Ex Parte Zuber et al

Patent Trial and Appeal Board

Jun 14, 2018

14378466 (P.T.A.B. Jun. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/378,466 08/13/2014 Gerard Zuber
22850 7590 06/18/2018
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.
439555US118PCT 8288
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
06/18/2018 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 GERARD ZUBER, CEDRIC MEYER,
DANIELE SANNA, and ALEXIS LOUVET
Appeal2018-005319
Application 14/378,466
Technology Center 1700
Before CATHERINE Q. TIMM, JENNIFER R. GUPTA, and LILAN REN,
Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 20, 24, and 28 under 35 U.S.C. § 103(a)
1 In explaining our Decision, we cite to the National Stage Specification of
August 13, 2014 (Spec.), the Final Office Action of September 19, 2016
(Final), the Appeal Brief of April 12, 2017 (Appeal Br.), Examiner's Answer
of February 23, 2018 (Ans.), and Reply Brief of April 23, 2018 (Reply Br.).
2 Appellant is Applicant, Philip Morris Products S.A., which, according to
the Brief, is the real party in interest. Appeal Br. 3.
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Application 14/378,466
as obvious over Baggett3 in view of Pryor4, Davidson 5, and Arzonico6 and to
reject claim 29 over those references further in view of Roberts 7. We have
jurisdiction under 35 U.S.C. § 6(b ).
For the reasons articulated by the Examiner in the Final Office Action
and Answer, we AFFIRM. We add the following primarily for emphasis.
The claims are directed to a heated aerosol-generating article
including an aerosol-forming substrate containing tobacco material, an
aerosol-cooling element, and a filter. See, e.g., claim 20. Such articles are,
for example, used in systems that heat the tobacco-containing substrate to
produce a nicotine-containing aerosol that is inhaled by a user through the
filter. Spec. 1.
Of particular interest in this appeal is the aerosol-cooling element.
Compare Final 3-8, with Appeal Br. 10-16. The aerosol-cooling element is
downstream the aerosol-forming substrate and serves to lower the
temperature of the aerosol by more than 20°C before it reaches the filter.
Claim 20. The aerosol-cooling element includes a crimped and gathered
polymeric sheet that defines longitudinally extending channels. Id. The
unfilled space or open cross-sectional area of the channels (longitudinal
porosity) is in the range of between 50% and 90% and the total surface area
of the aerosol-cooling element is between 300 and 1000 mm2 per mm of
3 Baggett, Jr. et al., US 5,499,636, issued Mar. 19, 1996.
4 Pryor et al., US 4,807, 809, issued Feb. 28, 1989.
5 Davidson, US 2,001,709, issued May 21, 1935.
6 Arzonico et al., US 5,709,227, issued Jan 20, 1998.
7 Roberts et al., US 4,819,665, issued Apr. 11, 1989.
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Application 14/378,466
length. Id. Unlike other filters and mouthpieces, the aerosol-cooling
element has a large surface area, but with a low pressure drop. Spec. 3.
We reproduce claim 20 to further illustrate the claimed aerosol-
generating article, highlighting particular limitations at issue in the appeal:
20. A heated aerosol-generating article, comprising:
a plurality of elements assembled in the form of a rod,
the plurality of elements including an aerosol-forming
substrate, an aerosol-cooling element located downstream from
the aerosol-forming substrate within the rod, and a filter located
downstream from the aerosol-cooling element within the rod,
in which the aerosol-forming substrate is formed
from a homogenised tobacco material having an aerosol
former content of between 5% and 30% by weight on a
dry weight basis, and
in which the aerosol-cooling element is formed
from a crimped and gathered polymeric sheet such that
the aerosol-cooling element comprises a plurality of
longitudinally extending channels and has a longitudinal
porosity of between 5 0% and 90% in the longitudinal
direction, the longitudinal porosity being derived from a
ratio of a cross-sectional area of material forming the
aerosol-cooling element and an internal cross-sectional
area of the heated aerosol-generating article at a portion
containing the aerosol-cooling element,
wherein the aerosol-cooling element has a total surface
area of between 3 00 mm2 per mm length of the aerosol-cooling
element and 1000 mm2 per mm length of the aerosol-cooling
element,
wherein the external diameter of the article is between 5
mm and 12 mm,
wherein the aerosol-cooling element comprises a
polymeric sheet material formed of poly lactic acid, and
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Application 14/378,466
wherein a temperature of a stream of aerosol drawn
through the aerosol-cooling element is lowered by more than
20 °C.
Appeal Br. 18 ( claims appendix) ( emphasis and formatting added).
OPINION
With respect to the rejection of claims 20, 24, and 28, Appellant
argues the claims as a group. We select claim 20 as representative to decide
the issues as to this rejection.
In the Appeal Brief, 8 Appellant concentrates the arguments on the
question of whether the Examiner's determination that the amount of open
space (longitudinal porosity) of the low pressure drop filter of Pryor would
have been arrived at upon optimization of result effective variables and the
analogous determination with regard to the surface area of Pryor' s filter.
Appeal Br. 9-15. For the reasons provided by the Examiner, we determine
that Appellant has not identified a reversible error in those determinations.
See Ans. 8, 10.
In the Appeal Brief, Appellant does not dispute that Baggett discloses
an aerosol-producing smoking device with a cooling element (free flow
filters 74 and 102 shown in Fig. 4) between aerosol-forming substrate 70 and
mouth end filter 104. Appeal Br. 9-15.
8 In the Reply Brief, Appellant cites to parts of the Answer where the
Examiner reproduces the rejection found in the Final Office Action and
makes a number of new arguments. These arguments have been waived as
they could have been presented in the Appeal Brief, but were not, and, thus,
we do not address them.
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Application 14/378,466
Baggett discloses free-flow filter 7 4 as providing structural definition
and support at the tipped end 72 of the tobacco rod 60 and as permitting the
withdrawal of the aerosol from the interior of the tobacco rod 60 with a
minimum pressure drop. Baggett col. 9, 11. 12-22. Although Baggett
depicts an annular free-flow filter 74, Baggett states that "other shapes and
types of low efficiency filters are suitable, including cylindrical filter plugs."
Id.
Baggett discloses free-flow filter 102 as transmitting air with very
little pressure drop. Baggett col. 10, 11. 56-65. Baggett depicts a tubular
free-flow filter 102, but states that "[ o ]ther low efficiency filters of standard
configuration could be used instead, however." Id.
The Examiner acknowledges that Baggett does not disclose the free
flow filters as having a crimped and gathered polymeric sheet defining
longitudinally extending channels and turns to Pryor. Final 4.
Pryor discloses that a pleated non-woven thermoplastic web
component can act as a heat sink to cool the aerosol generated in a smoking
device. Pryor col. 2, 1. 43 - col. 3, 1. 6. Pryor believes this is due to
distribution of the aerosol over a large surface area. Id. Pryor specifically
states that the low efficiency filter elements can be used for a wide variety of
smoking articles. Id.
In the Appeal Brief, Appellant does not dispute that the pleated web
gathered into a rod as shown in Figures 8-10 of Pryor is a crimped and
gathered polymeric sheet as required by claim 20. Appeal Br. 10-15. Nor
does Appellant dispute that it would have been obvious to have used Pryor's
low pressure drop filter material as the low pressure drop free-flow filters of
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Application 14/378,466
Baggett. Id. Rather, Appellant contends that "the Examiner has failed to
establish that the specific amount of open space in the cross section of the
filter in the claimed invention is a variable that would achieve a recognized
result," Appeal Br. 12, and that "the Examiner has failed to establish that the
specific size of the surface area of the aerosol-cooling element in the
claimed invention is a variable which achieves a recognized result." Appeal
Br. 14.
We disagree. The Examiner has provided the necessary support.
Final 5, 7-8; Ans. 8, 10. The Examiner points to portions of Pryor
disclosing a connection between pressure drop across the filter and such
factors as the width of the web, which is pleated. Pryor col. 8, 11. 25-29.
The width of the web that is gathered into the configuration shown in
Pryor's Figures 8-10 determines the amount of sheet material within the
wrapping material 249 and, thus, also the amount of open unfilled space and
the surface area of the sheet material within the wrapping material 249.
Controlling pressure drop by varying the width of the web also varies both
the open unfilled space (porosity) and the surface area. The Examiner also
points out (Final 7) that Pryor specifically teaches a correlation between the
heat sinking (cooling) nature of the filter and surface area: A large surface
area is needed. Pryor col. 2, 11. 51-58. Thus, a preponderance of the
evidence supports the Examiner's finding that following the teachings of
Pryor and controlling the width of the web that is pleated to obtain the
desired amount of cooling by the filter would have resulted in an aerosol-
cooling element having a porosity and surface area within the ranges of
claim 20.
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Appellant further contends that the Examiner's alternative reliance on
Davidson as evidence regarding the use of large open spaces in cigarette
filter elements is in error because Davidson's filter element is for a
mouthpiece filter. Appeal Br. 12-13. Although that is true, Davidson offers
some evidence regarding known configurations of low pressure drop filters
used in smoking articles. In any case, Davidson is not essential to the
rejection.
Turning to the rejection of claim 29, this claim requires the aerosol
former include glycerine and propylene glycol. The Examiner finds Baggett
discloses using glycerin, which is the same as glycerine, as an aerosol-
forming compound and that other humectants may be used in its place, but
that Baggett does not mention propylene glycol. Final 8. The Examiner
finds that polyhydric alcohols (pol yo ls), such as glycerin and propylene
glycol, were notoriously well known in the art as aerosol-forming materials
useful for making aerosols for inhalation and offers Roberts as proof. Id.
Roberts discloses glycerin and propylene glycol in a list of especially
preferred aerosol formers for use with tobacco substrates in aerosol-
producing smoking articles. Roberts col. 19, 11. 28-33.
Appellant contends the ordinary artisan would not have had any
reasonable expectation of success in combining glycerin and propylene
glycol and the Examiner's statement "that 'use of other humectants [was]
known in the industry' is insufficient on its own." Appeal Br. 16 (brackets
in the original).
Appellant has not identified a reversible error in the Examiner's
rejection of claim 29. The Examiner has provided evidence that glycerin
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and propylene glycol were both known for use in combination with the
tobacco substrate as aerosol-forming compounds. "The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). A preponderance of the evidence supports
the Examiner's combination because both glycerin and propylene would
have reasonably been expected to have performed the function of an aerosol-
forming compound, either alone or together, in the tobacco plug of Baggett.
CONCLUSION
In summary:
20,24,28 § 103(a) Baggett, Pryor,
Davidson,
Arzonico
29 § 103(a) +Roberts
Summary
DECISION
The Examiner's decision is affirmed.
8
20,24,28
29
20, 24, 28,
29
Appeal2018-005319
Application 14/378,466
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l).
AFFIRMED
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