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”, 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.
Claim 14 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 14 recites the limitation "smokeable material" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 14, 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 requires 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 patterns.
Claim Interpretation
Claim 12, 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 20-21, 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 22-23, 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, 3-8, 12, 13, 15-17, 19, 20, 22, 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 an article capable of producing an aerosol (including from a solid), 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]
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].
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 claim 3, 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].
Regarding claim 4, Fernando et al. disclose that, “…there is no chance that the heating element will energize unless the valid article I present.” [0030].
Regarding claims 5-7, 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).
Regrading claim 8, 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.
Regrading claim 12 and 13, 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” and “different timing of heat cycles” possible between the first article and another possible article (which is not claimed).
Regarding claim 15 and 19, Fernado et al. disclose that the detector and optical sensor and includes at least one light emitter and at least one light sensor [0009].
Regarding claim 16, Fernando et al. disclose more than one light sensor [0042] and a plurality of light sensors [0066]. The plurality of sensors perform the sensing once the cigarette has been inserted, thus requiring separate sensors for the first and second markers of Fernando et al. because they are located on different parts of the article. This is in contrast to the need for reading markers as inserted when only one sensor is used [0066].
Regarding claim 17, 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 reflected light from a UV or IR light would be invisible to humans and therefore the photosensor disclosed would be configured to sense invisible light that is reflected.
Regarding claim 20, Fernando et al. disclose that UV or IR light source (i.e. invisible light that causes fluorescence of the ink) can be used depending on the ink used and at least one photosensor that detects the light [0066](including fluorescent ink [0007],[0008],[0018],[0044],[0062],[0069],and [0078]).
Regarding claims 22-23, 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].
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) 18 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (US 20170055589 A1) as applied to claim 15-17 and 20 above.
Regarding claim 18, 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 configure 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) 9-11 and 14 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 3 above, and further in view of Fleischhauer et al. (US 5,591,368)
Regarding claims 9-11 and 14, 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 aerosolisable material 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 (ie.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) 24, 28, and 29 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 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, 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.
Please note that the limitations concerning optical features of the article do not limit the apparatus claimed.
Regarding claim 28, 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 29, the induction, hall, or physical switch of Xiang would are not configured to detect the second marker.
29. Claim(s) 2, 24, 28, and 29 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 claims 2, 24 and 29, 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 claim 28, 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).
Claim(s) 25-27 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 24 above, and further in view of Fleischhauer et al. (US 6,040,560 A).
Regarding claims 25- 27, 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 19670723 (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