R. J. REYNOLDS TOBACCO COMPANY

Patent Trials and Appeals Board

Dec 24, 2021

2021002448 (P.T.A.B. Dec. 24, 2021)

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.
14/802,667 07/17/2015 John Brice O'Brien R60999 11220US.1
(0947.0)
7782
26158 7590 12/24/2021
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
ROSARIO-APONTE, ALBA T
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
12/24/2021 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 BRICE O'BRIEN, FREDERIC PHILIPPE AMPOLINI, and
JAMES WILLIAM ROGERS
Appeal 2021-002448
Application 14/802,667
Technology Center 3700
Before JENNIFER D. BAHR, KEVIN F. TURNER, and
DANIEL S. SONG, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7, and 9. The rejections of claims
6 and 8 have been withdrawn by the Examiner. Ans. 5–6. 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(a). The Appellant identifies the real party in interest as RAI
Strategic Holdings, Inc. Appeal Br. 1.
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Application 14/802,667

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CLAIMED SUBJECT MATTER
The claims are directed to a contained liquid system for refilling
aerosol delivery devices. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An aerosol delivery device comprising:
a housing defining a refillable reservoir for storing an
aerosol precursor composition;
an atomizer contained within the housing and configured
to produce an aerosol from the aerosol precursor composition;
and
an adapter coupled to the housing and removably, sealably
connectable with a container for refilling the reservoir with
aerosol precursor composition, the adapter configured to engage
a valve of the container during refilling of the reservoir, the
adapter including a body defining separate and distinct filling
and airflow ports, the filling port being for transfer of aerosol
precursor composition from the container into the reservoir
during engagement of the adapter and valve in which the airflow
port is closed by the valve to prevent the aerosol precursor
composition from passing through the airflow port, the airflow
port being for the flow of air through at least the portion of the
housing when the adapter and valve are disengaged, wherein the
airflow port is on the aerosol delivery device and the valve is on
the container.
Appeal Br. 12 (Claims App.).
OPINION
The Examiner rejects claims 1–5, 7, and 9 under 35 U.S.C.
§ 102(a)(2) as being anticipated by Levitz (US 2016/0120227 A1, publ. May
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Application 14/802,667

3
5, 2016). Final Act. 2.2 The Examiner finds that Levitz anticipates these
claims in disclosing:
separate and distinct filling (ports formed by slots 64) and
airflow ports (port defined by central air passage or chimney
58; as shown in Fig. 7 and 10), the filling port being for transfer
of aerosol precursor composition from the container into the
reservoir during engagement of the adapter and valve in which
the airflow port is closed by the valve to prevent the aerosol
precursor composition from passing through the airflow port
(p.0092; as shown in Fig. 10).
Final Act. 2–3.
The Appellant argues that the Examiner’s anticipation rejection is
improper because Levitz fails to disclose the claimed filling port. Appeal
Br. 4. In particular, the Appellant asserts:
The specification defines a “port” as “a narrow and elongated
passageway through which liquid, air, and the like may be
transported.” . . . Consequently, the separate, distinct filling port
recited in the claims is a separate, distinct, narrow and
elongated passageway in an adapter for the transfer of aerosol
precursor composition from the container into the reservoir
during engagement of the adapter.
Appeal Br. 3 (citing Spec. 21, ll. 9–15); see also Reply Br. 2.
Thus, the Appellant argues that “the perforations 64 in the perforated
disk 62 shown in Levitz are not filling ports” because the perforations “are
not narrow and elongated passageways.” Appeal Br. 4; see also Reply Br. 2.
In addition, the Appellant also argues that “[d]isk 50, like the perforated disk
62, is also shown as having a flat profile, without any elongated passageway

2 The rejection of claim 6 as being anticipated by Levitz has been withdrawn
by the Examiner. Ans. 5. In addition, the rejections of claim 8 under 35
U.S.C. § 103 have also been withdrawn. Ans. 6–7.
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Application 14/802,667

4
for the transfer of aerosol precursor composition” such that the spring-
loaded disk 50 is also not a filling port. Appeal Br. 5.
The Appellant’s arguments are unpersuasive. As the Examiner points
out, the Specification states that “[a]s used herein, a port may refer to a
narrow and elongated passageway through which liquid, air, and the like
may be transported.” Spec. 21, ll. 7–9 (emphasis added); Ans. 8. The term
“may” used in describing the “port” is merely permissive, and is not a term
that defines the claimed port to a specific shape, or otherwise disavows, the
full scope of the term. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1580 (Fed. Cir. 1996) (two exceptions to the applicability of broadest
reasonable interpretation in view of the Specification are: 1) when a patentee
sets out a definition and acts as his own lexicographer, or 2) when the
patentee disavows the full scope of a claim term either in the specification or
during prosecution). Thus, the Examiner is correct that “there is no
definition for ‘port’ in the specification[,] just options as to what a port may
be.” Ans. 8.
Referring to the Examiner’s citation to the Specification, the
Appellant responds that “the cross section of the port does not in fact bear on
the port being a narrow and elongated passageway.” Reply Br. 2–3.
However, the point being made by the Examiner is that contrary to the
Appellant’s assertion, the portion of the Specification relied upon as defining
the term “port,” actually does not define the term “port” so as to limit its
scope to “a narrow and elongated passageway” as asserted by the Appellant.
Ans. 8. Instead, the Appellant is seeking to import a particular embodiment
from the Specification into the claim, which is improper. See Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)
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Application 14/802,667

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(“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the
embodiment.”).
The Appellant also argues that the perforations 64 “are not described
in Levitz as being used themselves for the transfer of aerosol precursor
composition.” Appeal Br. 4; see also Reply Br. 2. According to the
Appellant, “Levitz does not describe any action by which the perforations
are used as a filling port,” and instead, “the cited perforations are used to
orient the crown described in Levitz, which can be used to press the spring-
loaded disk 50 and an associated gasket.” Appeal Br. 4. Thus, the
Appellant argues that “[n]othing in Levitz indicates that the cited
perforations are ports through which liquid is transferred; the perforations
are instead filled by the teeth from the crown.” Appeal Br. 4.
The Appellant’s arguments are unpersuasive, and we agree with the
Examiner’s finding that “[t]he perforations 64 of Levitz are used as filling
ports since there is no other way for the liquid to be transfer[red] from the
container to the reservoir 18 besides the perforations 64.” Ans. 8. In
particular, as the Appellant concedes, in Levitz, the teeth 84 of the crown 26
are “used to press the spring-loaded disk 50 and an associated gasket [52].”
Appeal Br. 4; Reply Br. 4 (“The teeth do depress a spring-loaded disk
. . . .”); Levitz ¶ 92; Figs. 7, 10. This would separate the gasket 52 from the
back surface of the perforated disk 62, and allow the pre-vapor formulation
to flow from the refill bottle 10, through the perforations 64, and into the
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Application 14/802,667

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reservoir 18 of cartridge 40. As the Examiner also explains,
The disk 50 of the aerosol delivery device is pushed by teeth
84, of the container 10, which opens the channels formed by the
perforations 64, allowing liquid to flow from the container 10 to
the reservoir 18 (p.0092) while the ball valve 30 closes the
airflow port 58 of the aerosol delivery device (as shown in Fig.
10).
Ans. 8.
The Appellant’s assertion that the perforations are “filled by the teeth
from the crown” is not substantiated by the facts before us considering
sizing the teeth to “fill” the perforations is neither disclosed nor required to
press the spring-loaded disk 50 by, and such sizing of the teeth would render
the “Reservoir Filling System” of Levitz entirely inoperable for performing
the function of filling. Appeal Br. 4; see Levitz ¶ 92 (“the teeth 84 . . . are
inserted through the perforations 64 in the perforated disk 62. The teeth 84
press the spring-loaded disk 50 downward . . . Once the spring-loaded disk
50 is depressed and the spring-loaded ball 30 is pressed in and engaged with
the chimney 58, the pre-vapor formulation is allowed to flow from the refill
bottle 10 or tube 12 into the reservoir 18.”). Given that the only openings
provided in the cartridge 40 are the perforations 64 and an opening at the
end of chimney 58 (which is blocked closed by ball 30 of the refill bottle 10
when the cartridge 40 and the refill bottle 10 are mated together for
refilling), the device of Levitz would have to utilize the perforations 64 as a
port through which the liquid is transferred from the refill bottle 10. See In
re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (A skilled artisan must be
presumed to know something about the art apart from what the references
expressly disclose).
Therefore, in view of the above, we affirm the Examiner’s rejection of
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Application 14/802,667

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independent claim 1. Except for dependent claim 5 addressed below, the
Appellant does not submit any arguments directed to the remaining
dependent claims also rejected. Accordingly, we affirm the rejection of
claims 2–4, 7, and 9 as well.

Claim 5
Claim 5 depends from claim 4, which depends from claim 1, and
recites, “wherein the nozzle includes a spout for transfer of aerosol precursor
composition from the container into the reservoir, and the filling port is sized
to receive the spout when the adapter and valve are engaged.” Appeal Br.
13 (Claims App.). The Appellant argues that the rejection is improper
because “Levitz does not disclose a spout, and provides no teaching or
suggestion of sizing a filling portion to receive a spout when the adapter and
valve are engaged.” Appeal Br. 5; see also Reply Br. 4. In that regard, the
Appellant argues that neither the teeth 84 nor the crown 32 of Levitz is a
spout for transfer of aerosol precursor composition. Appeal Br. 5; see also
Reply Br. 4.
These arguments are unpersuasive because, as the Examiner correctly
points out, the recited spout is part of the container for refilling, which “is
not claimed as part of the invention.” Ans. 9. Indeed, the Appellant
“acknowledges that the container is not part of the claimed aerosol delivery
device.” Reply Br. 4. Accordingly, we find no error in the Examiner’s
determination that “[a]ll the limitations related to the container are written as
intended use,” and are entitled to little or no patentable weight. Ans. 9.
Although the Appellant “acknowledges that the container is not part
of the claimed aerosol delivery device,” it points out that “the filling port is
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part of the claimed aerosol delivery device.” Reply Br. 4. Accordingly, the
Appellant argues that claim 5 “specifically limits the filling port” as to its
size, which must be sized “to receive the spout when the adapter and valve
are engaged.” Reply Br. 4. Considering that the claimed invention does not
include the spout, we find this argument unpersuasive as a “spout” is not a
defined term in the art that would require a particular size. Moreover,
although the Appellant relies on the recited “size” of the filling port, we
observe that size is not ordinarily a patentable feature. In re Rose, 220 F.2d
459, 463 (CCPA 1955) (“size of the article under consideration . . . is not
ordinarily a matter of invention”); see also Gardner v. TEC Systems, Inc.,
725 F.2d 1338, 1346 (Fed. Cir. 1984); In re Kirke, 40 F.2d 765, 767 (CCPA
1930).
Therefore, in view of the above, we also affirm this rejection as to
claim 5.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7, 9 102(a)(2) Levitz 1–5, 7, 9

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Application 14/802,667

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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