Ex Parte Dube et al

Patent Trials and Appeals Board

Feb 21, 2019

14202781 - (D) (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/202,781 03/10/2014
26158 7590 02/25/2019
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Michael Francis Dube
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 1351.2US.C2 6821
EXAMINER
FRANKLIN, JODI COHEN
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
02/25/2019 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
Ex parte MICHAEL FRANCIS DUBE,
DANIEL VERDIN CANTRELL, JOHN-PAUL MUA,
DARRELL EUGENE HOLTON, JR.,
CYNTHIA STEWART STOKES,
and JAMES NEIL FIGLAR
Appeal2018-004529
Application 14/202, 781
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (R.J. Reynolds Tobacco Company) appeals under
35 U.S.C. § 134(a) from the Examiner's rejection of claims 16-35. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The claims are to a smokeless tobacco product. Claim 16 is
illustrative:
Appeal2018-004529
Application 14/202,781
16. A smokeless tobacco product configured for
insertion into the mouth of a user of the product, the tobacco
product comprising a tobacco formulation containing a
particulate tobacco material and at least one encapsulated
component contained within the tobacco formulation, the
encapsulated component being in the form of a plurality of
microcapsules having a diameter of less than about 100 microns
and comprising a rupturable and water-soluble solid outer shell
encapsulating an internal liquid or gel payload, wherein the
tobacco formulation is contained within a water-permeable
pouch, the dry weight of tobacco material in the tobacco
formulation being greater than the weight of the plurality of
microcapsules, and wherein the payload of the microcapsules
comprises one or more components selected from the group
consisting of flavorants, binders, colorants, pH adjusters,
buffering agents, fillers, disintegration aids, humectants,
antioxidants, oral care ingredients, preservatives, and
components derived from herbal or botanical sources.
De Roos
Strickland
The References
US 6,325,859 B 1
US 2005/0244521 Al
The Rejection
Dec. 4, 2001
Nov. 3, 2005
Claims 16-35 stand rejected under 35 U.S.C. § I03(a) over Strickland
in view of De Roos.
OPINION
We affirm the rejection.
The Appellant argues the claims in the following two groups:
1) claims 16-23 and 25-35, and 2) claim 24 (Br. 4--7). We therefore limit
our discussion to one claim in the first group, i.e., claim 16, and claim 24.
Claims 17-23 and 25-35 stand or fall with claim 16. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2012).
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Appeal2018-004529
Application 14/202,781
Claim 16
Strickland discloses a smokeless tobacco product comprising beads
having a liquid center containing a color, sweetener, flavor, or flavor
masking agent in a soluble or insoluble gel encapsulant and having a largest
dimension of at most 5 mm (i1i1225, 227-229, 231 ).
De Roos discloses a smokeless tobacco product comprising beads
having encapsulated flavors, fragrances, vitamins, colorings or other active
ingredients in an essentially water insoluble, heat stable polysaccharide gel
matrix and having a diameter of about 10 to about 5000 µm (col. 3, 11. 57-
60; col. 4, 11. 60-66; col. 5, 11. 3-6, 17-20).
The Appellant asserts that "[i]f one were to combine De Roos with
Strickland, the only result would be motivation regarding the gel bead sizes
for insoluble gels" (Br. 5), and "only the much larger size ranges of
Strickland would be considered for soluble gels" (Br. 6).
That assertion is not well taken in view of Strickland's use of the
same bead size for water soluble and water insoluble gels (i-f 231 ). Also,
Strickland's size range is not much larger than that of De Roos but, rather, is
similar to that of De Roos (Strickland, at most 5 mm; De Roos, about 10 µm
to about 5000 µm ( 5 mm)).
Claim 24
Claim 24 depends from claim 16 and requires that "the outer shell is
water-soluble under conditions of at least about 45 weight percent moisture,
based on the total weight of the smokeless tobacco product."
The Appellant asserts that "there is no basis for concluding that
[Strickland's] reference to 70% water hydrates [(i-f 225)] has any relationship
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Appeal2018-004529
Application 14/202,781
to the subject matter of claim 24, which relates to the environment in which
a water-soluble microcapsule degrades" (Br. 7).
Both the Appellant's outer shell and that of Strickland can be made of
starch, gelatin, sodium alginate or carboxymethylcellulose (Spec. 24:28 -
25:6; Strickland ,r 226). Thus, like the Appellants' bead's outer shell,
Strickland's outer shell can be water soluble under conditions of at least
about 45 weight percent moisture. See In re Papesch, 315 F .2d 3 81, 391
(CCPA 1963) ("From the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing").
For the above reasons we are not persuaded of reversible error in the
rejection.
DECISION
The rejection of claims 16-35 under 35 U.S.C. § 103(a) over
Strickland in view of De Roos is affirmed.
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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