Ex Parte Axelsson et al

Patent Trials and Appeals Board

May 21, 2018

13690531 - (D) (P.T.A.B. May. 21, 2018)

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.
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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).
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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.
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Appeal2017-008970
Application 13/690,531
C. Order
It is ORDERED that the rejection of claims 1--40 is reversed.
REVERSED
5