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 listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. Table A includes a listing of various references.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (table A includes many hyperlinks). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
Claim(s) 3-6, 8-18 and 20 is/are objected to because of the following informalities:
Claim 3, Ln. 2 should end with a colon
Claim 4, Ln. 2 should end with a colon
Claim 4, Ln. 4 recites “at one least one” which should read “at least one”
Claim 5, Ln. 13-14 recites “at least remote modular component” which should read “at least one remote modular component”
Claim 6, Ln. 2 should end with a colon
Claim 8, Ln. 9 recites “the medical professional” which should read “a medical professional” as it is a first introduction
Claim 9, Ln. 4 recites “to generated” which should read “to generate”
Claim 9, Ln. 6 recites “at least one at least one” which should read “at least one”
Claim 9, Ln. 6 recites “based for the at least one user” which should read “for the at least one user”
Claim 12, Ln. 2 should end with a colon
Claim 13, Ln. 5 should end with a colon
Claim 13, Ln. 15 should end with a colon
Claim 13, Ln. 18 recites “the least one pre-heating temperature” which should read “the at least one pre-heating temperature”
Claim 14, Ln. 2 should end with a colon
Claim 14, Ln. 3 recites “at least one user” which should read “the at least one user” following after claim 9
Claim 14, Ln. 5 recites “the least one user” which should read “the at least one user”
Claim 15, Ln. 2 should end with a colon
Claim 15, Ln. 5 recites “the at least the at least” which should read “the at least”
Claim 17, Ln. 2 should end with a colon
Claim 17, Ln. 10 recites “comprises using” which should read “using”
Claim 17, Ln. 12-13 recites “validation of ratio of unwanted effect-cannabis” which should read “validation of a ratio of unwanted effect to cannabis”
Claim 18, Ln. 2 should end with a colon
Claim 18, Ln. 8 recites “as baseline” which should read “as a baseline”
Claim 18, Ln. 9 recites “recording value” which should read “recording a value”
Claim 18, Ln. 9-10 recites “recording user’s input” which should read “recording a user’s input”
Claim 20, Ln. 10-11 recites “based on based on” which should read “based on”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim(s) 3, 5-7 and 19 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation “flow generating component” in claim 3 invokes 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function because the specification only discusses the flow generating component as using external air (¶0017 of the PGPub copy of the instant application). There is no discussion of whether the flow generator component includes any active structure, is only a passive opening for ambient air, or has some other form. Further, there is no discussion of how ambient air is intended to be used to “produce a complementary vapor,” as claimed. There is thus lack of sufficient written description support for structure to perform the function recited of the flow generating component.
Claim 5 recites the limitations “wherein the at least one external component comprises at least one external recording device comprising at least one of: mobile phone, smart watch, smart ring and at least one external sensor” and “the at least one external component comprises at least remote modular component comprising at least one of: server and cloud.”. The claim thus many possible combinations which do not appear accurate when selecting the claimed minimum of a single external component. For example, a smart watch does not also appear readable as a server. The claim thus defines various combinations of elements not suitable for reading as a single external component. There is thus lack of sufficient written description support for the overall combination of elements recited when considering that the claim never positively recites more than a single external component.
The limitation “data capturing component” in claim 6 invokes 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function because the specification only discusses what data is captured as now how the data is captured (¶0022 of the PGPub copy of the instant application). The specification appears to have failed to properly disclose the required structure upon which corresponds to the data capturing component. There is thus lack of sufficient written description support in the application as originally filed for the claimed data capturing component.
The limitations “controlling component” in claim 7 and “controlling module” in claim 19 both invoke 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function because the specification only discusses the controlling component as comprising at least one controlling module which comprises at least one protocol (¶0027 of the PGPub copy of the instant application). The overall controlling component and controlling module are not discussed as including any hardware. It is thus unclear whether the controlling component and the at least one controlling module are only software. The specification appears to have failed to properly disclose the required structure upon which corresponds to the controlling component and the at least one controlling module. There is thus lack of sufficient written description support for the particular computer-implemented limitations in the claims (see MPEP 2181(II)(B)).
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(s) 1-20 is/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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “the system is configured to provide at least one dynamic cannabis profile for the at least one user” in Ln. 6-7 which deems the claim indefinite. The language “provide … for the at least one user” is vague in the claim and could refer to either merely a computerized determination of a dynamic cannabis profile which is held in memory or to an active delivery of cannabis according to a dynamic cannabis profile to the user. The undue breadth of the language and its disparate possibilities renders the claim indefinite. Further, the limitation is indefinite as it recites a function of the system without reciting structure to perform the function. An apparatus claim is improper when it recites a structure by what it does rather than what it is (see MPEP 2173.05(g)). Applicant should amend the claim language to make clear what type of “providing” is intended and to positively recite what structure is performing the providing function.
Regarding claims 2, 5, 10, 13 and 18 the phrase "such as" (or only “such” in several inaccurate writings in claim 18) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Additionally the placement of multiple options within parentheses in claims 2 and 10 render those claims indefinite as it is unclear whether the options within the parentheses are being positively recited or not. See MPEP § 2173.05(d).
The limitation “flow generator component” in claim 3 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification discusses the flow generator component as using external air but fails to recite any structure involved in that functionality (¶0017 of the PGPub copy of the instant application). It is thus unclear whether the flow generator component includes any active structure, is only a passive opening for ambient air, or has some other form. Further, there is no discussion of how ambient air is intended to be used to “produce a complementary vapor,” as claimed. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 4 recites the limitation “at least one heating chamber” in Ln. 4 which deems the claim indefinite. The specification appears to indicate the at least one heating chamber is encompassed by the same structure as the at least one evaporation chamber of claim 1 (¶0086 of the PGPub copy of the instant application). However, the instant application fails to recite the limitation in that manner which leaves it unclear whether the present limitation is addition to the at least one evaporation chamber of claim 1 or is further defining the at least one evaporation chamber of claim 1. The latter interpretation appears most accurate. Applicant should make this clear by amending the claim language.
Claim 5 recites the limitation “wherein the at least one external component comprises at least remote modular component” in Ln. 13-14 which deems the claim indefinite. The language “at least one external component” only requires a minimum of one external component. However, the claim has already recited the at least one external component as comprising at least one external recording device which then comprises at least one of: mobile phone, smart watch, smart ring and at least one external sensor. It is thus unclear whether the present limitation should be read as further alternatives for the at least one external component, such that a minimum of one external component, or whether multiple external components must be understood. Because of the use of the continuing language “at least one external component,” as opposed to a plurality of external components, only a single external component will be read as required by the claim.
The limitation “data capturing component” in claim 6 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification discusses the data capturing component based on what data it captures and not how it captures that data (¶0022 of the PGPub copy of the instant application). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 7 recites the limitation “the at least one fluid” in Ln. 3. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the claim will instead be read as dependent on claim 4, which provides the proper antecedent basis.
The limitation “controlling component” in claim 7 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification discusses the controlling component as comprising at least one controlling module comprising at least one protocol (¶0027 of the PGPub copy of the instant application). However, there is no discussion if the controlling module and protocol are only software or comprise hardware. Further, the term “controlling module” additionally invokes 35 U.S.C. 112(f) as has no disclosed structure associated with it. Because the limitation may only refer to software the limitation deems the claim indefinite as the corresponding “structure” cannot be suitable evaluated (see MPEP 2181(II)(B)). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 9 recites the limitation “at least one biomarker data” in Ln. 4 which deems the claim indefinite. It is unclear whether the biomarker data refers to the same biomarker as claim 1 or to different biomarker information. The biomarker information appears to be the same and thus claims 1 and 9 should be ensured to use the same language as opposed to the currently different language for the biomarker between those two claims.
Claim 12 recites the limitation “the at least one external component” in Ln. 11. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the claim will instead be read as dependent on claim 11, which provides the proper antecedent basis.
Claim 13 recites the limitations “a first fluid” in Ln. 6 and “at least one second fluid” in Ln. 7 which deems the claim indefinite. It is unclear whether these newly introduced fluids are intended to further define the earlier at least one fluid or are instead further distinct fluids in the claim. It appears the former interpretation is most accurate. The newly specified fluids should be properly linked to the earlier at least one fluid in a similar manner to claim 7.
Claim 13 recites the limitation “the first concentration A and the at least one second concentration B” in Ln. 7-8. There is insufficient antecedent basis for this limitation in the claim. Applicant should clarify what is intended.
Claim 13 recites the limitation “the at least one evaporation temperature” at the end of the claim, which deems the claim indefinite. The claim has earlier introduced a first evaporation temperature A and a second evaporation temperature B. It is unclear if the present limitation is intended to refer to both of those earlier evaporation temperatures, only one of those evaporation temperatures or a fully different evaporation temperature. Applicant should clarify what is intended.
Claim 14 recites the limitation “the at least one external component” in Ln. 9. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the claim will instead be read as dependent on claim 11, which provides the proper antecedent basis.
Claim 15 recites the limitation “the at least one user-related signal” in Ln. 3. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the limitation is intended to refer to the user-related usage data or the user-related bio-feedback of claim 14.
The limitation “controlling module” in claim 19 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification discusses the at least one controlling module as comprising at least one protocol (¶0027 of the PGPub copy of the instant application). However, there is no discussion if the controlling module and protocol are only software or comprise hardware. Because the limitation may only refer to software the limitation deems the claim indefinite as the corresponding “structure” cannot be suitable evaluated (see MPEP 2181(II)(B)). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Interpretation - 35 USC § 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “connecting component” in claim 1, “feedback generator component” in claim 3, “flow generator component” in claim 3, “data capturing component” in claim 6, “controlling component: in claim 7 and “controlling module” in claim 19.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The corresponding structure for the “connecting component” is best understood as: a Bluetooth (¶0015 of the PGPub copy of the instant application).
The corresponding structure for the “feedback generator component” is best understood as: vibration feedback, sound feedback, and light feedback (¶0017 of the PGPub copy of the instant application).
The corresponding structure for the “flow generator component” is best understood as: no particular structure is disclosed (¶0017 of the PGPub copy of the instant application).
The corresponding structure for the “data capturing component” is best understood as: no particular structure is disclosed (¶0022 of the PGPub copy of the instant application).
The corresponding structure for the “controlling component” is best understood as: at least one controlling module comprising at least one protocol (¶0027 of the PGPub copy of the instant application). It is noted that “controlling module” further invokes 35 U.S.C. 112(f) but has no disclosed structure. There is no discussion if the controlling module and protocol are only software or comprise hardware.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Improper Multiple Dependent Claim
Claim(s) 8 and 20 is/are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only (claim 8 currently recites dependence on both claims 1 and “any of the preceding system claims” (in Ln. 4-5)). See MPEP § 608.01(n). Accordingly, claim 8 has not been further treated on the merits. Claim 20 is dependent on claim 8 and thus subject to the same improper claim dependency.
Claim(s) 15-16 is/are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only (claim 15 currently recites dependence on both claims 14 and “any of the preceding method claims” (in Ln. 8)). See MPEP § 608.01(n). Accordingly, claim 15 has not been further treated on the merits. Claim 16 is dependent on claim 15 and thus subject to the same improper claim dependency.
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 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(s) 1-2, 5, 9-12, 14 and 17-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Davidson et al. (U.S. Pub. 2017/0127727).
Regarding claim 1, Davidson discloses a vaporizing system (full disclosure) for generating a cannabis-based inhalable aerosol (¶¶0486-0487, 0634), the system comprising: a vaporizer (e.g. Fig. 17A; ¶¶0626-0633) comprising at least at least one evaporation chamber (Fig. 17A interaction of #1701 & #1711; ¶¶0627-0629), at least one sensor (e.g. Fig. 14 #1401; ¶¶0367-0382, 0604-0606) configured to sense at least one biomarker of at least one user, and at least one connecting component (¶0548 – various communication possibilities), wherein the system is configured to provide at least one dynamic cannabis profile for the at least one user (e.g. Fig. 10 #1009-1015; ¶¶0568-0573). The citations made herein from Davidson are meant to be representative of the overall invention of Davidson and are not to be construed as limiting on the possible reading of further passages on the claim(s).
Regarding claim 2, Davidson discloses the at least one biomarker comprises at least one of: pulse (¶0697), heart rate variability (HRV), sleep time (¶0761), sleep stages, user's voice, user's tone, user's rhythm of speech, eye movements (saccades and fixations) (¶0606), eye features (pupil size, blood vessels) (¶0589), electroencephalography (EEG) (¶0370), user's DNA-based cannabis compatibility profile, brain EEG waves; THC breath sensing; blood levels of a plurality of markers, such as sugar, insulin; and breathing pattern; the at least one sensor is an external sensor (the above citations are for possible biomarker will be performed externally of the user’s body); and the at least one connecting component comprises a communication port (¶0548). The instant claim does not invoke 35 U.S.C. 112(f).
Regarding claim 5, Davidson discloses wherein the at least one connecting component is configured to bidirectionally connect to at least one external component (Fig. 9 shows bidirectional communication; ¶¶0548, 0551), wherein the at least one external component comprises at least one external recording device (smartphones have memory for recording), wherein the at least one connecting component connects to the at least one external recording device via at least one of: Bluetooth, infrared, and Wi-Fi (¶0548 – wireless), wherein the at least one external recording device comprises at least one of: mobile phone (Figs. 15A-15C – smartphone; ¶0551), smart watch, smart ring and at least one external sensor such as a glucose sensor, wherein the at least one connecting component is configured to bidirectional communicate with the at least one external component (Fig. 9 shows bidirectional communication), wherein the at least one external component comprises at least remote modular component (Fig. 9; ¶0553), wherein the at least one connecting component is configured to bidirectionally communicate with the at least one remote modular component (Fig. 9 shows bidirectional communication), wherein the at least one remote modular component comprises at least one of: server and cloud (¶0553).
Regarding claim 9, Davidson discloses a method for generating a cannabis-based inhalable aerosol (¶0258), the method comprising: generating the cannabis-based inhalable aerosol from at least one fluid (¶¶0273,0627), receiving at least one biomarker data of at least one user to generate at least one user biomarker (¶¶0367-0382, 0604-0606), and providing at least one at least one dynamic cannabis profile based for the at least one user (e.g. Fig. 10 #1009-1015; ¶¶0568-0573), wherein a composition of the cannabis-based inhalable aerosol is based on the at least one dynamic cannabis profile for the at least one user (e.g. Fig. 10 #1009-1015; ¶¶0568-0573), wherein the method is for operating a system according to claim 1 (see above).
Regarding claim 10, Davidson discloses the at least one biomarker data comprises at least one of: pulse (¶0697), heart rate variability (HRV), sleep time (¶0761), sleep stages, user's voice, user's tone, user's rhythm of speech, eye movements (saccades and fixations) (¶0606), eye features (pupil size, blood vessels) (¶0589), electroencephalography (EEG) (¶0370), user's DNA-based cannabis compatibility profile, brain EEG waves; THC breath sensing; blood levels of a plurality of markers, such as sugar, insulin; and breathing pattern, wherein the method comprises at least partially sensing the at least one biomarker data (above cited biomarkers require a sensor).
Regarding claim 11, Davidson discloses the method comprises at least one of: connecting the system to a charging dock; generating at least one indication signal via at least one indication component comprising at least one of: indication lamp, and screen; generating at least one feedback; providing the at least one feedback to the at least one user; linking at least one cartridge comprising a unique identification number to at least one regulatory database and identifying the at least one cartridge via reading the unique identification number; and connecting the system to at least one external component (¶¶0548, 0551). Only one limitation is required for reading on the claim based on the “at least one of” clause.
Regarding claim 12, Davidson discloses the method comprises at least one of capturing user-related data comprising at least one of: user ID, time of use, current cartridge used (profile), inhale features, quantity used, duration of inhalation, and vaporization temperature; capturing at least one user-related physiological biometric data comprising at least one of: exhaled breath volatile organic compounds (VOCs), body temperature (¶0750), pulse (¶0697) and heart rate variability (HRV); and capturing at least one user-related physical biometric data comprising at least one of: facial features, eye structures and finger parameters; receiving user-related biometric data from the at least one external component. Only one limitation is required for reading on the claim based on the “at least one of” clause.
Regarding claim 14, Davidson discloses the method comprises at least one of recognizing at least one pre-configured finger print of at least one user, and controlling activation and/or deactivation of the system upon recognition of the at least one pre-configured finger print of the least one user; utilizing at least one identification module comprising at least one authentication protocol, wherein the method comprises authenticating the at least one user, and activating the system upon authentication of the at least one user; sending user-related usage data to the at least one external component (Figs. 15A-15C; ¶¶0548, 0551), and receiving at least one command dataset to be implemented in the system (Fig. 9 shows bidirectional communication); and controlling at least one dosage method and executing at least one protocol of: pre-set dosing comprising pre-configured dosages set as an input from at least one of: a medical professional and a health care provider, automatic dosing comprising dosages based on at least one user-related bio- feedback; and measured dosing comprising dosages set by the at least one user. Only one limitation is required for reading on the claim based on the “at least one of” clause.
Regarding claim 17, Davidson discloses the method comprises executing at least one computer-implementing model (¶¶0322, 0507, 0558, 0730, 0733, 0761) comprising at least one of: at least one biomarker (¶¶0322, 0507, 0558, 0730, 0733, 0761)
Regarding claim 18, Davidson discloses the method comprises adjusting the at least one dynamic cannabis profile based on at least one of: personal effect of cannabis consumption (e.g. Fig. 10 #1013, 1015; ¶¶0571-0573; see also Fig. 14) such as well-being, underlying conditions, tolerance, body parameters such weight, height, and personal parameters such age, gender, the at least one biomarker; implementing a setup process for the at least one user, wherein the setup process comprises: recording a base condition in at least one time measurement without consumption of cannabis (¶0586), setting a baseline based on the at least one measurement without consumption of cannabis, recording a value of the at least one biomarker of the at least one user (¶0589), and recording the user's input of current health status such as pain (e.g. Figs. 15A-15C; ¶¶0589, 0610-0613).
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Claim(s) 3-4, 6-7 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davidson et al. (U.S. Pub. 2017/0127727) in view of Davidson et al. (U.S. Pub. 2019/0027240; henceforward “Davidson ‘240”).
Regarding claim 3, Davidson discloses the system comprises at least one power source (¶¶0631, 0656), wherein the system is configured to connect to a charging dock (¶0656 – ”greater charge life” implies an intent to charge), at least one indication component, wherein the at least one indication component comprises at least one of: indication lamp, and screen (e.g. screen in Figs. 15A-15C); at least one identification sensor comprising at least one of: tap sensor, touch sensor (e.g. Fig. 15A; ¶0612), and button for user control,
Davidson fails to disclose at least one flow generator component configured to produce a complementary vapor using external air.
Davidson ‘240 teaches a vaporizing system (¶¶0003-0008) including a flow generator component (¶0314 – fan) configured to produce a complementary vapor using external air. Davidson ‘240 teaches a flow generator component as providing the benefit of augmenting and/or replacing the force of inhalation of a user (¶0314).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to have incorporated in Davidson at least one flow generator component configured to produce a complementary vapor using external air in order to provide the benefit of augmenting and/or replacing the force of inhalation of a user in view of Davidson ‘240.
Regarding claim 4, Davidson discloses the vaporizer comprises a body (Fig. 17A body of #1701); at one least one heating chamber ((Fig. 17A interaction of #1701 & #1711; ¶¶0627-0629); at least one liquid chamber (Fig. 17A #1709; ¶¶0273, 0627); and at least one cartridge (Fig. 17A #1705; ¶¶0273,0627) comprising at least one fluid.
Davidson fails to disclose the at least one cartridge comprises a unique identification number linked to at least one regulatory database.
Davidson ‘240 teaches a vaporizing system (¶¶0003-0008) including a cartridge comprising a unique identification number (¶¶0126, 0139, 0171). Davidson ‘240 teaches a unique identification number as providing the benefit of allowing extraction parameters to be specifically set based upon contents of the cartridge and to ensure active agents are only being used for particular user conditions (¶¶0126, 0139, 0171). One of ordinary skill in the art would have further considered it prima facie obvious that cannabis is a regulated substance.
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to have incorporated in Davidson the at least one cartridge comprises a unique identification number linked to at least one regulatory database in order to provide the benefit of allowing extraction parameters to be specifically set based upon contents of the cartridge and to ensure active agents are only being used for particular user conditions in view of Davidson ‘240.
Regarding claim 6, Davidson discloses the system comprises at least one data capturing component configured to capture user-related data comprising at least one of: user ID, time of use, current cartridge used (profile), inhale features (¶0553), quantity used, duration of inhalation (¶0553), airflow and vaporization temperature; at least one physiological biometric sensor configured to capture at least one user-related physiological biometric data comprising at least one of: exhaled breath volatile organic compounds (VOCs), body temperature (¶0750), pulse (¶0697) and heart rate variability (HRV); at least one physical biometric sensor configured to capture at least one user-related physical biometric data comprising at least one of: facial features, eye structures and finger parameters (¶¶0606, 0612).
Davidson fails to disclose at least one near field communication (NFC) component.
Davidson ‘240 teaches a vaporizing system (¶¶0003-0008) including a near field communication (NFC) component (¶¶0126, 0171, 0195). Davidson ‘240 teaches a near field communication (NFC) component as providing the benefit of allowing wireless communication between components (¶¶0126, 0171, 0195).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to have incorporated in Davidson at least one near field communication (NFC) component in order to provide the benefit of allowing wireless communication between components in view of Davidson ‘240.
Regarding claim 7, Davidson teaches the invention as modified above and further teaches the at least one fluid comprises at least one evaporation temperature (fluids for vaporization must have an evaporation temperature), wherein the at least one fluid comprises at least two fluids comprising a first fluid and at least one second fluid (Fig. 17B #1725; ¶¶0634-0636 – multiple cartridges with different compositions), wherein the first fluid comprises a substance comprising an evaporation temperature A and the at least one second fluid comprise at least one evaporation temperature B, wherein the evaporation temperature A is different from the at least one evaporation temperature B (different compositions will have different evaporation temperatures), wherein the first fluid comprises a concentration A and the at least one second fluid comprises at least one concentration B, wherein the concentration A is different from the at least one concentration B (different compositions will have different concentrations), wherein the system comprises a controlling component (Fig. 17A #1719; ¶0633), wherein the controlling component is configured to control at least one of: the first evaporation temperature A, the at least one second evaporation temperature B, the first concentration A and the at least one second concentration (¶0634).
Regarding claim 19, Davidson teaches the invention as modified above and further teaches the controlling component comprises at least one controlling module (Fig. 17A #1719; ¶0633) configured to control at least one dosage method, the at least one controlling module comprising at least one protocol of: pre-set dosing comprising pre-configured dosages set as an input from at least one of: a medical professional and a health care provider; automatic dosing comprising dosages based on at least one user-related bio-feedback (e.g. Fig. 10 #1013, 1015; ¶¶0571-0573; see also Fig. 14); and measured dosing comprising dosages set by the at least one user. Only one limitation is required for reading on the claim based on the “at least one protocol of” clause.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davidson et al. (U.S. Pub. 2017/0127727) in view of Raichman (U.S. Pub. 2018/0104214).
Regarding claim 13, Davidson discloses controlling a parameter of the at least one fluid (¶¶0633-0636), the parameter comprising at least one of: evaporation temperature, concentration of at least one of the at least one fluid (¶¶0633-0636 – vaporization will control any of these parameters), wherein the method comprises at least one of controlling a first evaporation temperature A of a first fluid (Fig. 17B #1725; ¶¶0634-0636 – multiple cartridges with different compositions, each composition will have its own evaporation temperature), at least one second evaporation temperature B of at least one second fluid (Fig. 17B #1725; ¶¶0634-0636 – multiple cartridges with different compositions, each composition will have its own evaporation temperature), the first concentration A and the at least one second concentration B (Fig. 17B #1725; ¶¶0634-0636 – multiple cartridges with different compositions, each composition will have its own concentration); adjusting the at least one dynamic cannabis profile based on at least one fluid-related parameter comprising at least one of: viscosity, amount in chamber, evaporation temperature, heating mechanism profile such as voltage, pulse, heating time (¶0636 – different heating for different agents); and operating the system assuming at least one operational state (any operation), wherein the system comprises at least one heating component (Fig. 17A #1707; ¶0627).
Davidson fails to disclose the method comprises operating the at least one heating component to assume at least one pre-heating operational state, wherein when in the at least one pre-heating operational state, the method comprises heating the at least one fluid to at least one pre-heating temperature, liquefying the at least one fluid, wherein the least one pre-heating temperature is at a lower temperature than the at least one evaporation temperature.
Raichman teaches a vaporizer (e.g. Fig. 1) for which operation include operating a heating component to assume at least one pre-heating operational state (Fig. 12B initial temperature increase; ¶0165), wherein when in the at least one pre-heating operational state, the method comprises heating the at least one fluid to at least one pre-heating temperature (¶0165), liquefying the at least one fluid, wherein the least one pre-heating temperature is at a lower temperature than the at least one evaporation temperature (Fig. 12B; ¶¶0164-0167). Raichman teaches a pre-heating operational state as providing the benefit of removing moisture from the cannabis prior to vaporization during subsequent heating (¶0165).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to have incorporated in Davidson the method comprises operating the at least one heating component to assume at least one pre-heating operational state, wherein when in the at least one pre-heating operational state, the method comprises heating the at least one fluid to at least one pre-heating temperature, liquefying the at least one fluid, wherein the least one pre-heating temperature is at a lower temperature than the at least one evaporation temperature in order to provide the benefit of removing moisture from the cannabis prior to vaporization during subsequent heating in view of Raichman.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, see PTO-892 for additional attached references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH D BOECKER whose telephone number is (571)270-0376. The examiner can normally be reached M-F 9:00 AM - 4:00 PM.
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/JOSEPH D. BOECKER/Primary Examiner, Art Unit 3785
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