Ex Parte Clarke et alDownload PDFPatent Trials and Appeals BoardJun 26, 201913701706 - (D) (P.T.A.B. Jun. 26, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/701,706 01/28/2013 23474 7590 06/28/2019 FLYNN THIEL, P.C. 2026 RAMBLING ROAD KALAMAZOO, MI 49008-1631 FIRST NAMED INVENTOR Paul Francis Clarke 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. 3700.P0524US 7980 EXAMINER MAYES, DIONNE WALLS ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 06/28/2019 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): DOCKET@FL YNNTHIEL.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL FRANCIS CLARKE and AHMAD F ASHIHUL LISAN Appeal2018-008259 Application 13/701,706 Technology Center 1700 Before MARK NAGUMO, MONTE T. SQUIRE, and LILAN REN, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1---6, 11, 18-20, and 27-33, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In explaining our Decision, we refer to the Specification filed Dec. 3, 2012 ("Spec."); Non-Final Office Action dated Nov. 17, 2017 ("Non-Final Act."); Appeal Brief filed Mar. 22, 2018 ("Br."); and Examiner's Answer dated May 29, 2018 ("Ans."). There is no reply brief. 2 According to the Appeal Brief (Br. 1 ), Filtrona Filter Products Development Co. Pte. Ltd. is the real party in interest. Appeal2018-008259 Application 13/701,706 The Claimed Subject Matter Appellants' disclosure relates to filters and filter elements for use with non-filtered smoking articles comprising a wrapper. Spec. ,r,r 1, 5; Abstract. Claim 1 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A stand alone tobacco smoke filter or filter element for use with a smoking article comprising a wrapper engaged around a longitudinally extending core of tobacco smoke filtering material, wherein at least one end of the wrapper extends beyond an end of the core around which the wrapper is engaged to define a cavity at an end of the filter which faces the smoking article in use; and wherein the wrapper is paper of basis weight from 30 to 80 g/m2; and wherein the smoking article has a circumference of 16 to 17 mm. Claims Appendix 1 (key disputed claim language italicized and bolded). The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Mantchev White Crooks et al. ("Crooks") Smith et al. ("Smith") Biggs et al. ("Biggs") Lecoultre et al. ("Lecoultre") Tarora ("WO '287") us 3,064,541 us 5,119,836 us 5,685,323 us 5,724,997 US 6,779,531 Bl US 7,243,659 Bl WO 2009/078287 Al The Rejections Dec. 01, 1959 June 9, 1992 Nov. 11, 1997 Mar. 10, 1998 Aug. 24, 2004 July 17, 2007 June 25, 2009 On appeal, the Examiner maintains (Ans. 2) the following rejections: 1. Claims 1, 6, 32, and 33 are rejected under pre-AIA 35 U.S.C. 2 Appeal2018-008259 Application 13/701,706 § 103(a) as being unpatentable over WO '287 3 in view of Biggs ("Rejection 1 "). 2. Claims 1, 6, 32, and 33 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Lecoultre ("Rejection 2"). 3. Claims 1---6, 11, 18, and 19 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Crooks in view of Biggs and WO '287 ("Rejection 3"). 4. Claims 27 and 29 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Crooks in view of Biggs and WO '287, and further in view of Smith ("Rejection 4"). 5. Claim 20 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Crooks in view of Biggs, Mantchev, and WO '287 ("Rejection 5"). 6. Claim 28 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Crooks in view of Biggs, Mantchev, and WO '287, and further in view of Smith ("Rejection 6"). 7. Claim 30 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Crooks in view of Biggs and WO '287, further in view of White and Smith ("Rejection 7"). OPINION Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm the Examiner's rejections based on the fact-finding and reasoning set forth in the Answer 3 For each of Rejections 1 and 3-7, the Examiner refers and cites to Tarora et al. (US 2010/0242977, published Sept. 30, 2010), which is the U.S. Patent Application Publication of the WO '287 reference. 3 Appeal2018-008259 Application 13/701,706 and Non-Final Office Action, which we adopt as our own. We add the following. Rejection 1 Appellants argue claims 1, 6, 32, and 33 as a group. Br. 3--4, 6. We select claim 1 as representative and claims 6, 32, and 33 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner determines that the combination of WO '287 and Biggs suggests a cigarette satisfying all of the limitations of claim 1 and, thus, concludes the combination would have rendered claim 1 obvious. Ans. 3--4 (citing WO '287, Abstract, Fig. 3, ,r,r 30 (Table 1), 42, 48, 49; Biggs, Abstract, 3:12--47 (Example 1)). Appellants argue that the Examiner's rejection of claim 1 should be reversed because neither WO '287 nor Biggs discloses "a filter having a cavity suitable for receiving a tobacco rod wherein inserting the tobacco rod into the cavity forms a completed cigarette." Br. 4. Appellants contend that this feature is a structural limitation of the claim and not merely an intended use limitation, and patentably distinguishes the claim over the cited art. Id. at 4. Appellants also argue that the combination of WO '287 and Biggs does not disclose "a stand-alone filter or filter element" and "neither cited reference discloses a smoking article that 'has a circumference of 16 to 17 mm,'" as recited in the claim. Id. at 5. We do not find Appellants' arguments persuasive of reversible error in the Examiner's rejection based on the fact-finding and reasoning provided by the Examiner at pages 3--4 and 20-22 of the Answer. On the record before us, we find that a preponderance of the evidence and sound technical 4 Appeal2018-008259 Application 13/701,706 reasoning support the Examiner's analysis and determination that the combination of WO '287 and Biggs suggests all of the limitations of claim 1, and conclusion that the combination would have rendered the claim obvious. WO '287, Abstract, Fig. 3, ,r,r 30 (Table 1), 42, 48, 49; Biggs, Abstract, 3:12--47 (Example 1). Contrary to what Appellants argue (Br. 4--5), we find that a preponderance of the evidence does support the Examiner's finding that the cited art discloses the "stand alone tobacco smoke filter or filter element" recitation of the claim. In particular, as the Examiner finds (Ans. 20), WO '287 teaches that the filter element 320 is, indeed, a "stand alone filter or filter element" after fabrication and just prior to being attached to the cigarette main body 110. See Tarora, Fig. 3, ,r 49. As the Examiner explains (Ans. 21 ), the fact that the filter element 320 may at some point be ultimately attached to the cigarette main body 110 and is intended to function and be utilized in that attached state, without more, does not patentably distinguish the claim over the prior art. Indeed, it is well-settled that the patentability of an apparatus or article of manufacture claim depends on the claimed structure, not on the use or purpose of that structure, or the function or result of that structure. See Catalina Mktg. Int 'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also In re Danly, 263 F.2d 844,848 (CCPA 1959) ("Claims drawn to an apparatus must distinguish from the prior art in terms of structure rather than function."). A preponderance of the evidence also supports the Examiner's finding that the cited art discloses the "wherein the smoking article has a circumference of 16 to 17 mm" recitation of the claim. In particular, as the 5 Appeal2018-008259 Application 13/701,706 Examiner finds (Ans. 21-22), Biggs explicitly discloses a cigarette comprising a tobacco core surrounded by a cigarette wrapper having a circumference of approximately 17 mm, which overlaps the claimed range. See In re Wertheim, 541 F.2d 257,267 (CCPA 1976) (holding that where claimed ranges "overlap or lie inside ranges disclosed by the prior art," a prima facie case of obviousness exists). As the Examiner explains (Ans. 22), the fact that Biggs discusses that its wrapped tobacco core can be further circumscribed with a tobacco-bearing annulus and subsequently wrapped with an outer wrapper that may increase the overall circumference of the cigarette is merely an intended use and, without more, does not negate Biggs' disclosure that cigarettes of approximately 17 mm in circumference were known in the art. Appellants' argument that neither WO '287 nor Biggs discloses "a filter having a cavity suitable for receiving a tobacco rod wherein inserting the tobacco rod into the cavity forms a completed cigarette" (Br. 4) is not persuasive because, as the Examiner correctly points out (Ans. 21 ), the phrase "a cavity suitable for receiving a tobacco rod" is not recited in claim 1 and is merely a statement of intended use. See In re Van Geuns, 988 F.2d 1181, 1184--85 (Fed. Cir. 1993) ("[L]imitations are not to be read into the claims from the specification."). Moreover, as the Examiner finds (Ans. 21) and Appellants do not dispute, the filter WO '287 discloses would be capable of accommodating, within its recessed cavity filter portion, a tobacco rod having a circumference of the required size. Because Appellants have not filed a Reply Brief, the Examiner's factual findings and analysis stand unrebutted. Absent more, we discern no 6 Appeal2018-008259 Application 13/701,706 reason to reverse the Examiner's rejection. Cf In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that, even if the examiner had failed to make a prima facie case, the Board would not have erred in framing the issue as one of reversible error because "it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections"). Accordingly, we affirm the Examiner's rejection of claims 1, 6, 32, and 33 under pre-AIA 35 U.S.C. § 103(a) as obvious over the combination of WO '287 and Biggs. Reiection 2 Claims l, 6, and 32 Appellants argue claims 1, 6, and 32 as a group. Br. 6. We select claim 1 as representative and claims 6 and 32 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner determines that Lecoultre teaches or suggests a cigarette with a recessed filter satisfying all of the limitations of claim 1 and, thus, concludes the reference would have rendered claim 1 obvious. Ans. 6-8 (citing Lecoultre, Abstract, Fig. 3, 3:55-58, 4:19-21, 7:4--21). Appellants assert that the Examiner's rejection of claim 1 should be reversed because Lecoultre does not disclose a "stand alone tobacco smoke filter or filter element for use with a smoking article" and "wrapper engaged around a longitudinally extending core of tobacco smoke filtering material ... to define a cavity at an end of the filter which faces the smoking article in use" recitations of the claim. Br. 7. Appellants also assert that Lecoultre does not disclose a "paper of basis weight from 30 to 80 g/m2" (id. at 7) and 7 Appeal2018-008259 Application 13/701,706 "it is not obvious to modify the Lecoultre et al. '659 patent to result in the paper" of claim 1 (id. at 8). We do not find Appellants' arguments persuasive of reversible error in the Examiner's rejection based on the fact-finding and reasoning provided by the Examiner at pages 6-8 and 22-24 of the Answer. In particular, we find that a preponderance of the evidence and sound technical reasoning support the Examiner's analysis and determination that Lecoultre teaches or suggests all of the limitations of claim 1, and conclusion that the reference would have rendered the claim obvious. Lecoultre, Abstract, Fig. 3, 3:55- 58, 4:19-21, 7:4--21. Appellants' assertions at pages 7-8 of the Appeal Brief are not persuasive of reversible error because they are conclusory and, without more, insufficient to rebut or otherwise establish reversible error in the Examiner's rejection. Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). See also In re Geisler, 116 F.3d 1465, 14 7 0 (Fed. Cir. 1997) ( explaining that mere lawyer's arguments or conclusory statements, which are unsupported by concrete factual evidence, are entitled to little probative value). Moreover, as the Examiner correctly points out (Ans. 22-23), Appellants' assertions that Lecoultre does not disclose a "stand alone tobacco smoke filter or filter element for use with a smoking article" and "wrapper engaged around a longitudinally extending core of tobacco" are principally the same arguments that Appellants previously presented and we discussed above in affirming the Examiner's Rejection 1. Compare Br. 4--5, with Br. 7. 8 Appeal2018-008259 Application 13/701,706 We, therefore, do not find these contentions persuasive of reversible error in the Examiner's Rejection 2 for principally the same reasons discussed above for Rejection 1. In particular, as the Examiner finds (Ans. 23) and contrary to what Appellants argue, like the WO '287 reference, Lecoultre also discloses a "stand alone filter" ( element 22) after its fabrication and just prior to being attached to the cigarette main body 112. Lecoultre, Fig. 3, 8: 16-32. As the Examiner explains (Ans. 23), the fact that Lecoultre' s filter element 22 may at some point be ultimately attached to the cigarette main body 112 and is intended to function and be utilized in that attached state, without more, does not patentably distinguish claim 1 over the prior art. Appellants' assertion that Lecoultre does not disclose a "paper of basis weight from 30 to 80 g/m2" (Br. 7) is equally unpersuasive of reversible error based on the Examiner's fact-finding and reasoning provided at pages 23-24 of the Answer, which stand unrebutted. In particular, we find that a preponderance of the evidence supports the Examiner's analysis and conclusion that it would have been obvious to one having ordinary skill in the art to have undergone routine experimentation and arrived upon the claimed basis weight for the cavity wall after determining such weight to be optimal in assuring stability of the cavity wall during smoking, which is one of the goals of Lecoultre. Lecoultre, 3:55-58; see also In re Aller, 220 F.2d 454, 456 (CCPA 1955) (stating "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation"). 9 Appeal2018-008259 Application 13/701,706 Claim 33 Claim 33 depends from claim 32 and further recites "wherein the paper is of basis weight of about 50 g/m2." Claims Appendix 4. Appellants assert that the Examiner's rejection of claim 33 should be reversed because "Claim 33 defines patentable subject matter" (Br. 8) and "it clearly is not obvious to modify the Lecoultre ... to result in paper 'of basis weight of about 50 g/m2. "' We do not find these assertions persuasive of reversible error in the Examiner's rejection because they are conclusory and based on attorney argument. De Blauwe, 736 F.2d at 705; Geisler, 116 F.3d at 1470. Moreover, based on the fact-finding and reasoning provided by the Examiner at pages 9-10 and 23-24 of the Answer, we find that a preponderance of the evidence supports the Examiner's determination that it would have been obvious to one of ordinary skill to have arrived at the claimed basis weight based on Lecoultre' s teachings and through routine experimentation, which stand unrebutted by Appellants. Aller, 220 F .2d at 456. Accordingly, we affirm the Examiner's rejection of claims 1, 6, 32, and 33 under pre-AIA 35 U.S.C. § 103(a) as obvious over Lecoultre. Rejection 3 Appellants argue claims 1---6, 11, 18, and 19 as a group. Br. 9. We select claim 1 as representative and the remaining claims subject to this rejection stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner determines that the combination of Crooks, Biggs, and WO '287 suggests a disposable filter attachment for smoking articles satisfying all of the limitations of claim 1 and, thus, concludes the 10 Appeal2018-008259 Application 13/701,706 combination would have rendered claim 1 obvious. Ans. 10-12 (citing Crooks, Abstract, Figs, 1, 2, 1 :57-62, 4:28--47, 4:36--40, 5:55---6:9 (Example 1); Biggs, Abstract, 3:12--47 (Example 1); WO '287, Abstract, Fig. 3, ,r,r 30 (Table 1 ), 42, 48, 49). Appellants contend that the Examiner's rejection of claim 1 should be reversed because Crooks does not disclose the "paper of basis weight from 30 to 80 g/m2" and "wherein the smoking article has a circumference of 16 to 17 mm" recitations of the claim. Br. 9. Appellants also contend "there is nothing in any of the cited documents which would prompt one of ordinary skill in the art to select a particular basis weight specifically for a filter having a circumference in the range of from 16 mm to 17 mm." Id. at 10. We do not find Appellants' contentions persuasive of reversible error in the Examiner's rejection based on the fact-finding and reasoning provided by the Examiner at pages 10-12 and 24--26 of the Answer, which stand unrebutted. In particular, we find that a preponderance of the evidence and sound technical reasoning support the Examiner's analysis and determination that the combination of Crooks, Biggs, and WO '287 suggests all of the limitations of claim 1, including a "paper of basis weight from 30 to 80 g/m2" and "wherein the smoking article has a circumference of 16 to 17 mm," and the Examiner's conclusion that the combination would have rendered the claim obvious. Crooks, Abstract, Figs, 1, 2, 1:57-62, 4:28--47, 4:36--40, 5:55---6:9 (Example 1 ); Biggs, Abstract, 3: 12--47 (Example 1 ); WO '287, Abstract, Fig. 3, ,r,r 30 (Table 1), 42, 48, 49. Appellants' assertions at pages 9-11 of the Appeal Brief are not persuasive of reversible error in the Examiner's rejection because they are 11 Appeal2018-008259 Application 13/701,706 conclusory and based on attorney argument. De Blauwe, 736 F.2d at 705; Geisler, 116 F.3d at 1470. Moreover, Appellants' disagreement as to the Examiner's factual findings, without more, is insufficient to establish reversible error. Cf SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) ("[M]ere statements of disagreement ... as to the existence of factual disputes do not amount to a developed argument."). Accordingly, we affirm the Examiner's rejection of claims 1---6, 11, 18, and 19 under pre-AIA 35 U.S.C. § 103(a) as obvious over the combination of Crooks, Biggs, and WO '287. Rejections 4, 5, 6, and 7 The Examiner's Rejections 4, 5, 6, and 7 (stated above) are all obviousness rejections based primarily upon the combination of Crooks, Biggs, and WO '287, which is discussed above for Rejection 3. See Ans. 14, 15, 18, 19. Appellants, however, do not present any new or additional substantive arguments in response to these rejections. Rather, Appellants rely on essentially the same arguments previously presented and discussed above in response to the Examiner's Rejection 3. See Br. 11 (arguing claims define patentable subject matter because they "depend from Claim 1" and "Claim 1 defines patentable subject matter as outlined above"), 12-13 (same); see also id. at 12 (arguing "as set forth above in regard to Claim 1, it is not obvious to combine the Crooks et al. '323 patent, the Biggs et al. '531 patent and WO 2009/078287"), Accordingly, based on the findings and technical reasoning provided by the Examiner and for principally the same reasons discussed above for 12 Appeal2018-008259 Application 13/701,706 affirming the Examiner's Rejection 3 based on the combination of Crooks, Biggs, and WO '287, we affirm the Examiner's Rejections 4, 5, 6, and 7. DECISION The Examiner's rejections of claims 1---6, 11, 18-20, and 27-33 are affirmed. It is ordered that the Examiner's decision 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 13 Copy with citationCopy as parenthetical citation