2019003458 (P.T.A.B. May. 8, 2020)

British American Tobacco (Investments) Limited

Patent Trials and Appeals BoardMay 8, 2020

2019003458 (P.T.A.B. May. 8, 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. 14/505,477 10/02/2014 Dominic Woodcock 4840.12WOUS02 7708 135778 7590 05/08/2020 Patterson Thuente Pedersen, P.A. 4800 IDS CENTER 80 SOUTH 8TH STREET MINNEAPOLIS, MN 55402-2100 EXAMINER MAYES, DIONNE WALLS ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 05/08/2020 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 DOMINIC WOODCOCK and JAMES MURPHY ____________ Appeal 2019-003458 Application 14/505,477 Technology Center 1700 ____________ Before DONNA M. PRAISS, N. WHITNEY WILSON and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final Office Action, dated May 9, 2018, rejecting claims 1–5, 7, 8, 10–17, 22, and 23. Appeal Br. 1. An oral hearing was held on April 3, 2020.2 We have jurisdiction under 35 U.S.C. § 6(a). We AFFIRM and designate our affirmance as a NEW GROUND OF REJECTION pursuant to 37 CFR § 41.50(b) because our decision is based 1 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 British American Tobacco (Investments) Limited. Appeal Br. 2. 2 A written transcript of the oral hearing, herein after referred to as “Oral Hearing Transcripts” or “Tr.,” was made of record on April 21, 2020. Appeal 2019-003458 Application 14/505,477 2 on facts and reasoning that differs from the facts and reasoning the Examiner advances. The invention relates to heat-not-burn products, also known as non- combustion type smoking articles which are being developed as an alternative to cigarettes. Spec. 1. According to the Specification, the heat- not-burn products operate on the principle of heating tobacco to volatilize the low boiling point components to create vapor that is condensed into an aerosol and inhaled by the user. Id. The heating is done to avoid pyrolysis or combustion of the tobacco or volatiles. Id. The heat-not-burn products can include a heat source and an aerosol generating portion, such as a tobacco rod, that includes components which are volatilized during use. Id. A disadvantage of heat-not-burn products is that the products tend to have diminished sensory properties when compared to conventional cigarettes. Id. at 2. This, in part, is due to the heat-not-burn products having a different “puff profile” than conventional cigarettes. Id. The Specification defines “puff profiles” as “the amount of total particulate matter yield (mg/ cig) in each puff as the smoking article is consumed.” Id. For a conventional cigarette, the “puff profile” is one where the smoker experiences the sensation of the smoke gradually increasing in strength because the cigarette delivery of total particulate matter is relatively low during the first couple of puffs and gradually increases through the final puffs. Id. The “puff profile” for heat-not-burn products, on the other hand, rapidly delivers total particulate matter after the first few puffs, and then decreases until the product is consumed. Id. The invention seeks to modify the “puff profile” of heat-not-burn products to mimic more closely the puff profile of a conventional cigarette. Id. at 4. Claim 1, reproduced from the Claims Appeal 2019-003458 Application 14/505,477 3 Appendix, illustrates the invention: 1. A heat-not-burn product comprising: a heat source; a vaporization chamber; a cooling section; and an encapsulated aerosol generation agent having a plurality of encapsulation materials such that the encapsulated aerosol generation agent is released during use to produce a predefined puff yield of total particulate matter based on the plurality of encapsulation materials, wherein the encapsulation materials are selected from alginate, dextran, maltodextrin, cyclodextrin, pectin, methyl cellulose, ethyl cellulose, hydroxypropyl cellulose, carboxymethyl cellulose, gum Arabic, gum ghatti, gum tragacanth, Karaya gum, locust bean gum, acacia gum, guar gum, quince seed gum, xanthan gums, agar gel, agarose gel, carrageenans gel, furoidan gel and furcellaran gel, camauba wax, or a mixture thereof. Independent claim 10 recites a method for controlling release of an aerosol generation agent using essentially the heat-not-burn product of claim 1. Independent claim 22 recites a heat-not-burn product similar to the heat- not-burn product of claim 1. Appellant requests review of the following rejections maintained by the Examiner: I. Claims 1–5, 7, 8, 10–12, 22, and 23 rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Clearman (US 4,756,318, issued July 12, 1988), Waddell (US 4,967,772, issued November 6, 1990), and Shi (US 2005/0000531 A1, published January 6, 2005). Appeal 2019-003458 Application 14/505,477 4 II. Claims 13–17 rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Clearman, Waddell, Shi, and Banerjee (US 5,105,831, issued April 21, 1992). Appellant relies on the same line of arguments to address the rejection of independent claims 1, 10, and 22. See generally Appeal Br. Appellant presents separate arguments only for dependent claims 4, 7, and 8. Id. Accordingly, we select claim 1 as representative of the subject matter claimed and decide the issues with respect to the rejection of claims 1–3, 5, 10–17, 22, and 23 based on the arguments presented for claim 1. We address claims 4, 7, and 8 separately. OPINION After review of the respective positions Appellant presents in the Appeal and Reply Briefs and the Examiner presents in the Final Office Action and the Answer, we AFFIRM the Examiner’s prior art rejections of claims 1–5, 7, 8, 10–17, 22, and 23 under 35 U.S.C. § 103(a). Because our decision is based on facts and reasons than those the Examiner advances, we denominate this affirmed rejection as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). Claim 1 Claim 1 recites an aerosol generation agent encapsulated using a plurality of encapsulation materials such that the encapsulated aerosol generation agent is released during use to produce a predefined puff yield of total particulate matter based on the plurality of encapsulation materials ruptured. Appeal Br. 15–16. Appeal 2019-003458 Application 14/505,477 5 A. Preliminary Matter As a preliminary matter, clarification is required regarding the meaning of claim 1’s recitation “an encapsulated aerosol generation agent having a plurality of encapsulation materials.” At oral hearing, Appellant argued that this language should be interpreted to mean a plurality of bubbles (microcapsules), with each bubble having a shell that degrades at a different temperature. Tr. 12; see also Appeal Br. 17. However, the noted language of claim 1 only recites “an encapsulated aerosol generation agent having a plurality of encapsulation materials.” The Specification defines an encapsulation material as a barrier “that melts, decomposes, reacts, degrades, swells or deforms to release the aerosol generating agent at a temperature above room temperature but at or below the temperature reached inside the heat not burn product during use.” Spec. 5. The Specification also states “the encapsulated aerosol generating agent may be encapsulated using two or more encapsulating materials, for example in separate layers.” Id. at 6. These disclosures support, as the broadest reasonable interpretation, a construction of claim 1 that requires a single microcapsule having multiple layers of encapsulating material. It is not until claim 4 that an embodiment comprising multiple microcapsules is implied by the term “distribution.” Claim 4, however, does not require multiple microcapsules. For purposes of this appeal, we construe the claims as not requiring multiple microcapsules, but instead requiring a single microcapsule having multiple layers of encapsulating material. Appeal 2019-003458 Application 14/505,477 6 B. Rejection I Clearman discloses a heat-not-burn product that comprises heat rupturable capsules containing an aerosol-forming substance, such as glycerin, that volatilizes upon heating and is then inhaled by the user. Clearman col. 3, ll. 51–68; col. 14, ll. 1–2, 35–49; col. 18, ll. 46–61. Clearman discloses the product as yielding a visible mainstream aerosol that resembles the mainstream tobacco smoke of traditional cigarettes based on the encapsulation material. Clearman col. 1, ll. 6–7; col. 14, ll. 3–5. Clearman, however, does not disclose a plurality of encapsulation materials to form the heat rupturable capsules. Waddell discloses microcapsules comprising an encapsulation material shell isolating a volatile content where the encapsulation material shell allows for the controlled release of the volatile content based on the heat of the smoke that eventually ruptures the microcapsules’ shell. Waddell col. 10, ll. 22–34. Waddell discloses that the microcapsules can be double encapsulated for stability purposes. Waddell col. 11, ll. 29–36. That is, Waddell teaches that the shell of the microcapsule can comprise two encapsulation materials in the form of two separate layers. Given that Clearman expressly discloses a desire for a “‘thermally stable’ material [] capable of withstanding the high, albeit controlled, temperatures, e.g., from about 400° C. to about 600° C., which may eventually exist near the fuel, without significant decomposition or burning” (Clearman col. 13, ll. 61–65), it would have been obvious to one of ordinary skill in the art to modify Clearman’s microcapsule shell to comprise a plurality of encapsulation materials, as taught by Waddell, to ensure that Clearman’s microcapsules have the desired thermal stability. While Clearman and Waddell do not Appeal 2019-003458 Application 14/505,477 7 disclose the specifically claimed encapsulation materials, Shi teaches such materials are well known for making microcapsules to encapsulate volatile contents, where the microcapsules are used in tobacco related products. Shi ¶¶ 17, 41–44. Shi discloses the use of a shell material that is sufficiently compatible with the volatile content so as to retain it until such time as the heat generated during smoking causes the shell to open. Shi ¶ 24. Therefore, it would have been obvious to one of ordinary skill in the art to have modified the microcapsules from the combined teachings of Clearman and Waddell to incorporate Shi’s encapsulation materials to form the shells of the microcapsules for the reasons Shi discloses. C. Discussion Appellant argues that Clearman teaches the use of a single, large capsule filled with an aerosol-forming material. Appeal Br. 16. According to Appellant, Clearman’s arrangement is designed to produce as much aerosol as possible, as quickly as possible, without thermal degradation. Appeal Br. 17. Appellant contends that, even though Clearman discloses microcapsules, Clearman teaches away from the use of claim 1’s microencapsulation because of the maximization of aerosol generation. Id. Appellant further asserts that the claimed plurality of encapsulation materials can only reduce the yield from its theoretical maximum and, thus, would make no sense for Clearman’s purposes. Id. Appellant’s arguments do not point to reversible error in the Examiner’s determination of obviousness. We first note that Appellant’s arguments misapprehend Clearman’s disclosure. While Clearman discloses the use of capsule 12, this capsule is Appeal 2019-003458 Application 14/505,477 8 described as a heat conductive container enclosing a substrate bearing an aerosol forming substance. See Clearman Figure 1, col. 6, ll. 56–59; col. 8, l. 1 (where Clearman specifically refers to container 12 as a capsule). Clearman further discloses that capsule/container 12 encloses substrate 16 bearing the aerosol agent. Clearman Figure 1, col. 6, ll. 56–59. Clearman additionally discloses that the substrate/aerosol combination can take a variety of forms, such as a granular or particulate substrate carrying the aerosol agent (id. at col. 6, l. 66–col. 7, l. 2) or as heat rupturable microcapsules (id. at col. 14, ll. 1–2). Therefore, while Clearman teaches the use of a single, large capsule/container, this capsule/container does not by itself enclose the aerosol forming material as argued by Appellant (Appeal Br. 16). Further, Clearman discloses the use of heat-rupturable capsules capable of releasing sufficient aerosol forming vapors to satisfactorily resemble smoke. Clearman col. 14, ll. 1–5. Thus, this disclosure suggests the use of heat rupturable capsules is to release the aerosol-forming substance in a manner that resembles the smoke (i.e., puff profile) from tobacco products instead of a maximization of aerosol generation. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (holding that 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). Appellant argues that Clearman discloses the use of microcapsules as not preferred and, thus, teaches away from using them. Appeal Br. 17. Appellant further argues that Clearman teaches away from the claimed invention because Clearman teaches the maximization of aerosol generation, whereas the claimed use of a plurality of encapsulation materials can only Appeal 2019-003458 Application 14/505,477 9 reduce the yield from its theoretical maximum. Id. These arguments also lack persuasive merit. It is well settled that a reference may be relied upon for all that it discloses and not merely the preferred embodiments as suggested by Appellant. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“‘[A]ll disclosures of the prior art, including unpreferred embodiments, must be considered.’” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art reference’s disclosure is not limited to its examples). The disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Appellant’s arguments appear to be based on the misapprehended interpretation of Clearman’s disclosure noted above. Thus, Appellant has not explained adequately why Clearman’s disclosure of microcapsules as a non-preferred embodiment limits Clearman’s disclosure or teaches away from the claimed invention. While Clearman discloses an advantage in placing the aerosol generating means close to the hot, burning fire cone, this advantage is directed to ensure that there is maximum heat transfer for the production of the aerosol within the context of transferring enough heat to produce sufficient aerosol while avoiding transfer of so much heat that the aerosol is degraded. Clearman col. 4, l. 66–col. 5, l. 5; col. 9, ll. 14–17, col. 13, ll. 64– 67. Appellant does not direct us to any portion of Clearman or other objective evidence that supports the stated argument that Clearman maximizes the production of aerosol so as to produce as much aerosol as Appeal 2019-003458 Application 14/505,477 10 possible, as quickly as possible. Appeal Br. 17. On the contrary, Clearman focuses on generating an aerosol that resembles tobacco smoke by controlling the heat transfer. Clearman col. 1, ll. 5–7, col. 9, ll. 13–16; col. 14, ll. 3–5. Appellant’s attorney arguments cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979). Appellant argues that Waddell, cited for teaching a plurality of encapsulation elements, is directed to reducing the carcinogenic effect of a burned tobacco product. Appeal Br. 18. According to Appellant, Waddell’s encapsulation is for the purpose of isolating an alcohol and allows for controlled release of the alcohol so that it can interact with a smoke stream environment. Appeal Br. 18; Waddell col. 10, ll. 25–28. Appellant contends that it is unclear how one skilled in the art would have arrived at the claimed invention from the combined teachings of Clearman and Waddell. Appeal Br. 18. These arguments are also unpersuasive of reversible error. The Examiner explains that Waddell teaches the use of temperature controlled release shells to encapsulate a volatile material and that the temperature controlled release shells ensure the constant release of this material. Ans. 17. That is, the Examiner finds that, even if the purpose of the released contents are different, the function of the encapsulants in both Clearman and Waddell are similar because both are directed to the use of stable microcapsules for temperature controlled release of volatile (aerosol- forming) materials in a smoking environment. The Examiner further points out that this teaching is pertinent to Clearman’s invention because it would have motivated one skilled in the art to enhance the delivery of the volatile Appeal 2019-003458 Application 14/505,477 11 content from a heat-rupturable capsule. Ans. 17. Appellant does not explain adequately why one skilled in the art, using no more than ordinary creativity in view of these disclosures, would not have modified Clearman’s microcapsules to incorporate Waddell’s shell encapsulating materials. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art). Appellant argues that Shi is cited to teach known encapsulation materials for microcapsules used in smoking articles where the encapsulation materials melt at temperatures below the pyrolysis temperature of the smokable material. Appeal Br. 18. Appellant contends that Shi does not teach or suggest the claimed encapsulated aerosol generation agent having a plurality of encapsulation materials. Id. at 18–19. Thus, Appellant asserts that Shi does not remedy the deficiency of the combined teachings of Clearman and Waddell. Id. at 19. These arguments do not identify reversible error in the Examiner’s determination of obviousness. The Examiner relies upon Shi for the teaching that the claimed encapsulation materials are known to form capsules containing aerosol- forming substances for use in smoking articles. Ans. 18. The fact that Shi discloses a different aerosol-forming substance does not detract from the teaching noted above. Appellant again fails to explain adequately why one skilled in the art, using no more than ordinary creativity, would not have adapted Shi’s encapsulating materials for use in the microcapsules from the Appeal 2019-003458 Application 14/505,477 12 combined teachings of Clearman and Waddell. See KSR, 550 U.S. at 421; Sovish, 769 F.2d at 743. Appellant argues that claim 1 recites two types of materials that are released: (1) an aerosol generating agent, and (2) particulate matter. Appeal Br. 19. Appellant contends that the alcohols vaporized in Waddell are simply aerosols that do not generate any particulate matter. Id. Appellant asserts that the Examiner has not demonstrated otherwise. Id. These arguments also lack persuasive merit because, as the Examiner explains, Clearman provides the teaching of an aerosol generating particulate matter. Ans. 18–19; Clearman col. 5; ll. 40–54. Appellant does not adequately explain why the encapsulation materials, as taught by Waddell and Shi, would have detrimentally prevented Clearman’s aerosol- forming agent from also generating particulate matter. Claims 4, 7, and 8 Claim 4 recites that the “distribution of the encapsulated aerosol generation agent is configured to control timing of the release of the aerosol generation agent during use.” The Examiner finds that Waddell’s disclosure of a shell wall construction with a melt temperature range of 64°–650oF can be designed to provide a controlled or varied release of the aerosol-forming agent meets this claim limitation. Final Act. 4; Waddell col. 10, ll. 55–68. Appellant argues that the Examiner did not give weight to the claim preamble reciting a heat-not-burn product. Appeal Br. 20. Appellant contends that Waddell describes temperatures that exceed those used in heat- Appeal 2019-003458 Application 14/505,477 13 not-burn products and that the types of encapsulants in Waddell may never rupture at all if deployed in a heat-not-burn product. Id. These arguments do not persuade us of reversible error in the Examiner’s determination of obviousness. As the Examiner explains, Waddell discloses that shell walls of a microcapsule can be set to melt at a temperature as low as 64 oF for the release of the aerosol-forming agent. Ans. 19–20. Appellant again fails to explain adequately why one skilled in the art, using no more than ordinary creativity, would not have adapted Waddell’s encapsulating materials for use in the capsules from the combined teachings of Clearman and Waddell. See KSR, 550 U.S. at 421; Sovish, 769 F.2d at 743. We have considered Appellant’s arguments for claims 7 and 8 and find them unpersuasive for the reasons given above. Appeal Br. 21; see Ans. 18–19. Accordingly, we affirm the Examiner’s prior art rejections of claims 1–5, 7, 8, 10–17, 22, and 23 under 35 U.S.C. § 103(a) for the reasons given above. Appeal 2019-003458 Application 14/505,477 14 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed New Ground 1–5, 7, 8, 10–12, 22, 23 103(a) Clearman, Waddell, Shi 1–5, 7, 8, 10–12, 22, 23 1–5, 7, 8, 10– 12, 22, 23 13–17 103(a) Clearman, Waddell, Shi, Banerjee 13–17 13–17 Overall Outcome 1–5, 7, 8, 10–17, 22, 23 1–5, 7, 8, 10– 17, 22, 23 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Appeal 2019-003458 Application 14/505,477 15 Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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 NEW GROUND OF REJECTION (37 C.F.R. § 41.50(b))