ERCELEBI, Ahmet et al.

Patent Trials and Appeals Board

Oct 1, 2019

14218208 - (D) (P.T.A.B. Oct. 1, 2019)

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.
14/218,208 03/18/2014 Ahmet ERCELEBI 1021238-001740 5255
145992 7590 10/01/2019
ALCS Law Dept. - Product and IP c/o
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
KRINKER, YANA B
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
ADIPDOC1@BIPC.com
jane.fallgren@bipc.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AHMET ERCELEBI, MARTIN T. GARTHAFFNER, and
DWIGHT D. WILLIAMS
____________

Appeal 2019-000952
Application 14/218,208
Technology Center 1700
____________

Before MONTÉ T. SQUIRE, MICHAEL G. McMANUS, and
MERRELL C. CASHION, Jr., Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 3–5, 7, 8, and 10–19, which are all of the

1 In this Decision, we refer to the Specification filed Mar. 18, 2014
(“Spec.”); Final Office Action dated Nov. 28, 2017 (“Final Act.”); Advisory
Action dated Mar. 22, 2018 (“Adv. Act.”); Appeal Brief filed May 24, 2018
(“Appeal Br.”); Examiner’s Answer dated Sept. 13, 2018 (“Ans.”); and
Reply Brief filed Nov. 13, 2018 (“Reply Brief”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Philip Morris USA Inc. as the real
party in interest. Appeal Br. 3.
Appeal 2019-000952
Application 14/218,208
2
claims pending in this application.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
The Claimed Subject Matter
Appellant’s disclosure relates to cigarettes and filter subassemblies for
use with cigarettes, including a cigarette filter subassembly manufactured
from a filter member having absorbent material encased within an outer
cover, and to methods of manufacturing cigarettes and cigarette filters.
Spec. ¶ 2; Abstract.
Independent claim 3 is illustrative of the claimed subject matter on
appeal and is reproduced below from the Claims Appendix to the Appeal
Brief:
3. An individual cigarette filter subassembly
comprising:
an absorbent material encased within an outer cover
of plug wrap, the absorbent material radially outwardly
displaced against the outer cover so as to form an annular
liner of compressed absorbent material along an inner
surface of the outer cover, the annular liner surrounding a
hollow axial opening having at least one capsule therein,
and an impermeable material on an inner surface of the
annular liner of compressed absorbent material forming an
impermeable coating on the inner surface of the annular
liner of compressed absorbent material, and wherein the
coating is impermeable to an additive material released
from the at least one capsule such that when the at least
one capsule is broken, the additive material is isolated
from the annular liner of compressed absorbent material
and the outer cover; and

3 Claims 1, 2, 6, and 9 are cancelled. Appeal Br. 3.
Appeal 2019-000952
Application 14/218,208
3
at least one first absorbent member of the absorbent
material and at least one second absorbent member of the
absorbent material arranged within the annular liner of
compressed absorbent material, and wherein the at least
one capsule is disposed within the hollow axial opening
between the at least one first absorbent member and the at
least one second absorbent member, the individual
cigarette filter subassembly formed by a method
comprising the steps of:
A. providing the filter member comprised
of the absorbent material surrounded by the cover, the
filter member defining a longitudinal center axis;
B. passing a plunger axially through the
absorbent material such that a generally pointed leading
end of the plunger displaces the absorbent material
radially outwardly, wherein the displaced absorbent
material forms the liner along the inside surface of the
cover and defines the hollow axial opening within the
absorbent material;
C. axially inserting a series of absorbent
members into the hollow space, with the at least one
capsule disposed between successive absorbent members,
the at least one capsule containing the additive material for
modifying characteristics of tobacco smoke during
smoking to form an elongate filter structure which is cut
to suitable length, each length containing at least one
absorbent member and at least one capsule;
D. cutting every other absorbent member
in said series of absorbent members at its axial midpoint
to provide two dual-filter structures, each of said dual-
filter structures comprising, in series, one half of a first
absorbent member of twice the length of the first absorbent
member, a first capsule, a second absorbent member, a
second capsule, and one half of a third absorbent member,
all disposed within said outer cover;
E. providing a series of additional
absorbent members, with one of said dual-filter structures
being provided between adjacent additional absorbent
Appeal 2019-000952
Application 14/218,208
4
members; and/or providing a quantity of activated carbon
between each of said additional absorbent members and
said adjacent dual-filter structure;
F. cutting every other one of said series of
additional absorbent members substantially midway
between adjacent dual-filter structures, said step of cutting
producing quad subassemblies, each of said quad
subassemblies comprising one half of a first additional
absorbent member, a first quantity of activated carbon, a
first dual-filter structure, a second quantity of activated
carbon, a second additional absorbent member, a third
quantity of activated carbon, a second dual-filter structure,
a fourth quantity of activated carbon, and one half of a
third additional absorbent member;
G. cutting each of said dual-filter
structures midway between adjacent capsules; and
H. cutting each of said second additional
absorbent members midway between adjacent dual-filter
structures, whereby an individual cigarette filter assembly
is provided.
Claims Appendix 1–2 (key disputed claim language italicized and bolded).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Dube et al. (“Dube”) US 2004/0261807 A1 Dec. 30, 2004
Karles et al. (“Karles”) US 2007/0012327 A1 Jan. 18, 2007
Appeal 2019-000952
Application 14/218,208
5
The Rejection
On appeal, the Examiner maintains (Ans. 3) the following rejection:
claims 3–5, 7, 8, and 10–19 rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Karles in view of Dube. Final Act. 4.4
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer,
Advisory Action, and Final Office Action, which we adopt as our own. We
add the following primarily for emphasis.
Claims 3–5, 7, 8, and 10–19
Appellant argues independent claims 3, 4, 7, and 8 as a group, but
does not present separate arguments for the patentability of dependent
claims 5 and 10–19. Appeal Br. 14–15, 31; Reply Br. 2–10. We select
claim 3 as representative and the remaining claims subject to the Examiner’s
rejection stand or fall with claim 3. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Karles and Dube
suggests a cigarette filter subassembly satisfying all of the limitations of
claim 3 and concludes the combination would have rendered the claim
obvious. Final Act. 4–7. On the record before us, we find a preponderance
of the evidence and sound technical reasoning support the Examiner’s

4 At page 3 of the Answer, the Examiner has withdrawn both of the § 112
rejections, which were previously made and set forth at pages 2–3 of Final
Office Action.
Appeal 2019-000952
Application 14/218,208
6
analysis and determination that the combination of Karles and Dube
suggests a cigarette filter subassembly satisfying all of the limitations of
claim 3, and conclusion that the combination would have rendered the claim
obvious. Karles, Abstract, Figs. 2, 5–7, ¶¶ 42, 52, 59, 61, 71, 72–77; Dube,
Abstract, ¶¶ 58–60.
Appellant argues the Examiner’s rejection of claim 3 should be
reversed because the cited art does not teach or suggest “an annular liner of
compressed absorbent material,” as recited in the claim. Appeal Br. 14–18;
Reply Br. 1–4. In particular, Appellant contends Karles does not disclose a
coating on the inner surface of the annular liner and the Examiner “errs in
contending that Karles’s member 42 is ‘compressed’ material.” Appeal
Br. 17. Appellant further contends the Examiner’s rejection lacks a factual
basis because the Examiner provides “no support” for finding that annular
layer 42 of Karles is compressed, and neither Karles nor Dube mention or
suggest compressing the cellulose acetate formed around the outer cover of
Karles’ filter assembly. Id. at 18.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based on the fact-finding and reasoning provided
by the Examiner at pages 4–5 of the Answer and pages 4–7 of the Final
Office Action. Contrary to what Appellant argues (Appeal Br. 14–18; Reply
Br. 1–4), we find that a preponderance of the record evidence supports the
Examiner’s finding that the cited art teaches or suggests “an annular liner of
compressed absorbent material,” as recited in the claim. As the Examiner
finds (Ans. 4–5; Final Act. 4–7), Karles teaches forming a filter subassembly
comprising an absorbent material 42 (cellulose acetate) encased within an
outer cover 52, and forming an annular liner of a compressed absorbent
Appeal 2019-000952
Application 14/218,208
7
material 42 (“annular layer 42 of cellulose acetate”) along an inner surface
of the outer cover. Karles, Figs. 2, 5, ¶¶ 61, 71.
As the Examiner further finds (Ans. 4), Karles refers to and
incorporates by reference the process used to form annular layer 42
described in U.S. Patent No. 4,064,791,5 (Karles ¶ 71), which is essentially
the same process described in U.S. Patent No. 3,637,447,6 wherein the inner
member is formed from a filtering material such as cellulose acetate and
continuously passed into and through a conventional stuffer jet or air nozzle
(compare ’791 patent, 5:24–37 with, ’447 patent, 3:58–65). In particular, as
the Examiner finds (Ans. 4–5), according to the process described in the
prior art, in order to produce the tubular rod-like tow of filtering material,
the cellulose acetate material is fed into a stuffer jet or air nozzle, which is
generally shaped as a truncated cone having a greater cross section at the
entrance end than at the exit end. See, e.g., ’447 patent, 3:58–65.
Thus, as the Examiner explains (Ans. 4–5), because during the
process used to form the annular layer, the cellulose acetate material is
passed through a stuffer jet or air nozzle shaped as a truncated cone, it
follows that Karles’ cellulose acetate material 42 is or would have been
reasonably expected by one of ordinary skill in the art to be “compressed”
along an inner surface of outer cover 52, as recited in the claim.
Appellant’s arguments do not reveal any reversible error in the
Examiner’s factual findings or analysis in this regard.

5 Berger, U.S. Patent No. 4,064,791 (issued Dec. 27, 1977).
6 Berger et al., U.S. Patent No. 3,637,447 (issued Jan. 25, 1972).
Appeal 2019-000952
Application 14/218,208
8
Appellant argues one of ordinary skill in the art would not have had
reason to combine Karles and Dube to arrive at the claimed invention “due
to the differences in how the filters are designed and operate.” Appeal
Br. 20. In particular, Appellant contends that
[c]ontrary to the objective of Dube of retaining the capsule
against a conical wall of the cavity by a coating of triacetin
. . . Karles seeks to provide a capsule in a cavity through
which air can flow around the capsule.
Id. at 20. Appellant also contends there would be no reason to add a coating
of triacetin to the inner surface of member 42 because capsule 36 of Karles
is already retained by absorbent members 32 and 34. Id. at 20; see also
Reply Br. 9–10 (same).
Appellant’s arguments are not persuasive of reversible error because
the Examiner provides a reasonable basis, which is supported by a
preponderance of the evidence in the record, to evince why one of ordinary
skill would have combined the teachings of Karles and Dube to arrive at the
claimed invention. Final Act. 7 (explaining it would have been obvious for
one of ordinary skill in the art at the time of the invention to have coated
Karles’ cellulose acetate liner with triacetin in order to improve adhesion
with the capsule, as taught by Dube); Dube ¶ 60 (disclosing the use of “a
coating of triacetin plasticizers capable of causing some adhesion with the
capsule”). See also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007)
(explaining that any need or problem known in the art can provide a reason
for combining the elements in the manner claimed).
Appellant fails to direct us to persuasive evidence or provide an
adequate technical explanation to establish why the Examiner’s articulated
reasoning lacks a rational underpinning or is otherwise based on some other
Appeal 2019-000952
Application 14/218,208
9
reversible error. Appellant’s mere disagreement as to the Examiner’s factual
findings and reasoning for combining the references, without more, is
insufficient to establish reversible error. Cf. SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of
disagreement . . . as to the existence of factual disputes do not amount to a
developed argument.”).
Appellant’s contention regarding the objective of Dube being contrary
to Karles’ filter subassembly (Appeal Br. 20) is not persuasive because it is
conclusory and Appellant does not provide an adequate technical
explanation or direct us to persuasive evidence in the record to support it.
Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
Appellant argues the Examiner’s rejection of claim 3 should be
reversed because the Examiner errs in failing to give the product by process
limitations patentable weight. Appeal Br. 18; Reply Br. 2, 5–8. Appellant
argues that although claim 3 recites product by process steps A–H, the
structure implied by the claimed process steps is not disclosed or suggested
by Karles. Appeal Br. 19. In particular, Appellant contends the “claimed
steps provide the claimed liner of compressed absorbent material, a structure
which is not the same or obvious from the annular liner of Karles.” Id. at 19.
We do not find Appellant’s arguments in this regard persuasive of
reversible error based on the Examiner’s factual findings and reasoning
provided at pages 5–6 of the Answer and pages 5–6 of the Final Office
Action. In particular, as the Examiner finds (Ans. 5–6; Final Act. 5–6) and
Appellant agrees (Appeal Br. 19), claim 3 is written in a product-by-process
format. The patentability of this type of claim does not depend on the
Appeal 2019-000952
Application 14/218,208
10
process steps, i.e., process steps A–H of claim 3, except to the extent that the
process steps are shown to result in properties not possessed by prior art
products. “If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.” In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985); see also In re Pilkington, 411 F.2d
1345, 1348 (CCPA 1969) (“[The] patentability of a claim to a product does
not rest merely on a difference in the method by which that product is made.
Rather, it is the product itself which must be new and unobvious.”).
Because, as the Examiner finds and previously discussed above, the
combination of Karles and Dube suggests all of the limitations of the
claimed filter subassembly product, the burden shifts to Appellant to show
an unobvious difference between the claimed product and the prior art
product. In re Marosi, 710 F.2d 798, 802 (Fed. Cir. 1993).
Appellant, however, has not shown, either by persuasive technical
reasoning or evidence, an unobvious difference between the claimed product
and the prior art product. Appellant’s assertion that the “claimed steps
provide the claimed liner of compressed absorbent material, a structure
which is not the same or obvious from the annular liner of Karles” (Appeal
Br. 19) is conclusory and, without more, insufficient to establish that the
claimed structure implied by the recited process steps is different than the
prior art structure, as the Examiner determines is suggested by the
combination and Karles and Dube. De Blauwe, 736 F.2d at 705.
Accordingly, we affirm the Examiner’s rejection of claim 3.
Appeal 2019-000952
Application 14/218,208
11
Claims 4, 7, and 8
Although Appellant argues claims 4, 7, and 8 each under separate
headings in the Appeal Brief (see Appeal Br. 20, 24, 28), Appellant repeats
and relies on principally the same arguments previously presented above in
response to the Examiner’s rejection of claim 3. Compare Appeal Br. 17–20
(presenting arguments for the patentability of claim 3) with, Appeal Br. 21–
24, 25–27, 28–31 (repeating essentially the same arguments for the
patentability of claims 4, 7, and 8, respectively).
Thus, based on the findings and technical reasoning provided by the
Examiner, and for principally the same reasons discussed above for
affirming the Examiner’s rejection of claim 3, we affirm the Examiner’s
rejection of claims 4, 7, and 8.
Accordingly, we affirm the Examiner’s rejection of claims 3–5, 7, 8,
and 10–19 under 35 U.S.C. § 103(a) as obvious over the combination of
Karles and Dube.
CONCLUSION
In summary:
Claim(s)
Rejected
Basis Affirmed Reversed
3–5, 7, 8, 10–19 § 103(a)
Karles, Dube
3–5, 7, 8, 10–19
Overall
Outcome
3–5, 7, 8, 10–19

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