Ex Parte Sinclair et al

Patent Trial and Appeal Board

Dec 18, 2018

14145839 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/145,839 12/31/2013
63209 7590 12/20/2018
Roy Kiesel Ford Doody & Thurmon
9100 Bluebonnet Centre Blvd, Suite 100
BATON ROUGE, LA 70809
FIRST NAMED INVENTOR
Daniel S. Sinclair JR.
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.
98541-45C4-BAN 1703
EXAMINER
NGUYEN, PHU HOANG
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
rbf@roykiesel.com
blp@roykiesel.com
ask@roykiesel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL S. SINCLAIR JR. and PHILIP S. ZANGHI
Appeal2017-000344
Application 14/145,839
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
BRIAND. RANGE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (Blunt Wrap U.S.A., Inc.) appeals under
35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-12. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The claims are to a method for making a custom made cigar. Claim 1
is illustrative:
1. A method of making a custom made cigar comprising the
steps of:
(a) a consumer purchasing a cigar having a shell, the
shell having first and second ends and a longitudinal bore, the
bore being filled with tobacco filler;
Appeal2017-000344
Application 14/145,839
(i) a plurality of perforations which can be opened
causing the cigar to have first and second longitudinal
edge portions;
(ii) wherein the cigar is packaged for sale; and
(iii) wherein after the cigar is removed from the
packaging, the perforations can be opened by a
consumer, and the first and second edge portions can be
moved apart thereby allowing the consumer to remove at
least part of the tobacco filler from the bore, and add new
smokable leaf material to the bore and thereafter form a
custom cigar;
(b) the consumer opening the perforations forming first
and second edge portions, and moving apart the first and second
edge portions to provide access to the tobacco filler in the bore;
( c) the consumer removing at least part of the tobacco
filler from the bore; and
( d) the consumer adding new smokable leaf material to
the bore, sealing the shell, thereby forming a custom-tailored
cigar.
The Rejection
Claims 1-12 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. 1
OPINION
We affirm the rejection.
The Appellant argues the claims as a group (Br. 10). We therefore
limit our discussion to one claim, i.e., claim 1, which is the sole independent
claim. Claims 2-12 stand or fall with that claim. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2012).
1 The Examiner discusses claim 12 but apparently inadvertently omits it
from the statement of the rejection (Ans. 2-3).
2
Appeal2017-000344
Application 14/145,839
For an applicant to comply with the 35 U.S.C. § 112(a) written
description requirement the applicant's specification must "convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention." Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991)).
The Examiner finds that"[ c ]laim 1 contains the phrases: 'add new
smokable leaf material' on the last line of step (a) and step ( d); however this
newly amended phrase seems to be not described in the specification in such
a way as to reasonably convey to one skilled in the relevant art that the
inventor(s) had possession of the claimed invention at the time the
application was filed" (Ans. 3).
The Appellant's Specification does not provide written descriptive
support for "new smokable leaf material." The Specification discloses:
• "The method of the present invention thus enables an end
user that purchases the packaged cigars or shells to make his
or her own cigars with a selected, custom tobacco filler
material" (Spec. 2:27-29).
• "Perforations 50, line 60, and irregular perforations 70 allow
cigar 10 to be easily opened by user who wishes to replace
tobacco filler material 20 with a select tobacco filler
material 21" (Spec. 5: 13-15).
• "Tobacco filler material 20 can be removed from bore 35
and replacement tobacco filler material can be placed in
bore 35" (Spec. 5:26-27; 9:1-2).
• "Sheet 110 can now be filled with the tobacco filler material
of the user's choice" (Spec. 6:31-32).
• "The user will then fill the bore 35 with any desired blend of
the favorite tobacco" (Spec. 7:8-9).
• "For the shell 130 user will then fill the bore 113 with any
desired blend of the favorite tobacco" (Spec. 71-12).
3
Appeal2017-000344
Application 14/145,839
• "When a user desires to insert his tobacco fill material of
choice" (Spec. 36).
• "Selected tobacco filler material can then be placed in
bore 35" (Spec. 9:16-17).
The Appellant argues, in reliance upon disclosures in five patents, that
"a person of ordinary skill in the art would understand the term 'cigar' to
include cigars having non-tobacco fillers" (Br. 5) and "[a] person of ordinary
skill in the art would understand that other types of smokable leaf filler
could be substituted for smokable tobacco leaves" (Br. 8).
The relevant question is not whether it was known in the art to add
non-tobacco fillers, including non-tobacco smokable leaf materials, to a
cigar but, rather, is whether the Appellant's Specification indicates that the
inventors were in possession of a user adding new smokable leaf material in
the claimed method for making a cigar. That indication does not appear in
the Appellant's Specification.
The Appellant argues that the Specification's disclosure that "a sheet
can be single or multiple layered and comprised entirely of tobacco leaves,
or can be a combination of tobacco leaves and other material, which are
preferably combustible material(s)" (Spec. 2:35-3:1), "shows that Applicant
had possession of a non-tobacco cigar and the limitation 'smokable leaf
material', which is an 'other material, which are preferably combustible
material(s)"' (Br. 7).
That disclosure does not indicate that the sheet is added by a user or
that the combustible material can be smokable leaf material.
The Appellant argues, in reliance upon boilerplate language in the
Specification, that the invention is not limited to the disclosure (Br. 7-8).
4
Appeal2017-000344
Application 14/145,839
The relied-upon boilerplate language does not indicate that the
inventors were in possession of a user adding smokable leaf material.
The Appellant asserts that the Abstract' s disclosure that "a consumer
can fill the cigar or shell with crushed tobacco leaves or other tobacco filler
material of a favorite blend" provides written descriptive support for
"smokable leaf material" (Br. 9).
That disclosure provides written descriptive support for crushed
tobacco leaves or other tobacco filler, but not for "smokable leaf material."
The Appellant asserts that support for "smokable leaf material" can be
found "in Figure 3A showing the addition of the 'smokable leaf material' to
the cigar" (Br. 9).
The Specification's discussion of that figure does not indicate that
smokable leaf material can be added to the cigar but, rather, discloses that
"[t]obacco filler material 20 can be removed from bore 35 and replacement
tobacco filler material can be placed in bore 35" (Spec. 5:26-27).
The Appellant asserts that "the prior art does not prohibit the
broadened "smokable leaf material" limitation as the point of novelty lies
elsewhere in the claims" (Br. 8).
The rejection is not based upon unpatentability over prior art but,
rather, is based upon lack of written descriptive support for a customer
adding smokable leaf material to a cigar.
The Appellant asserts that the "amended limitation ["smokable leaf
material"] merely broadens the more narrow 'smokable tobacco leaf
material" (Br. 6).
As pointed out above, the Appellant's Specification does not provide
written descriptive support for that broadened limitation.
5
Appeal2017-000344
Application 14/145,839
Accordingly, we are not persuaded of reversible error in the rejection.
DECISION
The rejection of claims 1-12 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement is affirmed.
The Examiner's decision 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).
AFFIRMED
6