Ex Parte Dunlap et al

Patent Trial and Appeal Board

Aug 27, 2014

11625000 (P.T.A.B. Aug. 27, 2014)

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.
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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
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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.
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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.
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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.

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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.
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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
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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
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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
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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)
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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

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