11107772 (B.P.A.I. Nov. 17, 2010)

Ex Parte Markel

Board of Patent Appeals and InterferencesNov 17, 2010

11107772 (B.P.A.I. Nov. 17, 2010)

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. 11/107,772 04/08/2005 Gal Markel 16475US01 3358 23446 7590 11/18/2010 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 EXAMINER FELTON, MICHAEL J ART UNIT PAPER NUMBER 1747 MAIL DATE DELIVERY MODE 11/18/2010 PAPER 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. PTOL-90A (Rev. 04/07) - 1 - UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte GAL MARKEL ____________ Appeal 2009-010145 Application 11/107,772 Technology Center 1700 ____________ Before CHARLES F. WARREN, PETER F. KRATZ, and LINDA M. GAUDETTE, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge WARREN. Opinion Dissenting filed by Administrative Patent Judge GAUDETTE. WARREN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant filed a Request For Rehearing pursuant to 37 C.F.R. § 41.52 on September 13, 2010, of our decision entered July 13, 2010, wherein we affirmed the Examiner’s two grounds of rejection under 35 U.S.C. § 103(a). Req. 1. Requests for rehearing must comply with 37 C.F.R. § 41.52(a)(1) which specifies in pertinent parts that “[t]he request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by Appeal 2009-010145 Application 11/107,772 - 2 - the Board.” Thus, 37 C.F.R. § 41.52(a)(1) limits “requests to the points of law or fact which appellant feels were overlooked or misapprehended by the Board” and were raised in the brief and any reply brief(s). Manual of Patent Examining Procedure (MPEP) § 1214.03 (8th ed., Rev. 3, August 2005). Appellant contends we misapprehended or overlooked “(1) the ‘broadest reasonable interpretation’ of the claim language, as well as the correct application of that interpretation,” and “(2) the absence of any evidence of known alternatives or knowledge in the art supporting the rationale of the rejection.” Req. 2. I. We cannot agree with Appellant that we took “an overly broad interpretation of ‘varies’” with respect to our interpretation of the claim 1 language “said color of smoke produced by said colored smoke producing element varying along at least a portion of the length of the combustion portion.” Req. 2 (original emphasis and capitalization in Request deleted). We stated that this claim language “specifies that the ‘colored smoke’ varies in any manner and to any extent along at least a portion, however small, of the combustion portion of the claimed smoking device, e.g., a cigarette.” Dec. 3. We did so in light of disclosure at ¶ 26 of the Specification, e.g., “intensity of smoke color produced may vary along the length of the combustion portion;” “varying the construction, composition, or density of the color smoke producing strip;” and “color of smoke may intensify when the combustion portion . . . is close to being entirely consumed.” Dec. 3-4. On this basis, we determined that “all the claim language requires is the ‘color’ of the smoke ‘varying’ to any extent in hue, tint, and/or shade.” Dec. 4. Appellant argues that our “interpretation misapprehends or overlooks the Appeal 2009-010145 Application 11/107,772 - 3 - actual claim language of claim 1, which expressly requires that the color of smoke must be communicatively significant,” thus requiring “that the variance in smoke color be noticeable to an observer.” Req. 2-3. Appellant’s position is based on the claim 1 language “said colored smoke producing element being adapted to produce a communicatively significant color of smoke when said smoking device is used to smoke a combustible product” (emphasis added) which precedes the claim 1 language we quoted above. Contrary to Appellant’s position, we determined that the claim 1 language encompasses any variation “to any extent in hue, tint, and/or shade.” See above p. 2. We considered that this variation would be “noticeable to an observer” in the manner indicated in the portions in the Specification which we considered and quoted in our decision. Indeed, Appellant does not argue that any observable variation in the color of color produced by colored smoke producing element to any extent in hue, tint, and/or shade would not be “communicatively significant” to an observer. II. A. We cannot subscribe to Appellant’s contention that we misapprehended or overlooked Miller’s disclosure and “other cited art” that teaches uniform distribution of color material in the smoke producing element and teaches against non-uniform mixtures in that element, as set forth at 11-12 and 17-18 of the Appeal Brief and at 11 of the Reply Brief, and in this respect, that we did not explain how Miller’s disclosed blending of color materials and tobacco, even if not homogeneous, and changes in cigarette materials result in a change in the color of smoked produced by the smoke producing element. Req. 3, citing Dec. Appeal 2009-010145 Application 11/107,772 - 4 - 9-10. We further disagree with Appellant’s contention that we overlooked the absence of any evidence of knowledge in the art with respect to a variation in the color of smoke produced by the smoke producing element which is necessary to support the rejection. Req. 3-6. Appellant contends that we recognized that Miller does not expressly state a “motivation,” and in this respect, that we further misapprehended the distinction between “a variety of different colors being potentially used in different cigarettes as contemplated by Miller, with, on the other hand, variance along the length of a single cigarette.” Req. 4, citing Dec. 7 and Dissent 3; Req. 5-6. Appellant contends that in the absence of a “teaching, suggestion or motivation in the prior art that would have led one of ordinary skill in the art to modify [Miller] to arrive at the claimed invention,” we improperly shifted the burden to Appellant to demonstrate that Miller would not have disclosed the claimed invention. Req. 4-5, citing Dec. 6-7. In this respect, Appellant contends that our determination that “one of ordinary skill in the art would have found in Miller the latitude to design any manner of color smoke which would be expressed from a cigarette during combustion by a smoker’s inhalation and periods in between,” is not enough to establish that motivation was known in the art or that knowledge was generally available to one of ordinary skill in the art in these respects, because “Miller is utterly silent with respect to any variance in the color of smoke.” Req. 4-5, citing Dec. 6. B. The difficulty that we have with Appellant’s position with respect to Miller alone is that we addressed essentially the same arguments in the Briefs that Appellant raises in the Request: Appeal 2009-010145 Application 11/107,772 - 5 - Considering first the ground of rejection of claim 1, we cannot subscribe to Appellant’s position that the Examiner erred in maintaining the ground of rejection because there is insufficient evidence in Miller to support the Examiner’s position under KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398 (2007), and thus the Examiner must resort to reasoning beyond Miller to support the grounds of rejection, and, in this respect, that Miller describes a smoke color “that would not vary along the length of the cigarette” in view of the “cited examples” in the reference, thus teaching away for the claimed smoking device. App. Br. 11; see also generally App. Br. and Reply Br. In our view, Appellant has not adduced support for either position. Dec. 4; see also Dec. 5-10. We noted that it is well settled that a reference is considered for all the facts and inferences from the facts that one of ordinary skill in the art, with presumed skill, would find in and determine from a reference. Dec. 4-5. On that basis, we considered the Examiner’s position and Appellant’s position which entailed consideration of all of the disclosure of Miller cited in the Answer and the Briefs as well as findings we made from Miller’s disclosure in considering Miller’s disclosure cited in the Answer and in the Briefs. Dec. 5-10. Our consideration of Miller specifically included those portions of Miller cited at 11-12 of the Appeal Brief with respect to the contention that Miller teaches away from the claimed invention, which Appellant now asserts that we misapprehended or overlooked with respect to Appellant’s contention that Miller teaches uniform distribution and against non-uniform mixtures in the smoke producing element. Req. 3; Dec. 7-10. We particularly noted that in response to Appellant’s contention that Miller’s method of mixing suitable proportions of color material, preferably in finely divided form, with blended tobaccos would result in a color of smoke which would not vary along the length of the cigarette, the Examiner pointed to Miller’s methods, including mixing and spraying, of Appeal 2009-010145 Application 11/107,772 - 6 - incorporating the color material in the tobacco, and stated that “[i]f the coloring is added after a tobacco blend is produced . . ., it would not create a homogenous mixture and if more than one color was desired, it would be obvious to use more than one colored solution to apply such a blend.” Dec. 8, citing App. Br. 11 and Ans. 5. In this respect, we further noted Appellant’s contentions that Miller’s disclosure of mixing and spraying processes would not teach variation along the length of a cigarette.” Dec. 8-9, citing Reply Br. 6-7 After considering Miller’s disclosure at page 2, column 1, line 59 to column 2, lines 7, with respect to the Examiner’s reliance on Miller’s disclosure at page 2, column 2, lines 1-5, at 3 of the Answer, we stated: We find one of ordinary skill in the art would have recognized from Miller that consistent application of color materials to the tobacco blend is not readily achieved. Indeed, Miller makes clear that whether the color material is applied via spray or in finely divided form in any part of the cigarette manufacturing process, smoke of a “color of the proper intensity . . . will depend upon the dye employed as well as upon the efficiency of its distribution and the intensity and character or the color imparted to the smoke.” Miller p. 2, col. 2, ll. 2- 7. Thus, we agree with the Examiner’s position that Miller does not teach the application of a homogeneous mixture for indeed, Miller describes a desideratum but not a requirement or specific method to consistently apply the color material to obtain a consistent smoke color during combustion, whether one color material or more than one color material is employed. Therefore, as found above, Miller describes or suggests variation in the color of smoke produced along the combustion portion of a cigarette. Thus, on this record, we find no evidence in Miller to support Appellant’s position that the application of a color material in finely divided form will necessarily result in a uniform, constant smoke color without variation along the length of the combustion portion of the cigarette. Dec. 9-10. Appeal 2009-010145 Application 11/107,772 - 7 - We find no argument or evidence in the Request establishing that our consideration of Miller’s disclosure at page 2, column 2, lines 2-7, that smoke of a “color of the proper intensity . . . will depend upon the dye employed as well as upon the efficiency of its distribution and the intensity and character or the color imparted to the smoke,” establishes that we misapprehended or overlooked a teaching of uniform distribution of color material in this reference as Appellant contends. We expressed the opinion that Miller’s disclosure would have described to one of ordinary skill in this art that uneven distribution of the color material will not provide a color of proper intensity, but one of uneven intensity, such that “Miller describes or suggests variation in the color of smoke produced along the combustion portion of a cigarette.” Dec. 10. Indeed, one of ordinary skill in the art would have reasonably recognized the uneven color intensity resulting from uneven distribution of color material in the tobacco of the smoke producing element in routinely practicing Miller’s methods of mixing the color material with tobacco. Cf., e.g., In re Ludwig, 353 F.2d 241, 242-43 (CCPA 1965) (if only simple observation is required to ascertain a problem, the recognition of such problem is well within the ordinary skill in the art). That Miller discloses that the mixing methods can produce smoke of uneven color intensity, which may be undesirable, does not diminish the teaching of the reference that such a result can obtain, as indeed, any manner of color smoke which would be expressed from a cigarette during combustion by a smoker’s inhalation and periods in between is Miller’s disclosed invention even if the colored smoke varies along the length of the cigarette. See Dec. 6. Cf., e.g., In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994). (“We share Gurley’s view that a person seeking to improve the art of flexible circuit boards, on learning from Yamaguchi that epoxy was inferior to Appeal 2009-010145 Application 11/107,772 - 8 - polyester-imide resins, might well be led to search beyond epoxy for improved products. However, Yamaguchi also teaches that epoxy is usable and has been used for Gurley’s purpose.”). Accordingly, on this record, we remain of the opinion that Miller’s disclosure would have provide the motivation to one of ordinary skill in the art to use more than one color material to color the smoke or vary the amount of color smoke producing material used along the length of a combustible portion of a cigarette, in the reasonable expectation that more than one color materials or such non-homogenous distribution of one color material would vary the color of smoke expressed along at least a portion of the length of the combustion portion of the smoking device by design to increase enjoyment, even if the motivation is not expressly stated in Miller. Dec. 6-7. While this motivation is not expressly stated in so many words by Miller, the facts and inferences that one of ordinary skill in this art would have found that Miller nonetheless provides the suggestion and motivation to one of ordinary skill in the art vary the color of the smoke along the length of a cigarette as claimed in claim 1, as the Examiner determined. Dec. 6-7. Appellant has adduced no authority to the contrary. Thus, we are of the opinion that the Examiner’s position shifted the burden to Appellant to support the position that Miller’s processes produced colored smoke that did not vary along the length of the cigarette. We noted that Appellant did not adduce support for Appellant’s positions in the Briefs. Dec. 4. C. We addressed Appellant’s contention at 3 of the Request that we misapprehended or overlooked the “other cited art,” Wanna, that teaches uniform distribution of color material and teaches against non-uniform mixtures, as set forth at 17-18 of the Appeal Brief and at 11 of the Reply Brief, in the Decision. Dec. Appeal 2009-010145 Application 11/107,772 - 9 - 10-12. Appellant has not adduced specific argument to the contrary in this respect in the Request. See generally Req. 3-6. III. We have carefully considered Appellant's Request for Rehearing but we are unconvinced that there is error in our Decision as to either ground of rejection. Accordingly, we have granted Appellant's request to the extent that we have reconsidered our decision, but we deny it with respect to making any change therein. Hence, Appellant's request to reverse the Examiner's rejection is denied. 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)(iv) (2010). DENIED sld MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO IL 60661 Appeal 2009-010145 Application 11/107,772 - 1 - GAUDETTE, Administrative Patent Judge, dissenting: I respectfully dissent from the majority’s decision to deny Appellant’s Request for Rehearing. I would reverse the rejections under 35 U.S.C. § 103(a) for the reasons provided in my dissenting opinion (“Dissent”) entered July 13, 2010, as well as the reasons that follow. I am in agreement with Appellant that the majority applied an overly broad interpretation of the claim language as encompassing a smoke producing element that produces colored smoke which varies “in any manner and to any extent along at least a portion, however small, of the combustion portion of the claimed smoking device, e.g., a cigarette.” (Req. 2-3 (quoting Dec. 3) (emphasis added).) As argued by Appellant, the majority’s claim interpretation overlooks the claim terms “communicatively significant color.” Like Appellant, I interpret the claim language “communicatively significant color” as requiring a variation in color (hue, tint, and/or shade) which occurs for a sufficient time and to a sufficient degree that a smoker/observer would reasonably be expected to notice that a color change had occurred without the need for continuous observation of the smoke. (See Req. 2-3.) I agree with Appellant that the record fails to contain sufficient evidence to establish a non-homogeneous distribution of color material in Miller’s device would inherently result in a variation in color of smoke which could be considered “communicatively significant.” (See Req. 5; Dissent n. 3.)