Ex Parte Clarke

Patent Trials and Appeals Board

Feb 1, 2019

13996626 - (D) (P.T.A.B. Feb. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/996,626 08/29/2013
23474 7590 02/05/2019
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
FIRST NAMED INVENTOR
Paul F. Clarke
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.
3700.P0528US 2660
EXAMINER
YAARY,ERIC
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
02/05/2019 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):
DOCKET@FL YNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL F. CLARKE
Appeal2018-002797
Application 13/996,626
Technology Center 1700
Before ROMULO H. DELMENDO, LILAN REN, and JANEE. INGLESE,
Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Primary Examiner's final decision to reject claims 1-3, 5-7, 11-13, and
19-25. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The Appellant identifies the real party in interest as "Filtrona Filter
Products Development Co. Pte. Ltd." (Appeal Brief filed September 27,
2017 ("Appeal Br.") at 1 ).
2 Appeal Br. 3-19; Reply Brief filed January 22, 2018 ("Reply Br.") at 1-3;
Final Office Action entered May 2, 2017 ("Final Act.") at 3-9; Examiner's
Answer entered November 30, 2017 ("Ans.") at 3-14.
Appeal2018-002797
Application 13/996,626
I. BACKGROUND
The subject matter on appeal relates generally to a flavoring insert for
use in tobacco products (Specification filed June 21, 2013 ("Spec."),
Abstract). Representative claim 1 is reproduced from the Claims Appendix
to the Appeal Brief, as follows:
1. A tobacco product package comprising:
a lid hinged to a main body; and
a flavouring insert comprising a substrate and a flavouring
agent, wherein the substrate comprises a sheet of cellulose
acetate material, wherein the flavouring agent comprises
menthol or clove, and wherein the menthol or clove is present in
an amount from 50 to 500 mg per cm3 volume of the substrate;
wherein the flavouring insert is enclosed within the lid.
(Claims Appendix 1 ).
II. REJECTIONS ON APPEAL 3
On appeal, the Examiner maintains several rejections under pre-AIA
35 U.S.C. § I03(a), as follows:
A. Claims 1-3, 5, 7, 11-13, 19, 20, and 25 as unpatentable over
Hodges, 4 Blick et al. 5 ("Blick"), and Ercelebi et al. 6
("Ercelebi");
B. Claims 1-3, 5, 7, 11-13, 19, 20, and 25 as unpatentable over
3 In the Appeal Brief, the Appellant requests rejoinder of claims 16, 18, and
26 (Appeal Br. 18), which appear to have been withdrawn pursuant to a lack
of unity of invention or restriction requirement (Non-Final Office Action
entered November 27, 2015 at 1). That issue, however, does not relate to a
review of a rejection (i.e., an appealable issue under 35 U.S.C. § I34(a)),
and, therefore, we do not address it.
4 WO 2010/097252 Al, published September 2, 2010.
5 WO 2009/092823 Al, published July 30, 2009.
6 US 2011/0232659 Al, published September 29, 2011.
2
Appeal2018-002797
Application 13/996,626
Hodges, Blick, and Luke et al. 7 ("Luke");
C. Claim 6 as unpatentable over Hodges, Blick, either Ercelebi or
Luke, and Hutchens; 8
D. Claims 21-23 as unpatentable over Blank et al. 9 ("Blank"),
Smith et al. 10 ("Smith '156"), and Hodges;
E. Claims 21-23 as unpatentable over Blank, Smith et al. 11
("Smith '790"), and Hodges; and
F. Claim 24 as unpatentable over Blank and either Smith '15 6 or
Smith '790.
(Ans. 3-14; Final Act. 3-9).
III. DISCUSSION
Rejections A--C. The Examiner finds that Hodges describes a
tobacco product package including a pad 34 made of adsorbent paper or
fibrous material impregnated with a flavorant (Ans. 3, 5). The Examiner
acknowledges several differences between Hodges' s package and the
package recited in claim 1----e.g., Hodges does not describe the pad 34 to
comprise a cellulose acetate sheet as required by claim 1 (id. at 3--4, 5---6).
Regarding the cellulose acetate sheet limitation, the Examiner relies on
either Ercelebi or Luke (id. at 4, 6). The Examiner concludes, inter alia, that
one of ordinary skill in the art would have found it obvious to configure
Hodges to include a cellulose acetate material as shown in either Ercelebi or
Luke "to achieve the same, predictable result of absorbing flavorant and
7 US 4,481,954, issued November 13, 1984.
8 US 2009/0288669 Al, published November 26, 2009.
9 US 2,007,632, issued July 9, 1935.
10 US 6,417,156 B 1, issued July 9, 2002.
11 US 6,041,790, issued March 28, 2000.
3
Appeal2018-002797
Application 13/996,626
subsequently flavoring the contents of the package as desired by Hodges"
(id. at 4--5, 6; emphasis added).
The Appellant contends, inter alia, that neither Ercelebi nor Luke
bridges the gap between the claimed subject matter and Hodges because
Ercelebi and Luke do not disclose using cellulose acetate in the context of a
flavoring insert (Appeal Br. 6, 10). The Appellant points out that, instead,
Ercelebi and Luke teach using cellulose acetate as a filtering material or
liner around the filtering material (id.). The Appellant urges that the mere
fact that Ercelebi and Luke describe cellulose acetate as an absorbent
material that filters or allows a substance to pass through is insufficient to
support the Examiner's obviousness conclusion because the references do
not suggest that cellulose acetate would be suitable for releasing a flavoring
agent in the manner as would be required by the flavoring insert recited in
the claims (Reply Br. 2).
We agree with the Appellant. Hodges teaches a pad 34, which "may
be made of an adsorbent paper, card or the like" ( emphasis added) in which
a flavoring agent is adsorbed by impregnating the pad with a liquid that may
comprise a flavoring substance (Hodges 4, 11. 18-21; Fig. 2). Hodges
teaches that when a removable strip on a carrier comprising the pad is
removed, the flavoring substance is released into the tobacco package and
adsorbed by the tobacco products (id. at 2, 11. 6-14 ).
By contrast, Ercelebi teaches absorbent members 32, 34 comprising
cellulose acetate between which a capsule 36 containing an additive that
may be released by squeezing a portion of a cigarette filter containing the
capsule so as to rupture the capsule is disposed (Ercelebi ,r,r 43, 49; Fig. 2).
Ercelebi also teaches a liner 42 made of cellulose acetate, wherein the liner
4
Appeal2018-002797
Application 13/996,626
is provided with a binder coating 43 to render the liner impermeable to the
releasable liquids or vapors from the capsule (id. ,r 51; Fig. 2). Similarly,
Luke merely teaches a cigarette filter plug 22 composed of fibrous cellulose
acetate or polypropylene filtration material 24 wrapped in a highly porous
cellulose acetate paper plugwrap 25 (Luke col. 4, 11. 59---65; Fig. 6).
Thus, although Ercelebi and Luke may suggest that porous cellulose
acetate material permits some flavoring agent to pass through the filter into a
smoker's mouth, the Examiner does not provide sufficient evidence that a
person having ordinary skill in the art would have understood from either
reference that cellulose acetate would be suitable for adsorbing or
impregnating a flavoring agent and releasing it in the manner as would be
required in the context of Hodges' s pad or the flavoring insert as specified in
the Appellant's claims. For this reason, we cannot uphold the Examiner's
stated rejections.
Rejections D and E. Claim 23 reads as follows:
23. A tobacco product flavouring insert comprising a
substrate, a flavouring agent, and a barrier region; wherein the
substrate comprises a cylindrical rod of cellulose acetate,
wherein the barrier region comprises barrier material which is
impermeable to the flavouring agent, wherein the flavouring
agent comprises menthol or clove, and wherein the menthol or
clove is present in an amount from 50 to 500 mg per cm3 volume
of the substrate.
(Claims Appendix 3; emphasis added).
The Examiner finds that Blank describes a tobacco product flavoring
insert in the form of a stick provided with a menthol flavoring agent (Ans.
7). The Examiner acknowledges several differences between Blank's
flavoring insert and the insert recited in claim 23, including a finding that
Blank does not teach a barrier region (id. at 7-8). To resolve this difference,
5
Appeal2018-002797
Application 13/996,626
the Examiner relies on Hodges' s teaching relating to "a barrier to prevent
premature ingress of the liquid flavoring agent from the insert" (id. at 8
(citing Hodges 4, 11. 17-27)). The Examiner concludes that "[i]t would have
been obvious to one of ordinary skill in the art ... to provide [a] barrier
region with the insert of modified Blank for the same reasons" (id.).
According to the Examiner, "[ o ]ne of ordinary skill in the art would have
found it obvious to use any appropriate barrier releasably attached to the
substrate of Blank to prevent premature ingress of the liquid flavoring agent
from the insert as suggested by Hodges" (id. at 14).
The Appellant points out that Hodges teaches a tobacco package
provided with a barrier in the form of a pull strip 32 that is not part of the
pad 34 that contains a flavoring agent (Appeal Br. 14). The Appellant also
argues that the combination proposed by the Examiner involves using a pull
strip and that the Examiner fails to articulate how and why such a pull strip
would be employed in the combination (id.).
We agree with the Appellant that the rejection fails to articulate a
sufficient reason with some rational underpinning to support a conclusion
that a person having ordinary skill in the art would have combined the
references in the manner claimed. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Specifically, Blank teaches sticks, which are made of suitable
absorbent material such as wood, paper, or the like carrying flavoring
ingredients, may be inserted into a package of cigarettes by the user to
provide flavor to the cigarettes (Blank 1, left col., 11. 1-15). According to
Blank, "[ t ]he sticks are made small enough to fit readily into a cigarette
6
Appeal2018-002797
Application 13/996,626
package between the cigarettes" (id. at 1, right col., 11. 15-16; emphasis
added).
Hodges, by contrast, teaches a cigarette pack 1 with a pad 34 provided
with a flavoring agent, as we found above (Hodges Fig. 2). Hodges teaches
that the pad 34 is attached to the inside of a front face 33 of the main body 2
and may include a non-porous membrane to prevent flavorant being
absorbed into the front face 33 (id. at 4, 11. 21-23; Fig. 2). In addition,
Hodges teaches a pull strip 32 disposed on front face 33 between an inner
frame 30 and an outer shell 25 and that its region 32B acts as a barrier to
prevent ingress of the flavoring liquid from the pad 34 into the inner frame
30 when the pull strip 32 is configured as shown in Figures 2 and 3 (id. at 4,
11. 12-14, 25-27; Figs. 2-3).
Other than a conclusory statement, the Examiner does not explain
with any reasonable degree of specificity as to how and why a person having
ordinary skill in the art would have modified Blank' s sticks to include a
barrier region based on Hodges' s teachings, which are provided in the
context of a pad/pull strip combination with barriers as configured in
Hodges. In re NuVasive, Inc., 842 F.3d 1376, 1381-82 (Fed. Cir. 2016)
( conclusory statements insufficient to support obviousness).
Therefore, we cannot uphold Rejections D and E.
Rejection F. Claim 24 recites:
24. A tobacco product package comprising:
a flavouring insert comprising a substrate and a flavouring
agent, wherein the substrate comprises a cylindrical rod of
cellulose acetate, wherein the flavouring agent comprises
menthol or clove, and wherein the menthol or clove is present in
an amount from 50 to 500 mg per cm3 volume of the substrate.
7
Appeal2018-002797
Application 13/996,626
(Claims Appendix 3). Thus, unlike claim 23, claim 24 does not require a
barrier region.
The Appellant argues that "the amount of flavouring specified in
Claim 24 is not the result of mere routine optimization, but leads to an
unexpected and effective flavouring of cigarettes as demonstrated by
menthol yield" (Appeal Br. 18).
We disagree. As the Examiner finds (Ans. 11 ), Blank teaches that
"[a]fter the sticks 12 have been given the desired form and finish, they are
impregnated to the desired extent with the flavoring material" (Blank 1, right
col., 11. 46-48), which is preferably menthol (id. at 2, left col., 11.
49--50). Therefore, a person having ordinary skill in the art would have
understood that the amount of flavoring agent to be impregnated is a
result-effective variable (i.e., a variable that provides flavor to a desired
extent). Given such a finding, a person having ordinary skill in the art
would have arrived at a workable or even optimum range of menthol
amounts, including amounts specified in claim 24, by routine
experimentation. In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed.
Cir. 2012) ("'[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation"' (quoting In re Aller, 220 F.2d 454, 456 (CCPA
1955))).
The Appellant's reliance on Examples 1 and 2 in the Specification as
demonstrating "remarkable and effective menthol yield" (Appeal Br. 8) is
ineffective to establish unexpected results for the reasons given by the
Examiner (Ans. 12-13). No comparison against the closest prior art appears
8
Appeal2018-002797
Application 13/996,626
to have been made. 12 Nor is there any explanation why a person having
ordinary skill in the art would have considered the relied-upon results to
have been expected. 13 Therefore, the relied-upon evidence is insufficient to
overcome the Examiner's prima facie case.
For these reasons, we uphold Rejection F.
IV. SUMMARY
Rejections A through E (claims 1-3, 5-7, 11-13, 19-23, and 25) are
not sustained. Rejection F ( claim 24) is sustained. Therefore, the
Examiner's final decision to reject claims 1-3, 5-7, 11-13, and 19-25 is
affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
12 In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.").
13 In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("The 32--43%
increase in stress-rupture life ... does not represent a 'difference in kind'
that is required to show unexpected results.") (internal citation omitted).
9