Ex Parte Sebastian et al

Patent Trial and Appeal Board

Aug 17, 2017

13536438 (P.T.A.B. Aug. 17, 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.
13/536,438 06/28/2012 Andries Don Sebastian R60999 2720US.1 (0364.1) 5500
26158 7590 08/21/2017
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
YAARY, ERIC
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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 ANDRIES DON SEBASTIAN, KAREN V. WILLIAMS,
STEPHEN BENSON SEARS, BRADLEY JAMES INGEBRETHSEN,
BALAGER ADEME, STEVEN LEE ALDERMAN,
WILLIAM ROBERT COLLETT, GRADY LANCE DOOLY, and
CHARLES JACOB NOVAK III
Appeal 2015-008075
Application 13/5 3 6,43 s1
Technology Center 1700
Before JEFFREY B. ROBERTSON, CHRISTOPHER C. KENNEDY, 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) of claims 1—23.
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 2015-008075
Application 13/536,438
BACKGROUND
The subject matter on appeal is directed to aerosol delivery articles
and their uses, particularly in delivering tobacco components in an inhalable
form. Spec. 1:6—8.
Claim 1 is illustrative, is taken from the Claims Appendix of the
Appeal Brief, and appears below.
1. A smoking article comprising:
a substantially tubular shell;
an air passage through at least a portion of the shell;
an aerosolization zone with a resistive heating element
substantially in line with the air passage;
an aerosol precursor composition in liquid form
comprising a first component and a second component;
a first reservoir within the shell comprising the first
component of the aerosol precursor composition;
a second reservoir within the shell comprising the second
component of the aerosol precursor composition;
a first transport element providing fluid communication
between the first reservoir and the aerosolization zone; and
a second transport element providing fluid communication
between the second reservoir and the aerosolization zone;
wherein at least one of the first reservoir and the second
reservoir is a fibrous layer rolled into substantially the form of a
tube and configured such that the air passage passes at least
partially therethrough.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Vieira US 2002/0146242 A1 Oct. 10, 2002
Young US 2009/0324206 A1 Dec. 31,2009
Yang US 2011/0309157 A1 Dec. 22, 2011
Li US 2013/0192621 A1 Aug. 1,2013
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Application 13/536,438
REJECTION(S) ON APPEAL
I. Claims 1, 6—13, and 16—19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Li and Yang (Final Act. 3 4);
II. Claims 2—5 and 20—22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Li, Yang, and Vieira (Final Act. 5); and
III. Claims 14, 15, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Li, Yang, and Young (Final Act. 5).
OPINION
Rejection I
Appellants argue all of the claims rejected over Li and Yang as a
group. App. Br. 4—15. Thus, we select independent claim 1 as
representative and decide the propriety of this rejection based on this claim.
37 C.F.R. § 41.37(c)(i)(iv).
The Examiner finds that Li teaches all of the recited elements of claim
1, with the exception of the second reservoir and second transport element
limitations. Final Act. 3^4. The Examiner relies on Yang for its disclosure
of multiple reservoirs and capillary wicks “adapted to transport [] various
liquid components to the heating element at controlled ratios.” Id. at 4. The
Examiner concludes that it would have been obvious to the skilled artisan to
provide a second reservoir and a second transport element in Li’s device “for
the benefit of transporting different liquid components to the aerosolization
zone at controlled ratios” in order to deliver the components to the heating
element “in desirable concentrations and [to form] an aerosol with desirable
concentrations.” Id.
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We have considered all of Appellants’ arguments against Rejection I
(App. Br. 4—15) and are not persuaded that Appellants have identified
reversible error. In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011)
(explaining the Board’s long-held practice of requiring Appellants to
identify the alleged error in the Examiner’s rejection). We, therefore,
sustain Rejection I based on the findings of fact, conclusions of law, and
rebuttals to arguments expressed by the Examiner in the Final Action (Final
Act. 3—4) and in the Answer (Ans. 3—4, 6—7). We add the following
observations for emphasis and completeness.
Many of Appellants’ arguments (App. Br. 9—14) rest on a flawed
reading of Yang. Namely, Appellants ignore Yang’s explicit teaching that
its liquids can be delivered from one or multiple reservoirs. Yang || 12, 14,
18, 20. In particular, Yang expressly states that “the liquids can be supplied
from different liquid supplies if desired.” Id. at 120. Further, Appellants
misread Yang to require immiscible liquids in a single reservoir, where
Yang actually teaches that immiscible liquids are merely preferred. Id. at
14.
Based on Appellants’ erroneous reading of Yang, Appellants contend
that the ordinary skilled artisan would have no reasonable expectation of
successfully modifying Li’s device to include a second reservoir and
transport element, and that the rejection fails to show how such a
modification would have been predictable to the ordinary skilled artisan.
App. Br. 9-14.
We note that
the 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.
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After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the record,
by a preponderance of evidence with due consideration to
persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
As discussed above, the Examiner establishes a prima facie case of
obviousness by finding that the claimed elements were known in the prior
art, and by providing a sound rationale as to why the skilled artisan would
have modified the device of Li to include an additional reservoir and
transport element. Final Act. 4; Ans. 4. Thus, in this case, the burden
shifted to Appellants to demonstrate otherwise, and for the reasons
expressed by the Examiner and above, Appellants’ arguments have failed to
show why such modifications to Li’s device would not have been obvious.
In particular, Appellants have not provided sufficient evidentiary support for
the position that one of ordinary skill in the art would be limited to a single
wick or reservoir in view of Li and Yang. App. Br. 12—14. Nor have
Appellants provided sufficient support for the position that Li’s disclosure
with respect to the arrangement of aerosol constituents would have
dissuaded a person skilled in the art from modifying Li. App. Br. 13. As the
Supreme Court in KSR stated “[a]s our precedents make clear, however, the
analysis [under 35 U.S.C. § 103] need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Thus, although acknowledging that bodily
incorporation is not the test for obviousness when combining two references,
Appellants focus their argument on the differences between the individual
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devices. App. Br. 12—14. Such arguments are unpersuasive of reversible
error.
We furthermore observe that the Examiner’s rationale reflects the
execution of the express suggestion in Yang to use multiple reservoirs and in
that sense, the addition of multiple reservoirs is akin to a duplication of parts
as demonstrated in Yang. In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It
is well settled that the mere duplication of parts has no patentable
significance unless a new and unexpected result is produced.”). In this case,
no new and unexpected results have been argued with any specificity by
Appellants. App. Br. 4—15.
It follows that we sustain Rejection I.
Rejection II
Appellants argue all of the claims rejected over Li, Yang, and Vieira
as a group. App. 15—16; Reply Br. 2—\. Thus, we select claim 2 as
representative and decide the propriety of this rejection based on this claim.
37 C.F.R. § 41.37(c)(i)(iv).
Claim 2 recites that the smoking article “comprises a plurality of
resistive heating elements” and the rejection of this claim appears at page 5
of the Final Office Action. We have considered Appellants’ arguments
against this rejection (App. Br. 15—16; Reply Br. 2-4), and none are
persuasive of reversible error. In re Jung, 637 F.3d at 1365—66.
Appellants first contend that Vieira is used to volatilize insecticides
and aromatics, and thereby seemingly suggest that Vieira is non-analogous
to Li and Yang. App. Br. 15; Reply Br. 2. We discern no persuasive merit
in this argument because Vieira’s use is not limited to the fields of
insecticides and aromatics. Vieira 11. Moreover, we agree with the
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Examiner (Ans. 7) that “Vieira is in the analogous field of endeavor of
evaporation devices for volatile substances.” See, e.g., Vieira 11, Abstract;
Yang 12, Abstract; Li || 2, 31.
Appellants contend further that Vieira’s device is large and that the
skilled artisan “would not predict that multiple heaters, such as included in
the large block of Vieira, could be implemented in a much smaller device.”
App. Br. 15. See also Reply Br. 2—\. Appellants urge that the Examiner’s
rejection is based on hindsight because the Examiner fails to account for
particular structural considerations in Li’s device such as the arrangement of
the heater 14 in relation to gasket 10. Reply Br. 3^4.
This line of argument is unpersuasive for several reasons. First, we
note that Vieira discloses “a small-sized and well-suited heating element
with good heating performance.” Vieira 112 (emphasis added).
Furthermore, even if the ordinary skilled artisan would have considered
Vieira’s heating element to be “large,” the rejection does not state that
Vieira’s heater needs to be bodily incorporated into the modified device of
Li and Yang to arrive at the claimed invention. Rather, as correctly
observed by the Examiner, “[t]he heating element of Li is a simple heater
coil” and that “[gjiven its small size, one of ordinary skill in the art would
appreciate that a second, similar heating element may be used within the
device of Li with a reasonable expectation of success, and would have been
motivated to do so for the reasons given by Vieira.” Ans. 7. Appellants’
assertions to the contrary (Reply Br. 3—4) do not show how the Examiner’s
proposed modification would have been beyond the ability of one skilled in
this art, particularly in view of Li’s teaching that multiple heater
arrangements are possible. Li || 28, 32.
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Appellants contend further that Li and Yang are silent regarding
multiple heaters. App. Br. 15. This argument is unpersuasive because it
does not identify reversible error. In the rejection, the Examiner finds that
Li and Yang do not disclose multiple heaters and relies on Vieira for this
teaching. Final Act. 5.
Finally, we observe that Appellants do not argue or point us to any
evidence of any new or unexpected results based on the inclusion of an
additional heating element. In re Harza, 274 F.2d at 671.
It follows that we sustain Rejection II.
Rejection III
Appellants argue all of the claims rejected over Li, Yang, and Young
as a group. App. Br. 16—18; Reply Br. 4—6. Thus, we select claim 14 as
representative and decide the propriety of this rejection based on this claim.
37 C.F.R. § 41.37(c)(i)(iv).
Claim 14 recites that the smoking article “comprises a further resistive
heating element in substantial contact with one or more of’ the first or
second reservoir or first or second transport elements. The Specification
discloses that “[sjuch heating element can be useful to pre-heat the
component of the aerosol precursor composition.” Spec. 8: 27—28. The
Examiner’s rejection of this claim appears at page 5 of the Final Office
Action.
We have considered Appellants’ arguments against this rejection
(App. Br. 16—18; Reply Br. 4—6), and none persuade us of reversible error.
In re Jung, 637 F.3d at 1365—66.
By outlining several differences between the devices of Li and Young
(App. Br. 14—16; Reply Br. 4—6), we understand Appellants’ argument to be
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that the references relied upon are non-analogous and are, thus, not properly
combinable. Specifically, Appellants point us to differences between Li’s
wick and Young’s capillary tube, the lack of a capillary pump in Li, and the
temperature and pressure differences between the liquids in Li and Young.
App. Br. 14—16; Reply Br. 4—6. To the extent that Appellants are arguing
that Young is non-analogous art, we disagree with this argument. That is,
we agree with the Examiner that Young is in the field of endeavor of liquid
vaporization, as is Li and Yang, and that the skilled artisan “would have
found it obvious to includ[e] a heating element for pre-heating the liquid for
the reasons disclosed by Young, [namely] providing a liquid having less
viscous drag for higher liquid throughput and higher vapor output.” Ans. 8,
citing Young || 108—109.
Furthermore, we observe that the argument does not address the full
scope of the rejection, namely the Examiner’s reliance on Li, Young and
Yang. Final Act. 5. In this regard, we note that Yang discloses a variety of
transport elements including wicks as disclosed in Li (See, e.g., Li || 2, 20,
30, Figs. 1A and IB) and capillary tubes. Yang 114. By failing to argue the
full scope of the rejection in focusing only on Li and Young, Appellants fail
to identity reversible error in the rejection.
Appellants contend further that the rejection fails to establish that the
skilled artisan “may incorporate the heater of Young into the Li device with
any reasonable expectation of success.” App. Br. 16. See also, Reply Br. 5—
6. This argument, however, is unpersuasive. As correctly observed by the
Examiner, the skilled artisan “would appreciate that the heating element for
pre-heating the liquid in Li would not necessarily have to be the specific
heating element disclosed by Young,” but could be any heating element that
is suitable for Li’s device such as the heating coils already disclosed in Li.
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Ans. 8. Appellants do not specifically address the Examiner’s findings
regarding the level of ordinary skill in their Reply Brief, but rather focus
their arguments on the teachings of Li and Young. Reply Br. 4—6. Such
arguments notably do not account for the ability of the skilled artisan. To
this end, we emphasize again that an obviousness analysis may “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR, 550 U.S. at 418. Also, “if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” Id. at 417. “A person of ordinary skill is also a person of
ordinary creativity, not an automaton.” Id. at 421. Because Appellants fail
to address the Examiner’s determination that the skilled artisan would be
capable of making the proffered modification of the prior art device,
Appellants fail to demonstrate error in the obviousness conclusion.
We, therefore, sustain Rejection III.
SUMMARY
We have considered all of Appellants’ arguments against the
rejections on appeal (App. Br. 4—18; Reply Br. 2—6) and are unpersuaded
that Appellants have identified reversible error.
Thus, the Examiner’s final decision to reject claims 1—23 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).
AFFIRMED
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