British American Tobacco (Investments) Limited

Patent Trials and Appeals Board

Aug 14, 2020

2019005675 (P.T.A.B. Aug. 14, 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.
14/371,967 07/11/2014 Dominic Woodcock 4840.31WOUS01 9319
135778 7590 08/14/2020
Patterson Thuente Pedersen, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
EXAMINER
GUGLIOTTA, NICOLE T
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
08/14/2020 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
____________

Appeal 2019-005675
Application 14/371,967
Technology Center 1700
____________

Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
DEBRA L.DENNETT, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 2, 4, 12, 13, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over at least the combined prior art of Deevi ’827
(US 2004/0250827 A1; Dec. 16, 2004), or Monsees (US 2013/0042865 A1;
Feb. 21, 2013), each with Banerjee (US 2010/0065075 A1; Mar. 18, 2010).2

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. “British American Tobacco (Investments) Limited” is identified as the
real party in interest (Appeal Br. 2).
2 The Examiner applied additional references in the rejections of dependent
claims 4, 12, 13, and 19 as listed in the summary table at the end of this
decision. Discussion of these rejections is not needed for disposition of this
appeal.
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Application 14/371,967

2
The Examiner also rejected all of the claims under 35 U.S.C. § 112 for lack
of written description.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitations):
1. A Heat-Not-Burn (HNB) insulator comprising an insulating
material, the insulating material including a metal salt and an aerogel, and
not including glass fiber, wherein the metal salt is an active CO catalyst.
(Appeal Br. 21 (Claims App.)).

OPINION
Upon consideration of the evidence relied upon and each of
Appellant’s contentions as set forth in the Appeal Brief and Reply Brief, we
determine that Appellant has not identified reversible error in the
Examiner’s rejections (See generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.

The § 112 Rejection for Lack of Written Description
Claim 1 recites “the metal salt is an active CO catalyst”. The
Examiner finds the originally-filed application does not contain written
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Application 14/371,967

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description support for this limitation (Final Act. 2, 3 (explaining that the
Specification only describes a preferred use for active CO catalysts, and
never classifies any metal salt as an active catalyst)).
The written description “must clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is claimed.” Ariad
Pharm., Inc. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(citation and quotations omitted, alteration in the original). The test is
whether the disclosure “conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Id.
Moreover, the Federal Circuit also stated that the written description
clause of section 112 has been construed to mandate that the specification
satisfy two closely related requirements - it must describe the manner and
process of making and using the invention so as to enable a person of skill in
the art to make and use the full scope of the invention without undue
experimentation and “it must describe the invention sufficiently to convey to
a person of skill in the art that the patentee had possession of the claimed
invention at the time of the application, i.e., that the patentee invented what
is claimed.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d
1336, 1344–1345 (Fed. Cir. 2005) (while the inventor had the intent to cover
generic methods with his patent, he did not disclose enough in the
specification to enable one skilled in the art to make and use the generic
invention and thus did not show possession of the generic claims).
Appellant contends that “the Application explicitly teaches that all of
the catalysts described in the passage [on page 4 of the Specification] are
active catalysts” (Appeal Br. 14). As pointed out by the Examiner, this is
plainly incorrect (Ans. 4). Furthermore, contrary to Appellant’s contention
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Application 14/371,967

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that one of ordinary skill in the art would know which metal salts are active
and which are not (Appeal Br. 14), Banerjee teaches that the same metal
salts listed on page 4 of Appellant’s Specification are precursors to active
catalysts (and thus appear to be inactive per Appellant’s own description
(Spec. 5:18-19); Banerjee ¶ 25; Spec. 4:1–9)). Attorney’s arguments in a
brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Thus, Appellant’s argument is unsupported by any adequate
evidence.
Accordingly, Appellant has failed to show reversible error in the
Examiner’s determination that Appellant has not shown possession of a
metal salt which is an active CO catalyst. We thus affirm the Examiner’s
§112 rejection for lack of written description.

The § 103 Rejections
Appellant relies upon the same arguments for all of the claims,
including those claims separately rejected (Appeal Br. 15–19; Reply Br. 3–
5).
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (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).
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Appellant’s main arguments are that 1) neither Deevi ’827 nor
Monsees teach or suggest that the aerogel/insulation material therein (used
for tobacco products) does not include glass fibers as recited in claim 1; 2)
there is no reason to use the metal salt CO catalyst of Banerjee for the CO
catalyst of either reference since Banerjee is not directed to a heat not burn
product; and 3) the metals salts of Banerjee are taught to be precursors and
thus are not “active CO catalysts” as recited in claim 1 (See Appeal Br. 15–
19). These arguments are reiterated in the Reply Brief.
Appellant’s arguments are not persuasive of reversible error as they
fail to consider the breadth of claim 1, the applied prior art as a whole and
the inferences that one of ordinary skill would have made. Here, as the
Examiner aptly points out, one of ordinary skill in the art would have readily
inferred from the overall teachings of Banerjee that a known CO catalyst
comprises a metal salt, and that this catalyst would have been an appropriate
alternative to or addition to the CO catalysts described in either of Deevi
’827 or Monsees (further noting that these metals salts are the same as
disclosed in the present application) (Ans. 7–10; see also Final Act. 4–8).
We also agree with the Examiner that one of ordinary skill in the art would
have immediately inferred by Deevi ’827’s silence on the inclusion of glass
fibers that such were not a required component of its aerogel component.
Indeed, the alternative primary reference of Monsees explicitly teaches that
its aerogel insulation may or may not include reinforcing fibers (e.g., glass
fibers), and Monsees also teaches its insulation may include an aluminum
and/or nickel catalyst (Monsees ¶¶ 63, 81).
The Examiner merely relied upon Banerjee to exemplify known CO
catalysts, including metal salts, useful in a tobacco product.
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Under the flexible inquiry set forth by the Supreme Court, the PTO
must take account of the “inferences and creative steps,” or even routine
steps, that an ordinary artisan would employ. Ball Aerosol & Specialty
Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009).
One of ordinary skill would have readily inferred and appreciated from the
applied prior art as a whole that an aerogel insulation material may comprise
a metal salt as a CO catalyst. The use of such a metal salt CO catalyst as
exemplified in Banerjee for, or in addition to, the CO catalysts already in the
aerogel/insulation of either one of Deevi ’827 or Monsees would have been
within the skill and creativity of one of ordinary skill in the art.
On this appeal record, Appellant has not sufficiently explained why
the claimed subject matter is “more than the predictable use of prior art
elements according to their established functions.” KSR, 550 U.S. at 417.
See also, In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“[i]t is
generally considered prima facie obvious to combine two compounds each
of which is taught by the prior art to be useful for the same purpose, in order
to form a composition which is to be used for the very same purpose.”).
Appellant has not relied upon any evidence of unexpected results.
Accordingly, we sustain the Examiner’s § 103 rejections of
independent claim 1, as well as all claims dependent thereon, noting that
Appellant relies upon the arguments made for claim 1 for all the other
claims, including those claims rejected separately (See generally Appeal
Br.).
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 12,
13, 19

112, 1st ¶ Lack of Written
Description
1, 2, 4, 12,
13, 19

1, 2, 4 103(a) Deevi ’827,
Banerjee
1, 2, 4
1, 2 103(a) Monsees, Banerjee 1, 2
4 103(a) Monsees,
Banerjee,
Deevi ’870
4
12, 13 103(a) Deevi ’827 or
Monsees,
Banerjee, Kolts
12, 13
19 103(a) Deevi ’827 or
Monsees,
Banerjee, Poget
19
Overall
Outcome
1, 2, 4, 12,
13, 19

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)(1)(iv).

AFFIRMED