R. J. REYNOLDS TOBACCO COMPANY

Patent Trials and Appeals Board

Mar 1, 2021

2020002355 (P.T.A.B. Mar. 1, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/824,615 08/12/2015 Steven P. Bass R60999 11100US.1
(0840.6)
5116
26158 7590 03/01/2021
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
NGUYEN, PHU HOANG
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/01/2021 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):
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IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN P. BASS and PAUL STUART CHAPMAN

____________

Appeal 2020-002355
Application 14/824,615
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1, 2, 7–11, and 23.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies R.J. Reynolds Tobacco Company as the
real party in interest. Appeal Brief filed July 24, 2019 (“Appeal Br.”), 2.
2 Final Office Action entered February 26, 2019 (“Final Act.”), 1. Claims
12–22 and 24 have been withdrawn from consideration.
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CLAIMED SUBJECT MATTER
Appellant claims a method for forming a smoking article rod. Appeal
Br. 2–3. Claim 1 illustrates the subject matter on appeal, and reads as
follows:
1. A method for forming a smoking article rod, comprising:
engaging a continuous stream of a smokable filler material with
a first surface of a longitudinally-continuous web of a
wrapping material comprising a cigarette wrapping
paper, the first surface being a wire-side surface of the
cigarette wrapping paper, the web having laterally-
opposed first and second edge portions extending along
the longitudinally-continuous web, and having a second
surface opposing the first surface, the second surface
being a felt-side surface of the cigarette wrapping paper;
longitudinally overlapping the first and second edge portions
such that the wire-side surface about the first edge
portion extends over the felt-side surface about the
second edge portion, and so as to contain the smokable
filler material within the longitudinally-continuous web;
and
applying an adhesive material to the wire-side surface about
and longitudinally along the first edge portion and to the
felt-side surface about and longitudinally along the
second edge portion, between the longitudinally-
overlapped first and second edge portions, prior to
engaging the longitudinally-overlapped wire-side surface
of the first edge portion and felt-side surface of the
second edge portion, with the adhesive material
therebetween, to form a sealed seam and produce a
longitudinally-continuous smoking article rod.

Appeal Br. 13 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered December 4, 2019 (“Ans.”):
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I. Claims 1, 2, 7, and 23 under 35 U.S.C. § 103 as unpatentable
over Fitzgerald;3
II. Claim 8 under 35 U.S.C. § 103 as unpatentable over Fitzgerald
in view of Gretz;4 and
III. Claims 9–11 under 35 U.S.C. § 103 as unpatentable over
Fitzgerald in view of Worn.5
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1, 2, 7–11, and 23 under 35 U.S.C. § 103 for reasons set forth in the
Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Rejection I
We turn first to the Examiner’s rejection of claims 1, 2, 7, and 23
under 35 U.S.C. § 103 as unpatentable over Fitzgerald. To address this
rejection, Appellant presents arguments directed to independent claims 1 and

3 Fitzgerald et al., US 7,234,471 B2, issued June 26, 2007.
4 Gretz et al., US 4,249,545, issued February 10, 1981.
5 Worn, US 3,143,148, issued August 4, 1964.
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23, which Appellant argues together. Appeal Br. 8–11. We, therefore,
select claim 1 as representative, and decide the appeal as to claims 1, 2, 7,
and 23 based on claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv).
Fitzgerald discloses a process for producing a smokable rod
(cigarette) that includes depositing a stream of tobacco filler onto the “wire”
side of a paper web (or wrapping material), folding the paper web
longitudinally, applying an adhesive, such as an epoxy-type cement, “to the
exposed length or lap seam region of the paper web,” lapping (overlapping)
the exposed length of the paper web onto itself, and setting the adhesive “to
secure the paper web around the tobacco filler.” Fitzgerald Abst.; col. 1, ll.
8–13; col. 14, ll. 26–30; col. 16, l. 60–col. 17, l. 8; col. 35, l. 18; Figs. 1
and 2.
Fitzgerald explains that the “wire” side of the paper web (or wrapping
material) constitutes the inner surface of the wrapping material in the folded
state, which faces and circumscribes the tobacco filler, and the opposite side
of the paper web, referred to as the “felt” side, constitutes the visible outer
surface of the wrapping material. Fitzgerald col. 75, ll. 24–41. Appellant
does not dispute the Examiner’s determination that the lap seam region of
the wrapping material “comprises the wire-side surface about and
longitudinally along the first edge portion and the felt-side surface about and
longitudinally along the second edge portion.” Compare Final Act. 2, with
Appeal Br. 8–11.
The Examiner concludes that because “Fitzgeral[d] discloses applying
the adhesive to the exposed length or lap seam region of the paper web” it
would have been obvious to one of ordinary skill in the art to apply the
adhesive to both the wire-side surface and the felt-size surface of the lap
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seam region. Final Act. 2–3.
Appellant argues that the disclosures in Fitzgerald cited by the
Examiner (col. 16, l. 60–col. 17, l. 8; col. 75, ll. 23–41) do not teach or
suggest “applying an adhesive material to the wire-side surface about and
longitudinally along the first edge portion and [applying an adhesive
material] to the felt-side surface about and longitudinally along the second
edge portion, between the longitudinally overlapped first and second edge
portions, prior to engaging the longitudinally-overlapped wire-side surface
of the first edge portion and felt-side surface of the second edge portions,
with the adhesive material therebetween, to form the sealed seam,” as recited
in independent claims 1 and 23. Appeal Br. 10 (emphasis omitted).
Appellant argues that instead, the cited portions of Fitzgerald merely
recognize “that the cigarette wrapping paper includes a wire side and a felt
side,” and disclose that “adhesive is applied to the exposed length or lap
seam region of the paper web 55. That is, the exposed length of paper web
55 then is lapped onto itself, and the adhesive is set [in] that region in order
to secure the paper web around the tobacco filler 20, thereby forming the
continuous cigarette rod 170.” Appeal Br. 10 (citing Fitzgerald col. 16, l.
60–col. 17, l. 8; col. 75, ll. 23–41).
The Examiner responds to Appellant’s arguments in the Answer by
explaining that Fitzgerald discloses a product (smokable rod or cigarette)
having an adhesive between the wire-side surface and the felt-side surface in
the lap seam region. Ans. 5. The Examiner determines that “[t]here are only
3 permutations for this case, namely applying the adhesive to only one of the
2 surfaces or applying the adhesive to both surfaces in order to have the
adhesive between the surfaces as taught by Fitzgerald.” Ans. 5–6. The
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Examiner concludes that, “it would have been obvious for one of ordinary
skill in the art at the time the invention was made to try any one of the above
3 predictable solutions that results in having and [sic, an] adhesive in the lap
seam region for securing the 2 surfaces that form a sealed seam.” Ans. 6.
Appellant argues in the Reply Brief that Fitzgerald discloses that
paper web 55 “is lapped onto itself before the adhesive applicator 184 (i.e.,
a single applicator of the adhesive) directs the adhesive into the overlapped
region to secure the overlapped ends of the paper web together.” Reply Br.
2. Appellant argues that “with this single adhesive application, there are just
2 ‘permutations’ of the Fitzgerald disclosure, namely 1) applying the
adhesive to the wire-side surface or 2) applying the adhesive to the felt-side
surface, if the single adhesive applicator of Fitzgerald is implemented to set
the adhesive in the overlapped region of the wrapping paper, ‘prior to
engaging the longitudinally-overlapped wire-side surface of the first edge
portion and felt-side surface of the second edge portions, with the adhesive
material there between, to form the sealed seam,’” as required by claims 1
and 23. Reply Br. 2–3 (emphasis omitted).
Appellant, however, appears to misapprehend the cited disclosures of
Fitzgerald, which do not teach that the paper web is lapped onto itself before
application of the adhesive. Rather, as discussed above, Fitzgerald explicitly
discloses applying adhesive “to the exposed length or lap seam region of the
paper web . . . the exposed length of paper web then is lapped onto itself,
and the adhesive is set [in] that region in order to secure the paper web
around the tobacco filler.” Fitzgerald col. 17, ll. 3–7. In view of
Fitzgerald’s disclosure that suitable adhesives include epoxy-type cement,
one of ordinary skill in the art would have understood that “setting” the
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adhesive as disclosed in Fitzgerald refers to curing the adhesive, rather than
applying the adhesive, as Appellant appears to argue. The ordinarily skilled
artisan thus would have understood Fitzgerald to disclose applying adhesive
to the exposed length or lap seam region of a longitudinally folded paper
web, lapping (overlapping) the exposed length of the paper web onto itself,
and setting (or curing) the adhesive.
One of ordinary skill in the art also would have understood that a “lap
seam” is “a seam in which the edges overlap,” and, therefore, would have
understood the “lap seam region” of Fitzgerald’s paper web to refer to the
longitudinal edge regions of the web that are lapped onto each other
(overlapped). Merriam-Webster.com (accessed Feb. 19, 2021),
https://www.merriam-webster.com/dictionary/lap%20seam. As the
Examiner determines, one of ordinary skill in the art would have recognized
from Fitzgerald’s disclosure of applying adhesive “to the exposed length or
lap seam region of the paper web” that the adhesive could be applied to
either the wire side or the felt side edge region of the paper web, or could be
applied to both edge regions, to allow formation of a lap seam after the
edges are lapped onto each other (overlapped), and the adhesive sets (cures).
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ([A]n obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for [an examiner] can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”); see also In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)
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(“[T]he question under 35 U.S.C. § 103 is not merely what the references
expressly teach, but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.”).
On the record before us, Appellant does not direct us to any disclosure
in Fitzgerald, or to any other objective evidence, establishing that one of
ordinary skill in the art would have interpreted the relied-upon disclosures of
Fitzgerald in any other way. Appellant’s arguments, therefore, do not
identify reversible error in the Examiner’s rejection.
Appellant argues that, as Appellant’s Specification explains, applying
adhesive to both the wire and felt-side surfaces of the web before engaging
the overlapped surfaces as recited in claim 1 “may provide or otherwise
facilitate the formation of” a more robust and/or reliable side-seam by
increasing the surface area of the felt and wire-side surfaces that interact
with the adhesive material, and “may, in turn, allow production speeds for
the smoking article rods to be increased.” Appeal Br. 9–11 (citing Spec. 13,
ll. 8–15). Appellant argues that Fitzgerald does not recognize these
advantages. Appeal Br. 10.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection.
As discussed above, Fitzgerald’s disclosure of applying adhesive “to
the exposed length or lap seam region of the paper web” would have
suggested applying adhesive to either the wire side or the felt side edge
region of the paper web, or to both edge regions of the web. The fact that
Fitzgerald does not explicitly disclose the asserted benefits of applying
adhesive to both edge regions does not render applying adhesive in this
manner any less obvious. Gen. Elec. Co. v. Jewel Incandescent Lamp Co.,
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326 U.S. 242, 249 (1945) (“[i]t is not invention to perceive that the product
which others had discovered had qualities they failed to detect.”); Endo
Pharm. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381 (Fed. Cir. 2018)
(“An inherent characteristic of a formulation can be part of the prior art in an
obviousness analysis even if the inherent characteristic was unrecognized or
unappreciated by a skilled artisan.”); Ex parte Obiaya, 227 USPQ 58, 60
(BPAI 1985) (“The fact that appellant has recognized another advantage
which would flow naturally from following the suggestion of the prior art
cannot be the basis for patentability when the differences would otherwise
be obvious.”).
We, accordingly, sustain the Examiner’s rejection of claims 1, 2, 7,
and 23 under 35 U.S.C. § 103.
Rejections II and III
We turn now to the Examiner’s rejection of claim 8 under 35 U.S.C. §
103 as unpatentable over Fitzgerald in view of Gretz (Rejection II), and
rejection of claims 9–11 under 35 U.S.C. § 103 as unpatentable over
Fitzgerald in view of Worn (Rejection III).
To address these rejections, Appellant relies on the arguments
Appellant presents for claim 1 (discussed above), and argues that claims 8–
11 “are patentable over Fitzgerald for at least the same distinctions and
reasons.” Appeal Br. 12. Because Appellant’s arguments do not identify
reversible error in the Examiner’s rejection of claim 1 for the reasons
discussed above, Appellant’s arguments also do not identify reversible error
in the Examiner’s rejections of claims 8–11 under 35 U.S.C. § 103, which
we accordingly sustain.

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CONCLUSION

Claims
Rejected

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 7, 23 103 Fitzgerald 1, 2, 7, 23
8 103 Fitzgerald, Gretz 8
9–11 103 Fitzgerald, Worn 9–11
Overall
Outcome
1, 2, 7–11,
23

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED