Ex Parte Haruki et al

Patent Trial and Appeal Board

Feb 24, 2016

11790638 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111790,638 04/26/2007
127226 7590 02/26/2016
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747
FIRST NAMED INVENTOR
Masashi Haruki
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.
1131-0580PUS1 9801
EXAMINER
NGUYEN, PHU HOANG
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
02/26/2016 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASASHI HARUKI, HIROMI UEMATSU,
and YUK.IO NAKANISHI
Appeal2014-004640
Application 11/790,63 8
Technology Center 1700
Before MARK NAGUMO, ELIZABETH M. ROESEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 5, 6, 11, 13, 15, 17, 18, 20, and 21 under 35
U.S.C. § 103(a) as unpatentable over McAdam et al. (US 2004/0025891 Al,
published Feb. 12, 2004, "McAdam") in view of Klima et al. (US 4,976,979,
issued Dec. 11, 1990, "Klima"). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellants identify JAPAN TOBACCO INC. as the real party in interest.
App. Br. 1.
Appeal2014-004640
Application 11/790,638
STATEMENT OF THE CASE
Appellants claim a method of extracting nicotine and tobacco-specific
nitrosamine ("TSNA") from tobacco. App. Br. 12 (claim 1 ); Spec. 2:30.
According to the Specification, the extraction method enables quick and
steady extraction and makes uniform the quality of the processed material.
Spec. 4: 11-13.
Claims 1 and 17 are representative of the subject matter on appeal and
are reproduced below from Appellants' Claims Appendix:
1. A method of extracting a component from tobacco,
comprising the steps of:
alternately arranging the tobacco and absorbent in layers
along an inner channel of a container;
supplying a high-pressure solvent into the inner channel
of the container;
extracting nicotine and tobacco-specific nitrosamine as a
predetermined component from the tobacco into the solvent;
and
absorbing the predetermined component contained in the
solvent into the absorbent to remove the component, wherein
the method further comprises circulating the solvent so as to
supply the layers of the tobacco with the solvent containing no
extracted component.
17. The method of claim 1, wherein because of the
alternate layer arrangement of the tobacco and the absorbent
within the container, the extracted components that are
extracted from each of the tobacco layers by the solvent are, in
tum, removed from the solvent by the absorbent layers so that
each of the tobacco layers are then treated with solvent which is
substantially free of extracted components so that there is
substantially no difference in reduction rates of the extracted
components between the tobacco layers within the container.
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Application 11/790,638
App. Br. 12, 13.
ANALYSIS
Appellants argue the patentability of the appealed claims as a group
on the basis of claim 1. Except for claim 1 7, none of the claims are argued
separately from claim 1. See App. Br. 3-8. We, therefore, limit our
discussion to claims 1 and 1 7 and decide the appeal as to all claims, except
for claim 17, on the basis of claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that McAdam discloses a method of extracting
nicotine and TSNA from tobacco comprising the steps of claim 1, except for
alternately arranging the tobacco and absorbent in layers along an inner
channel of a container, as recited in the first step, and supplying the layers of
the tobacco with solvent containing no extracted component, as recited in
the final clause of the last step. Final Action 2 (citing McAdam Abstract,
i-fi-18-9, 49-50, Tables 1 and 2). 2 The Examiner finds that Klima discloses
an extraction method, including aitemateiy arranging a materiai (tea) and
absorbent in layers along an inner channel of a container and supplying the
material with solvent containing no extracted component. Id. at 2-3 (citing
Klima Abstract, 2:43--47). The Examiner finds that McAdam and Klima are
both directed to extraction using a carbon dioxide solvent. Id. at 3. The
Examiner concludes that it would have been obvious to modify the process
of McAdam to include the aforementioned features of Klima "to improve the
extracting of a component from a material." Id.
Appellants argue that the disclosures of McAdam and Klima are
contradictory and would not have been combined by one of ordinary skill in
2 Final Action dated March 28, 2013.
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Application 11/790,638
the art, and that even if combined, McAdam and Klima do not teach the
claimed invention. App. Br. 4--8. Upon consideration of the evidence
presented in this Appeal and each of Appellants' arguments, we are not
persuaded that Appellants identify reversible error, and we find that a
preponderance of evidence supports the Examiner's conclusion that the
subject matter of Appellants' claims is unpatentable over the applied prior
art. We sustain the rejection of claims 1, 2, 5, 6, 11, 13, 15, 17, 18, 20, and
21 based on the Examiner's findings of fact, conclusions of law, and
rebuttals to Appellants' arguments, as expressed in the Final Action and
Answer. We add the following for emphasis.
Appellants contend that it is "unthinkable" that a person of ordinary
skill in the art would look to a method for decaffeination of tea to solve
problems associated with tobacco treatment. App. Br. 4; Reply Br. 3. The
Examiner, however, finds that McAdam and Klima are combinable because
both reiate to the extraction art and both disclose methods using carbon
dioxide as a solvent. Final Action 3; Ans. 2-3.
Appellants concede that McAdam and Klima have a "common
technical feature," namely, "the step of extracting a component from plant
materials using pressurized carbon dioxide." Reply Br. 2. Appellants
identify another common technical feature, namely, in both McAdam and
Klima, the extracted components are "alkaloids." See, e.g., App. Br. 4
(McAdam: "extracted material [is] (alkaloids such as nicotine and
nitrosamines )"); id. at 2 (Klima: "decaffeination of tea ... means ... to
remove alkaloids"). Cursory comparison of McAdam and Klima indicates
additional common technical features, namely the use of an adsorbent to
separate the extracted component from the solvent and
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Application 11/790,638
recycling/recirculation of the solvent to the extraction step after separation
of the extracted component. McAdam Abstract, i-fi-17-9, 49; Klima Abstract,
1 :63-2:5. The references also disclose common adsorbents, including
activated charcoal/carbon, ion exchangers, and zeolites. McAdam Abstract,
i-fi-18-9, 49; Klima 2:29-32.
These common technical features persuade us that the Examiner does
not err in concluding that a person of ordinary skill in the art would have
viewed the cited teachings of Klima as relevant to a method for extracting
nitrosamines and nicotine from tobacco, as disclosed by McAdam.
Appellants do not explain sufficiently why the difference in plant
materials-tea versus tobacco---would have led a person of ordinary skill in
the art to the opposite view. More specifically, Appellants do not identify
differences between tea and tobacco that would have suggested that Klima's
teaching regarding layering and packing an adsorbent with the plant material
in a pressure vessei, Kiima 2:40-47, wouid have been considered uniqueiy
applicable to extraction of tea or inapplicable to extraction of tobacco.
Appellants argue that the techniques disclosed in McAdam and Klima
"contradict each other" because, in McAdam, the solvent leaving the outlet
of the extraction chamber contains extracted material, whereas in Klima, the
solvent leaving the outlet of the extraction chamber contains no extracted
material. App. Br. 6; Reply Br. 2-3. Elaborating on this argument,
Appellants contend that it would not have been obvious to apply Klima to
McAdam because Klima's method has "one extraction-adsorption site," in
contrast to McAdam's method, which requires that the extraction and
adsorption sites "be separated from each other." App. Br. 7.
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The Examiner, however, finds that "as a whole both references teach
the same technical idea of using the same solvent (carbon dioxide) to extract
a component from a material and then remove the component from the
solvent by an adsorbent." Ans. 4. The Examiner reasons that, since both
Klima and McAdam relate to extraction with carbon dioxide, one of
ordinary skill in the art would have looked to the alternative arrangement of
extraction and adsorption, as disclosed in Klima, and applied it to the
extraction method of McAdam. Id.
A preponderance of the evidence supports the Examiner's reasoning.
Although Appellants identify differences between the two disclosed
techniques, they do not explain persuasively how these differences
contradict the Examiner's rationale, Final Action 2-3. On this record, we
are not persuaded of reversible error in the Examiner's conclusion that a
person of ordinary skill in the art would have modified McAdam's tobacco
extraction method to adopt Kiima's teaching regarding iayering and packing
an adsorbent in the extraction container, Klima 2:40-47, such that the
modified method has one extraction-adsorption site, and the solvent leaving
the outlet of the extraction chamber contains no extracted material, thereby
meeting the limitations of claim 1.
Appellants argue that a person of ordinary skill in the art could not
have predicted that McAdam's extraction method would work "using only
activated charcoal as an adsorbent ... without acidic media" and without an
external treating chamber, which Appellants contend is "a requisite in the
process of' McAdam. App. Br. 4--5. We are not persuaded by Appellants'
argument because it does not address the combination of prior art teachings
proposed by the Examiner. The obviousness rejection is based on modifying
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McAdam's process for extraction of tobacco to adopt Klima's teaching
regarding layering and packing an adsorbent with plant material in the
extraction container. Final Action 2-3; Ans. 4. The Examiner does not
propose to modify McAdam's process to use only activated charcoal as an
adsorbent, eliminate acidic media, or eliminate an external treating chamber,
as argued by Appellants.
Appellants argue that Klima's "purpose is to remove alkaloids
completely," which Appellants contend "contradicts the object of
McAdam." App. Br. 5. We find that Appellants' argument is insufficiently
supported by the evidence. Klima discloses decaffeination of tea, but the
process does not remove caffeine "completely," as argued by Appellants.
Examples 1 and 2 disclose a degree of extraction of 83.5% and 92.8%,
respectively. Klima 3:61, 4:6. Nevertheless, even 100% extraction would
not be not inconsistent with McAdam's objective, which Appellants describe
as "removing or reducing nitrosamines in tobacco." App. Br. 7; see also
McAdam, Abstract, i-f 4.
Appellants argue that the combination of McAdam and Klima is
"unimaginable" because McAdam teaches passing the solvent through an
ion exchange resin mixed with "potassium citrate," which Appellants
contend "is an acid substance" that causes the solvent to become acid, which
Appellants contend should be avoided in Klima's process because "tea ... is
alkaline." App. Br. 6. The Examiner, however, proposes modification of
McAdam's extraction process in view of Klima to provide alternating layers
of adsorbent and tobacco in the chamber and asserts that the combination of
McAdam and Klima teaches the claimed method. Final Action 6.
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We are persuaded by the Examiner's reasoning. Even if Appellants
are correct that Klima's plant material-tea-is incompatible with the
potassium citrate disclosed in McAdam, such incompatibility does not
identify error in the Examiner's proposed modification of McAdam's
extraction process. That modification does not involve a substitution of tea
for tobacco, but only adoption of Klima's teaching regarding layering and
packing an adsorbent along with the plant material in the extraction
container. Final Action 2-3; Ans. 4.
Appellants argue that McAdam intends to remove or reduce only
nitrosamines, which differs from the object of the claimed method to reduce
both nicotine and nitrosamines at different reduction rates. App. Br. 7. The
Examiner, however, asserts that McAdam's solvent is capable of extracting
both nitrosamines and nicotine. Ans. 4. A preponderance of the evidence
supports the Examiner's position. Appellants concede that "McAdam
discloses that not oniy nitrosamines but aiso nicotine is extracted." App. Br.
7. Appellants' concession is consistent with McAdam, which discloses that
"extract( s) other than nitrosamines," for example, "nicotine and/ or flavor
substances," are removed from tobacco, but may optionally be "re-
incorporated with the tobacco," so that the taste of the tobacco is not
affected. McAdam i-fi-f 13, 56. McAdam thus teaches that both nicotine and
nitrosamine are extracted from tobacco, as recited in Appellants' claim 1.
Appellants argue that Klima does not suggest the subject matter of
claim 1 7 because the reference is silent on whether or not the solvent that
has passed through one adsorbent layer contains caffeine. App. Br. 6-7.
The Examiner, however, cites Klima's teaching that the solvent (gas stream)
passes through a layer of adsorbent before leaving the extraction chamber,
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so that the solvent is free of the extracted material (caffeine). Final Action
6. Based on this teaching, the Examiner concludes that it would have been
obvious to provide that every time the solvent passes through a layer of
adsorbent, the solvent is substantially free of the extracted material. Id. We
are persuaded by the Examiner's reasoning, which is supported by the
evidence, Klima 2:43--47, and not directly addressed or refuted by
Appellants.
Based on the foregoing, the weight of the evidence supports the
Examiner's conclusion of obviousness. Therefore, the§ 103(a) rejection is
sustained.
CONCLUSION OF LAW AND DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a) (1).
AFFIRMED
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