Ex Parte Duggins et al

Patent Trial and Appeal Board

Jun 12, 2018

13370600 (P.T.A.B. Jun. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/370,600 02/10/2012
26158 7590 06/14/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Donna Walker Duggins
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 2620US.l (0339.1) 5569
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
06/14/2018 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-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONNA WALKER DUGGINS,
JOHN-PAUL MUA, DARRELL EUGENE HOLTON JR.,
and DANIEL VERDIN CANTRELL
Appeal2017-007133
Application 13/370,600
Technology Center 1700
Before GEORGE C. BEST, JENNIFER R. GUPTA, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 4---6, 8, 9, 20, and 26 of
Application 13/370,600 under 35 U.S.C. § 103(a) as obvious. Final Act.
(May 18, 2016). Appellants 1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.
1 R.J. Reynolds Tobacco Co. is identified as the real party in interest.
Appeal Br. 1.
Appeal2017-007133
Application 13/370,600
BACKGROUND
The '600 Application describes multi-layer smokeless tobacco
products. Spec. 1. These products generally comprise a series of two or
more different formulations having different property layers that may be
arranged in various ways, including a multi-layered form. Id. at 2.
Claim 1 is representative of the '600 Application's claims and is
reproduced below from the Appeal Brief' s Claims Appendix.
1. A multi-layered smokeless tobacco product comprising
two or more formulations having different organoleptic
properties, wherein the formulations are selected from the
group consisting of:
i) a dissolvable formulation comprising a sugar substitute
in an amount of at least about 80% by weight and a sugar
alcohol syrup, wherein the dissolvable formulation comprises
an ultrafiltered tobacco extract characterized as translucent or
transparent;
ii) a meltable formulation comprising a lipid having a
melting point of about 36 °C to about 45 °C;
iii) a pastille formulation comprising a polysaccharide
filler;
iv) a pastille formulation comprising a sugar alcohol and
a natural gum binder component;
v) a chewable formulation comprising a binder, an
emulsifier, and a lipid having a melting point of about 36 °C to
about 45 °C; and
vi) a hard coating formulation comprising a binder, a
sugar substitute, and a sugar alcohol syrup;
wherein at least one formulation further comprises
tobacco, in the form of a particulate tobacco material or a
tobacco extract.
Appeal Br. 16 (Claims App.).
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Appeal2017-007133
Application 13/370,600
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1, 2, 4---6, 8, 9, 20, and 26 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination ofDupinay, 2 Andersen, 3 and
Clapp. 4 Final Act. 4---6; Answer 2--4.
DISCUSSION
Appellants present a unified argument in favor of the patentability of
the appealed claims as an undifferentiated group. Accordingly, we select
claim I-the sole independent claim before us-as representative of the
appealed claims. 37 C.F.R. § 4I.37(c)(l)(iv). The remaining claims on
appeal will stand or fall with claim 1. Id.
Appellants argue that the rejection of claim 1 should be reversed for
any of four reasons: (1) there is no suggestion or motivation to modify the
Dupinay reference and/or to combine Dupinay's teachings with those of
Andersen, (2) one of skill in the art would have had no reasonable
expectation of success in making the Examiner's proposed modifications to
the cited prior art, (3) there is no suggestion or motivation to modify the
Dupinay reference and/or to combine Dupinay's teachings with those of
Clapp, and (4) the Examiner's rejection is based on impermissible hindsight.
Appeal Br. 5-14.
2 US 8,545,870 B2, issued October 1, 2013.
3 US 2004/0146599 Al, published July 29, 2004.
4 W. Clapp, Ultrafiltration,
http://industrydocuments.library.ucsf.edu/tobacco/docs/ynwv0095 (R.J.
Reynolds September 26 1990).
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Appeal2017-007133
Application 13/370,600
We address these arguments seriatim.
First, Appellants argue that
the teachings of the Dupinay reference are limited in nature and
are focused on particular medicinal pastille formulations with
particular physical properties. One of skill in the art would
understand the Dupinay reference to be highly focused on such
formulations and would have no motivation to deviate
significantly from the formulations disclosed therein. The
disclosure of the Dupinay reference provides clear guidance as
to the desired physical properties of the medicinal pastilles
disclosed therein, which would discourage one of skill in the art
from significantly modifying the compositions thereof, e.g., by
turning to the teachings of the Andersen reference ( which is a
reference directed to fundamentally different compositions, i.e.,
coated gums).
Id. at 5---6.
Appellants' argument is based upon Dupinay' s statement "that 'the
pastille pharmaceutical form is quite specific."' Id. at 6 ( quoting and adding
emphasis to Dupinay col. 3, 11. 52-54). Appellants argue that this language
would discourage a person of ordinary skill in the art for modifying the
composition of Dupinay's products "as the form and composition of these
products are understood to be critical in providing a pharmaceutical product
exhibiting the desired effect." Id.
We are not persuaded by Appellants' argument. Appellants are
relying upon a single sentence in Dupinay. That sentence, however, appears
in a portion of Dupinay seeking to distinguish the pastille pharmaceutical
form from the tablet. See Dupinay col. 3, 1. 48---col. 4, 1. 14. When
considered in context, Dupinay's description of the pastille pharmaceutical
form as quite specific would not have discouraged a person of ordinary skill
in the art from modifying Dupinay' s pastilles in the manner proposed by the
Examiner in this rejection.
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Appeal2017-007133
Application 13/370,600
The Examiner, moreover, found that a person of ordinary skill in the
art at the time of the invention would have been motivated to combine
Dupinay's tobacco extract-containing pastille with Andersen's coating
because Anderson discloses that pharmaceutically active ingredients can be
added to the coating. Answer 3. The Examiner also found that a person of
ordinary skill in the art would consider coating Dupinay' s pastille to protect
the product before use or to enhance its flavor. Id. at 5---6. We do not
discern reversible error in these findings.
Appellants further argue that a person of ordinary skill in the art
"would not be led to specifically tum to the Andersen reference for guidance
in applying a hard coating." Appeal Br. 7.
We are not persuaded by this argument because, as the Examiner
found, Dupinay and Andersen each describes the use of an active ingredient-
containing matrix formed from vinyl acetate copolymers. Answer 5 ( citing
Dupinay col. 1, 1. 66-col. 2, 1. 15 and Andersen ,r 28). A person of ordinary
skill in the art, therefore, would have been led to Andersen because
Andersen describes coating compositions that may be used over a matrix
comprised of a vinyl acetate copolymer.
Second, Appellants argue that a person of ordinary skill in the art at
the time of the invention would not have had a reasonable expectation of
success in modifying the cited prior art in the manner proposed by the
Examiner. In particular, Appellants argue that a person of ordinary skill in
the art would not have had a reasonable expectation of success of adding
Andersen's coating to Dupinay's pastille because the combination "would
clearly modify the specific dissolution profile desired according to the
teachings of the Dupinay reference." Appeal Br. 9.
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Appeal2017-007133
Application 13/370,600
This argument is not persuasive because the "specific dissolution
profile" described in Dupinay merely requires that "[t]he time of dissolution
of the pastille in the vehicle cavity is at least 15 minutes, and typically from
25 to 35 minutes, preferably 30 minutes." Dupinay col. 1, 11. 63-65. A
person of ordinary skill in the art would recognize that adding Andersen's
dissolvable coating to Dupinay' s pastille would prolong the dissolution time
of the coated pastille. Furthermore, to the extent that Dupinay describes
constant release of the active ingredient during the pastille's dissolution is
important, Andersen describes the incorporation of the active ingredient into
the coating. See Answer 3.
Third, Appellants argue that Dupinay does not provide a suggestion or
motivation to combine Dupinay with Clapp. Appeal Br. 10-13. In
particular, Appellants argue that
[ o ]ne of skill in the art would not necessarily be led to employ a
tobacco extract in the purported product of the Dupinay and
Andersen references, and further, is provided with no
motivation to seek out specific methods for the treatment of a
tobacco extract where there is no teaching that a tobacco extract
is even used in the compositions of the Dupinay and/ or
Andersen references.
Id. at 11.
This argument is not persuasive. In rejecting claim 1, the Examiner
found that Dupinay describes nicotine and plant extracts as possible active
ingredient in its pastille. Answer 2. The Examiner also found that "it [was]
notoriously well known in the art at the time of the invention that tobacco
and its extracts contain nicotine." Id. Appellants do not challenge these
findings. The Examiner further found that Clapp describes the properties of
its ultrafiltered tobacco extract as having reduced carcinogenicity. Id. at 3
( citing Clapp 8 ( discussing Ames activity)).
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Appeal2017-007133
Application 13/370,600
Based upon these unchallenged findings of fact, we do not discern
reversible error in the Examiner's conclusion that a person of ordinary skill
in the art at the time of the invention would have had reason to use Clapp' s
ultrafiltered tobacco extract to provide nicotine as the active ingredient in a
pastille.
Fourth, Appellants argue that the Examiner impermissibly relied upon
hindsight in constructing the asserted rejection. Appeal Br. 13-14. We
disagree. As set forth in the Final Action and the Examiner's Answer, the
Examiner has provided logical reasons supported by the requisite factual
findings for a person of ordinary skill in the art to have combined Dupinay,
Andersen, and Clapp to arrive at a prima facie case of obviousness. Thus,
we determine that the Examiner's rejection is not tainted by impermissible
use of hindsight.
CONCLUSION
In view of the foregoing, we affirm the rejection of claims 1, 2, 4--6,
8, 9, 20, and 26 of the '600 Application.
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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