Ex Parte Jackson et al

Patent Trial and Appeal Board

Aug 1, 2017

13297398 (P.T.A.B. Aug. 1, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/297,398 11/16/2011 Thaddeus J. Jackson R60999 2370.1 (0269.6) 7779
26158 7590 08/03/2017
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
08/03/2017 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@WCSR.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THADDEUS J. JACKSON, LEIGH ANN BLEVINS JOYCE,
JOHN PAUL MUA, KENNETH ALLEN BEARD,
and RODNEY D. SCHLUTER
Appeal 2016-007617
Application 13/297,3981
Technology Center 1700
Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 R.J. Reynolds Tobacco Company is identified as the real party in interest.
App. Br. 1.
Appeal 2016-007617
Application 13/297,398
BACKGROUND
The subject matter on appeal relates to starch-containing smokeless
tobacco products that have specific textural properties such as cohesiveness
and/or fracturability, and methods of making such products. Spec. 2:15—24,
4:3—10, 12:14—21. The products maybe dissolvable, and the tobacco in the
products “can be processed, blended, formulated, combined and mixed with
other materials or ingredients (i.e., additives).” Id. at 4:10; 9:3—4.
Sole independent claim 1 is representative, is taken from the Claims
Appendix of the Appeal Brief, and appears below:
1. A method for preparing a smokeless tobacco product,
comprising:
identifying a specific textural property to be imparted to the
product;
identifying a specific starch material that provides the specific
textural property in a product; and
combining the specific starch material with a tobacco material
to form a smokeless tobacco product that exhibits the desired
textural property.
App. Br. 18.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Chan et al. (“Chan”) US 2005/0123502 A1 June 9, 2005
Bengs et al. (“Bengs”) US 6,592,897 B1 July 15, 2003
REJECTIONS ON APPEAL
I. Claims 1, 2, 8—16, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chan (Final Act. 4—5); and
II. Claims 5—7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chan and Bengs (Final Act. 5).
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STATEMENT OF THE CASE
The Examiner finds that Chan discloses a dissolvable oral tobacco
product which includes a mixture of ingredients such as tobacco leaf and a
carrier such as a disintegrant or binder. Final Act. 4. The Examiner finds
that Chan teaches that starch is a disintegrant. Id. The Examiner determines
that it would have been obvious to the skilled artisan that the textural
properties of Chan’s composition are part of the “cosmetically acceptable”
nature identified by Chan because Chan “expressly disclose[s] that the
composition should disintegrate, and that potato starch causes disintegration,
and therefore potato starch causes the desired texture” of fracturability or
disintegration. Id.
The Examiner reasons that the recited mixing step would be inherent
in making Chan’s composition because it “is a mixture which inherently
requires it to be mixed.” Final Act. 2. The Examiner also reasons that both
identifying steps are likewise inherent because Chan “disclose[s] the results
of the two identifying steps” and, thus, “inherently performed the
identifying.” Id. The Examiner determines that “because [Chan] identified
the textural property to be imparted to the product, and identified a specific
starch material that provides the specific textural property in a product,
[then] the steps were known in the prior art.” Id.
Appellants present arguments specifically directed to limitations
recited in independent claim 1 (App. Br. 4—16; Reply Br. 1—3). In
considering these arguments, we need focus only on this claim.
OPINION
We are not persuaded that Appellants have identified reversible error
in the rejections. Therefore, we sustain the § 103 rejections advanced in this
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appeal based on the findings of fact, conclusions of law, and rebuttals to
arguments expressed by the Examiner in the Final Action and in the Answer.
We add the following comments for emphasis and completeness.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“The inherent teaching of a prior art reference, a question of fact, arises both
in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610,
613 (Fed. Cir. 1995). “[I]n order to rely on inherency to establish the
existence of a claim limitation in the prior art in an obviousness analysisf,]
the limitation at issue necessarily must be present, or the natural result of the
combination of elements explicitly disclosed by the prior art.” PAR Pharm.,
Inc. v. TWIPharms, Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014). As
correctly noted by Appellants (App. Br. 10), to properly rely on the doctrine
of inherency in a rejection, “the Examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art.” Ex Parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
Once the Examiner so provides, the burden shifts to the patent applicant to
demonstrate otherwise. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Regardless of whether the rejection is based on 35 U.S.C. § 102 or § 103,
“the burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.” Id.
Applying these concepts to the instant case, the Examiner indeed
provides sufficient basis in fact and technical reasoning in determining that
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the claimed method steps would necessarily have been performed when, or
would have been the natural result of, making Chan’s product. Final Act. 2,
4; Ans. 2—5. Specifically, the Examiner notes that Chan identifies a textural
property to be imparted to the product (i.e., disintegration), and identifies
potato starch as a material (i.e., a disintegrant) that provides such property in
a product. Final Act. 2; Ans. 2. Furthermore, the Examiner explains that
Chan’s smokeless tobacco “composition is a mixture which inherently
requires it to be mixed.” Final Act. 2; Ans. 2. Moreover, the Examiner
reasons that, because disintegration and fracturing “both relate to the
breaking apart of a product[,] a component that causes disintegration would
also cause fracturing (breaking apart) of the product.” Final Act. 2; see also
Ans. 3. Even further, the Examiner explains (Ans. 4), and Appellants do not
dispute (Reply Br. 1—3), how Chan teaches that starch is also a binder and,
thus, describes Appellants’ specifically claimed (see, cl. 16) textural
property of “cohesiveness.” Specifically, the Examiner reasons that
“[binding together of the product is a textural property and materials have
been selected based on their ability to provide the property in the product.”
Ans. 4.
By providing the necessary facts and technical reasoning to reach a
determination that the recited method steps would inherently be performed
in the preparation of Chan’s product, the Examiner satisfies the Office’s
initial burden of presenting a prima facie case of obviousness, and shifts the
burden to Appellants to rebut the prima facie case with evidence or
argument. In re Oetiker, 977 F.2d at 1445; In re Best, 562 F.2d at 1255.
This Appellants have failed to do.
First, we observe that Appellants have pointed to no evidence of
record to demonstrate that the claimed method steps would not inherently be
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performed in the manufacture of Chan’s oral tobacco product, or that the
claimed method could not produce Chan’s product.
Rather, Appellants rely on attorney argument to attack the Examiner’s
prima facie case. App. Br. 4—16; Reply Br. 1—3. Specifically, Appellants
contend that it is not sufficient for the Examiner to rely on the disclosure of a
product, e.g., Chan’s smokeless tobacco product, as the basis for
determining that the recited method steps are inherent. App. Br. 6—7; Reply
Br. 1—3.2 This argument fails to persuade us of reversible error. Appellants
have neither cited to any legal precedent to support their position, nor
advanced any legal theory that identifies error in the Examiner’s
determination that later-claimed method steps may be inherent based on the
prior art disclosure of a product. Here, as explained above, the Examiner
provides basis in fact and technical reasoning in arriving at the determination
that the claimed method steps would necessarily have been performed when,
or would have been the natural result of, making Chan’s product. Final Act.
2, 4; Ans. 2—5.
Moreover, we observe that our reviewing court has recognized the
appropriateness of determining that later-claimed method steps may be
inherent in the prior art based on the earlier disclosure of a product that is the
natural result of the claimed method. See In re King, 801 F.2d 1324 (Fed.
Cir. 1986). We recognize that the particular factual scenario in King dealt
with inherency with respect to an anticipation rejection. We do not,
however, understand King to exclude situations such as the one here where
2 Appellants erroneously refer to anticipation of the claimed method at Reply
Br. 1, last line. The rejections before us are made under 35 U.S.C. § 103,
not § 102.
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the underlying rejection is based on obviousness, and where the Examiner
meets the other requirements for relying on the doctrine of inherency in an
obviousness rejection. Levy, 17 USPQ2d at 1464; PAR Pharm., 773 F.3d at
1195—96. We therefore find that the general principle outlined in King,
namely, that later-claimed method steps may be inherent in the prior art
disclosure of a product where the product is the natural result of carrying out
such method, is at least instructive in the case before us—particularly in
view of Appellants’ failure to identify how, precisely, the Examiner erred on
this point. In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining
that even if the examiner had failed to make a prima facie case, it has long
been the Board’s practice to require an Appellant to identify the alleged
error in the examiner’s rejections); In re Chapman, 595 F.3d 1330, 1338
(Fed. Cir. 2010) (“[T]he burden of showing that an error is harmful normally
falls upon the party attacking the agency’s determination.” (quoting Shineski
v. Sanders, 556 U.S. 396, 409 (2009))).
Appellants also contend that Chan fails to correlate the properties of
the optional potato starch to the final product, and that Chan fails to teach or
suggest that a starch can affect a composition’s textural properties. App. Br.
7—8. Appellants similarly argue that Chan does not recognize that a specific
starch material can yield a specific textural property. Id. at 9. We disagree.
Chan discloses that compositions containing a tobacco material may contain
excipients such as starch “for the purpose of obtaining desirable processing
and physical qualities” upon combining the starch with the tobacco material.
Chan 11 13, 20-22. Chan identifies starch as a binder, and identifies that
starch such as potato starch (i.e., a “specific starch material”) also acts as a
disintegrant. Id. at H 21—22. Chan teaches further that certain embodiments
of the compositions “are designed for oral administration” to “dissolve[] or
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disintegrate” within the oral cavity. Id. at 1 50. Based on this disclosure, the
ordinary skilled artisan would have understood that, in order to design an
oral composition having the specific property of disintegration, one would
use a material that has been previously identified as a disintegrant. Thus, the
ordinary skilled artisan would have appreciated that Chan’s identified
disintegrants (e.g., potato starch) can be added to a composition for the
purpose of achieving the disintegration property.
Furthermore, Appellants’ arguments (App. Br. 8, 13—14) regarding the
Examiner’s improper correlation of disintegration and fracturability do not
identify reversible error for several reasons. First, the Examiner finds that
both terms “relate to the breaking apart of a product” and determines that “a
component that causes disintegration would also cause fracturing (breaking
apart) of the product.” Final Act. 2; see also Ans. 3. Appellants fail to rebut
this determination with any evidence of record. Further, the Examiner finds,
and Appellants do not dispute, that “disintegration, on its own, is a textural
property.” Ans. 3. Moreover, we observe that Appellants do not contest the
Examiner’s finding (Ans. 4) that Chan teaches the textural property of
cohesiveness recited in claim 16 because starch is a binder.
Finally, Appellants argue (App. Br. 12—14) that the Examiner
improperly correlated Chan’s disclosure of a product’s “cosmetically
acceptable” nature to the recited “textural property.” Specifically,
Appellants contend that Chan’s discussion of “cosmetically acceptable”
carriers (Chan 150) would not be interpreted by the ordinary skilled artisan
“as referring to the overall ‘nature’ of a product; rather, it would be
interpreted as limiting the types of carriers that are included within the
compositions.” Id. at 13. This argument is unpersuasive because it does not
identify reversible error. Chan’s excipients or carriers (such as potato
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starch) are incorporated “for the purpose of obtaining desirable processing
and physical qualities” of the composition. Chan 120. Based on which
“cosmetically acceptable” carriers are used, Chan recognizes that
compositions can be “designed” to, inter alia, “dissolve[] or disintegrate” in
the oral cavity. Chan | 50. Here, a person having ordinary skill in this art at
the time of the invention, based on Chan’s disclosure, reasonably would
have expected that combining a tobacco material with a substance
previously identified as a binder or disintegrant (e.g., starch) would form a
tobacco product that exhibits the textural properties associated with such
excipients.
Thus, for the reasons given by the Examiner and emphasized above,
Appellants fail to show that the Examiner erred in rejecting the claims on
appeal.
SUMMARY
The decision of the Examiner 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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