Ex Parte Deevi

Board of Patent Appeals and Interferences

Apr 29, 2010

10754697 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SAROJINI DEEVI
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Appeal 2009-006641
Application 10/754,697
Technology Center 1700
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Decided: April 29, 2010
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Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-10, 17, 34, 35, and 37-40. We have jurisdiction
under 35 U.S.C. § 6.
We REVERSE.

Appeal 2009-006641
Application 10/754,697

Appellant claims a cigarette package comprising a laminate which
comprises a metal foil layer 30 having a metal oxide layer on each of the
major foil surfaces, a crosslinked polymer coating 24, 32 adhered to the
metal oxide layer on both sides of the metal foil, and a flavor component in
contact with one of the crosslinked polymer coatings, wherein the laminate
forms an inner wrap surrounding a bundle of cigarettes in the cigarette
package (Fig. 2; claim 1).
Representative independent claim 1 reads as follows:
1. A cigarette package comprising

a laminate, wherein the laminate comprises:

a metal foil layer having opposed major surfaces;

a metal oxide layer on each of the major surfaces of the foil;

a crosslinked polymer coating adhered to the metal oxide layer on
both sides of the metal foil; and

a flavor component in contact with one of the crosslinked polymer
coatings,

wherein the thickness of the metal oxide layer is from about 100
angstroms to about 250 angstroms, and

wherein the laminate forms an inner wrap surrounding a bundle of
cigarettes in the cigarette package.

The references cited below are applied by the Examiner in the § 103
rejection before us (Ans. 3, last para.):
Smith 3,961,111 Jun. 1, 1976
Scales 3,906,893 Sept. 23, 1975
Viola 3,949,114 Apr. 6, 1976
Hunt 5,077,104 Dec. 31, 1991
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Appeal 2009-006641
Application 10/754,697

Wick 5,662,926 Sep. 2, 1997

The Examiner rejects all appealed claims under 35 U.S.C. § 103(a) as
being unpatentable over Hunt in view of Scales, Viola, and Wick as
evidenced by Smith.1
The Examiner and Appellant agree that Hunt discloses a laminate for
producing a pouch 14 which encloses a nicotine containing device 34 such
as a transdermal delivery device for transport of nicotine base across the skin
barrier (Fig. 3, col. 5, ll. 7-14). Hunt’s laminate comprises a self-sealing
nitrile rubber modified acrylonitrile-methyl acrylate copolymer nicotine
barrier layer 20 which encloses the nicotine containing device, an aluminum
foil barrier layer 22, and a paper coating layer 26 which provides the pouch
with a protective covering and is a good substrate for printing (Fig. 2, para.
bridging cols. 4-5, col. 4, ll. 40-43). The Examiner acknowledges that Hunt
fails to disclose a number of the representative claim 1 limitations including
a “cigarette package”, a “crosslinked polymer coating”, wherein the polymer
coating is on “both sides of the metal foil”, a “flavor component”, and
“wherein the laminate forms an inner wrap surrounding a bundle of
cigarettes in the cigarette package” (Ans. 4-6).
With respect to these deficiencies, the Examiner concludes that:

1 In the Response to Argument section of the Answer, the Examiner relies
on five references in support of the § 103 rejection which were not positively
included in the statement of the rejection (Ans. 9). It is well settled that,
where a reference is relied on to support a rejection, whether or not in a
minor capacity, the reference should be positively included in the statement
of the rejection. See In re Hoch, 428 F.2d 1341, 1342 n. 3 (CCPA 1970).
Because the Examiner has not positively included these five references in
the statement of the rejection, we will not consider these references in our
disposition of this appeal.
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Appeal 2009-006641
Application 10/754,697

[I]t would have been obvious to the skilled artisan to utilize
the film [sic, laminate] render[ed] obvious by Hunt to form
an inner wrap surrounding a bundle of cigarettes in a
cigarette package [since] [s]uch an arrangement is typical in
the art (see page 2 of the specification)

(id. at 6);
[I]t would have been obvious . . . to utilize an ionomeric
[crosslinked polymer] coating [of Wick] in place of the
nitrile rubber nicotine barrier layer taught in Hunt

(id. at para. bridging 5-6);
[I]t would have been obvious [in view of Viola] to apply a
second polymer layer to the side of the aluminum foil
opposite the polymer layer taught in Hunt

(id. at 5); and
[I]t would have been obvious to one of ordinary skill in the
art . . . to apply a solution of menthol and alcohol to the
paper sheet taught in Hunt

(id. at para. bridging 4-5).
This last obviousness conclusion is expounded upon by the Examiner as
follows:
[T]he skilled artisan would have known to make the paper
the inner layer when utilizing Hunt’s laminate as an inner
wrap since it is customary to make the paper layer the inner
layer of such aluminum/paper packages (see Scales . . . )

(id. at 9).
Appellant argues, inter alia, that the applied references contain no
teaching or suggestion of using Hunt’s laminate to form an inner wrap
surrounding a bundle of cigarettes in a cigarette package and having a flavor
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Appeal 2009-006641
Application 10/754,697

component or flavorant layer as required by the independent claims on
appeal (App. Br. 6-8, 11-12). We agree.
The evidence before us does not support the Examiner’s conclusion
that it would have been obvious for an artisan to modify Hunt’s laminate and
use this modified laminate to form an inner wrap surrounding a bundle of
cigarettes in a cigarette package as proposed in the rejection. Hunt contains
no teaching or suggestion of such a use. This infirmity of Hunt is not
remedied by the fact that conventional cigarette packages include an inner
wrap comprising metal foil laminated to a paper substrate. The utility and
structure of this conventional inner wrap is so dissimilar from the utility and
structure of Hunt’s laminate for producing a pouch which encloses a nicotine
containing device (e.g., a transdermal delivery device) that, on the present
record, an artisan would have had no motivation to modify the laminate and
use it as an inner wrap for a cigarette package in the manner proposed by the
Examiner.
The absence of such motivation is highlighted by the modifications
necessary to render Hunt’s laminate suitable as an inner wrap which satisfies
the requirements of the independent claims. In order to transform Hunt’s
laminate into Appellant’s claimed inner wrap, the Examiner concludes that it
would have been obvious for an artisan (i) to replace Hunt’s self-sealing
polymer with a crosslinked polymer, (ii) to adhere this crosslinked polymer
to both sides of Hunt’s aluminum foil layer, (iii) to use the outwardly facing
paper cover 26 of the so-modified laminate as an inwardly facing paper layer
and (iiii) to provide this inwardly facing paper layer with a flavor component
such as menthol. The Examiner has not shown that the applied references
provide any suggestion or reason to alter the structure and use of the
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Appeal 2009-006641
Application 10/754,697

laminates disclosed by Hunt for pouches to obtain the structurally and
functionally distinct inner wraps claimed by Appellant. These
circumstances lead us to determine that the Examiner’s ultimate conclusion
of obviousness is based upon impermissible hindsight derived from the
Appellant’s own disclosure.
For the above-stated reasons, we cannot sustain the Examiner’s § 103
rejection of all appealed claims as being unpatentable over Hunt in view of
Scales, Viola, and Wick as evidenced by Smith.
The decision of the Examiner is reversed.
REVERSED

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