Ex Parte Moldoveanu et al

Patent Trial and Appeal Board

Mar 14, 2018

14021409 (P.T.A.B. Mar. 14, 2018)

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.
14/021,409 09/09/2013 Serban C. Moldoveanu R60999 10360US.1 4237
(0568.7)
26158 7590 03/16/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
MAYES, DIONNE WALLS
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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):
IPDocketing @ wbd-u s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERB AN C. MOLDOVEANU, JERRY WAYNE MARSHALL,
WAYNE ALLEN SCOTT, DWAYNE WILLIAM BEESON,
and DANIEL VERDIN CANTRELL
Appeal 2017-006913
Application 14/021,409
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 4, 5, 7, 8, 10, 11, 17—19,
22, and 23 of Application 14/021,409 under 35 U.S.C. § 103(a) and for
nonstatutory double patenting. Final Act. (Feb. 12,2016)2—8. Appellant1
seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 The Appellant, R.J. Reynolds Tobacco Company, is identified as the real
party in interest. Appeal Br. 1.
Appeal 2017-006913
Application 14/021,409
BACKGROUND
The present application generally relates to a smokeless tobacco
product made up of tobacco and a separate botanical material. Spec. 2.
Both the tobacco and the botanical material of the present application have
antioxidant properties as reflected by their ORAC index value or FRAP
index values. Id. at 3.
Claim 1 is representative of the claims on appeal and is reproduced
below:
1. A smokeless tobacco product configured for insertion
into the mouth of a user of the product, the smokeless tobacco
product comprising a tobacco material and at least one
botanical material, wherein the botanical material comprises at
least about 5.0% of the total dry weight of the smokeless
tobacco product and the tobacco material comprises at least
about 25% of the total dry weight of the smokeless tobacco
product, wherein the botanical material is a tea or a tisane
material and wherein both the tobacco material and the
botanical material are in the form of shredded or particulate
plant material; and
wherein the at least one botanical material has an ORAC index
value of at least about 250 (pmol TE)/g or a FRAP index value
of at least about 250 (pmol/Fe2+)/g and the smokeless tobacco
product has an ORAC index value of at least about 50 (pmol
TE)/g or a FRAP index value of at least about 80
(pmol/Fe2+)/g.
Appeal Br. 152 (Claims App.).
2 Appellant’s initial Brief and Claims Appendix are unpaginated. For
convenience, we refer to the page numbers as sequentially ordered.
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REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 2, 4, 5, 7, 8, 10, 11, 17—19, 22 and 23 are provisionally
rejected on the ground of nonstatutory double patenting over
claims 1, 3, 4, 6, 7, 9, 10, 15, 18, and 20-36 of co-pending
Application No. 14/072,318. Final Act. 2—3.
2. Claims 1, 2, 4, 5, 7, 8, 10, 11, 17—19, 22, and 23 are rejected under
35 U.S.C. § 103(a) as obvious over Holton3 as evidenced by
Brunswick Labs Database Entry for Green Tea Extract ORAC
Values4 in view of Li.5 Id. at 4—7.
3. Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as obvious
over Holton as evidenced by Brunswick Labs Database Entry for
Green Tea Extract ORAC Values in view of Li and further in view
of Essen.6 Id. at 7—10.
DISCUSSION
Rejection 1. The Examiner provisionally rejected claims 1, 2, 4, 5, 7,
8, 10, 11, 17—19, 22, and 23 on the ground of nonstatutory double patenting.
Final Act. 2—3. Appellant has indicated that it does not seek review of this
determination. Appeal Br. 3. Accordingly, it is summarily affirmed. See
3 US 2007 /0062549 Al, published Mar. 22, 2007.
4 Brunswick Laboratories Database for ORAC 5.0 and Cellular Antioxidant
Assay (CAA) listing for Green Tea Extract, url:
http ://www.brunswicklabs. com/tech-library/orac-database/ green-tea-extract,
last visited August 1, 2015.
5 US 2013/0146073 Al, published June 13, 2013.
6 US 2009/0065013 Al, published Mar. 12, 2009.
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Application 14/021,409
37 C.F.R. § 41.37(c)(l)(iv) (2012); Hyatt v. Dudas, 551 F.3d 1307, 1313-14
(Fed. Cir. 2008); see also Manual of Patent Examining Procedure (MPEP)
§ 1205.02 (9th ed. Mar. 2014) (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it, unless the examiner subsequently withdrew the rejection in the
examiner’s answer.”).
Rejection 2. The Examiner rejected claims 1, 2, 4, 5, 7, 8, 10, 11, 17—
19, 22, and 23 as obvious over Holton (as evidenced by Brunswick Labs
Database Entry for Green Tea Extract ORAC Values) in view of Li.
Holton teaches a smokeless tobacco composition that may include
antioxidants. Holton 112. Holton teaches that antioxidant components
suitable for inclusion in a smokeless tobacco composition include green tea
extract and black tea extract. Id. Holton further teaches that antioxidants
may be present in a range of 1 to 25 percent of the dry weight of the
formulation. Id. at| 17.
Appellant argues that Holton does not teach a tobacco product
“wherein both the tobacco material and the botanical material are in the form
of shredded or particulate plant material” as required by claim 1. Appeal Br.
6—7. Specifically, Appellant argues that the tea extracts are not “shredded or
particulate plant material.” Id.
The Specification provides that “the term ‘botanical material’ refers to
any plant material, including plant material in its natural form and plant
material derived from natural plant materials, such as extracts or isolates
from plant materials or treated plant materials.” Spec. 5 (emphasis added).
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The Specification further provides as follows:
Exemplary forms [of botanical material] include plant materials
in shredded or particulate (e.g., a milled or ground product
in a form characterized as granular or powder) form.
Exemplary forms also include isolated components of plant
materials in forms such as oils, aqueous extracts, or alcohol (e.g.,
ethanol) extracts, which can be optionally used in solid form
(e.g., freeze-dried or spray-dried form).
Spec. 8 (emphasis added). Thus, “plant materials in shredded or particulate”
form may include granules and powders.
The Examiner determined that Holton teaches an embodiment
(Example 1) where, in addition to tobacco powder, all other ingredients of
the final tobacco composition are provided in a “dry powder form.” Answer
9 (citing Holton 131). Accordingly, the Examiner determined that Holton
teaches that tea extracts in particulate form are disclosed by Holton, and that
such particles fall within the scope of the “shredded or particulate plant
material” limitation. Answer 9.
In its Reply, Appellant argues that “the presently claimed ‘tea or
tisane botanical material in the form of shredded or particulate plant
material’ is patentably distinct from a tea extract in solid form.” Reply Br.
2. That is, Appellant argues that the claim term “shredded or particulate
plant material” should be construed so as to exclude tea extract in powder
form. Appellant, however, does not offer specific argument as to why an
extract in powder form falls outside the scope of “particulate plant material.”
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Affording
the term “particulate plant material” its broadest reasonable interpretation in
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view of the Specification, as discussed above, we determine that it includes
extracts in powder, form, as set forth in the Specification. Accordingly,
Appellant has not shown reversible error in this regard.
Claim 1 additionally requires that “the at least one botanical material
has an ORAC index value of at least about 250 (pmol TE)/g or a FRAP
index value of at least about 250 (pmol/Fe2+)/g.” Appeal Br. 15 (Claims
App.).
Appellant argues that the Examiner has shown ORAC values for a
green tea extract but has failed to do so for green tea in shredded or
particulate form. Appeal Br. 8. As above, Appellant has failed to show
error in the Examiner’s determination that the tea extract of Holton is a
particulate plant material. Accordingly, Appellant’s second argument fails
for the same reasons as its first argument.
Claim 1 additionally requires that “the smokeless tobacco product has
an ORAC index value of at least about 50 (pmol TE)/g or a FRAP index
value of at least about 80 (pmol/Fe2+)/g.” Appeal Br. 15 (Claims App.). In
rejecting claim 1, the Examiner found that the addition of green tea extract
to the tobacco formulation would increase the overall FRAP value of the
resulting composition. Final Act. 6. Additionally, the Examiner found that
Fi teaches treating tobacco so as to yield a product having increased levels
of antioxidants. Id. at 6—7.
Appellant argues that Fi lacks any teaching to add a botanical material
in shredded or particulate form to a tobacco composition to increase
antioxidant properties nor any teaching related to ORAC or FRAP index
values. Appeal Br. 9. These arguments do not rebut the Examiner’s
findings. The Examiner determined that Fi teaches a means for increasing
the antioxidant properties of tobacco and, thereby, the entire composition.
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This is unrebutted. Moreover, Holton teaches to use types of tobacco
including flue-cured tobacco and burley tobacco. Holton 16. Thus, the
anti-oxidant properties of these tobaccos are inherent to Holton’s teachings.
The Specification indicates both flue-cured and burley tobaccos have ORAC
and FRAP index values within the range of claim 1. See Spec. 30 (Table 1),
31 (Table 2).
Accordingly, Appellant has not shown error in the Examiner’s
determination regarding the ORAC/FRAP index values of the smokeless
tobacco product.
Rejection 3. The Examiner rejected claims 22 and 23 as obvious over
Holton in view of Li and further in view of Essen. Final Act. 8. The
Examiner found that Essen teaches that rooibos is a tea-type plant that can
be used in the same way as green tea extract in oral smokeless tobacco
related products. Id. (citing Essen 199).
Appellant argues that one of skill in the art would not have relied
upon Essen as it is not analogous art. Appeal Br. 11—12. To be analogous
art, a prior-art reference must (1) be reasonably pertinent to the particular
problem with which the inventor is involved or (2) be from the same field of
endeavor. See Innovention Toys, LLC v. MGA Entm't, Inc., 637 F.3d 1314,
1321 (Fed. Cir. 2011). Appellant asserts that the field of endeavor of the
present application is smokeless tobacco products comprising a tobacco
material and at least one botanical material while Essen is directed toward
non-tobacco products. Appeal Br. 11.
As Appellant indicates, the field of the endeavor of the present
application includes botanical materials. Thus, references relating to
botanical materials are at least pertinent to the particular problem with which
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the inventor was involved (i.e. are analogous art). Here, Essen is described
as relating to production of “a moist snuff non-tobacco composition.”
Essen, Abstract. It is largely directed toward plant materials that may be
used in a snuff composition. Essen teaches that “[s]uch smokeless non­
tobacco products may be offered as a healthier alternative to smokeless
tobacco products.” Essen 1 5. A reference directed to appropriate plant
materials for use in snuff compositions (Essen) is also analogous art to an
application concerning botanicals to be added to a smokeless tobacco
composition because it is in the same field of endeavor.
Accordingly, Appellant has not shown that Essen is not analogous art
to the present application.
Appellant additionally contends that the combination of Holton, Li,
and Essen would not arrive at the presently claimed invention. Appeal Br.
12. Appellant argues that Essen does not teach the ORAC or FRAP index of
rooibos. Id. at 12—13.
Essen teaches that green tea extract may be added to the composition
to achieve “both taste and preservation effect.” Essen H 38, 98. Essen
further teaches that “tea-type plants matcha, rooibos, maca, mate can be used
the same way as green tea extract.” Id. 1138,99. Thus, Essen teaches to
include rooibos in a snuff composition. See In re Kemps, 97 F.3d 1427,
1430 (Fed. Cir. 1996) (“[T]he motivation in the prior art to combine the
references does not have to be identical to that of the applicant to establish
obviousness.”). The antioxidant properties of rooibos, expressed as ORAC
index, FRAP index, or otherwise, are inherent to it. Such properties are
known to those of skill in the art. See Answer 12 (finding that one of skill in
the art would be motivated to use rooibos for “the dual benefit of improved
taste and anti-oxidant value”). Thus, Appellant has not shown error in the
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Examiner’s determination that the combination teaches a composition with
rooibos with the claimed antioxidant properties.
Finally, Appellant contends that the cited references do not teach the
claimed quantity of botanical material (rooibos). Appeal Br. 13. Claim 1
requires that “the botanical material comprises at least about 5.0% of the
total dry weight of the smokeless tobacco product.” Appeal Br. 15 (Claims
App.). Essen teaches to use green tea in levels of from about 0.5 to about
2.5%, and further teaches to use rooibos at the same concentration. Essen
138. Therefore, Appellant argues, Essen teaches to use a quantity less than
the claim requires. Appeal Br. 13.
The Examiner, however, does not rely upon Essen for its teachings
related to quantity. Rather, the Examiner relies upon Holton’s teaching that
an anti-oxidant such as green tea extract can be provided in an amount
ranging from 1.0—25.0% of the total dry weight of the formulation. Answer
13. Appellant has not shown error in this finding nor argued that Essen
teaches away from the range taught by Holton. Accordingly, Appellant has
not shown error in this regard.
CONCLUSION
The rejection of claims 1, 2, 4, 5, 7, 8, 10, 11, 17—19, 22, and 23 for
nonstatutory double patenting over claims 1, 3, 4, 6, 7, 9, 10, 15, 18, and 20-
36 of co-pending Application No. 14/072,318 is summarily affirmed. The
rejection of claims 1, 2, 4, 5, 7, 8, 10, 11, 17—19, 22, and 23 as obvious is
affirmed.
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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)(l)(iv).
AFFIRMED
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