R. J. REYNOLDS TOBACCO COMPANYDownload PDFPatent Trials and Appeals BoardMar 1, 20212020002355 (P.T.A.B. Mar. 1, 2021) Copy Citation 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): BostonDocket@wbd-us.com 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 Claims 12–22 and 24 have been withdrawn from consideration. Appeal 2020-002355 Application 14/824,615 2 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.”): Appeal 2020-002355 Application 14/824,615 3 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. Appeal 2020-002355 Application 14/824,615 4 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 Appeal 2020-002355 Application 14/824,615 5 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 Appeal 2020-002355 Application 14/824,615 6 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 Appeal 2020-002355 Application 14/824,615 7 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) Appeal 2020-002355 Application 14/824,615 8 (“[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., Appeal 2020-002355 Application 14/824,615 9 326 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. Appeal 2020-002355 Application 14/824,615 10 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 Copy with citationCopy as parenthetical citation