Ex Parte FUTAMURA et al

Patent Trials and Appeals Board

Mar 20, 2019

14025550 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/025,550 09/12/2013
127226 7590 03/22/2019
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Tsuyoshi FUTAMURA
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. CONFIRMATION NO.
0042-0675PUS 1 5353
EXAMINER
NGUYEN, PHU HOANG
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/22/2019 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSUYOSHI FUT AMURA,
NORIOKAWATA,
YOSHIYUKI YAMADA 1
Appeal2018-002396
Application 14/025,550
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
MONTE T. SQUIRE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejection of claims 1, 4, 5, and 11-16 under 35 U.S.C. § 103(a) as
unpatentable over Yamada et al. (US 2006/0065279 Al, published Mar. 30,
1 Appellant is the Applicant, JAPAN TOBACCO, INC., which is identified
as the real party in interest (App. Br. 1 ).
Appeal2018-002396
Application 14/025,550
2006 ("Yamada")) in view of JPl 2 (JP 02-018058 B, published Apr. 24,
1990, as disclosed in the computer translation of record), Kite et al. (US
4,131,117, issued Dec. 26, 1978 ("Kite")), and Fagg (US 5,005,593, issued
Apr. 9, 1991). We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellant claims a method of manufacturing a reconstituted tobacco
material comprising:
subjecting tobacco extracted liquid at a temperature within a range of
40 to 80°C to a fractionating treatment by means of a reverse osmosis
membrane to obtain a membrane impermeable fraction containing desired
components and depleted in undesired components; and
repeatedly performing the fractionating treatment to obtain a
concentrated membrane impermeable fraction which includes repeatedly
adding process water, wherein the process water is obtained by removing
bicarbonate ions from hard water containing bicarbonate ions (sole
independent claim 1 ).
Further details of the claimed method are set forth in representative
claim 1, a copy of which taken from the Claims Appendix of the Appeal
Brief appears below.
1. A method of manufacturing a reconstituted tobacco material,
compnsmg:
2 We refer to this reference as "JP 1" to be consistent with the Examiner
(Final Action 2) and Appellant (App. Br. 6).
2
Appeal2018-002396
Application 14/025,550
(a) extracting a natural tobacco material with an extracting solvent to
obtain an extraction residue and a tobacco extracted liquid containing
desired components and undesired components including tobacco-specific
nitrosamines;
(b) subjecting the tobacco extracted liquid to a fractionating treatment
by means of a reverse osmosis membrane to obtain a membrane
impermeable fraction containing the desired components and depleted in the
undesired components and a membrane permeable fraction depleted in the
desired components and enriched in the undesired components;
( c) controlling the tobacco extracted liquid during the fractionating
treatment to have a temperature within a range of 40 to 80°C;
( d) removing precipitates, which are precipitated in the tobacco
extracted liquid during the fractionating treatment, from the tobacco
extracted liquid;
( e) preparing a reconstituted tobacco web containing the extraction
residue; and
(t) adding the membrane impermeable fraction to the reconstituted
tobacco web, wherein the step (b) comprises:
(b-1) repeatedly performing the fractionating treatment to obtain a
concentrated membrane impermeable fraction, and
(b-2) repeating a cycle consisting of an addition of process water to
the concentrated membrane impermeable fraction and the fractionating
treatment of the membrane impermeable fraction supplied with the process
water, wherein the process water is obtained by removing bicarbonate ions
from hard water containing bicarbonate ions.
(App. Br., Claims Appendix pg. 1.)
Appellant does not present separate arguments specifically directed to
dependent claims 4, 5, and 11-16 (see App. Br. 5-13). Accordingly, these
dependent claims will stand or fall with parent independent claim 1.
We sustain the Examiner's§ 103 rejection for the reasons given in the
Final Office Action, the Examiner's Answer, and below.
3
Appeal2018-002396
Application 14/025,550
In rejecting claim 1, the Examiner finds that Yamada discloses a
method of manufacturing a reconstituted tobacco material comprising
subjecting tobacco extracted liquid to a fractionating treatment by means of
a reverse osmosis membrane to obtain a membrane impermeable fraction
containing desired components and depleted in undesired components (Final
Action 2-3). The Examiner finds that Yamada does not disclose the claim 1
features of removing precipitates during the fractionating treatment and
repeatedly performing the fractionating treatment including the step of
repeatedly adding process water (id. at 3--4). The Examiner concludes that it
would have been obvious to provide Yamada's method with these features in
view of JPl and Kite (id.), and Appellant does not argue otherwise with any
reasonable specificity (see App. Br. 5-13).
Concerning the process water feature of claim 1, the Examiner
concludes that, in view of Fagg, it would have been obvious to use
essentially pure water ( which the Examiner equates to the claimed process
water3) as the fractionating-treatment process water in the above-modified
method of Yamada (Final Action 4). As for the claimed temperature feature,
the Examiner concludes that it would have been obvious to perform
3 The Examiner accurately observes that Appellant provides no evidence of a
distinction between process water that is essentially pure water and process
water "obtained by removing bicarbonate ions from hard water containing
bicarbonate ions" ( claim 1) (Final Action 7). Additionally, we emphasize
that, because claim 1 does not quantify the amount of removed bicarbonate
ions, the claimed process water also is indistinguishable from a hard water
with only a slight amount of bicarbonate ions removed.
4
Appeal2018-002396
Application 14/025,550
Yamada's fractionating treatment at an extracted-liquid temperature within a
range of 40 to 80°C in view of JP 1 (id. at 5).
Appellant states that Yamada considers nicotine a desirable
component whereas JP 1 is concerned with removing nicotine from tobacco
leaves (App. Br. 8). Appellant argues that, "since Yamada et al[.] and JP[l]
address problems completely opposite from each other, such negative
teachings would provide no incentive to combine JP 1 with Yamada" (id.).
Appellant does not embellish this argument with any explanation why
the nicotine teachings of Yamada and JP 1 would have discouraged the
Examiner's proposed modification of Yamada' s fractionating treatment to
include the temperatures and precipitate-removal taught by JP 1. Such an
explanation is necessary because the proposed modifications have no
apparent relationship to the desirability versus removal of nicotine. In the
record before us, Appellant's argument is little more than an unsupported
assertion.
Appellant points out that Kite's process water is added "in the middle
of the process" whereas Fagg's pure water "is used in the first step of the
process of Fagg" (id.). Appellant argues, "a person of ordinary skill in the
art would not contemplate using the [pure water] extract solvent of Fagg, as
process water to be added to the concentrate, in the middle of the process"
(id.). Based on the fact that Fagg also discloses using water having
bicarbonates as extract solvent, Appellant additionally argues that "a person
of ordinary skill would not conceive using 'water with bicarbonated ions
5
Appeal2018-002396
Application 14/025,550
removed', as process water, since Fagg suggests the opposite to the process
water used in the present invention" (id.).
These arguments lack persuasive merit. We agree with the Examiner
that the combined teachings of Yamada, Kite, and Fagg would have
suggested using Fagg's essentially pure water as the process water
repeatedly added to Yamada's fractionating treatment in accordance with the
teachings of Kite (Final Action 4, 6). Appellant does not address these
combined teachings. Moreover, Appellant does not offer any rationale for
the proposition that Fagg's aqueous solvent of essentially pure water would
be used only in the first extraction step and that a different aqueous solvent
would be used in the middle fractionating step of the process. On its face,
using different aqueous solvents, rather than the same essentially pure water
solvent, in these steps appears to be an irrational complication serving no
purpose. Finally, contrary to Appellant's apparent belief, Fagg's disclosure
of water having bicarbonates as an acceptable aqueous solvent does not
negate the disclosure that the aqueous solvent also "can be essentially pure
water" (Fagg col. 3, 1. 34).
Appellant observes correctly that "[b ]oth Yamada and JP 1 disclose
controlling the tobacco extracted liquid to have a temperature at which
denaturation of protein does not occur" (App. Br. 8). Appellant argues:
Accordingly, the membrane separation at the temperature
within a range of 40 to 80°C, including a temperature at which
denaturation of protein occurs, would not have been easily
conceived based on the teachings of the prior art references,
which disclose only the membrane separation at a temperature
at which denaturation of protein does not occur" (id. at 9).
6
Appeal2018-002396
Application 14/025,550
The deficiency of Appellant's argument is revealed by Appellant's
accurate statement that "JP 1 discloses the tobacco extracted liquid is heated
preferably at a temperature of 48°C or more and less than 52°C" (id. at 6
(see JP 1 translation un-numbered page 5)). This disclosure of JPl supports
a conclusion that it would have been obvious to heat the extracted liquid of
Yamada's fractionating treatment to a temperature in the JPl range of 48°C
or more and less than 52°C. Temperatures in this range would achieve the
desire of both Yamada and JP 1 to use temperatures at which denaturation of
protein does not occur. These JP 1 temperatures satisfy the requirement of "a
temperature within a range of 40 to 80°C" ( claim 1 ). In this latter regard,
Appellant does not even allege much less show that claim 1 excludes
temperatures at which denaturation of protein does not occur such as the
temperatures disclosed by JP 1.
For the reasons expressed in the Final Action, the Answer, and above,
Appellant's arguments do not reveal error in the Examiner's§ 103 rejection
of the claims on appeal.
The decision of the Examiner is affirmed.
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
7