O'Donovan, Lee Philip. et al.

Patent Trials and Appeals Board

Jan 10, 2020

14403364 - (D) (P.T.A.B. Jan. 10, 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.
14/403,364 11/24/2014 Lee Philip O'Donovan 3700.P0536US 1557
23474 7590 01/10/2020
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
DARNELL, BAILEIGH K
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
01/10/2020 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 LEE PHILIP O’DONOVAN and EVA MENON
Appeal 2019-002259
Application 14/403,364
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–5 and 7–22. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Essentra Filter
Products Development Co. Pte. Ltd. Appeal Br. 1.
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Application 14/403,364

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to tobacco smoke filter
elements. Spec. ¶ 1. In particular, the Specification explains that “Roll-Your-
Own (RYO) Smokers” may use “Pop-A-Tip” filters formed in a rod shape
where individually filters are pushed out of a transparent wrap. Id. at ¶ 3. It
can be difficult to push out these filters, however. Id. The Specification,
thus, describes perforations on the filter wrapper. Id. at ¶ 7. Claims 2 and 11
are the only independent claims on appeal and are illustrative:
2. A product rod comprising
a plurality of individual tobacco smoke filters or filter elements
abutted end to end; and
a wrapper engaged around the plurality of filters or filter
elements,
the wrapper including a line of 16 to 39 perforations in
register with each junction between abutted filters or filter
elements.
11. A product rod comprising a plurality of individual
tobacco smoke filters or filter elements abutted end to end; and
a wrapper engaged around the plurality of filters or filter
elements,
the wrapper including a line of perforations extending
from one end of the product rod to the other end and defining a
helix about the periphery of the product rod.
Appeal Br. Claims App’x 1 (emphases added to certain key recitations and
formatting added for readability).

2 In this Decision, we refer to the Final Office Action dated December 29,
2017 (“Final Act.”), the Appeal Brief filed July 23, 2018 (“Appeal Br.”), and
the Examiner’s Answer dated November 19, 2018 (“Ans.”).
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Application 14/403,364

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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name
Saffir
Deutsch et al.
(“Deutsch”)
Liebich
Kaneki et al.
(“Kaneki”)
Nyffeler
Clarke et al.
(“Clarke”)
Reference
US 2,804,078
US 4,971,078

US 5,133,366
US 6,568,402 B1

US 2006/0021625 A1
US 2011/0023900 A1
Date
Oct. 13, 1954
Nov. 20, 1990

July 28, 1992
May 27, 2003

Feb. 2, 2006
Feb. 3, 2011

REJECTIONS
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 2–4, 7–10, and 18–21 under 35 U.S.C. § 103 as obvious over
Clarke in view of Saffir and Kaneki. Final Act. 4.3
B. Claim 5 under 35 U.S.C. § 103 as obvious over Clarke in view of
Saffir, Kaneki, and Nyffeler. Id. at 10.
C. Claims 11 and 12 under 35 U.S.C. § 103 as obvious over Clarke in
view of Liebich. Id. at 11.
D. Claims 13–17 under 35 U.S.C. § 103 as obvious over Clarke in view
of Liebich and Kaneki. Id. at 12.

3 Claim 27 is no longer at issue. Appeal Br. 12; Ans. 3. In the Final Office
Action, the Examiner refers to Claim 22 in the summary of the rejection, but
the Examiner does not address claim 22 as part of this rejection. Final Act.
4–10.
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Application 14/403,364

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E. Claim 22 under 35 U.S.C. § 103 as obvious over Clarke in view of
Saffir, Kaneki, and Deutsch. Id. at 14.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellant presents separate arguments for claims 2 and 11. We
limit our discussion to those claims. All other claims will stand or fall with
the claim from which they depend.
Rejections A and B, obviousness of claim 2 and dependent claims.
The Examiner rejects claim 2 as obvious over Clarke in view of Saffir and
Kaneki. Final Act. 4. The Examiner finds, among other things, that Clarke
teaches a rod comprising a plurality of filters integrally joined end to end. Id.
at 4–5 (citing Clarke). The Examiner finds that Clarke “does not explicitly
disclose the claimed wrapper including a line of 16 to 39 perforations in
register with each junction between abutted filters or filter elements.” Id. at
5. The Examiner finds, however, that Saffir teaches perforated lines of
weakness so that filters are divisible and “can be removed at the will of the
smoker.” Id. (citing Saffir). The Examiner determines that it would have
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Application 14/403,364

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been obvious to incorporate the perforated peripheral line of weakness
between filters taught by Saffir into Clarke in order to allow the user to
remove filters and to provide partial filtering while smoking. Id. The
Examiner finds that a person of skill in the art would have determined the
optimum range of perforations for the line of weakness based on knowledge
that more perforations would yield weaker and easier separation. Ans. 13.
Appellant argues that the cited art lacks perforations “in register with
each junction” as recited by claim 2. Appeal Br. 3. The preponderance of the
evidence, however, supports the Examiner’s finding that Saffir discloses
such perforations. Ans. 5; Saffir 2:21–41. Appellant argues that Saffir
permits breakage after smoking (Appeal Br. 5), but claim 2 does not require
breakage only prior to smoking. Moreover, Saffir suggests that a smoker
could break off unwanted filters before or during smoking. Saffir 2:21–31
(“all or part of the filter may be divisible from and can be removed at the
will of the smoker”), 2:38–41 (“Should he [the smoker] desire partial
filtering, he can sever or tear off one of the plurality of separable filter
elements, . . ., along a peripheral line of weakness 7.”).
Appellant also argues that Clarke’s perforations are used for
ventilation and that a person of skill in the art would not have modified
Clarke with Saffir such that the ventilation could not be used. Appeal Br. 6–
7. The Examiner, however, finds that perforations could be used for both
ventilation and as a line of weakness (Ans. 10), and Appellant does not
persuasively explain why this finding is incorrect. The Examiner also
explains that, in the present rejection, the ventilation perforations of Clarke
are unmodified (Ans. 12); in other words, a person of skill in the art would
have left any necessary ventilation perforations of Clarke to achieve
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ventilation while adding perforations between filters to achieve Saffir’s
functionality. Appellant does not persuasively rebut this reasoning.
Appellant further argues that the Examiner reaches the claimed
number of perforations at each junction between filters (16 to 39) only by
hindsight. We disagree. The Examiner finds that Saffir explicitly teaches
having at least 10 perforations at each junction between filters. Ans. 13.
Saffir also teaches that the purpose of the perforations is to allow separation
of the filters. Saffir 2:21–42. We agree with the Examiner that a person of
skill in the art, therefore, would have adjusted the size and number of
perforations as necessary to achieve Saffir’s purpose. Ans. 13.
Because Appellant’s arguments do not identify harmful error, we
sustain the Examiner’s rejections of claims 2–5, 7–10, and 18–21.
Rejections C–E, obviousness of claim 11 and dependent claims. The
Examiner rejects claim 11 as obvious over Clarke in view of Liebich. Final
Act. 11 (citing Clarke). As above, the Examiner finds, among other things,
that Clarke teaches a rod comprising filters integrally joined end to end. Id.
The Examiner finds that Clarke “is silent to the claimed wrapper including a
line of perforations extending from one end of the product rod to the other
end and defining a helix about the periphery of the product rod.” Id. The
Examiner finds, however, that Liebich teaches such a helical line of
perforations. Id. (citing Liebich). The Examiner finds that a person of skill in
the art would have incorporated the helical perforations of Liebich into
Clarke in order to allow for diameter variability as recognized by Liebich.
Id.
Appellant argues that neither reference teaches perforations that are
designed to be torn and that, therefore, a person of skill would not have
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combined the teachings of Liebich and Clarke to arrive at claim 11’s
recitations. Appeal Br. 10–11. Even if Appellant is correct that neither
Liebich nor Clarke teaches perforations intended to be torn, we agree with
the Examiner that claim 11 does not require tearing along the helical line.
Ans. 14. Moreover, Appellant does not refute the Examiner’s stated rationale
as to why a person of skill in the art would have combined Liebich’s
teachings with Clarke. Id. at 14–16. Appellant’s argument, therefore, is
unpersuasive.
Appellant also argues that a person of skill in the art would not have
used the Liebich perforations in the rod of Clarke because doing so would
have rendered the rod non-smokeable. Appeal Br. 10–11. The Examiner,
however, finds that Liebich merely teaches that its prefabricated product is
non-smokeable (Ans. 16); the preponderance of the evidence supports the
Examiner’s position that Liebich teaches that its perforated skin sheath
remains as part of the finished cigarette such that the perforations do not
make the cigarette unsmokeable. See Liebich 10:4–7 (“the skein sheath 3
remaining in the finished cigarette and being smoked together with the filter
shell 5 and tobacco filling 4”).
Because Appellant’s arguments do not identify harmful error, we
sustain the Examiner’s rejection of claims 11–17 and 22.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–4, 7–10,
18–21
103 Clarke, Saffir, Kaneki 2–4, 7–10,
18–21

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Application 14/403,364

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5 103 Clarke, Saffir, Kaneki,
Nyffeler
5
11, 12 103 Clarke, Liebich 11, 12
13–17 103 Clarke, Liebich,
Kaneki
13–17
22 103 Clarke, Liebich,
Kaneki, Deutsch
22
Overall
Outcome
2–5, 7–22
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED