R.J. REYNOLDS TOBACCO COMPANY

Patent Trials and Appeals Board

Oct 16, 2020

2019006760 (P.T.A.B. Oct. 16, 2020)

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.
14/539,215 11/12/2014 WILSON CHRISTOPHER LAMB R60999 10900US.1
(0739.6)
3642
26158 7590 10/16/2020
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
CUMMINS IV, MANLEY L
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
10/16/2020 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 WILSON CHRISTOPHER LAMB,
FREDERIC PHILIPPE AMPOLINI, and RAYMOND CHARLES HENRY
Appeal 2019-006760
Application 14/539,215
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 8, and 15–18.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as RAI Strategic
Holdings, Inc. (Appeal Br. 1).
2 Claims 4, 6, 7, and 13 have been canceled and claims 9–12 and 14 stand
withdrawn from consideration by the Examiner (4/30/2019 Advisory
Action).
Appeal 2019-006760
Application 14/539,215

2
CLAIMED SUBJECT MATTER
The claims are directed to an aerosol delivery device. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An aerosol delivery device comprising:
a housing;
a microelectromechanical systems-based (MEMS-based)
sensor within the housing and configured to detect a pressure on
the MEMS-based sensor caused by airflow through at least a
portion of the housing, the MEMS-based sensor being configured
to convert the pressure to an electrical signal, and output the
electrical signal; and
a microprocessor configured to receive the electrical signal
from the MEMS-based sensor, and control operation of at least
one functional element of the aerosol delivery device based
thereon,
wherein the MEMS-based sensor is a MEMS microphone
including a die with a micromachined, pressure-sensitive
diaphragm and a backplate that form a variable capacitor, the die
being packaged in an integrated circuit package excluding
additional circuitry designed and operable to process audio, and
wherein in an instance in which an input voltage is applied
to the variable capacitor, the pressure causes movement of the
diaphragm and thereby a change in a capacitance of the variable
capacitor, the change in the capacitance causing a change in an
output voltage across the variable capacitor, the output voltage or
a digital representation thereof being output by the MEMS
pressure sensor as the electrical signal.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Zhang US 2009/0202089 A1 Aug. 13, 2009
Jaar US 2011/0311081 A1 Dec. 22, 2011
Liu US 2012/0186594 A1 July 26,2012
Levin US 2013/0298905 A1 Nov. 14, 2013

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Application 14/539,215

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REJECTIONS
Claims 1–3, 5–8, and 15–18 stand rejected under
1) 35 U.S.C. § 112(a) as failing to comply with the written description
requirement; 2) 35 U.S.C. § 103 over Levin in view of Jaar and Zhang; and
3) 35 U.S.C. § 103 over Liu in view of Jaar and Zhang.
OPINION
Rejection under 35 U.S.C. § 112(a)
For an applicant to comply with the 35 U.S.C. § 112(a) written
description requirement the applicant’s specification must “convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)).
“‘[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)).
The Examiner concludes that “one of ordinary skill in the art would
understand that the broadest reasonable interpretation of ‘additional circuitry
designed and operable to process audio’ encompasses general wiring and
electrode assemblies which could be used to process audio, e.g., allow the
transfer electrons between the atoms of an electrical wire” (Ans. 15), and
finds that “Appellant’s disclosure does not explicitly disclose that the
inventor had position of a MEMS microphone without each and every
piece of additional circuitry designed and operable to process audio”
(Ans. 17).
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Application 14/539,215

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The Appellant’s Specification discloses:
MEMS microphones are often utilized for audio applications in
mobile telephones and hearing aids to capture audio for subsequent
replication and output by speaker. These applications typically desire
high fidelity of the audio output; and consequently, the MEMS
microphone often includes a more complex 25 bias generator circuit
and additional circuitry such as various audio-grade filtering and
amplification stages to more accurately capture and replicate
audio. In the context of an aerosol delivery device, however, this
additional circuitry may not be useful. In some examples, then, the
MEMS microphone may include simplified versions of one or
more of these components, or may not include them altogether.
[(Spec. 14:21–29)]

This disclosure that the Appellant’s MEMS microphone may exclude
additional circuitry that is used in audio applications but may not be
useful in an aerosol delivery device would have conveyed with reasonable
clarity to one of ordinary skill in the art that the Appellant was in possession
of an MEMS microphone that excludes additional circuitry designed and
operable to process audio. The Examiner’s interpretation of the claim
limitation “excluding additional circuitry designed and operable to process
audio” as excluding every piece that can be used in such circuitry is
unreasonably broad in view of the Appellant’s Specification. Accordingly,
we reverse the rejection.
Rejection under 35 U.S.C. § 103 over
Levin in view of Jaar and Zhang

Levin discloses an electronic cigarette comprising an inhalation
sensor (34) which can be an MEMS gauge pressure sensor (¶ 66; Fig. 6B).
Levin teaches: “Generally, when a user inhales, air velocity increases and
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Application 14/539,215

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the pressure sensor 34 detects a sufficient pressure change sending an
output signal to a PCB component, processor or microcontroller” (¶ 67).
Jaar discloses an MEMS microphone (200) capable of operating
without a DC-to-DC step-up voltage converter in battery-powered devices
that operate on less than one-volt power supplies such as hearing aids and
mobile telephones (¶¶ 7, 27, 32; Fig. 2).
Zhang, incorporated by reference in Jaar (¶ 30) discloses an MEMS
microphone comprising a microphone chip (10) having a backplate (12) and
a diaphragm (14) which form a variable capacitor (¶¶ 19, 20; Fig. 2).
The Examiner finds:
1) Levin’s general disclosure of a generic MEM’s [sic] pressure
sensor (Figure 6B’s 34) would motivate one of ordinary skill in the
art to look to and incorporate the specific teachings of Jarr’s [sic]
functionally equivalent MEM’s [sic] microphone (200) at the
location illustrated in by [sic] Levin at Figure 6B’s 34. Whatever
further structures Jaar’s MEM’s [sic] microphone may or may not
be associated with [(Jaar ¶ 32)] [is] immaterial because one of
ordinary skill in the art would not be motivated to incorporate
anything other than the structure of the MEM’s [sic] microphone
[(Ans. 21)].
2) [T]he fact that LEVIN's electronic cigarette does not need to
process audio and basic economic considerations would lead one
of ordinary skill in the art to not waste capital on superfluous
circuitry designed and operable to process audio. The desire to
enhance commercial opportunities by improving a product or
process is universal—and even common-sensical [(Final Rej. 9)].
The Examiner concludes (Final Rej. 8):
It would have been obvious to one of ordinary skill in the art
as of the effective filing date with LEVIN’s MEMS sensor to
simply substitute JAAR’s MEMS microphone sensor for the
predictable result of transforming a pressure drop into electrical
signal (as taught by JAAR at ¶29) when detecting airflow indicative
of user taking a puff (as taught by LEVIN at ¶67).
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Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Examiner does not establish that even if one of ordinary skill in
the art who desired to use Jaar’s MEMS microphone as the MEMS gauge
pressure sensor in Levin’s electronic cigarette would realize that circuitry for
processing audio would not be needed and, therefore, would exclude audio
processing circuitry from Jaar’s MEMS microphone to reduce cost, Levin
and Jaar would have provided one of ordinary skill in the art with an
apparent reason to modify Jaar’s MEMS microphone in that manner and use
the modified microphone as Levin’s MEMS gauge pressure sensor.
Therefore, we reverse the rejection.
Rejection under 35 U.S.C. § 103 over
Liu in view of Jaar and Zhang

Liu discloses an electronic cigarette comprising an air flow
sensor (120) including a rigid or semi-rigid conductive membrane (121)
mounted above a back plate (122) in a substantially parallel manner and
spaced therefrom by an insulating spacer (123) (¶ 27; Fig. 8). The
conductive membrane (121) and spaced-apart back plate (122) form a
capacitive component (¶ 27). Liu teaches that “[t]he inhaling detector of a
conventional electronic smoke apparatus typically comprises an air-flow
sensor having a structure similar to that of a conventional microphone
condenser” (¶ 3).
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Jaar teaches that the disclosed MEMS microphone (200) has
advantages including “increased battery life and reduced cost, complexity
and size made possible by the elimination of the need for step-up voltage
converters” (¶ 48).
The Examiner finds (Final Rej. 13):
LIU’s disclosure of a MEMS microphone modified to be an
airflow sensor (as [t]aught by LIU at ¶3) would lead one of
ordinary skill in the art to look to JAAR/ZHANG’s MEMS
microphone-itself a MEMS pressure sensor- and, upon seeing
JAAR/ZHANG’s advantages of an increased battery life and
reduced cost/complexity/size (see JAAR at ¶48), would
incorporate the teachings and arrive at the claimed limitations.

The Examiner concludes (id.):
It would have been obvious to one of ordinary skill in the art as of
the effective filing date to incorporate JAAR’s teachings with
LIU’s disclose [sic] and so arrive at a MEMS microphone
modified to be an airflow sensor (as [t]aught by LIU at ¶3) for the
benefit of a low power consumption (JAAR at ¶32 last sentence).3

The Examiner does not establish that Liu’s disclosure that “[t]he
inhaling detector of a conventional electronic smoke apparatus comprises
an air-flow sensor having a structure similar to that of a conventional
microphone condenser” (¶ 3) is a disclosure of an MEMS microphone
modified to be an airflow sensor. Nor does the Examiner establish that
Jaar’s disclosure that the MEMS microphone reduces power
consumption by not containing a DC-to-DC step-up voltage converter

3That sentence is: “The resulting MEMS microphone circuit draws as little
as about 10-20 μA.”
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(¶¶ 6, 7, 48) discloses or would have suggested eliminating audio
processing circuitry.
Thus, the Examiner has not set forth a factual basis that is sufficient to
support a conclusion of obviousness of the Appellant’s claimed aerosol
delivery device. The record, therefore, indicates that the Examiner used
impermissible hindsight in view of the Appellant’s disclosure when rejection
the claims. See In re Warner, 379 F.2d 1011, 1017 (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art”). Accordingly, we reverse the rejection.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–8,
15–18
112(a) Written
Description
1–3, 5–8,
15–18
1–3, 5–8,
15–18
103 Levin, Jaar, Zhang 1–3, 5–8,
15–18
1–3, 5–8,
15–18
103 Liu, Jaar, Zhang 1–3, 5–8,
15–18
Overall
Outcome
1–3, 5–8,
15–18

REVERSED