Ex Parte Chen et alDownload PDFPatent Trials and Appeals BoardMay 22, 201914584296 - (D) (P.T.A.B. May. 22, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/584,296 12/29/2014 26158 7590 05/24/2019 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 FIRST NAMED INVENTOR Gong Chen 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 1381.lUS.Cl 6459 EXAMINER WU,VICKIH ART UNIT PAPER NUMBER 1745 NOTIFICATION DATE DELIVERY MODE 05/24/2019 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 GONG CHEN, ANTHONY RICHARD GERARDI, JOHN-PAUL MUA, DARRELL EUGENE HOLTON JR., DANIEL VERDIN CANTRELL, FRANK KELLEY ST. CHARLES, SERBAN C. MOLDOVEANU, and PAUL ANDREW BRINKLEY Appeal2018-007327 Application 14/584,296 Technology Center 1700 Before BRADLEY R. GARRIS, MARK NAGUMO, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. OBERMANN, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-007327 Application 14/584,296 Appellant1 seeks relief from the Examiner's final rejections of claims 27--46 and 602 under 35 U.S.C. § 103(a). Appeal Br. 4--10. 3 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. STATEMENT OF THE CASE Appellant's invention relates to processes for treatment of tobacco. Spec. 1:6. In one aspect of the invention, the tobacco is subjected to pre- treatment, such as heating, to inhibit the reaction of asparagine that forms acrylamide in mainstream smoke. Id. at 7: 13-17. Appellant states that lower pH levels during heat treatment can also reduce acrylamide levels in the heat-treated material. Id. at 18:31-19: 1. Claim 27 is illustrative of the subject matter and states: Claim 27. A method of preparing a tobacco product with reduced acrylamide content, comprising: (i) mixing a tobacco material, water, and asparaginase to form a moist tobacco mixture; 1 Appellant is the Applicant, R.J. Reynolds Tobacco Company, which, according to the Appeal Brief, is also the real party in interest. Appeal Br. 1. 2 In the Appeal Brief, Appellant states that "[c]laims 27-59 are withdrawn pursuant to a previous restriction requirement" (Appeal Br. 3), and argues also that "[ c ]laims 27-60 are patentable over the cited art" (id. at 10). In the Reply Brief, Appellant states, "[a]ppealed [c]laims 27--46 and 57-60 stand rejected under 35 U.S.C. § 103 as being unpatentable." Reply Br. 1. We determine that claims 47-59 have been withdrawn from consideration and, accordingly, we do not address them further in this Decision. See Appeal Br. 14--15 (Claims Appendix, indicating that claims 47-56 have been withdrawn); Final Act. 2 (explaining that claims 57-59 have been withdrawn as being dependent on withdrawn claim 49). 3 The Appeal Brief does not contain page numbers. Our citations to the Appeal Brief are to unnumbered pages. 2 Appeal2018-007327 Application 14/584,296 (ii) heating the moist tobacco mixture to form a heat- treated tobacco mixture, wherein the pH of the moist tobacco mixture during the heating step is less than about 1 O; and (iii) incorporating the heat-treated tobacco mixture into a smoking article or into a smokeless tobacco product. OPINION We sustain the Examiner's rejections based on the findings of fact, conclusions of law, and rebuttals to arguments well-stated by the Examiner in the Final Office Action (dated October 12, 2017) and the Examiner's Answer (dated May 9, 2018). We add the following comments for emphasis. Claims 27-38 The Examiner rejects claims 27, 32-34, 37, and 38 as obvious over Elder4 as evidenced by Zhang. 5 Final Act. 3-8. Zhang is relied upon only to show that tobacco is classified as "food" (id. at 5), which is not disputed by Appellant. The Examiner further rejects claims 28-31, 35, and 36 as obvious over Elder as evidenced by Zhang, in view of various secondary references. Id. at 8-12. Appellant's arguments pertaining to claims 27-38 are limited to a discussion that applies also to claims 39--46 and 60. Appeal Br. 4--6. That discussion includes arguments pertaining to the limitations of claim 27, but does not individually argue the limitations of claims 28-38. Id. We select claim 27 as representative of the group consisting of 4 US 2009/0047725 Al (published Feb. 19, 2009). 5 WO 2006/099798 Al (published Sept. 28, 2006). The Examiner cites to US 8,206,766 B2 (issued June 26, 2012) as an English language version of Zhang. Final Act. 3. 3 Appeal2018-007327 Application 14/584,296 claims 27-38. See 37 C.F.R. § 4I.37(c)(l)(iv). The patentability of claims 28-38 stands or falls with claim 27. The Examiner finds that Elder discloses each limitation of claim 27, except for the limitation requiring that "the pH of the moist tobacco mixture during the heating step is less than about 10." Final Act. 4. The Examiner, however, determines that Elder's objective is to reduce the amount of acrylamide in thermally-processed food products, including smokeless tobacco, and that Elder teaches asparaginase activity "is higher when the pH is between about 4 and about 7." Id. at 3--4 (citing Elder ,r,r 2, 4, 15, 16, 22). The Examiner determines, on that basis, that a person of ordinary skill in the art would have been led to maintain the pH at the claimed levels during Elder' s heating step in order to obtain maximum asparaginase activity within the mixture and, in tum, obtain the best reduction of acrylamide. Id. at 4. Appellant responds that Elder does not teach modifying the pH of a mixture of tobacco, water, and asparaginase during heating. Appeal Br. 5-6. Appellant points out that, where Elder teaches reducing pH and testing after heating, a consumable product is not being tested. Id. at 5 ( citing Elder ,r,r 20-22 (Ex. 1) ). Further, Appellant argues, where Elder elsewhere teaches adding the asparaginase solution to a food product, a heating step is not involved. Id. at 5---6 ( citing Elder, Ex. 7, ,r 51 ). We are not persuaded that Appellant's arguments establish reversible error. Although each of Elder's Examples 1 and 7, standing alone, does not teach all of the limitations of claim 27, when the entirety of Elder's teachings are considered as a whole, we agree with the Examiner that those combined teachings render the subject matter of the claim obvious. Elder's objective is to reduce acrylamide in thermally-processed foods, including 4 Appeal2018-007327 Application 14/584,296 tobacco, by increasing the activity of asparaginase, which is an acrylamide- reducing enzyme. Elder ,r,r 2, 4, 15; Ans. 5. Contrary to Appellant's argument that "paragraph [0051] of Elder ... does not mention anything about actually heating a food product treated with the asparaginase solutions" (Appeal Br. 6), in that same paragraph, Elder expressly teaches thermal processing of food products to which an asparaginase solution has been added. Elder ,r 51. Elder further teaches that, in general, asparaginase activity is higher when pH values are between about 4 and about 7. Id. ,r 22. From that teaching, the Examiner reasonably determines that one of ordinary skill in the art would have been led to carry out Elder' s heating step (i.e., thermal processing) while maintaining the pH within Elder's disclosed range, in order to obtain the benefit of increased asparaginase activity in accordance with Elder's expressly-stated objective. Ans. 5-6; Final Act. 5---6. Claims 39--46 & 60 Appellant asserts additional arguments directed to the patentability of claims 39--46 and claim 60. Those claims stand rejected as obvious over Elder in view of Zhang and Coleman, 6 as further evidenced by Chapman, 7 Environmental Working Group, 8 and Mui. 9 Final Act. 13-15. The Examiner determines that "Elder does not expressly disclose" the limitation of claim 39, which requires "wherein the tobacco material is in a 6 US 6,499,489 Bl (issued Dec. 31, 2002). 7 US 2011/0118109 Al (published May 19, 2011). 8 Environmental Working Group, Ammonium Hydroxide, EWG's Skin Deep® Cosmetics Database (2007-2013). 9 US 2010/0016202 Al (published Jan. 21, 2010). 5 Appeal2018-007327 Application 14/584,296 shredded or particulate form or in the form of an extract." Final Act. 13. The Examiner determines further that "Elder does not expressly disclose" the limitation of claim 40, which requires "wherein the heat-treated tobacco mixture is incorporated into a cigarette." Id. The Examiner determines also that "Elder does not expressly disclose" the limitation of claim 41, which requires "wherein the cigarette comprises a rod of smokable material circumscribed by a wrapping material and a filter attached to the rod at one end thereof, wherein the smokable material comprises the heat-treated tobacco mixture." Id. The Examiner determines, however, that an ordinarily skilled artisan would have looked to Coleman, Chapman, and Zhang for forming tobacco products according to the methods of claims 39--41. Id. at 18-20. The Examiner also determines, regarding claim 60, that "Elder does not expressly disclose further comprising mixing a buffering agent with the moist tobacco mixture, wherein the buffering agent buffers within a pH range of about 6 to about 10." Id. at 14. The Examiner, however, identifies evidence that Coleman, which uses ammonium hydroxide to attain a pH in the mixture that is "within a pH range of about 6 to about 10," would have been understood in the art to teach "a buffering agent." Id. at 14, 20-21 (identifying Environmental Working Group and Mui as evidence on point). The Examiner further relies on Chapman to demonstrate that the mixture of Coleman has a pH of "between about 6 and about 10." Id. at 21-22. Appellant first argues that the field of invention is "not simply forming a tobacco product, but instead is forming a tobacco product with a reduced acrylamide content," and, on that basis, contends that Coleman is not in this same field of endeavor as the invention at issue. Appeal Br. 6-7. 6 Appeal2018-007327 Application 14/584,296 In essence, Appellant argues that Coleman is not analogous art. Appellant, however, neither specifically asserts that Coleman is not analogous art, nor applies the applicable test for determining whether that prior art reference is analogous art. See id. In any event, the specification does not describe the field of invention as narrowly as Appellant, but rather, expressly states that the field of invention "relates to processes for treatment of tobacco." Spec. 1 :6. Accordingly, we are not persuaded that Appellant establishes Coleman as non-analogous art, or that the Examiner improperly applies Coleman as a prior art reference under 35 U.S.C. § 103. Appellant argues also that it would not have been obvious to combine Elder with Coleman as proposed by the Examiner because Coleman does not teach or suggest a method of preparing a tobacco product with a reduced acrylamide content. Appeal Br. 6-9. According to Appellant, because Coleman teaches the addition of outside reducing sugars to the tobacco suspension, which would encourage the reaction between asparagine and reducing sugars, the intended purpose of Coleman does not include inhibiting the reaction between asparagine and reducing sugars. Id. at 7-8 (citing Coleman 7:4--16). As the Examiner points out, however, Appellant unpersuasively attacks individual disclosures in Coleman without addressing adequately the Examiner's reliance on the reference to show features compatible with a tobacco product having a reduced acrylamide content. Ans. 7-8 (citing In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413 (Fed. Cir. 1986)); Final Act. 14 (explaining that Coleman makes obvious the use of a specific "buffering agent with a moist tobacco mixture" to achieve a pH that falls within the required range "in order to obtain a tobacco extract to incorporate within a useable product"). 7 Appeal2018-007327 Application 14/584,296 We do not agree with Appellant's suggestion that Elder and Coleman are incompatible. As the Examiner correctly points out, both references pertain to heat-treated tobacco products (Ans. 8), and Coleman's use of additional reducing sugars is optional (see id. ( explaining that Coleman teaches adding zero reducing sugars within the tobacco suspension (citing Coleman 7:5-7)); Final Act. 17). Appellant argues further that, even if one would have been led to combine the teachings of Elder and Coleman, the combination would not provide a pH of less than about 10 during the heating step, because Coleman's use of ammonia is likely to raise the pH above the claimed range. Appeal Br. 8. The Examiner, however, provides calculations showing that, when Coleman includes ammonia, the pH of the tobacco suspension is not above 10. Ans. 9. Appellant acknowledges the Examiner's calculations but does not argue that they are incorrect. See Final Act. 18-19; Appeal Br. 8 ("[t]he Office provides calculations alleging that the pH of the tobacco suspension in Coleman is approximately 5.65"). Accordingly, we are not persuaded Appellant shows reversible error in the Examiner's determination that, in Coleman, the pH of the tobacco suspension is less than 10. Appellant advances additional arguments directed to claims 42--46. Appeal Br. 10. Appellant asserts that none of the cited references teaches a cigarette characterized by an acrylamide content of mainstream smoke that is reduced compared to an untreated smoking article and, specifically, by the amounts recited in the claims ( e.g., a reduction of "at least about 60 percent", as recited in claim 46). Appeal Br. 10. However, where "the claimed and prior art products ... are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior 8 Appeal2018-007327 Application 14/584,296 art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Here, the Examiner reasonably determines that the cigarette suggested by the prior art combination of Elder in view of Coleman would exhibit the same properties as the claimed product-including at least a 60% reduction in acrylamide content compared to an untreated control smoking article-because the prior art cigarette would have been produced according to the same obvious method as claimed by Appellant. Ans. 13. Appellant does not provide evidence to rebut the Examiner's determination, but instead reasserts arguments that it would not have been obvious to combine Elder and Coleman, adding that the Examiner's rejection lacks a proper showing of predictability as to reduced acrylamide content in mainstream smoke of the smoking article. Reply Br. 2--4. On the contrary, the Examiner makes an express finding, adequately supported by the record, that there would have been a reasonable expectation of success in obtaining a tobacco product with reduced acrylamide content in the combination of Elder and Coleman. Ans. 5---6, 9-10 (citing Elder ,r 22; Zhang 3:60--4:1). The Examiner's analysis adequately supports aprima facie case of obviousness, as "[ o ]bviousness does not require absolute predictability of success." In re O 'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). Obtaining a tobacco product with a reduced acrylamide content in mainstream smoke of the smoking article would have been reasonably predictable based on the teachings of the prior art, as the objective of Elder is to reduce acrylamide. In the Reply Brief, Appellant argues that any proposed modification would change the principle of operation of the prior art invention being 9 Appeal2018-007327 Application 14/584,296 modified. Reply Br. 2 (citing In re Ratti, 270 F.2d 810 (CCPA 1959)). We decline to consider that argument because it is raised in the Reply Brief but not in the Appeal Brief. Appellant does not show good cause for our consideration of that untimely argument on appeal. See 37 C.F.R. § 41.41 (b )(2). In any event, Appellant does not explain how or why any proposed modification to Elder' s method of treating tobacco would change Elder' s principle of operation. Accordingly, that argument is not persuasive to establish reversible error. Appellant also contends that the Examiner does not establish that the applied prior art would have made obvious the subject matter of claim 60, which recites the use of a buffering agent. Appeal Br. 9-10. The Examiner relies on the ammonium hydroxide taught in Coleman as a buffering agent within the scope of claim 60. Final Act. 14. The Examiner provides evidence that ammonium hydroxide is described in the art as a buffering agent. Id. at 20-21 (citing Environmental Working Group; Mui ,r 61)); Ans. 11 ( same citations). Appellant, on the other hand, characterizes ammonium hydroxide as a pH adjuster (which is used to raise the pH of a solution) as opposed to a buffer ( which would be used to minimize changes in pH when an acid or base is added to a solution). Appeal Br. 9. Appellant rests on bare attorney argument, unsupported by objective evidence, to support the factual proposition that ammonium hydroxide would have been recognized as a pH adjuster and not a buffering agent. Id. The Examiner, by contrast, relies on objective evidence that ammonium hydroxide would have been understood in the art as a buffering agent. Ans. 11; Final Act. 20-21. Appellant does not address that evidence in either the Appeal Brief or Reply Brief. Accordingly, the evidence of record 10 Appeal2018-007327 Application 14/584,296 supports the Examiner's determination that ammonium hydroxide falls within the scope of a buffering agent as recited in claim 60. DECISION The Examiner's decision to reject claims 27--46 and 60 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.I36(a)(l). AFFIRMED 11 Copy with citationCopy as parenthetical citation