Ex Parte TUCKER et al

Patent Trial and Appeal Board

Dec 20, 2018

15049573 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/049,573 02/22/2016
127542 7590 12/25/2018
Harness, Dickey & Pierce-Altria
11730 Plaza America Drive, Suite 600
Reston, VA 20190
FIRST NAMED INVENTOR
Christopher S. TUCKER
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.
24000-000004-US-03-COA 1214
EXAMINER
YAARY,ERIC
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
dcmailroom@hdp.com
gyacura@hdp.com
jhill@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER S. TUCKER, GEOFFREY BRANDON
JORDAN, BARRY S. SMITH,
ALI A. ROST AMI, and MICHAEL J. MULLINS 1
Appeal2018-002276
Application 15/049573
Technology Center 1700
Before BRADLEY R. GARRIS, N. WHITNEY WILSON, and BRIAND.
RANGE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
final rejections under 35 U.S.C. § 103(a) of claims 2-20 as unpatentable
over Li et al. (US 2011/0303231 Al, published Dec. 15, 2011) (hereinafter
"Li") in view of Cohen et al. (US 2011/0036346 Al, published Feb. 17,
2011) (hereinafter "Cohen"), Porenski Jr. (US 4,446,878, issued May 8,
1984) (hereinafter "Porenski"), and Gavrielov et al. (WO 2012/142293 A2,
1 Appellant as the Applicant, Altria Client Services LLC., which is
identified as the real party in interest (App. Br. 2).
Appeal2018-002276
Application 15/049573
published Oct. 18, 2012) (hereinafter "Gavrielov")2 and of claim 22 as
unpatentable over Li in view of Cohen, Schennum (US 2011/0290268 Al,
published Dec. 1, 2011 ), and Gavrielov. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appellant claims an electronic article (i.e., an electronic cigarette)
comprising a first section 70 having a first threaded connector piece 37 with
an air inlet 301 and a second section 72 having a second threaded connector
piece 49b with a slot 302 at an edge thereof, wherein the first and second
threaded connector pieces are configured to connect with each other such
that slot 302 is in communication with air inlet 301 via an internal
communication space 303 between an outer surface of the first threaded
connector piece 37 and an inner surface of the second threaded connector
piece 49b (independent claim 22, Figs. 1, 14A-I4C; see also remaining
independent claims 2 and 12).
A copy of representative claim 22, taken from the Claims Appendix of
the Appeal Brief, appears below:
22. An electronic article comprising:
a first section extending in a longitudinal direction, the first
section including,
a liquid supply region configured to store liquid material,
a wick in communication with the liquid supply region,
a heater configured to heat the liquid material,
a mouth-end insert including a plurality of outlets
extending through an end surface of the mouth-end insert, and
a first threaded connector piece; and
2 We will follow the convention of the Examiner and Appellant by referring
to this reference as "Gavrielov" who is the second-listed inventor.
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Application 15/049573
a second section extending in the longitudinal direction, the
second section including,
a battery configured to electrically connect to the heater,
a second threaded connector piece configured to connect with
the first threaded connector piece, the first threaded connector
piece including an air inlet extending through a sidewall of the
first threaded connector piece, the air inlet extending in a
direction substantially transverse to the longitudinal direction,
the second threaded connector piece including a slot at an edge
thereof, the slot in communication with the air inlet via an
internal communication space between an outer surface of the
first threaded connector piece and an inner surface of the
second threaded connector piece, the first threaded connector
piece having a distal end and a proximal end, the first threaded
connector piece including a first threaded portion at the distal
end and a first non-threaded portion between the proximal end
and the first threaded portion, and the first threaded connector
piece including the air inlet at the first non-threaded portion.
Appellant does not present separate arguments specifically directed to
the dependent claims but instead advances the same argument for all claims
based on a limitation common to each of the independent claims (App. Br.
11-22). Therefore, in assessing the merits of Appellant's argument, we will
focus on independent claim 22 with which the remaining claims will stand
or fall.
We sustain the Examiner's§ 103 rejections for the reasons given in
the Final Office Action, the Answer, and below.
In rejecting claim 22, the Examiner concludes that it would have been
obvious "to provide the first and second threaded connector pieces [having
an air inlet and slot respectively] of Cohen in the device of modified Li to
create air passages into the electronic [cigarette]" (Final Action 7), and
Appellant does not contend otherwise (see generally App. Br.). The
Examiner finds that the resulting slot and air inlet of modified Li's electronic
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Application 15/049573
cigarette are not in communication via an internal communication space
between an outer surface of the first threaded connector piece and an inner
surface of the second threaded connector piece as claimed (Final Action 7).
With regard to this deficiency, the Examiner additionally finds that
Gavrielov teaches an electronic cigarette having a connector comprising a
smaller-diameter post head in a larger-diameter shaft whereby "alignment of
a groove 36 (air inlet) and orifice 33 (slot) is not necessary to allow for
unimpeded air flow through the connector" (Final Action 7 ( citing Gavrielov
,r,r 42--43)). The Examiner concludes that it would have been obvious "to
provide an internal communication space between an outer surface of the
first threaded connector piece and an inner surface of the second threaded
connector piece in modified Li for the same reasons" (id.).
Appellant contests this obviousness conclusion by arguing that
"[Gavrielov's] internal communication space is between parts of a single
connector piece, not between a first connector piece and a second connector
piece[, and] [t]hus, Gavrielov does not disclose or suggest 'an internal
communication space between an outer surface of the first threaded
connector piece and an inner surface of the second threaded connector piece'
as recited in the independent claims" (App. Br. 20 ( emphasis omitted)).
The Examiner responds to this argument as follows:
The proposed modification does not involve including the
specific connector of Gavrielov in the device of Cohen ( or Li as
modified by Cohen). Rather, one of ordinary skill in the art
would have considered the above teaching and motivation
found in Gavrielov to be applicable to the air flow path of
modified Li and would have found it obvious at the time of
invention to configure the first connector piece to have an outer
diameter smaller than the inner diameter of the second
connector piece to allow for unimpeded air flow regardless of
alignment. This would result in the claimed internal
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Application 15/049573
communication space between or defined by an outer surface of
the first connector piece and an inner surface of the second
connector piece.
Ans. 10-11.
The Examiner's articulated reasoning with rational underpinning
supports a conclusion that the proposed modification would have been
obvious in order to achieve the advantage expressly taught by Gavrielov
wherein "alignment is not necessary to allow for unimpeded airflow"
(Gavrielov ,r 43). See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
("[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness") cited with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). The
Examiner's obviousness conclusion is not shown to be erroneous merely
because Gavrielov's internal communication space is between parts of a
single connector piece as argued by Appellant. Contrary to the premise of
this argument, "the [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co., 550 U.S. at 418.
Appellant replies:
There is no disclosure or suggestion in Gavrielov of how to
form an internal communication space by altering diameters of
a first and second connector piece without interfering with the
threadings of the first and second connector piece.
Accordingly, if the connector of Li as modified by Cohen were
further modified according to the teachings of Gavrielov to
have a first connector piece with an outer diameter smaller than
an inner diameter of a second connector piece, the first
connector piece and the second connector piece would not be
able to be threaded together as the threads would not meet
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Application 15/049573
thereby rendering the connector of Li as modified by Cohen
inoperable for its intended purpose. Reply Br. 2-3.
This argument is (1) belated because it could have been but was not
advanced in the Appeal Brief, (2) incomplete because it does not address the
fact that the air inlet 94 and slot 30 of Cohen's first and second threaded
connector pieces are located in the non-threaded portions of these connector
pieces (see Cohen Fig. 8), and (3) inconsistent with the legal principle that
"[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton." KSR Int'! Co., 550 U.S. at 421. The record supports a
conclusion that, in view of Gavrielov, an artisan would have found it
obvious to provide Cohen's first and second connector pieces in the
modified electronic cigarette of Li with respectively smaller and larger
diameters in the non-threaded portions of these connector pieces where the
air inlet and slot are located in order to allow for unimpeded airflow
regardless of alignment.
For the reasons stated above and given by the Examiner, we sustain
the § 103 rejections of claims 2-20 and 22.
As a final matter of concern, we observe that independent claims 2
and 12 (like independent claim 22) define an embodiment wherein a first
threaded connector piece has an air inlet and a second threaded connector
piece has a slot but that claims 2 and 12 (unlike claim 22) also define an
alternative embodiment wherein the first threaded connector piece has the
slot and the second threaded connector piece has the air inlet. According to
Appellant, this aspect of claims 2 and 12 "reads on the non-limiting example
embodiment disclosed on pages 11-12, paragraphs [0044] to [0045] of the
original specification a[nd] shown in Figs. 14A, 14B, and 14C" (Response
To Notification Of Non-Compliant Appeal Brief (filed August 11, 2017) 5,
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7). However, we find no support in these cited disclosures for the alternative
embodiment described above.
Therefore, in any further prosecution that may occur, the Examiner
and Appellant should address and resolve whether the alternative
embodiment of independent claims 2 and 12 ( as well as the claims which
depend therefrom) violates the written description requirement of 35 U.S.C.
§ 112(a).
The decision of the Examiner 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)(l )(iv).
AFFIRMED
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