Ex Parte Mola

Patent Trial and Appeal Board

Aug 28, 2017

13231299 (P.T.A.B. Aug. 28, 2017)

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.
13/231,299 09/13/2011 Michele Mola BAT //PI 1600US00 2559
22885 7590 08/30/2017
MCKEE, VOORHEES & SEASE, P.L.C.
801 GRAND AVENUE
SUITE 3200
DES MOINES, IA 50309-2721
EXAMINER
YAARY, ERIC
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
patatty@ipmvs.com
michelle. woods @ ipmvs. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHELE MOLA
Appeal 2016-006028
Application 13/231,2991
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s
rejections under 35 U.S.C. § 103(a) of claims 1 and 5—19.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellant identifies the real party in interest as British American Tobacco
(Investments) Limited. App. Br. 1.
Appeal 2016-006028
Application 13/231,299
BACKGROUND
The subject matter on appeal is directed to a smokeless oral product
comprising a pouch made of a permeable material, and a smokeless oral
material such as tobacco contained within said pouch. Spec. 1 8.
Claim 1 is illustrative, is taken from the Claims Appendix of the
Appeal Brief, and appears below.
1. A smokeless oral product, comprising:
a woven permeable pouch composed of a woven
polylactide material having a porosity greater than 5% and less
than 45%, and
smokeless oral material disposed within an interior of the
woven permeable pouch, the woven permeable pouch being
configured to allow passage of saliva into and out of the woven
permeable pouch when the woven permeable pouch is in a user’s
oral cavity.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Summers US 4,817,640 Apr. 4, 1989
Robertson US 5,300,319 Apr. 5, 1994
Suzuki US 2003/0099791 A1 May 29, 2003
Engstrom US 2008/0302682 A1 Dec. 11,2008
Bayon US 2009/0036907 A1 Feb. 5, 2009
Gerardi US 2010/0018541 A1 Jan. 28, 2010
Zhuang US 2010/0218779 A1 Sept. 2,2010
Mitsukawa JP 2010-150688 July 08, 2010
(machine and formal translations)
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Application 13/231,299
REJECTIONS ON APPEAL
I. Claims 1, 5, 8—13, and 16—18 under 35 U.S.C. § 103(a) over
Zhuang in view of Mitsukawa and Engstrom (Final Act. 2—3);
II. Claim 6 under 35 U.S.C. § 103(a) over Zhuang in view of
Mitsukawa, Engstrom, and Gerardi (Final Act. 3 4);
III. Claim 7 under 35 U.S.C. § 103(a) over Zhuang in view of
Mitsukawa, Engstrom, and Summers (Final Act. 4);
IV. Claims 14 and 15 under 35 U.S.C. § 103(a) over Zhuang in view of
Mitsukawa, Engstrom, and Suzuki (Final Act. 4); and
V. Claim 19 under 35 U.S.C. § 103(a) over Zhuang in view of
Mitsukawa, Engstrom, and Robertson or Bayon (Final Act. 4—5).
STATEMENT OF THE CASE
The Examiner finds that Zhuang teaches all of the limitations of claim
1, except for the recitation that the pouch is composed of a woven
polylactide material having a porosity greater than 5% and less than 45%.
Final Act. 2—3. The Examiner relies on the disclosure of Mitsukawa and
Engstrom for these limitations, and concludes that the skilled artisan would
have found it obvious “to use the polylactide fibers for the woven pouch
material taught by Zhuang to yield the same, predictable result of a
conventional permeable woven fabric, as well as a material that is suitable
for tea bags and coffee filters.” Id. at 3. Regarding the recited porosity
limitation, the Examiner concludes that
[i]t would have been obvious to use this porosity in modified
Zhuang to yield the same, predictable result of a conventional
porosity for a tobacco pouch, such that saliva can pass through
the pouch and the flavors and juices from the filling material
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Application 13/231,299
contained within [the] pouch can be drawn out and into the user’s
mouth, as desired by Zhuang [0016].
Id.
Appellant presents specific arguments against Rejection I as a group.
App. Br. 7—16; Reply Br. 2—7. Therefore, we select claim 1 as
representative and decide the propriety of this rejection based on this claim.
37C.F.R. §41.37(c)(i)(iv).
OPINION
Rejection I
We are not persuaded that Appellant’s arguments identify reversible
error. In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining the
Board’s long-held practice of requiring Appellants to identify the alleged
error in the Examiner’s rejection). We, therefore, sustain the § 103
rejections advanced in this appeal based on the findings of fact, conclusions
of law, and rebuttals to arguments well-expressed by the Examiner in the
Final Action and in the Answer. We add the following comments for
emphasis and completeness.
Appellant’s arguments fail for several key reasons. First, we observe
that Appellant does not address, and thus does not reveal error in, the
Examiner’s rationale that the skilled artisan would have been motivated to
employ the polylactide woven fibers disclosed in Mitsukawa into Zhuang’s
oral pouch “to yield the same, predictable result of a conventional permeable
woven fabric.” Final Act. 3.
Moreover, many of the arguments presented by Appellant (App. Br.
9—12; Reply Br. 2—5) rest on a flawed reading of Zhuang. Namely,
Appellant asserts that “Zhuang does not disclose that a tobacco pouch is
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Application 13/231,299
made from just any tea bag materials, but rather that the outer web of the
multi-web pouch is made from a cellulose fiber material like the type of
cellulose fiber used for tea bag paper.” App. Br. 9. Thus, Appellant
contends that “only use of paper materials is suggested by Zhuang as a
suitable material to be selected from tea bags and/or coffee filters as
candidates for tobacco pouch outer web materials.” Id. at 11.
Zhuang, however, broadly discloses that “the web 12 comprises an
outer web 20 that is formed of a permeable or semi-permeable material.'1'’
Zhuang 116 (emphasis added). Zhuang then goes on to discuss several
preferred embodiments wherein the outer web 20 comprises paper, and
exemplifies cellulose fiber materials such as tea bag material. Id. at 117.
Zhuang also states that the outer web 20 is “[djesirably” made from
materials that are “suitable for contact with food,” and lists several of such
preferred materials including films, food casings, biopolymers, woven and
non-woven fabrics, and paper such as filter paper used in tea bags and coffee
filters. Id. (emphasis added). Then, Zhuang discloses that it is desirable for
the outer web to have properties such as water permeability and/or porosity.
Id. (emphasis added).
Therefore, while Zhuang may express a preference for paper products
in some embodiments, Zhuang also identifies woven and non-woven fabrics
as preferred porous materials that are used in the packaging and handling of
foods, and further expresses the overall desirability to use a material that is
water-permeable and/or porous. In view of this teaching, we agree with the
Examiner that the skilled artisan would have understood that any of the
disclosed preferred porous materials for the outer web 20, such as a woven
fabric, would be suitable to achieve Zhuang’s purpose of preparing an oral
smokeless tobacco product, and that the skilled artisan would have been
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motivated to use known porous woven fabrics suitable for contact with food,
including the polylactide fabric taught by Mitsukawa. Ans. 6. Thus,
Appellant’s arguments attempting to limit Zhuang’s disclosure to a preferred
embodiment employing cellulose or paper products are not persuasive of
reversible error.
We also find Appellant’s arguments (App. Br. 12—13; Reply Br. 5—6)
that polylactide fibers are unsuitable for uses at high temperatures
unpersuasive. Appellant has pointed to no objective evidence to support this
contention, and “[ajttorney’s argument in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Moreover,
this argument ignores that Mitsukawa teaches that its polylactide fibers are
used in the manufacture of articles that are heat resistant, such as extraction
vessels for tea or coffee. Mitsukawa Tflf 3, 5, 10, 23.
Appellant’s arguments regarding the alleged impact of heat treatment
on the polylactide fibers (App. Br. 13—14) are likewise unpersuasive. Before
we discuss the substance of this argument, however, we observe that
Appellant makes a misleading statement regarding the Examiner’s failure to
provide a formal translation of the Mitsukawa reference. Id. at 14. Based on
this erroneous assertion, Appellant contends that the Examiner “failed to
counter the evidence of non-obviousness provided by Appellant.” Id. The
record, however, clearly indicates that the Examiner provided Appellant
with a formal translation of the Mitsukawa reference with the Advisory
Action dated August 20, 2015, and that Appellant even acknowledged
receipt of such formal translation in their “Pre-Appeal Brief Request for
Review” dated September 28, 2015. Accordingly, because Appellant was in
possession of the formal translation of the Mitsukawa reference before the
filing of the Appeal Brief, and because Appellant fails to explain why their
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arguments regarding the formal translation (Reply Br. 6) could not have
been raised in the Appeal Brief, we consider the arguments made in the
Reply Brief regarding the formal translation untimely and decline to
consider them. See 37 C.F.R. § 41.37(c)(l)(iv) (explaining that “[ejxcept as
provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal.”); see also Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI2010) (Informative) (explaining that under the previous
rules, which are similar to the current rules, “the reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”).
Turning now to the substance of the argument, Appellant contends
that the disclosure of Mitsukawa is inconsistent with that of Zhuang in that
Mitsukawa teaches that the fabric structure hardens during the calendaring
process, while Zhuang teaches that the pouch products are treated to soften
the web during use. App. Br. 13—14. Thus, Appellant argues that
Mitsukawa teaches away from using polylactide fibers in an oral tobacco
product. Id. at 13. This argument does not reveal reversible error. As
correctly found by the Examiner and further supported by the formal
translation of Mitsukawa, the portion of Mitsukawa relied on by Appellant
(Mitsukawa 114) relates to the curing of the fibers, not their hardening.
Ans. 7. Also, as correctly found by the Examiner, paragraphs 19 and 20 of
the formal translation of Mitsukawa discusses the softness of the fiber
structure. Id. at 7—8.
Moreover, even if we were to consider Appellant’s argument that
“Mitsukawa is designed to prevent softening of the container” because it
leads to clogging (Reply Br. 6) as timely, it would be unpersuasive because
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Appellant fails to point to any disclosure in Mitsukawa or provide any
evidence that demonstrates that Mitsukawa’s pouch fibers cannot be “soft”
while also being functional for its intended purpose. In this regard,
Mitsukawa expresses a preference for denier sizes between 15.0—84.0 dtex,
with denier sizes below 15.0 dtex exhibiting “good softness,” but being
“prone to” fibers loosening, while denier sizes over 84 dtex “may” lead to
clogging. Mitsukawa 120. Such statements of possible considerations the
skilled artisan may face when employing polylactide fibers do not evince
that Mitsukawa’s polylactide fibers would render Zhuang’s pouch
unsatisfactory for its intended use.
We also discern no persuasive merit in Appellant’s argument (App.
Br. 15; Reply Br. 7) that the skilled artisan would not have been motivated
to consult Engstrom’s disclosure regarding porosity because Engstrom is
directed to non-woven pouches. Appellant’s argument amounts to no more
than a conclusory assertion that, because Engstrom fails to teach woven
tobacco pouches, it would not have been predictable to use the porosities
disclosed therein. Such unembellished assertions do not identity reversible
error. Appellant has not shown how Engstrom’s disclosure regarding
acceptable porosity values could not have been predictably implemented in
the modified Zhuang pouch. Specifically, Zhuang teaches that the pouch
should be “formed of a permeable or semi-permeable material, such that
saliva can pass through the outer web” and the “filling material contained
within the interior of the pouch product [] can be drawn out of the pouch and
into the user’s mouth.” Zhuang 116. Zhuang discloses preferred porous
materials including both woven and non-woven fabrics. Id. at 117. Thus,
we agree with the Examiner that, because Engstrom teaches conventional
porosity values in a tobacco pouch “for the proper balance between solid
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particles escaping and free exchange of water soluble substances[, one] of
ordinary skill in the art would have found this teaching to be relevant to
[Zhuang’s] tobacco pouches that are both woven and non-woven.” Ans. 8.
Finally, we observe that Appellant’s arguments (Reply Br. 4)
regarding the safety of polylactide fabrics are untimely because Appellant
fails to explain why such arguments could not have been raised in the
Appeal Brief. We, therefore, decline to consider them. 37 C.F.R.
§ 41.37(c)(l)(iv); Ex parte Borden, 93 USPQ2d at 1474.
Thus, for the reasons expressed by the Examiner and above, we
sustain Rejection I.
Rejections II—V
For these rejections, Appellant appears to rely on substantially the
same arguments as those presented for Rejection I, because Appellant
restates the rejections and makes conclusory assertions that the additional
references relied upon “fail[] to make up for the deficiencies” of Zhuang,
Mitsukawa and Engstrom cited in Rejection I. App. Br. 16—20. We have
found no such deficiencies. Therefore, for the same reasons expressed with
respect to Rejection I, we sustain Rejections II—V.
SUMMARY
The Examiner’s final decision to reject claims 1 and 5—19 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)(1).
AFFIRMED
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