RAI STRATEGIC HOLDINGS, INC.

Patent Trials and Appeals Board

Oct 8, 2020

2019005089 (P.T.A.B. Oct. 8, 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.
15/042,868 02/12/2016 Michael F. Davis R60999 11550US.1
(1082.6)
1036
26158 7590 10/08/2020
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
WILLETT, TARYN T
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
10/08/2020 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):
BostonDocket@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 MICHAEL F. DAVIS, PERCY D. PHILLIPS,
JAMES WILLIAM ROGERS, LISA E. BROWN, and
JAMES DEMOPOLOUS
Appeal 2019-005089
Application 15/042,868
Technology Center 1700
Before MONTÉ T. SQUIRE, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.
REN, 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 1–8, 10–13, 15–19, 21, and 22. See
Final Act. 5, 6, 13, 14, 19, 20. 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 RAI Strategic
Holdings, Inc. Appeal Br. 1.
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Application 15/042,868

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CLAIMED SUBJECT MATTER
“The present disclosure relates to aerosol delivery devices such as
smoking articles that may utilize electrically generated heat for the
production of aerosol (e.g., smoking articles commonly referred to as
electronic cigarettes).” Spec. 1:4–6. Independent claims 1, 8, 17, and 19
reproduced below, are illustrative of the claimed subject matter:
1. An adapter for mating a container of aerosol precursor
composition with an aerosol delivery device having a refillable
reservoir, the adapter comprising:
a body having a container-side end and an opposing,
device-side end that are sealably connectable with respectively
the container and aerosol delivery device, and the body defining
a passageway between the container-side and device-side ends
for transfer of aerosol precursor composition from the container
into the refillable reservoir,
wherein the container-side end is configured to engage a
valve of the container during refilling of the reservoir, the
container-side end defining separate and distinct filling and
mating ports, the filling port being for transfer of aerosol
precursor composition from the container into the refillable
reservoir during engagement of the container-side end and valve,
and the mating port defining an inner cavity sized to receive
therein a matching portion of the valve for connection therewith.
8. An adapter for mating a container of aerosol precursor
composition with an aerosol delivery device having a refillable
reservoir, the adapter comprising:
a body having a container-side end and an opposing,
device-side end that are sealably connectable with respectively
the container and aerosol delivery device, and the body defining
a passageway between the container-side and device-side ends
for transfer of aerosol precursor composition from the container
into the refillable reservoir,
wherein the device-side end includes a valve configured
to engage the aerosol delivery device during refilling of the
reservoir, the aerosol delivery device defining separate and
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distinct filling and airflow ports, the filling port being for
transfer aerosol precursor composition from the container into
the refillable reservoir during engagement of the valve and the
aerosol delivery device 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 a
flow of air through a portion of the aerosol delivery device
when the valve and aerosol delivery device are disengaged,
wherein the valve includes a depressible valve body
including a first valve member and a second valve member, the
first valve member being for opening a passageway to aerosol
precursor composition within the container, and the second
valve member being for closing the airflow port, when the
valve body is depressed, and
wherein the airflow port defines an inner cavity, and the
second valve member includes a matching portion, the inner
cavity being sized to receive therein the matching portion of the
second valve member.

17. A method of mating a container of aerosol precursor
composition with an aerosol delivery device having a refillable
reservoir for refilling the aerosol delivery device, the method
comprising:
sealably connecting an adapter with the container and
aerosol delivery device, the adapter comprising a body having a
container-side end and an opposing, device-side end that are
sealably connectable with respectively the container and aerosol
delivery device, and the body defining a passageway between
the container-side and device-side ends for transfer of aerosol
precursor composition from the container into the refillable
reservoir; and
transferring aerosol precursor composition from the
container through the passageway and into the reservoir to
thereby refill the reservoir,
wherein the container-side end is configured to engage a
valve of the container during refilling of the reservoir, the
container-side end defining separate and distinct mating and
filling ports, the mating port defining an inner cavity sized to
receive therein a matching portion of the valve for connection
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therewith, the filling port being for transfer of aerosol precursor
composition from the container into the refillable reservoir
during engagement of the container-side end and valve.

19. A method of mating a container of aerosol precursor
composition with an aerosol delivery device having a refillable
reservoir for refilling the aerosol delivery device, the method
comprising:
sealably connecting an adapter with the container and
aerosol delivery device, the adapter comprising a body having a
container-side end and an opposing, device-side end that are
sealably connectable with respectively the container and aerosol
delivery device, and the body defining a passageway between
the container-side and device-side ends for transfer of aerosol
precursor composition from the container into the refillable
reservoir; and
transferring aerosol precursor composition from the
container through the passageway and into the reservoir to
thereby refill the reservoir,
wherein the device-side end includes a valve configured
to engage the aerosol delivery device during refilling of the
reservoir, the aerosol delivery device defining separate and
distinct airflow and filling ports, the airflow port being for a
flow of air through a portion of the aerosol delivery device
when the valve and aerosol delivery device are disengaged, the
filling port being for transfer aerosol precursor composition
from the container into the refillable reservoir during
engagement of the valve and the aerosol delivery device in
which the airflow port is closed by the valve to prevent the
aerosol precursor composition from passing through the airflow
port,
wherein the valve includes a depressible valve body
including a first valve member and a second valve member, the
first valve member being for opening a passageway to aerosol
precursor composition within the container, and the second
valve member being for closing the airflow port, when the
valve body is depressed, and
wherein the airflow port defines an inner cavity, and the
second valve member includes a matching portion, the inner
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Application 15/042,868

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cavity being sized to receive therein the matching portion of the
second valve member.

Claims Appendix (Appeal Br. 25, 26–27, 28–30).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Kribs US 2014/0283946 A1 Sept. 25, 2014
Levitz US 2016/0120227 A1 May 5, 2016
Scott WO 2016/128717 Al Aug. 18, 2016

REJECTIONS
The Examiner rejects claims 21 and 22 under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre–AIA), first paragraph. Final Act. 5.
Claims 1–5, 7, 8, and 10–12 are rejected under 35 U.S.C. § 102(a)(2)
as being anticipated by Scott. Final Act. 6.
Claims 1 and 6 are rejected under 35 U.S.C. § 102(a)(2) as being
anticipated by Kribs. Final Act. 13.
Claims 8, 12, 13, and 16–19 are rejected under 35 U.S.C. § 102(a)(2)
as being anticipated by Levitz. Final Act. 14.
Claim 15, 21, and 22 are rejected under 35 U.S.C. § 103 as being
unpatentable over Levitz. Final Act. 19, 20.
Claim 21 is rejected under 35 U.S.C. § 103 as being unpatentable over
Scott. Final Act. 19.

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OPINION
Written Description
Appellant does not address the Examiner’s rejection of claims 21 and
22 for failing to meet the written description requirement. Compare Appeal
Br. 5 (listing “Grounds of Rejection to be reviewed on Appeal” which does
not include the written description rejection), with Final Act. 5. The written
description is summarily affirmed.
Claim 1 (Scott)2
Appellant argues that Scott does not disclose “a body having a
container-side end and an opposing, device-side end,” as recited in claim 1.
Appeal Br. 8. According to Appellant, cylinder 229 “is not an end much less
a container-end of the female component 204 (body), nor is there any other
end (device-side end) of the female component 204 that is opposite the
cylinder 229.” Id at 7. (emphasis removed).
Appellant, however, acknowledges that “Scott’s cylinder is a body
that includes opposing ends that engage respectively the male component
202 and electronic cigarette 276.” Appeal Br. 7–8; Reply Br. 2 (stating the
same). As Scott undisputedly discloses: “The male component 202 of the
valve assembly is disposed in the neck of a liquid dispenser bottle 274. The
female component 204 of the valve assembly is disposed in the reservoir of a
smoking-substitute device, e.g. e-cigarette, 276.” Scott 17:16–19. To the
extent that Appellant’s argument implies that the recited “container-side

2 Appellant argues for the patentability of claims 1–5 and 7 over Scott as a
group with claim 1 being the representative claim. See Appeal Br. 6–9.
These claims stand or fall together with regard to the anticipation rejection
over Scott. See 37 C.F.R. § 41.37(c)(1)(iv).
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end” excludes a prior art structure having “a terminating surface which is
proximal to the container of aerosol precursor solution” –– which is an
undisputed finding by the Examiner (Ans. 15) –– Appellant has not
sufficiently explained why.
Moreover, the Examiner points out that the recited “‘container-side
end’ does not require the discussed structure of being outside of the
electronic cigarette or smoking device and does not require where the
claimed adapted cannot or does not fit within the smoking device.” Ans. 15.
Appellant does not argue otherwise. See Reply Br. 2–3. No error has been
identified in this aspect of the rejection.
Appellant next argues that the Examiner reversibly erred in finding
that Scott slot 220a discloses “an inner cavity sized to receive therein a
matching portion of the valve for connection therewith” as recited. Appeal
Br. 9. Appellant acknowledges that Scott discloses tongue 208a which
“defines the side of a cavity into which the tab 208a is sized to fit when the
adapter is engaged” as the Examiner finds. Ans. 15; compare Final Act. 26
(stating the same), with Appeal Br. 9 (“Appellant acknowledges that the
Examiner also relies on protrusion 208a (described as tongue 208a) for the
valve . . . .”). Appellant also acknowledges that “the tongue 208a is actually
a component of a valve assembly 200.” Appeal Br. 9.
Appellant, however, argues that “tongue is not a valve.” Appeal Br. 9.
This argument is not persuasive because it is incommensurate in scope with
the claim language which requires only that “an inner cavity sized to receive
therein a matching portion of the valve . . . .” Appellant also argues that
“‘the side of a cavity’” is not itself a cavity” (id.) which is incommensurate
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in scope with the claim language and therefore unpersuasive. The rejection
is sustained as no reversible error has been identified.
Claim 8 (Scott)3
In rejecting claim 8, the Examiner finds that the prior art structure is
identical to the recited adapter structure where as “the interaction of the
adapter with the container of aerosol precursor composition and the aerosol
delivery device having a refillable reservoir is considered to be intended use
of the adapter.” Final Act. 3, 9 (“Thus the interaction between the adapter
and the aerosol delivery device is considered to be intended use and not
structurally limiting on the adapter itself.”).
Appellant does not address this aspect of the rejection but only argues
that the Examiner’s findings are “not consistent with Scott.” See Appeal Br.
11. We are not persuaded as Appellant’s argument does not structurally
distinguish the prior art and does not identify error in the Examiner’s
findings. See Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what
a device does.”). Appellant’s remaining arguments including that “the
partially inwardly extending portion 264 is not a port much less a filling
port” do not support the argument with evidence or specificity. Id. at 11
(emphasis removed). The rejection is accordingly sustained.

3 Appellant argues for the patentability of claims 8 and 10–12 over Scott as a
group with claim 8 being the representative claim. See Appeal Br. 9–11.
These claims stand or fall together with regard to the anticipation rejection
over Scott. See 37 C.F.R. § 41.37(c)(1)(iv).
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Claim 21 (Scott)
Claim 21 depends from claim 8 and additionally recites “wherein the
valve body is a unitary valve body that defines the first valve member and
the second valve member.”
Appellant argues that the Examiner reversibly erred in finding that
strut 257 and collar 238 in Scott are the first and second valve members
recited in claim 21. Appeal Br. 12. Appellant’s conclusory statement that
“the stopper 241 clearly does not define the strut 257 or the collar 238” (id.)
is unelaborated and does not identify error in the Examiner’s findings.
Appellant’s other arguments including that the modification of the prior art
structure would render the prior art unsatisfactory for its intended purpose
(id.) are likewise unelaborated and unsupported with evidence.
With regard to Appellant’s argument that the recited “unitary valve
body” means “a single body,” (id.) even under Appellant’s interpretation, the
Examiner’s finding is unchallenged that “it has generally been recognized
that making the parts integral or separable when the operation of the device
is not otherwise changed is within the level of ordinary skill in the art.”
Compare id., with Final Act. 20; see also In re Mullin, 481 F.2d 1333, 1335–
36 (CCPA 1973) (holding that an intermediate structure in prior art may
nonetheless anticipate). The rejection of claim 21 over Scott is sustained as a
result.
Claim 1 (Kribs)4
Appellant argues that the Examiner erred in rejecting claim 1 over
Kribs because “the Examiner concedes that ‘Kribs . . . is silent to the nozzle

4 Appellant argues for the patentability of claims 1 and 6 over Kribs as a
group with claim 1 being the representative claim. See Appeal Br. 14–15.
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further comprising a valve.’” Appeal Br. 14 (citing Final Act. 25).
Appellant’s argument, however, is not based on the Examiner’s findings
with regard to claim 1 over Kribs but instead based on the Examiner’s
statement with regard to the rejection of a different claim in a previous office
action. See Final Act. 13 (analyzing the anticipation rejection of claim 1 over
Kribs); Final Act. 21–27. As the Examiner points out correctly, “Appellant
is conflating two different claimed embodiments in this argument that is not
commensurate in scope with the two different claimed embodiments
reflected in claims 1 and 8.” Ans. 18.
Appellant’s remaining arguments are conclusory and do not identify
reversible error in the Examiner’s findings. See Appeal Br. 14–15. For
example, Appellant argues that second portion 126 of Kribs does not define
the bore 132 (filling port) without explaining why the Examiner erred. Id. at
15. The rejection of claim 1 over Kribs is sustained as a result.
Claim 8 (Levitz)5
In rejecting claim 8, the Examiner finds, among others, that Levitz
discloses a ball valve 26, spring loaded ball 30, and teeth 84 meeting the
recited valve, depressible valve body and first valve, respectively. Final Act.
15.
Appellant argues that the Examiner erred because spring loaded ball
30 and teeth 84 “are completely separate components, with the teeth 84 in

These claims stand or fall together with regard to the anticipation rejection
over Kribs. See 37 C.F.R. § 41.37(c)(1)(iv).
5 Appellant argues for the patentability of claims 8, 12, 13, 15, 16, and 21
over Levitz as a group with claim 8 being the representative claim. See
Appeal Br. 15–16. These claims stand or fall together with regard to the
anticipation rejection over Levitz. See 37 C.F.R. § 41.37(c)(1)(iv).
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fact not having any connection to the spring-loaded ball 30.” Appeal Br. 16.
Appellant’s argument is not persuasive because it is not supported by
evidence. Moreover, Appellant’s argument is not persuasive because it is
incommensurate in scope with the claim language which does not require the
recited components to be connected.
With regard to the limitation that “the inner cavity being sized to
receive therein the matching portion of the second valve member,”
Appellant acknowledges that Levitz discloses a second valve member
(spring loaded ball 30) “pressed into contact with” an airflow port (chimney
50). Appeal Br. 16.
The Examiner finds that “[t]he pressing of the ball into the chimney
can be considered to be a matching portion that is receiving by the cavity of
the chimney” because “at least a portion of the ball valve fits into the cavity
of the chimney in order to facilitate the taught closing the of the valve.” Ans.
18. The Examiner reasons that “[i]f the portion did not match, i.e. fill the
cavity space, then the device would not function as taught where the valve
blocks the air passage while the precursor solution flows into the reservoir.”
Id. Appellant argues that “the Examiner fails to establish that Levitz
explicitly or inherently discloses that at least a portion of the ball valve fits
into the cavity of the chimney” (Reply Br. 10) without addressing the
Examiner’s findings. Because Appellant fails to identify reversible error in
the rejection, the rejection of claim 8 over Levitz is sustained.
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Claim 21 (Levitz) 6
Appellant argues that the Examiner reversibly erred in finding that
spring loaded ball 30 of Levitz is a valve body which “defines the first valve
member and the second valve member” as recited in claim 21. Appeal Br.
17. Appellant’s conclusory statement that spring loaded ball 30 “does not
define the teeth 84” (id.) is unelaborated and does not identify error in the
Examiner’s findings. Appellant’s other arguments including that the
modification of the prior art structure would render the prior art
unsatisfactory for its intended purpose (id.) are likewise unelaborated and
unsupported with evidence.
With regard to Appellant’s argument that the recited “unitary valve
body” means “a single body,” (id.) even under Appellant’s interpretation, the
Examiner’s finding is unchallenged that “it has generally been recognized
that making the parts integral or separable when the operation of the device
is not otherwise changed is within the level of ordinary skill in the art.”
Compare id., with Final Act. 20. The rejection of claim 21 over Levitz is
sustained as a result.
Claims 17 & 18 (Levitz) 7
Appellant argues that the Examiner reversibly erred in finding that
Levitz discloses a “container-side end [that] is configured to engage a valve

6 Appellant argues for the patentability of claims 15 and 21 over Levitz as a
group with claim 21 being the representative claim. See Appeal Br. 16–18.
These claims stand or fall together with regard to the anticipation rejection
over Levitz. See 37 C.F.R. § 41.37(c)(1)(iv).
7 Appellant argues for the patentability of claims 17 and 18 over Levitz as a
group with claim 17 being the representative claim. See Appeal Br. 18–21.
These claims stand or fall together with regard to the anticipation rejection
over Levitz. See 37 C.F.R. § 41.37(c)(1)(iv).
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of the container” as recited in claim 17. Appeal Br. 20. Appellant argues that
that “Levitz at best discloses that the device-side end (and not container-side
end) is configured to engage the valve of the container.” Id. Appellant cites
as support Levitz’s disclosure that “[t]he flexible ball valve assembly 211 is
positioned within the neck 207 of the refill interface 200 . . . .” Id. (citing
Levitz ¶ 20).
We are not persuaded because the cited portion of Levitz does not
support Appellant’s argument. The disclosure that Levitz valve assembly
211 “is positioned within the neck 207” does not preclude base portion 241
to be configured to engage valve assembly 211 as the Examiner finds. See
Final Act. 16.
Appellant also argues that the Examiner erred in finding Levitz
sidewall 243 is the recited mating port because “the base portion 241 and
sidewall 243 are completely separate and distinct elements[.]” Appeal Br.
20. We are not persuaded by this argument because the argument is
incommensurate in scope with the claim language which requires only that
“the container-side end defining separate and distinct mating and filling
ports.” We further note that the Examiner’s finding is supported by the
record as Appellant acknowledges that “the base portion surround[s] the
sidewall.” Id. (citing Levitz ¶ 119).
Appellant argues that no portion of valve assembly 211 “is received
within any cavity defined by the flange 247.” Id. Appellant, however, does
not elaborate on why the Examiner reversibly erred in finding that
components 211/213/215 which are shown to be connected with flange 247
discloses the recited “inner cavity sized to receive therein a matching portion
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of the valve for connection therewith.” Compare id., with Final Act. 16; see
also Ans. 19–20.
Appellant lastly argues that the Examiner erred in the findings of the
filling port. Appeal Br. 20–21. Appellant, however, does not identify error in
the Examiner’s finding that a “passageway could have the filling port at the
beginning of the passageway, as taught by Levitz.” Compare Reply Br. 13,
with Ans. 20. Absent identification of reversible error in the Examiner’s
findings, the rejection is sustained.
Claim 19 (Levitz)
Appellant argues that the Examiner reversibly erred in finding that
crown 32 of Levitz is a valve. Appeal Br. 23. Appellant, however, does not
structurally distinguish the prior art from the component recited in the claim.
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co., 909 F.2d at 1468. Appellant’s argument is also
unelaborated without sufficient explanation as to why the Examiner erred in
finding that crown 32 of Levitz discloses the recited component. We
therefore decline to disturb the Examiner’s fact finding here.
As to Appellant’s argument that spring loaded ball 30 and teeth 84
(which the Examiner finds to disclose the recited valve body and first valve
member, respectively) are unconnected, the argument is incommensurate in
scope with the claim language. More specifically, the claim language that a
“valve includes a depressible valve body including a first valve member and
a second valve member” does not require a particular physical configuration
of the valve body and the first valve member. The rejection of claim 19 is
sustained.
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Claim 22 (Levitz)
Claim 22 depends from claim 19 and additionally recites: “wherein
the valve body is a unitary valve body that defines the first valve member
and the second valve member, the first valve member defined by the unitary
body opening the passageway, and the second valve member defined by the
unitary body closing the airflow port, when the adapter is sealably connected
with the container and aerosol delivery device and the valve body is thereby
depressed.”
In arguing that the Examiner reversibly erred here, Appellant argues
that crown 32 of Levitz “does not define the ball 30.” Appeal Br. 24. The
argument is unelaborated and does not identify error in the Examiner’s
findings. Appellant’s other arguments including that the modification of the
prior art structure would render the prior art unsatisfactory for its intended
purpose (id.) are likewise unelaborated and unsupported with evidence.
With regard to Appellant’s argument that the recited “unitary valve
body” means “a single body,” (id.) even under Appellant’s interpretation, the
Examiner’s finding is unchallenged that “it has generally been recognized
that making the parts integral or separable when the operation of the device
is not otherwise changed is within the level of ordinary skill in the art.”
Compare Appeal Br. 24, with Final Act. 20. The rejection of claim 22 over
Levitz is sustained as a result.

CONCLUSION
The Examiner’s rejections are affirmed.
In summary:
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 22 112(a) or
112, first
paragraph
Written description 21, 22
1–5, 7, 8,
10–12
102(a)(2) Scott 1– 5, 7 –8,
10–12

1, 6 102(a)(2) Kribs 1, 6
8, 12–13,
16–19
102(a)(2) Levitz 8, 12–13,
16–19

15, 21, 22 103(a) Levitz 15, 21, 22
21 103(a) Scott 21
Overall
Outcome:
1–8, 10–
13, 15–19,
21, 22

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)(1)(iv).
AFFIRMED