Ex parte Case et al.

Board of Patent Appeals and Interferences

May 18, 1998

07814779 (B.P.A.I. May. 18, 1998)

Application for patent filed December 30, 1991. According to1
appellants, this application is a continuation of Application 07/541,861,
filed June 21, 1990, now abandoned.
1
Paper No. 34
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte PAUL D. CASE
and ALAN G. STEPHENSON
______________
Appeal No. 97-0292
Application 07/814,7791
_______________
HEARD: December 11, 1997
_______________
Before COHEN, MEISTER and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.

ON REQUEST FOR REHEARING
The appellants request we reconsider our decision mailed
on December 31, 1997, wherein we affirmed the examiner’s
rejections of (1) claims 1, 4-6, 8, 12-23, 26 and 29-31 as
Appeal No. 97-0292
Application 07/814,779
2
being unpatent-able over Cline in view of Hampl and (2) Claims
9-11 as being unpatentable over Cline in view of Hampl and
Montoya. We have carefully reconsidered our decision in light
of the arguments advanced; however, we decline to alter our
decision in any respect.
The appellants note that on page 6 of our decision we
quoted column 2, lines 39-43, of Cline wherein it is stated
that:
The magnesium oxide may be used as the sole filler
for the paper or it may be used in combination with
the other conventional fillers such as calcium
carbonate provided at least 15% by weight of the
wrapper is magnesium oxide. [Emphasis added.]
The appellants on page 3 of the request thereafter state that
(1) “[t]his one statement in Cline, taken independently from
the remainder of the reference, may appear to the Board to
teach what the Board alleges” and (2) “if the Board actually
had considered the reference as a whole, they would have noted
in the paragraph directly after this statement . . . that
Cline contradicts the Board’s interpretation.” In support of
this position the appellants reference column 2, line 65,
through column 3, line 20, of Cline wherein it is stated:
Appeal No. 97-0292
Application 07/814,779
3
Neither magnesium oxide nor the chemical
adjuvant salts when used alone as a filler or
coating in smoking article wrappers substantially
reduce visible sidestream smoke. . . . The amounts
of magnesium oxide and chemical adjuvant employed in
the wrapper are critical and it has been found that
amounts of magnesium oxide less than 15% and of
chemical adjuvant salt of less than 0.5% by weight
are ineffective in combination to achieve the
desired reduction in visible sidestream smoke. . . .
Preferably and for maximum sidestream smoke
reductions, the wrapper should contain at least 35%
magnesium oxide and at least 2.0% of the chemical
adjuvant salt.
We must point out, however, the fact that Cline subse-
quently states that (1) magnesium oxide when used alone does
not “substantially reduce” visible sidestream smoke and (2)
“preferably” the wrapper should contain at least 35% magnesium
oxide, does not “contradict” what has previously been stated
in lines 39-43 of column 2 as the appellants allege. While,
of course, that portion of Cline noted by the appellants
indicates that magnesium oxide when used alone is ineffective
or unsatisfactory and that the “preferred” embodiment is one
which contains at least 35% magnesium oxide, all of the
teachings of a particular reference must be evaluated for what
they fairly teach one of ordinary skill in the art, including
those teachings that are “phrased in terms of a non-preferred
Appeal No. 97-0292
Application 07/814,779
4
embodiment or as being unsatisfactory for the intended
purpose” (emphasis ours). In re Boe, 355 F.2d 961, 965, 148
USPQ 507, 510 (CCPA 1966). We also observe that what Cline
considers “ineffective” vis-à-vis what the appellants consider
“ineffective” is not clear.
Moreover, we did not simply rely on lines 39-43 of column
2 of Cline as the appellants imply. In our decision we also
made note of the fact that in Cline:
the first line of the Abstract and column 2, lines
17-27, state that the invention is for a wrapper
having “at least 15% by weight magnesium oxide in
combination with at least 0.5% by weight of a
specific chemical adjuvant,” without making any
mention whatsoever of “other convention fillers”
being used. Equally significant is the fact that in
independent claim 1 Cline sets forth that the
wrapper contains “at least 15% magnesium oxide and
at least 0.5% of a chemical adjuvant salt,” without
setting forth that the wrapper contains “other
conventional fillers.” [Page 6.]
The appellants also urge that they are the “ones” skilled
in the art and imply that, as such, their interpretation of
Cline should be dispositive. However, as the court stated in
In re Vamco Mach. & Tool, Inc., 752 F.2d 1564, 1575, 24 USPQ2d
617, 623 (Fed. Cir. 1985): “We too can read this patent and
understand what it describes.”
Appeal No. 97-0292
Application 07/814,779
5
The appellants also note that “there is no clear teaching
in the examples of Cline utilizing 15% sole total filler or
anything remotely close” (request, page 3) and contend that
the “examples in Cline, however, have been wholly overlooked
by the Board” (request, page 4). While it is true that there
is no specific example in Cline of utilizing 15% sole total
filler, a reference
must be evaluated for all it teaches and is not limited to its
specific examples. In re Snow, 471 F.2d 1400, 1403, 176 USPQ
328, 329 (CCPA 1973).
The appellants’ request is granted to the extent of
reconsidering our decision, but is denied with respect to
making any changes therein.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
DENIED
Appeal No. 97-0292
Application 07/814,779
6
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

Appeal No. 97-0292
Application 07/814,779
7
Charles I. Sherman
BROWN & WILLIAMSON TOBACCO CORP., INC.
1500 Williamson Tower
Louisville, KT 40202
JMM/cam