Ex Parte Cantrell et al

Patent Trial and Appeal Board

Mar 12, 2018

12854342 (P.T.A.B. Mar. 12, 2018)

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.
12/854,342 08/11/2010 Daniel Verdin Cantrell R60999 1690.1 (0148.7) 7604
26158 7590 03/14/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
KRINKER, YANA B
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/14/2018 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-u s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL VERDIN CANTRELL and GONG CHEN
Appeal 2017-003567
Application 12/854,342
Technology Center 1700
Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision to reject claims 1—6, 8—10, 22, and 24—34 under
35 U.S.C. § 103(a) as obvious over Regrut.3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In explaining our Decision, we cite to the Final Office Action dated August
31, 2015 (Final), the Appeal Brief dated April 29, 2016 (Appeal Br.), and
the Examiner’s Answer dated September 1, 2016 (Ans.).
2 Appellants identify the real party in interest as R.J. Reynolds Tobacco
Company. Appeal Br. 1.
3 Regrut et al., WO 2009/068279 Al, published June 4, 2009.
Appeal 2017-003567
Application 12/854,342
The claims are directed to a meltable smokeless tobacco composition.
Claim 1 is illustrative:
1. A meltable smokeless tobacco composition
configured for insertion into the mouth of a user, the tobacco
composition comprising
a tobacco material,
a sugar alcohol present in an amount of at least about 20
dry weight percent, and
a lipid having a melting point of about 29°C to about
49°C, wherein the lipid is present in an amount of greater than
about 30 dry weight percent.
Appeal Br. 25 (claims appendix) (formatting added).
OPINION
Appellants do not argue any claim apart from the others. Appeal Br.
3—23. We select claim 1 as representative.
There is no dispute that Regrut teaches a meltable smokeless tobacco
composition including tobacco material, a lipid having a melting point of
about 29°C to about 49°C and a sugar alcohol. Compare Appeal Br. 3—23,
with Final 2. Appellants’ arguments call into question the Examiner’s
findings and determinations regarding the concentrations of sugar alcohol
and lipid recited in claim 1. Appeal Br. 3—23. We determine that a
preponderance of the evidence supports the Examiner’s findings and
determinations concerning the concentrations.
Regrut discloses a dissolvable compressed tobacco product for oral
consumption. Regrut, p. 2,11. 2—3. The compressed tobacco product
includes a binder, which may be a sugar alcohol. Regrut, p. 2,11. 19-21.
The compressed formulation includes about 30% to 50% by weight tobacco
2
Appeal 2017-003567
Application 12/854,342
component, about 5% to 35% by weight filler-binder and less than about 1%
by weight of lubricants and glidants. Regrut, p. 11,11. 11—18. In another
form, the filler-binder may be as little as about 3%. Id. Sweeteners may be
present in an amount of about 1% to about 3% by weight and flavorant in an
amount to provide desired flavoring, such as about 1% to about 15% by
weight. Id. Regrut further discloses that the amounts of tobacco, binder,
glidant, and optionally flavorants, are at levels that “provide a balance
between [the] desired mechanical properties (such as compressibility) and
desired organoleptic properties (such as its taste, dissolvability, mouthfeel).”
Regrut, p. 11,11. 7—10.
The compressed tobacco product is infused with lipid. Regrut, p. 5,11.
1—2. The Examiner finds that Regrut teaches that the lipid provides the
tobacco product with various properties. Final 3. Regrut supports the
Examiner’s finding. Specifically, Regrut teaches:
Once in the mouth, the lipids melt, allowing the dissolved
flavors to exit the compressed tobacco product still in the liquid
lipid which then coats the tongue and oral mucosa, providing a
pleasant and smooth mouth feel. The hydrophobic lipid also
inhibits migration of saliva into the interior of the tablet,
smoothing dissolution and reducing the spalling of the tobacco
matrix and resulting muddy texture of a conventional
compressed tobacco product. Additionally, many flavors and
aromas are hydrophobic and thus difficult to liberate from a
conventional compressed tobacco product using only aqueous
saliva dissolution. Instead, the oils allow these flavors and
aromas to be spread easily within the mouth and retronasal
olfactory environment.
Regrut, p. 16,11. 2—10. Regrut further teaches that “it has been observed that
the porosity of the compressed tobacco product tablet and, thus, lipid
3
Appeal 2017-003567
Application 12/854,342
inclusion level, may be controlled by compression pressure or tablet
composition or a combination of both approaches.” Regrut, p. 23,11. 28—30.
A preponderance of the evidence supports the Examiner’s
determination that the concentration of lipid is a result effective variable.
See In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A
recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.”). “Thus, it would have been
obvious to one of ordinary skill in the art at the time of the invention to
have[,] given these benefits, optimized the amount of the lipid in the Regrut
composition to achieve these benefits, with a reasonable expectation of
success,” as determined by the Examiner. Final 3^4. One would have used
the concentration of lipid that would accomplish the desired benefits and
would have arrived at the workable or optimal concentration through
controlling the compression pressure and tablet composition using routine
experimentation. Performing such routine experimentation is within the
ordinary skill of the artisan and supports a conclusion of obviousness when
the results are predictable rather than unexpected. See In re Aller, 220 F.2d
454, 456 (CCPA 1955) (“Normally, it is to be expected that a change in
temperature, or in concentration, or in both, would be an unpatentable
modification.”); In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990) (finding
no clear error in the Board’s finding that the amount of eluent to be used in
the washing sequence was a matter of routine optimization in the pertinent
art where the reference fails to provide any numerical quantities.).
The Examiner also points out that Regrut teaches spraying lipid on the
tablet post-infusion. Final 3. Thus, the lipid may be present as a coating on
the surface as well as infused within the tablet. Regrut, p. 16,11. 10—17.
4
Appeal 2017-003567
Application 12/854,342
Given the amount of lipid is not limited by the concentration created by the
infusion process, the presence of the coating provides further evidence that
workable or optimal concentrations of lipid would include amounts greater
than about 30 dry weight percent.
Appellants further contend that Regrut would not have led the
ordinary artisan to include a filler in the form of a sugar alcohol in an
amount of at least about 20 dry weight percent. Appeal Br. 20. Appellants
point to a teaching in Regrut regarding sweeteners. Id. According to
Regrut:
Sweeteners are employed for their impact on the
consumer use and enjoyment mode. Sucrasweet® and
sucralose have been found to benefit consumer use and
enjoyment. Although sugar alcohols have been found to provide
adequate sweetness, they also serve as a quick release agent
with respect to extractables and, as such, serve to negatively
impact consumer use and enjoyment. Additionally, sugar
alcohols have been found to negatively affect product hardness,
thus also affecting the tablet mode.
Regrut, p. 23,11. 5—10.
As rightly pointed out by Appellants (Appeal Br. 20), the above
teaching must be read in the context of Regrut as a whole. Regrut
specifically discloses using sugar alcohols as a binder and further discloses
that binder may be present in the amount of about 5% to about 35%. Regrut,
p. 2,11. 19-21, p. 6,11. 33—34. Specific sugar alcohols mentioned include
sorbitol, mannitol, xylitol or mixtures thereof. Regrut, p. 11,11. 4—6. These
sugar alcohols can serve the dual purposes of a sweetener and a binder. Id.
The teaching with regard to sugar alcohols as having a negative impact on
consumer use and enjoyment, product hardness, and affecting tablet mode
on page 23 is disclosed in the context of a list of positive and negative
5
Appeal 2017-003567
Application 12/854,342
effects on three distinct modes: (1) production mode; (2) a tablet mode; and
(3) a consumer use and enjoyment mode. Regrut, p. 22,11. 11—16. Regrut
discloses a number of different positive and negative effects for different
selections of tobacco, binders, sweeteners, lubricants, and flavor/aroma
agents in this portion of the reference. Regrut, p. 22,1. 17 to p. 23,1. 21.
The disclosure of positive and negative effects does not negate the disclosure
of using sugar alcohol as a binder and binder in the amount of 5-35 wt%.
The specific amount used would have been a matter of routine optimization
for the specific sugar alcohol selected and a preponderance of the evidence
indicates that useful amounts would have included the amounts of about 20
wt% to 35 wt% that would overlap the range of the claim.
Appellants have not identified a reversible error in the Examiner’s
conclusion of obviousness nor met their burden in establishing that the
ordinary artisan would have been led away from concentrations within the
ranges of claim 1. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997)
(quoting In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974)) (“aprima facie
case of obviousness can be rebutted if the applicant (1) can establish ‘the
existence of unexpected properties in the range claimed’ or (2) can show
‘that the art in any material respect taught away’ from the claimed
invention.”).
CONCFUSION
We sustain the Examiner’s rejection.
DECISION
The Examiner’s decision is affirmed.
6
Appeal 2017-003567
Application 12/854,342
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
7