Ex Parte Chapman et al

Patent Trials and Appeals Board

Mar 26, 2019

13802950 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/802,950 03/14/2013
26158 7590 03/28/2019
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Paul Stuart Chapman
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 2950US.l (0425.7) 1092
EXAMINER
KRINKER, Y ANA B
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
IPDocketing@wbd-us.com
BostonPatents@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL STUART CHAPMAN, YAN PU,
TIMOTHY BRIAN NESTOR, CHARLES JACOB NOV AK III,
GRADY LANCE DOOLY, STEVEN FLOYD NIELSEN,
BRYAN PETER THOMAS, and ALAN CURTIS BILLINGS
Appeal2018-005685
Application 13/802,950
Technology Center 1700
Before JAMES C. HOUSEL, JEFFREY R. SNAY, and
JANEE. INGLESE, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
RAI Strategic Holdings, Inc. ("Appellant")2 appeals under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-17, 20-34, and
36-41. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 We refer to the Specification ("Spec.") filed March 14, 2013; Final Office
Action ("Final Act.") dated December 16, 2016; Appellant's Appeal Brief
("Br.") filed July 5, 2017; and Examiner's Answer ("Ans.") dated March 16,
2018.
2 RAI Strategic Holdings, Inc. is said to be the real party in interest. Br. 1.
Appeal2018-005685
Application 13/802,950
BACKGROUND
The subject matter on appeal relates to an electronic smoking article.
Spec. 1. Claims 1 and 27-the only independent claims on appeal-read as
follows:
1. An electronic smoking article comprising:
an electrical power source;
a reservoir that is formed from cellulose acetate and is
configured to hold an aerosol precursor material;
a liquid transport element in fluid communication with
the reservoir; and
a heater in a heating arrangement with the liquid
transport element.
27. An electronic smoking article comprising:
a reservoir with a liquid aerosol precursor composition
stored therein; and
a braided wick in fluid communication with the reservoir.
Br. 16, 20 (Claims Appendix).
REJECTIONS 3
I. Claims 1-8, 14--17, and 20-26 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Tucker4 and Potter. 5
II. Claims 9-13 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Tucker, Potter, and Rosener. 6
III. Claims 27-34, 37, and 38 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Tucker and Rosener.
3 Additional rejections set forth in the Final Office Action have been
withdrawn by the Examiner. Ans. 3--4.
4 US 2013/0192620 Al, published August 1, 2013.
5 US 4,913,168, issued April 3, 1990.
6 US 7,651,077 Bl, issued January 26, 2010.
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Application 13/802,950
IV. Claims 36 and 39--41 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tucker, Rosener, and Potter.
OPINION
Rejection I
With regard to Rejection I, Appellant limits the arguments to features
recited in claim 1. See Br. 8-12. Claims 2-8, 14--17, and 20-26 stand or
fall with claim 1.
Relevant to Appellant's arguments, the Examiner finds that Tucker
discloses an electronic smoking article that includes a liquid storage medium
formed of, e.g., cotton. Final Act. 15, 26. The Examiner finds that Potter
teaches equivalent use of cotton or cellulose acetate for forming a liquid
storage medium in an electronic smoking article. Id. In light of the
collective disclosures of Tucker and Potter, the Examiner determines it
would have been obvious to form Tucker's liquid storage medium from
cellulose acetate. Id. at 15-16, 26.
Appellant argues that one of ordinary skill would not have viewed
Potter's cellulose acetate material as suitable for Tucker's liquid storage
medium because Potter heats the liquid in the storage medium, whereas
Tucker heats the liquid after it is drawn from the storage medium by a wick.
Br. 9. Appellant also argues that use of cellulose acetate instead of polyester
( another storage medium material taught by Tucker) provides more than
predictable results. Id. at 10-12. Particularly, Appellant points to Example
2 in the Specification as evidence that cellulose acetate-a hydrophilic
material-absorbed aqueous liquid faster than polyester-a hydrophobic
material. Id. at 10. See also Spec. 28 ( characterizing cellulose acetate as
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Application 13/802,950
hydrophilic); id. at 33 ("[I]t has been found that the hydrophobic nature of
the material can lead to disadvantages, particularly when an aerosol
precursor composition is formed primarily of hydrophilic materials.").
Appellant's arguments are not persuasive of reversible error. Tucker
teaches use of cotton as a suitable material for holding liquid to be vaporized
during use in an electronic smoking article. Tucker ,r 58. Potter teaches use
of cotton or cellulose acetate for the same purpose. Potter 8:39--49 ("The
flavor substances normally are carried by a suitable substrate. . . . Examples
of suitable substrates include fibrous materials such as cotton, cellulose
acetate, carbon fibers, carbon filament yams ... and the like."). The fact
that Potter vaporizes the stored liquid directly from the storage medium
rather than wicking the liquid from the storage medium prior to vaporization
does not negate Potter's teaching that cellulose acetate is a suitable
equivalent to cotton for storing liquid in an electronic smoking article.
Nor are we persuaded by Appellant's contention of unexpected
results. The burden of establishing that unexpected results support a
conclusion of nonobviousness rests with the Appellant. In re Huang, 100
F.3d 135, 139 (Fed. Cir. 1996). "[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). "[I]t is not enough to show that results are
obtained which differ from those obtained in the prior art: that difference
must be shown to be an unexpected difference." See In re Klosak, 455 F.2d
1077, 1080 (CCP A 1972). Finally, "it is well settled that unexpected results
must be established by factual evidence. 'Mere argument or conclusory
statements in the specification does not suffice."' See In re Geisler, 116
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Application 13/802,950
F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1994)); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) ("Attorney's argument in a brief cannot take the place of evidence.").
Here, Appellant does not point us to evidence that the observed faster uptake
of a hydrophilic material by a hydrophilic medium such as cellulose acetate,
relative to a hydrophobic medium such as polyester, would have been
unexpected.
In addition, although secondary considerations such as unexpected
results must be taken into account, they do not necessarily control the
obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554
F.3d 1001, 1009 (Fed. Cir. 2009) ("[E]vidence of unexpected results and
other secondary considerations will not necessarily overcome a strong prima
facie showing of obviousness"); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1372 (Fed. Cir. 2007) ("[T]his secondary consideration does not overcome
the strong showing of obviousness in this case. Although secondary
considerations must be taken into account, they do not necessarily control
the obviousness conclusion."); see also Newell Cos. v. Kenney Mfg. Co., 864
F.2d 757,769 (Fed. Cir. 1988). In this case, Potter's teaching of cellulose
acetate as a suitable substitute for cotton as a liquid storage medium in an
electronic smoking article serves as strong evidence of obviousness.
Rejection I is sustained.
Rejection III
With regard to Rejection III, Appellant limits the arguments to
features recited in claim 27. See Br. 12-14. Claims 28-34, 37, and 38 stand
or fall with claim 27.
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Application 13/802,950
Appellant argues that Rosener fails to teach a "woven" wick and, in
any event, woven is neither the same as nor suggestive of a "braided" wick
as recited in claim 27. Br. 12-14. Appellant's argument addressing
Rosener, in isolation, is unpersuasive of error in the Examiner's obviousness
determination based on the collective teachings of Tucker and Rosener.
Tucker exemplifies the disclosed wick as preferably comprising
filaments, "and most preferably a bundle comprising a group of windings of
glass filaments." Tucker ,r 63 ( emphasis added). Tucker further
characterizes the wick as being formed of strands, "each strand comprising a
plurality of glass filaments twisted together." Id. ,r 105 (emphasis added).
Rosener similarly refers to a wick material being formed from "a woven
fibrous material." Rosener 14:32. Finally, the Examiner presents a
dictionary definition of "braid" as a "'narrow, ropelike band formed by
plaiting or weaving together several strands of silk, cotton, or other
material.'" Ans. 8 ( emphasis added). 7 Appellant does not persuade us of
error in the determination that these collective teachings would have
suggested to one of ordinary skill in the art, through no more than ordinary
creativity, that Tucker's wick could usefully be formed by any known
winding, twisting, or weaving technique, including braiding. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness
determination one "can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ.").
Rejection III also is sustained.
7 Appellant does not contest the proffered dictionary definition. No Reply
Brief has been received.
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Application 13/802,950
Rejections II and IV
Appellant does not present arguments particularly addressing either
Rejection II or IV other than an implicit reliance on the arguments made in
connection with the independent claims. Accordingly, Rejections II and IV
are sustained for the reasons given above.
DECISION
The Examiner's decision rejecting claims 1-17, 20-34, and 36-41 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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