DETAILED ACTION
Response to Arguments
Applicant's arguments filed 8/14/2026 have been fully considered but they are not persuasive.
Applicant argues “This sensing technique of Day is clearly not feasibly applicable to the cigarette-form smoking article of Fernando, which appears to have a paper outer wrapper (e.g., as opposed to the rigid reservoir of Day, which may be formed from glass or hard plastic as is common for medical fluid delivery devices).” The Examiner disagrees. There is no indication or suggestion that the capacitive sensor of Day may only be used with a rigid body. One of ordinary skill in the art would appreciate that the capacitive sensor may be applicable to the apparatus of Fernando.
Applicant argues “Further, even if the skilled person did somehow try to implement this in the cigarette-form smoking article of Fernando, it would not involve sensing an indicium arranged internally within the cigarette-form smoking article, as the sensing technique of Day is specifically limited to sensing the topography of surface features (i.e., external protrusions and indentations on the outer surface of the reservoir).” The Examiner disagrees. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The article of smokable material is not a positively recited limitation. Therefore, the presence of an indicium comprising electrically conductive material which is arranged internally within the article of smokable material is not required by the apparatus. The claimed sensor comprises capacitance sensing electrodes. Day teaches the sensor comprises capacitance sensing electrodes. The sensor of Day is thereby interpreted as capable of being used in the claimed manner.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 10-11, 13-19, and 23-30 are rejected under 35 U.S.C. 103 as being unpatentable over Fernando (US 2010/0163063) in view of Day (US 2013/0221097) and Yamanaka (US 2008/0180234).
Regarding claim 1, Fernando teaches apparatus for enabling smokable material to be heated to volatise at least one component of said smokable material [0021, 0025], the apparatus comprising: a housing [0056]; and a sensor arranged to sense when a user inserts an article of smokable material comprising a rod of smokable material into the housing in use [0042, 0045, 0066], wherein the apparatus is configured to enable heating of the rod of smokable material of the article of smokable material received in the housing [0029].
Fernando does not teach the sensor is a capacitive sensor arranged to sense a change in capacitance. Day teaches a medical delivery device comprising a capacitive sensor arranged to sense a change in capacitance when a user inserts a reservoir comprising into the housing [0137]. The sensor is involved in identification of the article inserted into the housing, just as the sensor of Fernando is involved in identification of the article inserted into the housing [0041-0047]. It is considered prima facie obvious to substitute art recognized equivalents known for the same purpose, see MPEP 2144.06. it would have been obvious to one of ordinary skill in the art to use a capacitive sensor arranged to sense a change in capacitance when a user inserts an article of smokable material comprising a rod of smokable material into the housing in use to achieve the same, predictable result of identifying an article inserted into the housing.
Modified Fernando does not teach the one or more electrodes are mechanically mounted in the housing so as to be electrically isolated from the article of smokable material received in the housing. Yamada teaches a capacitance sensor wherein exposed portions of electrodes are covered with electrically insulation [0010]. It would have been obvious to one of ordinary skill in the art to apply this configuration to the apparatus of modified Fernando such that the one or more electrodes are mechanically mounted in the housing so as to be electrically isolated from the article of smokable material received in the housing so that the electrodes are not electrically exposed to the article.
The article of smokable material is not a positively recited limitation. Therefore, the presence of an indicium comprising electrically conductive material which is arranged internally within the article of smokable material is not required by the apparatus. The claimed sensor comprises capacitance sensing electrodes. Modified Fernando teaches the sensor comprises capacitance sensing electrodes. The sensor of modified Fernando is thereby interpreted as capable of being used in the claimed manner.
Regarding claim 2, Day teaches insertion of the article causes capacitance to vary (i.e. relative to when the article is not present) which allows for identification of the article [Day 0137]. In other words, in the apparatus of Fernando in view of Day as applied to claim 1 above, the apparatus is configured to sense the change in capacitance when the user inserts the article of smokable material into the housing in use by comparing the capacitance when the article of smokable material is received within the housing with the capacitance when the article of smokable material is not present within the housing.
Regarding claim 3, modified Fernando teaches the sensing of the change in capacitance when the user inserts the article of smokable material into the housing by the user in use enables recognition of the article of smokable material by the apparatus [Day 0137].
Regarding claims 4-5, Fernando teaches the apparatus is configured to follow a first heating pattern when the apparatus recognizes a first type of article of smokable material, and follow a second heating pattern, which is different to the first heating pattern, when the apparatus recognizes a second type of article of smokable material, wherein the first heating pattern and second heating pattern differ in a rate of delivery of heat to the rod of smokable material [0035, 0039, 0041].
Regarding claims 6-8, Fernando does not teach the apparatus is configured to provide an indication to the user if the article of smokable material is not recognized. Day teaches the apparatus is configured to provide a visual or audible indication to the user if inserted reservoir is incorrect [0166], i.e. not recognized. It would have been obvious to one of ordinary skill in the art to configure the apparatus of Fernando to provide a visual or audible indication to the user if the article of smokable material is not recognized so as to notify the user that an incorrect article has been inserted.
Regarding claims 10-11, modified Fernando teaches the capacitive sensor comprises one or more electrodes for capacitive sensing, wherein the one or more electrodes comprise at least two electrodes which provide a pair of plates of a capacitor, with the insertion of the article of smokable material causing the capacitance between the at least two electrodes to change [Day 0137]. The one or more electrodes may also be considered to provide one plate of a capacitor. The presence of the article itself is not required by the claims. Therefore, the limitation of “the article of smokable material providing another plate of the capacitor” does not further limit the configuration of the claimed apparatus to distinguish from the apparatus of modified Fernando. The apparatus of modified Fernando thus reads on the present limitations.
Regarding claims 13-14, Day teaches providing the at least one sensor on the inner wall of the reservoir holder [0012]. This is analogous to the inner wall of the cavity 111 of Fernando, which is curved to receive the article [Fig. 1]. Furthermore, as Day suggests two electrodes [0137], one of ordinary skill in the art would have found it obvious to provide to opposing, curved electrodes in Fernando, i.e. defining a circular opening into which the article of smokable material passes when received in the housing, for the purpose of sensing capacitance therebetween when the article is inserted.
Regarding claim 15, Fernando teaches in use when the article of smokable material is received in the housing, an end 115 of the article of smokable material projects out of the apparatus through an open end of the housing 105 [Fig. 1].
Regarding claim 16, Day teaches the one or more sensors 204 are located near the open end of the housing [Fig. 2]. In modified Fernando, one of ordinary skill in the art would have found it obvious to provide the one or more electrodes near the open end of the housing to achieve predictable results, e.g. sensing capacitance upon insertion of the article.
Regarding claims 17-19, Fernando teaches the apparatus comprises one more heater segments for heating the smokable material, and electrical control circuitry configured and arranged to control heating of the rod of smokable material received in the housing, wherein the one or more heater segments comprise one or more resistive heating elements [0033, 0050], wherein the one or more heater segments comprise one or more resistive heating elements [0049].
Regarding claim 23, Fernando teaches a disk heater in combination with a heating needle or rod [0052], i.e. the two heater segments have different shapes and different configurations.
Regarding claims 24-28, Fernando teaches an optical sensor comprising an optical emitter and one or more detectors configured to detect visible or non-visible light and wherein the optical sensing comprises detection of a bar code of the article of smokable material [0065-0066]. One of ordinary skill in the art would have found it obvious to use this sensing technique in combination with the capacitive sensor sensing technique of Day as applied to claim 1 above to achieve predictable results. It is considered prima facie obvious to combine art recognized equivalents known for the same purpose, see MPEP 2144.06. Thus, the apparatus comprises a sensor arrangement constructed and arranged to identify an article of smokable material when associated with the housing in use by making use of two different sensing techniques.
Regarding claim 29, Fernando teaches the housing is configured to receive the article of smokable material which is a generally elongate cylinder comprising the rod of smokable material, herein the apparatus is configured to enable heating of the rod of smokable when, in use, the article of smokable material is received in the housing [Fig. 1; 0029, 0059]. The presence of the article itself is not required by the claims. Therefore, the limitation of “a generally elongate cylinder comprising the rod of smokable material and a filter, the rod of smokable material and the filter being assembled and held together by being rolled in tipping paper” does not further limit the configuration of the claimed apparatus to distinguish from the apparatus of modified Fernando. The apparatus of modified Fernando thus reads on the present limitations.
Regarding claim 30, Fernando teaches the apparatus comprises an inductive heating element [0051]. This apparatus would be capable of, i.e. “configured to”, enabling heating of the rod of smokable material of the article of smokable material received in the housing by causing heating by a susceptor (integral heater) of the article of smokable material. The presence of the article itself is not required by the claims. The apparatus of modified Fernando thus reads on the present limitations.
Claims 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Fernando and Day as applied to claim 19 above, and further in view of Egoyants (WO 2013/034459).
Modified Fernando does not teach the electrical control circuitry and respective power connections to the two heater segments are configured such that the two heater segments can be powered independently of each other. Egoyants teaches a heating apparatus wherein electrical control circuitry and respective power connections to the two heater segments are configured such that the two heater segments can be powered independently of each other so that selected zones of the article of smokable material received in the housing can be heated independently, and can be heated in turn, and wherein the selected zones of the article of smokable material in the housing can be heated simultaneously, thus reducing power output [page 12, l. 14 to page 14, l. 32]. It would have been obvious to one of ordinary skill in the art to apply this configuration to the apparatus of modified Fernando in order to reduce power output.
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 ERIC YAARY whose telephone number is (571)272-3273. The examiner can normally be reached M-F 9-5.
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/ERIC YAARY/Examiner, Art Unit 1755
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