Ex Parte Dube et alDownload PDFPatent Trials and Appeals BoardFeb 21, 201914202781 - (D) (P.T.A.B. Feb. 21, 2019) Copy Citation 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). 2 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 3 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 4 Copy with citationCopy as parenthetical citation