R.J. REYNOLDS TOBACCO COMPANY

Patent Trials and Appeals Board

Feb 18, 2020

14537181 - (D) (P.T.A.B. Feb. 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.
14/537,181 11/10/2014 Brian Keith Nordskog R60999 10810US (0719.1) 8665
26158 7590 02/18/2020
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
DARNELL, BAILEIGH K
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
02/18/2020 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):
BostonPatents@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 BRIAN KEITH NORDSKOG and
DARLENE MADELINE LAWSON
_______________
Appeal 2019-003904
Application 14/537,181
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–11, 13, 14, 36, and 37 of Application

1 In our Decision, we refer to the Specification filed November 10, 2014
(“Spec.”) of Application 14/537,181 (“the ’181 Application”); the Final
Office Action dated April 20, 2018 (“Final Act.”); the Appeal Brief filed
September 19, 2018 (“Appeal Br.”); the Examiner’s Answer dated February
19, 2019 (“Ans.”); and the Reply Brief filed April 19, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies R.J. Reynolds Tobacco Co. as the real
party in interest. Appeal Br. 1.
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14/537,181. Final Act. 2; Appeal Br. 5. We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’181 Application relates to products for human consumption that
are derived from or incorporate tobacco. See Spec 1:1–2. The ’181
Application describes incubating tobacco seeds in a menthol solution and
placing these menthol-treated seeds into a cigarette filter. Id. 27:3–22.
According to the Specification, the seed-containing filter introduces
detectable amounts of menthol flavorant into the cigarette’s mainstream
smoke. Id. 27:23–26.
Claim 1 is representative of the ’181 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief with key
limitations italicized.
1. A tobacco product comprising a tobacco formulation and
at least one treated plant seed or portion thereof, wherein the at
least one treated plant seed or portion thereof has one or more
modifying ingredients infused therein.
Appeal Br. 12 (emphasis added).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Coleman III, et al.
(“Coleman”)
US 2011/0259353 A1 Oct. 27, 2011
Dube et al.
(“Dube”)
US 2012/0192880 A1 Aug. 2, 2012
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REJECTIONS
On appeal, the Examiner maintains the following rejections:3
1. Claims 1–6, 9–11, 13, 14, 36, and 37 under 35 U.S.C. § 102(a)(1)
as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
obvious over Coleman. Final Act. 3–8.
2. Claims 7 and 8 under 35 U.S.C. § 103 as obvious over Coleman in
view of Dube. Final Act. 9.
DISCUSSION
Ground 1: Rejection of claims 1–6, 9–11, 13, 14, 36, and 37 as
anticipated by or, in the alternative, as obvious over Coleman
According to the Examiner, Coleman anticipates or would have
rendered obvious each limitation recited in claims 1–6, 9–11, 13, 14, 36, and
37. Final Act. 3–8.
Appellant’s arguments focus on limitations recited in independent
claim 1 and dependent claim 13. Appeal Br. 2–10; Reply Br. 1–4. We
select claim 1 as representative of the group. Claims 2–6, 9–11, 14, 36, and
37 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). We discuss
claim 13 separately.
a. Claims 1–6, 9–11, 14, 36, and 37
Regarding claim 1, the Examiner finds Coleman discloses tobacco
products in which tobacco is combined with Nicotiana species plant seeds,
portions thereof, or processed materials which incorporate processed seed

3 Because this application was filed after the March 16, 2013, effective date
of the America Invents Act, we refer to the AIA version of the statute.
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components. Final Act. 3. The Examiner finds Coleman describes that
Nicotiana species plant seeds may be stored post-harvesting, then processed
or treated for later use. Id.
The Examiner finds Coleman’s teaching that Nicotiana species plant
seeds are “admixed with other components including flavorants, buffering
agents, antioxidants, colorants, humectants, etc.” discloses or suggests “the
claimed at least one treated plant seed or portion thereof having one or more
modifying ingredients infused therein.” Id. (citing Coleman ¶ 51).
According to the Examiner, the process of infusing or incorporating
the claimed modifying ingredient into the product does not confer
patentability because claim 1 is a product-by-process claim. Final Act. 3.
The Examiner determines that the claimed tobacco product is the same or
would have been obvious in view of Coleman’s tobacco product as both
products include seeds with an incorporated modifying ingredient. Id.
The Examiner determines in the alternative that, although Coleman
does not explicitly disclose “‘infusing’ the seeds,” it would have been
obvious to one of ordinary skill in the art at the time of the invention to
modify Coleman “to ‘infuse’ the processed seeds.” Id. 4. According to the
Examiner, “infusing is considered to be a functional equivalent of
[Coleman’s] admixing; more specifically, infusing is another way of
achieving the same end result of a tobacco seed with a modifying
ingredient.” Id.
There is no dispute that the definition of the claim term “infused”
requires that the claimed modifying ingredients enter the seeds’ interior to
some extent. Appeal Br. 5; Ans. 4 (“[T]he common understanding of the
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term ‘infuse’ involves the association of a component within another
component (e.g., by permeation)”).
Appellant argues that claim 1 is not properly construed as a product-
by-process claim. Appeal Br. 5. Appellant argues that claim 1 is
distinguished from Coleman as the Specification describes incubating
tobacco seeds in a menthol solution for 4 weeks to infuse menthol within the
seeds. Id.; see Spec. 27:3–22. Appellant argues that Coleman is silent with
respect to any treatment that would have resulted in seeds with a similar
structure of “one or more components infused within the seed[s].” Appeal
Br. 6. According to Appellant, Coleman’s mere admixing of seeds and other
components would not have resulted in “seeds that are ‘infused’ with such
components.” Id. 9.
For purposes of § 103, a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom. In re Fritch, 972
F.2d 1260, 1264–65 (Fed. Cir. 1992). The question under 35 U.S.C. § 103 is
not merely what a reference teaches, but what it would have suggested to
one of ordinary skill in the art at the time the invention was made. All
disclosures of the prior art must be considered. In re Lamberti, 545 F.2d
747, 750 (CCPA 1976).
Although the “treated plant seed or portion thereof” having “one or
more modifying ingredients infused therein,” as recited in claim 1, is not
explicitly disclosed in Coleman for purposes of § 102(a)(1), the prior art
would have suggested the requisite seed or portion thereof infused with a
modifying ingredient. Appeal Br. 8 (Claims App.). As the Examiner finds,
Coleman explicitly discloses that “[t]he seed, processed seed and seed
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isolates can be admixed with other components,” which includes flavorants.
Coleman ¶ 51; see also Ans. 4. We note Coleman explicitly discloses that it
is desirable to enhance cigarette smoke with flavorants, such as menthol.
Coleman ¶ 4.
The Specification, furthermore, describes that “[a]ny means,” e.g.,
soaking or tumbling, “by which a liquid can be associated with a plant seed
is intended to be encompassed according to the present application, which
would allow for one or more modifying ingredients to become associated
with (e.g., infused into) a plant seed.” Spec. 11:15–18; see also id. 11:11–
15.
As the Examiner reasoned persuasively, if seeds are admixed with
Coleman’s “other components,” particularly components in a liquid solution,
these components “will permeate the seed or portion thereof and[,]
therefore[,] meet the structural limitation of the claimed modifying
ingredient being within the treated plant seed or portion thereof.” Ans. 4.
A prima facie case of obviousness may be shown where, as here,
structural similarities exist between the claimed and prior art compositions
and reason or motivation exists to make the claimed composition. In re
Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (en banc) (“the structural
similarity between claimed and prior art subject matter, proved by
combining references or otherwise, where the prior art gives reason or
motivation to make the claimed compositions, creates a prima facie case of
obviousness”); In re Best, 562 F.2d 1252, 1255–56 (Fed. Cir. 1977); In re
Wilder, 429 F.2d 447, 450 (CCPA 1970). Where the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
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prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. Best, 562 F.2d at 1256.
Appellant has not met the burden of proving that Coleman’s seeds do
not necessarily or inherently possess modifying ingredients infused therein.
Therefore, Coleman’s recognition that it is desirable to admix components,
such as tobacco flavorants, with seeds would have suggested the disputed
limitation recited in claim 1. Comparing Coleman’s disclosure with claim 1,
we find that the claim encompasses the prior art.
We sustain the rejection of claim 1 as obvious over Coleman. For the
same reasons, we sustain the rejection of claims 2–6, 9–11, 14, 36, and 37.
b. Claim 13
Claim 13 is reproduced below from the Claims Appendix of the
Appeal Brief with key limitations italicized.
13. The tobacco product of claim 1, wherein the treated plant
seed or portion further comprises one or more diluting agents
associated therewith.
Appeal Br. 13 (emphasis added).
The Examiner finds Coleman’s combination of triglyceride-containing
seed isolates with a flavorant discloses or suggests a triglyceride diluting
agent. Final Act. 6 (citing Coleman ¶ 54).
Appellant does not dispute that Coleman describes the claimed
diluting agent. Appeal Br. 9. Appellant, however, argues that Coleman’s
diluting agent “is not . . . in combination with a seed at all.” Id. Appellant
argues that Coleman instead describes a diluting agent combined with
material removed from a seed, which is subsequently incorporated within a
capsule. Id.
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We are not persuaded that material removed from a seed is not
encompassed by the language recited in claim 13. As the Examiner notes,
claim 1, which claim 13 depends from, “requires ‘at least one treated plant
seed or portion thereof having one or more modifying ingredients infused
therein.’” Ans. 6 (quoting claim 1 (Appeal Br. 13 (Claims App.)).
Appellant, therefore, has failed to distinguish Coleman’s seed isolates from
the “plant seed or portion” recited in claim 13. Appeal Br. 13 (Claims App.)
(emphasis added).
We sustain the rejection of claim 13 as obvious over Coleman.
Ground 2: Rejection of claims 7 and 8 as anticipated by or, in the
alternative, as obvious over Coleman in view of Dube
Appellant merely argues that the Examiner’s assertions do not cure
the deficiencies in Ground 1 (anticipated by or obviousness over Coleman).
Appeal Br. 10.
Having found no deficiencies in Coleman in Ground 1, supra, we
sustain the rejection of claims 7 and 8 as obvious over Coleman in view of
Dube.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–6, 9–11,
13, 14, 36,
37
102(a)(1)
or 103
Coleman 1–6, 9–11,
13, 14, 36,
37

7, 8 103 Coleman, Dube 7, 8
Claims
Rejected
1–11, 13, 14,
36, 37

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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