DETAILED ACTION
The communication is a First Action Non-Final on the merits. Claims 1, 3, 5, 6, 8, 10-12, 14-16, 25-28, 30, 39-42, as amended on 08 December 2023, are currently pending and have been considered below.
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(s) (IDS) submitted on 5/6/2026, 5/2/2026, 3/29/2024 was/were in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers in this National State application from the International Bureau.
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 1, 3, 5, 6, 8, 10-12, 14-16, 25-28, 30, 39-42 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1, 3, 5, 6, 8, 10-12, 14-16, 25-28, 30, are directed towards a system. Claims 39-42 are directed towards a method. Thus, these claims, on their face, are directed to one of the statutory categories of 35 U.S.C. § 101.
Step 2A - Prong One: As per MPEP 2106.04, Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon. In Prong One examiners evaluate whether the claim(s) recites a judicial exception; that is, whether the claim(s) set forth or describe a law of nature, natural phenomenon, or abstract idea.
Claim 1 is presented here as a representative claim for specific analysis (The underlined claim terms here are interpreted as additional elements beyond the abstract idea.):
An information provision system comprising:
an aerosol provision device for generating an aerosol;
and a user output device for outputting information to a user of the aerosol provision device;
wherein the information provision system is configured to generate the information,
and output the information on the user output device for only a predetermined period of time,
wherein the information comprises a prompt for the user to navigate to a predetermined location.
The claims here are based on the recitation of an abstract idea (i.e. recitation other than the additional elements delineated here with underlining and further addressed per Step 2A - Prong Two and Step 2B). The claims recite the abstract idea of providing navigation to a user regarding a device’s status which falls within certain methods of organizing human activity.
The phrase "certain methods of organizing human activity" applies to fundamental economic principles or practices including hedging insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations; managing personal behavior or relationships or interactions between people including social activities teaching, and following rules or instructions. Refer to MPEP 2106.04(a)(2) II. A-C.
The Remaining Claims: The additional independent claims fail to recite any additional elements beyond those identified above. The dependent claims recite fail to recite any additional elements beyond those already identified except “a cartridge” (claims 5, 6, 42).
The dependent claims further reiterate the same abstract idea with further embellishments: location is for a supplier of aerosol provisions (claims, 3, 5, 6); based on location of device (claims 8, 40); providing warning and usage information (claims 10, 11, 12); provide information in response to number of uses of the aerosol device (claims 14-16, 41); visual navigation information (claims 25-28, 30); information is related to a user’s favorite cartridge type (claim 42). Therefore, the identified claims fall within the subject matter groupings of abstract ideas enumerated in MPEP 2106.04(a)(2).
Step 2A - Prong Two: As per MPEP 2106.04.II.A.2, Prong Two determines if the claim(s) recite additional elements that integrate the judicial exception into a practical application.
As for the additional elements of: An information provision system, a user output device. To be patent-eligible, the elements additional to the identified abstract idea must amount to more than "an instruction to apply the abstract idea . . . using some unspecified, generic computer" to render the claim patent-eligible. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014). It would have been readily apparent to one having ordinary skill in the art (PHOSITA) at the time the invention was filed that the additional elements represent generic computing devices. Therefore, the claims amount to no more than a mere method, system, and/or computer program product to implement the abstract idea on a generic computer system. See MPEP § 2106.05(f).
As for the additional element(s) of: aerosol provision device, a cartridge. These elements represent an effort to limit the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)). The ordered combination offers nothing more than employing a generic configuration of computer devices and computer functions. The claims do not amount to a practical application, similar to how limiting the abstract idea in Flook to petrochemical and oil-refining industries was insufficient.
Step 2B: As per MPEP 2106.05, the additional elements are analyzed, both individually and in combination, to determine whether an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim, as a whole, amounts to significantly more than the judicial exception itself.
As the claims do not contain additional elements other than those set forth above in Step 2A, the analysis is complete and the claims are found to be absent additional elements that amount to significantly more than the judicial exception itself.
References of Record but not Applied in the Current Grounds of Rejection
The prior art listed below is made of record as considered pertinent to applicant's disclosure and is not relied upon in the grounds of rejection presented in this Office action. Those starred with '*' were added to this list in this Office action. Those without "*" were added in a previous Office action and are not repeated on a PTO-892 Notice of References Cited form, but are maintained herein for informational purposes only.
* Ben Popper, in “I smoked a smartphone at CES”, discloses a smart phone with an integral vaporizer.
* Sur et al. (Pub. #: CN 110167370 A) discloses an aerosol delivery device with satellite navigation receiver functionality to ensure secure delivery or product to the user.
Examiner's Note on the Format of the Prior Art Rejections
The prior art rejections below contain underlined markings of the limitations (e.g. sample limitation). The underlined portions of a claim are addressed at the end of the grounds of rejection for that claim. Examiner notes that the underlining of the claim language is not a statement that the primary reference does not teach that language, but simply that said claim language is addressed at the end of the grounds of rejection for that claim.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 3, 5, 6, 8, 14, 25-28, 30, 39-42 is/are rejected under 35 U.S.C. § 103 as being unpatentable over
Estripeau (Pub. #: US 2020/0387955 A1) in view of
Che (Pub. #: US 2023/0385345 A1).
Claim(s) 1:
An information provision system comprising: an aerosol provision device for generating an aerosol;
(Estripeau discloses an electronic cigarette which is an "aerosol generation device" in at least Figure 1, Figure 5, 0031-0034, and 0064.)
and a user output device for outputting information to a user of the aerosol provision device;
(Estripeau discloses a smartphone with a display for providing information to a user in at least 0015, 0035-0037.)
wherein the information provision system is configured to generate the information,
(Estripeau discloses a networked system for gathering information on stock of products in at least Figure 2, 0014, 0020, 0038-0041.)
and output the information on the user output device for only a predetermined period of time,
(Estripeau discloses presenting the information to the user via the smartphone display in at least 0038-0044.)
wherein the information comprises a prompt for the user to navigate to a predetermined location.
(Estripeau discloses providing navigation information to the user via the display to a retailer with stock available in at least 0014-0016, 0037, 0044-0047.)
As for, "for only a predetermined period of time": Estripeau discloses a smartphone with a display for providing information to a user in at least 0015, 0035-0037. Estripeau does not appear to specify limiting the display to a predetermined period of time. However, Che teaches a technique for a mobile device that provides notifications to users wherein the notifications are displayed for a predetermined period of time in at least 0137.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the notifications taught by Estripeau with the technique of temporary notifications as taught by Che. Motivation to combine Estripeau with Che derives from both references pertaining to mobile devices providing notifications to users and to attract/induce a user to notice a notification (Che: 0001-0003).
Claim(s) 3:
wherein the predetermined location is a website, or geographical location, for a supplier or manufacturer or stockist of the aerosol provision device.
(Estripeau discloses gathering information on nearby retailers with available stock of "aerosol generating consumable" and presenting it to the user in at least 0034, 0038-0044.)
Claim(s) 5:
wherein the aerosol provision device comprises a cartridge of aerosolisable material, wherein the aerosol provision device is configured to generate the aerosol using the aerosolisable material.
(Estripeau discloses an electronic cigarette which is an "aerosol generation device" that utilizes "an aerosol generating consumable" in at least 0031-0034.)
Claim(s) 6:
wherein the predetermined location is a website, or geographical location, for a stockist of the cartridge.
(Estripeau discloses gathering information on nearby retailers with available stock of "aerosol generating consumable" and presenting it to the user in at least 0034, 0038-0044.
Claim(s) 8:
wherein the information provision system is configured to receive location data indicating the location of the aerosol provision device, and is configured to generate the information based on the location data.
(Estripeau discloses utilizing location data for the user and the user's "aerosol generating device" via the user's smartphone in at least 0036-0038 and 0048.)
Claim(s) 14:
wherein the information provision system is configured to generate the information in the event the information provision system determines that a predetermined criterion is satisfied.
(Estripeau discloses determining that a number of retailers within the user's immediate vicinity is sufficient prior to generating the information in at least 0043.)
Claim(s) 25:
wherein the prompt comprises a set of visual directions for navigating to the predetermined location.
(Estripeau discloses providing navigation information to the user via the display to a retailer with stock available in at least 0014-0016, 0037, 0044-0047.)
Claim(s) 26:
wherein the set of visual directions comprise a path which is displayed, or overlaid, on the map.
(Estripeau discloses providing navigation information to the user via the display to a retailer with stock available in at least 0014-0016, 0037, 0044-0047.)
Claim(s) 27:
wherein the prompt comprise a location indicator for indicating the location of the predetermined location on the graphical representation.
(Estripeau discloses providing navigation information to the user via the display to a retailer with stock available in at least 0014-0016, 0037, 0044-0047. Also see "V1" and "V2" in at least Figure 1.)
Claim(s) 28:
wherein the location indicator comprises a pin.
(Estripeau discloses providing navigation information to the user via the display to a retailer with stock available in at least 0014-0016, 0037, 0044-0047. Also see "V1" and "V2" in at least Figure 1.)
Claim(s) 30:
wherein the location indicator comprises a predetermined marking for indicating a characteristic or identity of the predetermined location.
(Estripeau discloses providing navigation information to the user via the display to a retailer with stock available in at least 0014-0016, 0037, 0044-0047. Also see "V1" and "V2" in at least Figure 1. Estripeau discloses a map with retailer icons thereon in at least 0040-0045.
Claim(s) 39:
A method of outputting information to a user of an aerosol provision device for generating an aerosol, the method comprising:
(Estripeau discloses an electronic cigarette which is an "aerosol generation device" in at least Figure 1, Figure 5, 0031-0034, and 0064. Estripeau discloses a smartphone with a display for providing information to a user in at least 0015, 0035-0037)
generating information comprising a prompt for a user of the aerosol provision device to navigate to a predetermined location;
(Estripeau discloses providing navigation information to the user via the display to a retailer with stock available in at least 0014-0016, 0037, 0044-0047.)
and outputting the information on a user output device for only a predetermined period of time.
As for, "and outputting the information on a user output device for only a predetermined period of time.": Estripeau discloses a smartphone with a display for providing information to a user in at least 0015, 0035-0037. Estripeau does not appear to specify limiting the display to a predetermined period of time. However, Che teaches a technique for a mobile device that provides notifications to users wherein the notifications are displayed for a predetermined period of time in at least 0137.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the notifications taught by Estripeau with the technique of temporary notifications as taught by Che. Motivation to combine Estripeau with Che derives from both references pertaining to mobile devices providing notifications to users and to attract/induce a user to notice a notification (Che: 0001-0003).
Claim(s) 40:
receiving location data indicating a location of the aerosol provision device; and generating the information based on the location data.
(Estripeau discloses utilizing location data for the user and the user's "aerosol generating device" via the user's smartphone in at least 0036-0038 and 0048.)
Claim(s) 41:
determining that a predetermined criterion is satisfied; and generating the information in response to determining that the predetermined criterion is satisfied.
(Estripeau discloses providing an alert when it is determined that a "volume of vaporisable liquid drops below a threshold value" in at least 0032.)
Claim(s) 42:
receiving information which specifies a favourite cartridge type for use with the aerosol provision device, wherein the predetermined location is a website, or geographical location, for a stockist of a cartridge comprising a predetermined type, wherein the predetermined type comprises the favourite cartridge type.
(Estripeau discloses receiving information from the user regarding "their preferred type of aerosol generating consumable" in at least 0039. Estripeau discloses gathering information on nearby retailers with available stock of "aerosol generating consumable" and presenting it to the user in at least 0034, 0038-0044.)
Claim(s) 10, 11, 15, 16 is/are rejected under 35 U.S.C. § 103 as being unpatentable over
Estripeau (Pub. #: US 2020/0387955 A1) in view of
Che (Pub. #: US 2023/0385345 A1) in view of
Bowen et al. (Pub. #: US 2019/0158938 A1).
Claim(s) 10:
wherein the information further comprises a suggestion for the user to operate the aerosol provision device.
Estripeau, in view of Che, does not appear to specify notifying the user with a suggestion to operate the device. However, Bowen teaches a technique for a vaporizer that includes user notifications that indicate it is time for usage of the vaporizer in at least 0082.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the notifications taught by Estripeau, in view of Che, with the technique of vaporizer notifications as taught by Bowen. Motivation to combine Estripeau, in view of Che, with Bowen derives from both references pertaining to displays for information related to vaporizers.
Claim(s) 11:
wherein the information further comprises an indication that the aerosol provision device is faulty.
Estripeau, in view of Che, does not appear to specify notifying the user that the device is faulty. However, Bowen teaches a technique for a vaporizer that includes user notifications that indicate a required replacement of a heating element in at least 0082.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the notifications taught by Estripeau, in view of Che, with the technique of vaporizer notifications as taught by Bowen. Motivation to combine Estripeau, in view of Che, with Bowen derives from both references pertaining to displays for information related to vaporizers.
Claim(s) 15:
wherein the predetermined criterion comprises a counter exceeding a predetermined counter number.
Estripeau, in view of Che, does not appear to specify notifying the user in the event a counter exceeds a number. However, Bowen teaches a technique for a vaporizer that includes user notifications in response to "a number of usages" and "number of usages remaining in a cartridge" in at least 0082.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the notifications taught by Estripeau, in view of Che, with the technique of vaporizer notifications as taught by Bowen. Motivation to combine Estripeau, in view of Che, with Bowen derives from both references pertaining to displays for information related to vaporizers.
Claim(s) 16:
wherein the predetermined criterion comprises the aerosol provision device being operated for a predetermined number of times.
Estripeau, in view of Che, does not appear to specify notifying the user in the event a counter exceeds a number. However, Bowen teaches a technique for a vaporizer that includes user notifications in response to "number of cycles performed" and "number of cycles remaining" in at least 0082.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the notifications taught by Estripeau, in view of Che, with the technique of vaporizer notifications as taught by Bowen. Motivation to combine Estripeau, in view of Che, with Bowen derives from both references pertaining to displays for information related to vaporizers.
Claim(s) 12 is/are rejected under 35 U.S.C. § 103 as being unpatentable over
Estripeau (Pub. #: US 2020/0387955 A1) in view of
Che (Pub. #: US 2023/0385345 A1) in view of
Chancellor et al. (Pub. #: US 2022/0139525 A1).
Claim(s) 12:
wherein the information further comprises a suggestion to contact the emergency services.
Estripeau, in view of Che, discloses providing alerts to users based on information gathered from the aerosol device in at least 0032. Estripeau, in view of Che, does not appear to specify a suggestion to contact emergency services. However, Chancellor teaches an aerosol device that provides warnings that include a suggestion to contact emergency services in at least 0216.
Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. That is, in the substitution of the alerts taught by Estripeau, in view of Che, with the alerts suggesting contacting emergency services taught by Chancellor. Thus, the simple substitution of one known element for another producing predictable results would have rendered the claims obvious a person of ordinary skill in the art before the effective filing date of the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT SNIDER whose telephone number is (571)272-9604. The examiner can normally be reached M-W: 9:00-4:30 Mountain (11:00-6:30 Eastern).
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/SCOTT SNIDER/Examiner, Art Unit 3621
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