DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
2. This application, filed October 22, 2024, is the national stage entry of PCT/GB2023/051052, filed April 21, 2023. Pursuant to a pre-examination amendment of the claims, filed October 22, 2024, claims 1-18 are pending in the application. The applicant has cancelled claim 19. The applicant has amended claims 2, 6-9, 12, 16, and 17.
Specification
3. The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. In particular, the title is much too general.
Claim Interpretation
4. 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 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.
5. 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:
“communication module” in claims 9, 11, 17, and 18; and
“computing arrangement” in claims 9, 11, 17, and 18..
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.
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.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 9, 11, 17, and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In particular, the claim limitation, “communication module” invokes 35 USC. 112(f), but 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 is devoid of adequate structure to perform the claimed function. There is no disclosure of any particular structure, either explicitly or inherently, to perform the claimed communication function. One of ordinary skill in the art before the effective filing date of the application would have recognized that such a function could be performed in any number of ways by hardware alone or by a combination of hardware and software. The specification does not provide sufficient details to inform one of ordinary skill in the art which structure(s) perform(s) the claimed function. For these reasons, claims 1 and 16 are indefinite.
8. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
9. Claims 9, 11, 17, and 18 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, at the time the application was filed, had possession of the claimed invention. As described above, the disclosure does not provide adequate structure to perform the claimed communication function. The specification does not demonstrate that the applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail to enable one of ordinary skill in the art to conclude that the inventor had possession of the claimed invention.
Claim Rejections - 35 USC § 103
10. 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.
11. Claims 1, 2, 6, and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al. (US 2021/0401061 A1).
Regarding claim 1, Davis discloses:
a container for delivery systems and/or aerosol generating material ([0156], [0169]; FIG. 2) comprising:
a body surrounding a cavity and an opening in the body through which the cavity can be accessed ([0169]; FIG. 2: 58);
a closing arranged to openably close the opening in the body ([0192], [0389]; FIG. 2: 31; FIG. 25B);
Davis does not explicitly disclose a lock for controllably locking the closing, but Davis does disclose electronic apparatuses for controllably locking the container ([0174]; FIG. 3: 72, 82, 84), and Davis does disclose a microcontroller, comprising a processor ([0166], [0192]; FIG. 2: 31), that opens and closes the closing to allow and prevent the flow of a fluid payload through the opening ([0389]), which suggests that this apparatus constitutes a lock for controllably locking the closing for the benefit of controllably opening and closing the closing to allow and prevent the flow of a fluid payload through the opening;
it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to have configured the system of Davis in the foregoing manner because that would have enabled the system to controllably open and close the closing to allow and prevent the flow of a fluid payload through the opening;
control circuitry for changing a state of the lock ([0174], [0192]; FIG. 2: 21; FIG. 3: 72, 82, 84);
user authorisation means for verifying a user ([0180], [0186]; FIG. 4: 404); and,
tamper prevention means arranged to impact the cavity when the closing is opened when the lock is in a locked state ([0189]),
wherein the control circuitry is arranged to change a state of the lock to unlock in response to receiving a signal originating from the user authorisation means associated with an authorised user ([0186], [0187]; FIG. 4: 404, 414).
Regarding claim 2, Davis discloses that the lock comprises at least one of a physical locking element and an electrical locking element. ([0192], [0389]; FIG. 2: 31; FIG. 25B)
Regarding claim 6, Davis discloses that the tamper prevention means is arranged to structurally alter or damage delivery systems and/or aerosol generating material, contained in use in the container, in response to contact with the delivery systems and/or aerosol generating material. ([0192], [0389]; FIG. 2: 31; FIG. 25B)
Regarding claim 9, Davis discloses that the user authorisation means comprises at least one of: a face scanner; a projector scanner; a microphone; a fingerprint scanner; an iris scanner; and, a communication module for communicating with at least one of: a remote database; a remote computing arrangement; an onboard database; and, an onboard computing arrangement. ([0154], [0203]; FIG. 3: 72, 74)
Regarding clam 10, Davis discloses:
a system ([0002]) comprising:
a container for delivery systems and/or aerosol generating material ([0156], [0169]; FIG. 2) comprising:
a body surrounding a cavity and an opening in the body through which the cavity can be accessed ([0169]; FIG. 2: 58);
a closing arranged to openably close the opening in the body ([0192], [0389]; FIG. 2: 31; FIG. 25B);
Davis does not explicitly disclose a lock for controllably locking the closing, but Davis does disclose electronic apparatuses for controllably locking the container ([0174]; FIG. 3: 72, 82, 84), and Davis does disclose a microcontroller, comprising a processor ([0166], [0192]; FIG. 2: 31), that opens and closes the closing to allow and prevent the flow of a fluid payload through the opening ([0389]), which suggests that this apparatus constitutes a lock for controllably locking the closing for the benefit of controllably opening and closing the closing to allow and prevent the flow of a fluid payload through the opening;
it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to have configured the system of Davis in the foregoing manner because that would have enabled the system to controllably open and close the closing to allow and prevent the flow of a fluid payload through the opening;
control circuitry for changing a state of the lock ([0174], [0192]; FIG. 2: 31; FIG. 3: 72, 82, 84); and,
tamper prevention means arranged to impact the cavity when the closing is opened when the lock is in a locked state ([0189]), and
user authorisation means for verifying a user ([0180], [0186]; FIG. 4: 404),
wherein the control circuitry is arranged to change a state of the lock to unlock in response to receiving a signal originating from the user authorisation means associated with an authorised user ([0186], [0187]; FIG. 4: 404, 414).
Claim 11 is rejected as claim 9.
Regarding claim 12, Davis discloses that the user authorisation means is not integral with the container. ([0174]; FIG. 3: 72, 82, 84)
12. Claims 3-5, 14, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Davis in view of Adelaar et al. (US 10,737,041 B1).
Regarding claim 3, Davis does not disclose that the tamper prevention means comprises at least one compound arranged to be released into the cavity when the closing is opened when the lock is in a locked state.
Adelaar, in the same field of containers for delivery systems and/or aerosol generating material (col. 1, lines 16-18), teaches methods and systems for fluid handling and dispensing liquid substances using vaporization or nebulization in a controlled, safe manner (col. 1, lines 38-41), wherein a tamper prevention means comprises at least one compound arranged to be released into the cavity when the closing is opened when the lock is in a locked state (col. 4, lines 26-36) for the benefit of rendering the substance in the cavity inert, so that it does not provide a narcotic effect, while still being safe to consume (col. 4, lines 26-36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the application to have combined the teachings of Adelaar with the container of Davis because that would have enabled the container to render the substance in the cavity inert, so that it does not provide a narcotic effect, while still being safe to consume.
Regarding claim 4, Davis does not disclose that the at least one compound is arranged to chemically alter delivery systems and/or aerosol generating material, contained in use in the container, in response to contact with the delivery systems and/or aerosol generating material.
Adelaar, in the same field of containers for delivery systems and/or aerosol generating material (col. 1, lines 16-18), teaches methods and systems for fluid handling and dispensing liquid substances using vaporization or nebulization in a controlled, safe manner (col. 1, lines 38-41), wherein a tamper prevention means comprises at least one compound arranged to be released into the cavity and render the substance in the cavity inert when the closing is opened when the lock is in a locked state (col. 4, lines 26-36) for the benefit that the inert substance does not provide a narcotic effect, while still being safe to consume (col. 4, lines 26-36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the application to have combined the teachings of Adelaar with the container of Davis because that would have enabled the inert substance not to provide a narcotic effect, while still being safe to consume.
Regarding claim 5, Davis does not disclose that the at least one compound is arranged to render delivery systems and/or aerosol generating material, contained in use in the container, chemically inert in response to contact.
Adelaar, in the same field of containers for delivery systems and/or aerosol generating material (col. 1, lines 16-18), teaches methods and systems for fluid handling and dispensing liquid substances using vaporization or nebulization in a controlled, safe manner (col. 1, lines 38-41), wherein a tamper prevention means comprises at least one compound arranged to be released into the cavity and render the substance in the cavity inert when the closing is opened when the lock is in a locked state (col. 4, lines 26-36) for the benefit that the inert substance does not provide a narcotic effect, while still being safe to consume (col. 4, lines 26-36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the application to have combined the teachings of Adelaar with the container of Davis because that would have enabled the inert substance not to provide a narcotic effect, while still being safe to consume.
Regarding claim 14, Davis does not disclose detecting an unauthorised access attempt by a user, activating the tamper prevention means to be released into the cavity.
Adelaar, in the same field of containers for delivery systems and/or aerosol generating material (col. 1, lines 16-18), teaches methods and systems for fluid handling and dispensing liquid substances using vaporization or nebulization in a controlled, safe manner (col. 1, lines 38-41), wherein a tamper prevention means comprises at least one compound arranged to be released into the cavity when the closing is opened when the lock is in a locked state (col. 4, lines 26-36) for the benefit of rendering the substance in the cavity inert, so that it does not provide a narcotic effect, while still being safe to consume (col. 4, lines 26-36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the application to have combined the teachings of Adelaar with the container of Davis because that would have enabled the container to render the substance in the cavity inert, so that it does not provide a narcotic effect, while still being safe to consume.
Regarding claim 16, Davis discloses that activating the tamper prevention means comprises at least one of:
releasing a chemical into the cavity to chemically alter the delivery systems and/or aerosol generating material in the cavity; and,
activating a mover to structurally alter or damage the delivery systems and/or aerosol generating material in the cavity ([0192], [0389]; FIG. 2: 31; FIG. 25B).
Regarding claim 17, Davis discloses that verifying, by user authorisation means, a user attempting to access a container of delivery systems and/or aerosol generating material contained in use in a cavity of the container comprises verification using at least one of: a face scanner; a projector scanner; a microphone; a fingerprint scanner; an iris scanner; a mobile device; and, a communication module for communicating with at least one of: a remote database; a remote computing arrangement; an onboard database; and, an onboard computing arrangement. ([0154], [0203]; FIG. 3: 72, 74)
Regarding claim 18, Davis discloses that receiving, by control circuitry, a signal originating from the user authorisation means comprises at least one of:
(i) receiving, by control circuitry, a signal direct from the user authorization means ([0157], [0165]); and,
(ii) sending by a communication module a signal to at least one of:
a remote database;
a remote computing arrangement ([0187]);
an onboard database ([0157], [0166], [0185]); and,
an onboard computing arrangement ([0166], [0186], [0187]),
receiving, by a communication module, a signal from the at least one of:
a remote database;
a remote computing arrangement ([0187]);
an onboard database ([0157], [0166], [0185]); and,
an onboard computing arrangement ([0166], [0186], [0187]),
and sending a signal, by a communication module, to the control circuitry ([0157], [0166], [0187]).
Claim Rejections - 35 USC § 102
13. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
14. Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Davis.
Regarding claim 13, Davis discloses:
a method of preventing unauthorised access to a container for delivery systems and/or aerosol generating material ([0002], [0186], [0189]), the method comprising:
verifying, by user authorisation means, a user attempting to access a container of delivery systems and/or aerosol generating material contained in use in a cavity of the container ([0180], [0186]; FIG. 4: 404);
receiving, by control circuitry, a signal originating from the user authorization means ([0165]; FIG. 2: 36; FIG. 3: 72)
in response to receiving a signal originating from the user authorisation means performing at least one of:
changing, by the control circuitry, a state of a lock of the container ([0174]); and,
activating, by the control circuitry, user authorisation means ([0186]).
Allowable Subject Matter
15. Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 15 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN F MORTELL whose telephone number is (571)270-1873. The examiner can normally be reached Monday - Friday 10-7 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Davetta Goins can be reached at 571-272-2957. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN F MORTELL/ Primary Examiner, Art Unit 2689