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 .
Status of the Claims
Claims 1-11 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Abstract
The abstract of the disclosure is objected to because the abstract is greater than 150 words in length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure: The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 11 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the claim is directed toward a use of a product which does not purport to claim a process, machine, manufacture, or composition of matter. Claim 1 is drawn to a method “for obtaining a sense of end reaching and a sense of expectation of end reaching in a smoking system” but does not comprise any method steps and merely recites a use without any active, positive steps. Therefore, the method as claimed is not a process under 35 U.S.C. 101 and is thereby directed to non-statutory subject matter.
Claim Rejections - 35 USC § 112(b)
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 11 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. Claim 11 is indefinite because it is drawn to a method which merely recites a use without any active, positive steps delineating how this use is actually practiced. See MPEP 2173.05(q).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ferrie (US 20220346452 A1).
Regarding Claim 1, Ferrie teaches a smoking system (system 200; [0148], Figs 2A, 2B, 2E) comprising:
a flavor inhaler (device 201; [0149], Figs 2A, 2B, 2E); and
a flavor generating article (consumable 202; [0149], Figs 2A, 2B, 2E. The substrate may comprise flavorants. [0114]),
wherein the flavor inhaler includes an accommodating portion that has an opening formed at one end and accommodates at least a part of the flavor generating article via the opening (During use of device 201, a portion of the consumable 202 is received through the opening 221 and into the cavity 222. [0161], Fig 2E), and
wherein there is a resistance when the flavor generating article is inserted into the accommodating portion ("An inserted consumable may stay in the cavity by friction forces between the consumable, in particular a filter part or an aerosol-forming material, and the walls of the opening and/or the heating element, thus without a separate locking of the movable element in the first position." [0063]).
Examiner’s note: a limitation with respect to the manner in which a claimed device is intended to be used does not differentiate the claimed device from a prior art apparatus where the prior art device comprises all the structural limitations of the claimed device. See MPEP 2114(II). Here, the recitation of a specific resistance value is regarded as a manner of operating the device/system which does not further limit the claim. Thus, where Ferrie teaches all structural elements of the claimed device/system, the claimed device/system is not distinct from the device of Ferrie.
Regarding Claim 2, Ferrie teaches a smoking system wherein at least one local variation region in which a resistance value varies by a predetermined amount or more within a predetermined range in a case where the flavor generating article is inserted into the accommodating portion is provided ("After consumption of the consumable, the consumable may have altered properties, which reduce or cancel the friction forces" [0063]. Where the friction between the device cavity and the article may reduce with time, the frictional resistance between the two components is variable).
Regarding Claim 3 and 4, Ferrie teaches a smoking system wherein there is a resistance when the flavor generating article is inserted into the accommodating portion as discussed above in Claim 1. Moreover, where Claims 3 and 4 only further limit the manner of operating the device as discussed in the rejection under 35 U.S.C. 112(d) and the Examiner’s note in regard to Claim 1, the claims do not further limit the device/system.
Regarding Claim 5, Ferrie teaches a smoking system
wherein the smoking system further includes a heating portion that heats the flavor generating article accommodated in the accommodating portion (device 201 comprises a heater 204 comprising heating element 223. [0163], Fig 2E), and
the heating portion is provided at the flavor inhaler and does not have a heating element to be inserted into the flavor generating article (The heating element may be a tube heater which surrounds a portion of the cavity. [0083]).
Regarding Claim 6, Ferrie teaches a smoking system
wherein the flavor generating article includes a filling portion that is filled with a smokable material (consumable 202 comprises an aerosol forming substrate 213 comprising tobacco material. [0153]-[0155], Fig 2C),
a hollow tubular portion that is provided continuously with the filling portion (upstream filter element comprises bore 220 extending axially therethrough. [0158], Fig 2C. Spacer 216 is in the form of a tube. [0159], Fig 2C), and
a filter portion that is provided continuously with the tubular portion (terminal filter element 214 is located downstream of the aerosol forming substrate 213 at the downstream end 218 of the consumable 202. [0157], Fig 2C),
the accommodating portion includes a holding portion that holds the flavor generating article accommodated in the accommodating portion, and the holding portion is provided at a position at which the holding portion is able to come into contact with at least two parts of the flavor generating article in a case where the flavor generating article is inserted into the accommodating portion ("An inserted consumable may stay in the cavity by friction forces between the consumable, in particular a filter part or an aerosol-forming material, and the walls of the opening and/or the heating element" [0063]).
Regarding Claim 7, Ferrie teaches a smoking system
wherein the accommodating portion includes a contact portion that pressurizes a part of the accommodated flavor generating article in an axial direction of the accommodating portion (The walls of the opening and the heating element may press against an unburned consumable. [0063]), and
a separated portion that is separated from the accommodated flavor generating article (cap removal tool 410; [0180], Figs 4A & 4B).
Regarding Claim 8, Ferrie teaches a device kit comprising:
the flavor inhaler according to claim 1 (device 201; [0149], Figs 2A, 2B, 2E); and
a display that indicates that the device kit is used for the flavor generating article according to claim 1 (The user interface may comprise a display. [0092]. The display output may indicate a condition of the aerosol-forming article to the user. [0092]).
Regarding Claim 9, Ferrie teaches a consumable article comprising:
the flavor generating article according to claim 1 (consumable 202; [0149], Figs 2A, 2B, 2E. The substrate may comprise flavorants. [0114]); and
a display that indicates that the consumable article is used for the flavor inhaler according to claim 1 (the aerosol-forming substrate 213, upstream filter 215 and spacer 216 are circumscribed by a paper wrapping layer; such that the consumable has the appearance of a cigarette to be used with the device. [0004], [0116], [0153], [0160]).
Regarding Claim 10, Ferrie teaches a consumable article and device kit, comprising:
a consumable article that includes the flavor generating article according to claim 1 (consumable 202; [0149], Figs 2A, 2B, 2E. The substrate may comprise flavorants. [0114]); and
a device kit that includes the flavor inhaler according to claim 1 (device 201; [0149], Figs 2A, 2B, 2E),
wherein at least one of the consumable article and the device kit includes a display that indicates that the at least one is used for the other one of the consumable article and the device kit (the aerosol-forming substrate 213, upstream filter 215 and spacer 216 are circumscribed by a paper wrapping layer; such that the consumable has the appearance of a cigarette to be used with the device. [0004], [0116], [0153], [0160]. "the UI may additionally or alternatively comprise output means to convey information to the user." [0092]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755