R.J. Reynolds Tobacco Company

Patent Trials and Appeals Board

Jul 21, 2020

2019002841 (P.T.A.B. Jul. 21, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/327,776 07/10/2014 Frederic Philippe Ampolini R60999 10980US.1
(0747.7)
9946
26158 7590 07/21/2020
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
WANG, HARRY Z
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
07/21/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FREDERIC PHILIPPE AMPOLINI, RAYMOND CHARLES
HENRY, JR., GLEN KIMSEY, and WILSON CHRISTOPHER LAMB
____________________

Appeal 2019-002841
Application 14/327,776
Technology Center 2100
____________________

Before ERIC S. FRAHM, JOHN A. EVANS, and JUSTIN BUSCH,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Introduction
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–34, which constitute all the claims pending in

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as RAI Strategic Holdings, Incorporated
(Appeal Br. 1).
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this application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse
and enter a new ground of rejection.
Background
Bluetooth is divided into low-power Bluetooth, classic Bluetooth and
dual-mode Bluetooth. Classic Bluetooth has the functionality used to make
calls and play music. Appellant’s preferred embodiment uses a low-power
Bluetooth technology called Bluetooth Low Energy (BLE) that offers more
interoperability and lower power consumption than classic Bluetooth.2 Most
new smartphones now have BLE functionality. Bluetooth consumes less
power than WiFi, and is more suitable for devices that require lithium
battery power, in the management and setting of devices for consumers.
Appellant’s Disclosed and Claimed Invention
With this in mind, Appellant’s invention, entitled “A SYSTEM AND
RELATED METHODS, APPARATUSES, AND COMPUTER PROGRAM
PRODUCTS FOR CONTROLLING OPERATION OF A DEVICE BASED
ON A READ REQUEST” (Title), is directed to using a mobile phone to
control, and communicate with over a Bluetooth wireless connection, an
aerosol delivery device used for smoking (see Spec. 1:9–13, 2:17–28, 7:3–8,
13:9–21). To control various operations of the aerosol delivery device, “a
Bluetooth technology, such as Bluetooth, Bluetooth Low Energy (also

2 See generally Anonymous, Nordic Semiconductor, Bluetooth Low Energy
Wireless Technology, Version 4, pp. 1–8 (March 22, 2011); see also Kwon
et al. (US 10,028,324 B2; issued July 17, 2018) at col. 1, ll. 30–57
(describing Bluetooth Classic and Bluetooth Low Energy).
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known as Bluetooth Smart and Wibree), and/or the like may be used” (Spec.
13:9–10).
The various operations are based on various configurations and
settings, such as a heating profile configuration, an aerosol precursor
composition vaporization setting, a puff control setting, a battery
management setting, a haptic feedback configuration, and/or a flavor setting
(see Spec. 17:22–18:9). Some operations may be turning the aerosol
delivery device on/off, or putting the device into different power modes, like
standby, low power mode, and normal power consumption mode (see Spec.
17:6–10). As described by Appellant:
For example, modification of an aerosol precursor
composition vaporization setting may include modification of a
configuration defining an amount of aerosol precursor
composition that is vaporized per puff, and/or other
configuration setting that may relate to the vaporization of
aerosol precursor composition. Modification of a puff control
setting may, for example, include modification of a number of
puffs that are allowed within a period of time and/or for a single
smoking session, modification of a minimum interval of time that
must elapse between puffs, and/or modification of another
setting that may govern device behavior with respect to user
puffs. Modification of a battery management setting may, for
example, include modification of a configuration relating to
charging of a battery or other electrical power source (e.g.,
electrical power source 216) that may be implemented on an
aerosol delivery device and/or a configuration that may regulate
consumption of the battery. Modification of a haptic feedback
configuration may, for example, include modification of a
vibration strength of haptic feedback, activating/deactivating
haptic feedback, and/or the like. Modification of a flavor setting
may, for example, include modification of the type and/or
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concentration of a flavor that is vaporized separately or in
combination with other aerosol precursor components.
Spec. 17:26–18:9.
Exemplary Claims
Claims 1 (method), 14 (an aerosol delivery device), and 25 (method)
are independent claims. Claim 1 is focused on the performance of
operations by a first computing device (e.g., an aerosol delivery device)
being controlled by a second computing device (e.g., a mobile phone or
other computing device) “via a wireless communication link” (claim 1) (e.g.,
using Bluetooth protocol/technology to implement the link). Claim 25 is
focused on the operations of a first computing device (e.g., a mobile phone
or other computing device) to control a second computing device (e.g., an
aerosol delivery device) with formatted requests. Exemplary independent
claims 1 and 25 under appeal, with emphases added, read as follows
(emphases added to contested limitations):
1. A method for performing an operation in response to a
read request, the method comprising a first computing device:
receiving a request to read a value, wherein the request is
received from a second computing device via a wireless
communication link between the first computing device and
the second computing device;
determining an operation corresponding to the value,
wherein each of a plurality of readable values corresponds to a
different respective operation; and
performing the operation corresponding to the value in
response to the request.
Appeal Br. 13, Claims Appendix (emphases added).
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25. A method for causing a computing device to perform an
operation in response to a read request, the method comprising a
first computing device:
determining an operation for performance by a second
computing device;
determining a value corresponding to the operation,
wherein each of a plurality of operations corresponds to a
different respective value;
formatting a request to read the value corresponding to the
operation; and
sending the request to the second computing device via a
wireless communication link between the first computing device
and the second computing device to cause the second computing
device to perform the operation.
Appeal Br. 16, Claims Appendix. Remaining independent claim 14 recites
“[a]n aerosol delivery device comprising processing circuitry configured to”
perform the method of claim 1, and wherein the “second computing device”
(claim 1) is “a mobile communication device” (claim 14).
The Examiner’s Rejection
The Examiner rejected claims 1–34 under 35 U.S.C. § 103 as being
unpatentable over Fernando et al. (US 8,851,081 B2; issued Oct. 7, 2014 and
filed March 15, 2013) (hereinafter, “Fernando”) and Hong et al. (US
2014/0278139 A1; published Sept. 18, 2014 and filed April 10, 2014)
(hereinafter, “Hong”). Final Act. 5–21.
Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 3–
12) and the Reply Brief (Reply Br. 1–10), the following principal issues are
presented on appeal:
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Has Appellant shown that the Examiner erred in rejecting claims 1–34
under 35 U.S.C. § 103 because (i) it would not have been obvious to modify
Fernando with Hong; and/or (ii) the combination of Fernando and Hong fails
to teach or suggest (a) receiving a request to read a value, and/or (b)
determining an operation corresponding to the value, as recited in claim 1, as
commensurately recited in device claim 14, and as commensurately recited
from the sending device perspective in claim 25?

ANALYSIS
We have reviewed the Examiner’s rejection (Final Act. 5–21) in light
of Appellant’s arguments in the Appeal Brief (Appeal Br. 3–12) and the
Reply Brief (Reply Br. 1–10) that the Examiner has erred, and the
Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans. 3–
10). We are persuaded by Appellant’s contentions that (i) the Examiner has
not provided sufficient motivation to modify Fernando with Hong; and (ii)
the Examiner has not sufficiently shown that the combination of applied
references teaches or suggests determining an operation corresponding to a
value in response to receiving a request to read a value as recited in claim 1,
and as commensurately recited in remaining independent claims 14 and 25.
We are also persuaded by Appellant’s contentions (see Appeal Br. 8–11;
Reply Br. 5–9) that the Examiner has not sufficiently shown that the
combination of applied references teaches or suggests the features of claims
6, 7, 9, 18, and 20. Our reasoning follows.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
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v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted));
In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (“Our precedent
dictates that the PTAB must make a finding of a motivation to combine
when it is disputed.”).
The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks – the so-
called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial
burden of proof is on the USPTO “to produce the factual basis for its
rejection of an application under sections 102 and 103”) (quoting In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967)).
In addition, the Examiner is required to provide Appellant reasonable
notice as to the basis of a rejection. The notice requirement is set forth by
35 U.S.C. § 132:
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
35 U.S.C. § 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection.” Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
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See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). “When a reference is
complex or shows or describes inventions other than that claimed by the
applicant, the particular part relied on must be designated as nearly as
practicable. The pertinence of each reference, if not apparent, must be
clearly explained and each rejected claim specified.” See 37 C.F.R.
§ 1.104(c)(2) (emphasis added)). We will not resort to speculation or
assumptions to cure the deficiencies in the Examiner’s fact finding. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
In the instant case before us, Fernando is very similar to Appellant’s
disclosed invention, and relates specifically to an aerosol delivery device
(see Fig. 1, 101) connected to a personal computer (PC) (see Fig. 1, 109)
over a communications link (see Fig. 1, 107) which can be wireless (col. 5,
ll. 58–59). Fernando specifically discloses that the wireless communications
link3 uses a protocol or interface standard such as Bluetooth “to allow the
exchange of information between two or more systems or pieces of
equipment” (col. 6, ll. 8–10). Fernando also discloses that although the host
device can be a PC (e.g., “a tablet computer such as a Personal Digital
Assistant (PDA), a Personal Information Device (PID), a Portable Media
Player (PMP, such as an Apple, Inc. iPod®) or a Portable Video Player
(PVP)”), “[t]he host may be a mobile cellular telephone” (col. 6, ll. 44–44)

3 Fernando discloses that the wireless communications link could include
“Bluetooth, FireWire (a brand name of Apple, Inc. for their IEEE 1394
interface), IrDA (Infrared Data Association—a communications standard for
the short-range exchange of data by Infrared light); Zigbee (a specification
based on the IEEE 802.15.4 standard for wireless personal area networks)
and other Wi-Fi standards” (Fernando col. 6, ll. 13–19).
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(emphasis added). And, in addition, Fernando discloses only using “a
limited set of software-supporting components” (col. 8, ll. 1–2) in the
aerosol delivery device 101, because “[t]his allows the device itself to
remain relatively simple in terms of memory and processing power” (col. 8,
ll. 2–4). Notably, this is the same reason Appellant gives for using the
Bluetooth wireless protocol (see Spec. 6:30–7:24),4 namely “reducing
programming complexity and saving memory space on device with relatively
limited memory space (e.g., limited random access memory space and/or
limited program memory), such as some aerosol delivery devices” (Spec.
7:5–7) (emphasis added).

4 Some of the reasons Appellant discloses for using Bluetooth wireless
technology are (i) to “provide a finer level of control over devices offering a
more limited user interface” (Spec. 7:2–3), (ii) to avoid having to implement
the protocol’s write handlers used to support a read request (see Spec. 7:3–
5), (iii) to avoid having to sanitize “a read request that may be used to toggle
or otherwise modify a value” (Spec. 7:9–10), (iv) to “allow remote control
of a device that may prohibit a remote device from writing to the device due
to security concerns” (Spec. 7:12–13), (v) because “read requests may be
simpler and require less time to format and transmit than a write request,
which may provide a faster response time to user commands and may reduce
power consumption in the device generating and sending the read request
compared to power that may be required to send a write request or other
explicit command for performing an operation” (Spec. 7:13–17), (vi) to use
a read request to invoke performance of operations by a device “without
transferring a program instruction(s) or other instruction for
storage/installation on a device, thereby offering an additional level of
control over devices having limited memory space” (Spec. 7:19–21), and
(vii) to “invoke performance of an operation by a second device based on a
read request without the second device downloading or storing any program
or information from the first device” (Spec. 7:22–24).

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Hong, however, describes “a worn biometric monitoring device
(BMD)” (¶ 8, ll. 1–2) for “tracking a user’s physiological activity” (¶ 9, l. 2),
and analyzing sensory output data (see ¶¶ 9–11). Although Hong discloses
(i) “multiple modes” of operation (see ¶ 40) (e.g., free motion mode,
stairclimbing mode, and dominant hand mode), that may be selected either
manually or automatically (see ¶ 40); and (ii) communicating “user specific
information” such as “the user’s placement preference” of the BMD to a
smartphone “via a wireless or wired communication protocol” (¶ 80), Hong
is not concerned with controlling a client device (like Appellant’s and
Fernando’s aerosol delivery device) with a more powerful control/server
device (like Appellant’s and Fernando’s mobile phones) for the purpose of
reducing complexity and circuitry of the client device. And, as Appellant
points out, Hong does not disclose (i) using a read value to determine a
mode of operation (see Appeal Br. 5); (ii) that the selection of a particular
mode is to decide which of the sensors are activated (see Appeal Br. 6); or
(iii) “a request or responding to a request, as per the claimed method”
(Appeal Br. 6).
Therefore, because Hong “describes inventions other than that
claimed by the applicant” (37 C.F.R. § 1.104(c)(2)), “the particular part
relied on must be designated as nearly as practicable” (37 C.F.R.
§ 1.104(c)(2)). Here, the Examiner cites Hong’s paragraphs 40 and 146 (see
Final Act. 6), and paragraphs 43 and 61 (see Ans. 6–7), and maps (1) the
different modes being selected (such as free motion, stairclimbing, and
dominant hand modes) to the recited determination of an operation
corresponding to a value (see Final Act. 6) and (2) Hong’s calculation of
metrics to Appellant’s recited operation (see Ans. 6). The Examiner map’s
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Hong’s biometric data values collected from the biometric sensors to the
claimed value read in response to a request (see Ans. 6 citing Hong ¶ 43).
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In
re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating that, during
examination, “claims must be interpreted as broadly as their terms
reasonably allow”). However, the broadest reasonable interpretation differs
from the broadest possible interpretation. In re Smith Int’l, Inc., 871 F.3d
1375, 1383 (Fed. Cir. 2017); see also MPEP § 2111
The broadest reasonable interpretation does not mean the
broadest possible interpretation. Rather, the meaning given to a
claim term must be consistent with the ordinary and customary
meaning of the term (unless the term has been given a special
definition in the specification), and must be consistent with the
use of the claim term in the specification and drawings.

Under the broadest reasonable interpretation standard, and absent any
special definition, claim terms are given their ordinary and customary
meaning, as would be understood by a person of ordinary skill in the art in
the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007).
Thus, the correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is “an interpretation
that corresponds with what and how the inventor describes his invention in
the specification, i.e., an interpretation that is ‘consistent with the
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specification.’” Smith, 871 F.3d at 1382–83 (quoting In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997)). We are mindful, however, that limitations are
not to be read into the claims from the Specification. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993).
In this light, we agree with Appellant (see Reply Br. 3–4), that with
respect to Hong, the Examiner’s interpretation of the claim language is
unreasonably broad in that it improperly reads out claim limitations, is
inconsistent with the Specification, and renders the distinction of a read
request of a value being part of a wireless communication protocol
meaningless. As a result, we also agree with Appellant that (i) “Hong does
not disclose determining any of its modes corresponding to a value” (Reply
Br. 3); and (ii) “there is absolutely no basis or rational explanation for a
Fernando in view of Hong in which Hong’s metrics correspond to the sensor
data” (Reply Br. 4). One of ordinary skill in the art, in light of Appellant’s
disclosure and Bluetooth environment, would not understand Hong’s
calculation of biometric data or performance metrics to be the same as the
performance of an operation in response to a read request as claimed, as the
Examiner has done (see Ans. 7).
For similar reasons pertaining to the interpretation of Hong discussed
above, we also agree with Appellant’s arguments pertaining to Fernando
(see Appeal Br. 4–5; Reply Br. 2–3), that the Examiner’s interpretation of
the recited “request to read a value” corresponding to an operation to be
performed (claims 1, 14; see also claim 25 (“a request to read the value”)) as
encompassing the request to connect via Bluetooth (i.e., the initial
advertisement and response, or handshaking, procedure used to start a
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wireless Bluetooth session), is unreasonable. We agree with Appellant’s
following contentions in this regard:
The Examiner construes the request to read a value as
“anything that causes the device to read data, the request to read
data could just be the connection of the device to the host
system.” This is an unreasonable interpretation of the claim that
is not only inconsistent with the specification, it is broader than
what is described in the specification. As described in
the specification, a “request” is a message sent from the second
computing device to the first computing device over a wireless
communication link. More specifically, a “request to read
a value” is a message in a specified format that describes a
request for the value. The specification does not describe or
support the request being as broad as “anything that causes the
device to read data,” or even “the connection of the device to the
host system.”

Appeal Br. 5; and:
The Examiner has also found that “receiving a read request is
broad enough to read on anything that cause the device to read
data, the request to read data could just be the connection of the
device to the host system.” This is an unreasonable interpretation
of the claim that is not only inconsistent with the specification, it
is broader than what is described in the specification. See MPEP
§ 2111; and TF3 Ltd v. Tre Milano, LLC, No. 2016-2285 (Fed.
Cir. Jul. 13, 2018). As described in the specification, a “request”
is a message sent from the second computing device to the first
computing device over a wireless communication link.
In the Examiner’s Answer, the Examiner responds:

... While Applicant argues that no request is sent
from the second computing device (i.e. the host
computer) to the first computing device (i.e.
the smoking apparatus), since the invention itself
has a data transmission link (See Fernando Figure
1, 107) that can be wireless, a request from the host
computer would have to be sent in a wireless
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message format (i.e. packet) to request the data
from the device to be uploaded to the host computer.

Examiner’s Answer, p. 5. The Examiner here appears to find that
an upload of data from the smoking apparatus to the host
computer necessarily (i.e., inherently) requires a request from the
host computer to the smoking apparatus. This is not only
factually incorrect, it is contrary to the explicit teaching of
Fernando. That is, Fernando discloses that its smoking apparatus
may be triggered to upload data by the user simply connecting
the device to the PC. See Fernando, col. 8, ll. 52-54.

Reply Br. 2–3. We agree with Appellant’s arguments that the Examiner’s
claim interpretations pertaining to Fernando are broader than reasonable in
light of Appellant’s Specification.
And, although it might be the case that Fernando could use a read
request to read a value corresponding to an operation to be performed, we
find no such disclosure in the passages the Examiner cited that support the
Examiner’s position. We will not resort to speculation or assumptions to
cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967); see also In re Coley, 40 F.2d 982, 986
(CCPA 1930) (“Where there is such doubt, the scales should be inclined
toward the applicant.”).
Lastly, we agree with Appellant’s arguments there is insufficient
motivation to modify Fernando with Hong (see Appeal Br. 6–8; Reply Br.
4–5). In particular, we agree with Appellant that (i) the “modification of
Fernando per Hong as alleged does not necessarily result in the claimed
method in which a request to read a value leads to determination of
an operation corresponding to the value, and performance of the operation in
response to the request” (Appeal Br. 7; Reply Br. 4); (ii) “[t]he Examiner’s
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rationale for modifying Fernando per Hong is therefore completely circular”
(Appeal Br. 7; see also Reply Br. 4). Thus, we agree with Appellant:
that the Examiner still fails to provide any explanation or
rationale why one skilled in the art would combine Fernando and
Hong to achieve a combination in which a smoking apparatus
responds to a request to read data values by calculating a metric.
On what basis would one send such a request instead of simply
sending a request for the metric? And why would the smoking
apparatus require a request to read data values to calculate
metrics derived from the metrics?

Reply Br. 5.
In this light, and in view of the Examiner’s findings of fact for the
rejection, as well as the Examiner’s erroneous claim interpretations, of
claims 1, 14, and 25 (see Final Act. 5–6, 11–12, 16–17; Ans. 5–6), we are
persuaded that the Examiner erred in rejecting claims 1, 14, and 25, and thus
claims 2–13, 15–24, and 26–34 depending respectively therefrom, under
35 U.S.C. § 103 over the combination of Fernando and Hong. Therefore, on
the record before us, we cannot sustain the Examiner’s rejection of claims 1–
34 as being unpatentable over the combination of Fernando and Hong.5

5 We recognize that Appellant’s arguments concerning the obviousness
rejection present additional issues regarding claims 6 and 18 (see Appeal Br.
8–9; Reply Br. 5–6), claim 7 (see Appeal Br. 9–10; Reply Br. 7), claims 9
and 20 (see Appeal Br. 10; Reply Br. 7–8), and claim 34 (see Appeal Br. 11–
12; Reply Br. 8–9). Because we are persuaded of error by the issue
regarding claims 1, 14, and 25, as already discussed, we do not reach the
additional issues, as the issue as to claims 1, 14, and 25 are dispositive of the
appeal.

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CONCLUSION
Appellant has shown the Examiner erred in rejecting claims 1–34
under 35 U.S.C. § 103 as being unpatentable over the combination of
Fernando and Hong. Based on the record before us, we are constrained to
reverse the Examiner’s obviousness rejection of claims 1–34.
We also enter new a new ground of rejection under 37 C.F.R.
§ 41.50(b) and 35 U.S.C. § 103 for claims 1, 14, and 25 as follows:

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 103 for claims 1, 14, and 25 as being obvious over Fernando in
view of Granqvist et al. (US 9,648,108 B2; May 9, 2017 filed Nov. 28,
2012) (hereinafter, “Granqvist”).
As state above, Fernando discloses an aerosol delivery device (see
Fig. 1, 101) connected to a personal computer (PC) (see Fig. 1, 109) over a
communications link (see Fig. 1, 107) which can be wireless (col. 5, ll. 58–
59). Thus, Fernando teaches the “first computing device” recited in claim 1,
the “aerosol delivery device” recited in claim 14, and the “computing
device” (see claim 25, preamble) and “second computing device” recited in
claim 25.
Fernando specifically discloses that the wireless communications link6
uses a protocol or interface standard such as Bluetooth “to allow the

6 Fernando discloses that the wireless communications link could include
“Bluetooth, FireWire (a brand name of Apple, Inc. for their IEEE 1394
interface), IrDA (Infrared Data Association—a communications standard for
the short-range exchange of data by Infrared light); Zigbee (a specification
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exchange of information between two or more systems or pieces of
equipment” (col. 6, ll. 8–10). Thus, Fernando teaches the “wireless
communication link” recited in claims 1, 14, and 25.
Fernando also discloses that although the host device can be a PC
(e.g., “a tablet computer such as a Personal Digital Assistant (PDA), a
Personal Information Device (PID), a Portable Media Player (PMP, such as
an Apple, Inc. iPod®) or a Portable Video Player (PVP)”), “[t]he host may
be a mobile cellular telephone” (col. 6, ll. 40–44) (emphasis added). Thus,
Fernando teaches the “second computing device” recited in claim 1, the
“mobile communication device” recited in claim 14, and the “first
computing device” recited in claim 25.
Fernando also discloses using Bluetooth wireless technology (see col.
6, l. 14; col. 8, ll. 23–54) to communicate with a PC 107, which could be a
PDA or mobile cellular telephone (see col. 6, ll. 37–44), and thus teaches the
claimed received communication (i) “from a second computing device via a
wireless communication link between the first computing device and the
second computing device” (claim 1); (ii) “from a mobile communication
device via a wireless communication link between the aerosol delivery
device and the mobile communication device” (claim 14); as well as (iii) the
claimed communication sent “to the second computing device via a wireless
communication link between the first computing device and the second
computing device” (claim 25).

based on the IEEE 802.15.4 standard for wireless personal area networks)
and other Wi-Fi standards” (Fernando col. 6, ll. 13–19).
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In addition, Fernando discloses only using “a limited set of software-
supporting components” (col. 8, ll. 1–2) in the aerosol delivery device 101,
because “[t]his allows the device itself to remain relatively simple in terms
of memory and processing power” (col. 8, ll. 2–4). Notably, this is the same
reason Appellant gives for using the Bluetooth wireless protocol (see Spec.
6:30–7:24),7 namely “reducing programming complexity and saving memory
space on device with relatively limited memory space (e.g., limited random
access memory space and/or limited program memory), such as some
aerosol delivery devices” (Spec. 7:5–7) (emphasis added).
Therefore, with regard to claim 1, Fernando teaches or suggests the
recited “method for performing an operation” recited in claim 1, and the

7 Some of the reasons Appellant discloses for using Bluetooth wireless
technology are (i) to “provide a finer level of control over devices offering a
more limited user interface” (Spec. 7:2–3), (ii) to avoid having to implement
the protocol’s write handlers used to support a read request (see Spec. 7:3–
5), (iii) to avoid having to sanitize “a read request that may be used to toggle
or otherwise modify a value” (Spec. 7:9–10), (iv) to “allow remote control
of a device that may prohibit a remote device from writing to the device due
to security concerns” (Spec. 7:12–13), (v) because “read requests may be
simpler and require less time to format and transmit than a write request,
which may provide a faster response time to user commands and may reduce
power consumption in the device generating and sending the read request
compared to power that may be required to send a write request or other
explicit command for performing an operation” (Spec. 7:13–17), (vi) to use
a read request to invoke performance of operations by a device “without
transferring a program instruction(s) or other instruction for
storage/installation on a device, thereby offering an additional level of
control over devices having limited memory space” (Spec. 7:19–21), and
(vii) to “invoke performance of an operation by a second device based on a
read request without the second device downloading or storing any program
or information from the first device” (Spec. 7:22–24).

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“aerosol delivery device comprising processing circuitry configured to cause
the aerosol delivery device to” perform the method of performing an
operation recited in claim 14. Fernando also teaches or suggests the method
for performing an operation at a second computing device recited in claim
25, at least because the Bluetooth protocol is known to include a formatted
request-response process to control a Bluetooth device from a host/server
device, and one of ordinary skill in the art at the time of Appellant’s claimed
invention would have known the Bluetooth protocol operates in this fashion.
Such is demonstrated by Granqvist. Granqvist teaches using a read request
(see Fig. 3) to invoke commands for operations (see col. 5, ll. 4–21)
(“transfer commands, instructions, and/or notifications as [to] how to
process” data).
Fernando teaches operations to be performed by the first computing
device (claim 1), aerosol delivery device (claim 14), and second computing
device (claim 25), such as air flow detection (see col. 7, ll. 1–9, 21–26), puff
settings like time-period for an electric current pulse (see col. 7, 9–12, 17–
20), maximum number of puffs allowed in a time period and minimum time
interval allowed between puffs (see col. 8, ll. 22–30), and auto-shutdown
time period setting (see col. 8, ll. 30–34) of a computing device (see e.g.,
Fig. 1 aerosol delivery device 101).
Fernando’s puff setting operations are the same as Appellant’s,
namely setting the (i) number of puffs allowed with a period of time, and
(iii) allowed interval between puffs (see Spec. 17:29–18:2). And, Fernando
adjusts for flavor by controlling parameters related to the tobacco plug
manufacturer (see col. 8, ll. 27–30), wtich is similar to Appellant’s disclosed
operation of “modification of a flavor setting” (Spec. 17:25). In addition,
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Fernando controls a power mode of the aerosol delivery device (see col. 8,
ll. 30–32 (auto-shut down)), as does Appellant (see Spec. 17:6–10 (on/off,
power modes), 24 (battery management setting)).
Fernando also suggests the “[t]he device could include additional
functionality, such as an MP3 player, satellite navigation and so forth, which
could be downloaded to the device from the PC” (col. 9, ll. 33–35). A
person having ordinary skill in the art would understand that the utilization
of any of these settings, controls, and other functions would require
identifying which setting, control, and/or mode of operation is being selected
for performance or use. And, when using Bluetooth protocol, as Fernando
does, it would have been obvious to one of ordinary skill in the art at the
time of Appellant’s claimed invention, to use a read request in a Bluetooth
data packet to use a read request to either invoke a command or read a value
corresponding to an operation to be performed to cause the performance of
the operations, as suggested by Fernando, and taught by Granqvist to
“enable[] an application executed in a Bluetooth device to discover services
that are available and to determine characteristics of the available services”
(Granqvist col. 1, ll. 22–24), and in order to only use “a limited set of
software-supporting components” (Fernando col. 8, ll. 1–2) in the aerosol
delivery device 101 so as to “allow[s] the device itself to remain relatively
simple in terms of memory and processing power” (Fernando col. 8, ll. 2–4),
as taught by Fernando.
Although Fernando teaches using a Bluetooth protocol to control
operations of an aerosol delivery device such as (i) puff settings like “a
maximum number of puffs permitted per time period, and a minimum
interval between puffs” (col. 8, ll. 24–26); and (ii) power mode settings like
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“auto-shut down after a selected period of inactivity” (col. 8, ll. 31–32), and
suggests additional operations could be included on the aerosol delivery
device, such as “an MP3 player, satellite navigation and so forth” (col. 9, l.
34), Fernando does not describe the details of the Bluetooth protocol, e.g.,
formatting and sending a read request from the host device to the aerosol
delivery device, and reading a value to invoke a command. However, one of
ordinary skill in the art at the time of Appellant’s invention, would have
understood the Bluetooth protocol, which was known at the time, to include
a read request to invoke commands, including performing operation that
could include reading data from a Bluetooth controlled first computing
device (e.g., puff settings, etc.), and Granqvist shows that these facts are
well-known (e.g., using read requests to invoke commands).
Granqvist, in same field of endeavor of Bluetooth devices connected
over a wireless communication link using the Bluetooth protocol (see col. 1,
ll. 19–24; Abstract; Title), is concerned with similar problems as Appellant
and Fernando—namely, that of determining characteristics of available
services/operations (i.e., the recited different respective operations) and
commanding performance of certain operations.
Granqvist discloses (see Fig. 1B) a host, server device 120, that
communicates over a Bluetooth link 124 with a client device 122. After an
advertising period, service discovery procedure, and pairing of the devices, a
read request is sent from the service device to the client device (see Figs. 1B,
3; col. 4, ll. 23–45; col. 4, l. 55–col. 5, l. 21; col. 6, ll. 33–36) to read values
corresponding to available operations, and invoke commands. The messages
of the Bluetooth protocol are sent in frames having data packets and
commands, formatted in the manner shown in Figures 4 and 5 (see col. 8, l.
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14–col. 9, l. 42). Communication circuitry 10 and frame formatter 14 (see
Fig. 6; col. 14, ll. 54–57) operate to communicate using “a request-response
principle” (col. 9, ll. 9) which includes a request from the server device 120
to read a value representing an available operation of the client device 122
(see col. 9, ll. 4–21). Granqvist discloses using control fields of the
Bluetooth communication protocol frames “to transfer commands,
instructions, and/or notifications as how to process” specified data (col. 5, ll.
19–21) (i.e., the performance of an operation). Therefore, Granqvist teaches
or suggests the receipt of “a request to read a value” prior to performing
operationsas recited in claims 1 and 14, and the formatting and “sending the
request” as recited in claim 25.
It would have been obvious then, to use the read request for reading
values from the aerosol delivery device of Fernando to read the values
corresponding to different operations to be performed by the aerosol
delivery device (i.e., the controlled computing device) in order to “enable[]
an application executed in a Bluetooth device to discover services that are
available and to determine characteristics of the available services”
(Granqvist col. 1, ll. 22–24). And, it would have been obvious to modify
Fernando, especially in view of Fernando’s strong suggestion to include
multiple modes of functionality and control of a device with limited circuitry
and small size using the Bluetooth protocol, with Granqvist’s formatted
messages and read requests to control and invoke operations in order to (i)
better utilize the Bluetooth protocol as taught by Granqvist; and (ii) to
reduce the need for processing and memory circuitry on the controlled
device as taught by Fernando.
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Remaining Claims
We note that Fernando and Grandqvist both teach using a Bluetooth
protocol for communication between a server or mobile communication
device and a client or aerosol delivery device, and Granqvist teaches a
memory 20 obviously having memory locations for data inside (see
Granqvist Fig. 6), these prior art references do not teach or suggest the hook
procedure set forth in claims 6 and 18. The Board of Patent Appeals and
Interferences is a review body, rather than a place of initial examination.
We have made a rejection above under 37 C.F.R. § 41.50(b) for the
independent claims. However, we have not reviewed the remaining claims
to the extent necessary to determine whether these claims are also
unpatentable under 35 U.S.C. § 103 over Fernando and Granqvist. We leave
it to the instant Examiner to determine the appropriateness of any further
rejections based on Fernando, Granqvist, and/or other prior art references.8

CONCLUSION
We reverse the Examiner’s obviousness rejections of claims 1–34
under 35 U.S.C. § 103 over the combination of Fernando and Hong; and, we
enter a new ground of rejection under 35 U.S.C. § 103 over Fernando and
Batey, Jr. for claims 1, 14, and 25.
In summary:

8 See e.g., Batey, Jr. et al. (US 7,991,356 B2; issued Aug. 2, 2011);
Anonymous, Nordic Semiconductor, Bluetooth Low Energy Wireless
Technology, Version 4, pp. 1–8 (March 22, 2011).
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Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–34 103 Fernando, Hong 1–34
1, 14, 25 103 Fernando,
Granqvist
1, 14,
25
Overall
Outcome
1–22, 26,
27
1, 14,
25

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same
Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)