Ex Parte Tsutsumi et al

Patent Trial and Appeal Board

Mar 14, 2016

12909413 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/909,413 10/21/2010
127226 7590 03/16/2016
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747
FIRST NAMED INVENTOR
Takeo Tsutsumi
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.
0042-0621PUS 1 5829
EXAMINER
ROLLAND, ALEX A
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
03/16/2016 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 T AKEO TSUTSUMI and YUKIKO HASEGAWA 1
Appeal2014-005297
Application 12/909,413
Technology Center 1700
Before BRADLEY R. GARRIS, CHUNG K. PAK, and N. WHITNEY WILSON,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 rejecting claims 1-3 and 5-8, which are all of the claims
pending in the above-identified application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The real party in interest is said to be Japan Tobacco Inc. Appeal Brief filed
October 25, 2013 ("App. Br.") at 1.
2 Final Action mailed May 22, 2013 ("Final Act.") at 1-5 and Examiner's Answer
mailed February 4, 2014 ("Ans.") at 2--4.
Appeal2014-005297
Application 12/909,413
STATEMENT OF THE CASE
The subject matter on appeal is directed to "a process for producing a
cigarette paper exhibiting a low ignition propensity." Spec. 1, 11. 16-18. The
process involves "applying a first aqueous solution containing divalent [metal]
cations to a base wrapping paper on a whole of its one surface" and then "applying
a second aqueous solution containing a water-soluble gellable substance capable of
gelling under the action of the divalent cations to at least a part of the surface of the
base wrapping paper" to gel and "form a combustion-inhibiting substance
consisting of the gel." Id. at 4, 1. 18-5, 1. 3. Examples of the water-soluble salts of
the divalent metal cations employed in the first aqueous solution are "calcium
acetate, calcium lactate, calcium gluconate, calcium ascorbate, calcium benzoate,
calcium nitrate, calcium chloride, calcium dihydrogen phosphate, magnesium
carbonate, magnesium acetate, magnesium lactate, magnesium nitrate, magnesium
chloride and the like." Id. at 6, 11. 15-21. Examples of the water-soluble gellable
substances used in the second aqueous solution are alginic salts, such as sodium
alginate, potassium alginate, ammonium alginate, calcium alginate and magnesium
alginate. Id. at 7, 11. 13-16. The base wrapping paper employed "can contain any
of generally employed fillers," such as calcium carbonate or magnesium
hydroxide, and can be "loaded with a combustion-regulation agent, such as citric
acid or a salt thereof .... " Id. at 5, 11. 15-19 and 6, 11. 1-3.
The first aqueous solution can be acidic (a pH of less than 7) or alkaline (a
pH of greater than 7). Spec. 11, 11. 9-11. A pH adjuster may be added to the first
aqueous solution to adjust its pH to exceed 7. Id. at 11. 12-18. The pH adjuster can
be an organic acid salt or an inorganic salt, "such as sodium hydroxide or
potassium hydroxide, sodium acetate, potassium acetate, trisodium citrate,
tripotassium citrate, sodium lactate, potassium lactate, sodium ascorbate,
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Application 12/909,413
potassium ascorbate, sodium benzoate, potassium benzoate and the like." Id. at
19-27. Details of the appealed subject matter are recited in representative claim 1,
which is reproduced below from the Claims Appendix of the Appeal Brief:
1. A process for producing a cigarette paper exhibiting a low
ignition propensity, said process comprising
providing a base wrapping paper containing a filler selected
from the group consisting of calcium carbonate, potassium carbonate,
calcium hydroxide, and magnesium hydroxide,
providing a first aqueous solution containing a compound
selected from the group consisting of calcium acetate, calcium lactate,
and calcium gluconate, and a pH adjuster, said first aqueous solution
having a pH value exceeding 7,
providing a second aqueous solution containing a water-soluble
gellable substance capable of gelling under the action of calcium
cations in said first aqueous solution,
applying said pH-adjusted first aqueous solution to said base
wrapping paper on a whole of its one swface, and
applying said second aqueous solution to at least a part of the
surface of the base wrapping paper having the pH-adjusted first
aqueous solution applied thereto to thereby cause the gellable
substance to gel and thus form a combustion-inhibiting substance
consisting of the gel.
App. Br. 7 (emphasis added).
Appellants seek review of the Examiner's rejection of claims 1-3 and 5-8
under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Perfetti3
and Hotaling. 4 App. Br. 3; Final Act. 2.
3 US 4,941,485 issued to Perfetti et al. on July 17, 1990 ("Perfetti").
4 US 5,820,998 issued to Hotaling et al. on October 13, 1998 ("Hotaling").
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Application 12/909,413
DISCUSSION
Upon consideration of the evidence on this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we find that a
preponderance of the evidence supports the Examiner's determination that the
collective teachings of Perfetti and Hotaling would have rendered the subject
matter recited in claims 1-3 and 5-8 obvious to one of ordinary skill in the art
within the meaning of 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner's
§ 103(a) rejection of the above claims for the reasons set forth in the Final Action
and the Answer. We add the following primarily for emphasis.
Initially, we note that Appellants do not separately argue claims 1-3 and 5-8
on appeal. App. Br. 3-6. Therefore, for purposes of this appeal, we select
independent claim 1 as representative and decide the propriety of the Examiner's
rejection based on this claim alone. 37 C.F.R. § 41.37(c)(l)(iv) (2012).
As evidence of obviousness of the claimed subject matter under 35 U.S.C.
§ 103(a), the Examiner has relied upon the combined disclosure of Perfetti and
Hotaling. Final Act. 2. The Examiner has found, and Appellants do not dispute,
that:
Perfetti teaches a method for making cigarette paper wrap having low
amounts of visible sidestream smoke (col. 1, lines 5-7) wherein the
cigarette paper wrap includes at least one water soluble alkali metal
salt and at least one water soluble alkali earth metal salt (col. 6, lines
44-46). The water soluble alkali metal salt is selected from potassium
acetate and potassium citrate (col. 6, lines 46-53) which are inherently
pH adjusters .... The water soluble alkali earth metal salt is selected
from various calcium and magnesium compounds such as calcium
acetate and calcium gluconate (col. 6, lines 53-58). Perfetti further
discloses that the water soluble alkali metal and the alkali earth metal
salts are incorporated into the [cigarette] paper wrap by painting
techniques (i.e., coated on the [entire cigarette] paper [wrap]) ... after
paper manufacture (col. 6-7, lines 59-2) ... (col. 6, lines 66-68). This
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Appeal2014-005297
Application 12/909,413
coating is applied on [the cigarette] paper [wrap] that already has
filler, such as magnesium oxide, magnesium hydroxide, or calcium
carbonate ... (col. 6, lines 8-22).
Compare Final Act. 3 with App. Br. 3-6. Perfetti's painting technique referred to
by the Examiner involves forming an aqueous solution (distilled water) containing
the recited water soluble alkali metal salt (pH adjuster) and/or the recited water
soluble alkali earth metal salt and using a brush to coat the entire outer surface of
the cigarette wrap paper with the aqueous solution containing such salts. Perfetti,
col. 6, 1. 44-col. 7, 1. 2 and col. 9, 11. 10-27. Based on Perfetti's disclosure of using
the above water soluble alkali and alkaline earth metal salts simultaneously in an
aqueous solution (distilled water) (id.), one of ordinary skill in the art would have
reasonably expected that such aqueous solution has an alkaline pH (a pH
exceeding 7). Thus, notwithstanding Appellants' arguments to the contrary at page
4 of the Appeal Brief, the Examiner has correctly found that Perfetti would have
suggested applying an aqueous solution that corresponds to the first aqueous
solution recited in claim l to provide, inter alia, calcium cations (polyvalent metal
cations) on the entire outer surface of the cigarette paper wrap.
Although Perfetti does not mention applying a second aqueous solution
containing a water-soluble gellable substance (e.g., alginic salt) capable of gelling
under the action of calcium cations to at least part of the outer surface of the
cigarette paper wrap that had been coated with its aqueous solution containing the
recited water-soluble alkali metal and alkali earth metal salts, as required by claim
1, the Examiner has found that Hotaling teaches applying an aqueous solution
containing a salt or derivative of alginic acid5 corresponding to the second aqueous
5 Hotaling discloses that its preferred salts or derivatives of alginic acid are sodium
alginate, potassium alginate, and ammonium alginate which are the same water-
soluble alginic salts disclosed at page 7 of Appellants' Specification.
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Application 12/909,413
solution recited in claim 1 to cover at least a portion of a wrapping paper for
smoking articles composed of a blend of pulp fibers and particulate materials
(calcium carbonate filler) containing polyvalent metal cations (calcium ions) that
can react with the salt or derivative of alginic acid to form a polymer coating or
gel. Ans. 3--4; see also Hotaling, col. 2, 11. 1-16 and 58-67, col. 4, 11. 50-60, and
col. 6, 11. 59-62. Hotaling teaches that polyvalent metal cations (calcium ions) can
be provided on its wrapping paper in two different manners. First, Hotaling
teaches that an aqueous solution of a salt and/or derivative of alginic acid may be
acidified to dissolve calcium carbonate filler to provide polyvalent metal cations
(calcium cations). Specifically, Hotaling teaches (col. 5, 11. 33-56) that:
The [aqueous] solution ... may be an acidified solution of a salt
and/or derivative of alginic acid. Generally speaking, the acidified
solution may have a pH of less than about four ( 4) ....
. . . [I]t is believed that when an acidified solution is deposited
on the paper layer incorporating particulate material containing
polyvalent metal cations (e.g., calcium and/or magnesium cations), the
acidified solution may dissolve some of the particulate materials and
may free up more polyvalent metal cations in the paper layer for
reaction with the slats and/or derivatives of alginic acid in the
solution. For example, calcium carbonate filler present in the paper
layer of some embodiments of the present invention begins to dissolve
at a pH of six ( 6). The reaction product of polyvalent metal cations
and the salts and/or derivatives of alginic acid may vary depending on
the concentration and type of polyvalent metal cation and/or alginate
material. [(Emphasis added.)]
Secondly, Hotaling teaches that "a material containing polyvalent metal
cations[, i.e., calcium chloride, calcium lactate, calcium gluconate, and the like,]
may be added in an amount such that the level of polyvalent metal cations may be
up to about 10 percent of the weight of the alginate solids in the solution."
Hotaling, col. 6, 11. 42--45 and 63-67; Final Act. 4. According to Hotaling, the
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Application 12/909,413
salts or derivatives of alginic acid react with polyvalent metal cations (calcium
ions) to form a polymer coating or gel that reduces permeability of a wrapping
paper for tobacco articles (cigarette wrapping paper), thereby advantageously
reducing the bum rate of a cigarette, i.e., reducing "the ability of a burning
cigarette to ignite a combustible material" whereby the cigarette can "self-
extinguish after burning undisturbed for a certain period of time ([the] claimed
'low ignition propensity')." Final Act. 3; see also Hotaling, col. 1, 6-18; col. 2,
1. 66-col. 3, 1. 4, and col. 5, 11. 59-65.
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art using no more than ordinary skill and creativity would have
been led to apply the aqueous solution containing a salt or derivative of alginic
acid taught by Hotaling to cover at least a portion of Perfetti' s cigarette wrapping
paper composed of a blend of pulp fibers and calcium carbonate filler that has been
coated with an aqueous solution containing water-soluble alkali metal and alkaline
earth metal salts (polyvalent metal cations (calcium cations)), with a reasonable
expectation of successfully forming a polymer coating or gel on at least a portion
of a cigarette paper wrap to provide a slow burning rate or self-extinguishing
characteristic while reducing sidestream smoke.
Appellants appear to contend that Hotaling teaches an acidic aqueous
solution containing a salt or derivative of alginic acid contrary to the requirement
of claim 1. App. Br. 5. However, this contention fails for at least two reasons.
First, claim 1 does not preclude the presence of some acid in its second aqueous
solution, i.e., the acidified second aqueous solution, so long as it contains a salt or
derivativeofalginicacid. In re Self, 671F.2d1344, 1348(CCPA1982)
("[A ]ppellant' s arguments fail from the outset because ... they are not based on
limitations appearing in the claims.") Secondly, Hotaling, by teaching that its
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Application 12/909,413
aqueous solution "may be an acidified solution of a salt and/or derivative of alginic
acid[,]" indicates that its aqueous solution need not be an acidified solution of salts
or derivatives of alginic acid. Hotaling, col. 5, 11. 33-34. Consistent with such
optional language, Hotaling teaches using an aqueous solution of a salt or
derivative of alginic acid that has been acidified to dissolve calcium carbonate
filler to provide polyvalent metal cations (e.g., calcium cations) or using water-
soluble salts, such as calcium chloride and calcium gluconate, to supply polyvalent
metal cations (e.g., calcium cations) as indicated supra, thus implying that the
aqueous solution of a salt or derivative of alginic acid need not be acidified when
calcium chloride or calcium gluconate is used to supply an adequate amount of
polyvalent metal cations. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(explaining that prior art references must be evaluated, taking into account
"demands known to the design community," "the background knowledge
possessed by a persona having ordinary skill in the art," and "the inferences and
creative steps that a person of ordinary skill in the art would employ"); In re
Preda, 401 F. 2d 825, 826 (CCPA 1968) (In evaluating a prior art reference, "it is
proper to take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.").
Appellants also contend that one of ordinary skill in the art would not have
been led to combine the teachings of Hotaling and Perfetti because their purposes,
namely Perfetti' s purpose of reducing visible side steam smoke and Hotaling' s
purpose of reducing the burning rate of a cigarette, are different. App. Br. 5.
However, this contention is also not well taken. As indicated supra, Perfetti's
aqueous solution containing, inter alia, a water-soluble alkaline earth metal salt
(i.e., calcium chloride or calcium gluconate mentioned by Hotaling) is not only
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Application 12/909,413
useful for reducing visible sidestream smoke, but also useful for providing
polyvalent metal cations (calcium ions) that can react with the salt of alginic acid
in Hotaling's aqueous solution for producing a polymer coating or gel. As also
indicated supra, Perfetti's calcium carbonate filler, according to Hotaling, is also
useful for providing polyvalent metal cations (calcium ions) that can react with the
salt of alginic acid in Hotaling's aqueous solution for producing a polymer coating
or gel. Thus, one of ordinary skill in the art, who has been led to apply the aqueous
solution containing a salt or derivative of alginic acid taught by Hotaling to cover a
portion or portions of the outer surface of Perfetti's cigarette wrapping paper
composed of a blend of pulp fibers and calcium carbonate filler that has been
coated with an aqueous solution containing water-soluble alkali and alkaline earth
metal salts (polyvalent metal cations (calcium cations)) as indicated above, would
have reasonably expected to form a polymer coating or gel on a portion or portions
of a cigarette, where a slow burning or self-extinguishing characteristic is desired,
while retaining the reduced visible sidestream smoke characteristic for the
remaining portion of the cigarette coated with Perfetti' s aqueous solution. Even
when one of ordinary skill in the art would have been led to apply the aqueous
solution containing a salt or derivative of alginic acid taught by Hotaling to cover
the entire outer surface of Perfetti' s cigarette wrapping paper coated with an
aqueous solution containing a water-soluble alkali metal and alkaline earth metal
salts as also indicated above, one of ordinary skill in the art would have reasonably
expected to obtain both the slow burning and reduced sidestream smoke
characteristics due to the presence of both the materials taught by Perfetti and the
gel taught by Hotaling (which are found by the Examiner to be usable together).
Compare Ans. 4 with App. Br. 5.
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Application 12/909,413
Accordingly, we find that Appellants identify no reversible error in the
Examiner's rejection of claims 1-3 and 5-8 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Perfetti and Hotaling.
ORDER
In view of the foregoing, the decision of the Examiner to reject claims 1-3
and 5-8 under 35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv).
AFFIRMED
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