12576996 (P.T.A.B. Mar. 21, 2017)

Ex Parte Luan et al

Patent Trial and Appeal BoardMar 21, 2017

12576996 (P.T.A.B. Mar. 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. 12/576,996 10/09/2009 Zhaohua Luan 1021238-000986 3281 145992 7590 03/23/2017 ALCS Law Dept. - Product and IP c/o BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER MAYES, DIONNE WALLS ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 03/23/2017 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): ADIPDOCl@BIPC.com kenneth.lilly @ altria.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ZHAOHUA LUAN, DONALD MISER, DARIN COLASSACO, W. GEOFFREY CHAN, PADMANABHA REDDY ETTIREDDY, SAROJINI DEEVI, and MARC KRAUS S Appeal 2016-002613 Application 12/576,9961 Technology Center 1700 Before TERRY J. OWENS, JEFFREY T. SMITH, and JAMES C. HOUSEL, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the December 26, 2014 Final rejection of claims 1 and 19-30.2 We have jurisdiction under 35 U.S.C. §6. 1 The real party in interest is Philip Morris USA Inc. App. Br. 2. 2 Claims 3—18 have been withdrawn from consideration. App. Br. 2. Appeal 2015-002613 Application 12/576,996 Appellants’ invention generally relates to a method for removing one or more heavy metals from an aqueous plant extract, comprising contacting the aqueous plant extract with a sorbent. Independent claim 1 is representative of the scope of the subject matter presented on appeal. Claim 1 is reproduced from the Brief below: 1. A method for removing one or more heavy metals from an aqueous plant extract, comprising: contacting the aqueous plant extract with, and sorbing at least a portion of the one or more heavy metals on, a sorbent comprising one or more surface activated titanium oxide particles, to form a mixture of sorbent and heavy metal-depleted aqueous plant extract; and separating the sorbent from the mixture to provide a heavy metal-depleted aqueous plant extract, wherein the sorbent comprising one or more surface activated titanium oxide particles is selective toward the targeted one or more heavy metals such that sorbent sites are not taken up by non-targeted constituents of the aqueous plant extract that decrease the loading of the sorbent for the targeted one or more heavy metals. Appellants, Appeal Brief 3, requests review of the rejection of claims 1 and 19-30 under 35 U.S.C. §103(a) as unpatentable over Zimmerman (WO 2008/090477 A2 published July 31, 2008) in view of Dadachov (US 2006/0144793 A1 published July 6, 2006). 2 Appeal 2015-002613 Application 12/576,996 OPINION3 We have reviewed each of Appellants’ arguments for patentability. We sustain the Examiner’s rejection for essentially those reasons expressed in the Final Action and Answer, including the Response to Argument section. We add the following: We refer to the Examiner’s Final Action for a complete statement of the rejection. Final Act. 4—14. The Examiner found Zimmerman describes a method of preparing smoking materials from plants such as tobacco wherein reconstituted materials can be made by separating a soluble extract from the insoluble portion of the plant. Final Act. 3. Zimmerman’s method comprises the selective removal of a plurality of constituents including the removal of specific metal ions (e.g., cadmium, lead and mercury). Zimmerman pp. 1—2 and 8. Zimmerman discloses suitable metal selective adsorption agents are those that are effective at selectively removing soluble metal ions from aqueous tobacco extracts. Zimmerman p. 8. The Examiner found Zimmerman discloses the metal selective adsorption agent can be any agent that effectively removes soluble metals from the aqueous extract to a greater extent than it adsorbs other constituents. Final Act. 4—5, Zimmerman pp. 8— 9. The Examiner recognized that Zimmerman failed to disclose the metal selective adsorption agent includes surface activated titanium oxide. Final Act. 4. The Examiner found Dadachov describes surface-activated titanium dioxide as an adsorption agent to remove heavy metals (i.e., cadmium, lead, 3 Appellants present their substantive arguments addressing independent claim 1. We limit our discussion to independent claim 1 as representative of the subject matter on appeal. 3 Appeal 2015-002613 Application 12/576,996 nickel) from aqueous streams like natural water, ground water and/or surface water. Final Act. 3, Dadachov^Hf 32, 51. The Examiner concluded that it would have been obvious to a person of ordinary skill in the art to use a surface-activated titanium dioxide as an adsorption agent to remove heavy metals from aqueous tobacco extracts. Final Act. 4. Appellants argue the Examiner has not provided a reason to modify Zimmerman to include a titanium oxide as the metal selective absorption agent because Zimmerman fails to describe ineffectiveness of the absorption agents described in the reference. App. Br. 5. Appellants argue Dadachov does not teach or suggest the suitability of utilizing titanium oxide with a plant extract and the Examiner is speculating that surface activated titanium oxide would have been effective in removing heavy metals from an aqueous tobacco extract. App. Br. 8—9. Appellants’ arguments are not persuasive of reversible error for the reasons provided by the Examiner. Appellants have not disputed that activated titanium oxide was an absorption agent suitable for removal of heavy metals, such as cadmium, lead, nickel, from aqueous systems. Zimmerman is concerned with the use of absorption agents for the removal of the same heavy metals from aqueous plant extracts. A person of ordinary skill in the art would have reasonably expected that activated titanium oxide would have been suitable for removal of heavy metals from aqueous plant extracts. “Obviousness does not require absolute predictability of success ... all that is required is a reasonable expectation of success.” In re Kubin, 561 F.3d 1351, 1359-60 (Fed. Cir. 2009) (citingIn re O’Farrell, 853 F.2d 894, 903—04 (Fed. Cir. 1988)). In the present case, a person of ordinary skill in the art would have recognized activated titanium oxide was selective to 4 Appeal 2015-002613 Application 12/576,996 heavy metal compounds in aqueous systems. We have not been directed to evidence that establishes that aqueous plant extracts contain ingredients that would have been expected to interfere with the expected selectivity property of activated titanium oxide. Accordingly, we sustain the Examiner’s decision to reject claims 1 and 19-30 for the reasons presented by the Examiner and given above. ORDER The Examiner’s obviousness rejection of claims 1 and 19—30 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)(1). AFFIRMED 5