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 .
Claim Objections
Claim 9 is objected to because of the following informalities:
Claim 9, line 4, "being is greater" should be --being greater--
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-14 are 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 1 recites:
"setting a mode of the cleaning operation to one of a plurality of cleaning modes based on the information about the performance history; and
performing the cleaning operation according to the set cleaning mode,
wherein the setting of the mode of the cleaning operation comprises setting the cleaning operation to an idle mode based on a number of times that the cleaning operation has been performed during a first period being greater than or equal to a third threshold number."
The claim requires that a cleaning operation be performed and then recites the mode of cleaning operation be set to an idle mode based on a third threshold number. The specification appears to describe the idle mode as a mode to prevent a cleaning operation from being performed, thereby minimizing unnecessary power consumption (see [0023,0089,0103]). Claim 12 also recites the cleaning operation is not performed in idle mode. When the third threshold condition is satisfied, it is unclear whether claim 1 requires: (1) the setting of idle mode prevents a cleaning operation from being performed, (2) both a cleaning operation and idle mode step are performed, or (3) the idle mode is considered a type of cleaning operation. Assuming idle mode prevents a cleaning operation from being performed, it is unclear how the claim is satisfied when the claim concerns a "method of cleaning an aerosol generating device" and the method recites a step of performing a cleaning operation (not presented as optional). For the purpose of examination, it is assumed that performing a cleaning operation and idle mode are alternate modes where no cleaning operation is performed when in idle mode.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 recites the aerosol generating device outputs notification information without performing the cleaning operation in the idle mode. Claim 1 recites a step of "performing the cleaning operation" in line 8. Claim 12 fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
101 Analysis Step 1
Claims 1-14 are directed to a system, method, or product which are/is one of the statutory categories of invention.
101 Analysis Step 2A, Prong 1
Independent claim 1 recites a method of "obtaining information about a performance history of the cleaning operation previously performed by the aerosol generating device, in response to the user input;" "setting a mode of the cleaning operation to one of a plurality of cleaning modes based on the information about the performance history;", and "setting the cleaning operation to an idle mode based on a number of times that the cleaning operation has been performed during a first period being greater than or equal to a third threshold number." These limitations concern an evaluation and under their broadest reasonable interpretation, cover the performance as a mental process. It is a mental process because each step is one that could be done mentally as observation or judgement. A human may observe usage of the aerosol generating device and choose a cleaning operation based on their observations.
Independent claim 14 discloses an aerosol generating device with controller configured to similarly "obtain information about a performance history of the cleaning operation previously performed by the aerosol generating device, in response to the user input;" "set a mode of the cleaning operation to one of a plurality of cleaning modes based on the information about the performance history;", and "setting the cleaning operation to an idle mode based on a number of times that the cleaning operation has been performed during a first period being greater than or equal to a preset threshold number." 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 under the “Mental Processes” grouping of abstract ideas. Setting a cleaning mode based on information about the performance history is an evaluation taken. A human may observe the performance history and choose a cleaning mode based on said history. See MPEP 2106.04(a)(2).
101 Analysis Step 2A, Prong 2
This judicial exception is not integrated into a practical application. In particular, the claim's recitation of "performing the cleaning operation according to the set mode" amounts to essentially adding the words "apply it" (or an equivalent). Adding the words “apply it” (or an equivalent) with the judicial exception or merely using a computer (device controller) as a tool to perform an abstract idea does not amount to a particular practical application. MPEP 2106.05(f). Moreover, if one were to determine that the first period is greater than or equal to a third threshold number, the cleaning mode is set to an idle mode where no cleaning operation is actually performed.
Claim 13 recites additional elements of " a non-transitory computer-readable recording medium storing a program for executing the method of claim 1" and Claim 14 recites additional elements of "a battery," "a heater," and "a controller configured to control the battery and the heater." These additional elements are conventional components of an aerosol generating device. See MPEP 2106.05(h). A claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Also see Parker v. Flook, wherein, the additional element in Flook regarding the catalytic chemical conversion of hydrocarbons was not sufficient to make the claim eligible, because it was merely an incidental or token addition to the claim that did not alter or affect how the process steps of calculating the alarm limit value were performed. In this particular case, these additional claim limitations merely link the invention (observing usage history of the aerosol generating device and determining which cleaning mode to use) to the field of aerosol generating devices so as to have a controller select a cleaning operation for the device. These additional limitations do not alter or affect how the process steps of the determination of deciding which cleaning mode to use.
101 Analysis Step 2B
As noted above, the extra elements in the claim do not lend itself to being significantly more. The claims do not include additional elements which are sufficient to amount to significantly more than the judicial exception because the additional elements are considered to be merely adding an insignificant extra-solution activity to the judicial exception MPEP 2106.05(g), or generally linking the use of the judicial exception to a particular technological environment or field of use 2106.05(h). Additionally, it is noted that it is well-understood, routine, and conventional in the smoking art to design an aerosol-generating device to receive user input, supply heat via a heater, and perform a cleaning operation. For example, see Adams (US 5878752) which discloses an aerosol-generating device comprising user input, heater, and controller that performs cleaning operations (col 21, lines 5-67; col 7, lines 20+).
Regarding claims 2-12, these claims are directed towards further specifying the cleaning modes. These do not constitute integration into a practical application or significantly more than the mental process of evaluating performance history and selecting a cleaning mode.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US 5878752, of record) in view of Fernando (US 20100163063, of record).
Regarding claims 1-3, Adams discloses a method of cleaning an aerosol generating device, the method comprising:
receiving a user input for performing a cleaning operation to remove material attached on a heater in the aerosol generating device by heating the heater (button that user may press to activate cleaning cycle; col 21, lines 22-25);
obtaining information about a performance history of the cleaning operation previously performed by the aerosol generating device, in response to the user input (Adams counts and stores in memory the cleaning history and number of discreet events, such as puffs or heating; col 20, lines 48-62; Adams records the cleaning history in memory, col 21, lines 17-21);
and performing a cleaning operation (col 21, lines 26-67).
Adams recognizes that more uses indicate the need for cleaning (col 20, lines 48-62). Adams discloses multiple temperatures for heating to clean the device and states that the device must be heated for an adequate duration temperature to clean the components (col 24, lines 25-27). Adams discloses multiple times and durations of cleaning cycles (col 22, lines 4-16). Adams does not expressly disclose controlling and selecting the cleaning cycle mode based on information about the performance history.
Fernando, similarly directed towards electronic atomizing devices, discloses that the amount of use of a smoking article requires more frequent or longer duration cleaning [0076] for longer use cases. That is more frequent cleanings mean less time duration of cleaning (cleaning duration and cleaning frequency are inversely related). It would be obvious to the person of ordinary skill in the art prior to the effective filing date of the invention to have the device select a cleaning mode based on performance history of the device (e.g., shorter time duration for cleaning when user cleans the device more often and a longer cleaning time duration when the user cleans the device less often) as suggested by Fernando. The person of ordinary skill in the art would expect success as more frequent cleanings mean less build up which will then take a shorter amount of time to remove.
As to the recitation of "setting the cleaning mode to an idle mode based on a number of times that the cleaning operation has been performed during a first period being greater than or equal to a third threshold number," the setting to an idle mode limitation is interpreted as contingent on the number being greater than the third threshold number. Regarding contingent limitations, MPEP 2111.04(II) states:
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A.
Here, if the number of times that the cleaning operation has been performed is less than the third threshold, then no idle mode is set and the broadest reasonable interpretation of the claim only requires that a cleaning operation is performed.
Regarding claim 4-7, a longer duration (total heating time) cleaning cycle or higher operating temperature as per Fernando will supply more heat/power. A longer heating time or higher temperature as compared to a shorter heating time or lower temperature can be considered an enhanced cleaning. Furthermore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to have heated to different temperatures since Fernando discloses that particular cleaning ingredients provide an improved clean with higher operating temperatures and that the heating is tailored to the particular cleaning means ([0076]).
Regarding claim 8, Adams discloses modulating the heater for 20 to 60 seconds and 300 to 600 degrees C which overlaps the claimed range [col. 22 lines 4-16].
Regarding claims 9-11, Fernando discloses that the amount of use of a smoking article requires more frequent or longer duration cleaning [0076] for longer use cases. It would be obvious to have multiple durations of the cleaning cycle based upon different frequencies of cleaning in Adams.
Regarding claim 12, as discussed above the idle mode is considered a contingent limitation in the disclosed method and not necessarily required under the broadest reasonable interpretation of the claim.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11944128. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of '128 recites all of the steps recited in claim 1 of the instant application. In particular, claim 1 of '128 discloses a method of cleaning an aerosol generating device comprising receiving user input, reading information about performance history, setting a mode of cleaning operation, performing the cleaning operation, and setting of the mode to an idle mode based on a number of times that the cleaning operation has been performed during a first period greater than or equal to a preset threshold number.
Instant claims 2, 4, and 6-11, 13, and 14 are substantially identical to claims 2-11 of '128. The limitations of claims 3 and 12 are recited in claim 1 of '128. Claim 5 is obvious to a person having ordinary skill in the art at the time of the invention in view of claim 5 of '128 which recites plural cleaning modes providing different total amounts of heat according to a heating pattern based on different highest heating temperatures (see claim 4 upon which claim 5 depends).
Allowable Subject Matter
Claims 13 and 14 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 101, 35 U.S.C. 112(b), and the non-statutory double patenting grounds set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Claim 13 is directed towards a non-transitory computer-readable recording medium storing a program for executing the method of claim 1 and claim 14 is directed towards an aerosol generating device having battery, heater, and controller. The method of claim 1 and the controller of claim 14 recite setting a mode of the cleaning operation comprising setting the cleaning operation to an idle mode based on a number of times that the cleaning operation has been performed during a first period being greater than or equal to a threshold number. The setting of idle mode is interpreted as a limitation contingent on the threshold relationship being met. Unlike method claims, apparatus/product claims require structure for performing the function should the condition occur. MPEP 2111.04(II). The prior art of record does not teach or suggest setting an idle mode based on a number of times that the cleaning operation has been performed during a first period being greater than or equal to a threshold number.
Conclusion
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/ROBERT C DYE/Primary Examiner, Art Unit 3619
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