Ann R. Treadaway et al.Download PDFPatent Trials and Appeals BoardAug 14, 201913509477 - (D) (P.T.A.B. Aug. 14, 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. 13/509,477 07/31/2012 Ann R. Treadaway 3700.P0522US 4229 23474 7590 08/14/2019 FLYNN THIEL, P.C. 2026 RAMBLING ROAD KALAMAZOO, MI 49008-1631 EXAMINER KRINKER, YANA B ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 08/14/2019 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): DOCKET@FLYNNTHIEL.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANN R. TREADAWAY, JAMES D. REED, and STEPHEN LONGLEY-MARTINES ____________ Appeal 2018-007836 Application 13/509,4771 Technology Center 1700 ____________ Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants seek our review of the Examiner’s rejections of claims 1, 6–9, 12–17, 19, 20, 22, and 24. Br. 1. We have jurisdiction. 35 U.S.C. § 6. We affirm-in-part. 1 Appellants identify Filtrona Filter Products Development Co. Pte. Ltd. as the real party in interest. Br. 1. Appeal 2018-007836 Application 13/509,477 2 BACKGROUND The subject matter on appeal is directed to a tobacco smoke filter or smoke filter containing a “continuously extruded element.” Spec. 1:3–4, 30–31. Claim 1 is illustrative of the appealed subject matter, and is copied below from the Claims Appendix to the Appeal Brief, with emphasis added to relevant limitations at issue in this appeal: 1. A tobacco smoke filter or filter element comprising: a rod of a tobacco smoke filtering material; a continuous extruded element extending longitudinally of the rod; and a flavouring agent, wherein the continuous extruded element extending longitudinally of the rod further comprises a pigment of a contrasting colour to the tobacco smoke filtering material, and the continuous extruded element extending longitudinally of the rod has a solid cross-section along a full length thereof and is visible at a mouth end of the filter or filter element. STATEMENT OF THE CASE On appeal, the Examiner maintains the following rejections: I. Claims 1, 6–9, 12–17, 19, 20, 22 and 24 under 35 U.S.C. § 112, second paragraph; and II. Claims 1, 6–9, 12–17, 19, 20, 22, and 24 under 35 U.S.C. § 103(a) as being unpatentable over Marquez2 in view of Nelson.3 2 Marquez (US 2008/0149119 A1, published June 26, 2008). 3 Nelson (US 2008/0029118 A1, published Feb. 7, 2008). Appeal 2018-007836 Application 13/509,477 3 OPINION Our Decision addresses the claims separately to the extent they are so argued by Appellants. 37 C.F.R. § 41.37(c)(1)(iv). Rejection I The Examiner concludes that the limitation “a continuous extruded element extending longitudinally of the rod” is indefinite “because it excludes threads, strands or filament materials formed from extruded materials” as set forth in the express definition in the Specification. Non- Final Act.4 3. The Examiner determines that the definition of the phrase “continuous extruded element extending longitudinally of the rod” set forth in the Specification (Spec. 4:3–4) is unclear because the Specification discusses how the extruded element “may be of diameter from around 0.5 to around 1.5 mm (page 2, lines 15–17) which is the size of a thread/filament/strand.” Non-Final Act. 3. The Examiner also points out how the Specification discusses how the “continuous extruded element extending longitudinally of the rod” may be “formed of a thermoplastic polymer,” which “describes a thread.” Id. at 4. The Examiner thus determines that “the explicit definition excludes threads, strands[,] and filaments but the rest of the specification appears to be describing a thermoplastic thread/strand/filament.” Id. Appellants argue that the Examiner erred in rejecting claim 1 because “the skilled person would understand that ‘extruded’ means to shape a material such as metal or plastic by forcing it through a die which contains a 4 Our Decision refers to the Non-Final Action dated October 6, 2017, from which this appeal was taken. See Br. 1. Appeal 2018-007836 Application 13/509,477 4 hole the same shape as the required product.” Br. 5. Appellants assert that “[s]tandard threads, strands, filaments, etc. are not made by extrusion” because they “are not made by forcing the material through a die”––a point that Appellants contend the Examiner has misunderstood. Id. at 5, 7. We agree with Appellants and reverse this rejection. We discern no ambiguity in the disputed claim language, whose meaning is expressly defined in the Specification. Spec. 4:3–4 (“Herein, the term ‘continuous extruded element extending longitudinally of the rod’ means a single element formed by extrusion.”). The Specification further details examples of materials that are excluded from the disputed limitation’s meaning–– “threads or strands or filaments or filament material formed from extruded materials,” and “filament material woven from multiple filaments or fibres of extruded materials.” Id. at 4:4–7. Thus, the Specification plainly distinguishes between a “single element formed by extrusion” and a plurality of elements that may or may not be formed by an extrusion process––e.g., threads, strands, filaments, or filament material woven from multiple filaments. Id. at 4:3–7. In view of the above, and for the reasons expressed by Appellants, we reverse the Examiner’s rejection of claims 1, 6–9, 12–17, 19, 20, and 22–26 under 35 U.S.C. § 112, second paragraph. Rejection II Claim 1 Relevant to the appeal of the Examiner’s rejection of claim 1 as obvious under 35 U.S.C. § 103(a), the Examiner finds that “Marquez teaches Appeal 2018-007836 Application 13/509,477 5 the continuous extruded element has a solid cross-section along a full length thereof (Fig 2B and [0030]-[0031]).” Non-Final Act. 5.5 Appellants argue that Marquez’s thread “is not a continuous extruded element extending longitudinally of the rod” because they are “very small indeed, having an outer diameter of from 20 nanometers to about 3 micrometers” and are thus “far too small for incorporation into a filter as an effective stand-alone product.” Br. 8. This argument is unpersuasive of reversible error. First, we observe that the continuous extruded element of claim 1 is not limited to a specific diameter. Even if it was so limited, Appellants have focused on the diameter of one of Marquez’s preferred embodiments, to the exclusion of broader size ranges. See Marquez ¶ 28 (discussing how fibers may have “an outer diameter from about 100 nm to about 50 μm”). Also, conspicuous by its absence is a discussion in Appellants’ Brief of Marquez’s paragraph 30, which was relied on by the Examiner to teach the disputed limitation. Non-Final Act. 5. That paragraph discloses fiber extrusion. See Marquez ¶ 30 (explaining how first and second flowable materials 203 and 204, respectively, “can be extruded as a single fiber 208.”). Therefore, because Appellants have failed to identify reversible error in the Examiner’s obviousness rejection of claim 1, we sustain it, along with 5 The Examiner relies on Nelson for the recited element’s pigmentation features. Non-Final Act. 5–6. We need not address Nelson’s teachings, however, because such teachings are undisputed by Appellants. Appeal 2018-007836 Application 13/509,477 6 the rejection of claims 8, 9, 12–17, 19, 20, 22, and 24 not separately argued by Appellants. Claim 6 Appellants argue that because Marquez’s fibers “have a diameter far lower than 0.05 mm (lower limit of Claim 6),” Marquez does not disclose all the features recited in claim 6. Br. 9. This argument lacks persuasive merit. Here again, Appellants fails to acknowledge the full scope of Marquez’s disclosure in paragraph 28 relied on by the Examiner. Non-Final Act. 6. Specifically, Marquez discloses its microfibers include fibers having an outer diameter of up to 50 μm, which is precisely equal to 0.05 mm. Marquez ¶ 28. Thus, because a preponderance of evidence supports the Examiner’s finding that Marquez discloses the diameter of the extruded element recited in claim 6, we sustain the Examiner’s rejection of this claim. Non-Final Act. 6; Marquez ¶ 28; see also In re Giesler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (explaining how a claim range overlaps with a prior art range if the two ranges share a common endpoint); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“[T]he existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious.”). Claim 7 Appellants contend that Marquez does not disclose fibers having the diameter recited in claim 7, i.e., “from about 0.5 to about 10 mm.” Br. 9–10. We agree with Appellants. Here, the Examiner relies on paragraph 28 of Marquez to disclose this limitation (Non-Final Act. 6), but the largest fiber diameter disclosed therein appears to be 50 μm, or 0.05 mm––an order of Appeal 2018-007836 Application 13/509,477 7 magnitude smaller than that recited in claim 7. Because the Examiner’s factual findings regarding the limitations of claim 7 are not supported by a preponderance of the evidence, we cannot sustain the rejection of this claim. DECISION Rejection I is reversed. Rejection II is affirmed as to claims 1, 6, 8, 9, 12–17, 19, 20, 22, and 24, and reversed as to claim 7. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation