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 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 1-20 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.
Claims 1-4, and 16-18, use functional language that creates significant ambiguity as to the scope of the claims and fails to provide well-defined boundaries of the invention (see MPEP 2173.05(g)).
Regarding claims 1, directed to an article of a first type with markings, includes the functional limitation,
wherein the identification information marker indicates that the article is of a first type which is suitable for heating using a first heating pattern, rather than being an article of a second type which is suitable for heating using a second, different, heating pattern, wherein the identification information marker is different to an identification information marker of an article of the second type, and wherein the reference marker is the same as a reference marker of an article of the second type.
The functional language is ambiguous in scope because the function is not performed by the article. The applicant discloses that the information marker on the article (the instantly claimed invention) only contains a binary sequence and that this sequence is read and compared with a look-up table in the device [0036]. The functions performed by a apparatus based on the information contained on the information marker including determining if type and a heating pattern suitable for the type cannot be performed by the article.
In addition, a second type of article is also not claimed, and therefore, the relative similarity or differences with an unclaimed article are outside the scope of the single article being claimed.
Regarding claims 16-18, these claims include further functional language concerning the function of a device which is not claimed (a second heating pattern with different delivery of heat, different timing of heating cycles, and heating of different parts). The claims appear to fail to further limit the claimed invention (a second type of article is not claimed) and the heating pattern is not a function of the claimed article. It is unclear how the article being claimed is limited by the functional limitations of a different device (see MPEP 2173.05(g)). Therefore, the meets and bounds of claims 16-18 cannot be determined.
Regarding claims 3 and 4, directed to an article with markings, these claims include the functional limitations respectively,
wherein the first marker is configured to be sensed to determine whether the article is genuine
and
wherein the first marker is configured to be sensed to determine whether the article is genuine is genuine based on the shape of the first marker
The functional language is ambiguous in scope because the function is not performed by the article. The applicant discloses that the marker on the article (the instantly claimed invention) only contains a binary sequence and that this sequence is read and compared with a look-up table in the device [0036]. The function of reading, determining a genuine article is carried out by a device that is not claimed. It is unclear, what, if any function is attributed to the article being claimed.
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.
Claim(s) 1-5, 7-10, 14, 15, 19, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fernando et al. (US 10,827,782 B2).
Regarding claims 1, 5, 7-9, 14, 15, and 20, Fernando et al. disclose a cigarette rod shaped smoking article containing aerosolisable material (i.e. a first type) to be heated and not burned (abstract and col. 14, 22-31) and the rod includes identification information encoded on the smoking article toward the mouth end using a plurality of generally circular lines (215) printed in IR, UV, or visible ink (col. 13, 32-44). A separately located line (217) is located close the heating end and is designed to change during the heating involved in the smoking experience and may be printed in temperature sensitive ink (i.e. reference marker). Alteration of this line will indicate that the cigarette has been smoked (col. 13, 32-44).
The identification information is disclosed as serving to identify the type of article from a number of different types usable with the device and enables the electrically heated smoking system to tailor the heating (such as temperature or heating time) to the particular cigarette type or the particular user or both (col. 13, 6-33).
Regarding the limitation that the reference marker is the same as a reference marker on an article of the second type, a second type article is not claimed and therefore the disclosure of Fernando et al. meets the claim limitation because it is an article that has a reference marker. Furthermore, Fernando et al. discloses that line 217 can be used on a second type of article (i.e. cleaning article) for the same purpose, resulting in the reference marker being the same between a first article and a second article of a different type (col. 14, 16-19).
Regarding claim 2, claim 2 includes a recitation of the intended use of the claimed invention, in this case, “the first marker is configured to sensed to indicate the presence of the article.” The marker of Fernando et al. is capable of being sensed to determine if the article is present. In other words, if the first marker is not sensed, the article may not be present. However, this limitation is a function of a device that is not claimed. The marker of Fernando et al. is capable of being used to identify if the article is present only if the device is enabled to function in that way.
Regarding claims 3 and 4, claims 3 and 4 include recitations of the intended use of the claimed invention, in this case, “wherein the first marker is configured to be sensed to determine whether the article is genuine,” and that this determination is, “based on the shape of the first marker”
First, the markers of Fernando et al. are configured to be sensed and read by other devices. The authenticity of the article cannot be determined by the marker.
Second, the intended use steps in claim 1 cannot be accomplished with the article claimed. The sensing or reading of the markers along with any determination of genuineness or suitability (first or second or third) are actions performed by another device or a user.
Third, the recitation of intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the prior art is capable of providing markers that can be sensed or read and used to obtain information and are therefore capable of performing the intended use of supplying information that can be used by other, non-claimed devices or users to implement the intended use.
The marker of Fernando et al. inherently has a shape (a line) and therefore is capable of being sensed as a shape which may or may not indicate genuineness depending on the device that reads the shape. Furthermore, Fernando et al. disclose that the markers may be bar codes which inherently relate shape to binary numbers (see instant specification [0036]).
Regarding claim 10, claim 10 includes a recitation of the intended use of the claimed invention, in this case, “the first marker and second marker being configured to be sensed using different sensing techniques.” The sensing techniques are the function of a device which is not claimed. However, Fernando et al. disclose that the one marker can be printed with IR, UV, phosphorescent or fluorescent marking while the other marker is printed with thermally sensitive ink. Therefore, the sensing technique for fluorescent ink is inherently different from ink that is not disclosed as fluorescent and is instead is a thermally sensitive ink. In other words, the phosphorescent ink must be irradiated at the proper wavelength of light to cause fluorescence. (col. 3, 46-51).
Regarding claim 19, Fernando et al. disclose that the aerosol gorming substrate may be a solid (col. 4, 7-15) or a liquid (col. 4, 38-49).
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) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (US 10,827,782 B2) as applied to claim 10 above.
Regarding claims 11-13, Fernando et al. disclose that the markers on the article are printed in, “…visible ink, ultra violet (UV ink, infra red (IR) ink, phosphorescent ink, fluorescent ink, or metallic ink,” (col. 2, 4-36) and that the identification information is arranged to change as the article is used. Later, Fernando et al. disclose two different markers and that one has ink that can be affected by heat. Fernando et al. do not expressly disclose the specific arrangement where the first marker (reference line) is capable of being sensed with invisible light and uses fluorescent ink and the second marker (identification marker) is capable of being sensed with visible light. However, 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 by Fernando et al. to make either of the markers, including making the first marker with fluorescent ink and the second marker with visible ink. Fernando et al. indicate a limited number of inks and sensing techniques, and it would have been obvious and well within the level of ability of one of ordinary skill to make the markers of Fernando et al. with any of the disclosed inks. It is well known in the art that invisible ink allows for additional protection from counterfeiting because it is not visible.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fernando et al. (US 10,827,782 B2) as applied to claim 1 above, and further in view of Urban (US 2017/0172202 (with priority to EP 14175243.6).
Regarding claim 6, Fernando et al. do not disclose that the encoded information is secured by a secret key. However, using encryption with private keys so secure data in bar codes is known in the art. Urban discloses using bar codes to track tobacco products [0016] and disclose that the data on the barcode can be encrypted with encryption keys where decryption is impossible without the encryption key (i.e. secret key). Urban discloses that using encryption can further prevent counterfeiting. It would have been obvious to one of ordinary skill in the art at the time of invention to use encryption on the information in the barcode of Fernando et al. so that it would make the product of Fernando et al. more difficult to counterfeit.
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.
Claim 1-20 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claim 1-9. 11-14, and 19-31 of copending Application No. 19/670828 and claims 1-13 and 15-31 of Application No. 19670872. Although the claims at issue are not identical, they are not patentably distinct from each other because the only differences in the claims depend on functional limitations that require a device which is not claimed (see 112(b) rejections above). The structure and function of the article with first and second markers as claimed in both copending applications are not patentably distinct from each other.
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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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