John-Paul Mua et al.

Patent Trials and Appeals Board

Dec 3, 2019

13325765 - (D) (P.T.A.B. Dec. 3, 2019)

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.
13/325,765 12/14/2011 John-Paul Mua R60999 1770.1 (0165.7) 3857
26158 7590 12/03/2019
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
MAYES, DIONNE WALLS
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
12/03/2019 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
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN-PAUL MUA and ERIC TAYLOR HUNT
Appeal 2019-002237
Application 13/325,765
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAN D. RANGE, and JANE E.
INGLESE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 6–20, 23–31, 33–36, and 38. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as R.J. Reynolds
Tobacco Company. Appeal Br. 1.
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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a smokeless tobacco
product. Spec. 1:2–4. In particular, the invention relates to a smokeless
tobacco product having tobacco-derived materials and an effervescent
material. Id. at 2:17–23. The effervescent material adds organoleptic
properties to the product and aids disintegration in the oral cavity. Id.
Gasified sugar materials may be used to achieve the effervescent effect. Id.
Claim 1 is illustrative:
1. A smokeless tobacco composition adapted for
introduction into the oral cavity, comprising:
(a) a tobacco material, wherein the tobacco material is a
particulate tobacco material, an aqueous tobacco extract in freeze-
dried or spray-dried form, or a combination thereof; and
(b) an effervescent material capable of causing effervescence
in the oral cavity, the effervescent material comprising a sugar alcohol
material containing an entrapped gaseous component, such that
release of the entrapped gaseous component occurs upon dissolution
of the sugar alcohol material in the oral cavity;
wherein the sugar alcohol comprises a sugar alcohol selected
from the group consisting of erythritol, isomalt, and mixtures thereof.

REJECTION AND REFERENCES
On appeal, the Examiner maintains the rejection of claims 1, 6–20,
23–31, 33–36, and 38 under 35 U.S.C. § 103 as obvious over Strickland et
al., US 2006/0191548 A1 (Aug. 31, 2006) (“Strickland”) in view of
Gonzales et al., US 2005/0074489 A1 (Apr. 7, 2005) (“Gonzales”) and

2 In this Decision, we refer to the Final Office Action dated February 22,
2018 (“Final Act.”), the Appeal Brief filed July 23, 2018 (“Appeal Br.”), and
the Examiner’s Answer dated November 19, 2018 (“Ans.”).
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further in view of Cherukuri et al., US 2001/0048965 A1 (Dec. 6, 2001)
(“Cherukuri”). Ans. 5.

OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejection for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant argues claims 1 and 6 separately. See Appeal Br. 5, 10.
Consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we
limit our discussion to claims 1 and 6. Claims 7–9 stand or fall with claim 6,
and all other claims on appeal stand or fall together with claim 1.
The Examiner rejects claim 1 as obvious over Strickland in view of
Gonzales and Cherukuri. Ans. 5. The Examiner finds that Strickland
teaches smokeless tobacco compositions having dried particles and that may
have “small, fast-disintegrating, tobacco-containing” bursts or tabs that may
be effervescent in nature. Id. at 5–6 (citing Strickland). The Examiner finds
that Strickland does not explicitly state that its tabs include a sugar alcohol
as claim 1 recites. Id. at 7–8.
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With respect to the effervescent material comprising a sugar alcohol
comprising “a sugar alcohol selected from the group consisting of erythritol,
isomalt, and mixtures thereof,” the Examiner finds that Gonzales teaches
tablet compositions with an effervescent formulation that may include a
sugar-substitute component (for example, sorbitol). Id. at 7–8 (citing
Gonzales). The Examiner also finds that Cherukuri teaches isomalt as a
sugar substitute known for use in chewable, effervescent compositions. Id.
at 8–9 (citing Cherukuri). The Examiner determines that one of skill in the
art would have been motivated to employ the Gonzales sugar alcohol-based
effervescent system with the tab composition of Strickland in order to
enhance release and penetration of the active ingredient and to provide a
sugar-free option with fewer calories. Id. at 8. The Examiner further
determines that it would have been obvious to use isomalt as the sugar-
alcohol component because Cherukuri teaches that isomalt is known for use
in a chewable, effervescent composition. Id. at 8–9.
Appellant argues that a person of skill in the art would not have
modified Strickland to use a sugar alcohol with a trapped gaseous
component. Appeal Br. 6–7. In particular, Appellant argues that Strickland
does not teach a sugar alcohol and represents that the only mention in
Strickland of a sugar alcohol is in paragraph 6. Id. Appellant also argues
that Gonzales does not teach a tobacco material but instead teaches nicotine
as an active pharmaceutical ingredient. Id. at 7–8. Appellant’s arguments
are unpersuasive because the arguments only address the teachings of
Strickland without addressing the teachings of the references in combination
and without addressing the Examiner’s stated rationale of why a person of
skill in the art would have combined the teachings of those references. One
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cannot show nonobviousness by attacking references individually when the
rejection is based on a combination of references. In re Keller, 642 F.2d
413, 425 (CCPA 1981).
Appellant’s argument is also unpersuasive because the preponderance
of the evidence does not support Appellant’s characterization of Strickland.
Strickland teaches that its invention features flavored tobacco bursts (tabs)
which may be “effervescent in nature.” Strickland ¶¶ 3, 32. Strickland
further teaches that its compositions may include flavor extracts or a
sweetener such as sorbitol or, as recited by claim 1, erythritol. Id. ¶ 51.
Strickland, therefore, strongly suggests the use of sweeteners (including
sugar alcohols such as sorbitol or erythritol) for use in its effervescent tabs.
Therefore, the Examiner’s determination that a person of skill in the art
would look to other references that teach edible effervescent tabs making use
of sugar alcohols in order to identify more specific information about how to
employ Strickland’s effervescent tabs is well founded. Ans. 7–9.
Appellant further argues that a person of skill in the art would not rely
on Cherukuri to reach claim 1’s recitation of a sugar alcohol comprising a
sugar alcohol selected from the group consisting of erythritol, isomalt, and
mixtures thereof. Appeal Br. 8–9. Appellant’s argument is unpersuasive.
The preponderance of the evidence supports the Examiner’s position that
Cherukuri teaches that isomalt, like sorbitol, is a known compressible sugar
alcohol that would be an obvious substitute. Ans. 23; Cherukuri ¶ 46. The
preponderance of the evidence also supports that there would have been a
reasonable expectation of success in utilizing isomalt with Strickland’s tabs.
See, e.g., Strickland ¶¶ 32 (suggesting that tabs include flavoring or
sweeteners), 51 (suggesting sorbitol and erythritol as sweeteners); Cherukuri
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¶¶ 42, 46 (indicating that sorbitol, isomalt, and erythritols are suitable
compressible sugar-free materials for use in an edible, effervescent product).
Because Appellant’s arguments do not identify reversible error, we
sustain the Examiner’s rejection of claims 1, 10, 23–31, 33–36, and 38.
With respect to claim 6, Appellant argues that the references do not
teach a sugar alcohol material containing an entrapped gaseous component
that is in particulate form. Appeal Br. 10. The Examiner, however, finds
that Gonzales teaches gasified sugar alcohol in particulate form. Ans. 23–
24. Appellant does not persuasively dispute this finding. Accordingly, this
argument does not identify error, and we sustain the Examiner’s rejection of
claims 6–9.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6–20, 23–
31, 33–36,
38
103 Strickland, Gonzales,
Cherukuri
1, 6–20,
23–31, 33–
36, 38

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED