Altria Client Services Inc.

Patent Trials and Appeals Board

Jan 7, 2021

2020000875 (P.T.A.B. Jan. 7, 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.
13/896,040 05/16/2013 Marc Rose 1021238-001408 4291
145992 7590 01/07/2021
ALCS Law Dept. - Product and IP c/o
BUCHANAN, INGERSOLL & ROONEY PC
1737 King Street
Suite 500
ALEXANDRIA, VA 22314-2727
EXAMINER
KRINKER, YANA B
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
01/07/2021 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
following e-mail address(es):
ADIPDOC1@BIPC.com
jane.fallgren@bipc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC ROSE, TIMOTHY S. SHERWOOD, and
ROBERT N. SMITH
Appeal 2020-000875
Application 13/896,040
Technology Center 1700
Before JOSEPH L. DIXON, BEVERLY A. FRANKLIN, and
DONNA M. PRAISS, Administrative Patent Judges.
DIXON, 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, 2, 4–15, 17–23, 25–31, 33–41, and
52–60. See Final Act. 1. Claims 3, 16, 19, and 32 are canceled. Claims 24
and 42–51 are withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b). We Reverse.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2018). Appellant identifies the real party in interest as Altria Client
Services LLC. Appeal Br. 3.
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Application 13/896,040

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CLAIMED SUBJECT MATTER
The claims are directed to a cigarette wrapper with novel pattern.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A wrapper for a smoking article, said wrapper
comprising:
a base web having first and second side edges extending
in a longitudinal direction and two ends extending in a
transverse direction; and
an add-on material printed on said base web according to
a pattern comprising a plurality of generally transverse,
longitudinally spaced bands including respective leading edge
portions and trailing edge portions, each band extending from
the first side edge to the second side edge at an angle with
respect to the transverse direction of the base web that is not
perpendicular to the longitudinal direction of the base web, at
least one of said leading edge portions or said trailing edge
portions of the respective bands being crenellated, and opposite
ends of the respective bands overlap at a seam when the
wrapper is disposed about a column of shredded tobacco.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Li US 2008/0295854 A1 Dec. 4, 2008

REJECTION
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 2, 4–15, 17–23, 25–
31, 33–41, 52–60
103(a) Li

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OPINION
§ 103(a)
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.” In
re Kahn, 441 F.3d 977, 985–86 (Fed. Cir. 2006) (quoting In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998)).
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“A rejection based on section 103 clearly must rest on a factual basis.
. . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office
has the initial duty of supplying the factual basis for its rejection. It may not
. . . resort to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in its factual basis.” Id.
“Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)).
“The mere fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch, 972 F.2d 1260,
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1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984)). “It is impermissible to use the claimed invention as an instruction
manual or ‘template’ to piece together the teachings of the prior art so that
the claimed invention is rendered obvious.” Fritch, 972 F.2d at 1266 (citing
In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)).

Claims 1, 2, 4–15, 17–23, 25–31, 33–41, 59, and 60
With respect to independent claims 1, 17, 33, and 41, Appellant sets
forth arguments to the claims as a group. Appeal Br. 18. We address
Appellant’s arguments to illustrative independent claim 1.
With respect to independent claim 1, Appellant argues that a web base
is not a wrapper for a smoking article as the Examiner alleges in the Li
reference. Appeal Br. 17. Appellant identifies paragraph 128 of the
Specification that identifies that a base web is typically 50 inches wide and
generates 45 to 50 ribbons or bobbins which have a length of about 6000
feet (and these ribbons are used to form a wrapper of a smoking article), a
base web which has bands extending transversely in a chevron pattern is cut
longitudinally into at least 45 ribbons with each ribbon having about 1/45 of
the chevron patterned bands. Appeal Br. 17–18; Reply Br. 2–3.
Appellant further argues that the Li reference discloses longitudinally
extending bands rather than transverse bands and the relied upon helical
bands do not overlap at the seam of the wrapper of the smoking article.
Appeal Br. 18–19; Reply Br. 3–4.
Appellant argues that the Examiner fails to articulate a reason to
convert Li’s helical bands that are generally longitudinal into transverse
bands. Appeal Br. 20; Reply Br. 8–10. Appellant further argues that the
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Examiner’s stated rationale (Final Act. 3) that “it would have been obvious
to have angled the bands such that opposite ends of the bands overlap at a
seam ‘so that there is no break in the pattern for visual effect’” is not
supported by the record because Li’s bands are substantially invisible to an
ordinary consumer (citing Li paragraphs 179, 268) and the opposed
longitudinal bands do not overlap at the seam. Appeal Br. 20–21.
The Examiner relies upon Li’s Figure 12 which shows helical
longitudinal banded regions at an angle “b.” Final Act. 3; Ans. 4–5.
In the Reply Brief, Appellant identifies the difference between a wide
base web and a wrapper for a smoking article. Reply Br. 1–2. Claim 1
recites a wrapper for a smoking article in which add-on material is printed
on a base web such that generally transverse bands [but not perpendicular]
extend from a first side edge to a second side edge of the base web and
opposite ends of the respective bands overlap at a seam when the wrapper is
disposed about a column of shredded tobacco. Reply Br. 2–3.
The Examiner generally addresses Appellant’s arguments, but the
Examiner does not identify any express or implicit teaching or suggestion in
the Li reference alone to the claimed:
an add-on material printed on said base web according to a
pattern comprising a plurality of generally transverse,
longitudinally spaced bands including respective leading edge
portions and trailing edge portions, each band extending from
the first side edge to the second side edge at an angle with
respect to the transverse direction of the base web that is not
perpendicular to the longitudinal direction of the base web, at
least one of said leading edge portions or said trailing edge
portions of the respective bands being crenellated, and opposite
ends of the respective bands overlap at a seam when the
wrapper is disposed about a column of shredded tobacco.
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Appeal Br. 25 (Claims Appendix) (emphasis added). Although the Li
reference discloses perpendicular add-on bands and angled bands, the
Examiner has not shown that the Li reference alone discloses or suggests
add-on bands with the specific claimed criteria/characteristics in the
smoking article. As a result, the Examiner has not met the required factual
showing to support the ultimate conclusion of obviousness of illustrative
independent claim 1 and its respective dependent claims 2, 4–15, and 59.
Because independent claims 17, 33, and 41 contain similar limitations, we
cannot sustain the Examiner’s obviousness rejection of independent claims
17, 33, and 41 and their respective dependent claims 18–23, 25–31, 34–41,
and 60 for the same reason.
Claims 4, 5, 20, and 21
With respect to dependent claims 4, 5, 20, and 21, Appellant sets forth
separate argument for patentability that the Examiner has not set forth a
teaching or suggestion of the specific angle. Appeal Br. 21–22; Reply Br.
10–11.
The Examiner cites paragraph 268 of the Li reference and generally
concludes that it would have been obvious for one of ordinary skill in the art
at the time of the invention to have “optimized the angle with respect to the
transverse direction of the base web based upon the desired final burn
characteristics of the smoking article ([0268]).” See Final Act. 3; Ans. 9.
Specifically, Appellant contends that Final Rejection fails to provide
any evidence that the claimed angle of transverse bands (as opposed to the
longitudinal bands of Li) was known in the art to provide “desired burn
characteristics” as alleged in the rejection. As such, the Final Rejection
lacks the required articulated reasoning and factual underpinning necessary
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to support a finding that the angles recited in respective Claims 4, 5, 20, and
21, would optimize the desired burn characteristics of a smoking article.
Appeal Br. 22.
The Examiner’s response in the Examiner’s Answer merely repeats
the reliance upon paragraph 268 of the Li reference and repeats the text of
the paragraph and concludes with the same optimization argument. Ans. 9.
As a result, we agree with Appellant that the Examiner’s rejection is
based upon speculation and conjecture as to the recited angle and range, and
we cannot sustain the rejection of dependent claims 4, 5, 20, and 21 for these
additional reasons.
Claims 52–58
With respect to an independent claim 52, Appellant sets forth separate
arguments for patentability. Appeal Br. 22. Appellant contends that the
Final Rejection cites paragraph [0049] of Li to show a
crenellated band but fails to identify any teaching in Li of
printing crenellated bands on a base web in a chevron pattern.
FIGS. 49-50 of Li merely show a tobacco rod and wrapper, and
provide no information regarding how the bands were printed
on the base web from which ribbons are cut and used to form a
wrapper of a smoking article. Further, the term “chevron” is not
mentioned in Li. As such, because the rejection of Claim 52
fails to identify any teaching in Li of the claimed product-by-
process limitations, the rejection is improper and should be
reversed.
Appeal Br. 23; Reply Br. 12–13.
In the statement of the rejection of independent claim 52, the
Examiner identifies that
LI teaches a wrapper (Fig. 50) comprising: a base web (140);
and a plurality of banded regions (126) of an add-on material
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([0099] and [0102]), both leading edge and said trailing edge
are crenellated (Fig. 49). Li teaches the add-on material is
printed (abstract). LI teaches that the bands are helical around
the length of the cigarette, which is the result of applying bands
in a chevron form. The apex is formed when the end of each
band (which are helical) intersect with the edge of the smoking
article.
Final Act. 8. In response to Appellant’s arguments, the Examiner finds that
the Li reference teaches that each band extends between the first side edge to
the second side edge at a predetermined angle, relying upon Figure 12 of the
Li reference. Final Act. 10. The Examiner concludes that “it would have
been obvious for one of ordinary skill in the art at the time of the invention
to have angled the bands such that opposite ends of the respective bands
overlap at a seam so that there is no break in the pattern for visual effect.”
Final Act. 10 (emphasis added.)
The Examiner finds that claim 52 is a product claim and does not have
limitations regarding how the bands were printed on the base web from
which ribbons are cut and used to form a wrapper of a smoking article.
Furthermore, while Li may not mention the term “chevron”, Li shows a
chevron pattern, for example in Fig. 54, and Li also shows banded regions
(126) of an add-on material on a base web (140) that are crenellated (Fig.
49). Ans. 10.
We disagree with the Examiner and find that the Examiner has not
identified any express or implied teachings in the Li reference which teach
or suggest the claimed wrapper:
printing an add-on material on a base web in the form of a
plurality of crenellated bands, the plurality of crenellated bands
arranged in a chevron pattern wherein each crenellated band
includes a leading edge and a trailing edge, the leading and
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trailing edges of the respective bands extending outwardly at an
angle from respective apexes of the crenellated bands, wherein
an apex of a first band is essentially transversely disposed of
outer points of a trailing edge of a second band.
Additionally, the Examiner identifies the “visual effect” for the
motivation of the modification of the teachings of the Li reference. As
identified above, we find the proffered “visual effect” to be unpersuasive as
a rationale for the modification of the Li reference alone. Therefore, the
Examiner has not made the requisite factual findings underlying the ultimate
conclusion of obviousness, and we cannot sustain the rejection of
independent claim 52 and dependent claims 53–58.

CONCLUSION
The Examiner’s decision rejecting claims 1, 2, 4–15, 17–23, 25–31,
33–41, and 52–60 is REVERSED.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4 –15,
17–23, 25–
31, 33–41,
52–60
103(a) Li 1, 2, 4 –15,
17–23, 25–
31, 33–41,
52–60

REVERSED