Ex Parte Woodman et al

Patent Trial and Appeal Board

Mar 13, 2018

14765282 (P.T.A.B. Mar. 13, 2018)

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.
14/765,282 07/31/2015 Thomas WOODMAN 4840.10WOUS01 3773
135778 7590 03/15/2018
Patterson Thuente Pedersen, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
EXAMINER
YAARY, ERIC
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/15/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS WOODMAN and ARKADIUSZ DRUZDZEL
Appeal 2017-009665
Application 14/765,2821
Technology Center 1700
Before MARKNAGUMO, MONTE T. SQUIRE and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants seek our review of the
Examiner’s rejections of claims 1—3, 5—14, and 17—19 under 35 U.S.C.
§ 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Appellants identify British American Tobacco (Investments) Limited as
real party in interest. Br. 2.
Appeal 2017-009665
Application 14/765,282
SUBJECT MATTER
The subject matter on appeal concerns a method of tobacco treatment
where the tobacco is first conditioned to achieve a moisture content of at
least 19%, cutting or comminuting the tobacco, and then raising the pH of
the tobacco to a pH value of at least 7. Spec. 1:17—20, 2:13—14.
Sole independent claim 1 is illustrative of the subject matter on
appeal, and is copied below:
1. A method of treating tobacco, the method comprising:
a first conditioning step including increasing a moisture
content of a tobacco to a first moisture level of at least 19% on a
Moisture Content Wet Basis (MCWB);
a second separate conditioning step including increasing a pH
of the tobacco to at least pH 7; and
cutting or comminuting the tobacco after the first
conditioning step but before the second conditioning step,
wherein the cutting or comminuting is conducted at the first
moisture level to retain the organoleptic effect of the tobacco
leaves.
Br. 23.
OPINION
The Examiner rejects all claims on appeal under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Chojnacki2 in view of either Philip
Morris3 or Mua,4 with or without several additional references. Final Act.
2—7. An oral hearing in this appeal was conducted on March 8, 2018.
We have considered Appellants’ arguments (Br. 14—22) and are
unpersuaded that Appellants have identified any reversible error in the
2 Jerzy W. Chojnacki, US 2005/0167536 Al, published Aug. 4, 2005.
3 Philip Morris Products S.A., EP 2 526 787 Al, published Nov. 28, 2012.
4 John-Paul Mua et al., US 2011/0315154 Al, published Dec. 29, 2011.
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Application 14/765,282
Examiner’s rejections. In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011).
Therefore, we sustain the obviousness rejections before us for the reasons
expressed by the Examiner in the Final Action and the Answer, and below.
Appellants argue that the separate prior art references cited by the
Examiner fail to teach or suggest the recited order of process steps. Br. 14—
18. This argument is unpersuasive because it is directed to each individual
reference’s teachings without considering what the combined teachings of
the references as a collective whole would have suggested to the skilled
artisan. Br. 15—17. Such arguments, without more, are unpersuasive
because “[n]on-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, it
is undisputed that the cited references, taken together, teach the individual
process steps recited in claim 1. Thus, the dispositive issue for us to decide
is whether the skilled artisan would have been motivated to combine the
teachings of these references to arrive at the subject matter recited in claim
1.
Which brings us to Appellants’ contention that the skilled artisan
would not have been motivated to combine the teachings of the cited
references. Br. 19-20. Specifically, Appellants urge that Chojnacki focuses
on the “particular arrangements and angles of blades” for cutting the
tobacco, it “is not concerned with [the] organoleptic effect of the cut
product” and provides no motivation to “further modify the tobacco
product.” Br. 19. Appellants contend that Philip Morris likewise provides
no motivation for the combination because its process for reducing or
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Application 14/765,282
inhibiting the formation of tobacco specific nitrosamines in a tobacco
homogenate is limited to tobacco byproducts such as stems, leaf scraps and
dust.5 Br. 19. Appellants further note that “Mua uses powdered, dry scrap
material for its feedstock and needs no cutter as disclosed in Chojnacki.” Br.
20.
We discern no persuasive merit in this line of argument for several
reasons. First, we observe that the underlying motivation to combine the
references need not come from the disclosure of the references themselves.
“[Ejvidence of a motivation to combine need not be found in the prior art
references themselves, but rather may be found in ‘the knowledge of one of
ordinary skill in the art or, in some cases, from the nature of the problem to
be solved.’ . . . When not from the prior art references, the ‘evidence’ of
motive will likely consist of an explanation of the well-known principle or
problem-solving strategy to be applied.” Dystar Textilfarben Gmbh & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006)
(emphases in original, quoting In re Dembiczak, 175 F.3d 994, 999
(Fed. Cir. 1999)).
Moreover, we disagree with Appellants’ position that the prior art
cited by the Examiner here fails to provide a suitable motivation to combine
the cited references. Rather, as correctly found by the Examiner, Philip
5 This assertion is technically erroneous because Philip Morris’ teachings
regarding nitrosamines are not limited to tobacco homogenates. Philip
Morris 13. Even if Philip Morris’ disclosure was so limited, the reference
does not limit the term “tobacco homogenate” to tobacco byproducts such as
stems, leaf scraps and dust, but may include “any tobacco material that has
been subjected to homogenization,” and “may be prepared from whole
tobacco plants.” Philip Morris 134.
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Application 14/765,282
Morris indeed provides a motivation to increase the pH of Chojnacki’s cut
tobacco product — “to provide an effective means for reducing elevated
levels of de novo generated tobacco specific nitrosamines [Morris 0006].”
Final Act. 3. Mua also provides a reasonable motivation, i.e., an increase in
“the storage stability of the pH of the final smokeless tobacco product” (Mua
1103), a benefit recognized by Appellants. Br. 20. Based on these findings,
we find that the skilled artisan would have been motivated to raise the pH of
Chojnacki’s cut tobacco for the purpose of reducing the concentration, or
completely eliminating the presence, of the tobacco specific nitrosamine
compounds contained in the tobacco (Philip Morris ^fl[ 3, 5, 33, 47, 48, 54)
and/or increasing the storage stability of the final product’s pH (Mua 1103).
Finally, Appellants urge that the Examiner failed to give patentable
weight to the limitation requiring a retention of “the organoleptic effect of
the tobacco leaves,” and without considering such limitation, the skilled
artisan would have had no motivation to combine the references. Br. 21.
This is unpersuasive because the Examiner indeed duly considered this
limitation. Final Act. 3; Ans. 4 (explaining that because the prior art
“teaches the same method steps as claimed, the result of retaining the
organoleptic effect of the tobacco leaves would necessarily occur.”).
Appellants, however, fail to challenge the merits of the Examiner’s position.
Moreover, we emphasize that motivation is not lacking simply because the
Examiner does not rely on organoleptic properties to establish a prima facie
case. Rather,
[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. . . . [A]ny need or problem
known in the field of endeavor at the time of invention and
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addressed by the patent can provide a reason for combining the
elements in the manner claimed.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007).
Therefore, for these reasons, and those expressed by the Examiner, we
sustain the obviousness rejections.
DECISION
The Examiner’s final decision to reject claims 1—3, 5—14, and 17—19
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)(1).
AFFIRMED
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