Ex Parte Cantrell et al

Patent Trials and Appeals Board

Nov 14, 2018

13907283 - (D) (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/907,283 05/31/2013
26158 7590 11/16/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Daniel Verdin Cantrell
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
ATTORNEY DOCKET NO.
R60999 1660US.Cl
(0565.2)
CONFIRMATION NO.
8153
EXAMINER
NGUYEN, PHU HOANG
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
IPDocketing@wbd-us.com
BostonPatents@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL VERDIN CANTRELL, JOSHUA D. MORTON,
STEVEN D. HUME, BARRY BRATCHER, ROBERT FRANK BOUTIN,
THOMAS HINKEMEYER, and THADDEUS J. JACKSON
Appeal2018-001851
Application 13/907,283
Technology Center 1700
Before GEORGE C. BEST, JENNIFER R. GUPTA, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 45-57. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
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Application 13/907,283
Claim 45 is illustrative of the subject matter on appeal and is
reproduced below:
45. A smokeless tobacco composition configured for
insertion into the mouth of a user, the smokeless tobacco
composition comprising:
at least about 2 dry weight percent of tobacco material in
the form of an aqueous tobacco extract, based on the total
weight of the composition;
at least about 30 dry weight percent of a sugar alcohol;
at least about 40 dry weight percent of a natural gum
binder component;
at least about 2 dry weight percent of a humectant; and
at least about 2 dry weight percent of a salt,
the composition being in the form of a pastille.
Appellant1 requests review of the following rejections in the
Examiner's Final Office Action (see generally Br.):
I. Claims 45, 49-54, and 57 rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Dam (US 5,525,351, issued June 11, 1996)
and Sprecker (US 4,206,092, issued June 3, 1980).
II. Claims 46-48 and 56 rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Dam, Sprecker, and Latimer (Pyrolysis vs.
Actual Smoking Conditions: Conversion of Glucose, Fructose, and Cellulose
to B[a]P, 1325 (1966)).
III. Claims 55 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Dam, Sprecker, and Strickland (US 2005/0244521 Al,
published November 3, 2005).
1 R. J. Reynolds Tobacco Company is the Applicant/ Appellant and is also
identified as the real party in interest. Br. 1.
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Appellant also requests that the provisional rejection of claims 45-57
on the ground of nonstatutory double patenting as unpatentable over
claims 1-13 and 15-17 of copending Application No. 12/957,821 be held in
abeyance until the claims of both applications are in condition for allowance
so that they can then consider any need for a terminal disclaimer. Br. 15.
The provisional rejection is now de facto based upon U.S. Patent
No. 9,775,376, thereby making the rejection non-provisional. In view of
this, we note that the scope of the claims of copending Application
No. 12/957,821 may have changed from the scope of the claims as addressed
by the Examiner during its prosecution. Thus, we decline to reach the merits
of the Examiner's provisional obviousness-type double patenting rejection.
Ex parte Jerg, 2012 WL 1375142 at *3 (BPAI 2012) (informative) ("Panels
have the flexibility to reach or not reach provisional obviousness-type
double-patenting rejections.") (citing Ex parte Moncla, 95 USPQ2d 1884
(BPAI 2010) (precedential)). We refer the matter to the Examiner to
ascertain the appropriateness of maintaining this rejection.
OPINION
Prior Art Rejections
Appellant relies on the same line of arguments to address the rejection
of claims 45, 49-54, and 57 (Rejection I) and separately rejected claims 46-
48 and 56 (Rejection II). See generally Br. Appellant presents separate
arguments for the rejection of claim 55 (Rejection III). Id. at 14--15.
Accordingly, we select independent claim 45 as representative of the subject
matter before us on appeal for Rejections I and II and decide the appeal as to
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claims 45-54, 56, and 57 based on the arguments made by Appellant in
support of patentability of claim 45. We address claim 55 separately.
After review of the respective positions provided by Appellant and the
Examiner, we affirm the Examiner's prior art rejections of claims 45-57 for
the reasons presented by the Examiner.
Claim 45
The Examiner finds, and Appellant does not dispute, that Dam
discloses a smokeless tobacco composition configured for insertion into the
mouth of a user that differs from the claimed invention in that Dam does not
disclose the use of salt as a stabilizing ingredient. Final Act. 2-3; Br. 3-5.
The Examiner relies on Sprecker for the teaching of salt ( sodium chloride)
for use in tobacco products. Final Act. 3. The Examiner concludes that it
would have been obvious for one skilled in the art to use salt as a stabilizing
ingredient in Dam's smokeless tobacco product in view of Sprecker' s
teaching. Id.
Appellant argues Sprecker is directed to providing natural flavoring
ingredients in smoking tobacco by adding it to smoking tobacco material
directly, to the filter, or to the paper wrapper of a smoking article. Br. 5;
Sprecker col. 6, 11. 36-40; col. 15, 11. 1-5. According to Appellant, Sprecker
does not teach or suggest a smokeless tobacco product in the context of a
stimulant unit as disclosed in the Dam reference. Br. 6. Thus, Appellant
asserts that, absent impermissible hindsight, one of skill in the art would not
tum to Sprecker's disclosure for a particular ingredient (salt) of a
fundamentally different composition (smoking tobacco) for inclusion in
Dam's composition (smokeless tobacco). Id. at 5. Appellant also contends
that one of skill in the art would have no motivation to use or reasonable
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expectation of using Sprecker's sodium chloride in Dam's smokeless
tobacco product because both references are directed to significantly
different types of products. Id. at 5, 10.
We are unpersuaded of reversible error. It is well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
As noted by the Examiner, Sprecker defines the term "tobacco" as
"any composition intended for human consumption, by smoking or
otherwise, whether composed of tobacco plant parts or substitute materials
or both." Ans. 8; Sprecker col. 15, 11. 61---65. Therefore, one skilled in the
art would have inferred from this disclosure that Sprecker' s tobacco
products are not limited to smoking tobacco products.
With respect to the use of sodium chloride, Sprecker discloses a
number of additional stabilizing compounds, such as ascorbic acid, citric
acid and butylated hydroxylated toluene, which are also used as stabilizing
compounds for Dam's smokeless tobacco products. Sprecker col. 9, 11. 62-
68; Dam col. 8, 11. 60---67. Therefore, one skilled in the art would have had a
reasonable expectation that the simple substitution of Sprecker's sodium
chloride for Dam's disclosed stabilizing additives would have predictably
resulted in an adequate smokeless tobacco product. KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 416-417 (2007) ("the simple substitution of one known
element for another" generally will be obvious unless the substitution or the
application of the known technique would have been beyond the level of
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ordinary skill in the art, or the results of the substitution would not have been
predictable by one of ordinary skill in the art.)
Thus, Appellant has not adequately explained why one skilled in the
art would not have expected Sprecker' s additives, such as the sodium
chloride stabilizing compound, to be suitable for Dam's smokeless tobacco
product.
Appellant argues that the cited art does not lead one skilled in the art
to incorporate the components of the claimed smokeless tobacco
composition in the recited amounts. Br. 11.
We are unpersuaded by this argument because it does not identify
error in the Examiner's reasons for finding that the amounts for these
components are result-effective variables that can be optimized by one
skilled in the art through routine experimentation for a product having a
desired taste, texture, and shelf-life.
Accordingly, we affirm the Examiner's prior art rejections of
claims 45-54, 56, and 57 for the reasons presented by the Examiner and
given above.
Claim 55
We affirm.
Claim 55 requires a smokeless tobacco composition that comprises a
particulate tobacco material having an average particle size of less than
about 50 microns.
The Examiner turns to Strickland's disclosure of tobacco powder with
average particle size less than 80 microns, a particle size range that includes
the recited average particle size of less than about 50 microns. Final Act. 5;
Ans. 10; Strickland ,r 52. The Examiner concludes that a prima facie case of
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obviousness exists wherein the claimed ranges overlap or lie inside ranges
disclosed by the prior art. Final Act. 5; Ans. 10.
Appellant argues Strickland reference does not disclose a particulate
tobacco material having an average particle size of less than about
50 microns. Br. 14. According to Appellant, while Strickland notes a
starting material designated as "'Tobacco Powder (average particle size< 80
µm)'" within one example, one of skill in the art would not understand this
single reference to encompass, much more broadly than intended, tobacco
powder with an average particle size anywhere below 80 µm, including the
recited average particle size of less than about 50 microns. Br. 14--15.
We are unpersuaded by these arguments because they do not address
the Examiner's reasoning. Dam recognizes that it is known to make
smokeless tobacco products from comminuted tobacco or tobacco
dust/powder. Dam col. 1, 11. 47--48; col. 20, 1. 20; col. 23, 1. 37. Strickland
discloses that the tobacco can be granulated. Strickland ,r 14. Strickland
further discloses that the tobacco useful in compositions can have
"[e]xemplary average sizes are in the range of 1 to 1000 µm, e.g., about 800,
500,250, 100, 80, 75, 50, 25, 20, 15, 10, 8, 6, 5, 3, 2, or 1 µm or less,
preferably 80 µm or less." Id. ,r 23. Thus, contrary to Appellant's assertion
(Br. 15), the prior art suggests that particle size range for tobacco particles is
a result-effective variable. Therefore, Appellant has not shown error in the
Examiner's determination of obviousness.
Accordingly, we affirm the Examiner's prior art rejection of claim 55
for the reasons presented by the Examiner and given above.
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ORDER
The Examiner's prior art rejections of claims 45-57 under 35 U.S.C.
§ I03(a) are affirmed.
We do not reach the provisional obviousness-type double patenting
rejection of claims 45-57.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l).
AFFIRMED
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