John-Paul Mua et al.Download PDFPatent Trials and Appeals BoardDec 3, 201913325765 - (D) (P.T.A.B. Dec. 3, 2019) Copy Citation 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 following e-mail address(es): BostonPatents@wbd-us.com IPDocketing@wbd-us.com 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. Appeal 2019-002237 Application 13/325,765 2 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.”). Appeal 2019-002237 Application 13/325,765 3 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. Appeal 2019-002237 Application 13/325,765 4 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 Appeal 2019-002237 Application 13/325,765 5 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 Appeal 2019-002237 Application 13/325,765 6 ¶¶ 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 Copy with citationCopy as parenthetical citation