Christopher S. Tucker et al.

Patent Trials and Appeals Board

Dec 10, 2019

15843096 - (D) (P.T.A.B. Dec. 10, 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.
15/843,096 12/15/2017 Christopher S. TUCKER 24000-000004-
US-01-CA1B1
5561
127542 7590 12/10/2019
Harness, Dickey & Pierce-Altria
11730 Plaza America Drive, Suite 600
Reston, VA 20190
EXAMINER
WILLETT, TARYN T
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
12/10/2019 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):
dcmailroom@hdp.com
gyacura@hdp.com
jhill@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHRISTOPHER S. TUCKER, GEOFFREY BRANDON
JORDAN, BARRY S. SMITH, and ALI A. ROSTAMI
____________________

Appeal 2019-002632
Application 15/843,096
Technology Center 1700
____________________

Before JEFFREY T. SMITH, JEFFREY B. ROBERTSON, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
May 24, 2018 decision finally rejecting claims 2–17 (“Final Act.”). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Altria Client Services LLC as the real
party in interest (Appeal Br. 2).
Appeal 2019-002632
Application 15/843,096

2
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to an electronic smoking article, such as
a vaping device (Abstract). The device includes a liquid material, a heater
operable to heat the liquid material to a temperature sufficient to vaporize
the liquid material and form an aerosol, a wick in communication with the
liquid material and in communication with the heater such that the wick
delivers the liquid material to the heater, at least one air inlet operable to
deliver air to a central air passage upstream of the heater, and a mouthpiece
(id.). The claims recite that the mouthpiece has a plurality of non-diverging
outlets which are generally co-planar at an end surface of the mouthpiece.
Details of the claimed structure are set forth in representative claim 2, which
is reproduced below from the Claims Appendix to the Appeal Brief:
2. An electronic vaping device comprising:
an outer housing extending in a longitudinal direction;
a liquid supply in the outer housing;
a vaporizer configured to generate a vapor, the vaporizer
in the outer housing;
a mouthpiece at an end of the outer housing, the
mouthpiece including,
an end surface at a first end of the mouthpiece, and
a plurality of non-diverging outlets in the mouthpiece, the
outlets being generally coplanar at an end surface of the
mouthpiece; and
a power supply configured to supply power to the
vaporizer.

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Application 15/843,096

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REJECTIONS
1. Claims 2–4, 6–9, 11–15, and 17 are rejected under
35 U.S.C. § 103(a) as unpatentable over Li2 in view of McNeill.3
2. Claims 5 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Li in view of McNeill, and further in view of Liu. 4
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Li in view of McNeill, and further in view of Han.5

DISCUSSION
Appellant does not argue any claim or rejection separately (see,
Appeal Br. 14). Accordingly, we focus our discussion on the rejection of
claim 2. See 37 C.F.R. § 41.37(c)(1)(iv). The remaining claims will stand
or fall with claim 2.
The Examiner’s findings underlying this rejection are set forth at
pages 2–4 of the Final Action. In part, the Examiner finds that Li discloses
each limitation of claim 2, except that Li’s mouthpiece has only a single,
non-diverging outlet, instead of the claimed plurality of non-diverging

2 Li et al., JP 3164992 (U), published December 1, 2010. Because this
application is in Japanese, both Appellant and the Examiner, and the Board,
refer to the US counterpart, US 2011/0303231 A1, published December 15,
2011 (and ultimately issued on March 25, 2014 as US 8,678,012 B2).
3 McNeill, US 2,670,739, issued March 2, 1954.
4 Liu WO 2011/0124033 A1, published October 13, 2011. Because this
application is in Chinese, both Appellant and the Examiner, and the Board,
refer to the US counterpart, US 2012/0285475 A1, published December 8,
2015.
5 Han, US 2009/0095311 A1, published April 16, 2009.
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outlets (Final Act. 2, citing Li, FIGS. 1 and 2, ¶¶ 8, 9, 20, 21, and 23), as
shown in the following version of Li’s FIG. 2 annotated by the Examiner
(Final Act. 3):

Li’s FIG. 2 shows a schematic view of a tobacco solution atomizing
device according to another embodiment of its disclosure.

The Examiner further finds that Li teaches that oil blocker component
10 prevents tobacco solution from flowing out of the opening when the user
sucks on the device (Final Act. 3). Therefore, the Examiner finds that
although Li does not explicitly teach duplicating the single non-diverging
outlet, it does contemplate the need for preventing unvaporized solution
from being inhaled by the user (id.).
The Examiner further finds that McNeill teaches an aerosol generating
device with an aerosol exit which is analogous to a mouthpiece for
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delivering aerosol to the user (Final Act. 3, citing McNeill FIGS. 1 and 3,
1:2–8, 1:38–55). The Examiner also finds that McNeill teaches the presence
of planar baffle with a plurality of openings which is inserted into the
aerosol exit, which prevents large droplets of medicine from being carried
into the lungs of the user (Final Act. 3, citing McNeill, 2:32–37).
The Examiner determines that McNeill would have provided the
motivation for a person of skill in the art to duplicate Li’s single, non-
diverging outlet in its mouthpiece to provide a plurality of non-diverging
outlets because Li uses a blocker in its mouthpiece to prevent non-vaporized
solution from entering the user’s mouth, while McNeill teaches a multi-
opening baffle to achieve the same result (Final Act. 4). The Examiner
determines also that one of ordinary skill in the art would have duplicated
the non-diverging outlets because McNeil discloses the plurality of outlets
creates a finer mist and that one of ordinary skill in the art would have
recognized that duplicating the single opening taught by Li to a plurality of
openings to match the baffle taught by McNeil would further result in the
outlets being generally coplanar on the generally planar oil blocking surface
(id.).
Appellant first argues that because McNeill discloses a nasal inhaler
without a mouthpiece, it does not disclose a mouthpiece with a plurality of
non-diverging outlets which are generally coplanar at an end surface
(Appeal Br. 11). Instead, as argued by Appellant (Appeal Br. 11), McNeill
shows a single outlet 16, as shown in McNeill’s FIG. 1:
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McNeill’s FIG. 1 a longitudinal sectional view taken through its inhaler.
Therefore, according to Appellant, even if the teachings of Li and
McNeill had been combined, they would not have disclosed or suggested a
mouthpiece with a plurality of non-diverging outlets which are generally
coplanar at an end surface of the device (Appeal Br. 12).
This argument is not persuasive of reversible error. Appellant
correctly points out (Reply Br. 2) that McNeill’s baffle is not positioned at
the end of the device, but instead is located in its interior. However, as
explained by the Examiner, the rejection is not premised simply on the
bodily incorporation of McNeill’s baffle into Li’s device (Ans. 8–9).
Instead, the Examiner explains that both Li and McNeill suggest the need to
prevent unvaporized solution from undesirably being inhaled by the user,
which would have suggested to a person of skill in the art to have duplicated
Li’s non-diverging outlet to form a plurality of non-diverging outlets as is
present in McNeill’s baffle (id.). Thus, we agree with the Examiner that he
concept of utilizing a plurality of holes to improve a user experience
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provides a sufficient reason why a person of skill in the art would have
included a multi-outlet mouthpiece in Li’s device (id. at 9). In KSR, the
Supreme Court explained, “[w]hen a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars its patentability.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” Id. at 421.
Appellant also argues that McNeill and Li are not properly
combinable because McNeill is non-analogous art (Appeal Br. 12). In order
to be properly relied upon in an obviousness analysis, a prior art reference
must qualify as “analogous art,” i.e., it must satisfy one of the following
conditions: (i) the reference must be from the same field of endeavor as the
claimed invention; or (ii) the reference must be reasonably pertinent to the
particular problem with which the inventor is involved. Innovention Toys,
LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “A
reference is reasonably pertinent if it, as a result of its subject matter,
‘logically would have commended itself to an inventor’s attention in
considering his problem.’” K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364,
1375 (Fed. Cir. 2012) (citing Innovention Toys, 637 F.3d at 1321).
In this instance, we agree with Appellant (Appeal Br. 12) that
McNeill, which is directed to a nasal inhaler, is not in the same field of
endeavor as the claimed invention, directed to an electronic vaping device.
However, we determine that McNeill is reasonably pertinent to the problem
faced by the inventor. In particular, McNeill is directed to the problem of
creating an inhalable vapor from a liquid material and allowing user to
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inhale the vapor. Thus, a person of skill in the art seeking an improved
vaping device would have found McNeill reasonable pertinent, as it would
logically have commended itself to the person of skill in the art.
Accordingly, we determine that the preponderance of the evidence of
record supports the rejection of claim 2, which we therefore affirm.
Because Appellant does not make separate arguments for any other
claims, we affirm Rejections 2 and 3 as well for similar reasons.
CONCLUSION

In summary:

Claims
Rejected
35 U.S.C.
§
References(s)/Basis Affirmed Reversed
2–4, 6–9,
11–15, 17
103(a) Li, McNeill 2–4, 6–9,
11–15, 17

5, 16 103(a) Li, McNeill, Liu 5, 16
10 103(a) Li, McNeill, Han 10
Overall
Outcome
2–17

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