Ex Parte Beroth et al

Patent Trial and Appeal Board

Mar 4, 2016

12766377 (P.T.A.B. Mar. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121766,377 04/23/2010 Roger Allen Beroth
26158 7590 03/08/2016
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
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 1320.1 (0007.3) 1304
EXAMINER
NGUYEN, PHU HOANG
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/08/2016 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@WCSR. COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER ALLEN BEROTH, EL WOOD DALE
SCOTT JR., and TIMOTHY FRANKLIN TILLEY
Appeal2014-005419
Application 12/766,377
Technology Center 1700
Before TERRY J. OWENS, BEYERL YA. FRANKLIN, and A VEL YN M.
ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our opinion below, we refer to the Final Office Action appealed from,
filed June 7, 2013 (Final), the Appeal Brief filed October 7, 2013 (Appeal
Br.), the Examiner's Answer filed January 30, 2014 (Ans.), and the Reply
Brief filed March 25, 2014 (Reply Br.).
2 Appellants identify the real party in interest as R. J. Reynolds Tobacco
Company, the assignee of the present application. Appeal Br. 2.
Appeal2014-005419
Application 12/766,377
STATEMENT OF CASE
The claims are directed to tobacco rod manufacturing apparatus.
Claim 1, is illustrative of the claimed subject matter and reproduced below,
with the relevant claim language emphasized:
1. An apparatus for forming tobacco rod portions of a smoking
article from tobacco material, the apparatus comprising:
a conveyor unit configured to receive a continuous stream
of the tobacco material and to transport the continuous tobacco
material stream along an elongate path for formation of the
continuous tobacco material stream into a continuous tobacco
rod·
'
a conveyor housing configured to house the conveyor unit,
the conveyor housing defining a tobacco material inlet duct
configured to receive the continuous tobacco material stream;
a suction system in fluid communication with the
conveyor housing through a suction port, the suction system
being configured to apply suction to the conveyor housing via
the suction port, wherein the conveyor unit is disposed between
the suction port and the tobacco material inlet duct, so as to draw
the continuous tobacco material stream into engagement with the
conveyor unit; and
a wear resistant member operably engaged with a wall of
the conveyor housing and defining the suction port, the wear
resistant member being configured to resist wear from interaction
with particles, associated with the continuous tobacco material
stream, drawn through the suction port by the suction system.
Claims Appendix at Appeal Br. 17 (emphasis added).
REJECTIONS
The Examiner made the following rejections:
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Application 12/766,377
A. Claims 1 and 3 stand rejected under 35 U.S.C §102(b) as
being anticipated by Muller et al. 3 Final 2-3.
B. Claim 2 stands rejected under 35 U.S.C 103(a) as being
unpatentable over Muller. Id. at 3.
C. Claims 5, 6, and 10 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Muller in view of Brand.4 Id. at 3-
5.
D. Claims 4 and 7-9 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Fitzgerald5 in view of Muller. Id. at
5---6.
Appellants, in opposition to the above rejections, present argument
directed to claim 1, alone. Appellants explain that claims 2-10, depending
from claim 1, are also not taught or rendered obvious by Muller (or the
secondary references), for the same reasons advanced with respect to claim
1. Appeal Br. 12-15. Therefore, the issue arising is the same for all claims,
and it will suffice for us to focus our discussion on claim 1 to resolve the
issue on appeal.
OPINION
The Examiner rejects claim 1under35 U.S.C § 102(b) as being
anticipated by Muller. Final 2. Specifically the Examiner finds that Muller
teaches a system having
a conveyor unit (sign 20, fig. 1) capable of receiving a
continuous stream of the tobacco material and to transport the
continuous tobacco material stream along an
3 Muller et al., US 2002/0014243 Al, February 7, 2002 (hereinafter
"Muller").
4 Brand, US 4,474,190, October 2, 1984 (hereinafter "Brand").
5 Fitzgerald et al., US 7,234,471, June 26, 2007 (hereinafter "Fitzgerald").
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Appeal2014-005419
Application 12/766,377
elongate path for formation of the continuous tobacco material
stream into a continuous tobacco rod;
a conveyor housing ( 4, fig. 1) capable of housing the
conveyor unit; the conveyor housing defining a tobacco material
inlet duct configured to receive the continuous tobacco material
stream;
a suction system ( 48, fig. 1) in fluid communication with
the conveyor housing through a suction port, the suction system
capable of being configured to apply suction to the conveyor
housing via a suction port, wherein the conveyor unit is disposed
between the suction port and the tobacco material inlet duct, so
as to draw continuous tobacco stream into engagement with the
conveyor unit;
a wear resistant member (by reference sign 16, 18 of fig.
2) operably engaged (integrated) with a wall of the conveyor
housing and defining the suction port, the wear resistant member
being configured to resist wear from interaction with particles,
associated with the continuous tobacco material stream, drawn
through the suction port by the suction system.
Id. 2-3. The Examiner further notes that the system of Muller teaches the
conveyor unit is disposed between the suction port and the tobacco flow
because surfaces 22 and 24 (see Muller, Figs. 1 and 2) are on the opposite
side of the conveyor from the tobacco inlet. Id. at 6.
Appellants argue that it is evident that the conveyor in Muller is not
disposed between because "Muller appears to be particularly directed to
the issue of wear at the lower reach of an endless foraminous belt on the
same side of the conveyor unit as the incoming tobacco stream, rather
than at a suction port at an opposing side of the conveyor unit." Reply Br.
2 (emphasis in original). In addition, Appellants respond that "regardless of
whether or not the walls 16, 18 are positioned on an opposite side of the
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Application 12/766,377
conveyor 2 from the incoming tobacco stream, Muller fails to disclose,
suggest, or render predictable each of the elements recited in Claim 1."
Appeal Br. 9-10. According to Appellants, the claims require "fluid
communication through a suction port ... [and] configured to apply suction
via the suction port" (claim 1 ). Appellants continue that "in Muller suction
is applied to the housing 4 via a separate suction port ... , and the suction is
partially relieved by the opening proximate the walls 16, 18 at the lower
reach 20 of the endless foraminous belt." Id. at 12; see also Reply Br. 2-3.
Therefore, because suction is relieved, as opposed to applied, the walls 16
and 18 do not meet the claimed suction port limitation. Appeal Br. 12.
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F .2d 628,
631 (Fed. Cir. 1987). And, we need not address each of Appellants'
arguments where one is dispositive.
Thus, the issue on appeal becomes whether the Examiner reversibly
erred in finding that Muller discloses a "suction port, wherein the conveyor
unit is disposed between the suction port and the tobacco material inlet
duct." We find the Examiner did commit reversible error. Our reasons
follow.
We find that Muller does not teach a "suction port, wherein the
conveyor unit is disposed between the suction port and the tobacco material
inlet duct" as required by the claims. Rather, Muller teaches "discrete
inserts or walls 16, 18"---characterized by the Examiner as suction ports-
with "elongated grooves 12, 14" that assist in positioning the lower reach of
the endless belt 20. Muller at i-f 24. For example, Muller explains
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Application 12/766,377
[t]he inserts 16, 18 are respectively provided with guide surfaces
22, 24 for the respective edge faces 30, 32. The configurations
of the surfaces 22, 24 bounding the grooves or cutouts 12, 14 are
such that the lower reach 20 of the endless belt is compelled to
advance in an accurately defined plane extending at least
substantially at right angles to the plane of FIG. 1 or 2.
Id. (emphasis added). Therefore, the endless belt 20, is positioned inside
inserts 16 and 18 and not disposed between a suction port and a tobacco
inlet. The Examiner's argument that surfaces 22 and 24 are on the opposite
side of the conveyor and, therefore, the conveyor is disposed between, is not
persuasive. Final 6.
CONCLUSION
The Examiner committed error in rejecting claims 1-10.
DECISION
For the above reasons; the Examiner's rejection of claims 1-10 is
reversed.
REVERSED
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