Ex Parte Borschke

Patent Trials and Appeals Board

Jan 16, 2019

14794026 - (D) (P.T.A.B. Jan. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/794,026 07/08/2015
26158 7590 01/18/2019
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
AugustJ. Borschke
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
N64138 1080US.l (0034.8) 1074
EXAMINER
YAARY,ERIC
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
01/18/2019 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):
IPDocketing@wbd-us.com
BostonPatents@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte AUGUST J. BORSCHKE
Appeal2018-004224
Application 14/794,026
Technology Center 1700
Before MICHAEL P. COLAIANNI, LILAN REN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-004224
Application 14/794,026
Appellant1 appeals under 35 U.S.C. § 134 the final rejection of claims
1-24. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
Appellant's invention is directed to systems that contain active
ingredients that can be characterized as having a pharmacological effect and
are useful for therapeutic purposes (Spec. 1 :2--4).
Claim 1 is illustrative:
A system for the administration of a therapeutic
composition, the system comprising:
a substrate portion having an upstream end and a
downstream end, the upstream end allowing for passage of
drawn atmospheric air into the substrate and the downstream
end adapted for positioning into a user's mouth for draw upon
the substrate and inhalation of atmospheric air
by the user,
a lozenge portion incorporating a source of active
ingredient in a pharmaceutically acceptable form, the lozenge
portion providing for oral ingestion of the active ingredient,
the lozenge portion and the substrate portion being
physically separate from one another but in contact with each
other, the lozenge being positioned at the downstream end of
the substrate, and
the lozenge and substrate portions being positioned so
that the lozenge portion and a portion of the substrate portion
can be located in the user's mouth during use, to provide for
delivery of active ingredient from the lozenge and drawn air
through the substrate.
1 Appellant is the Applicant, Niconovum USA, Inc., which, according to the
Brief, is the real party in interest. Br. 1.
2
Appeal2018-004224
Application 14/794,026
Appellant appeals the following rejections:
1. Claims 1--4, 7, 11, 14, and 16-24 are rejected under 35 U.S.C. § 103
as unpatentable over Mascarelli (US 5,048,544, iss. Sept. 17, 1991) in
view of Gross (US 5,799,663, iss. Sept. 1, 1998).
2. Claims 5, 6, and 8-10 are rejected under 35 U.S.C. § 103 as
unpatentable over Mascarelli in view of Gross and Smith (US
6,041,790, iss. Mar. 28, 2000).
3. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over
Mascarelli in view Gross, and Folkman (US 2,445,476, iss. July 20,
1948).
4. Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over
Mascarelli in view of Gross, Tucker (US 2013/0192620 Al, pub. Aug.
1, 2013), and Park (US 2009/0139533 Al, pub. June 4, 2009).
5. Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over
Mascarelli in view of Gross, and Klein (US 2003/0146116 Al, pub.
Aug. 7, 2003).
Appellant's arguments focus on the subject matter of independent
claim 1 only (Br. 4--12). Appellant's only arguments regarding rejections
(2) to (5) are that the additional applied references fail to cure the alleged
deficiencies of the combination ofMascarelli and Gross (id. at 12-14).
Therefore, claims 2 to 24 will stand or fall with our analysis of the rejection
of claim 1 under rejection (1 ).
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Appeal2018-004224
Application 14/794,026
FINDINGS OF FACT & ANALYSIS
The Examiner's findings and conclusions with respect to claim 1 are
located on pages 3 to 4 of the Final Action. The Examiner finds that
Mascarelli teaches a system for administering a therapeutic composition that
includes an edible lollipop portion 12 incorporating a source of nicotine
positioned at a downstream end of a handle 14 (i.e., a substrate) (Final Act.
3). The Examiner finds that Mascarelli teaches that the handle portion is
constructed to have the dimensions of a conventional cigarette, but
Mascarelli does not disclose that the upstream end allows the passage of
drawn atmospheric air into the substrate (id. at 4). The Examiner finds that
Gross teaches a nicotine oral delivery device designed to simulate a
conventional cigarette wherein the substrate 12 is a hollow tube having a
plug of permeable material disposed in the tube (id.). The Examiner finds
that Gross teaches placing nicotine containing material 16 at the downstream
end of the device (e.g., the mouthpiece) (id.). The Examiner concludes that
it would have been obvious to configure the substrate of Mascarelli as taught
by Gross in order to simulate accurately the feel of a cigarette so as to
further satisfy the user's need to manipulate a cigarette-like object (id.).
Appellant argues that there is no reason to combine Gross' tubular
substrate with Mascarelli' s lollipop because Mascarelli' s hard lollipop
portion covers the entire end of handle 14 and is closed (Br. 5). Appellant
contends that although Mascarelli and Gross provide ways to provide
nicotine to a user without smoking, each reference achieves this goal in
different ways (id. at 7-8). Appellant contends that Mascarelli's and Gross'
systems are different such that certain features that are relevant to one design
are not relevant to the other (id. at 8). Appellant argues that Mascarelli's
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Appeal2018-004224
Application 14/794,026
lollipop structure requires a closed end to achieve the desired sucking by the
user (Br. 8). Appellant argues that replacing Mascarelli's handle with a
tubular substrate would require completely altering the physical structure of
the hard lozenge part so as to provide the ability to draw air through the
entire unit thereby frustrating Mascarelli's purpose as a lollipop (id. at 9).
Appellant contends that one of ordinary skill in the art would have
understood that Mascarelli' s disclosed lollipops, in the traditional sense,
allow for complete suction between the lozenge portion and the user's oral
cavity (id. at 11 ). Appellant contends that the Examiner engaged in
impermissible hindsight in concluding that one of ordinary skill in the art
would have combined the teachings of Mascarelli and Gross (id. at 12).
The Examiner correctly finds that Appellant's arguments regarding
Mascarelli's lollipop requiring complete suction are based on mere
conjecture (Ans. 10). Appellant does not direct us to any portion of
Mascarelli which discloses that the lozenge portion must be solid for the
lollipop to function. The Examiner finds that a lollipop with a hole through
it can still function as a lollipop (id.). Appellant does not dispute this
finding (No Reply Brief filed). Appellant has not shown that modifying
Mascarelli to include a tubular handle with a hole in the lozenge portion
would frustrate Mascarelli's purpose (i.e., a cigarette substitute that fulfills
the psychological and physical (nicotine) requirement of a smoker)
(Mascarelli, col. 2, 11. 25-30).
The Examiner provides a reasoned analysis based upon the teachings
of Gross as to why one of ordinary skill in the art would have used a tubular
substrate in Mascarelli's cigarette substitute (Final Act. 3--4). Specifically,
the Examiner finds that one of ordinary skill in the art would have
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Appeal2018-004224
Application 14/794,026
configured Mascarelli' s cigarette substitute to use a tubular substrate to
fulfill the psychological needs of the smoker by allowing the user to draw on
the cigarette substitute and also providing the smoker's physical need for
nicotine (Final Act. 4). The Examiner's reasoning is based upon the
teachings of the references, not impermissible hindsight. Appellant's
arguments do not convince us of reversible error in the Examiner's rejection.
On this record, we affirm the Examiner's§ 103 rejections of record.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
ORDER
AFFIRMED
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