Ex Parte Clarke et al

Patent Trials and Appeals Board

Jun 26, 2019

13701706 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/701,706 01/28/2013
23474 7590 06/28/2019
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
FIRST NAMED INVENTOR
Paul Francis 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.P0524US 7980
EXAMINER
MAYES, DIONNE WALLS
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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 FRANCIS CLARKE and AHMAD F ASHIHUL LISAN
Appeal2018-008259
Application 13/701,706
Technology Center 1700
Before MARK NAGUMO, MONTE T. SQUIRE, and LILAN REN,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1---6, 11, 18-20, and 27-33, which are all of the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed Dec. 3, 2012
("Spec."); Non-Final Office Action dated Nov. 17, 2017 ("Non-Final Act.");
Appeal Brief filed Mar. 22, 2018 ("Br."); and Examiner's Answer dated
May 29, 2018 ("Ans."). There is no reply brief.
2 According to the Appeal Brief (Br. 1 ), Filtrona Filter Products
Development Co. Pte. Ltd. is the real party in interest.
Appeal2018-008259
Application 13/701,706
The Claimed Subject Matter
Appellants' disclosure relates to filters and filter elements for use with
non-filtered smoking articles comprising a wrapper. Spec. ,r,r 1, 5; Abstract.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A stand alone tobacco smoke filter or filter
element for use with a smoking article comprising a
wrapper engaged around a longitudinally extending core
of tobacco smoke filtering material, wherein at least one
end of the wrapper extends beyond an end of the core
around which the wrapper is engaged to define a cavity at
an end of the filter which faces the smoking article in use;
and wherein the wrapper is paper of basis weight from 30
to 80 g/m2; and wherein the smoking article has a
circumference of 16 to 17 mm.
Claims Appendix 1 (key disputed claim language italicized and bolded).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Mantchev
White
Crooks et al. ("Crooks")
Smith et al. ("Smith")
Biggs et al. ("Biggs")
Lecoultre et al. ("Lecoultre")
Tarora ("WO '287")
us 3,064,541
us 5,119,836
us 5,685,323
us 5,724,997
US 6,779,531 Bl
US 7,243,659 Bl
WO 2009/078287 Al
The Rejections
Dec. 01, 1959
June 9, 1992
Nov. 11, 1997
Mar. 10, 1998
Aug. 24, 2004
July 17, 2007
June 25, 2009
On appeal, the Examiner maintains (Ans. 2) the following rejections:
1. Claims 1, 6, 32, and 33 are rejected under pre-AIA 35 U.S.C.
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Application 13/701,706
§ 103(a) as being unpatentable over WO '287 3 in view of Biggs
("Rejection 1 ").
2. Claims 1, 6, 32, and 33 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Lecoultre ("Rejection 2").
3. Claims 1---6, 11, 18, and 19 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Crooks in view of Biggs and
WO '287 ("Rejection 3").
4. Claims 27 and 29 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Crooks in view of Biggs and WO '287,
and further in view of Smith ("Rejection 4").
5. Claim 20 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Crooks in view of Biggs, Mantchev, and
WO '287 ("Rejection 5").
6. Claim 28 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Crooks in view of Biggs, Mantchev, and WO '287, and
further in view of Smith ("Rejection 6").
7. Claim 30 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Crooks in view of Biggs and WO '287, further in view of
White and Smith ("Rejection 7").
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejections based on the fact-finding and reasoning set forth in the Answer
3 For each of Rejections 1 and 3-7, the Examiner refers and cites to Tarora
et al. (US 2010/0242977, published Sept. 30, 2010), which is the U.S. Patent
Application Publication of the WO '287 reference.
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Application 13/701,706
and Non-Final Office Action, which we adopt as our own. We add the
following.
Rejection 1
Appellants argue claims 1, 6, 32, and 33 as a group. Br. 3--4, 6. We
select claim 1 as representative and claims 6, 32, and 33 stand or fall with
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of WO '287 and Biggs
suggests a cigarette satisfying all of the limitations of claim 1 and, thus,
concludes the combination would have rendered claim 1 obvious. Ans. 3--4
(citing WO '287, Abstract, Fig. 3, ,r,r 30 (Table 1), 42, 48, 49; Biggs,
Abstract, 3:12--47 (Example 1)).
Appellants argue that the Examiner's rejection of claim 1 should be
reversed because neither WO '287 nor Biggs discloses "a filter having a
cavity suitable for receiving a tobacco rod wherein inserting the tobacco rod
into the cavity forms a completed cigarette." Br. 4. Appellants contend that
this feature is a structural limitation of the claim and not merely an intended
use limitation, and patentably distinguishes the claim over the cited art. Id.
at 4.
Appellants also argue that the combination of WO '287 and Biggs
does not disclose "a stand-alone filter or filter element" and "neither cited
reference discloses a smoking article that 'has a circumference of 16 to
17 mm,'" as recited in the claim. Id. at 5.
We do not find Appellants' arguments persuasive of reversible error
in the Examiner's rejection based on the fact-finding and reasoning provided
by the Examiner at pages 3--4 and 20-22 of the Answer. On the record
before us, we find that a preponderance of the evidence and sound technical
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reasoning support the Examiner's analysis and determination that the
combination of WO '287 and Biggs suggests all of the limitations of
claim 1, and conclusion that the combination would have rendered the claim
obvious. WO '287, Abstract, Fig. 3, ,r,r 30 (Table 1), 42, 48, 49; Biggs,
Abstract, 3:12--47 (Example 1).
Contrary to what Appellants argue (Br. 4--5), we find that a
preponderance of the evidence does support the Examiner's finding that the
cited art discloses the "stand alone tobacco smoke filter or filter element"
recitation of the claim. In particular, as the Examiner finds (Ans. 20),
WO '287 teaches that the filter element 320 is, indeed, a "stand alone filter
or filter element" after fabrication and just prior to being attached to the
cigarette main body 110. See Tarora, Fig. 3, ,r 49. As the Examiner explains
(Ans. 21 ), the fact that the filter element 320 may at some point be
ultimately attached to the cigarette main body 110 and is intended to
function and be utilized in that attached state, without more, does not
patentably distinguish the claim over the prior art. Indeed, it is well-settled
that the patentability of an apparatus or article of manufacture claim depends
on the claimed structure, not on the use or purpose of that structure, or the
function or result of that structure. See Catalina Mktg. Int 'l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also In re
Danly, 263 F.2d 844,848 (CCPA 1959) ("Claims drawn to an apparatus
must distinguish from the prior art in terms of structure rather than
function.").
A preponderance of the evidence also supports the Examiner's finding
that the cited art discloses the "wherein the smoking article has a
circumference of 16 to 17 mm" recitation of the claim. In particular, as the
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Examiner finds (Ans. 21-22), Biggs explicitly discloses a cigarette
comprising a tobacco core surrounded by a cigarette wrapper having a
circumference of approximately 17 mm, which overlaps the claimed range.
See In re Wertheim, 541 F.2d 257,267 (CCPA 1976) (holding that where
claimed ranges "overlap or lie inside ranges disclosed by the prior art," a
prima facie case of obviousness exists).
As the Examiner explains (Ans. 22), the fact that Biggs discusses that
its wrapped tobacco core can be further circumscribed with a
tobacco-bearing annulus and subsequently wrapped with an outer wrapper
that may increase the overall circumference of the cigarette is merely an
intended use and, without more, does not negate Biggs' disclosure that
cigarettes of approximately 17 mm in circumference were known in the art.
Appellants' argument that neither WO '287 nor Biggs discloses "a
filter having a cavity suitable for receiving a tobacco rod wherein inserting
the tobacco rod into the cavity forms a completed cigarette" (Br. 4) is not
persuasive because, as the Examiner correctly points out (Ans. 21 ), the
phrase "a cavity suitable for receiving a tobacco rod" is not recited in
claim 1 and is merely a statement of intended use. See In re Van Geuns, 988
F.2d 1181, 1184--85 (Fed. Cir. 1993) ("[L]imitations are not to be read into
the claims from the specification.").
Moreover, as the Examiner finds (Ans. 21) and Appellants do not
dispute, the filter WO '287 discloses would be capable of accommodating,
within its recessed cavity filter portion, a tobacco rod having a
circumference of the required size.
Because Appellants have not filed a Reply Brief, the Examiner's
factual findings and analysis stand unrebutted. Absent more, we discern no
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reason to reverse the Examiner's rejection. Cf In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (explaining that, even if the examiner had failed to
make a prima facie case, the Board would not have erred in framing the
issue as one of reversible error because "it has long been the Board's
practice to require an applicant to identify the alleged error in the examiner's
rejections").
Accordingly, we affirm the Examiner's rejection of claims 1, 6, 32,
and 33 under pre-AIA 35 U.S.C. § 103(a) as obvious over the combination
of WO '287 and Biggs.
Reiection 2
Claims l, 6, and 32
Appellants argue claims 1, 6, and 32 as a group. Br. 6. We select
claim 1 as representative and claims 6 and 32 stand or fall with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that Lecoultre teaches or suggests a
cigarette with a recessed filter satisfying all of the limitations of claim 1 and,
thus, concludes the reference would have rendered claim 1 obvious.
Ans. 6-8 (citing Lecoultre, Abstract, Fig. 3, 3:55-58, 4:19-21, 7:4--21).
Appellants assert that the Examiner's rejection of claim 1 should be
reversed because Lecoultre does not disclose a "stand alone tobacco smoke
filter or filter element for use with a smoking article" and "wrapper engaged
around a longitudinally extending core of tobacco smoke filtering material
... to define a cavity at an end of the filter which faces the smoking article
in use" recitations of the claim. Br. 7. Appellants also assert that Lecoultre
does not disclose a "paper of basis weight from 30 to 80 g/m2" (id. at 7) and
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"it is not obvious to modify the Lecoultre et al. '659 patent to result in the
paper" of claim 1 (id. at 8).
We do not find Appellants' arguments persuasive of reversible error
in the Examiner's rejection based on the fact-finding and reasoning provided
by the Examiner at pages 6-8 and 22-24 of the Answer. In particular, we
find that a preponderance of the evidence and sound technical reasoning
support the Examiner's analysis and determination that Lecoultre teaches or
suggests all of the limitations of claim 1, and conclusion that the reference
would have rendered the claim obvious. Lecoultre, Abstract, Fig. 3, 3:55-
58, 4:19-21, 7:4--21.
Appellants' assertions at pages 7-8 of the Appeal Brief are not
persuasive of reversible error because they are conclusory and, without
more, insufficient to rebut or otherwise establish reversible error in the
Examiner's rejection. Attorney argument is not evidence. In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). See also In re Geisler, 116 F.3d 1465,
14 7 0 (Fed. Cir. 1997) ( explaining that mere lawyer's arguments or
conclusory statements, which are unsupported by concrete factual evidence,
are entitled to little probative value).
Moreover, as the Examiner correctly points out (Ans. 22-23),
Appellants' assertions that Lecoultre does not disclose a "stand alone
tobacco smoke filter or filter element for use with a smoking article" and
"wrapper engaged around a longitudinally extending core of tobacco" are
principally the same arguments that Appellants previously presented and we
discussed above in affirming the Examiner's Rejection 1. Compare Br. 4--5,
with Br. 7.
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We, therefore, do not find these contentions persuasive of reversible
error in the Examiner's Rejection 2 for principally the same reasons
discussed above for Rejection 1. In particular, as the Examiner finds
(Ans. 23) and contrary to what Appellants argue, like the WO '287
reference, Lecoultre also discloses a "stand alone filter" ( element 22) after
its fabrication and just prior to being attached to the cigarette main
body 112. Lecoultre, Fig. 3, 8: 16-32. As the Examiner explains (Ans. 23),
the fact that Lecoultre' s filter element 22 may at some point be ultimately
attached to the cigarette main body 112 and is intended to function and be
utilized in that attached state, without more, does not patentably distinguish
claim 1 over the prior art.
Appellants' assertion that Lecoultre does not disclose a "paper of
basis weight from 30 to 80 g/m2" (Br. 7) is equally unpersuasive of
reversible error based on the Examiner's fact-finding and reasoning provided
at pages 23-24 of the Answer, which stand unrebutted. In particular, we
find that a preponderance of the evidence supports the Examiner's analysis
and conclusion that it would have been obvious to one having ordinary skill
in the art to have undergone routine experimentation and arrived upon the
claimed basis weight for the cavity wall after determining such weight to be
optimal in assuring stability of the cavity wall during smoking, which is one
of the goals of Lecoultre. Lecoultre, 3:55-58; see also In re Aller, 220 F.2d
454, 456 (CCPA 1955) (stating "where 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").
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Claim 33
Claim 33 depends from claim 32 and further recites "wherein the
paper is of basis weight of about 50 g/m2." Claims Appendix 4.
Appellants assert that the Examiner's rejection of claim 33 should be
reversed because "Claim 33 defines patentable subject matter" (Br. 8) and
"it clearly is not obvious to modify the Lecoultre ... to result in paper 'of
basis weight of about 50 g/m2. "' We do not find these assertions persuasive
of reversible error in the Examiner's rejection because they are conclusory
and based on attorney argument. De Blauwe, 736 F.2d at 705; Geisler, 116
F.3d at 1470.
Moreover, based on the fact-finding and reasoning provided by the
Examiner at pages 9-10 and 23-24 of the Answer, we find that a
preponderance of the evidence supports the Examiner's determination that it
would have been obvious to one of ordinary skill to have arrived at the
claimed basis weight based on Lecoultre' s teachings and through routine
experimentation, which stand unrebutted by Appellants. Aller, 220 F .2d at
456.
Accordingly, we affirm the Examiner's rejection of claims 1, 6, 32,
and 33 under pre-AIA 35 U.S.C. § 103(a) as obvious over Lecoultre.
Rejection 3
Appellants argue claims 1---6, 11, 18, and 19 as a group. Br. 9. We
select claim 1 as representative and the remaining claims subject to this
rejection stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Crooks, Biggs, and
WO '287 suggests a disposable filter attachment for smoking articles
satisfying all of the limitations of claim 1 and, thus, concludes the
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combination would have rendered claim 1 obvious. Ans. 10-12 (citing
Crooks, Abstract, Figs, 1, 2, 1 :57-62, 4:28--47, 4:36--40, 5:55---6:9 (Example
1); Biggs, Abstract, 3:12--47 (Example 1); WO '287, Abstract, Fig. 3, ,r,r 30
(Table 1 ), 42, 48, 49).
Appellants contend that the Examiner's rejection of claim 1 should be
reversed because Crooks does not disclose the "paper of basis weight from
30 to 80 g/m2" and "wherein the smoking article has a circumference of 16
to 17 mm" recitations of the claim. Br. 9. Appellants also contend "there is
nothing in any of the cited documents which would prompt one of ordinary
skill in the art to select a particular basis weight specifically for a filter
having a circumference in the range of from 16 mm to 17 mm." Id. at 10.
We do not find Appellants' contentions persuasive of reversible error
in the Examiner's rejection based on the fact-finding and reasoning provided
by the Examiner at pages 10-12 and 24--26 of the Answer, which stand
unrebutted. In particular, we find that a preponderance of the evidence and
sound technical reasoning support the Examiner's analysis and
determination that the combination of Crooks, Biggs, and WO '287 suggests
all of the limitations of claim 1, including a "paper of basis weight from 30
to 80 g/m2" and "wherein the smoking article has a circumference of 16 to
17 mm," and the Examiner's conclusion that the combination would have
rendered the claim obvious. Crooks, Abstract, Figs, 1, 2, 1:57-62, 4:28--47,
4:36--40, 5:55---6:9 (Example 1 ); Biggs, Abstract, 3: 12--47 (Example 1 ); WO
'287, Abstract, Fig. 3, ,r,r 30 (Table 1), 42, 48, 49.
Appellants' assertions at pages 9-11 of the Appeal Brief are not
persuasive of reversible error in the Examiner's rejection because they are
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conclusory and based on attorney argument. De Blauwe, 736 F.2d at 705;
Geisler, 116 F.3d at 1470.
Moreover, Appellants' disagreement as to the Examiner's factual
findings, without more, is insufficient to establish reversible error. Cf
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir.
2006) ("[M]ere statements of disagreement ... as to the existence of factual
disputes do not amount to a developed argument.").
Accordingly, we affirm the Examiner's rejection of claims 1---6, 11,
18, and 19 under pre-AIA 35 U.S.C. § 103(a) as obvious over the
combination of Crooks, Biggs, and WO '287.
Rejections 4, 5, 6, and 7
The Examiner's Rejections 4, 5, 6, and 7 (stated above) are all
obviousness rejections based primarily upon the combination of Crooks,
Biggs, and WO '287, which is discussed above for Rejection 3. See Ans. 14,
15, 18, 19.
Appellants, however, do not present any new or additional substantive
arguments in response to these rejections. Rather, Appellants rely on
essentially the same arguments previously presented and discussed above in
response to the Examiner's Rejection 3. See Br. 11 (arguing claims define
patentable subject matter because they "depend from Claim 1" and "Claim 1
defines patentable subject matter as outlined above"), 12-13 (same); see also
id. at 12 (arguing "as set forth above in regard to Claim 1, it is not obvious to
combine the Crooks et al. '323 patent, the Biggs et al. '531 patent and WO
2009/078287"),
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for principally the same reasons discussed above for
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affirming the Examiner's Rejection 3 based on the combination of Crooks,
Biggs, and WO '287, we affirm the Examiner's Rejections 4, 5, 6, and 7.
DECISION
The Examiner's rejections of claims 1---6, 11, 18-20, and 27-33 are
affirmed.
It is ordered that 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).
AFFIRMED
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