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 .
Information Disclosure Statement
The information disclosure statement (IDS) filed on 11/28/2023 has been considered by the Examiner.
The information disclosure statement filed 11/28/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. It is noted that no copies have been provided for the foreign patent documents or for any of the non-patent literature documents.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 61/670143, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The disclosure of the provisional application 61/670143 does not appear to have adequate support for the limitations “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 “determining, by the controller, 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”, which are limitations present in independent claims 22 and 30, and dependent 34. As a result, instant claims 22-33 and 35-37 will not be provided benefit to this provisional application.
Specification
The disclosure is objected to because of the following informalities:
In [0030] of applicant’s specification, “Figure 2” should be changed to “Figure 2a”, because Figure 2 does not exist.
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 22-28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11849760B2, and optionally in view of Flick (US2013/0319435A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant independent claim 22 is merely broader than patented claim 1. It is clear that all of the elements of claim 22 is found in claim 1 of the patented application. The difference lies in the fact that the patented claims include many more elements and is thus much more specific. Thus, the invention of the patented claim 1 is in effect a "species" of the "generic" invention of the instant claim 24. It has been held that the generic invention is "anticipated” by the “species". See MPEP 804 Section II(B). It is noted that the limitations of “measure a resistance of the heating element during a first time interval” and “determine a temperature of the heating element based on the resistance of the heating element” would implicitly be achieved by the patented claim limitation of “compute a heat transfer time constant of the heating element based on the temperature of the heating element sensed by the temperature sensor”, as temperature sensor would necessarily function by measuring the resistance thereof during some specified time period, thus meeting the broadest reasonable interpretation of the claim. Optionally applied, Flick, tied to an aerosol generating system, similarly teaches that 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], wherein the readings may lead to actions being taken such as deactivation or other alerts [0094-0095], such that the inclusion of measuring a resistance of the heating element and determining a temperature of the heating element would have been an obvious action to include so as to effectively determine the temperature of the heating element [0006-0008]. Since claim 22 is anticipated or made obvious by patented claim 1, it is not patentably distinct from the patented claims.
Claim 23 is similarly rejected over patented claim 3 of U.S. Patent No. 11849760B2, claim 24-25 is rejected over patented claim 2, claim 26 is rejected over patented claim 3, and claim 27-28 is rejected over patented claim 4.
Claims 30-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5-6 of U.S. Patent No. 11849760B2, and optionally in view of Flick (US2013/0319435A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant independent claim 30 is merely broader than patented claim 5. It is clear that all of the elements of claim 30 is found in claim 5 of the patented application. The difference lies in the fact that the patented claims include many more elements and is thus much more specific. Thus, the invention of the patented claim 5 is in effect a "species" of the "generic" invention of the instant claim 30. It has been held that the generic invention is "anticipated” by the “species". See MPEP 804 Section II(B). It is noted that the limitations of “measure a resistance of the heating element during a first time interval” and “determine a temperature of the heating element based on the resistance of the heating element” would implicitly be achieved by the patented claim limitation of “compute a heat transfer time constant of the heating element based on the temperature of the heating element sensed by the temperature sensor”, as temperature sensor would necessarily function by measuring the resistance thereof during some specified time period, thus meeting the broadest reasonable interpretation of the claim.. Optionally applied, Flick, tied to an aerosol generating system, similarly teaches that 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], wherein the readings may lead to actions being taken such as deactivation or other alerts [0094-0095], such that the inclusion of measuring a resistance of the heating element and determining a temperature of the heating element would have been an obvious action to include so as to effectively determine the temperature of the heating element [0006-0008].Since claim 30 is anticipated/made obvious by patented claim 5, they are not patentably distinct from the patented claims.
Claims 31-32 are similarly rejected over patented claim 6 of U.S. Patent No. 11849760B2.
Claims 34 and 36-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11266180B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant independent claim 34 is merely broader than patented claim 5. It is clear that all of the elements of claims 34 found in claim 5 of the patented application. The difference lies in the fact that the patented claims include many more elements and is thus much more specific. Thus the invention of the patented claim 5 is in effect a "species" of the "generic" invention of the instant claim 34. It has been held that the generic invention is "anticipated” by the “species". See MPEP 804 Section II(B). Since claims 34 and 36-37 are anticipated by patented claims 5, they are not patentably distinct from the patented claims.
Claims 34-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11849760B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant independent claim 34 is merely broader than patented claim 4. It is clear that all of the elements of claims 34 found in claim 4 of the patented application. The difference lies in the fact that the patented claims include many more elements and is thus much more specific. Thus the invention of the patented claim 4 is in effect a "species" of the "generic" invention of the instant claim 34. It has been held that the generic invention is "anticipated” by the “species". See MPEP 804 Section II(B). Since claims 34-36 are anticipated by patented claim 4, they are not patentably distinct from the patented claims.
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 22-34 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?
No. Once the evaluation takes place (including the steps of “measure”, “determine”, “compute”, and “determine”), there is no additional action that takes place. The step of “determining” to output an alert, for example, does not practically require the alert to be output but merely for the evaluation to be made for whether an alert is output. Therefore, there is no particular practical application.
Step 2B: Does the claim recite any elements which are significantly more than the abstract idea?
No. The measuring step is an insignificant extra 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. As such, claims 22, 30, and 35 are merely adding an insignificant extra-solution activity to the judicial exception MPEP2106.05(g) or generally linking the use of the judicial exception to a particular technological environment or field of use 2106.05(h).
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 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 § 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim 34 is rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Han (US2011/0209717A1).
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 (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),
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).
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, Double Patenting, 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, 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”.
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
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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