Ex Parte Pandolfino

Patent Trial and Appeal Board

Mar 24, 2017

10568290 (P.T.A.B. Mar. 24, 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.
10/568,290 02/16/2006 Joseph Pandolfino 045952-0120 3390
22428 7590 03/28
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/28/2017 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 @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH PANDOLFINO
Appeal 2015-002554
Application 10/568,290
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS,
and JAMES C. HOUSEL, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 184—186. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a cigarette. Claim 184 is illustrative:
184. A cigarette comprising a portion of an increased-nicotine
transgenic Nicotiana tabacum plant, wherein said cigarette is
characterized by
(i) a tar-to-nicotine yield ratio of between about 3 and
about 8, as measured by the FTC or ISO method,
(ii) a filler that is not all reconstituted tobacco, and
(iii) cigarette smoke having a pH of about 6.5 or lower.
Appeal 2015-002554
Application 10/568,290
Perkins
Gibson
Newton
Conkling
Timko
The References
US 3,861,400
US 3,878,850
US 3,957,060
US 6,423,520 B1
WO 00/67558 A1
Jan. 21, 1975
Apr. 22, 1975
May 18, 1976
July 23, 2002
Nov. 16, 2000
Michael A.H. Russell, Public Health and Levels of Nicotine: Should
Nicotine Levels in Cigarette be Minimized or Maximized?, Nicotine and
Pub. Health Ch. 15 (Am. Pub. Health Org. 2000).
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 184 and 185 over Perkins in view of Newton, Timko, Russell and
Gibson, and claim 186 over Perkins in view of Newton, Timko, Russell,
Gibson and Conkling.
OPINION
We reverse the rejections. We need address only the sole independent
claim, i.e., claim 184.1 That claim requires a cigarette comprising a portion
of an increased-nicotine transgenic Nicotiana tabacum plant and having a
tar-to-nicotine ratio between about 3 and about 8, as measured by the FTC or
ISO method. To meet those claim requirements the Examiner relies upon
the combined disclosures of Perkins, Timko and Russell (Ans. 6).
Perkins claims “[a] process for making a smoking material selected
from the group consisting of tobacco, reconstituted tobacco and substitute
tobacco which comprises adding to an acceptable smoking base material a
1 The Examiner does not rely upon Conkling for any disclosure that
remedies the deficiency in the references applied to the independent claim
(Ans. 7—8).
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Appeal 2015-002554
Application 10/568,290
minor amount of a material selected from the group consisting of a nicotine
derivative of polygalacturonic acid and a nicotine derivative of a
polymannuronic acid whereby on pyrolysis of the resulting smoking material
small controlled amounts of nicotine are released into the smoke” (col. 11,
1. 22 — col. 12,1. 7), and discloses that “any polyuronic acid can be used in
view of the closely similar properties of these acids” (col. 11,11. 8—9).
Timko discloses that “[t]he methods of nicotine formation in tobacco
and the genes involved have been studied both to better understand gene
expression during tobacco growth and development, and also to discover
tools useful for creating transgenic plants. For example, the regulatory
sequences that modify protein expression in tobacco may be useful in
creating transgenic tobacco or other transgenic plants” (p. 3,11. 11—15). The
objects of Timko’s invention are “to characterize the nucleotide and amino
acid sequences of enzymes involved in the biosynthesis of nicotine in
tobacco ... to provide plant promoter regions that are capable of conferring
high levels of transcription in rapidly dividing cells of transformed plants
when coupled with a heterologous coding sequence in a chimeric gene . . .
[and] to characterize sense and antisense nucleotides capable of regulating
expression of genes encoding for enzymes involved in the biosynthesis of
alkaloids” (p. 4,1. 31 — p. 5,1. 5).
Russell discloses that the low-tar, medium-nicotine approach to safer
smoking “is concerned with reducing the ratio of tar yield to nicotine yield
to enable the selection of brands that deliver the lowest amount of tar per
unit of nicotine, across a range of nicotine levels to suit the needs of
individual smokers” (pp. 1—2) and that a table of brands ranked by standard
machine-smoked nicotine yields and tar-to-nicotine ratios “could be used by
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Appeal 2015-002554
Application 10/568,290
smokers to select as low a nicotine yield as possible (for this too is desirable)
and then choose the least harmful cigarette at that level in terms of the
tar/nicotine ratio” (p. 2).
The Examiner concludes that “[i]t would have been obvious to one of
ordinary skill in the art at the time of invention to use the tobacco of
Timko et al., which has higher levels of nicotine, in place of the added
nicotine salts and compounds disclosed by Perkins et al. to produce a
cigarette with the tar and nicotine ratios suggested by Perkins et al. and
Russell. Doing so would have led to predictable results (higher nicotine)
and lower tar” (Ans. 6), and “[although Timko does not expressly state that
these methods are to increase nicotine in tobacco, it would have been
obvious to one of ordinary skill in the art that by regulating the expression of
genes encoding for the enzymes that make nicotine, one would either make
more nicotine or less nicotine depending on the desired outcome” (Ans. 10—
11).
Establishing a prima facie case of obviousness requires showing that
one of ordinary skill in the art would have had both an apparent reason or
suggestion to modify the prior art and predictability or a reasonable
expectation of success in doing so. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007); In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991).
The Examiner addresses predictability but does not establish that the
applied references would have provided one of ordinary skill in the art with
an apparent reason or suggestion to substitute Timko’s transgenic tobacco
for Perkins’ tobacco containing a nicotine derivative of polyuronic acid.
Accordingly, we reverse the rejections.
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Appeal 2015-002554
Application 10/568,290
DECISION/ORDER
The rejections under 35 U.S.C. § 103 claims 184 and 185 over Perkins
in view of Newton, Timko, Russell and Gibson, and claim 186 over Perkins
in view of Newton, Timko, Russell, Gibson and Conkling are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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