Ex Parte Brantley et alDownload PDFPatent Trial and Appeal BoardAug 18, 201612205285 (P.T.A.B. Aug. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/205,285 09/05/2008 Franklin Forrest Brantley 26158 7590 08/22/2016 WOMBLE CARLYLE SANDRIDGE & RICE, LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 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. CONFIRMATION NO. R60999 1240.1 6557 EXAMINER KRINKER, Y ANA B ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 08/22/2016 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@WCSR. COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PA TENT TRIAL AND APPEAL BOARD Ex parte FRANKLIN FORREST BRANTLEY, 1 and Van Loren Gough Appeal2015-000032 Application 12/205,285 Technology Center 1700 Before CHUNG K. PAK, MARK NAGUMO, and JAMES C. HOUSEL, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Franklin Forrest Brantley and Van Loren Gough ("Brantley") timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1-5, 7- 13, 15, and 16.3 We have jurisdiction. 35 U.S.C. § 6. We affirm. 1 The real party in interest is listed as R. J. Reynolds Tobacco Company. (Appeal Brief, filed 1 July 2014 ("Br."), 2.) 2 Office action mailed 27 March 2014 ("Final Rejection"; cited as "FR"). 3 Remaining copending claims 17-24 have been withdrawn from consideration to by the Examiner (FR 1, § 5a; Br. 5, 11. 13-14 ), and are not before us. Appeal2015-000032 Application 12/205,285 A. Introduction4 OPINION The subject matter on appeal relates to an apparatus ("system") for inspecting filter rods used to make cigarettes. The rods comprise a strand that extends along the longitudinal axis of the rod, and which may be colored and flavored (e.g., red for cinnamon, green for menthol, black for licorice, etc.) (Spec. 10, 11. 6-10). The '285 Specification reveals that the strand may be "missing, misaligned, or otherwise improperly inserted" in the filter rod, or it may be the wrong color, the wrong size, or the wrong material (Id. at 14, 11. 7-10.) In the words of the Specification, "[a]ny or all of these factors may undesirably affect, for example, the aesthetic or in some instances the functionality, of the end product." (Id. at 3, 11. 28-29.) The claimed apparatus is said to provide a way to monitor the qualities of the filter rods and to signal whether a given rod segment is proper or improper. As shown in Fig. 4, reproduced on the following page, the system comprises a filter rod forming system that inserts an axially oriented strand 505 into continuous filter rod 240 by introducing strand 50 into tongue 280, which is fed filter material (e.g., plasticized cellulose acetate tow; from stuffer jet device 255. (Id. at 17, 11. 4-8.) Continuous filter rod 240 is cut into individual filter rods 26 (id. at 11. 9-10), "each containing a strand that extends generally longitudinally therethrough, between opposed 4 Application 12/205,285, Inspection system for a smoking article having an object inserted therein, and associated method, filed 5 September 2008. We refer to the '"285 Specification," which we cite as "Spec." 5 Throughout this Opinion, for clarity, labels to elements are presented in bold font, regardless of their presentation in the original document. 2 Appeal2015-000032 Application 12/205,285 ends of the filter rod portions" (id. at 5, 11. 1-2). The individual filter rods are engaged with filter rod support device 500 (id. at 11. 14-16), and the end of each filter is analyzed, e.g., by an image analysis system 600, 601, for the status of the strand (id. at 18). In particular, the presence or the absence of the stand is detected and reported, and if the strand is present, whether it is 'acceptable' or not is also reported. (Id. at last para.) {Fig. 4, below, illustrates an embodiment of the filter inspection system.} {Fig. 4 shows a filter rod forming and inspecting system} Claim 1 is representative and reads: A system for inspecting filter rods used to form cigarette filter elements, each filter rod defining a longitudinal axis extending between opposed ends, each end extending substantially perpendicularly to the longitudinal axis, and including a filter material having an axially-extending strand disposed therein, the system comprising: 3 Appeal2015-000032 Application 12/205,285 a filter rod support device in communication with an insertion device configured to insert the axially- extending strand within the filter material of at least one filter rod such that the axially-extending strand is exposed at one of the ends of the at least one filter rod, the filter rod support device receiving the at least one filter rod such that the one of the ends thereof is exposed; and an analysis unit disposed with respect to the filter rod support device so as to interact with the one of the ends of the at least one filter rod to determine a status of the at least one filter rod based at least in part on detection of the axially-extending strand, the status of the at least one filter rod comprising at least one of a strand presence within the at least one filter rod and a strand absence from the at least one filter rod, and, when the strand presence is detected, the status further comprising at least one of an acceptable strand presence in the at least one filter rod and an unacceptable strand presence in the at least one filter rod, and to provide a corresponding signal in response thereto. (Claims App., Br. 23; some indentation and paragraphing added.) Remaining independent claim 9 is written in means-plus-function format, but is otherwise substantially similar to claim 1. 4 Appeal2015-000032 Application 12/205,285 The Examiner maintains the following grounds of rejection6 : A. Claims 1, 3-5, 7-9, 11-13, 15, and 16 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Nelson 7 and Longest. 8 Al. Claims 2 and 10 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Nelson, Longest, and Puckett. 9 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Brantley bases all arguments for patentability (Br. 9-14 ), including separately rejected claim 2 (id. at 14-15), on limitations recited in independent claim 1. Moreover, the arguments regarding the patentability of claim 9 (Br. 15-21) are substantially cumulative with the arguments regarding claim 1. All claims therefore stand or fall with claim 1. 6 Examiner's Answer mailed 11August2014 ("Ans."). 7 John Larkin Nelson et al., Equipment and associated method for insertion of material into cigarette filters, U.S. Patent Application Publication 2008/0029118 A 1 (2008), based on an application filed 2 August 2006, and issued as U.S. Patent No. 7,740,019 (22 June 2010). Nelson is assigned to R.J. Reynolds Tobacco Co., the real-party-in-interest in this appeal. We may presume, without prejudice, full awareness of the teachings of Nelson on the part of Brantley. 8 H. Cary Longest and James L. Lynch, Methods and apparatus for inspecting the appearance of substantially circular objects, U.S. Patent No. 5,588,068 (1996). 9 Douglas Puckett et al., Cigarette inspection device, U.S. Patent No. 6,385,333 Bl (2002). 5 Appeal2015-000032 Application 12/205,285 Brantley urges there is no motivation to combine the teachings of Nelson with those of Longest. (Br. 10.) More particularly, Brantley argues that "Nelson does not disclose that the insertion device is in communication with a filter inspection system" (id. at 11, 1st full para., emphasis omitted) and that "Longest is entirely devoid of disclosure regarding strand insertion or detection of inserted strands in a cigarette filter" (id. at 3d full para., emphasis omitted). According to Brantley, the types of defects for which Longest teaches to inspect, and the particular tests taught by Longest, would either fail to detect the strand presence in the filter element, or would be treated as a defect. (Id. at 12.) The Examiner's reliance on Nelson's disclosure that the placement of strands in the center of the filter element is, in Brantley's view, "overly broad and improper" (id. at 13) and does not provide a motivation to inspect the filter for the status of an inserted strand, because it relates to proper insertion of the strand (id.). These arguments are not persuasive of harmful error in the appealed rejections. The apparatus described by Nelson for forming cigarette filter elements with an axial strand, as illustrated in Nelson Figs. 1 and 3, reproduced in Brantley's Brief at 8, is substantially identical to the right- hand portion of the apparatus illustrated supra. Nelson teaches in paragraph [0054], cited by the Examiner (FR 5, 11. 1-2), that the position of the strand in the filter, as well as its cross-sectional shape and dimensions, are important parameters. Although Nelson is silent as to post-strand insertion inspection of the filter rod elements, 10 given the importance Nelson 10 It has not escaped our notice that Nelson does disclose pre-insertion monitoring "to ensure that strand is being provided from the spool 309 to 6 Appeal2015-000032 Application 12/205,285 teaches regarding the position, shape, color, and other properties of the strand in the filter element, we have no difficulty finding that a person having ordinary skill in the art would have been motivated by the teachings of Longest to provide the automated equivalent of a visual inspection system of the manufactured filter elements. The art of record indicates a considerable degree of technical sophistication, and we do not find credible Brantley's insistence that such workers would have followed Longest's instructions in lockstep. Rather, given the properties disclosed by Nelson regarding desirable strand position, etc., in the filter elements, those workers would have modified the detection and analysis schemes outlined by Longest to optimize detection and reporting of properties most relevant to the filters described by Nelson. As the Court has 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'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). It is improper to accord less than ordinary creativity to persons having ordinary skill in the art. Id. at 421; In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). Brantley does not present any arguments for patentability based on so- called secondary considerations such as unexpected results or commercial success. We are not persuaded of harmful error in the appealed rejections. desired locations downstream in the filter making system." (Nelson 5 [0038].) 7 Appeal2015-000032 Application 12/205,285 C. Order It is ORDERED that the rejection of claims 1-5, 7-13, 15, and 16 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a) AFFIRMED 8 Copy with citationCopy as parenthetical citation