Ex Parte Dube et al

Patent Trials and Appeals Board

Apr 30, 2019

12971746 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/971,746 12/17/2010
26158 7590 05/02/2019
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Michael Francis Dube
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 1810.1 (0173.8) 8572
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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
BostonPatents@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL FRANCIS DUBE,
WILLIAM MONROE COLEMAN III,
and ANTHONY RICHARD GERARDI 1
Appeal2018-005927
Application 12/971,746
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY R. SNAY, and
JANEE. INGLESE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claims 3, 10, 14, 15, 17, 18, 20-22, and 37-39 under
35 U.S.C. § 103(a) as unpatentable over Lendvay2 in view of White et al. 3 Claims
12, 13, 16, 23-31, and 34--36 are also pending but have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
1 The real party in interest is said to be R. J. Reynolds Tobacco Company. Appeal
Brief dated October 4, 201 7 ("Br."), at 1.
2 US 4,244,381, issued January 13, 1981 ("Lendvay").
3 US 5,074,319, issued December 24, 1991 ("White").
Appeal2018-005927
Application 12/971,746
We AFFIRM.
The claimed invention is directed to a tobacco product comprising a
flavorful tobacco composition in the form of a sugar-containing syrup and a plant
material for use as a carrier for the sugar-containing syrup. The sugar-containing
syrup comprises compounds derived from the stalk of a plant of the Nicotiana
species.
The Appellants disclose that "the syrup of the invention can be derived from
any portion of the tobacco plant (e.g., roots, stalks, leaves, flowers, and the like)."
Spec. 7, 11. 5---6. Nonetheless, the Appellants disclose that "the tobacco stalk is
advantageous for use in the invention because the stalk contains a significant
percentage of the water and sugar compounds present in tobacco, particularly in
the central pith section of the tobacco stalk." Spec. 7, 11. 6-9.
Independent claim 10 is reproduced below from the Claims Appendix to the
Appeal Brief.
10. A tobacco product comprising:
a flavorful tobacco composition in the form of a sugar-
containing syrup,
wherein the sugar-containing syrup comprises compounds
derived from the stalk of a plant of the Nicotiana species including
sugar compounds derived from the stalk of a plant of the Nicotiana
species and at least one flavor compound derived from the stalk of a
plant of the Nicotiana species selected from the group consisting of
pyrazines, furan derivatives, damascone, norsolanadione, solanone,
and ionone derivatives, wherein the sugar-containing syrup comprises
at least about 15% by weight sugar compounds derived from the stalk
of a plant of the Nicotiana species; and
a tobacco material or a non-tobacco plant material as a carrier
for the sugar-containing syrup,
wherein the tobacco material is in the form of tobacco lamina or
tobacco stems in shredded or particulate form.
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Appeal2018-005927
Application 12/971,746
Br. 16.
B. DISCUSSION
1. Claim 3, 10, 14, 22, 38, and 39.1
The Examiner finds Lendvay discloses a tobacco composition that includes
burley tobacco stalks (i.e., stalk of a Nicotiana species), 5 wherein the tobacco
stalks have been extracted with hot water and the extract has been concentrated to
45% solids (i.e. a syrup) and sprayed on tobacco. Final Act. 3. 6 The Examiner
finds Lendvay discloses that the extraction step "'removes some water soluble
constituents which may be desirable for obtaining a tobacco product having good
taste and aroma, e.g., nicotine, sugars, flavorants, etc.'" Final Act. 3 ( citing
Lendvay, col. 4, 11. 41--46).
The Examiner finds Lendvay does not expressly disclose that the extract
contains "(A) one of oyrazines [sic, pyrazines], furan derivatives, damascene [sic,
damascone], norsolanadione, solanone and ionone derivatives, (B) at least 15% by
weight sugar compounds ... [and] (C) that the tobacco material is in the form of
tobacco lamina or stems (shredded or particulate)" as recited in claim 10. Final
Act. 3.
As for (A), the Examiner finds that the compounds in Lendvay's extract are
the same as the claimed compounds because Lendvay' s process and the
4 The Appellants argue the patentability of claims 3, 10, 14, 22, 38, and 39 as a
group. Therefore, we select independent claim 10 as representative. See 37 C.F.R.
§ 4I.37(c)(iv) (2016).
5 The Appellants disclose that tobaccos from the Nicotiana species include burley.
Spec. 14, 1. 19-27.
6 Final Office Action dated May 5, 2017.
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Appeal2018-005927
Application 12/971,746
Appellants' process are the same and use the same starting material. 7 Final Act. 3-
4.
As for (B), the Examiner finds Lendvay discloses that "'[t]he temperature
and quantity of water employed may vary depending on the quantity of water
solubles desired to be removed"' (col. 4, 11. 21-23) and "'[t]he residence time for
the water extraction step, i.e., the amount of time that the by-product material is in
contact with the water extraction medium, is determined by quantitative analysis of
the water extract"' ( col. 4, 11. 35--40). Final Act. 4. Based on those disclosures in
Lendvay, the Examiner finds that the concentration of sugar in Lendvay's tobacco
composition is a result-effective variable. Final Act. 4; see also In re Boesch, 617
F.2d 272, 276 (CCPA 1980) ("discovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art").
As for (C), the Examiner finds "it is well known in the art to use tobacco
extracts to flavor or case conventional cut filler tobacco (i.e. shredded tobacco
leaves (lamina))." Final Act. 4. The Examiner relies on White for support. Final
Act. 4--5 (citing White, col. 2, 11. 38--49).
The Appellants disagree with the Examiner's finding that the starting
material in Lendvay' s process and the Appellants' process is the same. Br. 8. In
particular, the Appellants argue that "Lendvay focuses on treatment of tobacco
stems," not tobacco stalks as claimed. Br. 6 ( emphasis omitted).
The Appellants' argument is not persuasive of reversible error. We
recognize Lendvay discloses that the method is particularly directed to stems. See,
7 "Where ... the claimed and prior art products ... are produced by identical or
substantially identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics of his
claimed invention." In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
4
Appeal2018-005927
Application 12/971,746
e.g., Lendvay, col. 1, 11. 61---64. Nonetheless, Lendvay expressly states that a
mixture of stems and stalks may be used in the disclosed process and does not limit
the amount of stalks in the mixture. See Lendvay, col. 5, 1. 47----col. 6, 1. 3; see also
Br. 6 (recognizing that Lendvay mentions stalks in combination with stems). In
particular, Lendvay discloses that "preferably about 0.8 to 60% of stems and stalks
may be added to the slurry based on the weight of the tobacco material employed
in said slurry." Lendvay, col. 5, 11. 51-54. Moreover, the Appellants disclose that
the syrup of the invention can be derived from any portion of the tobacco plant.
Spec. 7, 11. 5---6. Thus, a preponderance of the evidence of record supports a
finding that optimizing the amount of sugar in Lendvay's process, which uses a
mixture of stems and stalks, necessarily results in a sugar-containing syrup as
recited in claim 10.
The Appellants also argue that the claimed tobacco product exhibits
unexpected results. Br. 10-12. The Appellants rely on a Declaration of Dr.
Michael Francis Dube dated December 16, 2014 ("Dube Declaration"), for
support. Br. 11-12. In particular, the Appellants argue that "the tobacco stalk-
derived syrups recited in the pending claims are noted by Dr. Dube to exhibit
'surprisingly strong, unique sensory characteristics,' described as reminiscent of
licorice and cocoa." Br. 12.
Significantly, the Dube Declaration does not compare the claimed syrup
with the syrup produced in Lendvay's process. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984) (an applicant must compare his claimed invention to the
closest prior art). Rather, as the Examiner points out "the declaration argues
unexpected results over prior art that is not at issue (Selke et al.)." Ans. 7. 8
8 Examiner's Answer dated February 22, 2018.
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Appeal2018-005927
Application 12/971,746
Moreover, the Examiner finds that "Lendvay discloses that tobacco by-products,
including stalk, contribute to sensory properties (i.e. good taste and aroma, col. 4,
41-64)." Ans. 7. Indeed, Lendvay discloses that "the smoking materials
incorporating the upgraded tobacco by-product material of the present invention
has better flavor and aromatic qualities and is milder than smoking materials not
containing such treated by-product material at all." Lendvay, col. 6, 11. 36-40.
Based on the foregoing, a preponderance of the evidence of record weighs in
favor of the Examiner's conclusion of obviousness. Therefore, the obviousness
rejection of claims 3, 10, 14, 22, 38, and 39 is sustained.
2. Claims 15 and 372
Claim 15 depends from claim 14, which depends from claim 10, and recites
that "the smoking article comprises a casing formulation or a top dressing
comprising the sugar-containing syrup." Br. 17.
The Appellants argue that "[t]here is no teaching or suggestion in the
Lendvay reference that the unique extracts provided by the disclosed process,
understood to be treated for a specific purpose, would have any application in the
context of a casing or top dressing component." Br. 13.
The Appellants' argument fails to consider the prior art as a whole. See In
re Keller, 642 F.2d 413,425 (CCPA 1981) (test for obviousness is what the
combined teachings of the references would have suggested to one of ordinary skill
in the art). The Examiner finds that White, not Lendvay, teaches that "it [was]
well known in the art to use tobacco extracts to flavor or case conventional cut
filler tobacco (i.e. shredded tobacco leaves (lamina))." Final Act. 4. The
9 The Appellants argue the patentability of claims 15 and 3 7 as a group. Therefore,
we select claim 15 as representative. See 37 C.F.R. § 4I.37(c)(iv) (2016).
6
Appeal2018-005927
Application 12/971,746
Appellants do not direct us to any error in the Examiner's finding. Likewise, the
Appellants do not direct us to error in the Examiner's conclusion that it would have
been obvious to one of ordinary skill in the art to use Lendvay's extract in a casing
or top dressing composition as disclosed by White to add flavor to the cut filler.
See Br. 12-13; Final Act. 5; see also Ans. 8. Thus, the Appellants do not identify a
reversible error in the Examiner's rejection of claim 15.
The obviousness rejection of claims 15 and 37 is sustained.
3. Claims 17, 18, 20, and 211.Q
Claim 20 depends from claim 10 and recites that "the sugar-containing syrup
comprises at least about 20% by weight sugar compounds derived from the stalk of
a plant of the Nicotiana species." Br. 17.
The Appellants argue that "the Lendvay reference does not teach or suggest
the provision of a syrup containing at least about 15% stalk-derived sugar
compounds" as recited in claim 10. Br. 14. Therefore, the Appellants argue that
"one of skill in the art would certainly not be led to a tobacco product comprising a
syrup comprising an even higher content of stalk-derived sugar compounds, e.g., at
least about 20% by weight sugar compounds derived from the stalk." Br. 14.
The Appellants' argument is not persuasive of reversible error. As discussed
above, a preponderance of the evidence of record supports a finding that
optimizing the amount of sugar in Lendvay's process, which uses a mixture of
stems and stalks, necessarily results in a sugar-containing syrup comprising at least
about 15% by weight sugar compounds as recited in claim 10. The Appellants do
not direct us to any evidence demonstrating that such optimization would not also
10 The Appellants do not present arguments in support of the separate patentability
of any of claims 17, 18, 20, and 21. Therefore, we select claim 20 as
representative. See 3 7 C.F .R. § 41.3 7 ( c )(iv) (2016).
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Appeal2018-005927
Application 12/971,746
result in a sugar-containing syrup comprising sugar compounds in an amount
within the range recited in claim 20 or for that matter, in an amount within the
ranges recited in claims 17, 18, and 21. Therefore, the obviousness rejection of
claims 17, 18, 20, and 21 is sustained.
C. DECISION
The Examiner's decision is affirmed.
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
8