Ex Parte Kaljura

Patent Trial and Appeal Board

Jul 19, 2017

14432422 (P.T.A.B. Jul. 19, 2017)

United States Patent and Trademark Office
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.
14/432,422 03/30/2015 Karl KALJURA BTMK-281/00US 3558
318520-2481
23413 7590 07/21/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street NGUYEN, PHU HOANG
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
07/21/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL KALJURA
Appeal 2017-008468
Application 14/432,422
Technology Center 1700
Before LINDA M. GAUDETTE, JULIA HEANEY, and JANE E. INGLESE,
Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision
finally rejecting claims 1—9, 11, 13, 14, and 17. Appeal Br. 5.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 This Decision includes citations to the following documents: Specification filed
Mar. 30, 2015 (“Spec.”); Final Office Action mailed July 1, 2016 (“Final”);
Corrected Appeal Brief filed Dec. 19, 2016 (“Appeal Br.”); Examiner’s Answer
mailed Mar. 20, 2017 (“Ans.”); and Reply Brief filed May 22, 2017 (“Reply Br.”).
2 Appellant is the Applicant, British American Tobacco (Investments) Ltd., which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 1.
3 The Examiner has withdrawn the rejection of claim 12 under pre-AIA 35 U.S.C.
§ 103(a). Ans. 6.
Appeal 2017-008468
Application 14/432,422
The invention relates to a smoking article that is based on tobacco products
or heat-not-bum products (i.e., products in which flavor is generated by application
of heat, without causing combustion), e.g., a cigarette. Spec. 2:19—23. An
exemplary embodiment of the inventive smoking article is illustrated in Figure 2,
reproduced below.
Figure 2 is a partial perspective view of a smoking article in accordance with
a first embodiment of the invention. Spec. 2:8—9. As shown in Figure 2, smoking
rod 10 includes a tobacco unit comprising a source of smokable material in the
form of tobacco rod 11 and first filter section 12. Id. at 2:26—27, 30—31. Tobacco
rod 11 and first filter section 12 are connected by means of a covering layer. Id. at
2:28—30. Smoking rod 10 further comprises sleeve 13, which is in the form of a
tube extending around the circumference of first filter section 12, and movable
relative thereto. Id. at 2:34—36. Second filter section 14 is securely attached and
fixed within sleeve 13, downstream of first filter section 12. Id. at 3:1—4. First and
second filter sections 12, 14 comprise homogenous filtration materials that differ in
at least one physical property such that the pressure drop/resistance to draw across
second filter section 14 is greater than pressure drop/resistance to draw across first
filter section 12. Id. at 4:11—13, 32—36; see id. at 4:28—30 (explaining that pressure
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Application 14/432,422
drop or resistance to draw indicates the pressure required to draw smoke through
the filter section).
Smoking rod 10 includes one or more first ventilation areas 16 around first
filter section 12 and one or more second ventilation areas 15 on sleeve 13. Id. at
3:13—16. The level of ventilation is adjustable by rotating sleeve 13 relative to first
filter section 12, thereby controlling the overlap of first and second ventilation
areas 15, 16 to vary ingress of air upstream of second filter section 14. Id. at
3:30-4:3; see also id. at 12:31—32. As a result of the relatively high pressure
drop/resistance to draw of second filter section 14, adjusting ventilation has a
relatively low impact on pressure drop/overall resistance to draw of smoking
article 10. Id. at 6:9—12. In other words, as the level of ventilation is varied over a
range selectable by the user, the pressure drop of the smoking article remains fairly
constant. Id. at 6:12—16.
Claim 1, the sole independent claim on appeal, is representative of the
invention and is reproduced below:
1. A smoking article comprising:
a first filter section;
a second filter section located downstream of the first filter
section, the first filter section including a material with a first pressure
drop per unit length, and the second filter section including a material
with a second pressure drop per unit length, the second pressure drop
per unit length being greater than the first pressure drop per unit
length; and
a ventilation system configured to selectively provide ingress of
a variable level of ventilating air
further comprising a sleeve configured to move relative to the
first filter section, wherein the second filter section is fixed within the
sleeve, and the level of ventilation is selectable by selecting a position
of the sleeve relative to the first filter section.
Appeal Br., Appx. A, 1.
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Application 14/432,422
The Examiner maintains the following grounds of rejection under pre-AIA
35 U.S.C. § 103(a): claims 1—5, 7—9, 11, 13, 14, and 17 as unpatentable over
Clarke (U.S. 2006/0011206 Al, pub. Jan. 19, 2006) and Nichols (U.S. 4,532,943,
iss. Aug. 6, 1985); and claim 6 as unpatentable over the same references, further in
view of Schluter (U.S. 2005/0076927 Al, pub. Apr. 14, 2005). Ans. 2—6.
Appellant’s arguments in support of patentability as to all appealed claims
are based on limitations recited in claim 1. Appeal Br. 5—9; see id. at 9—15
(arguing each of dependent claims 2—9, 13, 14, and 17 is patentable because the
applied prior art fails to disclose or suggest the limitations recited therein).
Accordingly, we decide the appeal as to the claims subject to the first ground of
rejection on the basis of claim 1. See 37 C.F.R. § 41.67(c)( 1 )(vii) (2016). With
respect to the second ground of rejection (i.e., the rejection of claim 6), Appellant
additionally argues that Schluter fails to cure the deficiencies in the references
relied on by the Examiner in rejecting claim 1. Appeal Br. 15.
Appellant’s arguments raise the following issue for our consideration: did
the Examiner reversibly err in finding one of ordinary skill in the art at the time of
the invention would have had a reasonable expectation of success in modifying
Clarke, based on the teachings of Nichols, to include a ventilation system having
the features recited in appealed claim 1? We answer this question in the
affirmative for the reasons discussed below.
Figure 1 of Clarke is reproduced below.
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Application 14/432,422
Clarke Figure 1 is a sectional side elevational view of an individual filter and
filter cigarette. Clarke 117. The Examiner finds Clarke discloses a smoking
article comprising a first filter section (filtering plug 3) and a second filter section
(filtering plug 2), the second filter section including a material with a pressure drop
per unit length that is greater than the pressure drop per unit length of the first filter
section {Id. 118). Final 2. Clarke discloses that filter wrapper 4 is engaged around
filtering plugs 2, 3, which are spaced apart to form cavity 6 therebetween. Clarke
3, 18. Clarke discloses that “[i]n filter cigarettes according to the invention the
wall around the cavity (e.g. the filter wrapper when ring tipping is used, or the
combination of filter wrapper and tipping overwrap) must be ventilating—i.e.
provide a pathway for the passage of external ventilating air laterally therethrough
into the cavity.” Id. 17. Clarke discloses that the wall around cavity 6 may be
ventilated by using a material that either is air permeable or includes perforations
{id.) “usually . . . distributed in one or more rows extending longitudinally of or
around the cavity” {id. 19), e.g., “a ring of ventilating perforations {id. 119).
Clarke discloses that “[i]n most instances, . . . filter wrapper 4 is of inherently air-
permeable material.” Id. The Examiner finds the claim 1 recitation of “a
ventilation system configured to selectively provide ingress of a variable level of
ventilating air” reads on ventilating perforations 8 in Clarke’s filter wrapper 4
because ingress of ventilating air can be varied by a user selectively blocking
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Application 14/432,422
ventilating perforations 8. Final 2. There is no explicit disclosure in Clarke,
however, that ventilating perforations 8 are capable of functioning in this manner.
See Appeal Br. 8; Ans. 7—8. The Examiner finds “Clarke does not expressly
disclose a sleeve configured to move relative to the first filter section” as required
by the final paragraph of claim 1. Final 3. The Examiner relies on Nichols for a
teaching of this feature. Id.
Nichols discloses various embodiments of a cigarette, as illustrated in
Figures 2 and 7, reproduced below.
Fig. 7
Nichols Figure 2 is a partial perspective view showing a tobacco rod, filter, and
tipping paper. Nichols 2:61—64. Nichols Figure 7 is a partial cross-sectional view
of a filter plug and a tobacco rod of a filter cigarette. See id. at 3:9—11. Nichols
discloses tobacco rod 1 “joined in abutting end-to-end relation to a wrapped filter
plug 4 which has a circumferentially extending cut 5 . . . defining a central axial
core 16,” whereby filter plug 4 is divided into mouth-end segment 6 and rod-end
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Application 14/432,422
segment 7. Id. at 3:47—53. Nichols discloses that filter plug 4 and a portion of
tobacco rod 1 are circumscribed by non-porous tipping paper 8. Id. at 3:54—56. A
row of closely spaced perforations 9, overlying rod-end segment 7, divides tipping
paper 8 into mouth-end band 10, attached to segment 6, and rod-end band 11,
attached to segment 7. Id. at 3:59—67. Nichols discloses that during manufacture
of a cigarette, corresponding openings 14, 15 are made through band 10 and the
underlying wrapping covering filter plug 4, respectively, at a position intermediate
to row of perforations 9 and cut 5. Id. at 4:1^4. Ingress of air/air dilution is
adjusted “by rotating band 10 and breaking the row of perforations 9, thereby
allowing band 10 and the segment 6 to rotate in unison about the central core 16.”
Id. at 4:6—9. “Rotation of band 10 rotates opening 14 relative to opening 15 thus
varyingthe degree of registry, thereby varying the air dilution value of the
cigarette.” Id. at 4:14—17. Nichols discloses that “[b]oth the tipping paper 8 and
the wrapping of the filter plug 4 are substantially air impermeable wrappings
which restrict any radial air flow through the filter paper and underlying plug wrap
to the area of registry between openings 14 and 15.” Id. at 4:18—22. Nichols
discloses that core 16 will typically have a diameter within the range of from about
12.7% to about 38.1% of the diameter of filter plug 4, and that “[t]his range will
permit segment 6 to be rotated 360° without breaking the core 16.” Id. at 4:10—14.
The Examiner finds Nichols discloses a second filter section (mouth-end
segment 6) fixed within a sleeve (rotating band 10), the sleeve being configured to
move relative to a first filter section (rod-end segment 7). Final 2 (citing Nichols
3:62-4:17; Fig. 2). The Examiner finds one of ordinary skill in the art would have
modified Clarke’s cigarette “with the configuration of the sleeve as taught by
Nichols so that a user [could] easily vary[] the level of ventilation of the cigarette
as desire[d].” Id. at 3. The Examiner thus concludes the invention as recited in
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Application 14/432,422
claim 1 would have been obvious in view of the combined teachings of Clarke and
Nichols. See id.
Appellant contends the facts and reasons relied on by the Examiner are
insufficient to support a finding that the ordinary artisan at the time of the
invention would have had a reasonable expectation of success in modifying Clarke,
based on the teachings of Nichols, to include a ventilation system having the
features recited in appealed claim 1 (see generally Appeal Br. 5—9). See In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (noting that under the court’s long­
standing case law, an obviousness determination requires that a skilled artisan
would have had a ‘“reasonable expectation of success’ in deriving the claimed
invention in light of the teachings of the prior art”). Appellant argues that rotation
in Nichols is made possible by central axial core 16. Appeal Br. 6—7. Appellant
contends the addition of a core to Clarke’s cigarette would eliminate the empty
space (cavity 6) that is described by Clarke as being an essential part of the
inventive cigarette. Id. at 7. Appellant further contends that, even if Nichols’ core
16 were incorporated into Clarke’s cigarette, “the resulting combination would be
inoperable for its intended purpose.” Id. Appellant argues, more specifically, that
Nichols’ rotating band 10 (alleged by the Examiner (Final 2) as meeting the claim
1 limitation of “a sleeve configured to move relative to the first filter section”) is
supported completely by underlying segments 6, 7 of filter plug 4, thereby
allowing rotating band 10 to separate from end band 11 at perforations 9, but
otherwise remain intact. See id. at 6—7. Appellant contends Clarke requires some
separation (i.e., cavity 6) between filtering plugs 2, 3. Id. at 7. Appellant argues
that if Clarke were modified to include a rotatable band as disclosed in Nichols, the
portion of the band (or sleeve as recited in claim 1) surrounding cavity 6 would not
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Application 14/432,422
be supported fully (e.g., by segments of the filter plug(s) as in Nichols) and,
therefore, reasonably would be expected to collapse when rotated. Id.
In response to Appellant’s argument, the Examiner asserts that “the
combination of Clarke and Nichols taken together as a whole teaches the central
axial core (16, [Nichols] fig. 7) which ensures that the filter would not fall apart as
the central axial core connects the filter segments across a cavity (5, [Nichols] fig.
7).” Ans. 7. We agree with Appellant, however, that the evidence of record fails
to support the Examiner’s finding that one of ordinary skill in the art reasonably
would have considered cut 5 to be an unsupported cavity, similar to Clarke’s cavity
6. See Reply Br. 2—3. Therefore, we find the Examiner has failed to persuasively
refute Appellant’s reasoned argument that the ordinary artisan would not have had
a reasonable expectation of success in modifying Clarke, based on Nichols, due to
the absence of some underlying support for the portion of the sleeve surrounding
Clarke’s cavity 6. See generally Ans. 6—8.
In sum, Appellant has argued persuasively that the Examiner’s conclusion of
obviousness as to claim 1 is not supported by a preponderance of the evidence.
We also agree with Appellant (Appeal Br. 15) that the Examiner has not identified
a teaching or suggestion in Schluter that cures the deficiencies in the Examiner’s
combination of Clarke and Nichols (see Final 5; Ans. 12).
Accordingly, the Examiner’s decision to reject claims 1—9, 11, 13, 14, and
17 is:
REVERSED
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