Ex Parte Novak et alDownload PDFPatent Trial and Appeal BoardMay 22, 201813248847 (P.T.A.B. May. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/248,847 09/29/2011 26158 7590 05/24/2018 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 FIRST NAMED INVENTOR Charles Jacob Novak III 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. R60999 2310.1 (0254.8) 1591 EXAMINER RUSHING-TUCKER, CHINYERE J ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 05/24/2018 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 PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES JACOB NOV AK III, VERNON BRENT BARNES, ROBERT WILLIAM BENFORD, MARGARETTE ELISA LOVETTE, QUENTIN PAUL GUENTHER JR., JERRY WAYNE PIPES, and WILLIAM ROBERT COLLETT Appeal2017-008210 Application 13/248,84 7 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Charles Jacob Novak III et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 41, 42, 44--46, and 48. 2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is R. J. Reynolds Tobacco Company. Appeal Br. 2. 2 Claims 1--40 are withdrawn, and claims 43 and 47 are cancelled. Appeal Br. 20-28 (Claims App.). Appeal2017-008210 Application 13/248,847 THE CLAIMED SUBJECT MATTER Claims 41 and 45 are independent. Claim 41 is reproduced below and is illustrative of the subject matter on appeal. 41. An apparatus for forming a cigarette filter rod member defining a longitudinal axis, the apparatus comprising: a rod-forming unit configured to form a continuous supply of a filter material into a continuous cylindrical rod member; and an insertion unit configured to introduce a plurality of frangible microcapsule objects directly into the rod member at discrete locations therealong, the insertion unit comprising: a repository for receiving the plurality of microcapsule objects, and defining a plurality of cavities arranged in a substantially circular formation; an arm member operably engaged with the repository and configured to be rotatable therein to direct at least a portion of the plurality of microcapsule objects within the repository into the cavities; and a charge delivery device operably engaged with the repository and configured to serially engage each cavity defined thereby to direct the at least a portion of the microcapsule objects therefrom directly into the rod member at one of the discrete locations therealong. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Kawaguchi Dawson Novak us 4,509,568 US 7,381,175 B2 US 2012/0055493 Al 2 Apr. 9, 1985 June 3, 2008 Mar. 8, 2012 Appeal2017-008210 Application 13/248,847 REJECTIONS I. Claims 41, 42, and 44 stand rejected under 35 U.S.C. § 102(e) as anticipated by Novak. Non-Final Act. 2-3. II. Claims 41, 42, 44--46, and 48 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Dawson and Kawaguchi. Id. at 4--7. OPINION Rejection I The Examiner finds that Novak discloses all of the limitations of independent claim 41, including, inter alia, "a rod-forming unit ( 50) configured to form (pp 42) a continuous supply of a material (20) into a continuous cylindrical rod member (25); and an insertion unit (300) configured to introduce a plurality of objects directly into the rod member (25) at discrete locations therealong. (pp 47)." Non-Final Act. 2-3. Appellants assert that Novak fails to disclose a rod-forming unit as claimed because "the continuous tubular member 25 of Novak [formed by forming unit 50] is not identical to a continuous cylindrical rod member." Appeal Br. 11. According to Appellants, Novak's continuous tubular member 25 is hollow, whereas "the continuous cylindrical rod member of Claim 41 is formed from a continuous supply of a filter material, such that the cylindrical rod member is not hollow or tubular." Id. at 10-11. Although we agree with Appellants that Novak's continuous tubular member 25 appears to be hollow (id. at 10), claim 41 does not recite any language precluding the continuous cylindrical rod member formed by the rod- forming unit from being hollow or tubular. See In re Self, 671 F .2d 1344, 1348 (CCPA 1982) (noting that it is well established that limitations not 3 Appeal2017-008210 Application 13/248,847 appearing in the claims cannot be relied upon for patentability). In particular, Appellants do not persuade us that the term "rod" cannot reasonably extend to a hollow, tubular member. For example, Appellants do not point to a definition in the Specification, or otherwise explain why the Specification would preclude the term "rod" from extending to a hollow, tubular member. Indeed, at least one rod described in the Specification appears to comprise a web of filter material being sufficiently porous to allow the introduction ofmicrocapsule objects. See, e.g., Spec. 12:12-17. To the extent that Appellants are arguing that forming the cylindrical rod member from a continuous supply of filter material necessarily means that the cylindrical rod member cannot be hollow or tubular (Appeal Br. 10-11), Appellants do not offer any evidence or persuasive technical explanation to support such a position. Moreover, we note that Novak explicitly teaches the formed tubular member is continuous. See Novak i-f 42 (referring to "forming unit 50 configured to form a continuous supply of the pouch material 20 into a continuous tubular member 25" (emphasis added)). Appellants argue that Novak does not disclose "an insertion unit configured to introduce a plurality of frangible microcapsule objects directly into the rod member at discrete locations therealong," as recited in claim 41. Appeal Br. 11 (emphasis omitted). In particular, Appellants assert that "[t]he object insertion unit 500, rather than the tobacco insertion unit 300, of Novak is configured to combine the objects 100 with a charge of the tobacco material 350 dispensed by the tobacco insertion unit 300." Id. Appellants also assert that Novak's objects 100 are not introduced directly into tubular member 25 because "the objects 100 are combined with a charge of tobacco material 350 prior to the combination being inserted into the tubular 4 Appeal2017-008210 Application 13/248,847 member." Id. (emphasis omitted); see also Reply Br. 2 (asserting that "objects 100 are not introduced directly into the tubular member 25, as they are first combined with the tobacco material 350 within the channels"). This line of argument is not persuasive because is it not responsive to the rejection presented. As discussed above, the Examiner points to Novak's tobacco insertion unit 300 as representing the object insertion unit recited in the claim. Non-Final Act. 2-3. In other words, the Examiner appears to rely on Novak's tobacco 350 as the "objects" that are inserted into the tubular member. Other than the bald assertion that "the tobacco material 350 dispensed by the tobacco insertion unit 300 of Novak is not identical to the frangible microcapsule objects dispensed by the insertion unit" (Appeal Br. 11 ), Appellants do not offer any evidence or persuasive technical reasoning that identifies an error in the Examiner's position. To the extent that Appellants are arguing that there are physical differences between "frangible microcapsule objects" and Novak's tobacco material 350, we note that claim 41 does not positively recite the frangible microcapsule objects as an element of the claimed apparatus. Rather, the claim recites that the object insertion unit must be "configured to introduce a plurality of frangible microcapsule objects directly into the rod member." Id. at 27 (Claims App.) (emphasis added). In this regard, Appellants do not identify error in the Examiner's finding that Novak's tobacco insertion unit 300 likewise is "configured to" directly introduce frangible microcapsule objects into tubular member 25. Non-Final Act. 2-3; see also Ans. 7 (the Examiner explaining that, "[ d]espite the differences in intended use of the reference Novak, there is no physical distinction between the reference Novak and the claimed limitations in the instant application"). 5 Appeal2017-008210 Application 13/248,847 Appellants further argue that Novak is non-analogous art because the reference is not in the same field of endeavor as Appellants' invention and is not reasonably pertinent to the problem faced by Appellants. Reply Br. 3--4. However, arguments directed to the issue of non-analogous art are not germane to an anticipation rejection. In re Self, 671 F.2d at 1350-51; see also In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) ("[T]he question whether a reference is analogous art is irrelevant to whether that reference anticipates."). For the foregoing reasons, we are not persuaded that the Examiner erred in finding that Novak discloses all of the limitations of independent claim 41. \Ve sustain the rejection of claim 41under35 U.S.C. § 102(e) as anticipated by Novak. \Ve also sustain the rejection of claims 42 and 44, for which Appellants rely on the same arguments and reasoning we found unpersuasive in connection with independent claim 41. See Appeal Br. 12. Rejection II The Examiner finds that Dawson teaches most of the limitations of independent claim 41, including, inter alia, "a repository (28, Fig. 3) for receiving (Col 4 line 13-23) the plurality of microcapsule objects (34), and defining a plurality of cavities ( 54) arranged in a substantially circular formation (Fig 3), (Col 4 line 23-33)." Non-Final Act. 4. The Examiner acknowledges that "Dawson does not expressly disclose an arm member, operably engaged with the repository and configured to be rotatable therein to direct at least a portion of the plurality of microcapsule objects within the repository into the cavities." Id. However, the Examiner finds that Kawaguchi teaches this feature. Id. at 4--5 (citing Kawaguchi, col. 4, 11. 18- 22). The Examiner determines that it would have been obvious to modify 6 Appeal2017-008210 Application 13/248,847 the repository of Dawson "to include the arm member of Kawaguchi to aid in the induction of the microcapsules into the cavities." Id. at 5, 6 (citing Kawaguchi, col. 4, 11. 34--36). Even accepting the Examiner's clarified interpretation that the combination of dome 28 and pocket wheel 52 represents a repository (Ans. 8), we agree with Appellants that a sustainable case of obviousness has not been established. In particular, given that Dawson's filter media 34 is drawn upward via suction from below the repository (i.e., dome 28 and pocket wheel 52) (Dawson, col. 4, 11. 26-29, 37--41), ratherthan being directed downward to the bottom of a repository by gravity like the granular material in Kawaguchi's hopper (in which a stirrer agitates the granular material so that it falls into a duct) (Kawaguchi, col. 4, 11. 6-10, 18-19, 34--38), the Examiner does not adequately explain how or why modifying Dawson's apparatus to include Kawaguchi's stirrer would assist in directing Dawson's filter media upward into the pockets of pocket wheel 52. First, we agree with Appellants that incorporating a rotatable stirrer into suction dome 28 above pocket wheel 52 would not aid in induction of filter media 34 into the pockets of pocket wheel 52 because there is no filter media 34 in suction dome 28 on which the rotatable stirrer would act. Appeal Br. 14. Second, we agree with Appellants that a rotating stirrer located below pocket wheel 52 would not be able to deliver filter media 34 against gravity and might actually instead "at least temporarily block the filter media 34 from the suction applied through the pockets 54, 58 by the vacuum dome 28." Id. at 15-16 (emphasis omitted). As such, the Examiner's articulated reason for the proposed modification of Dawson-i.e., to aid in the induction of the microcapsules into the cavities-lacks rational underpinnings. See In re 7 Appeal2017-008210 Application 13/248,847 Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (requiring "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness") (cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007)). For the foregoing reasons, we do not sustain the Examiner's rejection of independent claims 41 and 45, and claims 42, 44, 46, and 48 depending therefrom, under 35 U.S.C. § 103(a) as unpatentable over Dawson and Kawaguchi. DECISION The Examiner's decision to reject claims 41, 42, and 44 under 35 U.S.C. § 102(e) as anticipated by Novak is affirmed. The Examiner's decision to reject claims 41, 42, 44--46, and 48 under 35 U.S.C. § 103(a) as unpatentable over Dawson and Kawaguchi is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation