Ex Parte Lisan et al

Patent Trial and Appeal Board

Dec 28, 2018

14418501 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/418,501 01/30/2015
23474 7590 01/02/2019
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
FIRST NAMED INVENTOR
Ahmad Fashihul Lisan
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.
3700.P0538US 7430
EXAMINER
KRINKER, Y ANA B
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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):
DOCKET@FL YNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AHMAD F ASHIHUL LISAN,
ROY ALINGALAN, and PAKORN AEWSKULRAT
Appeal2018-002257
Application 14/418,501
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-18, 27, and 28 of Application
14/418,501 under 35 U.S.C. § 103(a) as obvious. Answer 3. Pursuant to
35 U.S.C. § 134(a), Appellants 1 seek reversal of these rejections. We have
jurisdiction. 35 U.S.C. § 6(b ).
For the reasons set forth below, we affirm. We, however, reject all of
the '501 Application's claims by relying upon findings of fact and
conclusions of law that differ from those that form the basis of the
1 Essentra Filter Products Development Co. Pte. Ltd. is identified as the
applicant and the real party in interest. Appeal Br. 1.
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Application 14/418,501
Examiner's rejections. Accordingly, we designate this opinion as containing
a new ground of rejection.
BACKGROUND
The '501 Application describes tobacco smoke filters and filter
elements for smoking articles, such as cigarettes. Spec 1: 1-2.
Claim 1 is representative of the '501 Application's claims and is
reproduced below from the Appendix of Claims to the Appeal Brief:
1. A tobacco smoke filter or filter element comprising a stiff
outer wrapper engaged around a downstream thermo/ armed
core of tobacco smoke filtering material and a further core
separate from the downstream thermoformed core and
longitudinally aligned therewith; the downstream thermoformed
core having a profiled outer surface which defines with the stiff
outer wrapper at least one longitudinally extending channel
which extends a length of the downstream thermoformed core,
wherein no further wrap is positioned between the profiled
outer surface of the downstream thermoformed core of tobacco
smoke filtering material and the stiff outer wrapper.
Claims App. 1 ( emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-8, 16, and 27 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Nyffeler2 and Clarke '988. 3 Answer 3.
2 GB 2 135 168 A, published Aug. 30, 1984.
3 WO 2008/043988 Al, published April 17, 2008.
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2. Claims 9, 10, 14, and 15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination ofNyffeler, Clarke '988, and Besso. 4
Answer 5.
3. Claims 11-13 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination ofNyffeler, Clarke '988, and Admitted
Prior Art (AP A). Answer 6.
4. Claims 17 and 18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination ofNyffeler, Clarke '988, and
Silberstein. 5 Answer 7.
5. Claim 28 is rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination ofNyffeler, Clarke '988, and Clarke '206. 6 Answer 7.
DISCUSSION
Appellants argue for the reversal of these rejections on the basis of
limitations present in independent claim 1. See Reply Br. 1-5. We,
therefore, limit our analysis to claim 1. Dependent claims 2-18, 2 7, and 2 8
will stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1. The Examiner rejected claim 1 as unpatentable over the
combination ofNyffeler and Clarke '988. Answer 3.
The patent examiner bears the initial burden of establishing a prima
facie case that an application's claims are obvious based upon what was
known in the prior art. See In re Dillon, 919 F.2d 688, 701 (Fed. Cir. 1990).
4 US 2011/0120481 Al, published May 26, 2011.
5 US 4,585,015, issued April 29, 1986.
6 US 2006/0011206 Al, published Jan. 19, 2006.
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Application 14/418,501
Here, the Examiner found that Nyffeler's cigarette filter teaches "a
downstream core of tobacco smoke filtering material (10) which is grooved
(14) and a further core (12, which is not grooved)." Answer 3 (citing
Nyffeler Abstract) (emphasis added). The Examiner further found that
Nyffeler teaches or suggests each element of the claimed tobacco smoke
filter, except that Nyffeler "does not explicitly teach that the downstream
core and the further core are separate." Answer 3.
The Examiner, however, relied upon Clarke '988's disclosure for
teaching the element missing from Nyffeler. Id. The Examiner found that
Clarke '988's tobacco smoke filter includes a mouth end portion and a
tobacco end portion and "that one portion includes activated carbon while
the other portion does not include activated carbon." Id. (citing Clarke '988
7:14--23; 9:6-12); see also Clarke '988 Fig. 1. Thus, the Examiner
determined that
it would have been obvious for one of ordinary skill in the art at
the time of the invention to have separated the downstream core
and the further core, as taught by [Clarke '988] ... , such that
the two portions can be comprised of different materials, such
as only one portion including activated carbon.
Answer 3.
Appellants argue that the rejection of claim 1 should be reversed for
two reasons: (1) Clarke '988 does not disclose the requisite two "separate"
cores because the disclosed "longitudinally extending core, which includes
more than one longitudinally adjacent portion" (Clarke 7:14--16), "only
discloses a single core: the single longitudinally extending core" (Reply Br.
2); and (2) even assuming that Clarke '988 discloses the requisite two
"separate" cores, the applied prior art does not disclose or suggest the
"longitudinally extending channel which extends a length of the downstream
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thermoformed core" as "the Examiner has not ... provided any reasoning
why any channels would extend a length of the downstream thermoformed
core."7 Id. at 3.
First, Appellants' argument ( 1) is not persuasive. Our review of
Clarke '988's disclosure as a whole leads us to conclude that the disclosed
core 2 cannot reasonably be characterized as a single inseparable core.
Clarke '988 's Figure 1, which illustrates a diagrammatic longitudinal
sectional view of a tobacco smoke filter, is reproduced below.
6
)
{
FIG. l
Figure 1 of Clarke '988 illustrates features of filter 1 including
longitudinally extending core 2 comprising buccal or mouth end portion 3
and upstream portion 4.
We note that Clarke '988 explicitly discloses that "[ f]ilter 1 includes a
longitudinally extending core 2 ... which includes a first, downstream, or
7 To the extent Appellants argue that the Examiner is required to make a
finding that the prior art discloses or suggests channels that extend the full
length of a downstream core, we are not persuaded. The plain language
meaning of the limitation "longitudinally extending channel which extends a
length of the downstream thermoformed core," as recited in claim 1, is that it
encompasses a channel, which extends any length of the downstream
thermoformed core, as long the extension is longitudinal.
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buccal, end portion 3 ... which does not include activated carbon." Clarke
'988 15:3-5 (emphasis added). Clarke '988 further discloses that "[t]he
longitudinally extending core 2 also includes a second, upstream portion 4,
which includes activated carbon, abutted to the upstream end of portion 3."
Id. at 15: 11-13 ( emphasis added).
We further note that Appellants do not define the claim term
"separate" in the Specification. However, the Specification describes that
"the downstream end of the further core 4 is abutted to the upstream end of
the downstream thermoformed core [3] of tobacco smoke filtering material."
Spec. 8:16-18 (emphasis added); see also id. at 5:11-12 ("[t]he further
core ... may include additive, e.g.[,] particulate additive, e.g.[,] activated
carbon"); compare id. at Fig. 1 with Clarke '988 Fig. 1 ). Thus, the
Specification's support for the limitation "a further core separate from the
downstream thermoformed core," as recited in claim 1, only requires that
one core is abutted to the other. We, therefore, agree with the Examiner that
Clarke '988's abutted portions would have reasonably suggested the
requisite separation between the disclosed buccal end portion 3 and
upstream portion 4 within longitudinally extending core 2.
Second, Appellants' argument (2) is persuasive.
The Examiner determined that it would have been obvious for the
ordinary skilled artisan to have separated Nyffeler' s grooved downstream
core 14 of tobacco smoke filtering material 10 and the non-grooved further
core 12 because Clarke '988 teaches that one portion can be comprised of
activated carbon, whereas the other portion is not. Answer 3. Thus, the
Examiner's determination implies that the point of separation is defined by
the location ofNyffeler's groove 14.
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The Examiner's reasoning, however, does not adequately explain why
a person of ordinary skill in the art would have chosen the location where
the grooved and non-grooved cores 14, 12, respectively, intersect to
delineate where activated carbon may or not subsist. See, e.g., KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("[I]t can be important to identify
a reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.");
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.").
For these reasons, we cannot sustain the Examiner's rejections of
claims 1-18, 27, and 28.
NEW GROUND OF REJECTION
As discussed above, we cannot sustain the rejections of claims 1-18,
27, and 28 of the '501 application as obvious over the combination of
Nyffeler and Clarke '988, either with or without Besso, AP A, Silberstein, or
Clarke '206, as set forth by the Examiner. For the reasons set forth below,
however, we reassert the rejections of claims 1-18, 27, and 28 as obvious
over the combination ofNyffeler and Clarke '988, either with or without
Besso, AP A, Silberstein, and Clarke '206.
Claim 1. We conclude that, at the time of the invention, the subject
matter of claim 1 as a whole would have been obvious to a person of
ordinary skill in the art in view of the combination ofNyffeler and Clarke
'988. We, therefore, reject claim 1 pursuant to 35 U.S.C. § 103(a).
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With respect to claim 1, we adopt the Examiner's findings of fact
regarding the teachings ofNyffeler and Clarke '988, with the exception of
the Examiner's reasoning for providing the requisite separation ofNyffeler's
disclosed cores at the point where grooved downstream core 14 is abutted to
non-grooved further core 12. See Answer 3.
We find that Clarke '988 describes that "portion 4 is a cylindrical
cellulose acetate plug." Clarke '988 15:13 (emphasis added). We further
find that Clarke '988 describes that
[t]he particles of activated carbon on or in the cellulose acetate
plug [in portion 4] may lead to an unfavourable end appearance
(due to the granules of carbon). Thus, it is preferred that if the
longitudinally extending core [2] includes this material, the core
includes two ( or more) longitudinally adjacent portions.
Id. at 9: 17-21.
In view of Clarke '988's description, a person of ordinary skill in the
art would have been motivated to include particles of activated carbon apart
from the mouth end ofNyffeler's filtering material 10 to avoid an
unfavorable end appearance.
We find that Nyffeler teaches that grooves 14 "provide channels
through which ventilating air can reach the mouth of the . . . smoker" and
that such "grooves are open at the mouth end of the filter but can extend
along the length of the filter for any desired distance. Preferably, however[,]
they are closed from the tobacco rod 3, for example by terminating at an
intermediate point along the filter." Nyffeler 1: 66-73 ( emphasis added); see
also id. at Abstract; Fig. 1.
In view ofNyffeler's description, the ordinary skilled artisan would
have been motivated to include particles of activated carbon in Nyffeler's
filtering material 10 from the intermediate point at which grooves 14
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terminate (apart from the mouth end) to the point at which non-grooved
further core 12 is abutted to tobacco rod 3 because doing so would allow
ventilating air to reach the mouth of the smoker. As disclosed by Clarke
'988, "ventilation upstream of and/or in register with the longitudinally
extending core ( or portion of the core) which includes activated carbon is
frequently preferred." Clarke '988 14: 10-11.
Thus, modifying Nyffeler's tobacco smoke filtering material 10 to
incorporate Clarke '988's activated carbon in a further portion thereof would
have provided the requisite further core separate from the downstream
thermoformed core and the downstream thermoformed core having a
profiled outer surface, which defines with the stiff outer wrapper at least one
longitudinally extending channel, which extends a length of the downstream
thermoformed core. Therefore, selecting the location where activated
carbon may or may not subsist at the point in which the grooved and non-
grooved cores 14, 12, respectively, intersect would have been well within
the ordinary level of skill in the design of tobacco smoke filters.
In sum, we conclude that the differences between the claimed
invention and the descriptions and suggestions provided by the combination
ofNyffeler and Clarke '988 would have been obvious to a person of
ordinary skill in the art at the time of the invention. We, therefore, reject
claim 1 under§ 103(a).
With respect to dependent claims 2-18, 27, and 28, we adopt the
Examiner's findings of fact regarding the additional limitations added in
each of these dependent claims. See Answer 5-8. Appellants have not
challenged these findings in this appeal.
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CONCLUSION
As explained above, although we cannot sustain the rejections of
claims 1-18, 27, and 28 as asserted by the Examiner, we reject claims 1-18,
27, and 28 as obvious over the combination ofNyffeler and Clarke '988,
either with or without Besso, AP A, Silberstein, and Clarke '206. To protect
Appellants' procedural rights, we designate our opinion as setting forth a
new ground of rejection pursuant to 37 C.F.R. § 4I.50(b).
This decision contains a new ground of rejection pursuant to 3 7
C.F.R. § 4I.50(b ), which provides that "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, [ A Jppellant may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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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; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 4I.50(b)
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