Ex Parte Dube et al

Patent Trial and Appeal Board

Mar 6, 2019

13153831 (P.T.A.B. Mar. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/153,831 06/06/2011
26158 7590 03/08/2019
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 1170.4 (0266.1) 9827
EXAMINER
MAYES, DIONNE WALLS
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/08/2019 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, KENNETH WAYNE SMITH, and
VERNON BRENT BARNES 1
Appeal2018-003999
Application 13/153,831
Technology Center 1700
Before CHRISTOPHER C. KENNEDY, LILAN REN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-10, 12, 14--17, 19-21, 24--31, and 33--40. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to cigarettes and, in particular, to
cigarettes containing a breakable flavor capsule. E.g., Spec. 1: 5-7; Claim 1.
Claim 1 is reproduced below from page 13 (Claims Appendix) of the Appeal
Brief ( some paragraph breaks added):
1 According to the Appellants, the real party in interest is R.J. Reynolds
Tobacco Company. Br. 1.
Appeal2018-003999
Application 13/153,831
1. A smoking article, comprising:
a tobacco-containing rod; and
a filter element attached to the tobacco-containing rod,
wherein the filter element comprises at least one breakable
capsule having a crush strength sufficient for the capsule to
retain its integrity within the smoking article until the capsule
is purposefully broken by a user before, during or after use of
the smoking article,
the capsule being generally spherical in shape and comprising
an outer wall in the form of a continuous sealed one-piece
member surrounding an internal payload comprising a
flavoring or aromatic agent capable of flavoring or scenting
mainstream cigarette smoke,
wherein the outer wall represents about 5 percent to about 50
percent of the total weight of the capsule, and
wherein the at least one breakable capsule is adapted for
rupture in response to a squeezing action applied by the
fingers of the user directly outside the position of the capsule,
and
further wherein the breakable capsule is positioned in a cavity
having walls, the walls of the cavity being defined at least
partially by a compressible and resilient cellulose acetate or
polypropylene fibrous tow filter material such that application
of pressure to the filter element causes deformation of the
fibrous tow filter material and release of the applied pressure
results in return of the fibrous tow filter material to essentially
its original shape, and
the breakable capsule is colored to assist in detection within
the filter element during an automated manufacturing
process.
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Application 13/153,831
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. Claims 1-10, 12, 19-21, 24--30, and 33--40 over Berger '063
(US 4,046,063, issued Sept. 6, 1977), Berger '416 (US 3,533,416, issued
Oct. 13, 1970), Waddell (US 4,966,169, issued Oct. 30, 1990), and Boden
(US 4,083,372, issued Apr. 11, 1978);
2. Claims 14--17 and 31 over Berger '063, Berger '416, Waddell,
Boden, and Dorsey (US 5,549,124, issued Aug. 27, 1996).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final
Act. 2-21; Ans. 3-24.
The Appellants generally argue the claims as a group but present
distinct arguments for claim 37. We select claim 1 as representative of the
grouped claims, and the remaining claims for which separate arguments are
not presented will stand or fall with claim 1. We address claims 1 and 37
below.
Claim 1. The Examiner's findings and conclusions appear at pages
3-7 of the Answer. Of particular relevance to the issues raised by the
Appellants in this appeal, the Examiner finds that Berger '063 discloses a
cigarette with a filter element that comprises a hollow cavity. Ans. 3--4.
The Examiner finds that Berger '416 discloses that "placing smoke-
modifying agents in cavities within cigarette filters is known in the art." Id.
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at 4. The Examiner finds that Waddell discloses smoke-modifying agents in
the form of spherical capsules designed to be manually ruptured by
squeezing, and that "Waddell discloses that flavor enhancers may be added
as part of the encapsulated material." Id. at 4, 7. The Examiner finds that, in
view of those three references, it would have been obvious to include a
capsule breakable by squeezing in a cavity of a cigarette filter "in order to
receive the benefits of the capsule payload [in] the tobacco smoke stream."
Id.
The Examiner acknowledges that Waddell does not expressly teach a
capsule that falls within the scope of claim one (i.e., "spherical,"
"continuous sealed one-piece member") but finds that it would have been
obvious to select a smoke-modifying capsule from amongst commercially
available capsules. Id. at 5. The Examiner finds that the Appellants'
Specification discloses that gelatin capsules including a flavorant in a one-
piece spherical form were commercially available at the time of the
invention from "Mane Aromatic Flavors, Nice, France." Id. at 5. The
Examiner determines that it would have been obvious to use Mane's
commercially available capsules in the cigarette of the combined prior art.
Id.
As to the requirement that "the breakable capsule is colored to assist
in detection within the filter element during an automated manufacturing
process," the Examiner finds that Boden "teaches that breakable capsules
used in the tobacco industry can be colored, particularly, to reflect the flavor
contained therein." Id. at 7. The Examiner determines that it would have
been obvious to color the breakable capsule of the combined prior art "in
order to differentiate various flavored capsules which would, consequently,
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enable its 'detection within the filter element during an automated
manufacturing process."' Id.
In view of those and other findings less material to the issues on
appeal, the Examiner concludes that the subject matter of claim 1 would
have been obvious to a person of ordinary skill in the art. Id. at 3-7.
The Appellants first argue that the combined prior art does not teach
or suggest "a capsule having an internal payload comprising a flavoring or
aromatic agent capable of flavoring or scenting mainstream cigarette
smoke." Br. 5. More specifically, the Appellants assert (1) that Berger '416
teaches a "loose sorbent material in particulate form such as activated
carbon," not a flavorant, as its smoke-modifying material, id. at 5---6, (2) that
Waddell teaches the use of alcohol-containing elements in its capsules, and
that the alcohol in Waddell' s capsules is used to block localization of a
nitrosamine or related metabolite in human tissue "without noticeably
altering the customary smoking experience and satisfaction," id. at 6-7, and
(3) that the "Berger and Waddell references do not lead one of ordinary skill
in the art to the types of capsules sold by Mane," id. at 8.
Those arguments are not persuasive of reversible error because they
generally focus on the references narrowly and individually. See Beckman
Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir.
1989) (reference is prior art "for all that it teaches"); In re Keller, 642 F.2d
413,426 (CCPA 1981) ("[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references."); In re Preda, 401 F.2d 825,826 (CCPA 1968)
("[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
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Application 13/153,831
which one skilled in the art would reasonably be expected to draw
therefrom."). As the Examiner explains, Ans. 20-21, Berger '416 broadly
discloses the inclusion of "smoke-modifying material" in its filter and is not
limited to the specific provided example of "loose sorbent material" relied
on by the Appellants. See Berger '416 at 4:60-68. The Appellants do not
persuasively argue that a person of ordinary skill in the art would not have
considered a flavorant to be a smoke-modifying material.
As both Waddell and Boden indicate, inclusion of flavorants in
cigarettes as a smoke-modifying material was known in the art. E.g.,
Waddell at 14:30 (describing "flavor enhancers"); Boden at 4:25-26
(describing flavor capsules). Although Waddell teaches that the alcohol in
its capsules is used to inhibit or block selective localization of nitrosamine
"without noticeably altering the customary smoking experience," Waddell
also expressly discloses the use of flavor enhancers "as part of the
encapsulated material." See Waddell at Abstract, 14:30-32. Thus, as the
Examiner explains, Ans. 19-20, Waddell's concern is with the effect of its
alcohol on the smoking experience; Waddell does not teach away from or
otherwise discourage the use of flavorants. See Waddell at Abstract, 14:30.
Through the use of only ordinary creativity, and in view of the
combined teachings of the prior art, a person of ordinary skill in the art
would have understood from the prior art that capsules containing smoke-
altering materials are desirable in cigarettes, and that the smoke-altering
material may desirably be a flavorant. The Appellants' arguments
concerning Mane largely hinge on their arguments concerning Berger '416
and Waddell. See Br. 8. Having found those arguments unpersuasive, we
discern no reversible error in the Examiner's determination that a person of
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ordinary skill in the art would have been motivated to use known,
commercially available flavor capsules, including those of Mane.
On this record, we are not persuaded of reversible error in the
Examiner's findings and conclusions concerning the use of a flavor capsule
in a cigarette.
The Appellants also argue that the combined prior art does not teach
or suggest "a capsule colored to assist in detection." Br. 9. In particular, the
Appellants rely on Waddell's disclosure that "the capsules can be dyed ...
to match the color of the cigarette tobacco," Waddell at 13:49-51, and argue
that the purpose of Waddell' s coloring "is to hide the capsule, not assist in
detection." Br. 9.
That argument is not persuasive. Claim 1 is directed to a smoking
article; it is not directed to a method. The recitation of claim 1 that "the
breakable capsule is colored to assist in detection within the filter element
during an automated manufacturing process" ( emphasis added), is a
functional recitation, or a recitation of intended use, that states the function
of providing a color to the capsule. No color is actually specified.
The Appellants do not challenge the Examiner's finding that Boden
"teaches that breakable capsules used in the tobacco industry can be colored,
particularly, to reflect the flavor contained therein." Ans. 7. Waddell also
discloses dying capsules with food dyes and explains that the capsules "can
be dyed" to match the color of tobacco. Waddell at 13:50. Thus, the art as a
whole generally discloses providing color to cigarette capsules. In some
instances, a person of ordinary skill may have desired dying capsules in a
way to conceal them, as the Appellants suggest is the case with Waddell; in
other instances, a person of ordinary skill in the art would have desired
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dying capsules a color that reflects the flavor contained therein, as is
disclosed by Boden. As the Examiner explains, dying capsules to reflect the
flavor would assist with "differentiat[ing] various flavored capsules,"
Ans. 7, for example, during manufacturing.
On this record, we are not persuaded of reversible error in the
Examiner's determination that the prior art would have motivated a person
of ordinary skill in the art to color a capsule. To the extent that the recitation
"to assist in detection" is limiting of the claimed subject matter ( as opposed
to, e.g., a nonlimiting functional recitation or a nonlimiting recitation of
intended use), the Appellants do not argue that a capsule colored to reflect
the flavor of its contents would not "assist in detection within the filter
element during an automated manufacturing process," as recited by claim 1.
The Appellants also argue that Boden is nonanalogous art. Br. 9. We
disagree.
The analogous art test considers the threshold question of whether a
prior art reference is "'too remote to be treated as prior art."' In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741
(Fed. Cir. 1985)). "The Supreme Court's decision in KSR International Co.
v. Teleflex, Inc. directs us to construe the scope of analogous art
broadly .... " Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir.
2010) (internal citation omitted). Art is analogous to the claimed invention
if (1) the art is "from the same field of endeavor, regardless of the problem
addressed," or (2) the art is "reasonably pertinent to the particular problem
with which the inventor is involved." In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004). "A reference is reasonably pertinent if ... it is one which,
because of the matter with which it deals, logically would have commended
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itself to an inventor's attention in considering his problem." Clay, 966 F.2d
at 659.
Boden is titled "Cigarette-Simulating Inhaler." Although it may not
specifically be concerned with the combustion of tobacco, it nevertheless
concerns cigarettes, including "smokeless cigarettes," see Boden at 1: 10-15,
and the Examiner identifies the field of endeavor as inhalable tobacco
products, see Ans. 23. The Appellants do not file a Reply Brief or otherwise
persuasively explain why the field of endeavor should be construed more
narrowly. We are not persuaded of error in the Examiner's determination
that Boden and the claimed invention concern the same field of endeavor.
Additionally, the Appellants' Specification states: "In particular, it
would be desirable to provide a cigarette that is capable of releasing an agent
for enhancing the sensory attributes of the mainstream smoke (e.g., by
flavoring the smoke)." Spec. 4: 14--16. Thus, a problem addressed by the
inventors of the application on appeal was the selection and use of, e.g.,
tobacco flavorants. Boden addresses a similar issue of flavoring an inhaled
product. E.g., Boden at 4:25-31. We determine that, at least in that regard,
Boden is reasonably pertinent to a problem with which the inventors were
involved, and constitutes analogous art for that independent reason.
On this record, we decline to determine that Boden is "'too remote to
be treated as prior art."' Clay, 966 F.2d at 658 (quoting Sovish, 769 F.2d at
741).
In summary, we have carefully considered the Appellants' arguments,
but we are not persuaded of reversible error in the Examiner's rejection.
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Claim 37. Claim 37 depends from claim 1 and specifically requires
that the capsule "is colored a dark color to assist detection within the filter
element."
The Examiner finds that Boden teaches or suggests a dark colored
capsule. Ans. 13.
The Appellants essentially repeat the argument discussed above
concerning Waddell' s disclosure that capsules can be colored to match the
color of tobacco. Br. 10-11. That argument is unpersuasive for reasons
stated above. We are not persuaded of reversible error in the Examiner's
rejection of claim 37.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-10, 12, 14--17,
19-21, 24--31, and 33--40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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