R. J. REYNOLDS TOBACCO COMPANY

Patent Trials and Appeals Board

Sep 18, 2020

14802137 - (D) (P.T.A.B. Sep. 18, 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.
14/802,137 07/17/2015 Mark Frisbee R60999 11290US.1
(0973.9)
1084
26158 7590 09/18/2020
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
ROSARIO-APONTE, ALBA T
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK FRISBEE,
PAUL STAPLETON,
MILTON G. CARAWAN,
and FREDERIC PHILIPPE AMPOLINI
____________

Appeal 2020–001032
Application 14/802,137
Technology Center 3700
____________

Before ANTON W. FETTING, ULRIKE W. JENKS, and AMEE A. SHAH,
Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2020-001032
Application 14/802,137

2

STATEMENT OF THE CASE1
Mark Frisbee, Paul Stapleton, Milton G. Carawan, and Frederic
Philippe Ampolini (Appellant2) seek review under 35 U.S.C. § 134 of a final
rejection of claims 1–10, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented an aerosol delivery devices that may utilize
electrically generated heat for the production of aerosol. Specification 1:3–
5.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A control body
coupleable with a cartridge
that is equipped with a heating element and
contains an aerosol precursor composition,
the control body being coupleable with the cartridge
to form an aerosol delivery device
in which the heating element is configured to
activate and vaporize components of the aerosol
precursor composition,
the control body comprising:

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed June 10, 2019) and Reply Brief (“Reply Br.,” filed November 18,
2019), and the Examiner’s Answer (“Ans.,” mailed September 18, 2019),
and Final Action (“Final Act.,” mailed December 13, 2018).
2 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 RAI
Strategic Holdings, Inc. (Appeal Br. 1).

Appeal 2020-001032
Application 14/802,137

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[1] a first positive conductor connectable with a power supply;
[2] a second positive conductor connectable with the heating
element;
[3] a series pull-up resistor and switch connected to and
between the first positive conductor and second positive
conductor,
the switch being connected to and between the pull-up
resistor and second positive conductor;
and
[4] a microprocessor configured
to operate the switch in a closed state in a standby mode
in which the pull-up resistor is configured to cause
a logical high level of voltage at the second
positive conductor when the control body is
uncoupled with the cartridge,
and in which the heating element is unpowered and
causes a logical low level of the voltage at the second
positive conductor
when the control body is coupled with the
cartridge,
wherein the microprocessor is configured to
measure the voltage at the second positive
conductor
and
control operation of at least one functional element
of the aerosol delivery device based thereon.
The Examiner relies upon the following prior art:
Name Reference Date
Jordan US 2016/0374397 A1 Dec. 29, 2016
Claims 1–10 stand rejected under 35 U.S.C. § 102(a) as anticipated by
Jordan.
Appeal 2020-001032
Application 14/802,137

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ISSUES
The issues of novelty turn primarily on whether Jordan describes the
connections and voltage levels at those connections recited in the claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Jordan
01. Jordan is directed to an electronic vaping (e-vaping) device.
Jordan para. 3.
02. Jordan describes an electronic vaping (e-vaping) device that
includes a replaceable cartridge (or first section), a reusable
section (or second section), and light indicators. Jordan para. 59.
03. Jordan describes an electrical connection between the anode
110b of the power supply 110 and the heater 252 in the first
section 50 established through the PCB 116, the anode portion
(female anode) 102 in the second section 100, the male anode 208
in the first section 50, and a connection point 260 on the male
anode 208 with a first electrical lead of the heater 252. Jordan
para. 80.
04. Jordan describes the controller 500 applying power to the heater
252 according to the determined duty ratio. The microprocessor
502 controls the power modulation circuit 715 to provide a pulse
width modulated power signal to the heater 252 according to the
determined duty ratio. Jordan para. 133.
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Application 14/802,137

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05. Jordan describes the heater control circuit as including a
cartridge detector 1200. An input signal (or input voltage) Vin
may be input into the cartridge detector at terminal 1240 of the
cartridge detector. The terminal 1240 may be electrically
connected to the anode 102 of the female connecting portion 106
through, for example, wire 128 (see FIG. 3A) or other electrical
connections on the circuit board 116. Jordan para. 148.
06. Jordan describes a cartridge detector with a voltage divider.
The voltage divider has two resistors and a switching element
such as a MOSFET transistor. The MOSFET gate terminal
connects to terminal 1245. The MOSFET source terminal
connects to a resistor, and the MOSFET drain terminal connects to
the other resistor at node A. That is, the resistors and switch are
connected in series. Jordan para. 150.
07. Jordan describes input signal Vin depending on whether the
sections are attached. For example, if the sections are detached,
Vin is a low voltage level. If the sections are attached, Vin is a
high voltage level, due to the electrical connection to the power
supply. Jordan para. 154.
08. Jordan describes the switching element 1235 switching on and
off according to the output voltage of the voltage divider 1205 at
node A. For example, if the voltage at node A is above a
threshold voltage of the switching element 1235, the switching
element 1235 turns on to connect terminal 1250 to a common
voltage (or ground voltage). Here, the detection signal DET is
pulled into a low state in which the microprocessor 502 detects
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Application 14/802,137

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that the first section 50 is attached to the second section 100. If
the voltage at node A is less than the threshold voltage, the
switching element 1235 turns off and the detection signal DET
returns to a high state in which the microprocessor 502 detects that
the first section 50 is detached from the second section 100.
Jordan para. 155.
ANALYSIS
Initially we must construe the term “connected to” in limitation 3 of
claim 1. The Examiner determines that various components are connected
to one another, but does not show how this is so in the Final Action. See
Final Act. 2–3. Neither does the Examiner define how the term is used. See
id. It is unclear from visual inspection how, in particular, the Examiner
finds connections to the equivalent of the first positive connector as recited
in limitation 3. This connection is to the positive contact of the power
supply. The Examiner sheds some light on the interpretation in the Answer
in determining that
[t]he series pull-up resistor and switch are part of the circuit
board 116, and as shown in Fig. 3A, the circuit board 116 is
connected between the conductors 110a and 106a. The circuit
board 116 is illustrated in Fig. 5A with connections to the
battery 110, to the heater control circuit and therefore to the
heater as shown in Fig. 7.
Ans. 4. Thus, the Examiner appears to be interpreting “connected to” as
meaning joined or fastened together3 irrespective of intervening components.

3 American Heritage Dictionary,
https://www.ahdictionary.com/word/search.html?q=connected, last visited
9/8/2020.
Appeal 2020-001032
Application 14/802,137

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The Examiner interprets all components in a circuit, no matter how far apart,
as connected to one another. See id. As this is the first instance in which the
Examiner shows this to be the interpretation, the Appellant replies that this is
not a reasonable construction, citing In re Power Integrations, Inc., 884 F.3d
1370 (Fed. Cir. 2018). Reply Br. 3.
Power Integration had a similar construction issue, although the
phrase there was “coupled to.” The court there found the PTAB’s
construction to be unreasonably broad where
[u]nder the board’s overly expansive view of the term
“coupled,” every element anywhere in the same circuit is
potentially “coupled” to every other element in that circuit, no
matter how far apart they are, how many intervening
components are between them, or whether they are connected in
series or in parallel.
Id. at 1376. The court held that looking to the disclosure was necessary to
determine how to construe the term. In the instant case, every instance
shown in the drawings of the components referred to as connected to one
another shows an immediate electrical connection such that there is no or
negligible voltage drop across the connection. See, e.g., Spec. 19–21, Fig. 3
That is to say the connection is a direct electrical circuit connection with no
intervening components.
Thus we construe “connected to” as meaning connected using a direct
electrical circuit connection with no intervening components. In particular,
although Jordan describes how “electrical connection between the anode
110b of the power supply 110 and the heater 252 in the first section 50 [are]
established through the PCB 116” (FF 03), because this is a connection
through the entire printed circuit board, it has intervening components and is
not within the scope of “connected to” as properly construed.
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Application 14/802,137

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As to claim 1, the Examiner determines that Jordan describes
a control body (100) coupleable with a cartridge (50) that is
equipped with a heating element (250, 252) . . . , the control
body comprising a first positive conductor (p.0072-0073)
connectable with a power supply (110); a second positive
conductor connectable with the heating element (p.0080); a
series pull-up resistor and switch connected to and between the
first positive conductor and second positive conductor (as
shown in Fig. 12; p.0154-0155), the switch being connected to
and between the pull-up resistor and second positive conductor
(as shown in Fig. 12; p.0154-0155); and a microprocessor (500,
502) configured to operate the switch in a closed state in a
standby mode in which the pull-up resistor is configured to
cause a logical high level of voltage at the second positive
conductor when the control body is uncoupled with the
cartridge (p.0154-0155), and in which the heating element is
unpowered and causes a logical low level of the voltage at the
second positive conductor when the control body is coupled
with the cartridge (p.0154-0155; p.0159-0160).
Final Act. 2–3.
Figure 12 that the Examiner refers to is below and is annotated.
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Application 14/802,137

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Annotated Jordan Figure 12 showing a cartridge detection circuit.
The Appellant contends that Jordan’s resistor (1225) and switch
(1230) are not in series, at least given the presence of capacitive structure
(1233); that Jordan’s terminal (1240) and resistor (1220) are not connected
to the first positive conductor (110a); and that Jordan’s switch (1230) is not
connected to either the first positive conductor (110a) or the second positive
conductor (106a), and so Jordan’s series resistor (1220) and switch (1230)
are not connected to and between the first positive conductor (110a) or the
second positive conductor (106a). Appeal Br. 4–5.
The Examiner answers that “[a]s shown in Fig. 3A, 5A, 7 and 12 . . .
Jordan teaches a series pull-up resistor (1220, 1225) and switch (1230)
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Application 14/802,137

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connected to and between the first positive conductor (110a) and second
positive conductor (106a).” Ans. 4. The Appellant replies that “terminal
(1240) - and thus resistor (1220) - is connected to the anode (102), and
not either the first positive conductor (110a) or the second positive
conductor (106a).” Reply Br. 4. We agree that the Examiner fails to show
how Jordan describes connecting the resistor and switch to the equivalent of
the recited first positive conductor. Instead, Jordan’s resistor (1225) is
connected to ground, equivalent to a negative conductor. We determine in
the claim construction above that the Examiner’s alternate theory that the
resistors are connected to the first positive conductor through the printed
circuit requires an unreasonable construction of “connected to,” even under
the broadest reasonable interpretation.
The Appellant also contends that Jordan does not describe that when
the first and second sections (50, 100) are detached, resistor (1220) or
resistor (1225) causes a logical high level at the second positive conductor
(106a), because Jordan does not even describe that the second positive
conductor (106a) has a logical high level when the first and second sections
(50, 100) are detached, as required by limitation 4 of claim 1. Appeal Br. 6.
The Examiner answers that
Jordan teaches a microprocessor (500, 502) configured to
operate the switch in a closed state in a standby mode in which
the pull-up resistor is configured to cause a logical high level of
voltage at the second positive conductor when the control body
is uncoupled with the cartridge (p.0154-0155). A logic high
level of a detection signal is caused when the first section 50 is
detached from the second section 100 (p.0155).
Ans. 5. The Appellant replies that “the logic high level of the detection
signal DET is not a logical high level at the second positive conductor
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(106a) (i.e., cathode portion 106a). The detection signal DET instead feeds
directly into the microprocessor (502).” Reply Br. 6. We agree that the
Examiner is referring to Jordan’s terminal 1250, which connects to a
microprocessor input, and not to any conductor that is connected electrically
with the heater. Unlike instant claim 1 and Figure 3 which connect the
cartridge detection signal connection directly to the positive terminal of the
heater, Jordan directs the detection signal solely as an input to a
microprocessor. FF 08. Indeed, Jordan describes the signal at the terminal
connecting to the heater, which feeds Vin, as having the opposite
relationship as claimed, being high when the heater is connected and low
when disconnected. FF 07.
The Appellant similarly contends that Jordan does not describe that
when the first and second sections (50, 100) are attached, resistor (1220) or
resistor (1225) causes a logical low level at the second positive conductor
(106a), because Jordan does not even describe that the second positive
conductor (106a) has a logical low level when the first and second sections
(50, 100) are attached. Appeal Br. 7. This is just the complementary
operation to the detachment argument above, and is equally persuasive here.
We therefore determine that the Examiner’s findings are erroneous as
to both limitations 3 and 4 of claim 1. The remaining claims depend from
claim 1.
CONCLUSIONS OF LAW
The rejection of claims 1–10 under 35 U.S.C. § 102(a)(2) as
anticipated by Jordan is improper.
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Application 14/802,137

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CONCLUSION
The rejection of claims 1–10 is reversed.
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
1–10 102(a)(2) Jordan 1–10

REVERSED