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
Claims 1-14 and 27-32 are cancelled. Claim 15 is amended. Claims 33-36 are newly added. Claims 33-36 are withdrawn. Claims 15-26 are presently examined.
Applicant’s arguments regarding the objection to the drawings have been fully considered and are persuasive. The objection of 6/17/2026 is withdrawn.
Applicant’s arguments regarding the rejections under 35 USC 101 have been fully considered and are persuasive. The rejections of 6/17/2026 are overcome.
Election/Restrictions
Newly submitted claims 33-36 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 15-26, drawn to a device, classified in A24F 40/53.
II. Claims 33 and 35-36, drawn to a device, classified in A24f 40/65.
III. Claim 34, drawn to a device, classified in A24F 40/60.
The inventions are independent or distinct, each from the other because:
Inventions I and II are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect. Group I requires a heater that heats a flavor source or an aerosol source to generate a flavor, a circuitry configured to control a heating function of the device, where the heater generates the flavor and function data controls a strength of heating by the heater, including controlling the heater in accordance with the function data when inhalation of the device is being performed, which are not required by group II. Group II requires a vibrator and circuitry that converts input data regarding a detected motion to vibration data for vibrating the vibrator, and vibrates the vibrator in accordance with the vibration data when inhalation of the device is being performed, which are not required by group I. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions I and III are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect. Group I requires a heater that heats a flavor source or an aerosol source to generate a flavor, a circuitry configured to control a heating function of the device, where the heater generates the flavor and function data controls a strength of heating by the heater, including controlling the heater in accordance with the function data when inhalation of the device is being performed, which are not required by group III. Group III requires a display configured to show an image, and circuitry configured to convert input data regarding a detected motion to function data for controlling the display, the function data being data for controlling at least one of a hue of the display, a lightness of the display, a chroma of the display, and information displayed by the display device, and control the display in accordance with the function data, which are not required by group I. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions II and III are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect. Group II requires a vibrator and circuitry that converts input data regarding a detected motion to vibration data for vibrating the vibrator, and vibrates the vibrator in accordance with the vibration data when inhalation of the device is being performed, which are not required by group III. Group III requires a display configured to show an image, and circuitry configured to convert input data regarding a detected motion to function data for controlling the display, the function data being data for controlling at least one of a hue of the display, a lightness of the display, a chroma of the display, and information displayed by the display device, and control the display in accordance with the function data, which are not required by group II. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
--the inventions have acquired a separate status in the art in view of their different classification;
--the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 33-36 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Specification
The use of the terms Wi-Fi [0095], Bluetooth [0096], which are trade names or marks used in commerce, have been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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.
Claim 26 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.
Regarding claim 26, it is unclear whether the limitation “a flavor” refers to the flavor of claim 15 or to a new flavor, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it referred to the flavor of claim 15.
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.
Claims 15-21 and 25-26 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Harden (US 2022/0256934).
Regarding claims 15 and 17, Harden discloses an aerosol delivery device (abstract) that detects a trigger input from a user and operates the device in a preselected mode [0069]. The input means is an accelerometer that detects movement of the device by a user [0071]. One of the device operations can be activated a heater [0178] that causes liquid stored in a tank to be heated to generate a vapor [0283], which is considered to meet the claim limitation of an aerosol source. A controller determines whether the information received from the accelerometer is indicative of a specific defined movement, and operates the device accordingly if the motion corresponds to a defined input [0178]. The controller includes a microprocessor [0338], which one of ordinary skill in the art would recognize includes circuitry.
Regarding claim 16, Harden discloses that the accelerometer detects any movement of the device [0072], which must be continuous detection creating data since some movement would not be detected if the detection were not continuous, and the controller determines whether the signal received from the sensor is indicative of the specific movement [0121]. Whether or not a specific movement occurred is considered to a form of discrete function data.
Regarding claim 18, Harden discloses that the movement sensor detects angular velocity [0246].
Regarding claim 19, Harden discloses that the predetermined movement is a pattern of taps [0179], which is considered to be a discrete determination that is representative of an overall device state.
Regarding claim 20, Harden discloses that the operation of the device determined by the action includes the temperature of the heater [0178], which is considered to represent the strength of the device heating function.
Regarding claim 21, Harden discloses that the operation of the device determined by the action includes the temperature of the heater [0178], which is considered to represent an operation pattern of the device heating function.
Regarding claim 25, Harden discloses that operation of the device can include activating the heater [0178], which is considered to meet the claim limitation of in accordance with a time during which the function is not active since the heater is not activated until the movement input is detected.
Regarding claim 26, Harden discloses that operation of the device can include activating the heater [0178], which is considered to meet the claim limitation of when the heating is not being performed since the heater is not activated until the movement input is detected. The e-liquid is vaporized to form an aerosol for user inhalation [0359], which is considered to meet the claim limitation of generating a flavor.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 22 is rejected under 35 U.S.C. 103 as being obvious over Harden (US 2022/0256934) in view of Li (WO 2019/148516, machine translation relied upon).
Regarding claim 22, Harden discloses all the claim limitations as set forth above. Harden does not explicitly disclose dividing the input data and converting the data into strength associated with the device heating.
Li teaches an electronic cigarette with adjustable settings by shaking to improve the user experience [0006]. The power level is adjusted according to an acceleration signal derived from a gravity sensor [0032], which is considered to meet the claim limitation of associating a representative value with the heating function. It is evident that each of the shakes occurs over a time period, which is considered to meet the claim limitation of dividing the data into a plurality of pieces of data.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the operation of Harden with the different shakes of Li. One would have been motivated to do so since Li teaches using different shakes to indicate that an electronic cigarette should provide different power levels.
Claim 23 is rejected under 35 U.S.C. 103 as being obvious over Harden (US 2022/0256934) in view of Butin (US 2024/0237752).
Regarding claim 23, Harden discloses all the claim limitations as set forth above. Harden does not explicitly disclose the accelerometer providing data about movement along multiple axes.
Butin teaches an aerosol generating device (abstract) having a motion sensor in the form of a multiple axis accelerometer that detects movement along multiple axes [0218] and provides data concerning the motion along the multiple axes so that a gesture can be determined [0079], indicating that data is provided about movement along each axis. Butin additionally teaches that detecting a gesture allows the device to be controlled.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the multi axis accelerometer of Butin as the accelerometer of Harden. One would have been motivated to do so since Butin teaches an accelerometer that detects a gesture performed on an aerosol generating device.
Claim 24 is rejected under 35 U.S.C. 103 as being obvious over Harden (US 2022/0256934) in view of Butin (US 2024/0237752) as applied to claim 23 above, and further in view of Dickens (US 10,945,463).
Regarding claim 24, modified Harden teaches all the claim limitations as set forth above. Harden additionally discloses that the operation of the device determined by the action includes the temperature of the heater [0178], which is considered to represent both the strength and an operation pattern of the device heating function. It is evident that 2 dimensional movement of the device would result in generation of data along both the first and second axes, which would meet the claim limitation since data about movement in both axes is data regarding both strength and an operation pattern. Modified Harden does not explicitly disclose the movement of the device being a 2 dimensional movement.
Dickens teaches an aerosol delivery device having a motion sensor (abstract) in the form of an accelerometer that detects a predefined sequences for switching between operational modes in the form of tapping events in both the longitudinal and sideways directions (column 15, lines 49-67, column 16, lines 1-5).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the device of modified Harden with the predefined sequence of Dickens. One would have been motivated to do so since Dickens teaches a predefined sequence that causes an aerosol delivery device to switch operating modes.
Response to Arguments
Regarding the rejections under 35 USC 102 and 35 USC 103, applicant’s arguments have been fully considered and are persuasive. However, upon further consideration, new grounds of rejection are entered as set forth 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
