Ex Parte Kominami

Patent Trial and Appeal Board

Jul 26, 2017

13105707 (P.T.A.B. Jul. 26, 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.
13/105,707 05/11/2011 Takashi KOMINAMI 0042-0628PUS1 3779
127226 7590 07/28/2017
BIRCH, STEWART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
mailroom @ bskb. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKASHI KOMINAMI
Appeal 2015-006126
Application 13/105,707
Technology Center 1700
Before CHUNG K. PAK, GEORGE C. BEST, and CHRISTOPHER C.
KENNEDY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—3 and 5—7 of Application
13/105,707 under 35 U.S.C. § 103(a) as obvious. Final Act. (March 14,
2014). Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction. 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
1 Japan Tobacco Inc. is identified as the real party in interest. Appeal Br. 1.
Appeal 2015-006126
Application 13/105,707
BACKGROUND
In normal use, a lit cigarette is required to continue burning. Spec. 1.
It, however, is desirable to use a cigarette paper that has a low propensity
toward spreading a flame. Id. The use of a cigarette paper with this
property—which are referred to as low flame-spreading cigarette papers—
can be important when, for example, a cigarette falls to the floor. Id. Low
flame-spreading cigarette papers reduce the likelihood that the flame spreads
from the lit cigarette to the other substances, causing a fire. Id. The ’707
Application describes such a cigarette paper.
Claim 1 is representative of the ’707 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A cigarette paper exhibiting a low flame-spreading
property, comprising: a base cigarette paper; and a plurality of
bum-suppressing regions that are provided spaced apart from
each other on one surface of the base cigarette paper,
wherein said bum-suppressing regions are formed by
coating the base cigarette paper with a low-methoxyl pectin
having a degree of esterification lower than 50%, wherein the
amount of said pectin in the pectin-coated bum-suppressing
regions is 1.2 to 2.0 grams per square meter.
Appeal Br. 10.
2
Appeal 2015-006126
Application 13/105,707
REJECTION
Claims 1—3 and 5—7 are rejected as unpatentable over the combination
of Matsufuji,2 Keritsis,3 and Applicant’s Admitted Prior Art (AAPA). Final
Act. 3.
DISCUSSION
Appellant argues for reversal of the rejection of claims 1—3 and 5—7
without making specific reference to the limitations of any particular claim.
We, therefore, select claim 1 is representative of the ’707 Application’s
claims and limit our discussion accordingly. 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
When a rejection depends on a combination of prior art
references, there must be some teaching, suggestion, or
motivation [i.e., reason] to combine the references. Although the
suggestion to combine references may flow from the nature of
the problem, the suggestion more often comes from the teachings
of the pertinent references, or from the ordinary knowledge of
those skilled in the art that certain references are of special
importance in a particular field. Therefore, “[w]hen determining
the patentability of a claimed invention which combines two
known elements, ‘the question is whether there is something in
the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination.’”
In reRouffet, 149 F.3d 1350, 1355—56 (Fed. Cir. 1998) (citations omitted).
Here, we determine that the Examiner has not identified a sufficient reason
for a person of ordinary skill in the art at the time of the invention to have
2 WO 2006/098153Al, published September 21, 2006. Without objection,
the Examiner used US 2008/0011312 Al, published January 17, 2008, as the
English language equivalent. In this opinion, we also shall cite the ’312
Application.
3 US 4,333,484, issued June 8, 1982.
3
Appeal 2015-006126
Application 13/105,707
combined the relied upon teachings in Matsufuji and Keritsis. We,
therefore, reverse the rejection of the claims on appeal.
In rejecting claim 1, the Examiner found that Matsufuji describes each
limitation of the claim except for the use of a low-methoxyl pectin having a
degree of esterification less than 50%. Final Act. 3^4. Although Matsufuji
describes the use of pectin as a bum suppressing agent in a cigarette paper,
Matsufuji does not describe a low-methoxyl pectin as a bum suppressing
agent. Id. at 3. To remedy this deficiency in Matsufuji, the Examiner
further found that Keritsis describes both low-methoxyl pectin and alginates
as capable of forming films or gels in the presence of divalent cations such
as calcium. Id. The Examiner concluded that it would have been obvious to
one of ordinary skill in the art at the time of the invention “to use the low-
methoxy[l] pectin as the film forming agent in the invention of Matsufuji et
al. because low-methoxy[l] pectin is a known film forming agent and its film
forming abilities are well known, similar to alginates as described by
Keritsis.” Id. at 4.
We determine that the motivation to combine the teachings of
Matsufuji and Keritsis identified by the Examiner is insufficient. Matsufuji
describes a “cigarette paper exhibiting a low flame-spreading property.”
Matsufuji Abstract. In particular, Matsufuji describes the use of gel-forming
polysaccharide materials useful as bum suppressing agents as coatings on
cigarette paper that create bum-suppressing regions.
Keritsis, on the other hand, describes a smoking material which can be
used to replace part or all of the tobacco in a cigarette. Keritsis col. 5,11. 5—
29. Keritsis describes the function of the pectin used in its smoking material
as important for the formation of a water-insensitive material of
acceptable strength, bum rate, and desirable flavor and aroma. Id. col. 10,11.
4
Appeal 2015-006126
Application 13/105,707
60-68. In particular, the pectin or the modified pectin serves as a binding
agent, id. col. 13,11. 19—30, and can facilitate wet extrusion of the smoking
material, id. col. 22,11. 30-34. The use of such pectin gels to render the
smoking material water-insensitive to obtain a desired burning rate, as taught
by Keritsis, suggests that the pectin gels are used to support or improve
burning of the smoking material. Because neither Keritsis nor Matsufuji
suggests that low-methoxyl pectin gels have any bum suppressing
properties, the Examiner has not demonstrated that a person of ordinary skill
in the art at the time of the invention would have regarded low-methoxyl
pectins with a low degree of esterification as interchangeable with or
equivalent to alginates or unmodified pectins for the bum-suppressing
purposes in the formation of low flame-spreading cigarette paper.
In the absence of such evidence or a convincing explanation supported
by well-founded reasoning, we are constrained to reverse the rejection of
claim 1. Accordingly, we also reverse the rejection of claims 2, 3, and 5—7.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1—3
and 5—7 of the ’707 Application.
REVERSED
5