Ex Parte Karles et al

Patent Trial and Appeal Board

Mar 22, 2016

12748259 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121748,259 03/26/2010
21839 7590 03/24/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Georgios D. Kartes
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.
1021238-000848 4804
EXAMINER
NGUYEN, PHU HOANG
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/24/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGIOS D. KARLES,
SHUZHONG ZHUANG and YI ZENG
Appeal 12/748,259
Application 2014-005484
Technology Center 1700
Before TERRY J. OWENS, CATHERINE Q. TIMM
and AVEL YN M. ROSS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejectionofclaims 1-11. Wehavejurisdictionunder35U.S.C. § 6(b).
The Invention
The Appellants claim a process for making encapsulated tobacco
beads. Claim 1 is illustrative:
1. A process of making encapsulated tobacco beads comprising:
mixing tobacco particles and menthol in an aqueous solution to form a
wet mass;
extruding the wet mass to form extrudates;
spheronizing the extrudates to form tobacco beads;
drying the tobacco beads;
contacting the beads with a solution comprising a cation to form
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Application 12/748,259
contacted tobacco beads, the cation selected from the group consisting of
sodium, potassium, calcium, aluminum, lanthanum, magnesium, and barium;
and
introducing the contacted tobacco beads into a solution of coating
material in a concentration effective to induce ionic gelation of the coating
material around the beads, to form encapsulated tobacco beads having gel
coatings,
wherein the coatings have a thickness of about 2 µm to about 40 µm.
Boghani
Zhuang
Sengupta
The References
US2006/02634 78 A 1
US 2007 /0000505 Al
US 2009/0014018 Al
The Rejection
Nov. 23, 2006
Jan. 4, 2007
Jan. 15,2009
Claims 1-11 stand rejected under 35 U.S.C. § 103 over Zhuang in
view of Sengupta and Boghani.
OPINION
We affirm the rejection.
The Appellants argue the claims in two groups: 1) claims 1 and 3-11,
and 2) claim 2 (App. Br. 4-10). We therefore limit our discussion to claim 2
and one claim in the other group, i.e., claim 1, which is the sole independent
claim. Claims 3-11 stand or fall with claim 1. See 3 7 C.F .R.
§ 41.37(c)(l)(iv) (2012).
Claim 1
Zhuang discloses a smoking article filter (e.g., a cigarette filter)
comprising tobacco beads which are about 0.1 to about 2.5 mm in diameter,
can contain binders and flavorants (which can be menthol), and are coated to
reduce migration potential of volatile liquid flavorants trapped inside the
tobacco beads' matrix and/or provide controlled release of the flavorants
(,-i,-i 2, 51-53, 67, 74, 78). "During a smoking, the volatile compounds are
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Application 12/748,259
released by heat, enhancing the taste of the smoke and the composition of
the tar in the smoke" (iJ 51 ). Tobacco beads containing no binder can be
made by mixing tobacco particles (formed from tobacco plant parts which
have been ground into a fine powder or dust) with water and optional
flavorants to produce a uniform wet mass, forcing the wet mass through a
restricted area via extrusion to form extrudate strands, breaking the strands
into short lengths, rounding the extrudate pieces on a rotating plate within a
cylinder, drying the resulting wet spheres, and applying to the dried spheres
single or multiple overcoats of polymeric materials having different
functionalities or compositions (iJiJ 56, 60; 70). The only disclosed coating
materials are natural polysaccharides or derivatives thereof (iJ 78).
Sengupta encapsulates finely ground plant material particles (cross
section preferably less than about 1000 microns) such as smokeless tobaccos
(e.g., chewing tobacco and snuff) with first and second polysaccharide
cation-induced gel coatings which improve the particles' mouthfeel and
provide controlled release of selected compounds from the particles by
simple diffusion into saliva or upon application of pressure by the tongue
and teeth (iJiJ 3, 35, 45, 50, 57, 62, 72). The disclosed cations include
potassium, calcium and magnesium (iJ 45).
The Appellants argue that Zhuang and Sengupta are nonanalogous art
because Sengupta' s coated plant particles for use in an edible product (iJ 70)
have nothing to do with Zhuang' s coated tobacco beads for use in smokeable
tobacco products (iJ 2) (App. Br. 7-8).
The test of whether a reference is from an analogous art is first,
whether it is within the field of the inventor's endeavor, and second, if it is
not, whether it is reasonably pertinent to the particular problem with which
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Application 12/748,259
the inventor was involved. Seeln re Wood, 599 F.2d 1032, 1036 (CCPA
1979). A reference is reasonably pertinent if, even though it may be in a
different field of endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering the inventor's problem. See In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992).
Both Zhuang and Sengupta are in the Appellants' field of endeavor of
smokeless or smokeable tobacco products (Spec. iii! 15, 66) and are
reasonably pertinent to the controlled flavor release problem with which the
Appellants were involved (Spec. iJ 66). Hence, Zhuang and Sengupta are
analogous art.
The Appellants assert that the Examiner "has failed to provide
sufficient articulated reasoning why a person of ordinary skill would look to
the method of Sengupta, which is directed to coating micronized plant
particles, when forming a coating on the tobacco beads for the smoking
article of Zhuang" (Reply Br. 4).
Zhuang's tobacco bead diameter range of about 0.1 to about 2.5 mm
(iJ 67) overlaps Sengupta's preferred particle diameter of less than 1000
microns (i.e., less than 1 mm) (iJ 22). Hence, one of ordinary skill in the art
would have had a reasonable expectation of success, within the overlapping
range, in applying Sengupta' s gel coating to Zhuang' s uncoated tobacco
beads or using Zhuang's uncoated tobacco beads as Sengupta's tobacco
particles. See In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)
("Obviousness does not require absolute predictability of success .... For
obviousness under§ 103, all that is required is a reasonable expectation of
success."). See also In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997);
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Application 12/748,259
Jn re Boesch, 617 F.2d 272, 276 (CCPA 1980); Jn re Malagari, 499 F.2d
1297, 1303 (CCPA 1974).
The Appellants assert that the Examiner "has failed to establish that a
person of ordinary skill would look to the method of Sengupta when forming
a coating on the tobacco beads for the smoking article of Zhuang"
(App. Br. 7).
In making an obviousness determination one "can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Zhuang' s only disclosed tobacco bead coating materials are natural
polysaccharides and derivatives thereof (iJ 78), and Zhuang does not limit
the method for applying the single or multiple controlled release coatings to
the tobacco beads or limit the form of those coatings (iJ 53). Hence, one of
ordinary skill in the art, through no more than ordinary creativity, would
have used a known method for applying controlled release polysaccharide
coatings to tobacco particles which can have the same size as Zhuang' s
tobacco beads, such as Sengupta's cation-induced gel coating method (iJiJ 35,
45). Also, because Zhuang's tobacco beads can have a size within
Sengupta's tobacco preferred range (Zhuang iJ 67; Sengupta iJ 22), one of
ordinary skill in the art, through no more than ordinary creativity, would
have used Zhuang' s method to produce Sengupta' s uncoated tobacco
particles.
Claim 2
Claim 2, which depends from claim 1, requires that "the contacting
with the solution comprising the cation occurs in a fluidized bed,
simultaneously with the drying the tobacco beads."
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Zhuang discloses that the tobacco beads can be dried in a fluidized
bed dryer and coated by fluidized bed spraying (iJiJ 52, 70).
The Appellants assert that one of ordinary skill in the art would not
have had an apparent reason to coat Zhang's tobacco beads in a fluidized
bed simultaneously with drying them (App. Br. 9-10).
"A person of ordinary skill is also a person of ordinary creativity, not
an automaton." KSR, 550 U.S. at 421. A reason which would have been
apparent to one of ordinary skill in the art for drying and coating Zhang's
tobacco beads simultaneously in a fluidized bed is to reduce the processing
time and avoid the cost of separate drying and coating fluidized beds.
Accordingly, we are not persuaded of reversible error in the rejection.
DECISION/ORDER
The rejection of claims 1-11under35 U.S.C. § 103 over Zhuang in
view of Sengupta and Boghani is affirmed.
It is ordered that 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. § l.136(a).
AFFIRMED
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