Ex Parte Clark et al

Patent Trial and Appeal Board

Apr 12, 2016

13280120 (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/280, 120 10/24/2011 Melissa Ann Clark
26158 7590 04/14/2016
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
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.
R60999 1180.7 (0297.1) 4561
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
04/14/2016 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@WCSR. COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MELISSA ANN CLARK, SHARON PITTS
DUNLAP, and CHANDRA KUMAR BANERJEE
Appeal2014-008665
Application 13/280, 120
Technology Center 1700
Before: PETER F. KRATZ, WESLEY B. DERRICK, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1-5, 10-20, and 22-25. 3 We have jurisdiction under 35
U.S.C. § 6.
1 In our opinion below, we refer to the Final Office Action appealed from,
filed September 13, 2013 (Final Act.), the Appeal Brief filed April 14, 2014
(Appeal Br.), the Examiner's Answer filed May 5, 2014 (Ans.), and the
Reply Brief filed July 22, 2013 (Reply Br.).
2 Appellants identify the real party in interest as the R.J. Reynolds Tobacco
Company, the assignee of the subject patent application. Appeal Br. 1.
3 "Claim 21 is objected to as being dependent on a rejected base claim, but
would be allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claim." Final Act. 3.
Appeal2014-008665
Application 13/280, 120
We AFFIRM.
STATEMENT OF CASE
The claims are directed to a filtered cigarette incorporating an
adsorbent material and "at least one breakable capsule positioned in the
mouth end section of the filter material." Spec. 5, 11. 11-13. The breakable
capsule includes a payload that may include flavoring agents and/or diluting
agents. Id. at 11. 13-15. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. (Original) A cigarette comprising a tobacco rod and a filter
element connected to the tobacco rod, said filter element having
an end proximal to the tobacco rod and an end distal from the
tobacco rod, wherein said filter element comprises:
at least one breakable capsule positioned within a
compartment distal from the tobacco rod, the at least one
breakable capsule comprising an outer shell and an internal
payload, the internal payload comprising a compound capable of
changing the nature or character of mainstream smoke drawn
through the filter element; and
an adsorbent material positioned between the at least one
breakable capsule and the tobacco rod such that the breakable
capsule is positioned downstream from the adsorbent material.
Claims Appendix at Appeal Br. 16.
REJECTIONS
The Examiner made the following rejections:
A. Claims 1-3, 5, 11-20, 22, and 25 stand rejected under 35
U.S.C §103(a) as being unpatentable over Jupe et al.4 in
4 Jupe et al., WO 02/069745 Al, published September 12, 2002 (hereinafter
"Jupe").
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Application 13/280, 120
view of Tateno et al. 5 and applicant's admitted prior art. 6
Final Act. 5.
B. Claims 4, 10, and 24 stand rejected under 35 U.S.C
§103(a) as being unpatentable over Jupe et al. in view of
Tateno, and Mane Aromatic Flavors (as applied to claim 1
above) and further in view of Leake et al. 7 Id. at 7.
Appellants provide no substantive argument as to the separate
patentability of claims 2-5, 10-20, and 22-25. Appeal Br. 6-14. And,
while Appellants seek review of both Rejections A and B, Appellants do not
provide additional substantive arguments directed to Rejection B over what
is argued for Rejection A. See id. We therefore focus our discussion on the
rejection of claim 1 as unpatentable over Jupe, Tateno and Mane Aromatic
Flavors (Rejection A) to resolve the issues on appeal.
OPINION
The Examiner rejects claims 1-3, 5, 11-20, 22, and 25 as being
unpatentable over Jupe in view of Tateno and applicant's admitted prior art.
Final Act. 5. The Examiner finds that "Jupe et al. disclose a multi-segment
cigarette filter comprising a plug-space-plug arrangement consisting of a
fibrous tow filter adjacent to the tobacco rod followed by an adsorbent bed
of activated carbon, followed by a mouth end fibrous tow filter segment
5 Tateno et al., US 4,889,144, issued December 26, 1989 (hereinafter
"Tateno").
6 Appellants' description of "admitted prior art" appears at page 23 of the
Specification (hereinafter "Mane Aromatic Flavors"). Both the Examiner
and Appellants also refer to Mane et al., US 7,744,922 B2, issued June 29,
2010 (hereinafter "Mane").
7 Leake et al., US 3,428,049, issued February 18, 1969 (hereinafter
"Leake").
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Application 13/280, 120
containing a flavor releasing component." Id. (internal citations omitted).
The Examiner also finds that while Jupe teaches a "flavor bearing ribbon or
thread" as the flavor releasing component within a filter segment, Tateno
discloses "ruptureable capsules" within the filter segment. Id.
There is no dispute concerning the Examiner's findings above.
Rather, Appellants otherwise contend the Examiner has failed to establish a
prima facie case of obviousness and proffer several arguments, none of
which persuade us the Examiner committed reversible error.
First, Appellants argue that one skilled in the art would not be
motivated to modify the teachings of Jupe with Tateno. Appeal Br. 6.
According to Appellants, there is no reason to combine Jupe and Tateno
because (1) the combination makes Jupe unsatisfactory for its intended
purpose and therefore teaches away; (2) the combination changes the
principle of operation of Jupe; and (3) there is no reasonable expectation of
success in the combination. Appeal Br. 6-10.
Jupe teaches smoking articles, such as cigarettes, having a multi-
component or segmented filters. See Jupe 1 and 4. The filter includes an
adsorbent material which preferably includes a flavor element. Id. at 4. The
filter also includes a flavor-releasing ribbon or yam. Id. The combination of
the flavor element in the adsorbent material and the flavor-releasing ribbon
"contribute[s] a flavor note throughout all puffs of a smoking .... Flavor
delivery is therefore balanced and consistent throughout the entire smoking
process." Id.; see also id. at 17 ("the filter segments operate together to
release flavor into the smoke stream and both sources of flavor provide
balance to the aromas and taste of the mainstream smoke throughout a
smoking.").
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Application 13/280, 120
Tateno also teaches a segmented filter for a smoking article, like a
cigarette. See Tateno, col. 1, 1. 63---col. 2, 1. 2. The filter has a hollow space
which contains flavor-sealed particles, or microcapsules. Id. at col. 2, 11. 14--
19. These microcapsules contain a flavor agent (and diluent) which may be
crushed, by exerting pressure between a thumb and forefinger, to release
flavor into the smoke stream. Id. at col. 2, 11. 21-29; col. 3, 11. 45-50. The
user may also optionally elect to refrain from breaking the flavor-containing
capsules and "enjoy only the original flavor of the tobacco ... [i]n other
words, a tobacco smoking filter according to the present invention offers a
smoker two alternative ways of enjoying a single cigarette." Id. at col. 3, 11.
59---65.
Appellants argue that because the purpose of Jupe is to provide
balanced delivery throughout the entire smoking process by using a
combination of two flavor sources-a flavored adsorbent material and a
flavor ribbon-modifying Jupe to include the flavor-filled microcapsules of
Tateno, would render the Jupe filter unsatisfactory for its intended purpose.
Appeal Br. 6-9. And further, because Jupe prefers continuous flavor
delivery and notes that interruptions in delivery is undesirable, Jupe teaches
away from a system like the instant invention with optional delivery of
flavor. Id. at 9.
The Examiner finds that Jupe "expressly disclose[ s] an embodiment
with no flavor in the adsorbent and a flavor releasing segment downstream."
Final Act. 3; Ans. 5---6. Therefore, observes the Examiner, Jupe expressly
discloses "an embodiment with an adsorbent section without flavor would
lead one of ordinary skill to understand that flavored adsorbents are not
required for the operability of Jupe et al." Final Act. 2; Ans. 6.
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Application 13/280, 120
Like the Examiner, we find that the combination of Jupe and Tateno
does not frustrate the purpose of Jupe. We agree that one advantage
disclosed by Jupe8 is to provide "a balanced, consistent delivery of tastes and
aromas throughout a smoking," through use of a flavor ribbon and a flavor-
bearing adsorbent material in combination. Jupe 9. According to Jupe, it is
this combination that achieves the desired result. Specifically, Jupe explains
that "the filter segments operate together to release flavor into the smoke
stream and both sources of flavor provide balance to the aromas and taste of
the mainstream smoke throughout a smoking." Id. at 17 (emphasis added).
We find also, however, that Jupe discloses alternate embodiments that do not
require the flavor-bearing adsorbent material-a requisite feature to provide
balanced flavor delivery. Id. at 4, 8, and compare claim 1 with claim 2.
Therefore-and contrary to Appellants' contentions---even Jupe does not
require a balanced and consistent delivery of flavor throughout the entire
smoking process.
Furthermore, Tateno does not teach against continued delivery of
flavor. Rather, Tateno indicates that continued flavor release may be
obtained through sequential breaking of the flavor capsules. Tateno explains
that
Then, the middle portion of the filter was slightly twisted with a
thumb and a finger to destruct flavor-sealed capsules 3. When
the cigarette was smoked after this action, a light flavor of
menthol was sensed. After twisting the filter still further, a strong
flavor of menthol was sensed during smoking the cigarette.
Tateno, col. 5, 11. 3-8 (emphasis added). Thus, the recited combination does
not make Jupe unsatisfactory for its intended purpose.
8 Jupe also teaches the importance of ventilation. See e.g., Jupe 5 and 10.
6
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Application 13/280, 120
Moreover, we find that Jupe's preference for delivery of flavor in a
balanced and consistent manner is not a teaching away. Jupe also teaches
use of flavor-free adsorbent materials. Galderma Labs., L.P., v. Tolmar,
Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)("A reference does not teach away ..
. if it merely expresses a general preference for an alternative .... "); In re
Fulton, 391 F. 3d 1195, 1201 (Fed. Cir. 2004)( "The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed .... "). And,
Appellants have not pointed to any teaching in Jupe or elsewhere that
criticizes, discredits or discourages a combination of Jupe and Tateno. In re
Fulton, 391 F. 3d at 1201.
Appellants also maintain that if the capsule of Tateno is substituted
for the ribbon of Jupe, then delivery of the flavor is "optional" and not
constant as in Jupe. Appeal Br. 10. Therefore, "Jupe discloses a different
principle of operation than the claimed embodiments of the present
invention and/or those disclosed in Tateno." Id.
In response, the Examiner explains that "the fact that applicant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art, cannot be the basis for patentability when the
differences would otherwise be obvious." Ans. 6. The Examiner also finds
that one skilled in the art at the time of the invention would have reason to
substitute the flavored microcapsule of Tateno with the flavored ribbon of
Jupe because "[ d]oing so would have extended storage life of the cigarette of
Jupe et al. as flavors contained in the capsules are generally more stable than
flavors adsorbed on fibers (see discussion by Tateno et al., col. 1, 10-51)."
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Application 13/280, 120
Final Act. 6; Ans. 6. Thus, "[i]t would have been obvious to one of ordinary
skill to apply this teaching to Jupe et al. to prevent loss of flavor." Ans. 7.
We agree with the Examiner and adopt the Examiner's findings as our
own. We note too that the test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference. Rather, the test is whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCP A 1981 ). One of ordinary skill can use his or her ordinary skill,
creativity, and common sense to make the necessary adjustments and further
modifications to result in a properly functioning device. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)("a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ"). And, "if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill." See id. at 417. We conclude
that the skilled artisan would have found the Appellants' invention obvious
in light of the combined teachings of Jupe and Tateno.
Appellants also argue that there is no reasonable expectation "that the
modified cigarette proposed in the rejections would function successfully as
intended in Jupe." Appeal Br. 10 and Reply Br. 2. In addition, Appellants
criticize the Examiner as "disregarding Appellants arguments." Reply Br. 2.
Appellants' assertion, however, provide little reasoning separate from the
"unsatisfactory for its intended purpose" argument already addressed by the
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Application 13/280, 120
Examiner. Appeal Br. 10 and Reply Br. 2. Therefore, Appellants'
contention does not persuade us of reversible error by the Examiner.
Second, Appellants argue that one of ordinary skill in the art would
not be motivated to combine Mane Aromatic Flavors with Tateno. Appeal
Br. 11. Specifically, Appellants contend that only through impermissible
hindsight could a person skilled in the art be led to the combination of Mane
Aromatic Flavors and Tateno and further that there is no reasonable
expectation of success in the combination. Id. at 11-14.
We find that Mane Aromatic Flavors is unnecessary to resolve the
issues on appeal. The Examiner states that he uses Mane Aromatic Flavors,
in relevant part, because Tateno does not expressly disclose a capsule with
"an outer shell and an internal payload" according to claim 1. Final Act. 6.
However, the Examiner also finds that Tateno teaches use of capsules and
microcapsules to contain flavoring agents used in cigarette filters. Final Act.
6, 7; Tateno col. 2, 11. 14--19. And, Tateno suggests use of capsules that
have an outer shell and contain an internal payload. See id. at Examples 1
and 5. For example, in one embodiment the capsules of Tateno are prepared
by dissolving solid additives in a dispersion and then
[t]he dispersion solution is then slowly dropped through a nozzle
(front end inner diameter 0. 5 mm, outer diameter 1 mm) into 100
parts by weight of hardener solution (aqueous solution of
calcium chloride having a concentration of 1 % by weight) that
has been prepared separately in advance and the drops of solution
is treated in the hardener solution for 5 minutes to obtain
spherical gel particles having a diameter of about 2.5 mm. Each
of the obtained gel particles contains the flavor (L-menthol) that
has been added.
Id. at col. 4, 11. 31--40 (emphasis added)( discussing Example 1 ); see also id.
at col. 6, 11. 37---68 (discussing Example 5).
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The coating has the effect to sealedly encapsulate the L-menthol
within the gel particle to form a L-menthol sealed capsule.
Id. at col. 4, 11. 46-49 (emphasis added).
Because we conclude that the claimed subject matter would have been
obvious to the skilled artisan in light of the combination of Jupe and Tateno
alone, we need not reach the issues raised by Appellants with respect to
Mane Aromatic Flavors. Accordingly, we do not find harmful error in the
combination including Mane Aromatic Flavors.
CONCLUSION
The Examiner did not reversibly err in rejecting claims 1-5, 10-20,
and 22-25 as unpatentable over Jupe and in view of Tateno.
DECISION
For the above reasons, the Examiner's rejection of claims 1-5, 10-20,
and 22-25 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)(l )(iv) (2009).
AFFIRMED
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