Ex Parte Matsufuji et al

Patent Trial and Appeal BoardMar 6, 2015

12238247 (P.T.A.B. Mar. 6, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TAKAAKI MATSUFUJI, TAKASHI KOMINAMI, KEN UYAMA, and YUKIKO HASEGAWA ____________ Appeal 2013-003833 Application 12/238,247 Technology Center 1700 ____________ Before GEORGE C. BEST, GRACE KARAFFA OBERMANN, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, 5, 6, 10, 12, 13, and 15. 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. Appeal 2013-003833 Application 12/238,247 2 The Invention Appellants’ invention relates to a low ignition propensity cigarette paper. Spec. 1:14–15. Claim 1 is representative of the claims on appeal, and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A low ignition propensity cigarette paper comprising base cigarette paper having a basis weight exceeding 22 g/m 2 , and a plurality of burn limiting areas arranged apart from one another on one surface of the base cigarette paper, wherein the burn limiting areas are formed by applying sodium alginate having a degree of polymerization of 650 to 670, and the sodium alginate is applied to the base cigarette paper in an amount of 1.2 to 1.5 g/m 2 . The References Fitzgerald US 2005/0076929 Apr. 14, 2005 Kelco, Alginate Products for Scientific Water Control, 1987 (database entry July 9, 2002), accessed via http://legacy.library.ucsf.edu/tid/zgg22d00 (“Kelco”). Kimica Corporation, Product List: Sodium Alginate, Kimica Corporation, Cyuoko, Tokyo, Japan, www.kimica- alginate.com/products (“Kimica”). The Rejection Claims 1, 2, 5, 6, 10, 12, 13, and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fitzgerald in view of Kelco and Kimica. OPINION We affirm the Examiner’s rejection of claims 1, 2, 5, 6, 10, 12, 13, and 15 under 35 U.S.C. § 103(a). Appellants argue the claims as one group, relying on limitations common to independent claims 1 and 5, and do not present any arguments Appeal 2013-003833 Application 12/238,247 3 for the separate patentability of dependent claims 2, 6, 10, 12, 13, and 15. App. Br. 3. We, therefore, limit our discussion to claim 1, which is representative of the independent claims, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2013). Claim 1 recites a low ignition propensity cigarette paper comprising, inter alia, a plurality of burn limiting areas, “wherein the burn limiting areas are formed by applying sodium alginate having a degree of polymerization of 650 to 670, and the sodium alginate is applied . . . in an amount of 1.2 to 1.5 g/m 2 .” App. Br. 6 (Claims App’x). Appellants argue that the precise range of sodium alginate, and the advantages provided thereby, could not have been discovered by a person of ordinary skill in the art based on the disclosures of Fitzgerald, Kelco, and Kimica. Id. at 4. We are not persuaded by Appellants’ argument. First, setting aside the fact that Appellants do not specify what advantages the claimed range of sodium alginate achieves, Appellants’ argument is based on limitations not recited in the claim 1. That is, claim 1 does not recite any “advantages” achieved by applying sodium alginate in an amount of 1.2 to 1.5 g/m 2 , and Appellants have not shown that such a narrow interpretation of claim 1 is warranted. Moreover, the Examiner found that Fitzgerald discloses a cigarette paper having a plurality of bands of film-forming material that may be composed of sodium alginate, such as Kelcosol, a high viscosity alginate produced by Kelco. Ans. 4–5; Fitzgerald ¶¶ 211–12, 228, 263. The Examiner further found that Fitzgerald describes the sodium alginate as being applied to the paper in amount of 1.05 to 1.2 times the basis weight of Appeal 2013-003833 Application 12/238,247 4 the paper, “such that if the paper has a basis weight of 25 g/m2 [sic, m 2 ], the solids content of the applied film[-]forming material may be 1 to 3 g/m2 [sic, m 2 ]” (i.e., the treated paper has an overall basis weight of 26 to 28 g/m 2 ). Ans. 5 (citing Fitzgerald ¶ 256). The Examiner’s rejection does not present the correct upper limit of Fitzgerald’s range, because Fitzgerald describes the sodium alginate as being applied to the paper in amount of up to about 1.5 times the basis weight of the paper. Thus, paper having a basis weight of 25 g/m 2 prior to applying the coating has an upper limit overall basis weight of about 38 g/m 2 . Fitzgerald ¶ 256. In other words, Fitzgerald discloses that the film-forming material (i.e., sodium alginate) is applied in an amount of 1 to about 13 g/m 2 , and not 1 to 3 g/m 2 as the Examiner found. Nevertheless, the error is harmless because, as the Examiner correctly found, Ans. 5, the amount of sodium alginate Fitzgerald discloses overlaps Appellants claimed 1.2 to 1.5 g/m 2 range and, therefore, renders it prima facie obvious. 2 In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in ranges establishes a prima facie case of obviousness.”). Accordingly, the burden shifted to Appellants to show that the particular claimed range is critical, e.g., achieves unexpected results relative to the prior art range. Id. at 1330. 2 In so finding, the Examiner implicitly found that the application rate specified in claim 1 corresponds to the application rate described in Fitzgerald. We note that Fitzgerald describes the application rate as the weight of alginate applied per unit area of the treated paper as a whole, i.e., including both burn limiting and untreated areas of the treated paper. Because Appellants have not challenged this finding, we need not decide whether the claim specifies the application rate in this manner or as the weight of alginate applied per unit area of only the burn limiting areas of the treated paper. Appeal 2013-003833 Application 12/238,247 5 Appellants do not argue that the claimed sodium alginate range is critical or point to any evidence of unexpected results to rebut the prima facie case in the Appeal Brief. Instead, Appellants first raise unexpected results in the Reply Brief. Compare App. Br. 3–4, with Reply Br. 3. We decline to consider this argument, because Appellants fail to show good cause for its untimely presentation. See 37 C.F.R. § 41.41 (b)(2) (2013); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“The reply brief is not an opportunity to make arguments that could have been made during prosecution, but were not. Nor is the reply brief an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). 3 Appellants also challenge the adequacy of the factual support underlying the Examiner’s rejection. App. Br. 4. In particular, Appellants argue that (1) the record does not support the Examiner’s assertion that it is notoriously well-known in industry to use similar commercial products from different suppliers interchangeably, id., (2) the Examiner’s statement of rejection fails to indicate what results would have been predictable, id., and (3) the Examiner’s statement of rejection fails to explain what constitutes optimizing the viscosity for the method of application in the context of Appellants’ invention, id. Appellants’ arguments are not persuasive for the reasons provided by the Examiner on pages 5–8 of the Examiner’s Answer. 3 Likewise, Appellants assert, for the first time in the Reply Brief, the argument that Fitzgerald’s disclosed coating weight range of 1 to 13 g/m 2 is so broad that it does not render Appellants’ claimed 1.2 to 1.5 g/m 2 range prima facie obvious. Reply Br. 2. We also decline to consider this argument, because Appellants fail to show good cause for its untimely presentation. Appeal 2013-003833 Application 12/238,247 6 Further, although Appellants argue in conclusory fashion that the record fails to support the Examiner’s rejection, Appellants do not challenge the Examiner’s findings that (1) viscosity and polymerization are directly related, (2) the Kelcosol disclosed in Fitzgerald is a high viscosity alginate having a degree of polymerization between 600 and 1000, and (3) other known commercially available high viscosity alginates with degrees of polymerization greater than 600, such as Kimica Algin I-5, can be substituted for Kelcosol in Fitzgerald’s low ignition propensity cigarette paper. Ans. 5. The record before us, therefore, provides adequate facts and reasoning to support the Examiner’s obviousness rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”). Accordingly, we affirm the rejection of claims 1, 2, 5, 6, 10, 12, 13, and 15 under 35 U.S.C. § 103(a). DECISION/ORDER The Examiner’s rejection of claims 1, 2, 5, 6, 10, 12, 13, and 15 under 35 U.S.C. § 103(a) over Fitzgerald, Kelco, and Kimica is affirmed. It is ordered that 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)(1)(iv). AFFIRMED cdc