Philip Morris USA Inc.

Patent Trials and Appeals Board

Jun 1, 2020

2019005049 (P.T.A.B. Jun. 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.
15/868,095 01/11/2018 Stephen G. Zimmermann 24000PM-000034-US-04 4815
127542 7590 06/01/2020
Harness, Dickey & Pierce-Altria
11730 Plaza America Drive, Suite 600
Reston, VA 20190
EXAMINER
KRINKER, YANA B
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
dcmailroom@hdp.com
gyacura@hdp.com
jhill@hdp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN G. ZIMMERMANN
____________

Appeal 2019-005049
Application 15/868,095
Technology Center 1700
____________

Before LINDA M. GAUDETTE, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Decision rejecting claims 1–20, which are all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Jan. 11, 2018 (“Spec.”);
Final Office Action dated Sept. 10, 2018 (“Final Act.”); Appeal Brief filed
Feb. 25, 2019 (“Appeal Br.”); Examiner’s Answer dated Apr. 1, 2019
(“Ans.”); and Reply Brief filed May 31, 2019 (“Reply Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Philip Morris USA Inc. as the real
party in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The invention relates to a method of making a pouched, oral tobacco
product comprising a porous membrane having a liner and an inner filling
material. Spec. ¶¶ 2, 3; Abstract. Claim 1, the sole independent claim,
illustrates the claimed subject matter on appeal and is reproduced below
from the Claims Appendix to the Appeal Brief:
1. A method of making a pouched, oral tobacco product
comprising:
spheronizing and/or extruding a plurality of tobacco
beads;
mixing the plurality of tobacco beads with loose, fibrous
tobacco material to form an inner filling material;
forming a pouch from a porous membrane material;
adding a dissolvable liner to the pouch to form a lined
pouch;
placing the inner filling material in the lined pouch
wherein the inner filling includes an amount of at least 10% of
the tobacco beads; and
sealing the lined pouch to form a pouched, oral tobacco
product.
Appeal Br. 18 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Sanghvi et al. (“Sanghvi”) US 2007/0190157 A1 Aug. 16, 2007
Torrence et al. (“Torrence”) US 2008/0202536 A1 Aug. 28, 2008
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Zhuang et al. (“Zhuang”)3 WO 2006/090290 A1 Aug. 31, 2006
Holton et al. (“Holton”) WO 2007/037962 A1 Apr. 5, 2007
Michel et al., Preparation and Characterisation of Dietary Fibre from Sugar
Beet Pulp, J. Sci. Food Agric. 42, 77–85 (1988) (“Michel”).
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
A. Claims 1–10, 12–15, and 17–20 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Holton in view of Zhuang
(“Rejection A”). Final Act. 2.
B. Claim 11 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Holton in view of Zhuang as applied to claim 10 above,
and further in view of Michel (“Rejection B”). Id. at 6.
C. Claims 12 and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Holton in view of Zhuang as applied to claims 4 and
18 above, and further in view of Sanghvi (“Rejection C”). Id. at 6.
D. Claim 16 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Holton in view of Zhuang as applied to claim 15 above,
and further in view of Torrence (“Rejection D”). Id. at 7.
OPINION
Having considered the respective positions the Examiner and
Appellant advance in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer

3 The Examiner refers and cites to the U.S. equivalent of the Zhuang
reference, Zhuang et al., US 2007/0000505 A1, published Jan. 4, 2007.
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and Final Office Action, which we adopt as our own. We add the following
primarily for emphasis.
Rejection A
The Examiner rejects claims 1–10, 12–15, and 17–20 under § 103(a)
as obvious over the combination of Holton and Zhuang. Final Act. 2–5. In
response to the Examiner’s rejection, Appellant presents argument for the
patentability of claims 1–10, 12–15, and 17–20 as a group and presents
separate argument for the patentability of claim 18. We address each of
these arguments in turn below.
Claims 1–10, 12–15, and 17–20
Appellant presents argument for the patentability of claims 1–10,
12–15, and 17–20 as a group. Appeal Br. 7. We select claim 1 as
representative and claims 2–10, 12–15, and 17–20 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Holton and Zhuang
suggests a method satisfying the limitations of claim 1 and concludes the
combination would have rendered the claim obvious. Final Act. 2–4 (citing
Holton ¶¶ 5, 7, 17, 26, 49; Zhuang, Abstract).
Appellant argues the Examiner’s rejection of claim 1 should be
reversed because Zhuang is non-analogous prior art. Appeal Br. 7–9; Reply
Br. 2–4. Appellant contends Zhuang is neither from the same field of
endeavor as the claimed invention nor reasonably pertinent to the problem
faced by the inventor. Appeal Br. 8–9; Reply Br. 3. In particular, Appellant
contends Zhuang is not in the same field of endeavor as the claimed
invention because Zhuang relates to cigarette filters for smoking articles and,
in contrast, the claimed invention relates to a method of making a pouched,
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oral tobacco product. Appeal Br. 8; Reply Br. 3 (arguing “Zhuang is . . . not
from the same field of endeavor as the claimed process of making pouched
tobacco products”). Appellant further contends Zhuang is not from the same
field of endeavor as Holton because, like the claimed invention, Holton
relates to pouched, oral tobacco products which are smokeless products.
Appeal Br. 8.
Appellant also contends Zhuang is not reasonably pertinent to the
problem faced by the inventor because the reference does not address
problems related to making a pouched, oral tobacco product. Appeal Br. 9;
see also Reply Br. 3 (“The problems associated with production of oral
pouch products and smoking products are completely different.”); id. at 4
(“Neither Holton nor Zhuang address the problem of metering tobacco
filling in pouching operations.”).
We do not find Appellant’s non-analogous art arguments persuasive
of reversible error in the Examiner’s rejection because Appellant construes
too narrowly the scope of the applicable field of endeavor and Zhuang’s
disclosure as it relates to the particular problem in which the inventor was
involved. Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved. In re Klein, 647 F.3d. 1343,
1348 (Fed. Cir. 2011) (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004)). “A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
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an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992).
Based on the fact-finding and reasoning the Examiner provides at
pages 3–4 of the Answer and pages 2–3 of the Final Office Action, we
determine that Zhuang is analogous art to the claimed invention because it is
from the same field of endeavor and reasonably pertinent to a problem in
which the inventor is involved. As the Examiner finds (Ans. 4), like the
claimed invention, which teaches and is directed to a tobacco product that
includes a plurality of tobacco beads (Spec. ¶¶ 3, 9), Zhuang also teaches
and is directed to a tobacco product that includes tobacco beads (Zhuang,
Abstract). Because Zhuang and the claimed invention are both directed to
tobacco products that include tobacco beads, we find Zhuang is from the
same field of endeavor as the claimed invention.
In addition, we agree with the Examiner (Ans. 4) that Zhuang is
reasonably pertinent to a problem in which the inventor was involved
because, like the claimed invention, which concerns incorporating extruded
and spheronized tobacco beads into tobacco products, mixing the beads with
loose, fibrous tobacco material, and the beads optionally including flavorants
(see Spec. ¶¶ 3, 25, 32), Zhuang also concerns incorporating extruded and
spheronized tobacco beads into tobacco products and the beads optionally
including flavorants (see Zhuang, Abstract, ¶¶ 2, 8, 74). For example,
Zhuang teaches that the tobacco beads can be extruded and spheronized
using known extrusion and spheronization processes and can include
flavorants in addition to tobacco particulates (Zhuang, Abstract, ¶¶ 55–58,
74), which is reasonably pertinent to a problem in which the inventor is
involved, i.e., incorporating extruded and spheronized tobacco beads into
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tobacco products and the beads having flavorants. See Spec. ¶¶ 25, 31, 32;
see also Clay, 966 F.2d at 659 (“A reference is reasonably pertinent if . . . it
is one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.”).
As the Examiner finds (Ans. 4; Final Act. 2–3), Holton teaches a
tobacco product that includes a plurality of flavored beads (Holton, Abstract,
¶¶ 5, 7, 26, 49), which is from the same field of endeavor as the claimed
invention (and Zhuang) and is, likewise, reasonably pertinent to a problem in
which the inventor was involved.
Thus, on the record before us, we are persuaded that Zhuang is
analogous art to the claimed invention.
Appellant argues the Examiner’s rejection of claim 1 should be
reversed because Holton fails to disclose the “tobacco beads” element of the
claim and teaches away from extruding the tobacco, as required by the
claim. Appeal Br. 10–11. Appellant contends that although Holton
discloses flavored beads, there is no disclosure of tobacco flavored beads.
Id. at 10; see also Reply Br. 7 (arguing “Holton discloses water insoluble
flavored beads, not tobacco beads”). Appellant further contends Holton
teaches away from claim 1 because “Holton states that ‘the tobacco is not
provided in reconstituted form, extruded form, or any form that has resulted
from extraction and recombination of components of that tobacco.’” Appeal
Br. 10 (quoting Holton ¶ 21).
Appellant further argues one of ordinary skill would not have
combined Holton and Zhuang to arrive at the “tobacco beads” element of the
claim. Appeal Br. 10–11. In particular, Appellant contends the Examiner’s
rejection
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fails to provide a factual finding that the element to be
substituted (tobacco beads of Zhuang) performs the same
function as the element being substituted (the alleged
tobacco beads missing in Holton).
Id. at 11. See also Reply Br. 6 (arguing “substitution of the tobacco beads of
Zhuang for the water insoluble flavored beads of Holton goes against the
teachings of Holton to not use extruded tobacco”); Appeal Br. 12 (arguing
“the results of substituting the tobacco beads of Zhuang would not have been
predictable” and “there would be no apparent reason to ‘substitute’ the
tobacco beads of Zhuang for a component missing in Holton”).
We do not find Appellant’s arguments persuasive of reversible in the
Examiner’s rejection based on the fact-finding and reasoning the Examiner
provides at pages 4–7 of the Answer and pages 2–4 of the Final Office
Action, which a preponderance of the evidence supports.
Appellant’s contentions that “Holton fails to disclose tobacco beads”
and “there is no disclosure of tobacco flavored beads” (Appeal Br. 10–11)
are not persuasive because they are premised on what Appellant contends
the Holton reference teaches individually, and not the combined teachings of
the Holton and Zhuang references as a whole, and what the combined
teachings of the references would have suggested to one of ordinary skill in
the art. One cannot show non-obviousness by attacking references
individually where the rejection is based on a combination of references.
See In re Keller, 642 F.2d 413, 425 (CCPA1981). The Examiner does not
rely solely upon the Holton reference in the rejection for suggesting the
“tobacco beads” element of the claim.
Rather, as the Examiner finds (Ans. 4), Holton teaches the use of
flavored beads as flavorants in pouched, oral tobacco products and that the
materials and ingredients useful for the manufacture of the beads can be
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found within the filters of cigarettes. Holton ¶ 26 (disclosing “[f]lavorants
may be natural or synthetic, and the character of these flavors imparted”),
¶ 49 (disclosing “materials and ingredients useful for the manufacture of
essentially water insoluble flavored beads . . . found within the filters of
cigarettes”). As the Examiner further finds (Ans. 4), Zhuang teaches the use
of tobacco beads, which include flavorants in addition to tobacco
particulates, incorporated in the filters of cigarettes. Zhuang, Abstract, ¶¶ 2,
8, 74. As the Examiner determines (Ans. 4), it would have been obvious to
one of ordinary skill in the art to have used the tobacco beads of Zhuang as
the beads in Holton’s pouched, oral tobacco product because Holton teaches
the materials and ingredients useful for the manufacture of the beads can be
found within the filters of cigarettes. Holton ¶¶ 26, 49. See also KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
Appellant’s contention that Holton teaches away from claimed
invention (Appeal Br. 10) is not persuasive because, contrary to what
Appellant argues, paragraph 21 of Holton does not teach away from
extruding the tobacco. Rather, paragraph 21 of Holton merely discloses a
preferred embodiment. See Holton ¶ 21 (disclosing that “[m]ost preferably,
the tobacco is not provided in a[n] . . . extruded form”) (emphasis added).
The fact that paragraph 21 of Holton may describe a preferred embodiment
wherein the tobacco is not provided in extruded form, without more, does
not negate or teach away from the claimed tobacco beads or discourage one
of ordinary skill from modifying Holton’s beads to arrive at the claimed
beads. In re Susi, 440 F.2d 442, 445–46 (CCPA 1971) (disclosure of
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particularly preferred embodiments does not teach away from broader
disclosure or non-preferred embodiments); see also In re Applied Materials,
Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) (“A reference must be considered
for everything that it teaches, not simply the described invention or a
preferred embodiment.”).
Appellant’s arguments that one of ordinary skill would not have
combined Holton and Zhuang to arrive at the “tobacco beads” element of the
claim (Appeal Br. 10–11) and “there would be no apparent reason to
‘substitute’ the tobacco beads of Zhuang for a component missing in
Holton” (id. at 12) are not persuasive because, as previously discussed
above, the Examiner provides a reasonable basis, which is supported by a
preponderance of the evidence in the record, to evince why one of ordinary
skill in the art would have combined the teachings of Holton and Zhuang to
arrive at the claimed invention. Ans. 4 (explaining it would have been
obvious to one of ordinary skill in the art to have used the Zhuang’s tobacco
beads in Holton’s pouched, oral tobacco product because Holton teaches the
materials and ingredients useful for the manufacture of the beads can be
found within the filters of cigarettes).
Appellant’s disagreement as to the Examiner’s factual findings and
reasoning for combining the references, without more, is insufficient to
establish reversible error. SmithKline Beecham Corp. v. Apotex Corp., 439
F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement . . . as
to the existence of factual disputes do not amount to a developed
argument.”); see also KSR, 550 U.S. at 420 (explaining that any need or
problem known in the art can provide a reason for combining the elements in
the manner claimed).
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Appellant’s contention that the Examiner fails to provide a factual
finding that the tobacco beads of Zhuang perform the same function as the
beads in Holton (Appeal Br. 11) is not persuasive because, as the Examiner
finds and explains (Ans. 5), the beads of both Zhuang and Holton do
perform the same function, that is, flavoring the tobacco product into which
the beads are incorporated. See Zhuang, Abstract, ¶ 74; Holton ¶¶ 26, 49.
Appellant’s contention that “the results of substituting the tobacco
beads of Zhuang would not have been predictable” is not persuasive because
it is conclusory and unsupported by persuasive evidence in the record.
Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (explaining that mere lawyer’s arguments or conclusory statements,
which are unsupported by concrete factual evidence, are entitled to little
probative value). Rather, as the Examiner finds (Ans. 4–5), based on
Holton’s teachings regarding the use of flavored beads as flavorants in
pouched, oral tobacco products and that the materials and ingredients useful
for the manufacture of the beads can be found within the filters of cigarettes
(Holton ¶¶ 26, 49), and Zhuang’s teachings regarding tobacco beads, which
include flavorants in addition to tobacco particulates, being incorporated into
the filters of cigarettes (Zhuang, Abstract, ¶¶ 2, 8, 74), we find the results of
such combination would have been reasonably predictable to one of ordinary
skill in the art. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n
considering the disclosure of a reference, it is proper to take into account not
only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”).
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Appellant also argues the Examiner’s rejection of claim 1 should be
reversed because the cited art does not teach or suggest the “at least 10% of
the tobacco beads” and a “dissolvable liner” recitations of the claim. Appeal
Br. 12–13; see also Reply Br. 8–9 (same). Appellant contends that, in
contrast to the Examiner’s rejection, “there is no suggestion in Holton or
Zhuang of an inner filling of a pouch containing at least 10% tobacco
beads.” Appeal Br. 12. Appellant further contends that although Holton
discloses inner pouch 326, “there is no disclosure in Holton of a dissolvable
liner.” Id. at 13.
We do not find these arguments persuasive of reversible error in the
Examiner’s rejection based on the Examiner’s fact-finding and reasoning
provided at pages 5–7 of the Answer and pages 3–4 of the Final Office
Action, which a preponderance of the evidence supports. Regarding the
“inner filling includes an amount of at least 10% of the tobacco beads”
recitation of the claim, as the Examiner finds (Ans. 6; Final Act. 3–4),
because Holton teaches that all of the beads (100% of the beads) may be
located within inner pouch 326 (Holton ¶¶ 17, 20, 25–27), Holton teaches or
suggests that element of the claim. It is well-settled that where claimed
ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie
case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA
1976). Indeed, where “the claimed ranges are completely encompassed by
the prior art, the conclusion is even more compelling than in cases of mere
overlap.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Appellant’s contention that “there is no suggestion in Holton or
Zhuang of an inner filling of a pouch containing at least 10% tobacco beads”
(Appeal Br. 12) is conclusory and, without more, insufficient to establish
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reversible error in the Examiner’s factual findings in this regard.
De Blauwe, 736 F.2d at 705; see also In re Lovin, 652 F.3d 1349, 1356–57
(Fed. Cir. 2011) (holding that a “naked assertion” that the prior art fails to
teach a claim limitation is not an argument in support of separate
patentability).
Regarding the “adding a dissolvable liner to the pouch to form a lined
pouch” recitation of the claim, as the Examiner finds (Ans. 6–7), Holton
teaches that the pouch may be formed from dissolvable materials, which
would have reasonably suggested to one of ordinary skill in the art that
limitation of the claim. Holton ¶¶ 17, 47. In particular, as the Examiner
finds (Ans. 6), Holton teaches that the tobacco pouch includes both an outer
pouch and an inner pouch. Holton ¶ 17. As the Examiner further finds
(Ans. 6–7),
an exemplary pouch may be manufactured from materials,
and in such a manner, such that during use by the user, the
pouch undergoes a controlled dispersion or dissolution.
Such pouch materials may have the form of a mesh,
screen, perforated paper, permeable fabric, or the like. For
example, pouch material manufactured from a mesh-like
form of rice paper, or perforated rice paper, may dissolve
in the mouth of the user. As a result, the pouch and tobacco
formulation each may undergo complete dispersion within
the mouth of the user during normal conditions of use, and
hence the pouch and tobacco formulation both may be
ingested by the user.
Id. ¶ 47.
Appellant’s arguments do not reveal reversible error in the
Examiner’s analysis or factual findings in this regard. Appellant’s
contention that “there is no disclosure or suggestion in Holton of the claimed
step of ‘adding a dissolvable liner to the pouch to form a lined pouch’”
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because Holton discloses the inner pouch having strips or sheets, which may
be folded or incorporated into the pouch (Appeal Br. 13) is not persuasive
because, as the Examiner notes (Ans. 6), Holton’s disclosure is not limited to
that specific embodiment. See In re Mills, 470 F.2d 649, 651 (CCPA 1972)
(“[A] reference is not limited to the disclosure of specific working
examples.”); Susi, 440 F.2d at 445–46. The fact that Holton may describe an
embodiment where the inner pouch itself may not be a dissolvable liner,
without more, does not negate or take away from Holton’s broad disclosure
that the pouch may be manufactured, for example, from a mesh-like form of
rice paper, which may be dissolved in its entirety in the mouth and ingested
in the mouth of the user (Holton ¶ 47), and thus, fall within the scope of the
“dissolvable liner” element of the claim.
We, therefore, sustain the Examiner’s rejection of claim 1.
Claim 18
Appellant presents an additional argument for the patentability of
claim 18. Appeal Br. 13–14. Claim 18 depends from claim 1 and further
recites:
wherein the liner is made of a material selected from the
group consisting of cellulosic materials, gums, polymers,
starches, proteins, food grade materials, such as
polysaccharide, protein films, porous papers and fabrics,
synthetic polymers, and combinations thereof.
Appeal Br. 20 (Claims Appendix).
The Examiner determines that the combination of Holton and Zhuang
suggests the limitations of claim 18 and would have rendered the claim
obvious. Final Act. 2–5. Regarding the “wherein the liner is made of a
material selected from the group consisting of cellulosic materials, gums,
polymers, starches, proteins, food grade materials, such as polysaccharide,
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protein films, porous papers and fabrics, synthetic polymers, and
combinations thereof” recitation of the claim, the Examiner relies on Holton
for teaching that limitation of the claim. Id. at 5 (citing Holton ¶¶ 17, 26,
47).
In response to the Examiner’s rejection of claim 18, Appellant repeats
and relies in part on one of the arguments previously presented above in
response to the Examiner’s rejection of claim 1. Appeal Br. 13–14. In
particular, Appellant argues the Examiner’s rejection of claim 18 should be
reversed because Holton “fails to suggest the claimed step of ‘adding a
dissolvable liner to the pouch to form a lined pouch,’ as recited in Claim 1.”
Appeal Br. 14. We do not find this argument persuasive based on the
Examiner’s findings regarding Holton’s disclosure and for the same reasons
previously discussed above for affirming the Examiner’s rejection of claim
1.
Appellant further argues the Examiner’s rejection should be reversed
because
there is no disclosure in Holton of a liner made of a
material selected from the group consisting of cellulosic
materials, gums, polymers, starches, proteins, food grade
materials, such as polysaccharide, protein films, porous
papers and fabrics, synthetic polymers, and combinations
thereof (as recited in Claim 18).
Appeal Br. 14. Appellant contends that although Holton discloses xanthan
gum as an ingredient of a dissolvable pouch material, “Holton fails to
disclose a dissolvable liner of xanthan gum.” Id. at 14; see also Reply
Br. 10 (“Holton lacks an inner liner and consequently lacks xanthan gum in
an inner liner.”).
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We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. Rather, on the record before us, we determine a
preponderance of the evidence supports the Examiner’s determination that
the combination of Holton and Zhuang suggests the limitations of claim 18,
including “wherein the liner is made of a material selected from the group
consisting of cellulosic materials, gums, . . . and combinations thereof” and
would have rendered the claim obvious. In particular, as the Examiner finds
(Ans. 6–7), Holton discloses dissolvable pouch materials having “xanthan
gum” as a binding agents and the pouch, having an inner pouch, i.e., a liner
manufactured from materials including, for example, perforated rice paper,
perforated paper, permeable fabric, or the like. Holton ¶¶ 5, 17, 47. Holton
also discloses carboxymethylcellulose as a binding agent along with xanthan
gum and the materials being used in combination with other materials such
as ground cellulosics and the like. Id. ¶ 47. Appellant’s argument, without
more, does not reveal reversible error in the Examiner’s factual findings and
analysis in this regard.
We, therefore, sustain the Examiner’s rejection of claim 18.
Accordingly, we affirm the Examiner’s rejection of claims 1–10,
12–15, and 17–20 under 35 U.S.C. § 103(a) as obvious over the combination
of Holton and Zhuang.
Rejection B
The Examiner rejects claim 11 under § 103(a) as obvious over the
combination of Holton, Zhuang, and Michel. Final Act. 6. Claim 11
depends from claim 10 and further recites “wherein the binder is sugar beet
fiber.” Appeal Br. 19 (Claims Appendix).
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The Examiner determines that the combination of Holton, Zhuang,
and Michel suggests a method satisfying the limitations of claim 11 and
concludes the combination would have rendered the claim obvious. Final
Act. 6.
Appellant argues the Examiner’s rejection of claim 11 should be
reversed because Michel is non-analogous art. Appeal Br. 15; Reply
Br. 10–11. In particular, Appellant contends Michel is not reasonably
pertinent to the claimed invention because Michel relates to a study of dried
sugar beet pulp wherein the aim of the study was to obtain a product from
sugar beet pulp which can be used as dietary fiber. Appeal Br. 15.
We do not find Appellant’s argument persuasive of reversible error in
the Examiner’s rejection. Contrary to what Appellant argues, based on the
fact-finding and reasoning the Examiner provides at pages 7–8 of the
Answer and page 6 of the Final Office Action, we determine that Michel is
analogous art to the claimed invention because it is reasonably pertinent to a
problem in which the inventor is involved. Like the claimed invention,
which teaches the use of cellulosic material and/or fiber-based material,
including sugar beet fibers, as a binder for tobacco beads along with
flavorants in an extrusion and spheronizing aiding compositions (Spec.
¶¶ 25, 33, 37, 38), as the Examiner finds (Ans. 7), Michel teaches sugar beet
fiber is a natural saccharide. As Appellant acknowledges (Appeal Br. 15),
Michel also teaches incorporating sugar beet fiber as a dietary fiber into
products ingested by consumers. Michel, Abstract, 77–78.
Although Michel may not be necessarily from the same field of
endeavor as the claimed invention, we find that the reference is nonetheless
reasonably pertinent to a problem in which the inventor is involved and
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logically would have commended itself to the inventor’s attention in
considering the problem addressed by the claimed invention. Bigio, 381
F.3d at 1325 (explaining that a reference may qualify as analogous art even
“if the reference is not within the field of the inventor’s endeavor”); Clay,
966 F.2d at 659. Thus, on the record before us, we are persuaded that
Michel is analogous art to the claimed invention.
Appellant further argues the rejection of claim 11 should be reversed
because the Examiner
fails to articulate an apparent reason supported by the
requisite factual findings to establish that a person of
ordinary skill in the art would have been led to use the
sugar beet fiber of Michel in the tobacco beads of Zhuang.
Appeal Br. 15. Appellant contends the rejection is based on impermissible
hindsight and a person of ordinary skill in the art would not have been led to
modify the extruded and spheronized tobacco beads of Zhuang to include
sugar beet fiber of Michel and to add the modified tobacco beads to the
pouch of Holton. Id. at 15–16.
We do not find Appellant’s arguments persuasive of reversible error
because the Examiner does provide a reasonable basis, which is supported
by a preponderance of the evidence in the record, to evince why one of
ordinary skill in the art would have combined the teachings of the cited art to
arrive at the claimed invention. Ans. 7–8 (explaining it would have been to
one of ordinary skill in the art to have used the Michel’s beet sugar fiber as a
binder for the tobacco beads in modified-Holton’s pouched, oral tobacco
product because Zhuang and Holton teach the use of cellulosics and natural
saccharides as binder materials for beads, and beet sugar comprises cellulose
and is a natural polysaccharide); Zhuang ¶ 73; Holton ¶ 25; Michel,
Abstract.
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The Examiner’s proposed combination of Holton, Zhuang, and
Michel, therefore, is based on explicit disclosures in each of the cited
references, and what those disclosures reasonably would have suggested to
one of ordinary skill in the art, rather than based on impermissible hindsight
reconstruction as Appellant argues. See In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971) (acknowledging that “[a]ny judgment on obviousness is
in a sense necessarily a reconstruction based upon hindsight reasoning” but
such reconstruction is proper “so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant’s disclosure”).
Accordingly, we affirm the Examiner’s rejection of claim 11 under
35 U.S.C. § 103(a) as obvious over the combination of Holton, Zhuang, and
Michel.
Rejection C
The Examiner rejects claims 12 and 20 under § 103(a) as obvious over
the combination of Holton, Zhuang, and Sanghvi. Final Act. 6–7. Although
Appellant presents nominal arguments for the patentability of claims 12 and
20 enumerated under a separate heading at page 16 of the Appeal Brief,
Appellant does not present any new or additional substantive argument.
Instead, Appellant relies on arguments previously presented above in
response to the Examiner’s rejection of claim 1. Appeal Br. 16 (arguing
“Sanghvi fails to cure the deficiencies of Holton and Zhuang as applied to
Claim 1” and “Claims 12 and 20 are patentable over the cited references for
at least the same reasons that Claim 1 is patentable”).
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Thus, based on the fact-finding and reasoning provided by the
Examiner, and for principally the same reasons discussed above for
affirming the Examiner’s rejection of claim 1 (Rejection A), we affirm the
Examiner’s rejection of claims 12 and 20 under 35 U.S.C. § 103(a) as
obvious over the combination of Holton, Zhuang, and Sanghvi.
Rejection D
The Examiner rejects claim 16 under § 103(a) as obvious over the
combination of Holton, Zhuang, and Torrence. Final Act. 7–8. Although
Appellant presents nominal argument for the patentability of claim 16
enumerated under a separate heading at pages 16–17 of the Appeal Brief,
Appellant does not present any new or additional substantive argument.
Instead, Appellant repeats and relies on arguments previously presented
above in response to the Examiner’s rejection of claim 1. Appeal Br. 17
(arguing the Examiner’s rejection should be reversed “because Holton fails
to disclose the dissolvable liner as recited in Claim 1”).
Thus, based on the fact-finding and reasoning provided by the
Examiner, and for principally the same reasons discussed above for
affirming the Examiner’s rejection of claim 1 (Rejection A), we affirm the
Examiner’s rejection of claim 16 under 35 U.S.C. § 103(a) as obvious over
the combination of Holton, Zhuang, and Torrence.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–10, 12–15,
17–20
103(a) Holton, Zhuang 1–10, 12–15,
17–20

11 103(a) Holton, Zhuang,
Michel
11
12, 20 103(a) Holton, Zhuang,
Sanghvi
12, 20
16 103(a) Holton, Zhuang,
Torrence
16
Overall
Outcome
1–20

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)(iv).
AFFIRMED