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 .
Response to Amendment
The amendments entered on 7/15/2026 have been accepted. Claims 22, 30, 34-35 are amended. Claims 22-37 are pending. Applicant’s amendments to the specification have overcome the objections previously set forth.
Terminal Disclaimer
The terminal disclaimer filed on 7/15/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US11849760 and US11266180 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 7/15/2026 has been considered by the Examiner.
Claim Interpretation
The claimed term “heat transfer time constant” has been interpreted below in view of [0039-0040] and Figs. 4-5 of Applicant’s application as:
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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.
Claims 22-33 and 35-37 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) “a controller configured to measure a resistance of the heating element during a first time interval, determine a temperature of the heating element based on the resistance of the heating element, compute a heat transfer time constant of the heating element based on the temperature of the heating element, and determine whether to output an alert, shutdown the electronic device, or both output the alert and shutdown the electronic device, based on the temperature of the heating element and the heat transfer time constant”.
Claims 22, 30, and 35 each reciting identical language regarding these steps taken, are rejected based on the following analysis:
Step 2A, Prong One: Identify the law of nature/natural phenomenon/abstract ideas.
The examiner finds that each of the quoted sections of the claims (“measure”, “determine”, “compute”, and “determine”) recites mathematical operations, and also a mental process because the processes may be performed by a human using pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Measuring is data gathering and needs a tool so can’t be performed mentally, therefore it is not an abstract idea. That being said both of the determining steps and computing steps certainly are. Determining temperature is either an evaluation or math, computing a heat transfer time constant is mathematical operations, and determining whether to output an alarm is an evaluation.
Step 2A, Prong Two: Has the abstract idea been integrated into a particular practical application?
The claim requires the limitation of “measure a resistance of the heating element during a first time interval”. This is not considered to be an integration of the abstract idea into a particular practical application. This step is essentially data gathering to be used in the abstract idea which is insignificant pre-solution activity. See MPEP 2106.05(g). See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011), wherein the step of obtaining information about transactions using the Internet to verify credit card transactions was considered to be mere data gathering with insignificant extra-solution activity.
The final 2 lines of the claims include the new limitations “output the alert, shutdown the electronic device, or both output the alert and shutdown the electronic device, in response to the determination”. This is not considered to be an integration of the exception into a practical application of the exception. "Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more in Step 2B is whether the additional elements add more than insignificant extra-solution activity to the judicial exception". MPEP 2106.05(g). An example of "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. An example of a post-solution activity is "an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent" MPEP 2106.05(g). The claims in this case are an example of "extra-solution activity" which are insignificant post-solution steps. The addition of the limitations of outputting alerts or shutting down the device according to the determinations that are made with the abstract ideas are merely post-solution activities that are not integrated to the claim as a whole, in the same way that the printer merely outputs the result of the fraudulent transactions.
As detailed in MPEP 2106.05(g), the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). In Flook, the Court reasoned that "[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula". 437 U.S. at 590; 198 USPQ at 197; Id. (holding that step of adjusting an alarm limit variable to a figure computed according to a mathematical formula was "post-solution activity"). In a similar way, the instant applications limitations tied to outputting alerts in response to the mathematical formula/mental processes of the determinations is a post-solution activity.
As detailed in MPEP 2106.05(h), the general linking of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application. The recitation of the generic aerosol-generating device components of a heater involves the general linking of the judicial exception to that of an aerosol-generating device without any further transformative elements.
As detailed in MPEP2106.05(f), using the words “apply it” (or an equivalent) with the judicial exception is not indicative of integration into a practical application. In this case, the final limitations of outputting alerts or shutting down the device is akin to using the words of “applying” the determination that is made (upon whether to output the alert or shutdown the device dependent upon the heat transfer time constant) to the controller.
Step 2B: Does the claim recite any elements which are significantly more than the abstract idea?
No. As noted above, the extra elements in the claim do not lend themselves to being significantly more. The measuring step is an insignificant pre-solution activity and does not lend itself to being significantly more. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claim’s additional elements “a heating element” is well understood, routine, and conventional (WURC) within the art. And the post-solution activity of the final two lines of the claims are considered to be merely adding an insignificant extra-solution activity to the judicial exception MPEP2106.05(g), generally linking the use of the judicial exception to a particular technological environment or field of use MPEP2106.05(h), or mere instructions to apply an exception MPEP2106.05(f). And additionally, it is well understood, routine, and conventional (WURC) to output an alert/shutdown an electronic device in response to certain condition values. See Flick (US2013/0319435A1), the circuitry may be configured so as to shut down the device and/or alert the user when certain conditions are met [0093-0096]. And additionally Cochand (US2014/0020693A1), the circuitry may be configured to shut down the device and/or alert the user when certain conditions are met [0094-0095]).
Regarding dependent claims 23-29, 31-33, and 36-37, these claims do not resolve any of the issues above, and additionally recite further details of the mathematical concepts and/or mental processes. These claims are additionally rejected based on their dependency to claims 22, 30, and 35 respectively.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 34 is rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Han (US2011/0209717A1, of record).
Regarding claim 34, Han teaches an electronic device (“aerosol electronic cigarette” [title]), comprising:
A reservoir to hold a liquid formulation (the electronic cigarette, as shown in Fig. 1 for example, includes a component for liquid storage [0070]),
A wick configured to draw the liquid formulation from the reservoir and is elongated along a length (the atomizer assembly of the electronic cigarette includes a porous component “81” and heating body “82” [0066-0067, Figs. 5-8]. The wick may be considered to comprise the cylinder “821”, as this is a ceramic material with mandrils “823” which are connected to the walls of the porous components “81” [see Figs. 5-8], such that liquid would travel from the walls of “81” to that of the cylinder “821” to then be atomized by the heat from the heating wire “822”. And additionally, as there is a negative pressure cavity formed around the rod “82”, the liquid would travel from “81” to the cylinder of “821” so as to satisfy this pressure differential [0066-0071]. As such, the cylinder “821” would reasonably be considered to be a wick which extends along a length, which is left/right as in Figs. 6-7),
A heating coil wound around an exterior of the wick and along the length of the wick and configured to heat the liquid drawn from the reservoir (the heating body of the atomizer is a heating wire [0021], wherein the heating wire is wound around the wall of the cylinder which is considered to be the wick [0067-0068, Figs. 6-7], where the electric wire heats the liquid and atomizes the liquid [0071], wherein this heating wire is considered to be the coil [see Figs. 6-8]. And as in the Figs. 6-8, the wire clearly extends at an exterior of the wick along the length of the wick “821”),
Windings of the heating coil around the wick are spaced apart unevenly along a length of the wick (as in Figs. 6-7, the windings of the wire around the cylinder are clearly formed unevenly along a length of a wick. Moreover, it is held that guidance as provided by the figures is sufficient to enable public possession of an inventive concept. That is, an enabling picture may be used to reject claims directed to an article to include: anticipating claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). In this case, Figs. 6-7 clearly depict a coil which is unevenly wound around a length of the cylinder).
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.
In the alternate, claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Han (US2011/0209717A1, of record) in view of Thorens (US2011/0094523A1).
Regarding claim 34, Han teaches an electronic device (“aerosol electronic cigarette” [title]), comprising:
A reservoir to hold a liquid formulation (the electronic cigarette, as shown in Fig. 1 for example, includes a component for liquid storage [0070]),
A wick configured to draw the liquid formulation from the reservoir and which extends along the length (the atomizer assembly of the electronic cigarette includes a porous component “81” [0066, Figs. 5-7], wherein the porous component absorbs the liquid stored in the reservoir so that the liquid can be atomized [0066-0071], such that this may be considered to be a “wick” that clearly draws the liquid from the reservoir. And as in Figs. 5-7 this clearly extends along a length),
A heating coil wound around the wick and configured to heat the liquid drawn from the reservoir (the heating body of the atomizer is a heating wire [0021], wherein the heating wire is wound around the wall of the cylinder [0067-0068], where the electric wire heats the liquid and atomizes the liquid [0071], wherein this heating wire which is wrapped around the cylinder “821” is considered to be the coil [see Figs. 6-8]),
Windings of the heating coil around the wick are spaced apart unevenly along a length of the wick (as in Figs. 6-7, the windings of the wire around the cylinder are clearly formed unevenly along a length of a wick. Moreover, it is held that guidance as provided by the figures is sufficient to enable public possession of an inventive concept. That is, an enabling picture may be used to reject claims directed to an article to include: anticipating claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). In this case, Figs. 6-7 clearly depict a coil which is unevenly wound around a length of the cylinder).
It is extremely common in the art for the heating coil to be wrapped around an exterior of the wick which draws the liquid formulation. Thorens, for example, teaches a smoking system wherein there is provided a capillary wick 117 and a heating element in the form of a coil 119 [0076]. One end of the wick extends into the cartridge such that the liquid 115 flows along the wick, and the other end of the wick has its exterior wrapped by the heating coil 119 so as to heat the liquid to form the supersaturated vapor [0076-0077]. One of ordinary skill in the art would have found it obvious to include the coil at an exterior of the wick so as to form the vapor as suggested by Thorens. One would have been motivated so as to efficiently create the vaporized liquid to be inhaled by the user [0076-0078, 0042]. And such a conventional structure of Thorens would have been obvious and would have been a simple substitution of one known element for that of another with predictable results, that being a coil arranged around an exterior of the wick would result in the production of aerosolized vapor to be received by the user and would direct the airflow in a direction towards the outlet of the device.
Response to Arguments
Applicant’s arguments have been fully considered, but they are not persuasive.
Applicant argues on pgs. 10-12 of their Remarks dated 7/15/2026 that the amendments to the claims overcomes the 101 rejection, as the amended claims integrate the abstract idea into a practical application.
The Examiner respectfully disagrees. Although the claims in question do include the new limitations requiring the controlled to output the alert, shutdown the device, or both alert and shutdown the device, this is not considered to be an integration into a practical application. This is considered to be insignificant extra-solution activity to the judicial exception. See updated 101 rejections above for details.
Applicant argues that the claims in this case are in line with those of Diamond v. Diehr, because the claims as a whole were transformative.
The Examiner respectfully disagrees. Diamond v. Diehr contains numerous additional elements that were included in the claims such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and automatically opening the press at the proper time (MPEP 2106.05e), which the court found to be meaningfully limiting the use of the abstract idea into a practical application. Such similarities are not present with the instant application. The claims merely require a device with a heating element, wherein the controller then determines a temperature, computes a heat transfer time constant, and determines whether to output an alert and/or shutdown the electronic device. The additional limitations in the case of the instant application merely link the abstract idea to a particular technological environment and are well-understood, routine, conventional activity at a high level of generality. See rejections above for details.
Applicant argues that the amendments to claim 34 overcome the prior art.
The Examiner respectfully disagrees. As in the updated rejections, it is noted that Han’s cylinder may reasonably be considered to be a wick, as it is made of ceramic and is connected to the porous body such that liquid would run into it due to the negative pressure described by Han, and the coil is wrapped around the cylinder. See rejections above for details. Additionally/alternatively, it is noted that having the coil located exterior to the wick is an extremely common feature in the art of aerosol generating devices (as suggested by Thorens), such that a simple substitution/modification to this design would have been obvious to the person of ordinary skill in the art with predictable results of generating the aerosol/vapor in an efficient manner.
Allowable Subject Matter
Claims 22-33 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 and Double Patenting as set forth in this office action. Claims 35-37 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 and all of the limitations of the base claim and intervening claims are incorporated into independent claim 34.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not appear to suggest the cumulative claim limitations, specifically “measure a resistance of the heating element during a first time interval, determine a temperature of the heating element based on the resistance of the heating element, compute a heat transfer time constant of the heating element based on the temperature of the heating element, determine whether to output an alert, shutdown the electronic device, or both output the alert and shutdown the electronic device, based on the temperature of the heating element and the heat transfer time constant, and output the alert, shutdown the electronic device, or both output the alert and shutdown the electronic device, in response to the determination”.
Flick (US2013/0319435A1) discloses an aerosol generating system [title] including a heating element 119” which atomizes liquid that is provided to the capillary wick “117” [Fig. 1]. Flick includes electric circuitry “109” which are programmable [0064]. The heating element may be monitored by monitoring the temperature of the heating element and the resistance of the heating element over time in a combined manner [0006-0008]. The circuitry may be configured so as to shut down the device and/or alert the user when certain conditions are met [0093-0096].
Cochand (US2014/0020693A1) discloses an aerosol generating system (title) including a heating element “119”. The device includes electric circuitry “109” which is programmable [0060]. The circuitry may be configured to measure the electrical resistance of the at least one heating element to ascertain the temperature of the heating element from the measured electrical resistance [0026]. The circuitry may be configured to shut down the device and/or alert the user when certain conditions are met [0094-0095]).
However, Flick nor Cochand suggest computing a heat transfer time constant of the heating element based on the temperature of the heating element, wherein the heat transfer time constant is given the special definition as defined in the instant specification.
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The claims are therefore considered to be patentably distinguished from the prior art of record. The prior art of record, whether taken alone or in combination, does not render obvious the cumulative limitations of independent claim 1 and are allowable for the same reasons above.
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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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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