PHILIP MORRIS PRODUCTS S.A.

Patent Trials and Appeals Board

Mar 15, 2022

2021004445 (P.T.A.B. Mar. 15, 2022)

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. 14/890,366 11/10/2015 Alexandre MALGAT 460389US118PCT 6254 22850 7590 03/15/2022 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER SUL, DOUGLAS YOUNG ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 03/15/2022 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 ALEXANDRE MALGAT and JUDITH WALLER ____________ Appeal 2021-004445 Application 14/890,366 Technology Center 3700 ____________ Before STEFAN STAICOVICI, EDWARD A. BROWN, and LISA M. GUIJT, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Non-Final Office Action (dated Oct. 2, 2020, hereinafter “Non-Final Act.”) rejecting claims 1-11, 14, 17, 18, and 20-23 under 35 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Philip Morris Products S.A. is identified as the real party in interest in Appellant’s Appeal Brief (filed Apr. 1, 2021, hereinafter “Appeal Br.”). Appeal Br. 3. Appeal 2021-004445 Application 14/890,366 2 U.S.C. § 103 as being unpatentable over Rose2 and Young.3,4 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. INVENTION Appellant’s invention is related to “devices for delivering nicotine or other medicaments.” Spec. 1, ll. 8-9. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. An aerosol-generating system, comprising: a medicament source; and a volatile delivery enhancing compound source, comprising: a first sorption element; a second sorption element immediately downstream of and in contact with the first sorption element; and a volatile delivery enhancing compound sorbed on the first sorption element and the second sorption element, wherein a rate of release of the volatile delivery enhancing compound from the first sorption element is greater than a rate of release of the volatile delivery enhancing compound from the second sorption element. Appeal Br. 30 (Claims App.). 2 Rose et al., US 2012/0255567 Al, published Oct. 11, 2012. 3 Young et al., US 7,431,570 B2, issued Oct. 7, 2008. 4 Claims 12, 13, 15, 16, and 19 are cancelled. Non-Final Act. 2. Appeal 2021-004445 Application 14/890,366 3 ANALYSIS The Examiner finds that Rose discloses an aerosol-generating system including, inter alia, medicament source 40 and volatile enhancing compound source 30. Non-Final Act. 3 (citing Rose, paras. 43, 236, Fig. 4). The Examiner further finds that Rose’s volatile enhancing compound source 30 does not include contacting first and second sorption elements, as called for by claim 1. Id. at 3-4. Nonetheless, the Examiner finds that Young’s capillary pump for vaporizing fluid includes contacting first and second sorption elements 12 (liquid feed component), 16 (vaporization component) with “a liquid sorbed on the first sorption element and the second sorption element.” Id. at 4 (citing Young, col. 10, ll. 22-45, 62-64, col. 11, ll. 49-55, Figs. 1A, 1B). Thus, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art to modify Rose’s volatile enhancing compound source to include first and second contacting sorption elements, as taught by Young, “in order to provide a lightweight, safe means for vaporizing liquid materials with no moving pumps and capable of being operated in any orientation.” Id. at 5. Appellant argues that “the person of ordinary skill in the art would not have been motivated to have considered modifying the volatile delivery enhancing compound source of Rose to include the claim[ed] features” disclosed by Young. Appeal Br. 19. According to Appellant, the Examiner’s reasoning to combine the teachings of Rose and Young “could only have been developed with the impermissible aid of the hindsight benefit afforded by . . . [Appellant’s] disclosure.” Id. at 20. The Examiner responds that the reasoning for combining the teachings of Rose and Young is provided by the explicit disclosure of Appeal 2021-004445 Application 14/890,366 4 Young, namely, “that the capillary pumps . . . are lightweight, reliable, and safe,” which results in “a lightweight, safe means of vaporizing liquid materials capable of being operated in any orientation.” Examiner’s Answer (dated May 12, 2021, hereinafter “Ans.”) 16 (citing Young, col. 3, ll. 43- 46), 17. Thus, according to the Examiner, “Young discloses the benefit of Young’s capillary pump system to provide a lightweight, safe means of vaporizing liquid materials capable of being operated in any orientation.” Id. at 17. Accordingly, the Examiner contends that the reasoning “to combine is not derived from impermissible hindsight but by the teaching of the references themselves.” Id. We appreciate that Young discloses a capillary system that is “a compact, lightweight, reliable, safe, integrated device having no moving parts.” Young, col. 3, ll. 46-47. However, such a disclosure does not provide sufficient reasoning with rational underpinnings to modify Rose’s aerosol-generating system because Appellant is correct that Rose’s system “already is a lightweight hand held device without any moving pumps.” Reply Brief (filed July 9, 2021, hereinafter “Reply Br.”) 5. In particular, the reason proffered by the Examiner to modify the teachings of Rose, according to Young, namely, “to provide a lightweight, safe means for vaporizing liquid materials with no moving pumps and capable of being operated in any orientation,” appears to already be adequately performed by the aerosol-generating system of Rose. Appellant is correct that Rose’s aerosol-generating system “does not include any moving pumps, and is a lightweight hand held device.” Appeal Br. 19. We further agree with Appellant that Rose does not teach or suggest that its aerosol-generating system “is incapable of being operated in any Appeal 2021-004445 Application 14/890,366 5 orientation.” Id. Moreover, the Examiner has not provided any findings that Rose recognized a problem with the weight, safety of vaporizing liquid materials, and orientation of its aerosol-generating system. Without a persuasive articulated rationale based on rational underpinnings for modifying Rose, as per Young, the Examiner’s rejection appears to be the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Accordingly, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103 of claims 1-11, 14, 17, 18, and 20-23 as unpatentable over Rose and Young. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-11, 14, 17, 18, 20-23 103 Rose, Young 1-11, 14, 17, 18, 20-23 REVERSED