Ex Parte GARTHAFFNER et al

Patent Trial and Appeal Board

Sep 21, 2017

12979426 (P.T.A.B. Sep. 21, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/979,426 12/28/2010 MARTIN T. GARTHAFFNER 400087-20008 2982
25570 7590 09/25/2017
Roberts Mlotkowski Safran Cole & Calderon, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
JALLOW, EYAMINDAE CHOSSAN
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
lgallaugher@rmsc2.com
docketing@rmsc2.com
dbeltran @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN T. GARTHAFFNER and BARRY S. SMITH
Appeal 2016-005785
Application 12/979,426
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin T. Garthaffiier and Barry S. Smith (“Appellants”)1 appeal
under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—9.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Philip Morris USA
Inc. Appeal Br. 2.
Appeal 2016-005785
Application 12/979,426
THE CLAIMED SUBJECT MATTER
Claims 1, 5, 7, and 8 are independent. Claim 1 is reproduced below
and is illustrative of the subject matter on appeal.
1. A method of producing a pouch sized for placement in a
mouth and having a predetermined amount of particulate
material within the pouch, the method comprising the steps of:
(a) portioning a predetermined amount of particulate
material sized for placement in a mouth from a bulk supply of
such material;
(b) compacting the predetermined amount of particulate
material into a single discrete caplet with a caplet-forming, roll
compactor;
(c) gravity depositing the single discrete caplet into an
open hollow pouch closed at one end thereof;
(d) closing the pouch at the open end thereof with the
caplet between the closed ends of the pouch; and
(e) compressing the single discrete caplet in the pouch to
return the caplet to a predetermined amount of particulate
material.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Winterson
Wygal
Treckmann2
Boldrini
US 2007/0261707 A1
US 2008/0202532 A1
DE 2109834
WO 2008/114122 A2
Nov. 15,2007
Aug. 28, 2008
Sept. 14, 1972
Sept. 25, 2008
2 References to the text of Treckmann are to the machine translation entered
into the record as an attachment to the Non-Final Rejection dated September
17,2014.
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Application 12/979,426
REJECTIONS
I. Claims 1 and 3—9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Boldrini, Wygal, and Treckmann. Final Act. 2—8.
II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Boldrini, Wygal, Treckmann, and Winterson. Id. at 8—9.
OPINION
Rejection I
Claims 1, 3—6, 8, and 9
Independent claims 1 and 8 recite a method of producing a pouch
having a predetermined amount of particulate matter including, in relevant
part, a step of “compacting the predetermined amount of particulate material
into a single discrete caplet with a caplet-forming, roll compactor.'1'’ Appeal
Br. 37, 39 (Claims App.) (emphasis added). Independent claim 5 similarly
recites an apparatus including, in relevant part, “<2 caplet-forming, roll
compactor for forming the predetermined amount of particulate material into
a single discrete caplet.” Id. at 37 (emphasis added).
The Examiner finds that Boldrini teaches “compacting (13) the
predetermined amount of particulate material with a roll compactor (5a; in
the instant case, compacting is defined as: to press together[)].” Final Act. 2.
According to the Examiner, “[pjressing requires a force and . . . Boldrini
applies a negligible amount (via 13) to skim excess.” Id. at 2—3. The
Examiner acknowledges that “Boldrini. . . fails to teach forming a caplet
with the received tobacco,” but finds that “Wygal teaches compressing
processed tobacco into a disc (140; para. [0020]) for the purpose of
packaging smokeless tobacco into a container (120).” Id. at 3. The
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Application 12/979,426
Examiner determines that it would have been obvious “to modify the
invention of Boldrini with the caplet former of Wygal in order to feed a
compressed disc with a precise portion of tobacco into the pouch processor
(para. [0033]).” Id.
Appellants argue that “one of ordinary skill in the art would not
consider the skimming means 13 of Boldrini to be a ‘roll compactor’, as the
skimming means 13 of Boldrini does not perform the function of
compacting.” Appeal Br. 6. In particular, Appellants assert that “[o]ne of
ordinary skill in the art would not consider a ‘negligible amount’ of force
from a skimmer to transform skimming means 13 into a ‘roll compactor.’”
Id. We agree that a sustainable case of obviousness has not been
established.
The Examiner takes the position that “the skimmer (13) applies a
force on the tobacco, and the skimmed tobacco is denser than the pre­
skimmed tobacco.” Ans. 11. However, this speculative position is not
supported by the disclosure of Boldrini, which does not disclose that
skimming means 13 applies any force that would compress the tobacco
within cavity 7. To the extent that Boldrini describes the function of
skimming means 13, Boldrini only discloses that “[e]ach cavity 7 . . . passes
under the skimming means 13, which will remove any excess tobacco
released from the hopper.” Boldrini 5,11. 29—30. In this regard, although
skimming means 13 may apply some horizontal force to remove excess
tobacco extending out of cavity 7 above the surface of disc 5a, we fail to see
any disclosure in Boldrini that skimming means 13 applies any downward
force to compress or compact tobacco in cavity 7. In other words, we agree
with Appellants that “the Examiner has failed to explain how skimming
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Application 12/979,426
means 13 could function to compress particulate material.” Appeal Br. 7
(emphasis added). As such, the Examiner has not established by a
preponderance of the evidence that Boldrini, as relied upon in the rejection,
teaches compacting particulate matter with a roll compactor.
Moreover, the Examiner does not adequately explain how Wygal
would remedy the aforementioned deficiency of Boldrini. Although we
appreciate the Examiner’s observation that “Wygal teaches the compacting
of tobacco to form said tobacco into a puck (140) for the purpose of
eliminating air voids and creating relatively precise weight control (para.
[0021])” (Ans. 11), the Examiner has not pointed out how Wygal teaches a
compressing with a “roll compactor,” as called for in the claims. Instead,
Wygal only teaches “a first or upper plunger 20 or other tamping device
i ntroduced to the column of product to provide compression” and
“additional compression . . . performed after receipt of the processed tobacco
pucks 140 in a container 120 by a tamper 100.” Wygal %2\ (emphasis
added).
Furthermore, the Examiner does not adequately explain how the
teachings of Wygal could be applied to Boldrini to render obvious
compacting particulate material into a caplet with a roll compactor. In
particular, wo agree with Appellants that the Examiner “fails to articulate
how skimming means 13 of Boldrini is being modified by Wygal to [form a
caplet].” Appeal Br. 6; see also id. at 7 (“[l]f plunger mechanism 20 of
Wygal is somehow incorporated into Boldrini, it would not modify the
skimming means 13 of Boldrini in a manner that would result in a skimming
means 13 that functions to compact ‘the predetermined amount of particular
material into a single discrete caplet.’”).
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For the foregoing reasons, we are persuaded that the Examiner erred
in concluding that the combination of Boldrini, Wygal, and Treckmann
renders obvious the subject matter of independent claims 1,5, and 8.
Accordingly, we do not sustain the rejection of claims 1,5, and 8, and their
dependent claims 3, 4, 6, and 9, under 35 U.S.C. § 103(a) as unpatentable
over Boldrini, Wygal, and Treckmann.
Claim 7
Rather than requiring a step of compacting particulate material into a
caplet with a roll compactor, independent claim 7 recites only “establishing
a source of discrete tobacco caplets, each tobacco caplet comprising a
predetermined amount of tobacco sized for placement in a mouth in a
compacted form.” Appeal Br. 38 (Claims App.). The Examiner finds that
“Boldrini discloses the invention substantially as claimed, but fail[s] to teach
establishing a source of discrete tobacco caplets.” Final Act. 6. However,
the Examiner finds that “Wygal teaches compressing processed tobacco into
a disc (140; para. [0020]) for the purpose of packaging smokeless tobacco
into a container (120).” Id. The Examiner determines that it would have
been obvious “to modify the invention of Boldrini with the caplet former of
Wygal in order to feed a compressed disc with a precise portion of tobacco
into the pouch processor (para. [0033]).” Id. The Examiner acknowledges
that the combination of Boldrini and Wygal “fails to teach compressing the
caplet to return the material back into a particulate material,” but finds that
Treckmann teaches “subsequent loosening ... of [material] contained in . . .
bags ... by means of a pressure exerted on them.” Id. The Examiner
concludes that it would have been obvious to further modify the method of
Boldrini/Wygal “in order to produce a finished product pouch containing
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particulate material instead of a pellet of material compressed together so
that a finished product can be ready for use by a customer.” Id.
Appellants argue that “[o]ne of ordinary skill in the art would not find
it apparent to modify Boldrini as suggested by the Examiner because doing
so would destroy the intended function of Boldrini.” Appeal Br. 21
(boldface omitted). In particular, Appellants assert that “Boldrini teaches
using multiple air jets directed at different areas of a tobacco-filled cavity 7
to remove tobacco by degrees from the cavity 7, and gradually direct the
tobacco into a duct 12.” Id. at 22 (citing Boldrini 6,11. 3—9, Fig. 1).
According to Appellants, “Boldrini would not be able to gradually fill duct
12 with loose tobacco using air jets directed at different areas of cavity 7 if
cavity 7 is filled with a compact caplet,” and, thus, the “proposed
modification would render Boldrini. . . unsatisfactory for its intended
purpose.” Id. This argument is not persuasive as it too narrowly defines the
intended purpose of Boldrini. Boldrini discloses that, “[f jorced downward
by the air jets, the portion 100 of tobacco passes along the rectilinear
connecting duct 12 and into the tubular mandrel 16, which is ensheathed by
the web 17 of wrapping material.” Boldrini 6,11. 8—9. The Examiner’s
modification would result in air jets directed at a tobacco caplet in cavity 7
to help direct the tobacco caplets into duct 12 for depositing into pouches,
and we agree with the Examiner that Boldrini’s air jets would be “capable of
dislodging a caplet from a processing tube.” Ans. 12. Appellants fail to
persuade us that the proposed modification of Boldrini’s device to use
tobacco caplets, as taught by Wygal, would destroy the intended function or
operation of Boldri ni as a tobacco packaging device, or render it unsuitable
for its intended purpose of packagi ng tobacco in pouches.
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Appellants argue that “[n]one of the applied prior art, either alone or
in combination, teaches ‘gravity feeding a single discrete tobacco caplet into
the open pouch structure’, as claimed.” Appeal Br. 22 (emphasis omitted).
In particular, Appellants assert that “Boldrini and Wygal utilize force to
move particulate into a pouch or container, not gravity.” Id. at 23. Namely,
“Boldrini utilizes a pneumatic forcing means 14 or pneumatic nozzle 25, and
Wygal teaches the use of a tamper 100.” Id. (citing Boldrini col. 6,11. 3—7;
col. 7,11. 5—7; Wygal 132). According to Appellants, “one of ordinary skill
in the art would consider the term ‘gravity feeding’ to require feeding by
gravity, and not feeding by a force other than gravity, such as pneumatic
means 14 of Boldrini.” Id. at 24. This argument is not persuasive. We
agree with the Examiner that the claim does not preclude forces, in addition
to gravity, helping to deposit the caplet into the pouch and that Boldrini’s
vertical feeding of tobacco from cavity 7 of disc 5 a down through duct 12
and tubular mandrel 16 into the open pouches involves gravity feeding. See
Ans. 12—13. Although Boldrini discloses that air jets apply downward force
on the tobacco in cavity 7, this downward force simply helps remove the
tobacco from cavity 7 and direct it into duct 12 beneath. Boldrini 6,11. 5—12.
As the tobacco passes downward through duct 12 and tubular mandrel 16,
gravitational force assists the tobacco in falling down into the open pouches.
We have also considered Appellants’ argument that “the claimed
phrase ‘gravity feeding’ would be effectively rendered meaningless because
any depositing means with a vertical component would necessarily be
affected by gravitational force,” but do not find it persuasive. Appeal Br. 24.
Although our reviewing court disfavors any claim interpretation which
renders a claim term superfluous (Stumbo v. Eastman Outdoors, Inc., 508
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Application 12/979,426
F.3d 1358, 1362 (Fed. Cir. 2007)), we do not view the Examiner’s
interpretation as causing the claim term “gravity feeding a single discrete
tobacco caplet into the open pouch” to cease to limit the claimed method.
As recognized by Appellants, the Examiner’s interpretation of this claim
term encompasses only depositing means having a vertical component, not
any and all depositing means. Accordingly, the claim term limits claim 7 in
a practical sense and is not superfluous.
Appellants argue that Treckmann is non-analogous art because
“Treckmann is not within the same field of endeavor as Boldrini or Wygal
(i.e. tobacco packaging),” and “Treckmann is not reasonably pertinent to the
particular problem with which the inventor is involved (i.e. scattering of
tobacco particles during packaging).” Appeal Br. 25. Appellants assert that
“Treckmann is concerned with bagging soil,” and “one of ordinary skill in
the art of packaging individual bags or sachets of nasal snuff or moist snuff
(i.e. those using the method of Boldrini) would not turn to the large soil
packaging method of Treckmann when determining how best to present a
finished product to a customer.” Id. at 25—26. We are not persuaded by this
argument.
The established precedent of our reviewing court sets up a two-fold
test for determining whether art is analogous: “[‘](1) whether the art is from
the same field of endeavor, regardless of the problem addressed and, (2) if
the reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.’” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
(quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
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Treckmann is analogous art at least because the reference is concerned
with the same general problem facing Appellants. Treckmann relates to a
machine for packaging loose material, such as soil and agricultural products,
in bags that are loaded from the top and sealed to form a pouch. Treckmann
1. Treckmann discloses a known problem with such packaging in that loose
material particles can interfere with sealing the bag and cause leaks. Id. To
address this issue, Treckmann discloses compacting the loose material into
pellets before loading and sealing the bags. Id. Treckmann also recognizes
that compacted material is undesirable to consumers since they must break
up the material in order to use it. Id. at 2. As such, Treckmann discloses
compressing the sealed bags with rollers in order to break up the compacted
material for the consumer’s convenience. Id. Similarly, Appellants’
Specification describes that one problem facing Appellants was the
“undesirable scattering of the particulate during handling and deposit into
the pouch.” Spec. 13. Appellants addressed this problem by compacting
the particulate material into caplets, depositing and sealing the caplets in a
pouch, and compressing the pouch to break up the caplets of compacted
material back into particulate form (i.e., for the consumer’s convenience).
Id. 17. In other words, Treckmann and Appellants were both concerned
with improving packing efficiency of particulate material into bags, and
address that problem in the same way (i.e., by compacting the loose material
into solid forms for loading into bags, and compressing the closed bags to
break up the compacted material for the end user).
As to Appellants’ argument that, “absent hindsight knowledge of the
present invention, . . . one of ordinary skill in the art would not have been
motivated to alter the compact tobacco puck taught by Boldrini/Wygal in
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view of the non-analogous soil packaging method of Treckmann ” (Appeal
Br. 26), Appellants do not identify any knowledge relied upon by the
Examiner that was gleaned only from Appellants’ disclosure and that was
not otherwise within the level of ordinary skill at the time of the
invention. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). As such,
we disagree with Appellants’ assertion that the Examiner relied on
impermissible hindsight (Appeal Br. 26; Reply Br. 2) in reaching the
determination of obviousness of the claimed subject matter.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that Boldrini, Wygal, and Treckmann renders obvious the subject
matter of independent claim 7. Accordingly, we sustain the rejection of
claim 7 under 35 U.S.C. § 103(a) as unpatentable over Boldrini, Wygal, and
Treckmann.
Rejection II
The Examiner’s rejection of claim 2 relies on the erroneous
conclusion that Boldrini, Wygal, and Treckmann renders obvious the subject
matter of independent claim 1, from which this claim depends. Final Act. 8—
9. The Examiner does not explain how Winterson might cure this
underlying deficiency. Accordingly, we do not sustain the rejection of claim
2 under 35 U.S.C. § 103(a) as unpatentable over Boldrini, Wygal,
Treckmann, and Winterson.
DECISION
The Examiner’s decision to reject claims 1—6, 8, and 9 under
35 U.S.C. § 103(a) is reversed.
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The Examiner’s decision to reject claim 7 under 35 U.S.C. § 103(a) 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-IN-PART
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