Ex Parte Zuber et alDownload PDFPatent Trial and Appeal BoardJun 14, 201814378466 (P.T.A.B. Jun. 14, 2018) Copy Citation 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. Appeal2018-005319 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. 2 Appeal2018-005319 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 3 Appeal2018-005319 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. 4 Appeal2018-005319 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 5 Appeal2018-005319 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. 6 Appeal2018-005319 Application 14/378,466 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 7 Appeal2018-005319 Application 14/378,466 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 9 Copy with citationCopy as parenthetical citation