Crystal Byrd et al.

Patent Trials and Appeals BoardApr 19, 2021

2020003368 (P.T.A.B. Apr. 19, 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. 12/949,361 11/18/2010 Crystal Dawn Hege Byrd R60999 1830.1 (0174.6) 5674 26158 7590 04/19/2021 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER NGUYEN, PHU HOANG ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 04/19/2021 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 CRYSTAL DAWN HEGE BYRD, WILLIAM MONROE COLEMAN III, MICHAEL FRANCIS DUBE, ANTHONY RICHARD GERARDI, ERIC TAYLOR HUNT, DARRELL EUGENE HOLTON JR., CHARLES BRADFORD RHOADES JR., JACK GRAY FLINCHUM JR., DWAYNE WILLIAM BEESON, and JEREMY BARRETT MABE Appeal 2020-003368 Application 12/949,361 Technology Center 1700 Before TERRY J. OWENS, CATHERINE Q. TIMM, and JENNIFER R. GUPTA, Administrative Patent Judges. Per curiam. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1, 4–6, 8, and 28. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as R.J. Reynolds Tobacco Company (Appeal Br. 1). Appeal 2020-003368 Application 12/949,361 2 CLAIMED SUBJECT MATTER The claims are directed to a fire-cured tobacco extract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A tobacco product comprising a flavorful tobacco composition in the form of an aqueous extract of a fire-cured tobacco material, wherein the extract exhibits a smoky aroma, flavor, or both aroma and flavor associated with fire-cured tobacco and a reduced benzo[a]pyrene concentration as compared to an unextracted fire-cured tobacco material, wherein the tobacco product is a smokeless tobacco product configured for insertion into the mouth of a user, and wherein the aqueous extract is in combination with a non-tobacco plant material or a shredded or particulate tobacco material other than fire-cured tobacco material. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Shelar US 4,819,668 Apr. 11, 1989 White US 5,387,416 Feb. 7, 1995 Murphy US 9,022,040 B2 May 5, 2015 McGrath US 2005/0279374 A1 Dec. 22, 2005 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 6, 8, 28 103(a) White, Shelar, Murphy 4, 5 103(a) White, Shelar, Murphy, McGrath Appeal 2020-003368 Application 12/949,361 3 OPINION The Appellant argues the claims in the following groups: 1) claim 1 and the claims depending therefrom; and 2) claims 4 and 5 (Appeal Br. 3– 17). We therefore limit our discussion to one claim in the first group, i.e., claim 1, and one claim in the second group, i.e., claim 5. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Claim 1 White discloses an extract from a smokeless tobacco that can be Shelar’s dark fired tobacco (White, col. 1, ll. 20–21, 50–51, 61–64; Shelar, col. 1, ll. 46–50). The extract includes flavorful components from the tobacco and lacks significant amounts of water insoluble components (col. 2, ll. 20–21, 29–31). Murphy teaches that benzo[a]pyrene is water insoluble (Table 2). White exemplifies the extract as formed at ambient temperature with water as a solvent in a weight ratio of solvent to tobacco of about 8.3:1 (about one gallon of water per pound of tobacco) (col. 4, ll. 50–55). The Appellant argues that because White discloses that the tobacco component can be in forms other than an extract, such as a powder or fines, and White’s only examples of an extract are flue-cured Burley, Maryland, and Oriental tobaccos, White provides insufficient teaching to have led one of ordinary skill in the art to an extract of Shelar’s fire-cured tobacco (Appeal Br. 5–6). White is not limited to its examples. See In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982); In re Mills, 470 F.2d 649, 651 (CCPA 1972). Instead, all disclosures therein must be evaluated for what they would have fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d 961, 965 (CCPA 1966). The fact that multiple tobacco component forms are Appeal 2020-003368 Application 12/949,361 4 disclosed would not have made any of them less obvious, particularly where, as here, the extract recited in the Appellants’ claim is used for the identical purpose taught by White. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839, 841 (CCPA 1964). The Appellant argues that Shelar does not disclose that the fire-cured tobacco has any particular characteristics other than the desirable taste characteristic attributed to all of the disclosed tobaccos (col. 2, ll. 14–16), and that, therefore, White and Shelar would not have guided one of ordinary skill in the art to a fire-cured tobacco extract having a smoky aroma/flavor (Appeal Br. 6–7). The Appellant further argues that White does not teach that the mild extraction techniques used therein would selectively extract fire-cured tobacco components having desirable sensory characteristics while not extracting benzo[a]pyrene (Appeal Br. 8). The Appellant’s extraction is carried out at a temperature that can be room temperature using intimate contact between tobacco and a solvent that can be water at a solvent to tobacco weight ratio of about 2:1 to about 20:1 (Spec. 10: 13–15, 23–24; 11: 6–8). White’s exemplified corresponding conditions are similar: mechanical agitation, ambient temperature, and water solvent at a solvent to tobacco weight ratio of about 8.3:1 (1 gallon of water per pound of tobacco) (col. 4, ll. 50–55). White indicates that the extract contains desirable flavorful components but lacks significant amounts of water insoluble components,2 and White’s use of the same mild temperature as the Appellant (room or ambient temperature) at the same solvent to tobacco ratio indicates that White’s extraction can produce an extract with 2 Murphy (Table 2) shows that benzo[a]pyrene is water insoluble. Appeal 2020-003368 Application 12/949,361 5 the recited characteristics, including a smoky aroma and/or flavor and a reduced content of benzo[a]pyrene (col. 1, ll. 54–56; col. 2, ll. 20–21, 29–31; col. 4, ll. 50–55). The Appellant argues that the statement in the Mabe declaration that a fire-cured tobacco extract having desirable, distinctive sensory elements of fire-cured tobacco but with a reduced benzo[a]pyrene content is surprising (¶ 6) and that the Mabe declaration shows unexpected results (¶ 7) (Appeal Br. 11–15). That argument is not well taken because the Appellant has not provided a side-by-side comparison, commensurate in scope with the claims, of the claimed invention with the closest prior art and explained why the results would have been unexpected by one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Claim 5 Claim 5 depends from claim 1 and requires that “the concentration of benzo[a]pyrene in the extract of a fire-cured tobacco material is no more than about 5 ppb.” The Appellant argues there is insufficient basis to conclude the present invention would have been obvious to a person of ordinary skill in the art based on the combination of White and Shelar, as evidenced by Murphy with McGrath (Appeal Br. 15–17). Appeal 2020-003368 Application 12/949,361 6 As pointed out above, the prior art indicates that White’s extraction can produce an extract having the recited characteristics, including no more benzo[a]pyrene than the Appellant’s extract, such as about 5 ppb.3 CONCLUSION The Examiner’s decision to reject claims 1, 4–6, 8, and 28 is AFFIRMED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6, 8, 28 103(a) White, Shelar, Murphy 1, 6, 8, 28 4, 5 103(a) White, Shelar, Murphy, McGrath 4, 5 Overall Outcome 1, 4–6, 8, 28 TIME FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 3 A discussion of McGrath is not necessary to our decision.