Ex Parte Beard et al

Patent Trial and Appeal Board

Jun 19, 2018

13082908 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/082,908 04/08/2011
26158 7590 06/21/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Kenneth Allen Beard
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.
R60999 2160.1 (0237.8) 7024
EXAMINER
BELL, WILLIAM P
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH ALLEN BEARD, LEIGH ANN BLEVINS JOYCE,
STEPHEN BENSON SEARS, STEVEN LEE ALDERMAN, and
TIMOTHY BRIAN NESTOR 1
Appeal 2016-008584
Application 13/082,908
Technology Center 1700
Before KAREN M. HASTINGS, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--40. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to cigarettes and, in particular,
cigarette filters. E.g., Spec. 1 :2--4; Claim 1. Claim 1 is reproduced below
from page 16 (Claims Appendix) of the Appeal Brief:
1 According to the Appellants, the real party in interest is R.J. Reynolds
Tobacco Company. App. Br. 1.
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Application 13/082,908
1. A cigarette comprising a tobacco rod and a filter element
connected to the tobacco rod, said filter element having an end
proximal to the tobacco rod and an end distal from the tobacco
rod, wherein said filter element comprises:
a first longitudinally extending section of fibrous filter
material proximal to the tobacco rod, said first section of
fibrous filter material comprising a smoke-altering material
therein; and
a second longitudinally extending section of fibrous filter
material distal from the tobacco rod and arranged in an end-
to-end configuration with the first section of fibrous filter
material, the second section of fibrous filter material not
including a smoke-altering material;
wherein said first section of fibrous filter material comprises one
or more tubes inserted into and extending through said first
section of fibrous filter material, said one or more tubes each
defining a channel cavity adapted for passage of mainstream
smoke between said tobacco rod and said second section of
fibrous filter material, without substantial contact with the
smoke-altering material.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
1. Claims 1---6, 8-12, 28-30, 32, 33, and 37-39 over Yang (US
2003/0159703 Al, published Aug. 28, 2003) and White (EP 0579410 Al,
published Jan. 19, 1994);
2. Claims 7, 13-18, 23, 25, 31, and 34--36 over Yang, White, and
Crooks (US 7,240,678 B2, issued July 10, 2007);
3. Claims 19-22 over Yang, White, and Brackmann (US 4,972,853,
issued Nov. 27, 1990);
4. Claims 24, 26, and 27 over Yang, White, Crooks, and Karles (US
2006/0174901 Al, published Aug. 10, 2006);
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5. Claim 40 over Yang.
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final
Act. 2-14; Ans. 2--4.
Rejections 1-4
The Appellants argue the claims subject to Rejection 1 as a group.
See App. Br. 5-10. For Rejections 2--4, the Appellants argue that the
additional references relied on by the Examiner in those rejections "do[] not
remedy the deficiencies" argued with respect to Rejection 1. Id. at 11
(Rejection 2), 11-12 (Rejection 3), 12 (Rejection 4). We select claim 1 as
representative of the claims subject to Rejections 1--4, and the remaining
claims subject to those rejections will stand or fall with claim 1.
The Examiner finds that Yang teaches or suggests a cigarette
comprising each element of claim 1, including a "first section of fibrous
filter compris[ing] one or more channel cavities," except that (1) "Yang does
not explicitly teach that the second filter section is fibrous," (2) Yang does
not expressly teach incorporation of a smoke-altering material in a first filter
section but not a second filter section, and (3) Yang does not teach that its
channel cavities are defined by tubes. Final Act. 2-3. With respect to (1) a
fibrous second filter section, the Examiner finds that "one of skill in the art
would readily appreciate that the mouthpiece filter [i.e., second filter
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Application 13/082,908
section] would be formed from the materials that Yang teaches as suitable
for the first filter section - i.e. polypropylene or cellulose acetate fibers, as is
conventional in the art." Id. at 3 (internal citation omitted). With respect to
(2) the location of the smoke-altering material, the Examiner finds that,
because Yang teaches incorporation of a smoke-altering material in "the first
filter section, the second filter section, or both the first and second filter
sections," "it would have been obvious ... to have incorporated a smoke-
altering material into only the first filter section." Id.
With respect to (3) one or more tubes extending through the first filter
section, the Examiner finds that Yang teaches a "first section of fibrous filter
compris[ing] one or more channel cavities capable of passing mainstream
smoke between the tobacco rod and the second section of filter material."
Id. The Examiner finds that White teaches a cigarette similar to that of
Yang, and that "White teaches that the channel cavities may be defined by a
tube of material inserted into the filter element or, by omitting the tube." Id.
at 4. The Examiner determines that "[i]t would have been obvious ... to
have modified the cigarette taught by [Yang] by providing an inserted tube
to define the channel cavity as a matter of simple substitut[ion] of one
known element for another to obtain predictable results." Id.
In view of those and other findings, the Examiner concludes that the
subject matter of claim 1 would have been obvious to a person of ordinary
skill in the art. See id. at 2--4.
The Appellants argue that "[t]he object of Yang is for mainstream
smoke to specifically contact the flavored carbon particles disclosed therein
such that flavor is released while the carbon particles filter the mainstream
smoke." App. Br. 7-8 (emphasis in original). The Appellants assert that
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"[ e Jach embodiment of Yang disclosing a hollow filter section encourages
filling the hollow filter section with flavored carbon particles [i.e., smoke-
altering material]." Id. at 8; see also Reply Br. 5. Focusing on
"predictability," the Appellants argue:
[T]he examiner has not shown that a person of ordinary skill ...
would have predicted a useful benefit in contravening the express
teaching of [Yang] to modify Yang so that the Yang product
includes tubes in one section of fibrous filter material to provide
for passage of mainstream smoke between its tobacco rod and a
second section of fibrous filter material, without substantial
contact with the smoke-altering material.
App. Br. 9 (emphasis in original); see also Reply Br. 3-5.
Those arguments are not persuasive of reversible error in the
Examiner's rejection. We recognize that Yang concerns "flavored
carbon ... as a filtering material of a smoking article." E.g., Yang at
Abstract. However, contrary to the Appellants' argument that each
embodiment of Yang with a hollow filter section includes flavored carbon
particles in the hollow section, see App. Br. 8, Yang teaches or suggests
many potential embodiments, and it teaches, e.g., that "flavored carbon
particles can also be loaded onto a support such as lightly or tightly folded
paper inserted into a hollow portion of the cigarette filter." Yang ,r 45
(emphasis added). Yang further teaches, for example, that, "[i]n another
embodiment ... the flavored carbon particles are incorporated into the
fibrous material of the cigarette filter portion itself." Id. ,r 50. With regard
to the hollow section of filters, Yang also teaches, "[i]n another preferred
embodiment, the flavored carbon particles are employed in a hollow portion
of a cigarette filter." Id. ,r 55 (emphasis added).
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Thus, we do not agree with the Appellants' suggestion that every
embodiment of Yang with a hollow section must include flavored carbon
particles in the hollow section. On the contrary, Yang reasonably suggests
filters with hollow sections (i.e., channels or cavities) in which the flavored
particles are in other portions of the filter, such as "incorporated into the
fibrous material of the cigarette filter portion itself," id. ,r 50, and not in the
hollow channel, see id. ,r,r 44--55. That Yang teaches many potential
variations to its cigarette filter does not render any particular variation less
obvious. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) ("That the [prior art] discloses a multitude of effective
combinations does not render any particular formulation less obvious.").
Yang discusses "impart[ing] desired taste to mainstream smoke,"
which may suggest at least some contact between the mainstream smoke and
the flavored particles. E.g., Yang at Abstract; see also Reply Br. 6.
However, Yang does not explicitly specify any particular amount of contact
necessary to achieve its goals. Yang teaches that "the flavored carbon
particles can be incorporated in any element of the filter portion of a
cigarette. For example, the filter portion may consist only of the mouthpiece
filter 8 and the flavored carbon particles can be incorporated in the
mouthpiece filter 8 and/or in the tipping paper 14." Yang ,r 50 (emphasis
added) & Fig. 5. If the flavored particles were in only the tipping paper 14,
as Yang ,r 50 teaches, the mainstream smoke would not have significant
contact with the flavored particles. Id. ,r 50 & Fig. 5. Thus, we do not agree
with the Appellants' contention that Yang requires substantial contact
between the mainstream smoke and the flavor particles. Cf id. ,r 4 7 ("In
whichever form, a desired amount of flavored carbon particles can be
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provided in the cigarette filter portion by adjusting the amount of flavored
carbon particles coated per unit area of the paper and/or the total area of
coated paper employed in the filter .... ").
With regard to the Appellants' argument concerning predictability,
see App. Br. 8-10, the Appellants have not persuasively identified anything
unpredictable about the proposed combination. The Examiner finds that the
prior art of record indicates that, where a cigarette filter has a cavity or a
channel, an optional porous membrane (i.e., tube) may be used to define the
cavity. Final Act. 4; White at 4: 14--17 ( describing "optional" "porous
membrane 60" and explaining that "[t]he porous membrane 60 is porous to
vapour phase constituents of tobacco smoke"), 4:34--35, 4:46-47 ("The core
365 is an empty cavity formed by a tube 360 of vapour phase porous
membrane."). Thus, using the porous membrane (tube) of White to define
the hollow channel of Yang would be the use of a known element according
to its established function with predictable results. Such combinations
typically do not result in nonobvious subject matter. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 416-21 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results."); see also id. at 416 ("[W]hen a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result."). The
Appellants' arguments fail to show otherwise in this case.
To the extent that the Appellants argue that a person of ordinary skill
in the art would not have added White's tubes to Yang's filter because the
tubes would reduce the amount of mainstream smoke contacting the flavored
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particles, and thereby render Yang "unsatisfactory for its intended purpose,"
see App. Br. 9--10; Reply Br. 3--4, we likewise find that argument
unpersuasive. As noted above, Yang does not require any particular amount
of contact between the smoke and the flavored particles, and it discloses
embodiments that would not result in significant contact. Additionally,
White expressly discloses that its membranes are "porous to vapour phase
constituents of tobacco smoke." White at 4: 14--17; accord Spec. 4:6-8
("[T]he tube walls can have a sufficient porosity such that at least a portion
of the mainstream smoke permeates through the tube walls and into the
section of filter material surrounding the tube."). On this record, the
Appellants have not persuasively argued that a person of ordinary skill in the
art would not have included White's tubes in Yang's filters because it would
prevent smoke from contacting the flavored particles or otherwise render
Yang unsatisfactory for its intended purpose.
Turning to claim 1 's recitation, "adapted for passage of mainstream
smoke between said tobacco rod and said second section of fibrous filter
material, without substantial contact with the smoke-altering material," we
are not persuaded that this recited function is not provided by the relied on
combination of prior art. The Specification indicates that the recited
function is structurally achieved by the inclusion of tubes or channels in the
filter, see, e.g., Spec. 3:11-13, 20:5-8 ("The one or more tubes (or channels)
48 provide an unimpeded pathway adapted for passage of mainstream smoke
between the tobacco rod 12 and the second section of filter material 36 while
substantially avoiding contact with the smoke-altering material 34 in the first
section of filter material 38."), a feature disclosed by both Yang and White.
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The Appellants have not identified any disclosure in the Specification
suggesting anything beyond tubes or channels is required to achieve the
recited function. Thus, we find that the tubes and channels of the prior art
meet this recitation, and the Appellants have not persuasively explained how
this recitation structurally distinguishes the cigarette of claim 1 from the
cigarette of the combined prior art. See In re Gardiner, 1 71 F .2d 313, 315-
16 (CCPA 1948) ("It is trite to state that the patentability of apparatus claims
must be shown in the structure claimed and not merely upon a use, function,
or result thereof."); see also Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1469 (Fed. Cir. 1990) ("[A]pparatus claims cover what a
device is, not what a device does." (emphasis in original)); cf, In re
Schreiber, 128 F.3d 1473, 1477-79 (Fed. Cir. 1997) ("[W]here the Patent
Office has reason to believe that a functional limitation ... may ... be an
inherent characteristic of the prior art, it [may] require the applicant to prove
that the subject matter shown to be in the prior art does not possess the
characteristic relied on."). As explained above, we disagree with the
Appellants' argument that Yang requires the inclusion of flavored carbon
particles in its channel cavities, and that Yang therefore fails to teach "a
means for allowing at least a portion of mainstream smoke to by-pass a filter
segment comprising an adsorbent material." See App. Br. 8.
Finally, the Appellants' argument that "White does not teach or
suggest a section of fibrous filter material comprising a smoke-altering
material situated within the fibrous filter material," App. Br. 10, is
unpersuasive because the Examiner relies on Yang for teaching or
suggesting a cigarette meeting that limitation. See In re Keller, 642 F .2d
413,426 (CCPA 1981) ("[O]ne cannot show non-obviousness by attacking
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references individually where, as here, the rejections are based on
combinations of references.").
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claim 1. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections .... ").
Rejection 5
Claim 40 is similar to claim 1, but claim 40 recites "a first fibrous
filter material with one or more channel cavities formed therein" and does
not require the use of tubes to define the channel cavity. Thus, the Examiner
determines that claim 40 would have been obvious over Yang alone,
essentially for reasons described above with respect to claim 1. See Final
Act. 11-12.
The Appellants arguments concerning claim 40 are similar to those
addressed above and focus on whether a person of ordinary skill would have
been motivated "to modify Yang to arrive at a filter embodiment ... wherein
at least a portion of the mainstream smoke makes no substantial contact with
an adsorbent [i.e., smoke-altering] material." App. Br. 13-14.
The Appellants' arguments are not persuasive. As explained above,
Yang teaches or suggests embodiments in which a first filter portion
includes flavored particles and a channel, and, based on the record before us,
it appears that the channel meets any structural limitation implied by the
recitation that the "mainstream smoke" passes through the filter section
"without substantial contact with the smoke-altering material."
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claim 40. See Jung, 637 F.3d at 1365.
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CONCLUSION
We AFFIRM the Examiner's rejections of claims 1--40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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