Ex Parte Fazlani

Board of Patent Appeals and Interferences

Sep 27, 2011

11268286 (B.P.A.I. Sep. 27, 2011)

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

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Application 11/268,286

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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pending in this application, stands withdrawn from consideration by the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
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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.

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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.
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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
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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.”).
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.”). Since Appellant’s opened-ended transitional claim term
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“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
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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
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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
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