James D. Reed et al.

Patent Trials and Appeals Board

Sep 1, 2020

13989661 - (D) (P.T.A.B. Sep. 1, 2020)

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.
13/989,661 05/24/2013 James D. Reed 3700.P0526US 5742
23474 7590 09/01/2020
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
NGUYEN, PHU HOANG
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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):
DOCKET@FLYNNTHIEL.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES D. REED
and ROY ALINGALAN
____________

Appeal 2019-002746
Application 13/989,661
Technology Center 1700
____________
Before JEFFREY T. SMITH, GEORGE C. BEST, and JANE E. INGLESE,
Administrative Patent Judges.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–16, and 25 of Application
13/989,661.2 Final Act. (January 9, 2018). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Filtrona Filter Products Development Co.
as the real party in interest. Appeal Br. 1.
2 The Final Action Summary states that claims 1–16 and 25 were finally
rejected. Final Act. 1. Because claim 4 was canceled in the October 31, 2016
response to a Non-Final Office Action, we assume that its inclusion in the
summary is an inadvertent error.
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Application 13/989,661
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I. BACKGROUND
The ’661 Application describes a cigarette filter containing breakable
capsules that hold a flavoring agent. Claim 1 is representative of the ’661
Application’s claims and is reproduced below from the Claims Appendix of
the Appeal Brief.
1. A tobacco smoke filter or filter element comprising:
a rod of tobacco smoke filtering material; and
an elongate member including at least one frangible receptacle
integrally formed therein as a single element
wherein walls and a base of the at least one frangible
receptacle are integrally formed with the elongate
member and
wherein the elongate member and the at least one
frangible receptacle formed therein extending
longitudinally of the tobacco smoke filter or filter
element from one end of the filter or filter element to the
other end of the filter or filter element;
each one of the at least one frangible receptacle including a
fluid and being sealed by a capping member.
Appeal Br. Claims App. 1 (emphasis, paragraphing, and indentation added).
II. REJECTION
On appeal, the Examiner maintains the following rejection: Claims 1–
3, 5–16, and 25 were rejected under 35 U.S.C. § 112, ¶ 1 as failing to
comply with the written description requirement. Final Act. 2.
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III. DISCUSSION
A. Rejection of claims 1–3, 5–16, and 25 as failing to comply with
the written description requirement
In rejecting claims 1–3, 5–16, and 25 for failing to comply with the
written description requirement, the Examiner found that the phrase “the at
least one frangible receptacle formed therein extending longitudinally of the
tobacco smoke filter or filter element from one end of the filter or filter
element to the other end of the filter or filter element” lacked written
description support. Final Act. 2.
Appellant argues that Figure 2 of the Specification provides written
description of the subject matter of claim 1. Appeal Br. 4. We reproduce
Figure 2 below.

Figure 2 is a diagrammatic view of a single element strip including
sealed frangible receptacles. Spec. 7. Figure 2 shows an elongate member
33, which includes elongated receptacles 55 integrally formed in elongate
member 33. Id. at 8. The receptacles are hermetically sealed by capping
member 77, which is fixed in register with elongate member 33 to cap the
receptacles. Id. at 9.
As can be seen, Figure 2 also includes an unlabeled rectangle and
three unlabeled vertical lines that divide the rectangle into four equal
sections. Appellant argues that the rectangle “represents a filter or filter
element.” Appeal Br. 4. Appellant further argues that each of the vertical
lines represents a cut through the filter or filter element that is used to make
a plurality of filters or filter elements, such that each elongate member
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Application 13/989,661
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extends longitudinally from one end of the filter or filter element to the other
end of the filter or filter element. Id.
This argument is unpersuasive.
First, Appellant points to no actual evidence that a person having
ordinary skill in the art at the time of the invention would have understood
the rectangle in Figure 2 to be a filter or filter element. There is no
disclosure in the specification to that effect, nor is there declaration evidence
from persons of ordinary skill in the art stating their understanding of Figure
2. Thus, Appellant has offered only attorney argument in support of its
contentions. This is not sufficient, because it is well settled that arguments of
counsel cannot take the place of factually supported objective evidence. See,
e.g., In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984).
Second, even if we were to credit Appellant’s attorney argument,
Figure 2 is not sufficient to support the full scope of claim 1. As written,
claim 1 requires both the elongate member and the at least one frangible
receptacle formed therein to extend the full length of the filter or filter
element.3 If we assume that Appellant’s interpretation of Figure 2 is correct,
Figure 2 does not show receptacle 55 extending the full length of the filter or
filter element. Moreover, claim 1 allows for the presence of a plurality of

3 Appellant argues that claim 1 should not be interpreted in this manner and
that the claim language at issue only requires that the elongate member
extend the full length of the filter or filter element. Appeal Br. 5–6.
According to Appellant, “the receptacle does not need to extend the full
length as long as the elongate member does.” Id. at 6. Appellant’s proposed
interpretation of claim 1 is contrary to the plain meaning of the claim’s
language.
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frangible receptacles in the claimed elongate member. Figure 2 does not
show a plurality of receptacles extending the full length of the claimed
elongate member.4
Appellant also points to several portions of the Specification as
providing written description support for the claim language at issue. In
particular, Appellant points to page 3 of the Specification, which describes
the lengths of the tobacco smoke filter element and the frangible receptacles:
“The tobacco smoke filter element may be of length between 6 and
20 mm . . . . The (or each) receptacle(s) may be of length from 0.1 to
20 mm.” Spec. 3. Thus, there is an overlap in the described lengths of the
tobacco smoke filter element and the frangible receptacle.
The Examiner found that the overlap in the described lengths was the
only evidence that supported a finding that the disputed language and had
written description support. Answer 5. The Examiner rejected this evidence
as insufficient because it was not commensurate in scope with the claimed
invention because the claim did not recite the range of overlapping lengths.
Id. The Examiner also pointed to Appellant’s statement that “[i]n practice,
the filter and the receptacle are not the same length; the receptacle can be
shorter than the filter - see e.g., FIG. 2 and FIG. 1.” Appeal Br. 6. Based
upon the statement, the Examiner found that “clearly one of ordinary skill
would recognize that these ranges do not teach or envision an embodiment

4 Indeed, the ’661 Application’s Specification does not discuss how to create
a plurality of frangible receptacles, each of which extends the full length of
the filter or filter element. If prosecution of the ’661 Application continues,
the Examiner should consider whether the full scope of claim 1 is enabled.
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where the filter/element and the receptacle are both the same length.”
Answer 5.
We disagree with the Examiner.
Appellant and the Examiner agree that page 3 of the Specification
describes an overlapping range of lengths for the filter element and the
frangible receptacle. The Examiner, however, does not identify any portion
of the Specification which states that the frangible receptacle must be shorter
than the filter element. Nor does the Examiner provide any reason why a
person of ordinary skill in the art would not envision an embodiment where
the frangible receptacle and the filter element are the same length. The
Examiner’s reliance upon the statement by Appellant’s attorney is misplaced
for two reasons. First, the statement in the Appeal Brief is attorney argument
and not supported by any citation to evidence of record. The statement,
therefore, is not evidence. Second, the statement is an admission of what is
done in practice, i.e., what is done in commercial embodiments of the
claimed invention. It is not an admission regarding how a person of ordinary
skill in the art would have understood the disclosure in the ’661
Application’s Specification.
We find that a person of ordinary skill in the art would have
understood the Specification to be describing situations in which the
frangible receptacle and the filter element have the same length. Indeed,
because the maximum length of the frangible receptacle described in the
Specification is the same as the maximum length of the filter element, a
person of ordinary skill in the art would have recognized that the
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specification describes at least one embodiment where the frangible
receptacle must be at least as long as the filter element.5
In view of the foregoing, we reverse the rejection of claims 1–3, 5–16,
and 25 for lack of written description support.
B. Request for rejoinder of claims 18–24
Appellant requests rejoinder of claims 18–24, which were withdrawn
from consideration via a restriction requirement. Appeal Br. 7. Specifically,
Appellant argues:
Claims 18–24 have been withdrawn from consideration
under Disunity of Invention. In a previous Office
Communication, the Examiner indicated that the prior art
includes the special technical feature of the claims such that a
Disunity of Invention indication was proper. However, none of
the claims have been rejected over the prior art such that the
Disunity of Invention indication should be withdrawn. Notably,
Claims 18 and 19 depend from Claim 1. Accordingly,
Applicants respectfully requests rejoinder, examination and
allowance of Claims 18–24.
Id.
This issue is not within our jurisdiction to review. Our authority is
defined by statute and is limited to the review of adverse decisions by
examiners which at least indirectly relate to matters involving the rejection
of claims. In re Hengehold, 440 F.2d 1395, 1404, (CCPA 1971); see also 35
U.S.C. § 6(b) (defining the PTAB’s duties); 35 U.S.C. § 134 (granting
applicant the right to appeal once any of the claims have been twice
rejected). Rejections of claims involve examination for compliance with the

5 We do not decide whether the ’661 Application’s Specification would
support claims to embodiments where the length of the frangible receptacle
exceeds the length of the filter element.
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statutory provisions of Title 35, United States Code, as set forth in §§ 100,
101, 102, 103, and 112. In re Harnisch, 631 F.2d 716, 721 (CCPA 1980).
Decisions an examiner makes during examination of a discretionary,
procedural, or nonsubstantive nature not directly connected with the merits
of issues involving rejections are reviewable by petition under 37 CFR
§ 1.181 to the Director, not by appeal. In re Berger, 279 F.3d 975, 984‒85
(Fed. Cir. 2002).
We, therefore, do not address the substance of Appellant’s request.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–16, 25 112, ¶ 1 Lack of written description 1–3, 5–16, 25
REVERSED