Ex Parte FazlaniDownload PDFBoard of Patent Appeals and InterferencesSep 27, 201111268286 (B.P.A.I. Sep. 27, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/268,286 11/03/2005 Arif Abdul Fazlani 285.118 3269 90948 7590 09/28/2011 Charles Muserlain 317 Bliss Lane Valley Cottage, NY 10989 EXAMINER SZEWCZYK, CYNTHIA ART UNIT PAPER NUMBER 1741 MAIL DATE DELIVERY MODE 09/28/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte ARIF ABDUL FAZLANI ________________ Appeal 2010-007408 Application 11/268,286 Technology Center 1700 ________________ Before CHARLES F. WARREN, JEFFREY T. SMITH, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007408 Application 11/268,286 2 This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1 through 3. Claim 4, the other claim pending in this application, stands withdrawn from consideration by the Examiner. We have jurisdiction pursuant to 35 U.S.C. § 6. We AFFIRM. STATEMENT OF THE CASE The subject matter on appeal is directed to a smoking composition for a hookah. Claim 1 is illustrative: 1. A smoking composition for hookah containing an intimate mixture having moisture content ranging from 15% to 30% and a brix content of 45 - 65%. i) cleaned, sterilized, sieved tobacco fibres with or without addition of cellulosic fibres of length ranging from 4-40 mm; ii) at least one humectants selected from a first group of humectants containing glycerine and sorbitol; iii) at least one humectants selected from a second group of humectants consisting of propylene glycol, ethylene glycol, polydextrose, mannitol and triacetin; iv) at least one saccharide solution from a group of saccharides comprising Sugar, molasses, malt syrup, corn syrup, Honey, glucose, dextrose and stevia; v) at least one preservative selected from a group of preservatives consisting of sodium benzoate, Propionic acid, sulphur dioxide and Sorbic acid; vi) at least one flavour selected from a group of flavours consisting of natural flavours comprising apple flavour, aniseed flavour, mint flavour, peppermint flavour, strawberry flavour, spearmint flavour, clove flavor, cardamom flavor, cinnamon flavor, mixed fruit flavor, peach flavor, pineapple flavor, banana flavor, mango flavor, raspberry flavor, melon flavor, orange flavor, lime flavor, grape flavor, tobacco flavor, ginger flavor, licorice flavor and chocolate flavor and a group of synthetic flavourants consisting of Citric acid, Fumaric acid, Ascorbic acid, Tartaric acid and Lactic acid; vii) a flavor enhancer; and Appeal 2010-007408 Application 11/268,286 3 viii) at least one colouring agent selected from a group of colouring agents consisting of red, reddish brown, brownish red, blackish brown; [sic .] The Examiner maintains the following rejections: 1) claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over McAdam (US 2004/0074508 A1, published Apr. 22, 2004) and Pera (US 2003/0084912 A1, published May 8, 2003) with evidence by Beringer (US 3,929,141, issued Dec. 30, 1975); and 2) claim 3 under 35 U.S.C. § 103(a) as unpatentable over McAdam and Pera with evidence by Beringer, and further in view of Stuetz (US 4,397,321, issued Aug. 9, 1983). With respect to rejection (1), Appellant’s arguments focus on claims 1. With respect to rejection (2), Appellant provides no additional argument for this rejection. (App. Br. 3-9). Therefore, the claim in rejection (2) stands or falls with our decision regarding claim 1 in rejection (1). REJECTION (1) ISSUE Did Appellant establish that the Examiner reversibly erred in determining the applied prior art references would have rendered obvious the invention recited in claim 1 within the meaning of § 103? We decide this issue in the negative. Appeal 2010-007408 Application 11/268,286 4 FACTUAL FINDINGS 1. The Specification defines brix value as the concentration of sugars. (Spec. 9). 2. Appellant does not specifically dispute the Examiner’s finding that McAdam teaches all of the features required by claim 1, except for the moisture content; a preservative; a colouring agent; sugar content (i.e., brix value); and that the prior art smoking composition is capable of being used in a hookah. (Compare Ans. 3-5 with App. Br. 3-9 and Reply Br. 1-2). 3. Appellant does not specifically dispute the Examiner’s determination that it would have been obvious to employ a preservative such as sodium benzoate as taught by Pera in McAdam’s smoking composition since it is known that preservatives preserve the taste of smoking compositions. (Compare Ans. 4 and 5 with App. Br. 3-9 and Reply Br. 1-2). ANALYSIS AND CONCLUSION Appellant argues that McAdam does not teach a moisture content within the range of 15 to 30% as required by claim 1 as McAdam teaches an essentially dry material. (App. Br. 6). In that regard, Appellant argues that McAdam’s casting or extrusion step produces dry filling material by driving off any moisture in the smoking material. Id. Appellant also argues that the invention differs from McAdam’s invention because Appellant’s smoking composition is cured for 15 days; packed in airtight pouches; and produces on average 10% less ash during smoking. Id. at 6 and 7. Appeal 2010-007408 Application 11/268,286 5 In addition, Appellant argues that the claimed invention, unlike McAdam’s invention, does not require any binder or any inorganic material. Id. at 7. Appellant further argues that McAdam does not provide any motivation to use a colouring agent as required by claim 1 because, unlike cigarettes, the color of a Hookah smoking composition has a direct impact over the end use experience. Id. In addition, Appellant argues that the Examiner erred in maintaining the rejection because, while the applied prior art references teach filling materials for cigarette or cigarette-like devices, none of the applied prior art references teach or suggest the special purpose smoking composition for a Hookah as required by claim 1. Id. at 3 and 4. Appellant also argues that McAdam does not teach or suggest the sugar content (i.e., the brix content) required by claim 1 since McAdam’s saccharide solution source is from fruits, which have a lower sugar content than Appellant’s saccharide solution sources such as sugar, molasses, malt syrup, corn syrup and honey. (App. Br. 8). Appellant also argues that McAdam’s sugar content is incidental to the use of fruit where a portion of the sugars and organic acids are removed during the process by percolation. Id. With respect to Appellant’s argument that McAdam does not teach the moisture content required by claim 1, it is well settled that a composition exists from the moment at which the ingredients are mixed together. Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1558 (Fed. Cir. 1995). In the instant case, the Examiner correctly points out at page 3 of the Answer that McAdam teaches that water may be added to its mixture in an Appeal 2010-007408 Application 11/268,286 6 amount of 0-40% by weight. (McAdam, paras. [0029], [0032], and [0056]). Since McAdam’s amount of water (corresponding to the claimed moisture feature) is in a range (i.e., 0-40%) that fully encompasses the claimed moisture range (i.e., 15-30%), we agree with the Examiner’s determination that a prima facie case of obviousness has been presented. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). In addition, Appellant’s argument that McAdam teaches that the casting or extrusion step taught by McAdam produces dry filling material is unpersuasive because, in reference to our above discussion, the Examiner is relying on the composition of McAdam prior to the casting or extrusion step and not after the casting or extrusion step as argued by Appellant. With respect to Appellant’s argument that Appellant’s invention differs from McAdam’s invention because Appellant’s smoking composition is cured for 15 days; packed in airtight pouches; and produces on average 10% less ash during smoking, Appellant’s argument is without persuasive merit because the features argued by Appellant are not claimed and thus is not required by the claim. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating that “[m]any of appellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.â€). With respect to Appellant’s argument that Appellant’s invention does not require any binder or any inorganic material, we note that it is well settled that open-ended transitional claim terms such as “comprising†and “containing†open the claim to include compositions having additional ingredients. See, e.g., Exxon, 64 F.3d at1555 (“The claimed composition is defined as comprising - meaning containing at least-five specific ingredients.â€). Since Appellant’s opened-ended transitional claim term Appeal 2010-007408 Application 11/268,286 7 “containing†does not exclude additional ingredients such as a binder and inorganic material, Appellant’s argument is without persuasive merit. With respect to Appellant’s argument that McAdam does not provide any motivation to use a colouring agent as required by claim 1, Appellant’s argument is without persuasive merit because it fails to address the Examiner’s stated case based on McAdam’s caramel as corresponding to the claimed reddish brown or brownish red colouring agent feature required by claim 1. (Compare Ans. 4 and 5 with App. Br. 6-9 and Reply Br. 1-2). Indeed, McAdam plainly teaches that its smokable filler material (corresponding to the claimed smoking composition) may include caramel, which is known to have a reddish brown or brownish red color. (McAdam, paras. [0001]-[0005] and [0028]). In addition, Appellant does not specifically dispute the Examiner’s finding that Beringer teaches that caramel is a known colouring agent. (Compare Ans. 4 and 5 with App. Br. 3-9 and Reply Br. 1 and 2). With respect to Appellant’s arguments that McAdam does not teach or suggest the sugar content (i.e., the brix content) required by claim 1, Appellant’s arguments are without persuasive merit because they fail to address the Examiner’s stated case (Ans. 3 and 4) that the sugar content (corresponding to the claimed brix content) of 70% or less in McAdam’s smokable filler fully encompasses the claimed range (i.e., 45-65%) such that that a prima facie case of obviousness has been established. See Peterson, 315 F.3d at 1329. In addition, Appellant’s argument that the McAdam’s sugar content is incidental to the use of fruit is not dispositive since it is undisputed that McAdam teaches a sugar content (corresponding to the claimed brix Appeal 2010-007408 Application 11/268,286 8 content) of the fruit material may be 70% or less. Also, McAdam’s disclosure to percolate high sugar containing fruit to remove some of the sugar does not negate the teaching that fruit material added to the smokable material may have a sugar content of up to 70%. With respect to Appellant’s argument that the Examiner erred in maintaining the rejection because none of the applied prior art references teach or suggest the special purpose smoking composition for a Hookah as required by claim 1, we are unpersuaded. In reference to our above discussion, we determine that because the smoking composition suggested by the applied prior art references is indistinguishable from the claimed composition, it is reasonable to believe that the smoking composition suggested by the applied prior art references would have been capable of being used in a Hookah. (See FF 1-3). Because the Examiner has established a prima facie case of obviousness, we determine that the burden properly has been shifted to Appellant to present persuasive arguments or evidence refuting the Examiner’s prima facie case. We now consider Appellant’s arguments and evidence. Appellant argues that McAdam’s smokable filler material cannot be used in Hookahs since the inorganic material present in McAdam’s composition will quickly choke the system and thereby make smoking impossible. (App. Br. 7). Appellant, however, does not direct us to any objective evidence to support this argument. In this regard, Appellant, has not substantiated this mere attorney argument (i.e., that McAdam’s smokable filler material cannot be used in a Hookah) with any credible evidence. See, e.g., In re De Appeal 2010-007408 Application 11/268,286 9 Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). As such, this argument carries little weight. In addition, with respect to Appellant’s argument that the claimed invention produces 10% less ash, we note that Appellant has not averred anywhere in the Specification or in any other evidentiary submission such as an affidavit or declaration that the results (i.e., that the smoking composition produces on average 10% less ash during smoking) would be unexpected to one of ordinary skill in the art. In re Geisler, 116 F.3d 1465,1470 (Fed. Cir. 1997). Accordingly, based on the record before us, we determine that the preponderance of evidence weighs most heavily in favor of obviousness of the subject matter defined by claim 1 within the meaning of 35 U.S.C. § 103. Accordingly, we sustain the Examiner’s rejection of claim 1 in rejection (1). ORDER The Examiner’s decision is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED bar Copy with citationCopy as parenthetical citation