PHILIP MORRIS PRODUCTS S.A.

Patent Trials and Appeals Board

Sep 15, 2020

2019004545 (P.T.A.B. Sep. 15, 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.
14/440,722 05/05/2015 Leonardo Nappi 452825US118PCT 2731
22850 7590 09/15/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
NELSON, JAMEL M
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
09/15/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte LEONARDO NAPPI
and CLEMENT BESSO
__________

Appeal 2019-004545
Application 14/440,722
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH and
JEFFREY R. SNAY, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1–3 and 6–9. Claims 10–15 are also pending but
have been withdrawn from consideration. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

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 Philip Morris Products S.A.
Appeal Brief dated February 14, 2019 (“App. Br.”), at 2.
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The claims on appeal are directed to a filter for a smoking article comprising
a filter segment of filter material and a flow restrictor embedded in the filter
segment. The Appellant discloses that the flow restrictor is non-compressible,
meaning that the flow restrictor is
resistant to compression from any of: manual handling as the
smoking article is removed from a pack, digital compression (that is,
by a user’s fingers on the filter), buccal compression (that is, by a
user’s lips or teeth on the mouth end of the filter) or the manual
extinguishing (“stubbing out”) process. That is, the term “non-
compressible” is used to mean not deformable or destructible in the
normal handling of a smoking article during manufacture and use.
Spec. 4. The Appellant discloses that “[p]referably, the flow restrictor has a
compressive strength at a deformation of 10% greater than about 50.0 kPa.” Spec.
4.
Independent claim 1 is reproduced below from the Claims Appendix to the
Appeal Brief.
1. A filter for a smoking article, the filter comprising:
a filter segment of filter material, the filter segment having a
diameter measured perpendicular to a longitudinal direction of the
filter; and
a flow restrictor embedded in the filter segment and surrounded
on all sides by the filter material,
wherein the flow restrictor is solid, a cross sectional dimension
of the flow restrictor measured perpendicular to a longitudinal
direction of the filter is between about 60% and about 95% of the
diameter of the filter segment, and wherein the flow restrictor is
substantially spherical, the cross sectional dimension of the flow
restrictor measured perpendicular to the longitudinal direction of the
filter being a diameter of the flow restrictor, and
wherein the flow restrictor has a compressive strength at a
deformation of 10% greater than about 50.0 kPa.
App. Br. 26 (emphasis added).
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The Examiner maintains the following grounds of rejection on appeal:2
(1) claims 1–3, 7, and 8 under 35 U.S.C. § 103(a) as unpatentable over
Thomas et al.;3
(2) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Thomas in
view of Schneider et al.;4 and
(3) claim 9 under 35 U.S.C. § 103(a) as unpatentable over Thomas in
view of Li et al.5
B. DISCUSSION
The Examiner finds Thomas discloses a smoking article comprising a filter
segment of filter material and an object 50 embedded in the filter segment and
surrounded by the filter material. Final Act. 3;6 see also Thomas Figs. 9, 10. The
Examiner finds, and the Appellant does not dispute, that object 50 functions as a
flow restrictor in Thomas’ smoking article. Final Act. 3.
Thomas discloses that object 50 may be a solid polyethylene bead that acts
as a substrate or matrix support for a flavoring agent. Thomas ¶ 69. Alternatively,
Thomas discloses that object 50 may be a breakable capsule that carries a flavoring
agent and is resistant to the release of the flavoring agent “until the time that the
smoker applies a purposeful application of physical force sufficient to rupture the
hollow object [i.e., the breakable capsule].” Thomas ¶ 69. In that regard, Thomas
discloses that “[t]he smoker can smoke all or a portion of the cigarette with the

2 The rejection of claims 1–3 and 6–9 under 35 U.S.C. § 112, second paragraph, as
being indefinite has been withdrawn. Examiner’s Answer dated March 21, 2019
(“Ans.”), at 3.
3 US 2007/0068540 A1, published March 29, 2007 (“Thomas”).
4 US 5,265,626, issued November 30, 1993 (“Schneider”).
5 US 2008/0216848 A1, published September 11, 2008 (“Li”).
6 Final Office Action dated June 15, 2018.
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object 50 intact.” Thomas ¶ 82. Thus, it appears that Thomas’ object 50, like the
Appellant’s flow restrictor, is not deformable during normal handling of the
cigarette. See Spec. 4 (disclosing that the flow restrictor is “not deformable or
destructible in the normal handling of a smoking article during manufacture and
use”).
The Examiner, nonetheless, finds Thomas does not disclose that object 50
“has a compressive strength at a deformation of 10% greater than about 50.0 kPa”
as recited in claim 1. Final Act. 4. Relying on a document entitled “Compressive
Strength Testing of Plastics,”7 the Examiner finds that a typical compressive yield
strength of polyethylene is 20 MPa (20,000 kPa). Final Act. 4.
The compressive yield strength referred to by the Examiner in the NPL
document is for high density polyethylene (HDPE). NPL document 1; see also
App. Br. 11. The Appellant argues that Thomas does not disclose that object 50 is
comprised of HDPE and the compressive yield strength disclosed in the NPL
document is distinguishable from the compressive strength at a deformation of
10% recited in claim 1. App. Br. 11; see also App. Br. 12–13 (arguing that “[t]he
NPL document does not provide any disclosure (explicit or inherent) that the
identified compressive yield strengths reported therein have been measured under
deformation”).
The Appellant defines “compressive strength at a deformation of 10% . . . as
the value of uniaxial compressive stress reached when there is a 10% deformation
(that is, a 10% change in one cross sectional dimension) of the flow restrictor.”
Spec. 4–5; see also App. Br. 11 (referring to the definition of “compressive

7 Compressive Strength Testing of Plastics,
http://www.matweb.com/reference/compressivestrength.aspx (last visited August
23, 2017) (“NPL document”).
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strength at a deformation of 10%” on pages 4–5 of the Specification). The
Appellant defines “compressive yield strength,” on the other hand, “as the value of
uniaxial compressive stress reached when there is a permanent deformation of the
flow restrictor.” Spec. 4; see also App. Br. 11–12 (referring to the definition of
“compressive yield strength” on page 4 of the Specification).
The Appellant argues that one of ordinary skill in the art would have
expected compressive yield strength to be considerably higher than compressive
strength at any deformation. App. Br. 13. Likewise, the Appellant argues that one
of ordinary skill in the art would have expected HDPE to have a higher
compressive yield strength, as well as a higher compressive strength, than normal
polyethylene. App. Br. 13.
In response, the Examiner finds that
the polyethylene taught by Thomas is the genus and the HDPE
disclosed in the NPL document is the species. One of ordinary skill in
the art would have found it obvious that the species would have
similar material properties to that of the genus. HDPE is
encompassed by a broad definition of polyethylene.
Ans. 4.
Significantly, the NPL document discloses compressive yield strengths of
various materials, not compressive strength at a deformation of 10% as recited in
claim 1. The Examiner does not direct us to any evidence showing a relationship
between compressive strength at a deformation of 10% and compressive yield
strength. Moreover, the NPL document discloses the compressive yield strength of
HDPE, not the polyethylene disclosed in Thomas. Although HDPE is
encompassed by the genus of polyethylene, the Examiner does not direct us to any
evidence establishing that HDPE and the polyethylene disclosed in Thomas have,
or would have been expected to have, the same or similar compressive strengths at
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a deformation of 10%. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985)
(factual determinations by the United States Patent and Trademark Office must be
based on a preponderance of the evidence). Thus, in the words of the Appellant,
“even if the compressive yield strength value of the NPL document and the
claimed compressive strength at 10% deformation were assessed to be comparable,
the comparison made by the Examiner would still not be applicable to the object
50 of Thomas [which is composed of polyethylene, not HDPE].” Reply Br. 4–5.8
The Examiner also finds that one of ordinary skill in the art would have been
motivated to optimize the polyethylene bead disclosed in Thomas “for the purpose
of providing an object with high surface area capable of altering the smoke and/or
air drawn through the filter element.” Final Act. 4 (citing Thomas ¶ 69). The
Appellant, on the other hand, argues that “nothing in Thomas or the NPL document
teaches that a compressive strength at 10% deformation of greater than 50.0 kPa
would have this effect.” App. Br. 14.
It is well established that “where the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955);
see also Final Act. 4. However, an exception to that rule is where the parameter
sought to be optimized was not recognized to be a result-effective variable. In re
Antonie, 559 F.2d 618, 620 (CCPA 1977).
In order to support the obviousness rejection of claim 1, the Examiner must
show that the compressive strength of object 50 at a deformation of 10% was
known to be a result-effective variable in Thomas’ smoking article. That is, the
Examiner must show that the compressive strength of object 50 (e.g., a

8 Reply Brief dated May 21, 2019.
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polyethylene bead) at a deformation of 10% was known to alter or affect the smoke
and/or air drawn through Thomas’ filter element. See Spec. 4–5 (disclosing that
compressive strength at a deformation of 10% is the value of uniaxial compressive
stress reached when there is a 10% change in one cross sectional dimension of an
object). The Examiner does not make such a showing on this record. See Ans. 4–5
(generally finding that the “type of material for object 50,” not the compressive
strength of that material at a deformation of 10%, “and placement within the filter
will determine the surface area and its effect on the mainstream smoke”).
Based on the foregoing, the Examiner has failed to present a prima facie
case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (the
Examiner bears the initial burden of presenting a prima facie case of
unpatentability). Therefore, the obviousness rejection of claims 1–3, 7, and 8 is
not sustained.
The Examiner does not rely on Schneider and/or Li to cure the deficiencies
of Thomas identified above. Therefore, the obviousness rejections of claims 6 and
9 also are not sustained.
C. CONCLUSION
The Examiner’s decision is reversed.
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 7, 8 103(a) Thomas 1–3, 7, 8
6 103(a) Thomas, Schneider 6
9 103(a) Thomas, Li 9
Overall
Outcome
1–3, 6–9

REVERSED