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
This Office Action is in response to the Amendment filed on 07/23/2025.
Claims 1-15 are currently pending and examined below.
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 1-15 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-15 is/are directed towards a statutory category (i.e., a process, machine, manufacture, or composition of matter) (Step 1, Yes).
Claim 1 recites (additional elements underlined):
A system comprising:
an external container;
a consumer interfacing apparatus comprising:
a retrieval assembly configured to retrieve used consumables from the external container, the external container configured to be placed in mechanical engagement with the consumer interfacing apparatus, wherein each of the used consumables comprises a portion of an aerosol-generating substrate remaining after use of a consumable;
a controller operably coupled to the retrieval assembly and configured to collect data regarding at least used consumables retrieved from the external container, wherein the external container or an owner of the external container is awarded with a recycling reward for used consumable retrieved from the container; and
an apparatus recycling compartment for storing the used consumables retrieved from the container.
Under the broadest reasonable interpretation, the limitations outlined above that describe or set forth the abstract idea, cover performance of the limitations in the mind but for the recitation of generic computer(s) and/or generic computer component(s). That is, other than reciting the additional elements identified below, nothing in the claim precludes the limitations from practically being performed in the mind. These limitations are considered a mental process because the limitations include an observation, evaluation, judgement, and/or opinion. These limitations are also similar to “collecting information, analyzing it, and displaying certain results of the collection and analysis” and/or “collecting and comparing known information” which were determined to be mental processes in MPEP 2106.04(a)(2)(III)(A). The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer” (see MPEP 2106.04(a)(2)(III)(C)). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Therefore, the claim recite a mental process (Step 2A Prong One, Yes).
The limitations outlined above also describe or set forth a process of rewarding users for recycling, which falls within the certain method of organizing human activity enumerated grouping of abstract ideas. The limitations outlined above also describe or set forth a fundamental economic principle or practice because rewarding users for performing certain activities is related to commerce and economy, a commercial interaction (e.g., advertising, marketing or sales activities or behaviors, business relations), and managing personal behavior or relationships or interactions between people. Therefore, the claim recites a certain method of organizing human activity (Step 2A Prong One, Yes).
In Step 2A Prong Two, these additional element(s) are recited at a high level of generality, and under the broadest reasonable interpretation, are generic computer(s) and/or generic computer component(s) that perform generic computer functions. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional element(s) amount adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computer(s) and/or generic computer component(s) does not integrate the judicial exception similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. “[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further, the courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer(s) and/or generic computer component(s). Their collective functions merely provide generic computer implementation. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claims as a whole is more than a drafting effort designed to monopolize the exception. (Step 2A Prong Two, No).
In Step 2B, the additional elements also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. However, unless an Examiner had previously concluded under revised Step 2A that an additional element was insignificant extra-solution activity, they should reevaluate that conclusion in Step 2B (see 2019 Revised Patent Subject Matter Eligibility Guidance, now in MPEP 2106). Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. The additional elements amount no more than a mere instruction to apply the abstract idea using generic computer(s) and/or generic computer component(s) (Step 2B, No).
Claims 2-4 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 1 (i.e., certain methods of organizing human activities and/or mental processes). Claim 2 recites the additional elements of “wherein the retrieval assembly comprises a robotic arm”. Claim 3 recites eh additional element of “the consumer interfacing apparatus further comprising a new storage compartment for”. Claim 4 recites the additional element of “wherein the retrieval assembly is further configured to”. However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claim 5 recites (additional elements underlined):
A system for rewarding a container or an owner of the container with one or more recycling rewards, the system comprising:
an external container, the external container comprising a container recycling compartment configured to at least temporarily house one or more used consumable; and
a consumer interfacing apparatus comprising:
a retrieval assembly configured to retrieve used consumables from the external container;
a controller operably coupled to the retrieval assembly and configured to collect data regarding at least the used consumables retrieved from the external container; and
an apparatus recycling compartment for storing the used consumables retrieved from the external container,
wherein the external container is configured to be removably placed in mechanical engagement with the consumer interfacing apparatus, the external container or an owner of the external container is awarded a recycling reward for the used consumables retrieved from the container recycling compartment of the external container by the retrieval assembly.
For the same reasons explained above with respect to claim 1, claim 5 also recites an abstract idea in Step 2A Prong One (i.e., mental process and certain method of organizing human activity). The additional elements also do not integrate the judicial exception into a practical application or amount to significantly more for the same reasons explained above with respect to claim 1.
Claims 6-9 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 5 (i.e., certain methods of organizing human activities and/or mental processes). Claim 6 recites the additional element of “wherein the retrieval assembly is additionally configure to […] from the consumer interface apparatus into the external container.” Claim 7 recites the additional element of “wherein the external container further comprises an unused compartment.” Claim 8 recites the additional element of “wherein the external container is configured to”. Claim 9 recites the additional elements of “with the external container” and “with an intermediary device”. However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claim 10 recites (additional elements underlined):
A method of awarding a consumer a recycling reward for the return of used consumables generated by use of an aerosol generating device, the method comprising:
removably placing an external container in mechanical engagement with a consumer interfacing apparatus;
retrieving at least one used consumable from the external container via a retrieval assembly of the consumer interfacing apparatus; and
awarding the external container or an owner of the external container with a recycling reward for the used consumable retrieved from the external container by the retrieval assembly of the consumer interfacing apparatus.
For the same reasons explained above with respect to claim 1, claim 10 also recites an abstract idea in Step 2A Prong One (i.e., mental process and certain method of organizing human activity). The additional elements also do not integrate the judicial exception into a practical application or amount to significantly more for the same reasons explained above with respect to claim 1.
Claims 11-15 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 10 (i.e., certain methods of organizing human activities and/or mental processes). Claim 11 recites the additional elements of “further comprising the consumer interfacing apparatus” and “external container”. Claim 12 recites the additional element of “external container”. Claim 13 recites the additional element of “from the external container” and “in the external container”. Claim 14 recites the additional element of “into the external container”. Claim 15 recites the additional elements of “wherein the consumer interfacing apparatus, the external container or bot can receive and transmit data to an external electronic user device.” However, in Step 2A Prong two, these additional elements also do not integrate the judicial exception into a practical application because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use. The additional elements of claim 15 amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, generally linking the use of the judicial exception to a particular technological environment or field of use, and adding insignificant extra-solution activity. In Step 2B, the additional elements of claim 15 also amount to simply appending well-understood, routine, and conventional activity as evidenced by at least MPEP 2106.05(d)(II) (e.g., receiving or transmitting data over a network). With regard to the remaining additional elements, they also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two.
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.
Claim(s) 1-2, 5, and 10-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright (US 2023/0234783 A1, hereinafter “Wright”), in view of Gonen et al. (US 2008/0296374 A1, hereinafter “Gonen”).
As per Claim 1, Wright discloses A system comprising (Figure 1. Also see citations below.):
a consumer interfacing apparatus comprising (Figure 1 and ¶ 23. Also see citations below. ):
[…] retrieve used consumables […] wherein each of the used consumables comprises a portion of an aerosol-generating substrate remaining after use of a consumable (¶¶ 1 and 5-7. Also see citations above.); and
an apparatus recycling compartment for storing the used consumables retrieved from the container (Figure 1 and ¶¶ 44-45. Also see citations above.).
While Wright discloses a recycling kiosk for vaping devices, Wright does not appear to explicitly disclose the following limitations. However, in the same field of endeavor, Gonen teaches:
an external container (¶¶ 25-30 and 82. Also see at least ¶¶ 94-100 and Figures 1-3);
[retrieve used consumables] from the external container, the external container configured to be placed in mechanical engagement with the consumer interfacing apparatus (¶¶ 25-30 and 82. Also see at least ¶¶ 94-100 and Figures 1-3), and
a controller operably coupled […] and configured to collect data regarding at least used consumables retrieved from the external container, wherein the external container or an owner of the external container is awarded with a recycling reward for used consumable retrieved from the container (Abstract, ¶¶ 25-30, 82, 87-89, and 91-100. Also see at least Figures 1-3). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the recycling kiosk for vaping devices as disclosed by Wright, by combining the external container and the collecting of data regarding at least used consumables retrieved from the external container as taught by Gonen, because doing so would ensure that the products to be recycled are not damaged due and are contained in the examining portion of the recycling kiosk. The combination would also enable the recycling kiosk to weigh the recycled items so that a reward may be calculated based on weight (Gonen, ¶ 87-88). The combination would also enable the system to identify the user who is using the recycling kiosks in order to be properly rewarded to their account. The combination is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
While the combination of Wright/Gonen teach all of the above limitations, they do not appear to explicitly teach the following limitations. However, in the same field of endeavor, Jones teaches:
a retrieval assembly configured to [retrieve used consumables], and [a controller operably coupled] to the retrieval assembly [and configured to collect data regarding at least used consumables retrieved from the external container] in at least ¶¶ 3-5, 12-15 and 42-43. Also see at least Figures 1-2. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the recycling kiosk as taught by the combination of Wright/Gonen as modified above, to include a retrieval assembly as taught by Jones, because doing so would enable the recycling kiosk to automatically place the recycled item(s) into the correct bin without user intervention (Jones, ¶¶ 14-15). The combination would also reduce the cost of operation by not requiring a human to be present to operate the kiosk. The combination would also enable the kiosk to operate without a human being present.
As per Claim 2, the combination of Wright/Gonen do appear to explicitly teach wherein the retrieval assembly comprises a robotic arm. However, in the same field of endeavor, Jones these this limitation in at least ¶¶ 3-5, 12-15 and 42-43. Also see at least Figures 1-2. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the recycling kiosk as taught by the combination of Wright/Gonen as modified above, to include a retrieval assembly as taught by Jones, because doing so would enable the recycling kiosk to automatically place the recycled item into the correct bin without user intervention (Jones, ¶¶ 14-15). The combination would also reduce the cost of operation by not requiring a human to be present to operate the kiosk. The combination would also enable the kiosk to operate without a human being present.
As per Claim 5, Wright discloses A system […], the system comprising (Figure 1. Also see citations below.):
a consumer interfacing apparatus comprising (Figure 1 and ¶ 23. Also see citations below.):
an apparatus recycling compartment for storing the used consumables retrieved from the external container (Figure 1 and ¶¶ 44-45. Also see citations above.).
While Wright discloses a recycling kiosk for vaping devices, Wright does not appear to explicitly disclose the following limitations. However, in the same field of endeavor, Gonen teaches:
for rewarding a container or an owner of the container with one or more recycling rewards (The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is in the preamble and is intended use language. However, see at least ¶¶ 11-13, 85-95, 97-100. Also see citations below.),
an external container, the external container comprising a container recycling compartment configured to at least temporarily house one or more used consumable (¶ 25-30 and 82. Also see at least Figures 1-3);
[retrieve used consumables] from the external container (¶¶ 25-30 and 82. Also see at least ¶¶ 94-100 and Figures 1-3);
a controller operably coupled […] and configured to collect data regarding at least the used consumables retrieved from the external container (Abstract, ¶¶ 25-30 and 82. Also see at least ¶¶ 94-100 and Figures 1-3); and
wherein the external container is configured to be removably placed in mechanical engagement with the consumer interfacing apparatus, the external container or an owner of the external container is awarded a recycling reward for the used consumables retrieved from the container recycling compartment of the external container (¶¶ 25-30 and 82. Also see at least ¶¶ 94-100 and Figures 1-3). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the recycling kiosk for vaping devices as disclosed by Wright, by combining the external container and the collecting of data regarding at least used consumables retrieved from the external container as taught by Gonen, because doing so would ensure that the products to be recycled are not damaged due and are contained in the examining portion of the recycle kiosk. The combination would also enable the recycling kiosk to weigh the recycled items so that a reward may be calculated based on weight (Gonen, ¶ 87-88). The combination would also enable the system to identify the user who is using the recycling kiosks in order to be properly rewarded to their account. The combination is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
While the combination of Wright/Gonen teach all of the above limitations, they do not appear to explicitly teach the following limitations. However, in the same field of endeavor, Jones teaches:
a retrieval assembly configured to [retrieve used consumables]; [a controller operably coupled] to the retrieval assembly [and configured to collect data regarding at least the used consumables retrieved from the external container]; and [retrieved from the container recycling compartment of the external container] by the retrieval assembly in at least ¶¶ 3-5, 12-15 and 42-43. Also see at least Figures 1-2. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the recycling kiosk as taught by the combination of Wright/Gonen as modified above, to include a retrieval assembly as taught by Jones, because doing so would enable the recycling kiosk to automatically place the recycled item into the correct bin without user intervention (Jones, ¶¶ 14-15). The combination would also reduce the cost of operation by not requiring a human to be present to operate the kiosk. The combination would also enable the kiosk to operate without a human being present.
As per Claim 10, Wright discloses A method of […] generated by use of an aerosol generating device, the method comprising (Abstract, Figure 1, ¶¶ 23 and 45-45. Also see citations above.):
retrieving at least one used consumable […] of the consumer interfacing apparatus (Abstract, Figure 1, ¶¶ 23 and 45-45. Also see citations above.).
While Wright discloses a recycling kiosk for vaping devices, Wright does not appear to explicitly disclose the following limitations. However, in the same field of endeavor, Gonen teaches:
awarding a consumer a recycling reward for the return of used consumables (The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is in the preamble and is intended use language. However, see at least ¶¶ 11-13, 85-95, 97-100. Also see citations below.)
removably placing an external container in mechanical engagement with a consumer interfacing apparatus (¶¶ 25-30 and 82. Also see at least ¶¶ 94-100 and Figures 1-3);
[retrieving at least one used consumable] from the external container (¶¶ 25-30 and 82. Also see at least ¶¶ 94-100 and Figures 1-3),
awarding the external container or an owner of the external container with a recycling reward for the used consumable retrieved from the external container (¶¶ 25-30 and 82. Also see at least ¶¶ 94-100 and Figures 1-3). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the recycling kiosk for vaping devices as disclosed by Wright, by combining the external container and the collecting of data regarding at least used consumables retrieved from the external container as taught by Gonen, because doing so would ensure that the products to be recycled are not damaged due and are contained in the examining portion of the recycle kiosk. The combination would also enable the recycling kiosk to weigh the recycled items so that a reward may be calculated based on weight (Gonen, ¶ 87-88). The combination would also enable the system to identify the user who is using the recycling kiosks in order to be properly rewarded to their account. The combination is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
While the combination of Wright/Gonen teach all of the above limitations, they do not appear to explicitly teach the following limitations. However, in the same field of endeavor, Jones teaches:
[retrieving at least one used consumable] via a retrieval assembly, and by the retrieval assembly of the consumer interfacing apparatus in at least ¶¶ 3-5, 12-15 and 42-43. Also see at least Figures 1-2. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the recycling kiosk as taught by the combination of Wright/Gonen as modified above, to include a retrieval assembly as taught by Jones, because doing so would enable the recycling kiosk to automatically place the recycled item into the correct bin without user intervention (Jones, ¶¶ 14-15). The combination would also reduce the cost of operation by not requiring a human to be present to operate the kiosk. The combination would also enable the kiosk to operate without a human being present.
As per Claim 11, it recites substantially similar limitations as claim 1. Therefore, it is rejected using the same rationale.
As per Claim 12, Wright does not appear to explicitly disclose wherein the collected data relates to information related to recycling rewards owned by the owner of the external container. However, in the same field of endeavor, Gonen teaches this limitation in at least Abstract, ¶¶ 27-28, 57-58, 59-61, 82-83, 90-92. Also see at least claim 6. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the recycling kiosk for vaping devices as disclosed by Wright, by combining the external container as taught by Gonen, because doing so would enable the system to identify the user who is using the recycling kiosks in order to be properly rewarded to their account. The combination is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A). The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material. However, for the sake of advancing prosecution, all limitations as considered and addressed.
As per Claim 13, Wright discloses wherein the collected data relates to specifics about the used consumables retrieved from the external container, unused consumables contained in the external container, unused consumables previously contained in the external container, or combinations thereof (The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material. However, for the sake of advancing prosecution, see at least ¶¶ 6-7. Also see citations above.).
As per Claim 14, wherein the collected data relates to desired additional unused consumables to be dispensed into the external container (The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material. However, for the sake of advancing prosecution, see at least ¶¶ 6-7. Also see citations above.).
As per Claim 15, while Wright discloses a recycling kiosk for vaping devices, Wright does not appear to explicitly disclose wherein the consumer interfacing apparatus, the external container or both can receive and transmit data to an external electronic user device. However, in the same field of endeavor, Gonen teaches this limitation in at least Figure 2 and ¶¶ 25 and 32-37 which shows the recycling kiosk, the host, and the user device all connected to a network. ¶ 35 states that the data acquisition unit 212, which is part of the recycling kiosk, may be a personal computer, a portable computer, a handheld computer, a mobile phone, a digital assistant, a cellular phone, a smart phone, a laptop computer, and Internet appliance and the like. Therefore, the consumer interfacing apparatus of Gonen can receive and transmit data to an external electronic user device. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the recycling kiosk as disclosed by Wright, to be able to receive and transmit data to an external electronic user device as taught by Gonen, because doing so would enable a user to confirm their identity using their mobile phone so that the recycling kiosk can properly reward the correct user. The combination would enable the recycling user to access user accounts and redeem credits (Gonen, ¶¶ 58-64). The combination is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A). The Examiner notes that the above italicized and underlined limitations is not given patentable weight because it is intended use language. However, for the sake of advancing prosecution, all limitations are considered and addressed.
Claim(s) 3 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright in view of Gonen, in view of Jones, in further view of Official Notice.
As per Claim 3, Wright discloses the consumer interfacing apparatus further comprising a new storage compartment for storing unused consumables Figure 1 and ¶¶ 44-45. Also see citations above.).
While Wright discloses a consumer interfacing apparatus that comprises a plurality of storage compartments that are each for vaping devices of different conditions, the combination of Wright/Gonen/Jones as modified above do not appear to teach new unused consumables. Therefore, they do not appear to teach the above limitations that are underlined. However, the Examiner takes Official Notice that separating and storing new items from used items is old and well-known. An example of this can be found in at least ¶¶ 1, 3, and 36 of US 2011/0084089 A1. Another example of this is GameStop separating new games from used games in different containers or drawers. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the consumer interfacing apparatus having a plurality of storage compartments that are each for vaping devices of different conditions as taught by the combination of Wright/Gonen/Jones as modified above, to include a compartment for unused products, because doing so would enable kiosk to resell products that are still new for a reduced price. The combination would enable the kiosk to generate revenue from free products. The combination is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
As per Claim 8, Wright does not appear to explicitly disclose wherein the external container is configured to store data associated with it. However, in the same field of endeavor, Gonen teaches this limitation in at least ¶¶ 27 and 82. Also see citations above. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the recycling kiosk for vaping devices as disclosed by Wright, by combining the external container as taught by Gonen, because doing so would enable the system to identify the user who is using the recycling kiosks in order to be properly rewarded to their account. The combination is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
As per Claim 9, Wright does not appear to explicitly disclose wherein the data associated with the external container is associated with an intermediary device. However, in the same field of endeavor, Gonen teaches this limitation in at least Abstract, ¶¶ 27-28, 58-61, and 82-83. Also see citations above. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the recycling kiosk for vaping devices as disclosed by Wright, by combining the external container as taught by Gonen, because doing so would enable the system to identify the user who is using the recycling kiosks in order to be properly rewarded to their account. The combination is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
Examiner Note
The Examiner notes that after an exhaustive search no prior art was found to reasonably teach claims 4 and 6. Claim 7 recites substantially similar limitations as claim 3 but depends from claim 6.
The Examiner notes that since Applicant did not adequately traverse the Official Notice taken in the previous Office Action, the Official Notice statements are taken to be admitted prior art (see MPEP 2144.03(c)).
Response to Arguments
Applicant's arguments filed 07/23/2025 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Argument A: On page 6 of the Remarks, Applicant argues that the claims cannot be practically performed in the human mind.
In response, the Examiner respectfully disagrees. As explained above, the limitations outlined above that describe or set forth the abstract idea, cover performance of the limitations in the mind but for the recitation of generic computer(s) and/or generic computer component(s). That is, other than reciting the additional elements, nothing in the claim precludes the limitations from practically being performed in the mind. These limitations are considered a mental process because the limitations include an observation, evaluation, judgement, and/or opinion. These limitations are also similar to “collecting information, analyzing it, and displaying certain results of the collection and analysis” and/or “collecting and comparing known information” which were determined to be mental processes in MPEP 2106.04(a)(2)(III)(A). The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer” (see MPEP 2106.04(a)(2)(III)(C)). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Therefore, the claim recite a mental process (Step 2A Prong One, Yes).
Argument B: On pages 6-7 of the Remarks, Applicant argues that the combination of elements in each of the independent claims provides an improvement to the field.
In response, the Examiner respectfully disagrees. Unlike in Bascom in which the particular arrangement of known elements provided a technical improvement over prior art ways of filtering content, here looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation. The claims at issue merely call for the performance of the claimed invention on a set of generic computer components and display devices. Therefore, the claims still do not integrate the judicial exception into a practical application, nor do they amount to significantly more.
Argument C: On page 8 of the Remarks, Applicant argues that the prior art does not teach or suggest a retrieval assembly configured to retrieve used consumables from the external container, the external container configured to be placed in mechanical engagement with the consumer interfacing apparatus as recited, in some form, in each of independent claims 1, 5, and 10.
In response, the Examiner respectfully disagrees. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As outlined above, the combination of references teach the claims as currently presented.
Conclusion
THIS ACTION IS MADE FINAL. 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 SAM REFAI whose telephone number is (313)446-4822. The examiner can normally be reached M-F 9:00am-6:00pm.
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, Waseem Ashraf can be reached on 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAM REFAI/Primary Examiner, Art Unit 3621
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