DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-13 are pending for examination.
Response to Arguments / Remarks
Applicant's arguments filed 9/17/2026 have been fully considered.
Applicant’s arguments with respect to claims 1-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
A newly cited prior art by Doyle (Pat. No.: US 10,653,187 B1) teaches that the vaporizer 100 receives thermal profiles from an electronic device 700. As shown in Figs. 3A-3B, the thermal profile comprises of a plurality of discrete intervals. Each interval includes a defined duration and a corresponding temperature setpoint that governs the operation of the heating element to produce the desired effect.
Claim 4 would be allowable if rewritten to overcome the Non-Statutory Double-Patenting rejection, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Accordingly, the rejection is sustained.
Non-Statutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,230,125 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because pending claims are obvious modification from the patented claims.
Claims 1-13 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/631,081 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are obvious modifications of the copending claims and they have a very similar scope of setting or changing the operation profile of the inhaler within a period of time.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 6-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Doyle (Pat. No.: US 10,653,187 B1).
Regarding claim 1, Doyle teaches a device (Figs. 1A-1C, 2A-2B and 4, vaporizer 100) comprising:
a heating unit that heats a material to generate an aerosol (Fig. 1C, heater, Col. 3 line 42-49, “The vaporizer body 200 is generally comprised of a controller 220 that controls the application of power or energy from a power source 230 (typically contained within the vaporizer body 200) to the heater 320 contained in the vaporization cartridge 300, which when sufficiently energized heats and vaporizes the vaporizable material that is contained in the reservoir 330 of the vaporizer cartridge 300.”);
a communication unit that receives a profile that includes information specifying an operation of the heating unit from another device or a terminal device via a communication link (Fig. 1C, wireless circuit 280 and Fig. 2B, Col. 5 line 9-24, “Thus, for example, the external devices 700/800 may be utilized to program the vaporizer 100 (including the vaporizer body and/or vaporizer cartridge) and/or receive data (e.g., use data, such as location, duration, dosage, information on the vaporizable material etc.) from the vaporizer 100.”. Col. 10 lines 1-11, “The thermal profiling defining process may include the following representative steps. The vaporizer device manufacturer provides a programmable vaporizer unit that is capable of programming and recording a thermal profile, testing, and adjusting or optimizing the thermal profile for a particular vaporizable material. This step may be aided with the user of an external computing device 700/800 depicted in FIG. 2A-2B that is capable of depicting or otherwise presenting, adjusting, and documenting the thermal profile and the overall heating and cooling profile of the vaporizer 100. ”. The wireless circuit 280 receives thermal profiles from the electronic device 700); and
a control unit that controls the operation of the heating unit according to the information indicating the profile (Fig. 1C, controller 220, Col. 8 line 15-18, “As illustrated in FIG. 1C, the controller 220 of the vaporizer 100 implements a heating and cooling profile defined in part by the thermal profiles consistent with and in accordance to the thermal profile recipe code 350.”. The controller controls the heater to implement the thermal profiles);
wherein the profile includes information identifying a parameter related to the operation of the heating unit over a hearing period from a start time to an end time, and the information indicating the profile includes, for each of a plurality of discrete time intervals into which the heating period is divided:
information representing the time interval, and information representing a target value of the parameter associated with the time interval,
wherein the control unit controls the heating unit in accordance with the temporal changes of the parameter defined by the plurality of time intervals and corresponding target values (Fig. 3A – 3B, Col. 52-63, “As illustrated in FIGS. 3A-3B and previously summarized, a “thermal profile” as used herein refers to a heating profile for a vaporization heating cycle that is associated with generating an aerosol or vapor dose for inhalation (e.g., draw or puff) by a user and is defined by a plurality “set points.” A “set point” as used herein is defined by both (i) a power and/or temperature setting (e.g., Temp1, Temp2, Temp3, Temp4, Temp5, etc.) and (ii) a specified duration of time (e.g., T1, T2, T3, T4, T5, etc.) associated with that setting.”. The thermal profile defines the temperature setpoint and duration of each of the heating/cool intervals from ramp up to ramp down.).
Regarding claim 2, Doyle teaches the device according to claim 1, wherein
the control unit controls the operation of the heating unit by feedback control,
the parameters related to the operation include information indicating target values of the parameters in the feedback control for each of the plurality of the time intervals (Col. 8 line 65 – Col. 9 line 8, “Alternatively, a particular thermal profile may be adaptively modified via feed-back or adaptive control data, user interface inputs, or sensor data. The vaporizer sensor 260 inputs 270 may be utilized by the controller 220 in effectuating the thermal profile. Thus, for example ambient temperature and pressure sensor may provide data on the reservoir temperature that allows the controller to better regulate the power to the heater 320 to more accurately effectuate the desired thermal profile. Thus, it is contemplated that the controller 220 may utilize feed-back or adaptive control to effectuate a thermal profile.”. The controller uses feedback or adaptive control to achieve the temperature setpoints defined by thermal profile.).
Regarding claim 3, Doyle teaches the device according to claim 2, wherein the target values of the parameters are target temperatures or target resistance values that the heating unit should reach at the end of each of the plurality of the time intervals (Figs. 3A-3B and Col. 8 line 65 – Col. 9 line 8, each interval has a setpoint or target temperature).
Regarding claim 4, Doyle teaches the device according to claim 1, wherein the profile includes information omitting parameters related to the operation of the heating unit in at least some of the plurality of the time intervals (Col. 2 line 34-43, “A “thermal profile” as used herein refers to a heating profile for a vaporization heating cycle that is associated with generating an aerosol or vapor dose for inhalation (e.g., draw or puff) by a user and is defined by a plurality “set points.” A “set point” as used herein is defined by both (i) a specified power and/or temperature setting and (ii) a specified duration of time for that setting and is distinct or different from the temperature/power and time associated with the heating ramp-up or ramp-down profiles of the vaporizer.”. The thermal profile allows the omission of power settings for some intervals if temperature settings were entered or vice versa.).
Regarding claim 6, Doyle teaches the device according to claim 1, wherein the profile is discrete data in which the profile, which is a time-series change of parameters related to the operation of the heating unit, is discretized,
the communication unit receives, as the profile, information including a combination of the time interval and the parameters related to the operation for each of the plurality of the time intervals (Fig. 3A-3B, Fig. 3A – 3B, Col. 52-63, the thermal profile includes a series of discrete time intervals and the corresponding setpoint temperature.).
Regarding claim 7, Doyle teaches the device according to claim 6, wherein the time intervals are obtained by dividing the entire time interval from the start to the end of heating in the heating unit (Figs. 3A-3B, the thermal profile includes multiple time intervals from starting from ramp up to ramp down.).
Regarding claim 8, Doyle teaches the device according to claim 6, wherein the time interval is information indicating the order and length of the time interval (Figs. 3A-3B, the thermal profile shows each interval has an order and duration of time).
Regarding claim 9, Doyle teaches the device according to claim 6, wherein the time interval is information indicating the end of the time interval by the elapsed time from the start of heating in the heating unit (Figs. 3A-3B, each interval has a start and end time).
Regarding claim 10, Doyle teaches the device according to claim 6, wherein the profile includes a combination of a numerical value indicating the time interval and a numerical value indicating the parameters related to the operation of the heating unit in the time interval for each of the plurality of the time intervals (Fig. 3A – 3B, Col. 52-63, “As illustrated in FIGS. 3A-3B and previously summarized, a “thermal profile” as used herein refers to a heating profile for a vaporization heating cycle that is associated with generating an aerosol or vapor dose for inhalation (e.g., draw or puff) by a user and is defined by a plurality “set points.” A “set point” as used herein is defined by both (i) a power and/or temperature setting (e.g., Temp1, Temp2, Temp3, Temp4, Temp5, etc.) and (ii) a specified duration of time (e.g., T1, T2, T3, T4, T5, etc.) associated with that setting. A “set point” is distinct or different from the temperature/power and transient time associated with the heating ramp-up or ramp-down profiles of the vaporizer.”. Each interval includes duration and corresponding setpoint temperature.).
Regarding claim 11, Doyle teaches the device according to claim 1, wherein the profile includes correction values used to correct the profile based on the characteristics of the heating unit (Col. 8 line 65 – Col. 9 line 8, “Alternatively, a particular thermal profile may be adaptively modified via feed-back or adaptive control data, user interface inputs, or sensor data. The vaporizer sensors 260 inputs 270 may be utilized by the controller 220 in effectuating the thermal profile. Thus, for example ambient temperature and pressure sensor may provide data on the reservoir temperature that allows the controller to better regulate the power to the heater 320 to more accurately effectuate the desired thermal profile.”. The thermal profile may be modified by feedbacks from the vaporizer’s sensors).
Regarding claim 12, recites a method to for the device of claim 1. Therefore, it is rejected for the same reason.
Regarding claim 13, recites a computer readable medium for the device of claim 1. Therefore, it is rejected for the same reason.
Allowable Subject Matter
Claim 4 would be allowable if rewritten to overcome the Non-Statutory Double-Patenting rejection, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHEN Y WU whose telephone number is (571)272-5711. The examiner can normally be reached Monday-Friday, 10AM-6PM, EST.
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/ZHEN Y WU/Primary Examiner, Art Unit 2685
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