Ex Parte NISHIMURA et al

Patent Trial and Appeal Board

Feb 26, 2019

14038444 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/038,444 09/26/2013
127226 7590 02/28/2019
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Manabu NISHIMURA
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.
0042-0676PUS 1 8621
EXAMINER
SZEWCZYK, CYNTHIA
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAN ABU NISHIMURA, SUSUMU ABE, and
SATOSHI TAGUCHI
Appeal2018-004244
Application 14/038,444
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
Sept. 26, 2013 ("Spec."); Final Office Action dated Jan. 30, 2017 ("Final");
Advisory Action dated May 26, 2017 ("Advisory Act."); Appeal Brief filed Aug.
23, 2017 ("Br."); and Examiner's Answer dated Jan. 9, 2018 ("Ans.").
Appeal2018-004244
Application 14/038,444
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-3 and 16-18.3 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
The invention relates to a method of manufacturing cut stems, e.g., stems
that have been separated from tobacco leaves. Spec. 1: 11-15. Claim 1, the sole
independent claim on appeal, is reproduced below.
1. A cut stem manufacturing method comprising:
tearing a rod-like stem material having a water content of 20 to
50% by weight;
shredding the tom rod-like stem material; and
subjecting the rod-like cut stem material to expansion
treatment,
wherein the rod-like stem material is tom by passing the rod-
like stem material between two rollers rotating in opposite directions
at different speeds.
Appeal Br. Claims Appendix.
The Examiner relies on the following references as evidence of
unpatentability:
Rainer et al.
Graves, Jr.
Brackmann et al.
Ulrich
us 4,366,824
us 4,702,264
us 4,386,617
us 4,386,617
pat. Jan. 4, 1983
pat. Oct. 27, 1987
pat. Jun. 7, 1983
pat. Nov. 17, 1981
2 The Appellant is the Applicant, JAPAN TOBACCO INC., also identified as the
real party in interest. Br. 1.
3 Claim 1 was amended and claims 19 and 20 were cancelled in an Amendment
After Final, filed May 26, 2017, and entered into the record the same day. See
Advisory Act. 1. Claims 4--15 have been withdrawn from consideration pursuant to
the Appellant's election in response to a Requirement for Restriction, dated May
18, 2016. See Reply to Restriction Requirement, filed June 17, 2016.
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Appeal2018-004244
Application 14/038,444
The Examiner maintains the following grounds of rejection on appeal (Ans.
3-5; see Advisory Act. 2): 4
1. claims 1-3 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Rainer in view of Brackmann and Graves; and
2. claims 16-18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Rainer in view of Brackmann, Graves, and Ulrich.
Rainer discloses a process comprising "(1) pretreating whole or rolled and
cut tobacco stems to prevent interadherence or clumping thereof, (2) contacting the
pretreated stems in shredded form with an alkaline hydrogen peroxide solution ...
(3) extracting the expanded stems with water, and (4) drying or roasting the ...
stem material." Rainer 3:65--4:5. Rainer discloses that step (2) causes expansion.
Id. at 4:39--42. As to step (1 ), Rainer discloses "[t]he tobacco stems will generally
be moistened and then rolled or crushed according to known methods." Id. at 4:32-
33. Rainer further discloses that "[i]t may be preferable to also cut the stems to
filler size by conventional methods ... prior to expansion." Id. at 4:33-36. Rainer
describes a first embodiment in which step (1) involves treating rolled or crushed
stems, preferably cut, "[ f]or example, shredded stems" with gaseous ozone, and a
second embodiment in which step (1) involves treating stems, "optionally ...
shredded to filler size" with a polyvalent salt. Id. at 4:32-34, 55-59, 6:30-35.
Brackmann discloses that a known procedure for processing tobacco stem
4 Though not stated explicitly in the Answer or the Advisory Action, it is our
understanding that, as a result of the amendment to claim 1 and cancellation of
claims 19 and 20 in the Amendment After Final (see supra note 3 ), ( 1) the final
rejections of claims 1-3 under 35 U.S.C. § 102(b) and of claims 19 and 20 under
35 U.S.C. § 103(a) have been withdrawn, and (2) claims 1-3 have been finally
rejected under 35 U.S.C. § 103(a) and the final rejection of claims 16-18 under 35
U.S.C. § 103(a) has been modified. See Ans. 3-5; Advisory Act. 2; Appeal Br. 4--
5.
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Appeal2018-004244
Application 14/038,444
materials involves passing stems having a moisture content of about 30 wt.%
"between rollers which act to crush the stems into sheet material, and cutting the
sheet material into shreds for mixing with shredded lamina from which the
smoking article is made." Brackmann 1 :25-30. Brackmann discloses that the
resulting product of this procedure "is commonly termed 'cut rolled stem."' Id. at
1:30-31.
Graves discloses a method of processing whole leaf tobacco to yield a sheet-
like product which can be used to cut filler for the manufacture of cigarettes.
Graves Abstract. Graves's method involves shredding whole leaf tobacco,
including the stem, mixing the shredded material with a binding agent, and passing
the mixture through rollers to compress the mixture and form a sheet-like shape.
Id. Graves discloses that rotating the rollers at different linear speeds creates an
additional sheering action capable of aligning more of the individual tobacco fibers
and produces a homogeneous and strong sheet. Id. at 13:43--48. According to
Graves, "the processed tobacco material in the form of a sheet exhibits a structural
strength which approaches that of tobacco leaf." Id. at 14:27-29.
As to the claim 1 step of "tearing," that is further limited by the wherein
clause, the Examiner finds Rainer discloses using rolled and cut stems, and
Brackmann discloses that a conventional process of making rolled and cut stems
includes passing tobacco stems between a pair of rollers that necessarily would be
rotating in opposite directions. Ans. 3--4 (citing Rainer 3:65---66; Brackmann 1:25-
31 ). The Examiner finds one of ordinary skill in the art would have modified the
conventional process of making rolled and cut stems by operating the rollers at
different speeds based on Graves's disclosure that operating rollers at different
speeds provides an additional shearing action. Id. at 4 (citing Graves 13:33-35, 43-
45). The Examiner finds "[a]n additional shearing action would aid in the rolling
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Appeal2018-004244
Application 14/038,444
and cutting of the tobacco stem." Id. at 6.
The Appellant argues Rainer fails to disclose a method wherein the stems
are tom and shredded as required by claim 1. Br. 4. The Appellant further argues
neither Brackmann nor Graves discloses or suggests a method in which rollers are
used to tear a rod-like stem material. Id. at 5. The Appellant's arguments are
persuasive.
In the Summary of the Invention, Rainer discloses a first step of pretreating
"whole or rolled and cut tobacco stems" and a second ( expansion) step of
"contacting the pretreated stems in shredded form with an alkaline hydrogen
peroxide solution." Rainer 3:65--4:1 (emphasis added). The Examiner contends the
ordinary artisan at the time of the invention would have understood this disclosure
as teaching that if rolled and cut tobacco stems are used in the first step, the stems
are first cut in a conventional process of making rolled and cut stems
( corresponding to the claim 1 tearing step), and then the cut stems are subjected to
a second cutting step to form shredded material ( corresponding to the claim 1
shredding step). Ans. 5. We agree with the Appellant, however, that the ordinary
artisan, when reading Rainer's description in column 3, line 65 to column 4, line 1
in the context of the entire disclosure, would have understood that Rainer discloses
a shredding step, but does not disclose a tearing step prior to the shredding step as
required by claim 1. As indicated in the description of Rainer, above, Rainer
discloses shredding whole stems either (1) after passing the stems between two
rollers (forming "cut rolled stem"), but prior to pretreatment with ozone or a
polyvalent salt in Rainer's first (pretreatment) step, or (2) after pretreating whole
stems with ozone or a polyvalent salt in the first (pretreatment) step, but prior to
the second (expansion) step. See Rainer 4:32-34, 55-59, 6:30-35.
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Appeal2018-004244
Application 14/038,444
We further agree with the Appellant that neither Brackmann nor Graves
discloses the use of rollers to tear a rod-like stem material. Brackmann discloses
that in the conventional process of making rolled and cut stems, the stems are
passed between rollers which "crush the stems into sheet material." Brackmann
1 :26-28. There is no indication that the rollers effect a tearing action. See Spec.
12:11-21 ("[A] large tearing force is applied to the rod-like stem materials passing
through the space between the first and second rollers ... [such that] the rod-like
stem materials ... are tom up ... [ and] the integument on the surface of the
internal tissue of the rod-like stem materials ... is broken."). Rather, Brackmann
discloses that after the sheet is formed by the rollers, it is subjected to a subsequent
cutting step to form shredded lamina. Brackmann 1 :28-29. Graves discloses that
the sheering action provided by operating rollers at different speeds produces a
homogeneous and strong sheet. Graves 13:43--48. Thus, the Examiner's finding
that "[ a ]n additional shearing action would aid in the rolling and cutting of the
tobacco stem," Ans. 6, is not supported by the disclosures in Brackmann or Graves,
nor does the Examiner cite to any other evidence of record in support of this
finding.
Because the Appellant has identified reversible error in the Examiner's
conclusion of obviousness as to claim 1, we do not sustain the rejection of claims
1-3 as unpatentable over Rainer in view of Brackmann and Graves. As the
Examiner's obviousness determination as to claim 16-18 is based on the same,
unsupported findings, see Ans. 4--5, we likewise do not sustain the rejection of
these claims as unpatentable over Rainer in view of Brackmann, Graves, and
Ulrich.
REVERSED
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