Philip Morris USA Inc.

Patent Trials and Appeals Board

Sep 25, 2020

2019003529 (P.T.A.B. Sep. 25, 2020)

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.
14/141,146 12/26/2013 Niranjan Maharajh 34089-186 9337
26691 7590 09/25/2020
POTTER ANDERSON & CORROON LLP
ATTN: JANET E. REED, PH.D.
P.O. BOX 951
WILMINGTON, DE 19899-0951
EXAMINER
DODSON, JUSTIN C
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
09/25/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NIRANJAN MAHARAJH, GENE FAISON,
SUDARSAN SRINIVASAN, DAVID AMMANN,
DONALD BROOKMAN, AMIT LIMAYE, and RONALD FORMOSA
____________________

Appeal 2019-003529
Application 14/141,146
Technology Center 3700
____________________

Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–3, 6–12, 14, 16–20, and 23. We have jurisdiction
under 35 U.S.C. § 6(b).2

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed Sept. 4, 2018) and Reply Brief (“Reply Br.,” filed Mar. 28, 2019), and
the Examiner’s Answer (“Ans.,” mailed Jan. 28, 2019), and Final Office
Action (“Final Act.,” mailed Mar. 30, 2018). Appellant identifies Philip
Morris USA Inc. as the real party in interest. Appeal Br. 2.
2 Claims 4, 5, 13, 15, 21, 22, and 24 were canceled. Id.
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We AFFIRM.
CLAIMED INVENTION
Appellant’s invention relates to “an aerosol generator wherein a liquid
formulation is at least partially vaporized in a capillary passage and
discharged from the capillary passage to form an aerosol.” Spec. ¶ 3. The
invention includes a fluidic element that “increases the pressure of the liquid
formulation as the liquid formulation enters the capillary passage.” Id.
Claim 1, reproduced below, is the sole independent claim on appeal
and representative of the subject matter on appeal (emphasis added):
1. A method of producing an aerosol comprising:
supplying a liquid material to a heated capillary passage
located in an aerosol generation system, the aerosol generation
system comprising:
an aerosol generator comprising the heated capillary
passage having an inlet and an outlet, wherein the liquid material
is at least partially vaporized in the heated capillary passage;
a pumping unit adapted to supply the liquid material
to the aerosol generator; and
a fluidic element located between the pumping unit
and the inlet of the heated capillary passage, wherein the fluidic
element is a backpressure inducing fluidic element, which
dampens pressure oscillations in the aerosol generation system;
and
introducing the backpressure to the aerosol generation
system created by the fluidic element, thereby at least partially
vaporizing the liquid material in the heated capillary passage and
discharging the at least partially vaporized liquid material from
the outlet of the heated capillary passage to form the aerosol.

REJECTIONS
Claims 1–3, 10, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Maharajh et al. (US 2006/0047368 A1, pub. Mar. 2, 2006)
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Application 14/141,146

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(“Maharajh”), Howell et al. (US 5,743,251, iss. Apr. 28, 1998) (“Howell”),
and Nichols et al. (US 2005/0235991 A1, pub. Oct. 27, 2005) (“Nichols”).
Claims 6, 11, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Maharajh, Howell, Nichols, and Nguyen et al.
(US 7,147,170 B2, iss. Dec. 12, 2006) (“Nguyen”).
Claims 7–9 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Maharajh, Howell, Nichols, and Baran (US 5,964,223, iss. Oct. 12, 1999).
Claims 12, 14, 16, 19, 20, and 23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Maharajh, Howell, Nichols, and Sievers et al.
(US 2002/0018815 A1, pub. Feb. 14, 2002) (“Sievers”).

ANALYSIS
Claim 1 recites “a fluidic element located between the pumping unit
and the inlet of the heated capillary passage, wherein the fluidic element is a
backpressure inducing fluidic element, which dampens pressure oscillations
in the aerosol generation system.” Appeal Br., Claims App. 1. The
Examiner interprets the limitation “backpressure inducing fluidic element,
which dampens pressure oscillations in the aerosol generation system” under
35 U.S.C. § 112, sixth paragraph. Final Act. 6–7; Ans. 5. Specifically, the
Examiner determines that the term “backpressure inducing fluidic element”
is a generic placeholder that is not modified structurally, and performs a
recited function (i.e., “dampens pressure oscillations in the aerosol
generating system”) without reciting sufficient structure to perform the
recited function. Final Act. 6; see also id. at 7 (finding that “backpressure
inducing . . . conveys no known structure for performing the claimed
function[] and, accordingly, is not considered to be a structural modifier”).
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Appellant does not dispute the Examiner’s interpretation in the
Appeal Brief. In the Reply Brief, for the first time, Appellant argues that the
claimed fluidic element does not invoke interpretation under § 112, sixth
paragraph. Reply Br. 2–3. Appellant states that the claim does not use the
term “means” or “step,” and thus, there is a rebuttable presumption that the
claimed fluidic element does not invoke § 112, sixth paragraph. Id. at 2.
Appellant argues that the presumption is not overcome because
[i]n this particular case, one of ordinary skill in the art would
recognize that the claimed ‘fluidic element located between the
pumping unit and the inlet of the heated capillary passage’ has
sufficiently definite structure for performing the claimed
function (i.e., introducing backpressure and dampening pressure
oscillations in the aerosol generation system).
Id. at 3.
Putting aside the issue of waiver,3 Appellant does not persuade us that
the Examiner erred in interpreting the claimed backpressure inducing fluidic
element. Although omitting the word “means” in a claim term creates a
rebuttable presumption that § 112, sixth paragraph does not apply, the

3 Arguments not timely presented in an Appeal Brief generally will
not be considered when filed in a Reply Brief absent a showing of
good cause why the argument could not have been timely presented in
the Appeal Brief. See 37 C.F.R. § 41.41(b)(2) (2012); see also In re
Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument
not first raised in the brief to the Board is waived on appeal); Ex parte
Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative)
(explaining that arguments and evidence not timely presented in the
Principal Brief, will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could
not have been presented in the Principal Brief).
.

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presumption can be overcome if the claim term fails to recite sufficiently
definite structure or else recites function without reciting sufficient structure
for performing that function. See Williamson v. Citrix Online, LLC, 792
F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc).
Here, we agree with the Examiner that the claimed backpressure
inducing fluidic element uses a generic placeholder coupled with functional
language without reciting sufficient structure to achieve the function. Final
Act. 6–7. For example, a generic placeholder, “element” — having no
specific structural meaning — is preceded by the terms “backpressure
inducing” and “fluidic.” “Backpressure inducing” and “fluidic” modify the
generic placeholder functionally, not structurally. The claimed backpressure
inducing fluidic element performs the function of dampening pressure
oscillations in the aerosol generation system. However, claim 1 does not
recite sufficient structure to perform the recited dampening function.
Instead, the claim recites that the backpressure inducing fluidic element is
located between the pumping unit and the inlet of the heated capillary
passage. This language pertains to location of the fluidic element, not its
structure, and, thus, adds no structural significance to avoid interpretation
under § 112, sixth paragraph.
Under § 112, sixth paragraph, a claim limitation “shall be construed to
cover the corresponding structure . . . described in the specification and
equivalents thereof.” According to the Examiner, the Specification
describes a “tubular member” as a structure corresponding to the claimed
fluidic element. Final Act. 7 (citing Spec. ¶ 35, Figs. 5A, 5B); Ans. 5
(“Figures 5a-b and paragraph 0035 of the specification disclose fluidic
element 100 being a tubular member.”). Appellant does not dispute the
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Examiner’s finding that a tubular member is a corresponding structure
identified in the Specification. See generally Appeal Br. 6–9; Reply Br. 2–4.
Turning to the prior art, the Examiner finds that Maharajh discloses a
tubular element. Ans. 5. Specifically, the Examiner finds that Maharajh
inherently discloses a fluid communication passage or conduit that is shown
in Figure 3 as a line between pumping unit 335 and heated capillary passage
323, which is structurally a tubular element. See id.; see also Final Act. 11.
The Examiner further finds that “the structure of Maharajh would be
capable, at least to some extent, of inducing a backpressure and dampening
pressure oscillations.” Ans. at 5–6. Thus, the Examiner finds that the
corresponding tubular structure described in the Specification and
Maharajh’s fluidic element’s structure are equivalents, and that Maharajh’s
equivalent structure is capable of performing the specified function.
Appellant does not dispute the Examiner’s underlying factual findings and
evidentiary support with any particularity or otherwise apprise us of
Examiner error. See Reply Br. 4–5.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also sustain the
Examiner’s rejections of dependent claims 2, 3, 6–12, 14, 16–20, and 23,
which are not argued separately.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ Basis/References Affirmed Reversed
1–3, 10, 17 103(a) Maharajh, Howell, Nichols 1–3, 10, 17
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Claims
Rejected
35 U.S.C.
§ Basis/References Affirmed Reversed
6, 11, 18 103(a) Maharajh, Howell, Nichols, Nguyen 6, 11, 18
7–9 103(a) Maharajh, Howell, Nichols, Baran 7–9
12, 14, 16, 19,
20, 23 103(a)
Maharajh, Howell,
Nichols, Sievers
12, 14, 16,
19, 20, 23
Overall
Outcome
1–3, 6–12,
14, 16–20, 23
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