Ex Parte SEBASTIAN et al

Patent Trial and Appeal BoardOct 17, 2018

13530145 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/530,145 06/22/2012 26158 7590 10/19/2018 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 FIRST NAMED INVENTOR Andries D. SEBASTIAN 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. R60999 2820US.l (0386.2) 9294 EXAMINER NGUYEN, PHU HOANG ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 10/19/2018 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@wbd-us.com BostonPatents@wbd-us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDRIES D. SEBASTIAN, BRUCE BENGTSSON, and JASON KOBISKY Appeal2018-000842 Application 13/530, 145 Technology Center 1700 Before KAREN M. HASTINGS, BRIAND. RANGE, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1, 7-11, and 24--26. We have jurisdiction under 35 U.S.C. Â§ 6(a). We AFFIRM. The claimed invention is directed to a tobacco product adapted for oral consumption. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A tobacco product adapted for oral consumption, compnsmg: Appeal2018-000842 Application 13/530, 145 a tobacco composition in the form of a compressed tobacco sheet; and at least one edible film adapted for oral ingestion and adjacent to the compressed tobacco sheet to form a multi-layer laminate structure, wherein the edible film comprises a fruit or vegetable puree, and wherein the edible film is one or both of fibrillated and perforated to increase inter-layer adhesion of the multi-layer laminate structure. Appellants 1 request review of the Examiner's rejection of claims 1, 7- 11, and 24--26 under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Strickland (US 2006/0191548 Al, published August 31, 2006) and Hurst (US 3,318,748, issued May 9, 1967). Final Act. 2; App. Br. 2. 2 Appellants do not argue any claim separate from the other. See generally App. Br. Accordingly, we select claim 1 as representative of the subject matter before us for review on appeal and decide the appeal based on the arguments made by Appellants in support of the patentability of claim 1. OPINION Prior Art Rejection After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner's prior art rejection of claims 1, 7-11, and 24--26 for the reasons presented by the Examiner. We add the following for emphasis. 1 The real party in interest is identified as the R. J. Reynolds Tobacco Company. App. Br. 1. 2 As the pages of the Appeal Brief of May 22, 2017 are not numbered, we designate the Title page as page 1 and number consecutively from there. 2 Appeal2018-000842 Application 13/530, 145 The Examiner finds, and Appellants do not dispute, that Strickland discloses a multilayer tobacco product that differs from the claimed invention in that Strickland does not disclose using fibrillated and perforated films to form the multi-layer structure. Final Act. 2-3; see generally App. Br. The Examiner finds Hurst discloses a known technique for forming a laminate structure where the webs forming the laminate structure are perforated to give a good friction bond for securing the webs to each other. Final Act. 3; Hurst col. 6, 11. 16-20. The Examiner determines it would have been obvious to one of ordinary skill in the art to perforate the edible film of Strickland to increase inter-layer adhesion of the multi-layer laminate structure in view of Hurst's teachings. Final Act. 3. Appellants argue that, absent impermissible hindsight, one skilled in the art would not combine the teachings of the cited art and arrive at the claimed invention. App. Br. 4. According to Appellants, Hurst is nonanalogous art because it is directed to laminate articles such as plastic- paper laminate containers (e.g., paper plates) and forming a good bond between a plastic web and a paper web. Id. at 5. Thus, Appellants contend Hurst is directed to a field of endeavor different from the claimed tobacco products and not reasonably pertinent to the particular problem with which the inventors were concerned. Id. at 5---6. Appellants additionally argue that Strickland is not directed to bonding a plastic web and a paper web to form a laminate container. Id. at 6. Thus, Appellants contend that there is no motivation to combine the teachings of the cited art because a method of bonding plastic and paper webs together is not necessarily applicable to bonding a tobacco layer with a film. Id. at 6-7. 3 Appeal2018-000842 Application 13/530, 145 We are unpersuaded by these arguments. The Examiner finds Strickland relates to bonding webs to form laminate and Hurst teaches an alternative bonding method for webs where a good friction bond is provided by perforating a part of the webs to secure them to each other. Ans. 5; Final Act. 2-3; Strickland ,r 56; Hurst col. 6, 11. 16-20. Hurst friction bonds allow disintegration of the product for the purposes of Hurst. Hurst col. 1, 11. 3 0- 33. Appellants have not persuasively disputed the Examiner's stated reason for combining these references' teachings. Also, given that Strickland is directed to a disintegrable product (Strickland Abst.), Appellants have not adequately explained why one skilled in the art, using no more than ordinary creativity, would not have been capable of using a bonding technique, such as Hurst's friction bonding by perforation, in the invention of Strickland to achieve a multilayer tobacco product that disintegrates to provide the desired tobacco satisfaction. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art.). Appellants' arguments, thus, do not point to error in the determination of obviousness. Accordingly, we affirm the Examiner's prior art rejection of claims 1, 7-11, and 24--26 under 35 U.S.C. Â§ 103 (a) for the reasons presented by the Examiner and given above. DECISION The Examiner's prior art rejection of claims 1, 7-11, and 24--26 under 35 U.S.C. Â§ 103(a) is affirmed. 4 Appeal2018-000842 Application 13/530, 145 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 5