Ex Parte Potter et al

Patent Trial and Appeal Board

Jul 24, 2018

13796725 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/796,725 03/12/2013
26158 7590 07/26/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Dennis Lee Potter
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 2800US.l (0384.6) 5431
EXAMINER
YAARY,ERIC
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS LEE POTTER and STEPHEN BENSON SEARS 1
Appeal 2017-005611
Application 13/796,725
Technology Center 1700
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
AVEL YN M. ROSS, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-6 and 9-29. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to aerosol delivery articles and
uses thereof, including smoking articles. E.g., Spec. 1 :2--4; Claim 1.
Claim 1 is reproduced below from page 22 (Claims Appendix) of the Appeal
Brief:
1 The Appellant is the Applicant, R.J. Reynolds Tobacco Company, which is
also identified as the real party in interest. App. Br. 2.
Appeal 2017-005611
Application 13/796,725
1. A vapor-enhancing apparatus for an electronic vapor smoking
article, comprising:
a filter material;
a tubular housing defining a lumen, and having a mouth-
engaging end and a longitudinally-opposed component-engaging
end, the lumen being configured to receive the filter material
therein, and the component-engaging end being adapted to be in
communication with a cartridge body portion and a control body
portion associated with the electronic vapor smoking article and
to receive a vapor therefrom and therethrough, the cartridge body
portion having an indicator of a vapor precursor level associated
with a reservoir therein; and
a vapor-enhancing element, other than a reservoir, operably
engaged with the filter material and configured to enhance the
vapor drawn through the filter material within the lumen, and
through the mouth-engaging end, by application of suction to the
mouth-engaging end of the housing,
wherein one of the housing and the filter material comprises an
indicia indicative of one of a remaining service life and an
expended service life of the enhancement of the vapor provided
by the vapor-enhancing element, the vapor enhancement indicia
being distinct from the vapor precursor level indicator, and
wherein the vapor enhancement indicia is selected from the
group consisting of a colored filter material configured to fade as
the service life of the vapor-enhancing element is expended, a
gradated level associated with the housing and including a series
of markers configured to successively fade or disappear as the
service life of the vapor-enhancing element is expended, and a
numerical indicia associated with the housing and configured to
increase in number as the service life of the vapor-enhancing
element is expended.
2
Appeal 2017-005611
Application 13/796,725
REJECTIONS ON APPEAL 2
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
1. Claims 1-3, 6, 10, 13-15, 17-20, 23, 25, 27, and 29 over Tucker
(US 2013/0192620 Al, filed Jan. 31, 2013) Cochand (US 2014/0020693 Al,
claiming priority to an application dated Dec. 24, 2010), and Takano
(US 2006/0191546 Al, published Aug. 31, 2006);
2. Claims 4, 5, 21, and 22 over Tucker, Cochand, Takano, and
Newton (US 2013/0228191 Al, filed June 28, 2011);
3. Claims 9 and 23 over Tucker, Cochand, Takano, and Woodson
(US 2004/0129280 Al, published July 8, 2004);
4. Claims 11 and 26 over Tucker, Cochand, Takano, Karles
(US 2011/0100387 Al, published May 5, 2011), and Scatterday (US
2013/0284190 Al, filed Jan. 14, 2013);
5. Claims 12 and 24 over Tucker, Cochand, Takano, and Levin (US
2013/0298905 Al, claiming priority to a provisional application dated Mar.
12, 2012);
6. Claims 16 and 28 over Tucker, Cochand, Takano, and Alarcon (US
2011/0265806 Al, published Nov. 3, 2011).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
2 The Appellant does not challenge the prior art status of any of the
references relied upon by the Examiner. See generally App. Br.
3
Appeal 2017-005611
Application 13/796,725
Non-Final Action dated June 29, 2016 ("Act."), and in the Examiner's
Answer. See generally Act. 2---6; Ans. 3-11.
The Appellant argues the claims as a group. We select claim 1 as
representative of the claims on appeal, and the remaining claims will stand
or fall with claim 1.
The Examiner finds that Tucker teaches an electronic vapor smoking
article comprising most of the elements of claim 1, including a filter
material, a tubular housing defining a lumen, and a vapor-enhancing
element. Ans. 3--4. The Examiner finds that Tucker teaches a reservoir
containing a vapor precursor, but that Tucker does not teach an indicator of
vapor precursor level. Id. at 4. The Examiner finds that Cochand teaches an
electronic vapor smoking article that includes an indicator of vapor
precursor level, and that "[i]t would have been obvious ... to include such a
vapor precursor level indicator within the cartridge body portion of Tucker
in order to keep the user aware of the remaining level of vapor precursor."
Id.
With respect to the vapor-enhancing element, the Examiner finds that
Tucker teaches the inclusion of additives (flavors, nicotine in liquid, etc.) in
its filter material to enhance the vapor drawn through the filter material. Id.
However, the Examiner finds that Tucker does not disclose a vapor
enhancement indicia. Id. The Examiner finds that Takano teaches "a
nicotine suction pipe wherein a liquid nicotine solution is absorbed into
granules and the color of the granules become pale as the vaporization of
nicotine from the nicotine solution progresses, thus permitting the consumer
to easily check the remaining amount of the nicotine solution." Id. at 4--5.
"In other words, Takano discloses an indicia consisting of a colored material
4
Appeal 2017-005611
Application 13/796,725
configured to fade as the service life of the nicotine solution is expended."
Id. at 5. The Examiner determines that "[i]t would have been obvious ... to
provide a colored filter material in modified Tucker configured to fade as the
service life of the vapor-enhancing element [i.e., nicotine in liquid] is
expended to permit the consumer to easily check the remaining amount." Id.
In view of those and other findings, the Examiner determines that the
subject matter of claim 1 would have been obvious. Id. at 3-5.
The Appellant argues that Takano's color-fading indicia is equivalent
to indicia for a vapor precursor level, and, therefore, that none of the prior
art teaches a "vapor enhancement indicia [ that is] distinct from the vapor
precursor level indicator," as required by claim 1. App. Br. 18-20.
That argument is not persuasive. The Appellant does not dispute the
Examiner's findings ( 1) that Tucker teaches a reservoir including vapor
precursor, and (2) that Tucker teaches a vapor-enhancing element, which
may be "nicotine in liquid" incorporated into the filter material. Ans. 3-5;
Tucker ,r 124. Nor does the Appellant dispute the Examiner's determination
that, in view of Cochand, it would have been obvious to include a vapor
precursor level indicator in the apparatus of Tucker. Id. at 4.
Additionally, the Appellant does not dispute that Takano teaches a
liquid nicotine solution absorbed into silica gel granules that "pale as the
vaporization of nicotine from the nicotine solution progresses, thus
permitting the consumer to easily check the remaining amount of the
nicotine solution." Takano ,r 23; see also Ans. 4--5. This record supports
the Examiner's determination that the prior art indicates the desirability of
indicia configured to show the remaining amount of a liquid nicotine
solution absorbed into a component of a smoking apparatus, regardless of
5
Appeal 2017-005611
Application 13/796,725
whether that component is the silica gel granule of Takano or the filter
material of Tucker. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416-21
(2007) ("The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.";
"[I]n many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.").
Although the liquid nicotine in Takano may itself be most similar to
the vapor precursor of claim 1 because it is "the sole and primary vapor
source disclosed by Takano," App. Br. 19, the Appellant does not dispute
that the liquid nicotine of Tucker that is incorporated into Tucker's filter
material corresponds to a "vapor-enhancing element," as required by
claim 1. Thus, although the references may not individually teach an
indicator of vapor precursor level and a distinct vapor enhancement indicia,
see App. Br. 18-20, the combined prior art reasonably does teach or suggest
both indicia. See In re Keller, 642 F.2d 413,426 (CCPA 1981) ("[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references."). Namely,
Tucker in view of Cochand reasonably suggests the desirability of an
indicator of vapor precursor level in the reservoir, and Tucker in view of
Takano reasonably suggests the desirability of an indicator of liquid nicotine
level absorbed into a component of a smoking apparatus, which reasonably
extends to the liquid nicotine level in Tucker's filter material (i.e., Tucker's
vapor-enhancing element). See KSR, 550 U.S. at 416-21 ("A person of
ordinary skill is also a person of ordinary creativity, not an automaton.").
The Examiner's rejection thus relies on the use of a known element
according to its established function, i.e., the use of a colored material that
6
Appeal 2017-005611
Application 13/796,725
fades as the service life of a liquid nicotine is expended, in the liquid-
nicotine containing filter material of Tucker. The use of a known element
according to its established function typically does not result in nonobvious
subject matter. See id. The Appellant does not argue that it would have
been beyond the level of ordinary skill in the art to incorporate a color-
fading indicia into the liquid nicotine-containing filter material of Tucker ( as
opposed to the silica gel granules of Takano ). On this record, we are not
persuaded of reversible error in the Examiner's rejection. See In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's
practice to require an applicant to identify the alleged error in the examiner's
rejections .... ").
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1---6 and 9--29.
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