Ex Parte Dunlap et alDownload PDFPatent Trial and Appeal BoardAug 27, 201411625000 (P.T.A.B. Aug. 27, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHARON PITTS DUNLAP, SCOTT WILLIAM FOOR, DANIEL VERDIN CANTRELL, JERRY WAYNE MARSHALL, DWAYNE WILLIAM BEESON, SUSAN MARLENE ADAMS, ALVARO GONZALEZ-PARRA, DAVID NEIL MCCLANAHAN, and TIMOTHY BRIAN NESTOR1 ____________ Appeal 2013-000513 Application 11/625,000 Technology Center 1700 ____________ Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1–31 under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is R.J. Reynolds Tobacco Company. Appeal Br. 1. Appeal 2013-000513 Application 11/625,000 2 STATEMENT OF CASE Introduction Appellants’ invention relates to smoking articles including a tobacco rod comprising a smokable filler material contained within an outer wrapping material with one or more inner wrapping strips between the tobacco rod and outer wrapping material and a filter element. Abstract. These smoking articles’ smokable filler material is at least 45% by weight flue-cured tobacco. Id. The inner wrapping strips include a burley tobacco. Id. The filter element includes at least one fibrous tow section, a general absorbent, and an ion exchange resin. Id. Independent claim 1 is directed to such a smoking article wherein the “benzo[a]pyrene content of mainstream smoke produced therefrom is reduced compared to a control cigarette” that does not have inner wrapping strips. Independent claim 29 contains at least 50% by weight flue-cured tobacco and a filter formed by a section of fibrous tow filter material, a granular mixture of general absorbent material and an ion exchange resin, and another section of fibrous tow filter material, arranged in that order at an end of the smoking article. Dependent claims add further limitations including, inter alia, particular characteristics of the ion exchange resin, general absorbent material, and tobacco filler, as well as characteristics of further components added to the smokable filler material. Claim 1 is representative of the invention and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A cigarette comprising: (a) a tobacco rod comprising a smokable filler material contained within a circumscribing outer wrapping material, wherein the smokable filler Appeal 2013-000513 Application 11/625,000 3 material comprises at least about 45% by weight flue-cured tobacco based on the total dry weight of the smokable filler material; (b) one or more inner wrapping strips positioned between said tobacco rod and said outer wrapping material and extending longitudinally along said tobacco rod, said inner wrapping strips comprising a tobacco material, said tobacco material being predominately burley tobacco; and (c) 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 fibrous tow section of filter material, a general adsorbent, and an ion exchange resin, and wherein, when the cigarette is smoked, the benzo[a]pyrene content of mainstream smoke produced therefrom is reduced as compared to a control cigarette that does not comprise inner wrapping strips. Applied Prior Art The Examiner relies on the following prior art in rejecting the claims: Teng US 4,516,590 May 14, 1985 White US 4,534,372 Aug. 13, 1985 Tateno et al. US 4,889,144 Dec. 26, 1989 Dominguez et al. US 6,730,832 B1 May 4, 2004 Figlar US 2004/0237984 A1 Dec. 2, 2004 Kunz US 2005/0034737 A1 Feb. 17, 2005 Mua et al. US 2005/0039767 A1 Feb. 24, 2005 Crooks et al. US 2005/0066984 A1 Mar. 31, 2005 Inagaki et al. US 2005/0145260 A1 July 7, 2005 35 U.S.C. § 103 Rejections The Examiner rejects claims 1–31 under 35 U.S.C. § 103(a) as unpatentable as follows: I. Claims 1–6, 10–16, 19–23, and 29 over Mua in view of Figlar and further view of Teng and Inagaki. Ans. 5–8. Appeal 2013-000513 Application 11/625,000 4 II. Claims 8 and 9 over Mua in view of Figlar, Teng, and Inagaki, and further in view of Kunz. Id. at 8. III. Claim 7 over Mua in view of Figlar, Teng, and Inagaki, and further in view of Crooks. Id. at 8–9. IV. Claims 17 and 18 over Mua in view of Figlar, Teng, and Inagaki, and further in view of Dominguez. Id. at 9. V. Claims 26–28 over Mua in view of Figlar, Teng, and Inagaki, and further view of White. Id. at 9–10. VI. Claims 24, 25, 30, and 31 over Mua in view of Figlar, Teng, and Inagaki, and further view of Tateno. Id. at 10–11. ANALYSIS We have reviewed the Examiner’s rejections under 35 U.S.C. § 103(a) in light of arguments advanced by the Appellants in their Appeal and Reply Briefs, but are not persuaded the Examiner erred reversibly in concluding the claims are unpatentable.2 The Examiner finds Mua discloses a cigarette according to claim 13 except that it does not expressly disclose: (i) the composition of the smokable filler material includes 45% flue-cured tobacco; (ii) that the filter 2 Rather than reiterate all arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed May 8, 2012), the Answer (mailed July 27, 2012), and the Reply Brief (filed September 27, 2012) for the respective details. We have considered in this decision only those arguments Appellants actually raised in their Briefs. Any other arguments Appellants could have made but chose not to make in their Briefs are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii). 3 Appellants argue the claims subject to Rejection I as a group. See generally, App. Br. 9–27. Accordingly, we focus on claim 1. Appeal 2013-000513 Application 11/625,000 5 element comprises a fibrous tow section of filter material and an ion exchange resin; and (iii) that the level of benzo[a]pyrene produced is reduced when the cigarette is smoked. Ans. 5–6. With respect to the composition of the smokable filler material, the Examiner finds Teng teaches that a “typical blended tobacco” for smoking articles contains 40 to 75% flue-cured tobacco, which overlaps with the range recited in independent claim 1. Ans. 5 (citing Teng col. 4, ll. 24–28). The Examiner determines it would have been obvious to one of ordinary skill to have used a blended tobacco containing flue-cured tobacco in the amounts claimed as the smokable filler material in Mua’s cigarette given Mua’s disclosure that the inventive cigarette “incorporates a standard column of tobacco” (Mua ¶ 22). Id. at 5. The Examiner relies on Figlar for a teaching of a filter element as claimed. See Ans. 6. Figlar discloses “[a] cigarette filter that includes a multiple section filter which reduces the level of predetermined smoke constituents.” Figlar, Abstract. The Examiner finds Figlar teaches the filter element can be cellulose acetate tow with a general absorbent, preferably activated carbon, and with an “anion exchange resin for removal of smoke acids and aldehydes.” Ans. 6 (citing Figlar ¶¶ 3–4, 7). The Examiner determines it would have been obvious to one of ordinary skill to use a filter element as taught by Figlar in Mua’s cigarette to further remove unwanted substances from smoke. Id. Appellants do not dispute the Examiner’s findings with respect to Figlar, or motivation to modify Mua based on Figlar. See generally, App. Br. 10–20. Appeal 2013-000513 Application 11/625,000 6 Appellants contend the Examiner’s fact finding and reasoning is insufficient to support a prima facie case of obviousness. See App. Br. 10– 20. Appellants argue the relied-upon disclosure in Teng appears in a list of definitions of terms and “[l]ooking at Teng in its entirety, one of skill in the art [would] have [had] no motivation to pluck this isolated defined term out of Teng and combine it with Mua as alleged by the Examiner.” App. Br. 12–13. We do not agree with Appellants’ contention that one of ordinary skill in the art would have understood the typical American cigarette blend described in the relied-upon portion of Teng as useful solely for purposes of Teng’s smoking articles. Rather, read in context with Teng’s disclosure in its entirety, one of ordinary skill in the art would have understood this disclosure as an example of a typical blend of the components contained in American cigarette brands. See, e.g., Teng col. 2, ll. 49–51 (“American brands of cigarettes contain different proportions of different grades of Virginia, burley, Maryland, and oriental tobaccos.”); id. at col. 2, l. 1 (Virginia tobacco is flue-cured.”). In other words, Appellants’ arguments fail to convince us of error in the Examiner’s finding that use of Teng’s typical American tobacco blend as the smokable filler material in Mua’s cigarette would have been predictable. Appellants also contend the Examiner failed to establish a prima facie case of obviousness because Examiner erred in relying on the combination of Inagaki and Mua for a teaching that the proposed combination of Mua, Teng, and Figlar would have resulted in a cigarette having a reduced level of benzo[a]pyrene content of mainstream smoke produced when the cigarette is smoked. See App. Br. 13–20. Appeal 2013-000513 Application 11/625,000 7 As an initial matter, we note the argued claim limitation does not appear in claims 29–31. Therefore, this argument is unpersuasive of error in the Examiner’s rejection of claims 29–31. With respect to the remaining claims, the argued limitation, which appears in independent claim 1, is a functional limitation. Appellants’ arguments have not convinced us of error in the Examiner’s finding that Mua’s cigarette, as modified by Teng and Figlar, is structurally identical to the cigarette recited in appealed claim 1. Thus, the Examiner’s proposed combination would be expected to result in a cigarette having a benzo[a ]pyrene content of mainstream smoke produced therefrom which is reduced as compared to a control cigarette that does not comprise inner wrapping strips. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re Swinehart, 439 F.2d 210, 213 (C.C.P.A.1971) (“[W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”)). With respect to the rejection of claims 7, 24–28, 30, and 31, Appellants rely on the same arguments advanced in support of the independent claims (App. Br. 28–29, 31–32, 33), which are unpersuasive of reversible error for the reasons set forth above. With respect to the rejection of claims 8 and 9, Appellants argue the Examiner has not provided motivation to modify Mua, Teng, and Figlar with the teaching of Kunz. App. Br. 27–28. Appellants are directed to pages 5-6 of the Final Action and pages 8 and 15-16 of the Answer wherein the Appeal 2013-000513 Application 11/625,000 8 Examiner identifies evidence in support of a finding of motivation to combine. Appellants have not persuaded us that the Examiner’s fact finding or reasoning in support of a motivation to combine is erroneous or unreasonable. With respect to the rejection of claims 17 and 18, the Examiner concedes the combination of Mua, Teng, and Figlar does not expressly disclose the threonine content in the tobacco, but finds Dominguez teaches high threonine content to improve the flavor and aroma of tobacco and concludes it would have been obvious to one of ordinary skill to select a tobacco with high threonine content given the teaching of Dominguez. Id. at 9 (citing Dominguez, Abstract). Applicants argue one of ordinary skill would not have had a reasonable expectation of success because of the degree of genetic modifications to provide the high threonine tobacco and uncertainty as to the impact of unnaturally high levels of compounds in tobacco on a cigarette’s properties. App. Br. 30. These arguments are not persuasive of reversible error because they are based solely on attorney argument. Because Appellants have not convincingly shown the Examiner failed to establish a prima facie case of obviousness, we now consider their evidence of secondary considerations. Appellants argue the claimed cigarette is patentable because of unexpected results. App. Br. 21–27, 32. Specifically, Appellants contend the cigarette, when smoked, “results in lower benzo[a]pyrene content as compared to a cigarette without wrapping strips, even though the recited cigarette actually contains more tobacco” as the “inner wrapping strips are an added feature.” Id. at 21–22. To establish unexpected results, Appellants Appeal 2013-000513 Application 11/625,000 9 rely on comparisons made between a commercially available cigarette (control cigarette), three cigarettes which are said to have structures which meet the limitations of the claims (Cigarettes B, C, and D), and a cigarette which appears to be identical in structure to Cigarette B with the exception of wrapping strips (Cigarette A) (see Spec. 28:1–22). App. Br. 22–23. We agree with the Examiner’s determination (see Ans. 14-15) that the evidence of record is insufficient to overcome the Examiner’s prima facie case of obviousness because a comparison was not made with the closest prior art, and Appellants’ testing was not commensurate in scope with the claims. See Rothman v. Target Corp., 556 F.3d 1310, 1322 (Fed. Cir. 2009) (explaining that a strong prima facie obviousness showing may stand even in the face of considerable evidence of secondary considerations). First, Appellants argue the reduced level of benzo[a]pyrene content of mainstream smoke produced by the claimed cigarette is unexpected because the claimed cigarette has more tobacco than the control cigarette. App. Br. 22-23. However, as pointed out by the Examiner, Appellants have not provided evidence to support their argument “that the claimed cigarette would inherently have more tobacco than the control cigarette.” Ans. 14. Second, Appellants have compared the claimed cigarette to cigarettes which do not contain wrapping strips, but have not made a comparison of the claimed cigarette with the closest prior art, namely a cigarette which does contain wrapping strips, i.e., Mua’s cigarette. Appellants argue “unique features of the claimed cigarette distinguish it in numerous ways from the cigarette of Mua.” Id. at 25. However, Appellants have not provided comparison evidence showing how these unique features provide Appeal 2013-000513 Application 11/625,000 10 unexpected results as compared to Mua’s cigarette which, liked the claimed cigarette, includes inner wrapping strips. Third, we do not find the evidence which Appellants do provide persuasive of unexpected results because it is not commensurate in scope with the claims. For example, claim 1 recites “at least about 45% by weight flue-cured tobacco” and Mua in view of Teng suggests 40 to 75% flue-cured tobacco. Appellants compare cigarettes containing 63.3% flue-cured tobacco, which fails to show criticality in the recited lower limit of the range (“about 45%”), which is encompassed by the closest prior art range of 40 to 75%. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“In general, an applicant may overcome a prima facie case of obviousness by establishing ‘that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”). Appellants have not provided an adequate basis to support a conclusion that other embodiments falling within claim 1 would have been expected to produce results similar to those of the tested embodiment. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Appellants also argue dependent claims 26-28 are patentable because of an additional unexpected result, a decrease in nitrosamines and carbon monoxide, in the smoke of cigarettes according to these claims, which require inclusion of cereal grain, relative to similar cigarettes not containing cereal grain. Id. at 32 (citing Spec. ¶ 99). In support of their position, Appellants compare their cigarette C, containing cereal grain, to the control cigarette and cigarettes A, B, and D (id.), but neither their argument nor data is persuasive of any unexpected result where the cited prior art (White) Appeal 2013-000513 Application 11/625,000 11 included cereal grain and there is no comparison to any prior art cigarette including cereal grain. Ans. 17. SUMMARY For the foregoing reasons, we find a preponderance of the evidence, taking into account Appellants’ proffered evidence of unexpected results, favors the Examiner’s conclusion of obviousness as to the appealed claims. DECISION The Examiner’s decision rejecting claims 1–31 for obviousness 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)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED cdc Copy with citationCopy as parenthetical citation