Sebastian, Andries Don. et al.

Patent Trials and Appeals Board

Dec 11, 2019

14484956 - (D) (P.T.A.B. Dec. 11, 2019)

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.
14/484,956 09/12/2014 Andries Don Sebastian R60999 10530US.1
(0614.4)
4385
26158 7590 12/11/2019
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
WILL, KATHERINE A
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
12/11/2019 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):
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDRIES DON SEBASTIAN, ALTON BUSBEE,
JEREMY BARRETT MABE, YAN PU, ERIC TAYLOR HUNT,
and BRUCE ALAN BENGTSSON
____________

Appeal 2019-003166
Application 14/484,956
Technology Center 1700
____________

Before JEFFREY T. SMITH, 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
decision rejecting claims 1–19.3 We have jurisdiction under 35 U.S.C.
§ 6(b).

1 In this Decision, we refer to the Specification filed Sept. 12, 2014
(“Spec.”); Final Office Action dated Dec. 29, 2017 (“Final Act.”); Advisory
Action dated June 14, 2018 (“Adv. Act. “); Appeal Brief filed July 2, 2018,
as amended Aug. 20, 2018 (“Appeal Br.”); Examiner’s Answer dated Jan. 1,
2019 (“Ans.”); and Reply Brief filed Mar. 11, 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 R.J. Reynolds Tobacco Company
as the real party in interest. Appeal Br. 1.
3 Claims 20–38 are withdrawn. Appeal Br. 2.
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We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a pouched product adapted for
release of a water-soluble component therefrom. Abstract; Spec. 3. Claim 1
illustrates the claimed subject matter on appeal and is reproduced below
from the Claims Appendix to the Appeal Brief:
1. A pouched product adapted for release of a water-soluble
component therefrom, comprising:
an outer water-permeable pouch defining a cavity
containing a composition comprising a water-soluble
component capable of being released through the water-
permeable pouch and having a surface area, wherein the outer
water-permeable pouch comprises a nonwoven web comprising
a plurality of heat sealable binder fibers blended with a second
plurality of dissimilar fibers, the nonwoven web being carded,
hydroentangled, and point bonded.
Appeal Br. 11 (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
Hansson et al. (“Hansson”) US 2005/0061339 A1 Mar. 24, 2005
Salamero et al. (“Salamero”) US 2008/0085649 A1 Apr. 10, 2008
Iwasaki et al. (“Iwasaki”) US 7,498,281 B2 Mar. 3, 2009
Sebastian et al. (“Sebastian”) US 2012/0103353 A1 May 3, 2012
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REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1, 3–12, and 16–19 are rejected under 35 U.S.C. § 103
as being unpatentable over Sebastian in view of Salamero (“Rejection 1”).
Ans. 3.
2. Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable
over Sebastian in view of Salamero, and further in view of Iwasaki
(“Rejection 2”). Id. at 7.
3. Claims 13–15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Sebastian in view of Salamero, and further in view of
Hansson (“Rejection 3”). Id. at 8.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer,
Final Office Action, and Advisory Action, which we adopt as our own. We
add the following primarily for emphasis.
Rejection 1
The Examiner rejects claims 1, 3–12, and 16–19 under § 103 as
obvious over the combination of Sebastian and Salamero (Ans. 3–7).
In response, Appellant presents argument for the patentability of claim
1, but does not present separate argument for the patentability of remaining
claims 3–12 and 16–19. Appeal Br. 4. We select claim 1 as representative
and claims 3–12 and 16–19 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
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The Examiner determines that the combination of Sebastian and
Salamero suggests a pouched product satisfying all of the limitations of
claim 1 and concludes the combination would have rendered the claim
obvious. Ans. 3–4. On the record before us, we find a preponderance of the
evidence and sound technical reasoning support the Examiner’s findings and
determination that the combination of Sebastian and Salamero suggests a
pouched product satisfying all of the limitations of claim 1 and conclusion
that the combination would have rendered the claim obvious. Sebastian,
Abstract, Fig. 1, ¶¶ 29, 51, 56–59; Salamero, Abstract, ¶¶ 6, 14, 31.
Appellant principally argues the Examiner’s rejection should be
reversed because Salamero is non-analogous art. Appeal Br. 5–7; Reply
Br. 2–3. In particular, Appellant contends Salamero relates to a different
field of endeavor than Sebastian and the claimed invention, and one of
ordinary skill in the art would not have looked to Salamero for modifying
the smokeless tobacco product of Sebastian. Appeal Br. 6. Appellant
further contends Salamero is not reasonably pertinent to the particular
problem with which the inventors of the claimed invention were concerned
because “there is nothing in Salamero that even relates to a nonwoven
material that is suitable for oral use as a pouch material encapsulating a
tobacco material.” Id. at 7; see also Reply Br. 3 (arguing there is nothing in
Salamero that “would be useful and/or applicable to nonwoven materials for
use in a pouched product adapted for release[] of a water-soluble
component”).
Appellant also argues the Examiner has failed to explain how and why
the person of ordinary skill in the art would have combined the references.
Appeal Br. 4. Appellant contends the Examiner has relied upon the present
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application as a roadmap to identify nondescript portions of the cited art and
thus, the rejection is “based on improper hindsight and not on what one of
skill in the art actually would have done.” Id. at 4.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. 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 an inventor’s attention in considering his problem.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Contrary to what Appellant argues, based on the fact-finding and
reasoning provided by the Examiner at pages 3–4 and 11–12 of the Answer,
we determine Salamero is analogous art. As the Examiner explains
(Ans. 11–12), although Salamero is not specifically directed to a pouch for
use in a smokeless tobacco product, the reference is, nonetheless, analogous
art because it discloses a nonwoven fabric material with certain strength
properties, which is reasonably pertinent to a problem in which the inventors
are involved. 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”).
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As the Examiner finds (Ans. 12), Salamero is a reasonably pertinent
reference to both the claimed invention and Sebastian because it teaches
reducing elongation of a nonwoven fabric material to achieve desired
strength properties. Salamero ¶¶ 6, 14. As the Examiner further finds (Ans.
4), Salamero discloses a nonwoven fabric material, which is prepared from
carded fibrous layers that can be hydroentangled and thermally bonded to
provide a fabric having high tensile modulus to avoid elongation. Salamero,
Abstract, ¶¶ 6, 14, 18–21. As the Examiner also finds (Ans. 3), Sebastian
likewise teaches a nonwoven fabric material that is carded and thermally
bonded and suggests thermal bonding and hydroentanglement may be used
together to bond the carded fibrous web. Sebastian ¶¶ 55–59.
As the Examiner further finds (Ans. 12), like both Salamero and
Sebastian, Appellant’s Specification discloses that the nonwoven fabric
material of the claimed invention uses two bonding processes, i.e.,
hydroentangling and point bonding, to increase the tensile strength of the
nonwoven web and reduce elongation characteristics. Spec. 18:15–27.
Regarding the particular problem in which the inventors are involved, the
Specification explicitly discloses that “[t]oo much elongation of the
nonwoven web can cause the web to shrink during processing” (Spec.
18:18–20) and the need “to avoid or at least reduce such an elongation
problem” (id. at 18:22).
Thus, based on Salamero’s teachings regarding a nonwoven fabric
material having high tensile modulus to avoid elongation (Salamero ¶¶ 6,
14), Sebastian’s teachings regarding a nonwoven fabric material that is
carded and bonded (Sebastian ¶¶ 55–59), and the Specification’s disclosure
regarding the need for and claimed invention comprising a nonwoven fabric
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material that is hydroentangled, carded, and bonded to increase the tensile
strength of the nonwoven web and reduce elongation characteristics (Spec.
18:15–17), we are persuaded that the Salamero reference logically would
have commended itself to an inventor’s attention in considering the problem
addressed by the claimed invention. Clay, 966 F.2d at 659.
The Examiner also provides a reasonable basis, which is supported by
a preponderance of the evidence in the record, to evince why one of ordinary
skill would have combined the teachings of the cited art to arrive at the
claimed invention. Ans. 4 (explaining that one of ordinary skill in the art
would have had reason to modify Sebastian’s smokeless tobacco pouch
product to include Salamero’s nonwoven fabric material in order to
strengthen the fabric and maintain its physical integrity); see also KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or
problem known in the art can provide a reason for combining the elements in
the manner claimed).
Appellant’s disagreement as to the Examiner’s factual findings and
reasoning for combining the references, including Appellant’s contention
that Salamero is non-analogous art, without more, is insufficient to establish
reversible error. Cf. 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.”).
Appellant’s contentions that the Examiner has relied upon Appellant’s
application as a “roadmap” (Appeal Br. 4) and the rejection is “based on
improper hindsight and not on what one of skill in the art actually would
have done” (id. at 4) are not persuasive because they are conclusory and
unsupported by persuasive evidence in the record. Attorney argument is not
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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).
Accordingly, we affirm the Examiner’s rejection of claims 1, 3–12,
and 16–19 under 35 U.S.C. § 103 as obvious over the combination of
Sebastian and Salamero.
Rejection 2
The Examiner rejects claim 2 under § 103 as obvious over the
combination of Sebastian, Salamero, and Iwasaki (Ans. 7–8).
Claim 2 depends from claim 1 and further recites “wherein less than
about 60% of the surface area of the pouch is point bonded.” Appeal Br. 11
(Claims Appendix). The Examiner determines that the combination of
Sebastian, Salamero, and Iwasaki suggests a pouched product satisfying all
of the limitations of claim 2 and concludes the combination would have
rendered the claim obvious. Ans. 7–8.
Appellant argues that the Examiner’s rejection of claim 2 should be
reversed because the cited art does not teach or suggest the “wherein less
than about 60% of the surface area of the pouch is point bonded” recitation
of the claim. Appeal Br. 8–9. In particular, Appellant contends that neither
Sebastian nor Salamero provide any guidance as to the percentage of the
surface area of the nonwoven web that should be point bonded, and there is
no mention in Iwasaki of hydroentangling the nonwoven it discloses. Id.
at 8. Appellant also contends the Examiner’s rejection “lacks any proper
showing of predictability” and is “based on knowledge of the present
application and not what a person of ordinary skill in the art would actually
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predict from the combined disclosures of used Sebastian, Salamero, and
Iwasaki.” Id. at 8.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. Rather, on the record before us, we find a
preponderance of the evidence and sound technical reasoning support the
Examiner’s findings and determination that the combination of Sebastian,
Salamero, and Iwasaki suggests a pouched product satisfying all of the
limitations of claim 2, including “wherein less than about 60% of the surface
area of the pouch is point bonded,” and conclusion that the combination
would have rendered the claim obvious. Sebastian, Abstract, Fig. 1, ¶¶ 29,
51, 56–59; Salamero, Abstract, 6, 14, 31; Iwasaki, Abstract, 3:31–4:11,
3:62–4:11.
Appellant’s contentions that neither Sebastian nor Salamero provide
any guidance as to the percentage of the surface area of the nonwoven web
that should be point bonded (Appeal Br. 8), and there is no mention in
Iwasaki of hydroentangling (id. at 8), are not persuasive because Appellant
attacks the references individually rather than the combined teachings of the
prior art as a whole. One cannot show non-obviousness by attacking
references individually where the rejection is based on a combination of
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant’s
argument is premised on what Appellant contends the references each
teaches individually, and not what the combined teachings of the cited art as
a whole would have suggested to one of ordinary skill in the art.
Contrary to what Appellant’s argument seems to suggest, Iwasaki is
relied upon in the rejection for teaching or suggesting the “wherein less than
about 60% of the surface area of the pouch is point bonded” recitation of the
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claim. In particular, as the Examiner finds (Ans. 7–8, 12–13), Iwasaki
discloses a nonwoven fabric with a bonding ratio of 5 to 30% and preferably
from 7 to 27% (Iwasaki 3:31–4:11), which falls within the claimed range of
less than about 60%. See In re Petersen, 315 F.3d 1325, 1329–1330 (Fed.
Cir. 2003) (holding that when “the claimed ranges are completely
encompassed by the prior art, the [obviousness] conclusion is even more
compelling than in cases of mere overlap.”).
Appellant’s argument reveals no reversible error in the Examiner’s
factual findings and analysis in this regard. In particular, Appellant has not
proffered or directed us to sufficient evidence in the record to suggest the
criticality of the claimed percentage of the surface area of the pouch being
point bonded or that the claimed range achieves unexpected results relative
to the prior art. Peterson, 315 F.3d at 1330 (explaining that “the existence of
overlapping or encompassing ranges shifts the burden to the applicant to
show that his invention would not have been obvious”).
Appellant’s contentions that the rejection lacks any proper showing of
predictability and is not based on what a person of ordinary skill in the art
would actually predict from the combined disclosures of the cited references
(Appeal Br. 8) are conclusory and, without more, insufficient to rebut or
otherwise establish reversible error in the Examiner’s findings and
conclusions in this regard. De Blauwe, 736 F.2d at 705.
Accordingly, we affirm the Examiner’s rejection of claim 2 under
35 U.S.C. § 103 as obvious over the combination of Sebastian, Salamero,
and Iwasaki.
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Rejection 3
The Examiner rejects claims 13–15 under § 103 as obvious over the
combination of Sebastian, Salamero, and Hansson (Ans. 8–10).
In response, Appellant presents argument for the patentability of
claims 13–15 as group. Appeal Br. 9. We select claim 13 as representative
and claims 14 and 15 stand or fall with claim 13. 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 13 depends from claim 1 and further recites
wherein the water-permeable pouch comprises at least
two nonwoven layers, each nonwoven layer comprising a
plurality of heat sealable binder fibers, and wherein one
of the at least two nonwoven layers is relatively
hydrophilic and one of the at least two nonwoven layers
is relatively hydrophobic.
Appeal Br. 13 (Claims Appendix).
The Examiner determines that the combination of Sebastian,
Salamero, and Hansson suggests a pouched product satisfying all of the
limitations of claim 13 and concludes the combination would have rendered
the claim obvious. Ans. 8–9, 13–14. On the record before us, we find a
preponderance of the evidence and sound technical reasoning support the
Examiner’s findings and determination that the combination of Sebastian,
Salamero, and Hansson suggests a pouched product satisfying all of the
limitations of claim 13, and conclusion that the combination would have
rendered the claim obvious. Sebastian, Abstract, Fig. 1, ¶¶ 29, 51, 56–59;
Salamero, Abstract, ¶¶ 6, 14, 31; Hansson, Abstract, ¶¶ 31, 69, 100–102.
Appellant argues that the Examiner’s rejection should be reversed
because “there is no mention in Hansson of nonwoven materials, let alone
materials that are carded, hydroentangled and point bonded.” Appeal Br. 10.
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We do not find this argument persuasive of reversible error in the
Examiner’s rejection because it is based on what Appellant contends the
Hansson reference teaches individually and not the combined teachings of
the cited art as a whole. Keller, 642 F.2d at 425. As the Examiner explains
(Ans. 13), Hansson is relied upon in the rejection for disclosing a bilayer
membrane with one layer being hydrophobic and the other being hydrophilic
(Hansson ¶¶ 31, 92, 100–102); while, as previously discussed above, the
combination of Sebastian and Salamero is relied upon for suggesting the
nonwoven web being carded, hydroentangled, and point bonded element of
the claim (Sebastian, Abstract, Fig. 1, ¶¶ 29, 51, 56–59; Salamero, Abstract,
¶¶ 6, 14, 31).
Appellant’s contention that “there is no reason that one of ordinary
skill in the art would predictably combine the tobacco products of Hansson
with the products of Sebastian and/or Salamero” (Appeal Br. 10) is equally
unpersuasive because it is conclusory and unsupported by persuasive
evidence in the record.
Accordingly, we affirm the Examiner’s rejection of claims
13–15 under 35 U.S.C. § 103 as obvious over the combination of Sebastian,
Salamero, and Hansson.

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 3–12,
16–19
103 Sebastian, Salamero 1, 3–12,
16–19

2 103 Sebastian, Salamero,
Iwasaki
2
13–15 103 Sebastian, Salamero,
Hansson
13–15
Overall
Outcome
1–19

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