Ex Parte Mironov

Patent Trial and Appeal Board

Oct 29, 2018

14899223 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/899,223 12/17/2015
26813 7590 10/31/2018
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Oleg Mironov
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.
642.12390101 3857
EXAMINER
NGUYEN, PHU HOANG
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
ptodocketing@mrgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLEG MIRONOV
Appeal2018-008879 1
Application 14/899,223
Technology Center 1700
Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN,
and AVEL YN M. ROSS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6.
1 Appellant is the Applicant, PHILIP MORRIS PRODUCTS S.A., which is
also identified as the real party in interest. (Br. 2).
Appeal2018-008879
Application 14/899,223
Appellant's invention is generally directed to an inductively heatable
tobacco product that can be used for aerosol generation. (Spec. 1 ). Claim 1
illustrates the subject matter on appeal and reproduced below:
1. Inductively heatable tobacco product for aerosol-
generation, the tobacco product comprises an aerosol-forming
substrate containing a susceptor in the form of a plurality of
particles, wherein the aerosol-forming substrate is a crimped
tobacco sheet comprising tobacco material, fibers, binder,
aerosol-former and the susceptor in the form of the plurality of
particles.
The Examiner maintains the following rejection from the Final Office
Action for our review:
Claims 1-7, 9-11, and 13-20 rejected under 35 U.S.C. § I03(a) as
obvious over Campbell (US 5,613,505, Mar. 25, 1997) in view of
Metrangolo (WO 2013178767 Al, May 30, 2013)2.
Claim 8 is rejected under 35 U.S.C. § I03(a) as obvious over
Campbell in view ofMetrangolo and further in view of Brown (US
3,549,847, Dec. 22, 1970).
Claim 12 is rejected under 35 U.S.C. § I03(a) as obvious over
Campbell in view ofMetrangolo and further in view of Counts (US
5,269,327, Dec. 14, 1993).
Claims 1-7 and 9-20 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-20 of
copending Application No. 14/897,732.
2 The Examiner cites US 2015/0107610 Al, Apr. 23, 2015 as an English
language equivalent for this document.
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Application 14/899,223
OPINION
Double Patenting Rejection
Appellant does not provide any arguments against the double
patenting rejection of claims 1-7 and 9-20. (Br. generally). Therefore, we
summarily affirm this rejection. Cf Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008) ("In the event of ... a waiver, the [Board] may affirm the
rejection of the group of claims that the examiner rejected on that ground
without considering the merits of those rejections.").
Prior Art Rejections
Appellant's arguments are principally directed to independent claim 1
the sole independent claim. We will address the claims as argued by
Appellant. Any claim not separately argued will stand or fall with its
respective independent claim. (See generally Br.)
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the prior art rejections
of claims 1-11 and 13-20 for the reasons set forth in the Answer to the
Appeal Brief and Final Office Action appealed from, which we adopt as our
own. However, we reverse the prior art rejection of claim 12 for the reasons
provided by Appellant in the Appeal Brief. We highlight and address
specific findings and arguments for emphasis as follows.
The Examiner finds Campbell discloses an inductively heatable
tobacco product for aerosol-generation, the tobacco product comprising an
aerosol-forming substrate containing a susceptor in the form of a plurality of
particles. (Final Act. 3). The Examiner acknowledges that Campbell does
not disclose the substrate is a crimped tobacco sheet. The Examiner finds
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Application 14/899,223
Metrangolo discloses a tobacco product for aerosol generation where the
aerosol-forming substrate is a crimped tobacco sheet. (Final Act. 3). The
Examiner concludes it would have been obvious to a person of ordinary skill
in the art to utilize a crimped tobacco sheet in an inductively heatable
tobacco products such as described by Campbell. (Final Act. 4). Appellant
argues the Examiner failed to properly articulate motivation to combine the
teachings of Campbell and Metrangolo. Appellant also argues the product
of Campbell and the method of Metrangolo are not suitable for combining
and the combination would have rendered the tobacco product taught by
Campbell unsuitable for its intended purpose. (Br. 5-12).
Appellant's arguments are not persuasive of reversible error. The
Examiner properly determined that Metrangolo discloses a rod wherein the
crimped sheet having a plurality of ridges or corrugations is substantially
parallel to the cylindrical axis of the rod, which advantageously facilitates
gathering of the crimped sheet of aerosol forming material to form the rod
(Metrangolo ,r,r 37-38). Moreover, a person of ordinary skill in the art
would have recognized the suitability of utilizing tobacco having a crimped
sheet configuration for the formation of aerosol generating articles.
(Metrangolo ,r 4 ). A person of ordinary skill in the art would have
reasonably expected that the crimped sheet configuration was of the suitable
for inductively heatable tobacco product for aerosol-generation as disclosed
by Campbell. See, e.g., KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,416
(2007) ("when a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result"); In re
Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) (express suggestion to
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Appeal2018-008879
Application 14/899,223
interchange methods which achieve the same or similar results is not
necessary to establish obviousness); see also In re Kahn, 441 F.3d 977, 985-
88 (Fed. Cir. 2006); In re O'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988)
("For obviousness under§ 103, all that is required is a reasonable
expectation of success." (citations omitted)); In re Keller, 642 F.2d 413,425
(CCPA 1981) (" [T]he test [for obviousness] is what the combined teachings
of the references would have suggested to those of ordinary skill in the
art.").
Appellant argues the layered sheet of Campbell needs to be thick
enough to form and maintain the hollow cylinder shape of the tobacco
product. (Br. 8-9). Appellant has not adequately explained why the
utilization of a crimped sheet, such as disclosed by Metrangolo, would have
rendered the tobacco product taught by Campbell unsuitable for its intended
purpose. Appellant's arguments do not direct us to evidence to establish
Campbell requires a specific thickness that would have been unsuitable for a
crimped configuration. Metrangolo discloses the time tobacco product has a
thickness ranging from 50 to 300 µm. (Metrangolo ,r 81 ). In fact,
Appellants acknowledge Campbell does not specify a specific thickness.
(Br. 9).
Claim 8
Appellant reiterates the argument presented when addressing claim 1,
further adding Brown fails to cure the shortcomings of Campbell and
Metrangolo. (Br. 15).
Appellant's arguments are not persuasive for the reasons set forth
above and presented by the Examiner. (Ans. 7-8).
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Appeal2018-008879
Application 14/899,223
Claim 12
The Examiner finds Campbell discloses the susceptor can be selected
for heating a substrate to a temperature necessary to produce aerosol. (Ans.
6). The Examiner finds Counts discloses heating within the range of 300° C
to 400° C to avoid burning the tobacco flavor medium. (Ans. 6; Counts 5, 11.
45---65). The Examiner reasons this teaching from Counts suggest selecting
a susceptor having a Curie temperature between about 300° C to 400° C as
required by the claimed invention. (Ans. 6).
We agree with Appellant that the Examiner has failed to provide
adequate reasons to heat Campbell's the susceptor to have a Curie
temperature as required by the claimed invention. The Examiner has not
directed us to a disclosure in Counts that would have suggested the susceptor
to has a particular Curie temperature. As properly identified by Appellant,
Counts only discussion of Curie point refers to control of the temperature
reached by the heating element. (Br. 13; Counts 14, 11. 55---64). This
discussion provides no guidance for selecting the Curie temperature of the
susceptor as required by the claimed invention.
DECISION
The appealed prior art rejections of claims 1-11 and 13-20 under 35
U.S.C. § 103(a) are affirmed.
The appealed prior art rejection of claim 12 is reversed.
The rejection of claims 1-7 and 9-20 on the ground of nonstatutory
double patenting as being unpatentable over claims 1-20 of copending
Application No. 14/897,732 is affirmed.
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Application 14/899,223
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.I36(a)(l).
AFFIRMED
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