Ex Parte Plojoux et al

Patent Trial and Appeal Board

Sep 24, 2018

14370263 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/370,263 07/02/2014 Julien Plojoux
22850 7590 09/26/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
437298US118PCT 4962
EXAMINER
PELHAM, JOSEPH MOORE
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIEN PLOJOUX, LAURENT MANCA, and DANI
RUSCIO
Appeal2018-001742
Application 14/370,263
Technology Center 3700
Before BRETT C. MARTIN, JILL D. HILL, and
ARTHUR M. PESLAK, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-001742
Application 14/370,263
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 13-23. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
THE INVENTION
Appellants' claims are directed generally "to an aerosol-generating
device that is adapted to resist rolling." Spec. 1, 11. 4--5. Claim 13,
reproduced below, is illustrative of the claimed subject matter:
13. An aerosol-generating device, comprising:
a heating element; and
an external housing,
wherein the external housing is elongate and is configured
to resist rolling,
wherein the external housing has a transverse cross-
section forming a shape having at least three comers connected
by curves, and
wherein the comers are spaced by between 2 mm and 10
mm and are connected by curves having a radius of curvature of
between 100 mm and 10000 mm.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sylvester
Cho
US 4,086,465 Apr. 25, 1978
WO 2010/140841 A2 Dec. 9, 2010
REJECTIONS
The Examiner made the following rejections:
Claim 13-23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cho and Sylvester. Ans. 2.
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Appeal2018-001742
Application 14/370,263
ANALYSIS
The thrust of Appellants' argument is that the Examiner's
combination is improper because Sylvester is not analogous art to the
claimed invention. See App. Br. 10-17. Appellants assert that "[t]he
Examiner only focused on the problem of 'resist[ing] rolling,' but did not
acknowledge or consider the additional problem of it being 'unhygienic' and
'undesirable to lay the device down as a mouth end of the article may then
come into close proximity to the surface." Reply Br. 3. While it may be
true that the Examiner considered only one problem faced by the inventors,
this problem is the only problem actually addressed in the claims and is
likewise solved by Sylvester.
The claims only recite structure for resisting rolling and do not appear
to address the other stated (i.e., hygiene) problem, or if they do, it is by the
same structure. Appellants point to no claim language that deals specifically
with the problem not addressed by the Examiner. Accordingly, it is
perfectly proper for the Examiner to address only the rolling problem, as it is
the only problem solved by the claimed structure. Given that both Sylvester
and Appellants' invention deal with the same problem of preventing rolling
of cylindrical devices, we conclude that Sylvester is reasonably related to the
problem being solved.
As to the combination, Appellants argue that "[t]he Examiner has not
provided an objective reason to combine the teachings of Cho and
Sylvester." App. Br. 18. The Examiner responds that Sylvester "adds an
alternative shape to the three shapes taught by Cho to resist rolling (Cho,
Figs. 3-7). Ans. 6. The Examiner previously pointed out that Cho teaches a
shape that can resist rolling, but that it is not the shape specifically claimed.
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Appeal2018-001742
Application 14/370,263
Ans. 2. Accordingly, we are not persuaded that the Examiner's basis for
using the specifically shaped anti-rolling structure of Sylvester is improper.
Regarding the dependent claims, Appellants argue "[that] the
Examiner has not shown where these features, or the features separately
recited in the dependent claims, are supposedly taught in the art." App. Br.
18. While this may be true, the Examiner has taken official notice that the
elements found in the dependent claims are notoriously well-known in the
art and thus has not deemed it necessary to present such evidence. Ans. 6.
The Examiner is correct that "[t]o adequately traverse such a finding, an
applicant must specifically point out the supposed errors in the examiner's
action, .... stating why the noticed fact is not considered to be common
knowledge or well known in the art." Ans. 6-7 (citing MPEP 2144.03.C
( emphasis added)). We agree with the Examiner that "Appellants have not
cited any specific errors in the examiner's finding" nor, more importantly,
have they pointed out why the noticed facts are not considered to be
common knowledge. Id. Additionally, the Examiner's inclusion of newly
cited references does not amount to a new ground of rejection, but is merely
a proactive effort by the Examiner to point out where the notoriously well-
known elements may be found had Appellants properly traversed the
Examiner's official notice or should they do so in the future. Accordingly,
we are not persuaded of error in the Examiner's rejection.
DECISION
For the above reasons, we AFFIRM the Examiner's decision to reject
claims 13-23.
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Appeal2018-001742
Application 14/370,263
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
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