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 office action is in response to Applicant’s amendment filed on 6/18/26.
Claims 1 and 11 are amended.
Response to Amendments
In response to Applicant’s amendments filed 6/18/26, the Examiner withdraws the objection to the Abstract.
Response to Arguments
Applicant's arguments (filed 6/18/26, pages 9-10) have been fully considered but are not persuasive. Applicant argues: Ferrie does not disclose first and second half portions of the accommodating portion having respective inner structural configurations, where during insertion of the flavor generating article into the accommodating portion, a resistance is generated in each of the first half portion and the second half portion based on the respective inner structural configurations, and the resistance in the first half portion is less than the resistance is the second half portion. The Examiner respectfully disagrees.
Ferrie discloses an upper half portion of the cavity 222 which comprises notches 226 around the opening 221. ([0161], Fig 2D). Where the upper half portion of cavity 222 comprises notches 226, the upper half portion comprises structural components which reduce the contact surface between the inner wall of the cavity and any article inserted into the cavity. Thus, where the contact surface between the inner wall of the cavity and an article inserted into the cavity at a portion which only extends in the upper half portion of the cavity, the resistance in the upper half portion is less than the resistance in a lower half portion. Therefore, Ferrie discloses first and second half portions where the resistance in the first half portion is less than the resistance in the second half portion, similarly as claimed absent evidence to the contrary.
The Applicant further argues that Claim 11 has been amended to overcome the rejection under 35 U.S.C. 101, the Examiner respectfully disagrees. Claim 11 was amended to comprise a step of “providing.” Where a method claim only comprises a single positive method step and the method step is “providing,” the claim is merely limited to possessing the claimed component, structure, or material property which is “provided.” Amended Claim 11 is thus also incomplete for omitting essential steps which would be necessary for “obtaining a sense of end reaching…” from the step of “providing.” Therefore, absent further evidence to the contrary, Claim 11 remains rejected under 35 U.S.C. 101 as a claimed invention directed to non-statutory subject matter.
The following rejections are maintained and modified where necessary based on Applicant’s amendments.
Claim Objections
Claims 1 and 11 are objected to because of the following informalities: in Claim 1, lines 10-11 and Claim 11, lines 12-13, “resistance in the first half portion is less than the resistance is the second half portion” should read “resistance in the first half portion is less than the resistance [[is]] in the second half portion” Appropriate correction is required.
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 therefore, 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 sufficient active, positive method steps to be drawn to a process. Rather, where the only active method step is “providing” a component, structure, or material property, the claim is not limited to a process within the meaning of 35 U.S.C. 101. 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 rejected as being incomplete for omitting essential steps, such as an omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are any positively recited steps between “providing” an average resistance and the stated preamble of “a method for obtaining a sense of end reaching…”
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
the accommodating portion having a first half portion, the first half portion having a first inner structural configuration, and a second half portion, the second half portion having a second inner structural configuration (The cavity may extend from an internal based such that the cavity may comprise multiple portions such as a first and second half and/or an upper half portion or a lower half portion. [0080]-[0087], [0161], Fig 2D),
wherein during insertion of the flavor generating article into the accommodating portion, a resistance is generated in each of the first half portion and the second half portion based on the respective inner structural configurations, and the resistance in the first half portion is less than the resistance in the second half portion (The upper half portion of the cavity 222 comprises notches 226 around the opening 221. [0161], Fig 2D. Where the upper half portion of cavity 222 comprises notches 226, the upper half portion comprises structural configuration such that resistance in the upper half portion is less than the resistance in a lower half portion.),
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). The recitation of a specific resistance value (specifically, “a resistance value when the flavor generating article is inserted into the accommodating portion and a distal end of the flavor generating article reaches an end of the accommodating portion is defined as an insertion force A…”) is regarded as a manner of operating the device/system which does not further limit the claim. Here, the resistance value is a force that is only generated by a user inserting an article and would be dependent on more than just the article and the device materials/structures but also the specific manner/speed/force in which the user inserted the article. 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Reevell (CA 3113493 A1) discloses a similar structure to Ferrie but comprises a decreased internal radius portion of the internal cavity at the lower portion of the cavity (surface 145 of protrusion 140, Figs 6(a) and 10), such that wherein during insertion of an article into the cavity, a resistance is generated in each of an upper half and a lower half portion of the cavity based on the respective inner structural configurations, and the resistance in the upper half portion is less than the resistance is the lower half portion.
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.
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 9:00-4:00.
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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
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