Ex Parte Egoyants et al

Patent Trials and Appeals Board

Jul 9, 2019

14127144 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/127,144 03/31/2014
135778 7590 07/11/2019
Patterson Thuente Pedersen, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
FIRST NAMED INVENTOR
Petr Egoyants
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.
4840.03WOUS01 2036
EXAMINER
YAARY,ERIC
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
07/11/2019 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):
efsuspto@ptslaw.com
rabe@ptslaw.com
gagliardi@ptslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETR EGOY ANTS,
DMITRY VOLOBUEV, PAVEL FIMIN, OLEG ABRAMOV,
LEONID CHECHURIN, and LUBA MITNIK-GANKIN
Appeal2017-011078
Application 14/127,144
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-21 of Application 14/127,144
under 35 U.S.C. § 103(a) as obvious. Final Act. (October 19, 2016).
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
1 British American Tobacco (Investments) Limited is identified as the real
party in interest and as a subsidiary of British American Tobacco PLC.
Appeal Br. 2.
Appeal2017-011078
Application 14/127,144
We held a hearing in this appeal on June 17, 2018. 2 For the reasons
set forth below, we affirm.
BACKGROUND
The '144 Application describes an apparatus which releases
compounds from tobacco without creating tobacco smoke. Spec. 1. Such an
apparatus is called a heat-not-bum product. Id. According to the
Specification, a heat-not-bum apparatus may comprise an elongated heater
configured to heat smokeable material ( e.g., tobacco), wherein the heater
comprises a plurality of independently controllable heating regions arranged
along a longitudinal axis of the heater. Id.
Claim 1 is representative of the '144 Application's claims and is
reproduced below from the Claims Appendix:
1. An apparatus comprising:
an elongate heater configured to meet smokeable material
contained within the apparatus in use to volatilize at least one
component of the smokeable material, the heater comprising a
plurality of independently controllable heating regions arranged
along a longitudinal axis of the heater to independently heat
sections of smokeable material; and
a smokeable material heating chamber for receiving
smokeable material in use, the heating chamber being arranged
adjacent to a longitudinal surface of the heater so that thermal
energy emitted by the heating regions travels in a radial
direction from the longitudinal surface of the heater into the
heating chamber to independently heat the sections of
smokeable material.
Appeal Br. 21.
2 A transcript of the hearing will be made part of the record when it becomes
available.
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Application 14/127,144
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-3, 5, 10, 12, 14, and 17-21 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination of Robinson3 and
Deevi. 4 Final Act. 3.
2. Claim 4 is rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Robinson, Deevi, and Roof. 5 Final Act. 4.
3. Claims 6, 8, 9, 11, and 15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Robinson, Deevi, and
Zuber. 6 Final Act. 4.
4. Claim 7 is rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Robinson, Deevi, and Thorens. 7 Final Act. 5.
5. Claim 13 is rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Robinson, Deevi, Zuber, and Zohni. 8 Final
Act. 5.
6. Claim 16 is rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Robinson, Deevi, and Adams. 9 Final Act. 6.
3 US 2008/0092912 Al, published April 24, 2008.
4 US 5,093,894, issued March 3, 1992.
5 US 2008/0085139 Al, published April 10, 2008.
6 US 2011/0126848 Al, published June 2, 2011.
7 US 2011/0094523 Al, published April 28, 2011.
8 US 8,081,474 Bl, issued December 20, 2011.
9 US 2007/0102013 Al, published May 10, 2007.
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Application 14/127,144
DISCUSSION
Appellants argue for the reversal of the rejection of claims 1-3, 5, 7,
10, 12, 14, and 16-21 on the basis of limitations recited in claim 1. Appeal
Br. 12-19.
Appellants present additional arguments for reversal of the rejection
of claims 4, 6, 8, 9, 11, 13, and 15. Appeal Br. 19. We shall address these
additional arguments below.
Rejection 1. The Examiner rejected claims 1-3, 5, 10, 12, 14, and
17-21 as unpatentable over the combination of Robinson and Deevi. Final
Act. 3. As discussed above, we select claim 1 as representative of these
claims. 37 C.F.R. § 4I.37(c)(l)(iv). We, therefore, shall limit our
substantive discussion to claim 1.
Appellants argue that the rejection of claim 1 should be reversed for
any of three reasons: (1) the combination of Robinson and Deevi would be
inoperative, Appeal Br. 12-16; (2) Robinson and Deevi teach away from
each other, id. at 16-17; and (3) there is no motivation to combine Deevi and
Robinson, id. at 17-19. We address these arguments in tum.
First, Appellants argue that the Examiner's combination of Robinson
and Deevi would be inoperative. Appeal Br. 12-17. We are not persuaded
by this argument.
In rejecting claim 1, the Examiner found that Robinson describes an
apparatus comprising an elongated heater 300 configured to heat smokeable
material 89 contained within the apparatus to volatilize at least one
component of smokeable material 89. Answer 3--4; see also Robinson
Fig. 3. The Examiner further found that Robinson does not describe
elongated heater 300 as having independently controllable heating regions
arranged along the longitudinal axis of the apparatus. Id. at 4. The
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Application 14/127,144
Examiner also found that Deevi describes a heater for use within the
smoking device comprising a plurality of independently controllable heating
regions arranged along a longitudinal axis of the heater for more efficient
energy consumption. Id.
Appellants argue that the Examiner "fundamentally misapprehends
the operating principle of Robinson in the rejection of claim 1." Appeal Br.
12. According to Appellants, Robinson's elongated heater 300
is always used as a secondary, or even tertiary, heater, while
volatilization of the tobacco (89) is primarily accomplished by
heating an airstream before it ever reaches any portion of
tobacco (89). That is, rather than volatilizing tobacco (89)
using heater (300), Robinson teaches use of the airstream itself
to volatilize tobacco (89).
Id. at 12-13.
According to Appellants, combining Robinson and Deevi in the
manner suggested by the Examiner "would not provide for more efficient
energy consumption nor allow for intermittent use" because power usage
would remain high due to heating of the airstream to volatilization or near-
volatilization temperatures. Id. at 15.
We are not persuaded by Appellants' arguments. Robinson describes
volatilization of smokeable material 89 as being accomplished by the heat
generated by three heating elements 70, 72, 300 act upon the tobacco and
components thereof. Robinson ,r 113. Furthermore, Robinson teaches that
each of these heating elements can be controlled separately. See, e.g., id.
,r,r 14--21, 24, 110. Modifying Robinson by incorporating Deevi's
longitudinally segmented heater saves energy relative to the unmodified
Robinson device because only a portion of smokeable material 89 is heated
at a time. Thus, we agree with the Examiner that the person of ordinary skill
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in the art at the time the invention would have had a reason to combine
Robinson and Deevi in the manner described in the Final Action.
Second, Appellants argue that Deevi explicitly teaches away from
systems such as those described in Robinson. Appeal Br. 16. Appellants
argue that Deevi teaches away from Robinson because Deevi describes the
use of the segmented heater to volatilize each section of a tobacco rod
separately. Id. According to Appellants, Robinson describes an apparatus in
which "heaters are arranged to heat the airstream before it contacts the
tobacco. Therefore, every section [ of the tobacco rod] would be volatilized
at the same time, even if Robinson were modified by Deevi as suggested in
the [Final Action]." Id.
This argument is not persuasive.
To begin with, Appellants misunderstand the requirements for a
teaching away. The relevant inquiry is not whether the references teach
away from each other, but whether, upon reading a reference, the ordinary
artisan would be led in a direction divergent from the path that was taken by
the inventor. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Thus,
Appellants' arguments do not raise an issue of teaching away, but present an
issue of whether the ordinary artisan would have had a reason to combine
Robinson and Deevi.
Turning now to the merits of Appellants' argument, Appellants ignore
Robinson's description that the cumulative effect of heating elements 70, 72,
and 300 volatilizes the tobacco. See Robinson ,r 113. In the combination
relied upon by the Examiner, the airstream would be heated to near-
volatilization temperatures by Robinson's first and second heating elements
70, 72. The final increment of heat needed to volatilize the tobacco product
would be produced on a segment by segment basis by Deevi's longitudinally
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segmented heating elements. Thus, Appellants' assertion that in the
combination relied upon by the Examiner in the rejection of claim 1, every
section of the tobacco rod would be volatilized at the same time is incorrect.
To the extent that Appellants intended to argue that Deevi teaches
away from the claimed invention, Appellants have not identified a particular
portion of Deevi that criticizes or denigrates preheating the airstream to
assist in volatilization of the tobacco rod. Appellants, therefore, have not
explained why a person of ordinary skill "would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant." Gurley, 27 F.3d at
553.
Third, Appellants argue that the rejection of claim 1 should be
reversed because there is no motivation to combine Deevi and Robinson.
Appeal Br. 17-19.
This argument is not persuasive.
As the Examiner explains,
Robinson does not already disclose independently controllable
heating regions arranged along a longitudinal axis of the heater.
Modifying the heater 300 of Robinson [to] include
independently controlled heating regions arranged along its
longitudinal axis as suggested by Deevi would not be redundant
as this would provide the benefit of more efficient energy
consumption [by] the heater 300, as well as allowing for
intermittent use.
Answer 12. We determine that Appellants have not identified reversible
error in the Examiner's reasons for combining Robinson and Deevi in the
manner relied upon in the rejection.
For the reasons set forth above, we affirm the rejection of claim 1.
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Appellants argue that claims 2, 3, 5, 10, 12, 14, and 17-21 are
patentable by virtue of their dependence from claim 1. Appeal Br. 19.
Because we have affirmed the rejection of claim 1, we also affirm the
rejection of these claims.
Rejection 2. The Examiner rejected claim 4 as unpatentable over the
combination of Robinson, Deevi, and Roof. Final Act. 4.
First, Appellants argue that the rejection of claim 4 should be reversed
because it depends from claim 1. Appeal Br. 19. For the reasons set forth
above, we have affirmed the rejection of claim 1. We, therefore, cannot
reverse the rejection of claim 4 on this basis.
Second, Appellants argue that the rejection of claim 4 should be
reversed because the combination of Roof with Robinson and Deevi is
improper. Id. In particular, Appellants argue that
Id.
Roof relates to heating toner in an electrostatographic
reproducing machine. The second Office Action provides little
or no "rational underpinning" as required by KSR to explain
why a person of ordinary skill in the art at the time of the
invention would have looked to a reference on electrostato-
graphic reproduction when considering how to most efficiently
and effectively volatilize tobacco or similar products.
To rely upon a reference as a basis for an obviousness rejection of
Appellants' claims, the reference must either (1) be in the field of the
inventor's endeavor or (2) be reasonably pertinent to the particular problem
with which the inventor was concerned. In re Kahn, 441 F .3d 977, 986-87
(Fed. Cir. 2006); In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
In this case, the Examiner found that "Roof relates to a segmented
heating device and is thus reasonably pertinent to the particular problem
with which the applicant was concerned, a segmented heater for a smoking
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Application 14/127,144
device." Answer 12. Appellants have not filed a Reply Brief or otherwise
demonstrated reversible error in this finding.
In view of the foregoing, we affirm the rejection of claim 4.
Rejection 3. The Examiner rejected claims 6, 8, 9, 11, and 15 as
unpatentable over the combination of Robinson, Deevi, and Zuber. Final
Act. 4.
First, Appellants argue that these claims are allowable based upon
their dependence from independent claim 1. Appeal Br. 19. For the reasons
set forth above, we have affirmed the rejection of claim 1. We, therefore,
cannot reverse the rejection of claims 6, 8, 9, 11, and 15 on this basis.
Second, Appellants argue that the combination of Zuber with Deevi is
improper. Id. In particular, Appellants argue that
Id.
[b ]oth Robinson and Deevi teach the use of an electronic or
resistive heater. Zuber, in contrast, teaches the use of a carbon
fuel. Therefore[,] it is unlikely one of ordinary skill in the art
would have combined these references. Furthermore, Deevi
explicitly teaches away from the use of carbon fuels, at col. 1, 1.
64---col. 2, 1. 3, because they do not permit the device to be
extinguished. Accordingly, under MPEP § 2141.02, the
combination of Deevi with Zuber is improper[,] and the
rejection should be reversed.
Appellants assertion that Zuber teaches use of a carbon fuel appears to
be incorrect. Zuber describes "[a]n electrically heated smoking system for
receiving in aerosol forming substrate [that] includes a heater from heating
the substrate to form the aerosol." Zuber Abstract. Zuber states that the
power supply may be a DC voltage source such as a lithium-ion battery.
Id. ,r 66. Appellants do not provide any citation to support their assertion
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that Zuber teaches the use of a carbon fuel, and we have been unable to find
any support for this assertion.
In view of the foregoing, we affirm the rejection of claims 6, 8, 9, 11,
and 15.
Rejection 4. The Examiner rejected claim 7 as unpatentable over the
combination of Robinson, Deevi, and Thorens. Final Act. 5.
Appellants argue that claim 7 is unpatentable based upon its
dependence from independent claim 1. Appeal Br. 19. For the reasons set
forth above, we have affirmed the rejection of claim 1. We, therefore, also
affirm the rejection of claim 7.
Rejection 5. The Examiner rejected claim 13 as unpatentable over
the combination of Robinson, Deevi, Zuber, and Zohni. Final Act. 5.
First, Appellants argue that these claims are allowable based upon
their dependence from independent claim 1. Appeal Br. 19. For the reasons
set forth above, we have affirmed the rejection of claim 1. We, therefore,
cannot reverse the rejection of claims 6, 8, 9, 11, and 15 on this basis.
Second, Appellants argue that the rejection should be reversed
because Zuber describes the use of a carbon fuel source. Appeal Br. 19. As
discussed in connection with Rejection 3, above, this argument is not
persuasive.
We, therefore, affirm the rejection of claim 13.
Rejection 6. The Examiner rejected claim 16 as unpatentable over
the combination of Robinson, Deevi, and Adams. Final Act. 6.
Appellants argue that claim 16 is allowable based upon its dependence
from independent claim 1. Appeal Br. 19. For the reasons set forth above,
we have affirmed the rejection of claim 1. We, therefore, also affirm the
rejection of claim 16.
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CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1-21
of the '144 Application.
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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