BATMARK LIMITED

Patent Trials and Appeals Board

Mar 26, 2020

14306831 - (D) (P.T.A.B. Mar. 26, 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.
14/306,831 06/17/2014 Helmut BUCHBERGER 4839.23WOUS03 6632
135778 7590 03/26/2020
Patterson Thuente Pedersen, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
EXAMINER
STANIS, TIMOTHY A
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
03/26/2020 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):
efsuspto@ptslaw.com
rabe@ptslaw.com
rausch@ptslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HELMUT BUCHBERGER
Appeal 2018-008095
Application 14/306,831
Technology Center 3700
Before JEREMY M. PLENZLER, FREDERICK C. LANEY,
ARTHUR M. PESLAK, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–9, 17, 18, and 20. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on March 12,
2020. A transcript of the hearing will be included in the record.
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Batmark Limited.
Appeal Br. 2.
Appeal 2018-008095
Application 14/306,831

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CLAIMED SUBJECT MATTER
The claims are directed to a liquid material. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A liquid material comprising:
nicotine;
greater than 50% weight by weight of low boiling point
fractions selected from the group consisting of water and ethanol;
and
one or more flavorants.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bolt US 5,046,514 Sept. 10, 1991
Warchol US 7,767,698 B2 Aug. 3, 2010
Snyder US 2003/0168057 A1 Sept. 11, 2003
REJECTION
Claims 1, 3–9, 17, 18, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Warchol, Bolt, and Snyder.2
OPINION
Appellant argues claims 1, 3–9, 17, 18, and 20 as a group. We select
claim 1 as representative. Claims 3–9, 17, 18, and 20 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Initially, we note that the Examiner’s rejection is largely unrebutted.
The Examiner finds that Warchol teaches “[a] liquid material comprising:

2 Although not included in the rejection heading in the Final Action, the
Examiner relies on findings from Snyder in the rejection as explained in the
Answer. Ans. 7.
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Application 14/306,831

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nicotine; and greater than 50% weight by weight of low boiling point
fractions selected from the group consisting of water and ethanol.” Final
Act. 2 (internal citations omitted). The Examiner finds that “Warchol does
not disclose the liquid material further comprising one or more flavorants.”
Id. Appellant does not dispute these findings.
The only limitation missing from Warchol is the addition of a generic
“flavorant.” The Examiner reasons that “it would have been obvious . . . to
add to the liquid material of Warchol the flavorant of menthol as taught by
Bolt in order to present the user with the flavor and feeling of smoking with
traditional tobacco.” Id. at 3. Appellant contends that “Bolt . . . teaches a
sweetened, combustible cigarette,” and “[t]hese references would not have
been combined by one of ordinary skill in the art at the time of the
invention.” Appeal Br. 12; see also id. at 12–14. Appellant further contends
that “there would have been no reason to add a flavor to the aerosol of
Warchol, which is targeted directly to the lungs while minimizing delivery
to the mouth,” because “[a]ddition of the flavor to an aerosol which is routed
directly to the lungs would serve no purpose.” Id. at 15. Appellant contends
that Warchol teaches away from using flavoring because it “teaches
maximizing delivery of aerosolized nicotine directly to the lungs, while
simultaneously minimizing delivery of the aerosol to the mouth or nose.”
Id. at 16.
Those contentions are not persuasive. Maximizing delivery of
aerosolized nicotine directly to the lungs does not discourage the use of
flavoring. Further, the Examiner finds that Snyder teaches “[a]dding
flavorants to liquid formulations for inhalation into the lungs is well-known,
and does not render the liquid formulation inoperable.” Ans. 7 (citing
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Application 14/306,831

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Snyder ¶ 73). That is, the findings based on Bolt are not necessary for the
Examiner’s rejection, and Appellant does not dispute the findings based on
Snyder. See Reply Br., generally.
The Examiner explains that “[w]hile the end target of the liquid
formulation of Warchol is the lungs, the liquid formulation is delivered to
the oral cavity (see Abstract)” and “[s]ome liquid formulation is bound to be
deposited within the oral cavity, and the presence of a flavorant in the
aerosolized formulation would improve smoking satisfaction by the user.”
Ans. 8. Snyder’s discussion of adding a flavoring supports the Examiner’s
determination.
Snyder explains that its “pharmaceutical formulation may further
include flavoring agents.” Snyder ¶ 73. With respect to delivery of its
pharmaceutical formulation, Snyder explains that a “reservoir 130 may
contain the pharmaceutical formulation in a form where it may be
aerosolized into the airway 120 for inhalation by the user,” and provides an
example where “the reservoir 130 may be part of a liquid nebulizer chamber
where compressed gas may be used to aerosolize a pharmaceutical
formulation.” Id. ¶ 60. Snyder, therefore, teaches the addition of flavoring
to an aerosolized composition. As noted above, Appellant does not dispute
the Examiner’s reliance on Snyder, leaving the Examiner’s rejection largely
unrebutted.
For at least the reasons set forth above, we are not apprised of
Examiner error in the rejection of claim 1. Claims 3–9, 17, 18, and 20 fall
with claim 1.
CONCLUSION
The Examiner’s rejection is affirmed.
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Application 14/306,831

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–9, 17,
18, 20
103(a) Warchol, Bolt,
Snyder
1, 3–9, 17,
18, 20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED