case to the PV.” However, this limitation is unclear. Inductive power transfer is a type of wireless power transfer that does not involve electrical contacts.
Claims 31-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The instant specification does not provide support for “the heating element is configured to inductively draw power from the inductive power transfer sub-system” or “the heating element is configured to draw power from the secondary battery via the inductive power transfer sub-system”.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5, 12, and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (KR 101232619; see included translation for citation) in view of Alarcon (US 2011/0265806) and Lord (US 2015/0157055).
Regarding claim 1, Sun teaches portable, personal, battery powered, nicotine delivery system comprising: (a) a portable charger 200 including a charging unit 230 (main battery) [Fig. 2-3; bottom half of page 3]; (b) cartridge 110 (a user-replaceable, consumable item that includes nicotine) [Fig. 1; “At this time, the electronic cigarette 100, as shown in Figure 1, the cartridge 110, the liquid composition is stored therein” – bottom of page 2; “In general, the e-cigarette is formed with a suction port is formed in contact with the user's mouth to smoke, a storage unit for storing the liquid containing nicotine” – page 1]; (c) a electronic cigarette 100 (personal vaporizing device (PV)) that is storable in and removable from the portable charger and includes a secondary battery 140 that is re-charged from the main battery [Fig. 3; top of page 3]; in which the user-replaceable, consumable item is configured to be pressed on to the end of the PV by an end-user and to securely engage with the PV (coupled to connection pipe 120 as shown in Fig. 1); and in which the portable charger includes a recess 210 positioned along one side of the portable charger and that is configured to receive the PV [Fig. 3].
Sun teaches the consumable item is in use heated by a heating element that draws power from the secondary battery 140 [“the plurality is formed to contact the vaporizer 130 to supply power, the lower portion is partitioned by the insulator 141 at the bottom. The battery 140 includes two electrode terminals 142 and 143” – top of page 3; “Evaporated by the heated heating line 133 is applied, the vaporized smoke is led to the upper through the discharge groove” – middle of page 3]. Sun does not teach in which the PV includes an inductive power transfer sub-system. Alarcon teaches an electronic smoking device wherein the power supply unit includes a non-contact inductive recharging system [0050] such that the device may be charged without being physically connected to an external power source, which would have been obvious to one of ordinary skill in the art to include with the PV for Sun for the same reason.
Modified Sun does not teach the heating element is positioned along a long axis of the PV, or parallel to airflow that will in ordinary use pass over the heating element. Lord teaches a vaporizer wherein the axis A of the heating element coil 23 is thus parallel to the longitudinal axis C of the electronic cigarette 1. Moreover, the device 1 is configured such that the axis A of the coil 23 is substantially parallel to airflow F through the device when a user sucks on the device [0087]. It would have been obvious to one of ordinary skill in the art to configure the heating element of modified Sun to be positioned along a long axis of the PV, to achieve the same, predictable result of allowing air to flow substantially over the entire length of the heating element.
Regarding claim 5, Sun teaches the recess 210 is configured to be exposed along a length that substantially corresponds to the length of the PV 100 [Fig. 3].
Regarding claim 12, Sun does not teach the system stores and transmits data, relating to consumption of the nicotine containing substance, from the system to another device, using a wireless or non-wireless connection. Alarcon teaches an electronic smoking system that stores and transmits data, relating to usage information, from the system to another device, using a wireless or non-wireless connection [0075]. It would have been obvious to one of ordinary skill in the art to apply this configuration to the system of Sun, wherein usage information includes usage, i.e. consumption, of the nicotine containing substance, for tracking and monitoring purposes.
Regarding claims 26-28, Sun teaches the user-replaceable, consumable item includes contents that are heatable by a heating element in the user-replaceable, consumable item, to create heated, inhalable nicotine vapour [page 3 – “Evaporated by the heated heating line 133 is applied, the vaporized smoke is led to the upper through the discharge groove 134 and exits to the suction port 111 through the partitioned suction passage 113 of the cartridge 110”]. The remaining limitations of claim 27 are in claim 1 and addressed above. As shown in Fig. 1 of Sun, the PV is configured to receive a user-replaceable, consumable item that includes nicotine, when the PV is not stored in a portable charger.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Mischenko (US 4,963,812).
Sun teaches the portable charger is generally rectangular in shape when viewed from the side, with a major axis passing through the generally rectangular shape [Fig. 3-5]. Modified Sun does not teach the portable charger is configured to receive the PV only when the PV is presented to the portable charger at an angle to the major axis of the portable charger, and not when the PV is presented to the portable charger parallel to the major axis of the portable charger. Mischenko teaches a charger configured to receive a battery only when the battery is presented to the charger at an angle of 20 degrees to the major axis of the charger, and not when the battery is presented to the charger parallel to the major axis of the charger, to enable the battery to be held in position by gravity, accommodate batteries of different sizes and direct the electrical contacts of any of the different size batteries against the charging contacts of the charger [Fig. 1-3; col. 3, l. 15-25]. It would have been obvious to one of ordinary skill in the art to configure the charger of modified Sun in this manner for the reasons above suggested by Mischenko.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Liu (US 2015/0351455).
Sun teaches the PV is shaped as a generally cylindrical tube with a substantially flat end surface [Fig. 1]. A tapering section is not disclosed. Liu teaches a PV with a tapering section [0042; Fig. 1]. It would have been obvious to one of ordinary skill in the art to include a tapering section in modified Sun to achieve the predictable result of an end that more comfortable fits in a user’s mouth.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Greim (US 2015/0020832).
Sun teaches when the PV is stored in the recess, the PV is configured to be connected to electrical power contacts in the portable charger (“the plurality of electrode terminals 142 and 143 establishes a confidential connection with the charging terminals 211 and 212 regardless of the direction in which the electronic cigarette is stored when the electronic cigarette is stored in the receiving groove 210 of the charging case 200” – page 3). Data contacts are not disclosed. Greim teaches an aerosol-generating system including data contacts [0210]. It would have been obvious to one of ordinary skill in the art to include date contacts with the system of modified Sun for the purpose of transferring data.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Minkkinen (US 2009/0128099).
Sun does not teach the system automatically detects that the PV has been removed from the recess when electrical contact between the PV and charging contact in the portable charger is broken. Minkkinen teaches a system that automatically detects that a first electronic device has been removed from a second electronic device when electrical contact between them has been broken [0019]. It would have been obvious to one of ordinary skill in the art to apply this configuration to the system of Sun such that the system automatically detects that the PV has been removed from the recess when electrical contact between the PV and charging contact in the portable charger is broken in order to determine that the device is no longer connected.
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Liberti (US 2015/0097513).
Modified Sun does not teach the portable charger includes a spring biased mechanism that engages with an end section of the PV, locking the PV into position in the portable charger. Liberti teaches an accessory for an aerosol delivery device comprising a spring biased locking mechanism configured to move linearly from a first not physically engaged position to a second secured position [0092]. As this is a conventional locking mechanism known in the art, it would have been obvious to one of ordinary skill in the art to apply to the portable charge of modified Sun to achieve the predictable result of securing the PV into position in the portable charger. Thus, in modified Sun, the spring biased mechanism engages with an end section of the PV, including the channel around the top of the PV [Sun Fig. 6], and when the spring biased mechanism disengages with the PV, the PV can be extracted from the portable charger.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Peleg (US 2013/0284192).
Modified Sun does not teach a wireless connection circuit to connect the system to a smartphone app that enables a user to monitor and/or alter the performance of the system. Peleg teaches an e-cigarette which includes a wireless connection circuit to connect the system to a smartphone app that enables the user to monitor and/or alter the performance of the system and to monitor consumption of the nicotine containing substance [0045, 0047, 0072, 0079-0081]. It would have been obvious to one of ordinary skill in the art to apply this configuration to the system of modified Sun to allow for enhanced control and monitoring of the system by the user.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of LaMothe (US 2014/0107815).
Sun does not teach a wireless connection circuit to connect the system to a smartphone app that enables a user to purchase or order the nicotine containing substance. LaMothe teaches a vaporizing system which includes a wireless connection circuit to connect the system to a smartphone app that enables the user to order products for the system [0048, 0066]. It would have been obvious to one of ordinary skill in the art to apply this configuration to the system of modified Sun wherein the user is enabled to order products such as the nicotine containing substance, for convenience and allowing for continued use of the device.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Frija (US 2015/0122252).
Modified Sun does not teach the system is configured to be locked or disabled to prevent under-age or unauthorized use. Frija teaches a vaporizer configured to be locked or disabled to prevent under-age or unauthorized use and can be unlocked using data sent or exchanged with the authorised user's smartphone [0049-0051]. It would have been obvious to one of ordinary skill in the art to apply this configuration to the system of modified Sun to prevent unauthorized users from using the system.
Claims 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Monsees (US 2013/0042865).
Modified Sun does not teach the PV is configured to provide an indication to show a charge level of the secondary battery. Monsees teaches a PV configured to provide a light indication to show a charge level of the secondary battery [0087], which would have been obvious to one of ordinary skill in the art to apply to the system of modified Sun for keeping the user aware of the charge level.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Nelson (US 2007/0045288).
Modified Sun does not teach the PV is configured to provide a signal to a user that the PV is ready for use when the charge level of the secondary battery is sufficient. Nelson teaches an inhaler wherein indicator lights provide information that indicates that a battery has sufficient charge to perform a volatization operation [0041], i.e. provide an indicator light signal to a user that the inhaler is ready for use when the charge level of the secondary battery is sufficient. It would have been obvious to one of ordinary skill in the art to apply this configuration to the system of modified Sun to inform the user of sufficient charge.
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Spinka (US 2015/0272220).
Modified Sun does not teach the PV is configured to display a light signal when the PV is due to cease to operate because nicotine substantially equivalent to smoking a single combustible cigarette has been consumed. Spinka teaches a PV configured to display an indication to the user when the device has vaporized nicotine substantially equivalent to smoking a single combustible cigarette [0045] which may correspond with the PV ceasing to operate [0047]. It would have been obvious to one of ordinary skill in the art to apply this configuration to the system of modified Sun to alert of excessive usage. A haptic signal is an alternative type of signal well known in the art that would have been obvious to use of ordinary skill in the art to use instead of a light signal to achieve the same, predictable result of alerting the user.
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Alelov (US 2012/0048266).
Modified Sun does not teach the PV is configured to display an indication to the user the reaming number of puffs before it will cease to operate. However, this is known in the art as taught by Alelov [0048] and would have been obvious to one of ordinary skill in the art to apply to the system of Sun so that the user is aware of the number of remaining puffs.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Malik (US 2014/0150785).
Modified Sun does not teach the user-replaceable, consumable item that includes nicotine includes an amount of substance equivalent toa single cigarette. Malik teaches the amount of nicotine can vary depending upon the amount of nicotine desired by the person [0035]. It would have been obvious to one of ordinary skill in the art to optimize the amount of nicotine according to the desired level of the person using the device to achieve predictable results.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Sun, Alarcon, and Lord as applied to claim 1 above, and further in view of Sebastian (US 2014/0000638).
Modified Sun does not teach the PV comprises a secondary heating element configured to provide additional heating of the user-replaceable, consumable item. Sebastian teaches an electronic smoking article comprising a secondary heating element configured to provide additional heating which can be useful to pre-heat the component of the aerosol precursor composition to alter the characteristics thereof (e.g., reduce viscosity and increase flow rate) [0019]. It would have been obvious to one of ordinary skill in the art to include a secondary heating element in the PV of modified Sun for the above reasons suggested by Sebastian.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ERIC YAARY/Examiner, Art Unit 1755