BOND STREET MANUFACTURING LLC (a Florida LLC)

Patent Trials and Appeals BoardJan 1, 2021

2020001950 (P.T.A.B. Jan. 1, 2021)

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. 15/403,472 01/11/2017 Joseph Fuisz 20870-141794-US 6863 42798 7590 01/01/2021 FITCH, EVEN, TABIN & FLANNERY, LLP 120 South LaSalle Street, Suite 2100 Chicago, IL 60603-3406 EXAMINER TRAN, THIEN S ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 01/01/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JOSEPH FUISZ and SEAMUS HENRY __________ Appeal 2020-001950 Application 15/403,472 Technology Center 3700 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–9. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION under 35 U.S.C. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Bond Street Manufacturing LLC. Appeal Brief (“Appeal Br.”) 1, filed Oct. 18, 2019. Appeal 2020-001950 Application 15/403,472 2 CLAIMED SUBJECT MATTER The claimed subject matter relates to “tobacco wax, including methods of manufacture, tobacco wax compositions, and the vaporization of tobacco wax for use in a vaporizer-inhalation device.” Spec. 1.2 Claim 1, the sole independent claim on appeal, is representative of the claimed subject matter and recites: 1. A system for a personal vaporizer comprising a receiving chamber and a pod containing a tobacco wax composition including tobacco wax extracted from one or more of tobacco leaf, tobacco stem or tobacco dust, the pod being in contact with the receiving chamber. THE REJECTIONS I. Claim 7 stands rejected under 35 U.S.C. § 112(b) as indefinite. II. Claims 1, 4, and 6–9 stand rejected under 35 U.S.C. § 102(a)(1)/(a)(2) as anticipated by Montgomery (US 2016/0174607 A1, published June 23, 2016) or Ellis (US 2015/0013699 A1, published Jan. 15, 2015). III. Claims 1, 4, and 6–9 stand rejected under 35 U.S.C. § 103 as unpatentable over Montgomery and Ellis. IV. Claims 2 and 5 stand rejected under 35 U.S.C. § 103 as unpatentable over Montgomery or Ellis or Montgomery, Ellis, and Bowen (US 2009/0151717 A1, published June 18, 2009). 2 In its arguments, Appellant appears to refer to the earlier version of the Specification, filed Jan. 11, 2017, rather than the latest version, filed Feb. 6, 2018, which at least differs in page numbering. For consistency, we shall refer to the 2017 version as well. In addition, we refer to the page numbers only because neither the lines on each page of the Specification nor the paragraphs thereof are enumerated. Appeal 2020-001950 Application 15/403,472 3 V. Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable over Montgomery or Ellis or Montgomery, Ellis, and Mironov (US 2016/0120221 A1, published May 5, 2016). ANALYSIS Rejection I – Indefiniteness The Examiner determines that claim 7 is indefinite because claim 7 recites the term “substantially,” but the Specification “does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.” Final Act. 3.3 “Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). “[W]e have rejected the proposition that claims involving terms of degree are inherently indefinite. Thus, ‘a patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement.’” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005). The Specification discloses that “unlike existing heat not burn compositions, applicants have found tobacco wax compositions of the present invention vaporize substantially in their entirety (i.e. substantially without residue).” Spec. 4; see also id. at 9, 16. In this case, Appellant does not need to define the claimed subject matter with mathematical precision 3 Final Office Action (“Final Act.”), dated May 23, 2019. Appeal 2020-001950 Application 15/403,472 4 because claim 7 provides at least some degree of certainty to one of skill in the art when read in the context of the subject matter described in the Specification. Stated differently, claim 7 and the Specification are not required to convey mathematical precision in regard to the amount of vaporization or the amount of residue left behind, only that there is substantial, if not total, vaporization with little, if any, residue remaining. Accordingly, for the above reasons, we do not sustain the Examiner’s rejection of claim 7 as indefinite. Rejections II – V – Anticipation/Obviousness Claim 1 recites “a pod containing a tobacco wax composition including tobacco wax extracted from one or more of tobacco leaf, tobacco stem or tobacco dust.” Appeal Br. Claims App. 1. The Examiner finds that both Montgomery and Ellis teach this limitation. See Final Act. 3–4 (citing Montgomery ¶ 7, Ellis ¶ 26). Appellant contends that “vaporizer ‘juices’, concentrates, waxes, oils, dry tobacco, dry herbs, dry flowers, and in any combination with each other or by themselves” as stated in Montgomery “is not a disclosure of ‘tobacco wax extracted from one or more of tobacco leaf, tobacco stem or tobacco dust.’” Appeal Br. 6 (quoting Montgomery ¶ 7). Appellant further contends that “[t]he word ‘waxes’ is not specific to tobacco wax, ‘dry tobacco’ is not tobacco wax, and even a combination of a wax and dry tobacco is not ‘tobacco wax extracted from one or more of tobacco leaf, tobacco stem or tobacco dust.’” Id. Appellant also contends that “a tobacco leaf extract admixed with natural wax” as described in Ellis “is not ‘tobacco wax extracted from one or more of tobacco leaf, tobacco stem or tobacco dust.’” Appeal Br. 6; see also Appeal 2020-001950 Application 15/403,472 5 id. at 8 (“That is, the ‘tobacco wax’ [of the subject application] is itself the extraction from tobacco, and [is] not a tobacco extract with an admixture of ‘natural wax.’”); Ellis ¶ 26. We agree with Appellant that neither paragraph seven of Montgomery nor paragraph twenty six of Ellis, i.e., the paragraphs of the references cited by the Examiner, explicitly teaches or suggests a wax that is itself extracted from tobacco leaf, tobacco stem, or tobacco dust. See Appeal Br. 4–10; see also Reply Br. 2–64; Kershaw Declaration5 (relied on by Appellant to show that neither Montgomery nor Ellis describes a wax that is extracted from tobacco leaf, tobacco stem, or tobacco dust). Consequently, we reverse the Examiner’s stated rejections of claims 1–9 as anticipated by or as obvious over the cited prior art. See Final Act. 3–11. NEW GROUND OF REJECTION6 Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim 1 under 35 U.S.C. § 103 as unpatentable over Applicant’s Admitted Prior Art (“AAPA”)7 and Montgomery or Ellis. The Specification describes: 4 Reply Brief (“Reply Br.”), filed Jan. 14, 2020. The pages of the Reply Brief are not numbered. We refer to the Reply Brief as if it is enumerated starting from page 1. 5 Declaration of Oliver Kershaw, filed Mar. 15, 2019. 6 Because Appellant’s application was filed after September 16, 2012, the effective date of the amendments to 35 U.S.C. § 103 enacted by the Leahy- Smith America Invents Act (AIA), the AIA version of the statute applies. See AIA, Pub. L. No. 112–29, § 4(e), 125 Stat. 284, 297 (2011). 7 Spec. 1. Appeal 2020-001950 Application 15/403,472 6 In 1926, Samual Amster of Richmond, Kentucky described the extraction of a “wax like substance” from tobacco using a hot water process and then subjecting the resulting liquor to an evaporative step. Despite this extraction, Amster teaches that the (extracted) tobacco “may still be employed for smoking and chewing tobacco.” . . . . In 1936, James Garner of Mount Lebanon, Pennsylvania, described a method to de-nicotinize tobacco, whereby ammonia treated tobacco is subjected to a butane-solvent based extraction method. When the butane is evaporated, “there is left a mass of nicotine and tobacco wax which together may amount to as much as 6-8% by weight of the tobacco used. . . . . Tobacco wax or resin is dark brown in color, burns with the production of acrid fumes, and has a strong odor resembling that of an [‘]old[’] pipe.” The tobacco wax may be used as an insecticide or may be “returned to the residual tobacco leaves and also to untreated tobacco leaves to impart thereto desirable flavors.” Like Amster, Garner teaches that the extracted tobacco is still suitable use in smoking and other tobacco products (US 2,128,043). Spec. 1 (emphases added). Thus, Appellant acknowledges that a system, which includes “a tobacco wax composition including tobacco wax extracted from one or more of tobacco leaf, tobacco stem or tobacco dust,” as recited in claim 1, is well-known for smoking and inhalation purposes (hereinafter “AAPA”).8 AAPA does not disclose that the tobacco wax composition of 8 As discussed above, the Specification discloses that tobacco wax composition vaporizes substantially in its entirety or substantially without residue. See Spec. 4, 9, 16. However, “[p]roducts of identical chemical composition [cannot] have mutually exclusive properties” (In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)) and “[i]t is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable” (In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. Appeal 2020-001950 Application 15/403,472 7 the subject application has been used in a system for a personal vaporizer comprising a receiving chamber and a pod, in which the pod is in contact with the receiving chamber, as claimed. However, both Montgomery and Ellis disclose these missing limitations. In particular, Montgomery discloses a personal vaporizer (vaporizer system 2) comprising a receiving chamber (sleeve 14, heating element 26) and a pod (tank 24), in which the pod is in contact with the receiving chamber. Montgomery ¶¶ 24, 27, Figs. 2–3. Montgomery further discloses that the pod can contain “widely available forms of vaporizer ‘juices’,” waxes, dry tobacco, “and in any combination with each other” for inhalation. Id. ¶¶ 7, 24. Ellis discloses a personal vaporizer (vaporizer 10) comprising a receiving chamber (tubular portion 20) and a pod (top bowl portion 74), in which the pod is in contact with the receiving chamber. Ellis ¶¶ 15–16, 25– 26, Figs. 1, 3. Ellis further discloses that the pod can contain tobacco leaf extract and a natural wax for inhalation. Id. ¶ 26. Thus, it would have been obvious to a skilled artisan to modify AAPA’s inhalation system to include a personal vaporizer comprising a receiving chamber and a pod, in which the pod is in contact with the receiving chamber, as taught by Montgomery or Ellis, for inhalation of a composition and as a matter of simple substitution. Accordingly, we reject claim 1 as unpatentable over AAPA and Montgomery or Ellis.9 1990)). In this case, Appellant does not disclose that a new extraction process is used that leads to a new composition. 9 We leave it to the Examiner to determine the appropriateness of any further course of action concerning claims 2–9 should there be further prosecution of this application. Appeal 2020-001950 Application 15/403,472 8 DECISION For the above reasons, we REVERSE the decision of the Examiner to reject claims 1–9 as anticipated by or as obvious over the cited prior art. We enter a NEW GROUND OF REJECTION of claim 1 under 35 U.S.C. § 103 as unpatentable over AAPA and Montgomery or Ellis. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, [Appellant], within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal 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. The new ground of rejection is binding upon the Examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the Examiner, overcomes the new ground of rejection designated in the decision. Should the Examiner reject the claims, Appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Appeal 2020-001950 Application 15/403,472 9 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Reversed New Ground 7 112(b) Indefiniteness 7 1, 4, 6–9 102(a)(1)/(a)(2) Montgomery or Ellis 1, 4, 6–9 1, 4, 6–9 103 Montgomery, Ellis 1, 4, 6–9 2, 5 103 Montgomery or Ellis or Montgomery, Ellis, Bowen 2, 5 3 103 Montgomery or Ellis or Montgomery, Ellis, Mironov 3 1 103 AAPA, Montgomery or Ellis 1 Overall Outcome 1–9 1 REVERSED; 37 C.F.R. § 41.50(b)