Ex Parte Strickland et al

Patent Trial and Appeal Board

Oct 31, 2017

13370586 (P.T.A.B. Oct. 31, 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.
13/370,586 02/10/2012 James A. Strickland 20210-0133005 3016
26193 7590 11/02/2017
FISH & RICHARDSON P.C. (U.S. SMOKELESS TOBACCO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte JAMES A. STRICKLAND,
FRANK S. ATCHLEY, JAMES M. ROSSMAN,
ARMAND J. DESMARAIS, SCOTT A. WILLIAMS,
TOD J. MILLER, CHERNE W. JOHNSON,
and VERNIE A. DUE
Appeal 2016-003712
Application 13/370,586
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the Final Rejection of
claims 1—18. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b). Oral arguments were heard in this appeal on October 12, 2017.
We REVERSE.
Appellants’ invention is directed to a tobacco product in the form of
insoluble matrices that contain an orally disintegrable composition that
includes tobacco flavors (Spec. 1: 15—21; claim 1).
Appeal 2016-003712
Application 13/370,586
Claim 1 is illustrative:
1. A product comprising:
an insoluble matrix, the insoluble matrix comprising
polyurethane; and
an orally disintegrable composition supported by the insoluble
matrix, the orally disintegrable composition comprising an
extract of tobacco including two or more tobacco organoleptic
components, wherein the product is a tab sized to fit within a
mouth shaped as a wafer, a convex or concave pellet, or an
oval.
Appellants appeal the following rejections:
1. The rejection of claims 1—18 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
2. The rejection of claims 1—5 and 12—15 under 35 U.S.C. § 103(a) as
unpatentable over Kolodny (US 3,292,635; Dec. 20, 1966) in view of
Winkler (US 2,770,241; Nov. 13, 1956), Kramer et al. (US 5,197,494;
Mar. 30, 1993), and Garthaffher et al. (US 4,596,257; June 24, 1986).
3. The rejection of claims 1—5 and 12—15 under 35 U.S.C. § 103(a) as
unpatentable over Kolodny in view of Winkler, Noznick et al. (US
3,313,305;Apr. 11, 1967), and Garthaffher.
4. The rejection of claims 6, 7, 16, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Kolodny in view of Winkler, Garthaffher, and
either Kramer or Noznick, in view of Martin (US 5,845,645; Dec. 8,
1998) and Seville et al., Agglomeration of Tobacco Dust (Jan. 21,
1985), http://legacy.library.ucsf.edu/tid/ogd61a99.
5. The rejection of claims 8—11 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Kolodny in view of Winkler, Garthaffher, Martin,
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Application 13/370,586
Seville and either Kramer or Noznick in view of Story et al. (US
4,624,269; Nov. 25, 1986).
FINDINGS OF FACT & ANALYSIS
35 U.S.C. § 112: Written Description
The Examiner finds that claim 1 ’s limitation of an insoluble matrix
comprising polyurethane in combination with the limitation requiring that
the product is a tab sized to fit within a mouth shaped as a wafer, a convex
or concave pellet, or an oval lacks written description support (Final Act. 2—
3). The Examiner finds that the Specification describes the “tab” and
“insoluble matrix” embodiments as separate, distinct inventions (Final
Act. 3).
Appellants argue that the Examiner reviewed each section of the
Specification in isolation, while ignoring parts of the Specification that
expressly contemplated the combination of the embodiments described
earlier in the Specification (Reply Br. 2—3). Appellants contend that one of
ordinary skill in the art would have understood from the Specification, as a
whole, that Appellants were in possession of a tab insoluble matrix shaped
as a wafer, convex or concave pellet, or an oval (Reply Br. 3 4). Appellants
argue that the composite embodiment described on page 75, lines 11—19 of
the Specification expressly discloses combining different types of products
to provide a composite product (Reply Br. 4—5).
To satisfy the written description requirement, a specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
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Application 13/370,586
invention. See, e.g.,Moba, B.V. v. Diamond Automation, Inc., 325 F.3d
1306, 1319 (Fed. Cir. 2003).
In the present case, Appellants describe in their Specification a tab
embodiment where the tab is shaped as a wafer, a concave or convex pellet,
or an oval (Spec. 34:31—33; 35:5—6). Appellants further describe an
insoluble matrix embodiment where a polyurethane foam matrix is coated
with a slurry of tobacco (Spec. 69:22—29, 70:1—10). On page 75 of the
Specification, Appellants describe composite compositions, i.e.,
compositions that contain two or more of the different types of products
described in the Specification. The Examiner does not address Appellants’
composite composition disclosure (Final Act. 2—3; Ans. 9—10).
In our view, the preponderance of the evidence favors Appellants’
argument that the Specification provides written descriptive support for the
subject matter of claim 1. The composite composition disclosure indicates
written descriptive support for combining the teachings of the various
disclosed embodiments. The claims recite combining the shape and size of
the tab embodiment with the insoluble matrix embodiment. Although the
Specification does not expressly state combining the tab and insoluble
matrix embodiments, the Specification’s disclosure of combining previously
disclosed embodiments provides written descriptive support for such a
combination. An in haec verba disclosure is not required to satisfy the
written description requirement. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1352 (Fed. Cir. 2010) (enbanc).
On this record, we reverse the Examiner’s § 112, first paragraph,
rejection for failing to comply with the written description embodiment.
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Application 13/370,586
Rejections (2)—(5): §103
The Examiner’s findings and conclusions regarding Kolodny,
Winkler, Kramer (or Noznick), and Garthaffher are located on pages 4—6
and 8—10 of the Final Action. With regard to the tab size of the product
recited in claim 1, the Examiner finds that Kolodny, Winkler, and Kramer do
not disclose a tab sized to fit within a mouth shaped as a wafer, a convex or
concave pellet, or an oval (Final Act. 6). The Examiner concludes that it
would have been obvious that a cigarette filter is capable of fitting within a
mouth. Id. The Examiner finds that it is known to produce cigarettes and
cigarette filters with oval shapes as taught by Garthaffher. Id.
Appellants argue that there would have been no reason to modify the
cigarette filters of Kolodny, Winkler, Kramer, and Garthaffher to be a tab
product sized to fit within the mouth shaped as a wafer, a convex or concave
pellet, or an oval (App. Br. 3). Appellants contend that neither Kolodny’s
filter 16 nor baffle discs 20 are in anyway similar to the claimed tab product
(App. Br. 4). Appellants argue that there is no reason to modify Kolodny’s
interconnected baffle discs 20 to have a wafer tab shape, a convex or
concave pellet tab, or an oval tab shape (App. Br. 5). Appellants contend
that Kolodny’s baffle structure is not visible externally from the cigarette
such that there would have been no reason to give the baffle-structure an
oval cross-section as it would not have been seen (App. Br. 5). Appellants
argue that Kolodny’s filter 16 is an elongated cylindrical shape (App. Br. 6).
Appellants contend that even if Kolodny’s filter would have been modified
to have an oval cross section as in Garthaffher, the oval cross section would
not have resulted in an oval tab shape (App. Br. 6). Appellants argue that an
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Application 13/370,586
oval tab shape does not encompass an elongated elliptical cylinder as
depicted on page 7 of the Appeal Brief (App. Br. 6—7).
We begin by construing claim 1 and the meaning of the phrase, “the
product is tab sized to fit within a mouth shaped as a wafer, convex or
concave pellet, or an oval.” The product of claim 1 comprises a tab of an
insoluble matrix with an orally disintegrable composition supported on the
insoluble matrix wherein the tab is sized to fit within the mouth shaped as a
wafer, a convex or concave pellet, or an oval. The Specification describes
tabs as being sized as individual servings (i.e., 5 mm to 15 mm dimensions)
or smaller (i.e., 2 mm to 4 mm in diameter) (Spec. 35:1—3). The insoluble
matrix embodiment includes a polyurethane foam having a tobacco slurry
coated onto the foam (Spec. 69:22—29). The insoluble matrix may be placed
wholly in the mouth of the user or it may be disposed on a stick or other
handle, which remains partially outside the mouth during consumption
(Spec. 70:1—3). The insoluble matrix may be chewable (Spec. 70:6—7). The
Specification further discloses that composite structures may be formed by
combining two or more of the different types of products described in the
Specification (Spec. 75:15—16).
Based upon these findings, we construe claim 1 as requiring a tab of
an insoluble matrix that is sized to fit wholly within the mouth. Our
construction of “within the mouth” as being limited to completely or wholly
within the mouth is supported by Appellants’ disclosure that the tab sizes
may range from 2 mm to 15 mm in dimension. Moreover, during oral
argument, Appellants’ counsel indicated that the embodiments where the
insoluble matrix partially extends from the mouth of the user are not
included within the scope of claim 1 (Tr. 9).
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Application 13/370,586
In light of our claim construction, Kolodny’s cigarette filter that may
be inserted between the lips of a smoker, does not constitute a insoluble
matrix tab that fits wholly within the mouth of the user shaped as an oval.
Kolodny’s cigarette filter would extend partially outside the user’s mouth
and would not be considered a “tab” as that term has been construed.
On this record, we reverse ah of the Examiner’s § 103(a) rejections
because ah are based upon Kolodny as the primary reference. The
secondary references do not cure the deficiency of Kolodny.
DECISION
The Examiner’s decision is reversed.
ORDER
REVERSED
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