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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show (a) “the second heating pattern heats one or more different parts”, (b) a susceptor in the article received”, (c) “selected zones of the aerosolisable medium of the article can be heated independently”, (d) a heater with both resistive and induction heating elements (claim 19), (e) induction elements configured such that selected zones of the aerosolisable medium of the article can be heated independently, (f) induction elements configured such that selected zones of the aerosolisable medium of the article can be heated independently simultaneously, (g) resistive heating elements configured such that selected zones of the aerosolisable medium of the article can be heated independently simultaneously as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 19-22 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.
Regarding claim 19, claim 18 (upon which claim 19 depends) includes the limitation, “wherein the heater arrangement comprises one or more resistive heating elements”, while claim 19 includes the limitation, “the heater arrangement comprises…apparatus comprises one or more induction elements…”. The two heating element types, (1) resistive and (2) induction, are discussed as alternatives in the specification [0024]. It is not typical in the art, nor is it disclosed that these elements are used together as would be indicated by claim 19 being dependent on claim 18. The examiner suspects that the applicant did not intend for claim 19 to be dependent on claim 18 and suggests that claim 19 be amended to depend on claim 17. If this is not the case, claim 19 may be considered to fail to further limit claim 18 based on the disclosure in the specification and may lack enablement because there is no disclosed teaching or structure where both heating processes are used together. In the interest of compact prosecution, claims 19 is being considered to be dependent on claim 16 a 112(a) rejection may be necessary due to lack of written description because a resistance heating element is not disclosed as being used in conjunction with an induction system.
Claims 20-22 are also indefinite due to the indefiniteness of claim 19. Claim 18 requires resistive heating and claim 19 requires induction heating, but it is unclear what heating element is being limited when claims 20-22 state that, “the apparatus is configured such that selected zones of the aerosolisable medium of the article can be heated…”. The scope of these claims is uncertain as to if the resistive heating element, the induction heating element, or both are configured to heat the selected zones. No structure is disclosed or illustrated (see drawing objections). In the interest of compact prosecution, claims 20-22 are being considered to be dependent on claim 18 “resistive heating element”, and not on claim 19. If these claims are dependent on claim 19, a 112(a) rejection may be necessary due to lack of written description because an induction system to heat selected zones independently is not taught or illustrated.
Claim 29 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.
Claim 29 recites the limitation "smokeable material" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 29, directed to an article with markings, includes the functional limitation,
Wherein the second heating pattern heats one or more different parts of the smokeable material to the first heating pattern.
The functional language is ambiguous in scope because the function is not performed by the apparatus. The “different parts” are not parts of the claimed apparatus and it is unclear if a different article, for example a cleaning article, would inherently meet the limitation because it contains different parts from a first unclaimed article. The applicant should note that the second heating pattern is not put in terms of the apparatus structure. For instance, a second heating pattern may require a heating structure capable of heating a different pattern. However, this type of structure is not being claimed and no drawings are present of heating structures that heat different parts.
Claim Interpretation
Claim 1 includes the limitation, “the article comprising: an aerosolisable medium, and a marker arrangement comprising a first marker comprising optical features and a second marker comprising optical features.” These limitations are not part of the claimed apparatus for generating aerosol. Therefore, the presence or absence of optical markers on an article is not a limitation that applies to the apparatus. For instance, optical sensors are expressly claimed in claim 6, but are not required by claim 1. Claim 19, the location of the susceptor being in the article is not part of the claimed apparatus. Therefore, the limitation that the heating arrangement comprises a susceptor in the article received in the chamber does not limit the claim.
Claims 10-11, the first and second markers are not part of the claimed product. Therefore, the limitation that the first or second marker comprises fluorescent or reflective material does not limit the claim.
Claims 12-13, the first and second markers are not part of the claimed product. Therefore, the limitation that the first or second marker comprises a barcode or QR code does not limit the claim.
Other limitations to the article may be present and noted in the rejection below.
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.
(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.
Claim(s) 1, 6-8, 10, 12-19, 23, and 30, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fernando et al. (US 20170055589 A1).
Regarding claims 1 and 30, Fernando et al. disclose an electrically heating smoking apparatus (see figure 2a, below) that has a housing (103), a chamber (111) for receiving a solid article capable of producing an aerosol, a detector (i.e. sensor arrangement (203)), and a controller [0033].
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Fernando et al. disclose that the detector, “…includes a source of suitable light (IR, UV, or visible depending on the ink used on the article) and at least one photosensor that detects the reflected light (i.e. optical sensor).
In this embodiment, the detector 203 includes a source of suitable light (IR, UV, or visible depending on the ink used on the article) and at least on photosensor that detects the reflected light. The detector may include a single sensor that detects the reflected light. In that case, detection of the smoking article may be performed as the smoking article is being inserted into the cavity, by measuring the time for the various lines to pass the detector. [0066]
Because the detector disclosed by Fernando et al. detects markers as the smoking article is inserted, it would inherently sense the first marker and then sense the second marker after the first because they are physically arranged in order and pass the detector in order.
Regarding claims 6-8 and 10, Fernando et al. disclose that UV or IR light source (i.e. invisible light) can be used depending on the ink used and at least one photosensor that detects the reflected light [0066]. It would be inherent that light from a UV or IR light would be invisible to humans and therefore the photosensor disclosed would be configured to sense light that is reflected or fluoresces from the ink.
Regarding claims 12 and 13, Fernando et al. disclose illustrate that both markers are made of at least one bar (see figure 2a, elements 217 and 215, above) and that the markings can be linear code or a bar code [0019].
Regarding claim 14, the controller of Fernando et al. is configured to, “…establish a heating protocol for the at least one heating element based on the particular article identified by the detector.” [0009].
Regarding claim 23, Fernando et al. disclose that using incompatible articles may result in poor smoking experience and may damage the system [0005] and that “safety maybe improved because the system activated only when a valid article is detected.” [0030]. Furthermore, Fernando et al. disclose that the distinguishing for articles by the detector, “…may reduce or eliminate counterfeit smoking articles for use with the system.” In this case, “valid” is considered to be “genuine” and counterfeit would be considered “not genuine”.
Regarding claims 15-18, Fernando et al. disclose a resistive heating element [0050] that is illustrated in figure 2a (see above) as a sawtooth line that is external to the chamber (111).
Regarding claim 19, Fernando et al. disclose that the heating element can be an inductive heating element [0051]. Induction heating inherently uses alternating electromagnetic fields to induce eddy currents and/or magnetic hysteresis in susceptor materials in order to heat them. The article is not being claimed and therefore the location of the susceptor does not limit the claimed apparatus. As noted in the 112(b) rejection above, claim 19 is being considered as being dependent on claim 17.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (US 20170055589 A1) as applied to claim 8 and 10 above.
Regarding claims 9 and 11, Fernando et al. disclose that visible, UV, or IR light source (i.e. invisible light) can be used depending on the ink including fluorescent ink [0007],[0008],[0018],[0044],[0062],[0069],and [0078]. It would have been obvious to one of ordinary skill in the art at the time of invention to use any of the inks disclosed, including different inks for the different markings on the article and sensors to detect the respective ink. This includes a first detector configured to sense invisible light, a second detector configured to sense visible light, a first detector configured to sense reflective material (i.e. visible light), and a second detector configured to sense fluorescent material (i.e. the fluorescent ink disclosed by Fernando et al.). The prior art discloses visible and invisible markings. Invisible and visible markings may make an article more difficult to counterfeit, a goal disclosed by Fernando et al. [0039]. The choice of whether to make a marking visible or invisible would also have been design choice on the part of one of ordinary skill because visible markings on some articles may interfere with marketing or acceptance by consumers while invisible markings may make articles more aesthetically pleasing.
Claim(s) 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (US 20170055589 A1) as applied to claim 18 and 19 above, and further in view of Fleischhauer et al. (US 5,591,368). Please see the 112(b) rejection of claim 19 above.
Regarding claims 20-22, Fernando et al. do not disclose the apparatus has a controller configure to cause a heating arrangement with a heating pattern that heats one or more different parts of the smokeable material (see 112(b) rejection above) or that the apparatus is configured such that selected zones of the aerosolizable medium can be heated independently alone or simultaneously.
However, electrical smoking systems that heat different parts of smoking articles are known in the art. Fleishhauer et al. disclose a heater for an electrical smoking system that uses multiple heater blades and that these blades can have a first and second heating pattern (i.e. first firing sequence and second firing sequence (col. 15, 40-46) and that individual blades or multiple blades (such as those opposite each other) can fire simultaneously (col. 15, 26-40). Furthermore, Fleishhauer et al. state that, “Any combination of heater blades can be employed.”
It would have been obvious to one of ordinary skill in the art at the time of invention/filing to use the multiple blade heater of Fleishhauer et al. as the heater in the invention of Fernando et al. along with the controller of Fleishhauer et al. to control the multiple blades. The motivation to use the heater of Fleishhauer et al. is explicitly disclosed by Fernando et al., who state, “For example, the at least one heating element may take the form of a heating blade, such as those described in U.S. Pat. No. 5,388,594, U.S. Pat. No. 5,591,368 and U.S. Pat. No. 5,505,214.” [0052].
Claim(s) 2, 4, and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (US 20170055589 A1) as applied to claim 1, and further in view of Xiang (US 20150189695 A1).
Regarding claim 2, Fernando et al. disclose that the sensors can operate in a first mode and a second mode (i.e. one or more different encoding methods and different types of sensors (col. 8, 17-19)) but does not disclose that the first mode monitors for the presence of the first marker and the second mode monitors for the second marker responsive to the detection of the presence of the first marker in the first mode. However, Xiang discloses a similar smoking article that contains multiple markers and stores identification on the article that is read by a sensor arrangement in order to prevent mismatch and security risk between the aerosol article and the apparatus [0004], [0046]. The first marker is a conductive material in the article and the sensor is a hall sensor, although Xiang disclose that “can be any other device that is able to detect the insertion of the atomizer assembly…” [0055]. Once the insertion is detected by the sensing the first marker, a second mode is activated when the controlling module turns on the second sensor system, a laser and photodiode, for reading a code formed of grooves and bulges.
It would have been obvious to one of ordinary skill in the art at the time of invention to use the first and second mode of Xiang in the invention of Fernando et al. In particular, Fernando et al. disclose a similar first detection mode that uses an induction circuit to monitor for metallic elements in the article [0045]. This is similar to the hall effect sensor of Xiang. In addition, using a low power form of sensing (i.e. hall effect, induction, physical switch) and saving higher power detection systems (such as a laser) for use only when an article is inserted and needs to be identified would have been obvious to one of ordinary skill and motivation (saving power) for using the first mode and second mode of Xiang.
Regarding claim 4, it would have been notoriously well known to those of ordinary skill in the art that the laser used in the second mode of Xiang et al. would require more power to operate than the hall, induction, or physical switch in the first mode.
Regarding claim 5, the induction, hall, or physical switch of Xiang would are not configured to detect the second marker.
29. Claim(s) 2, 4, 5, 23, is/are rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (US 20170055589 A1) as applied to claim 1, and further in view of Outwater et al. (US 6,203,069 B1).
Regarding claim 2, 23, and 24, Fernando et al. disclose that the sensors can operate in a first mode and a second mode (i.e. one or more different encoding methods and different types of sensors (col. 8, 17-19)) but does not disclose that the first mode monitors for the presence of the first marker and the second mode monitors for the second marker responsive to the detection of the presence of the first marker in the first mode.
However, Outwater et al. disclose a marking authentication system that uses a UV or near-IR first mark and a second IR mark illuminated by an IR laser (col. 5, 23-34, col. 8, 14-31). As disclosed and illustrated in figure 7, the code is read first by a first sensor (light source) and is determined if it is valid and then a second light source and sensor is used to look for a second mark. The second sensor (light source and detector) is not used unless the first mark is valid. The first sensor arrangement cannot detect the second mark (i.e. the first mode and second mode are separate).
It would have been obvious to one of ordinary skill in the art at the time of invention to use the marking system of Outwater et al. in the invention of Fernando et al. because Fernando et al. discloses the use of barcodes and Outwater et al. discloses the advantages of their barcode system such as improved security and preventing counterfeiting (see Abstract).
Regarding claims 4 and 5, it would have been notoriously well known to those of ordinary skill in the art that the laser used (disclosed as being 200 mW) in the second mode of Outwater et al. would require more power to operate than the UV or IR light (col. 5, 23-34, col. 8, 14-31). The first mode of Outwater et al. would also not be able to detect the marker intended to be detected by the second mode.
Regarding claims 25 and 26, Fernando et al. disclose that the controller establishes a heating protocol for the heating element and activate the heater in response based on the particular article identified by the detector [0009]. Fernando et al. disclose at least two articles with different heating protocols, a smoking article [0035] and a cleaning article [0036]. Furthermore, heating can be tailored to the particular type because particular substrates may require higher operating temperatures or longer heating times. (i.e. different timing of heating cycles) [0076].
Fernando et al. also disclose that, “…there is no chance that the heating element will energize unless the valid article is present.” [0030].
Regrading claim 27 and 28, Fernando et al. disclose that the heating profile for the identified article type may include “a minimum time between puffs”, which is a different rate of delivery of heat possible between the first article and another possible article (which is not claimed).
Regarding claim 29, the apparatus of Fernando et al. is designed to heat different parts of a second type of article (i.e. a cleaning article) with a different heating pattern. Please note that the structure that is heated in the article is not a limitation of the apparatus as instantly claimed. The instant claim does not include any limitation that there is any change in the instant structure of function of the apparatus.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (US 20170055589 A1) and Outwater et al. (US 6,203,069 B1) as applied to claim 2 above, and further in view of Fleischhauer et al. (US 6,040,560 A).
Regarding claims 3, Fernando et al. disclose sensors but do not expressly disclose as to whether they operate continuously or with a specific duty ratio. However, Fleischhauer et al. disclose a light sensor to detect the presence of a smoking article and disclose that, “In order to conserve energy, it is preferred that the puff-actuated sensor 45 and the light sensor 53 be cycled on and off at low duty cycles (e.g., from about a 2 to 10% duty cycle)(col. 9, line 66—col. 10, line 2).
Furthermore, Fleischhauer et al. disclose that another sensor in the device remains turned off by the controller until the light sensor detects a sufficient number of positive results to further extend the life of the power source (col. 10, 12-24).
It would have been obvious to one of ordinary skill in the art at the time of invention to use the low duty cycles of Fleischhauer et al. in the sensor of Outwater et al. and Fernando et al. so that battery power can be conserved.
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 1-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of copending Application No. 19670854 and 19670798 (reference applications). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of each individual claim does not appear to be identical.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Please note that related application 19375940 has 10 copending, child
applications, with a total of 19 related applications. Additional statutory and non-statutory relationships may be present and should be reviewed by the applicant throughout prosecution.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Felton/Primary Examiner, Art Unit 1747
Prosecution Insights