Ex Parte Axelsson et alDownload PDFPatent Trial and Appeal BoardMay 21, 201813690531 (P.T.A.B. May. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/690,531 11/30/2012 26158 7590 05/23/2018 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 FIRST NAMED INVENTOR Anders Axelsson 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 ATTORNEY DOCKET NO. N64138 l 130US.Cl (0044.5) CONFIRMATION NO. 7618 EXAMINER NGUYEN, PHU HOANG ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 05/23/2018 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): IPDocketing@wbd-us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDERS AXELSSON 1, Ame Kristensen ( deceased), and Henri Hansson Appeal2017-008970 Application 13/690,531 Technology Center 1700 Before TERRY J. OWENS, MARK NAGUMO, and JEFFREY W. ABRAHAM, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Niconovmn ("Axelsson") timely appeals under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1--40. We have jurisdiction. 35 U.S.C. § 6. We reverse for reasons well-stated by Axelsson. 1 The applicant under 3 7 C.F .R. § 1.46, and hence the appellant under 35 U.S.C. § 134(a), is the real party in interest, identified as Niconovum USA, Inc., a subsidiary of Reynolds American, Inc. ("Niconovum"). (Appeal Brief, filed 20 December 2016 ("Br."), 1.) 2 Office Action mailed 7 July 2016 ("Final Rejection"; cited as "FR"). Appeal2017-008970 Application 13/690,531 OPINION A. Introduction 3 The subject matter on appeal relates to snuff compositions said to provide a high release rate of nicotine in the mouth. We reviewed the technology in a previous Opinion4 in the parent application, in which we reversed a rejection of similar claims in the parent application in view of prior art reference Ek, 5 which is also applied in the present rejection. We presume familiarity with that Opinion. Claim 1 is representative and reads: A snuff composition comprising: (a) about 80% to about 98% by weight, based on the weight of the snuff composition, of a solid nicotine- cellulose combination formed of porous cellulose having the nicotine sorbed into the pores thereof, the nicotine being present at a concentration of about 0.1 % to about 10% by weight, based on the weight of the snuff composition; (b) a flavoring agent; and ( c) a buffering agent; 3 Application 13/690,531, Snuff composition, filed 30 November 2012 as a continuation of 12/225,262, filed 16 June 2009, as the national stage under 35 U.S.C. § 371 of PCT/EP2007/002343, filed 16 March 2007, claiming the benefit of two applications filed in Denmark on 16 March 2006. We refer to the "'531 Specification," which we cite as "Spec." 4 Ex parte Axelsson ("Axelsson 1"), Appeal 2013-004307, entered 7 January 2015, in parent application 12/225,262 (issued as U.S. Patent No. 9,402,809 on 2 August 2016. 5 Full citation at 3 n.9, infra. 2 Appeal2017-008970 Application 13/690,531 wherein the composition is enclosed in a bag, pouch, or membrane. (Claims App., Br. 11; some indentation, paragraphing, and emphasis added.) The Examiner maintains the following ground of rejection 6, 7 : Claims 1--40 stand rejected under 35 U.S.C. § I03(a) in view of the combined teachings of Hansson 8 and Ek. 9 B. Discussion The Board's findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. The Examiner finds that Hansson describes a composition comprising nicotine/microcrystalline particulates that contain 1 % (w/w) nicotine. (FR 2.) The Examiner finds that the composition may be combined with a flavoring agent and a buffering agent, and that Ek demonstrates that the composition can be enclosed in a bag, pouch, or membrane. (Id.) Critically, the Examiner finds that "it would have been obvious ... to perform routine experimentation to arrive [at] a desired amount of flavoring agent and 6 Examiner's Answer mailed 5 April 2017 ("Ans."). 7 Because this application was filed before the 16 March 2013, effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 8 Henri Hansson, Physically and chemically stable nicotine-containing particulate material, U.S. Patent Application Publication 2004/0191322 Al (2004) (issued as U.S. Patent No. 8,741,348 on 3 June 2014, assigned to Niconovum USA, Inc.). 9 Ragnar Ek et al., Nicotine formulations and use thereof, U.S. Patent Application Publication 2005/0053665 Al (2005). 3 Appeal2017-008970 Application 13/690,531 buffering agent in the snuff composition that determines a desired amount [of] nicotine-cellulose combination." (Id. at sentence bridging 2-3.) It is not disputed that the amount of flavoring agent and the amount of buffering agent would have been recognized as result-effective variables. As Axelsson points out (Br. 7-9), the difficulty with the Examiner's analysis is that the Examiner has not directed our attention to any evidence in the prior art of record that adjusting the amounts of flavoring agent and buffering agent would have led to adjusting the amount of porous cellulose with sorbed nicotine to comprise about 80% to about 98% by weight of the snuff composition. Nor, as Axelsson argues (id. at 5---6), has the Examiner directed our attention to evidence that the range of 80-98 w% would have been the result of "routine optimization" of the amount of nicotine-sorbed porous cellulose described by or obvious in view of Hansson or Ek. The Examiner's citation (FR 7, 11. 11-15) of Ek, Example 7, as showing a nicotine-cellulose combination of 315 mg because the combination of 15 mg of a nicotine-cellulose mixture ( 40% nicotine) with 300 mg of powdered cellulose "is considered" to meet the solid nicotine-cellulose combination recited in the appealed claims is not well-taken. We rejected this argument in Axelsson 1, and the Examiner has not come forward with any evidence or further analysis indicating that our previous conclusion should be reconsidered. We reverse the rejection for obviousness. 4 Appeal2017-008970 Application 13/690,531 C. Order It is ORDERED that the rejection of claims 1--40 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation