Ex Parte Lipowicz

Patent Trial and Appeal Board

Feb 25, 2016

11444331 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111444,331 0610112006
21839 7590 02/29/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Peter John Lipowicz
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.
1021238-000679 4744
EXAMINER
SZEWCZYK, CYNTHIA
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER JOHN LIPOWICZ
Appeal2014-005418
Application 11/444,331
Technology Center 1700
Before: CATHERINE Q. TIMM, BEYERL YA. FRANKLIN and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134 from a final rejection of
claims 1, 3, 4, 6-9, 11, and 16-22. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 In our opinion below, we refer to the Final Office Action appealed from,
filed June 12, 2013 (Final), the Appeal Brief filed November 18, 2013
(Appeal Br.), the Examiner's Answer filed January 30, 2014 (Ans.), and the
Reply Brief filed March 31, 2014 (Reply Br.).
2 Appellant identifies the real party in interest as Philip Morris USA Inc., the
assignee of the present application.
Appeal2014-005418
Application 11/444,331
STATEMENT OF CASE
The claims are directed to tobacco with an increased level of natural
tar diluents. Claim 1 is illustrative of the claimed subject matter and is
reproduced below with the relevant claim language emphasized:
1. A tobacco comprising composition comprising a natural
tar diluent,
wherein (a) the natural tar diluent is 2-
methyldotriacontane, 2-methylhentriacontane; 2-
methylheptacosane; 2-methylhexacosane; 2-methylnonacosane;
2-methyloctacosane; 2-methyltetratriacontane; 2-
methyltriacontane; 2-methyltritriacontane; 3-
methyldotriacontane; 3-methylhentriacontane; 3-
methylheptacosane; 3-methyloctacosane; 3-3-
methy ltetratriacontane; 3-methy ltriacontane; 3-
methy ltritriacontane; docosane; dotriacontane; eicosane;
heneicosane; hentriacontane; heptacosane; hexacosane;
nonacosane; octacosane; pentacosane; pentatriacontane;
squalene; tetracosane; tetratriacontane; or tritriacontane; or a
combination thereof, (b) the natural tar diluent is selected from
the group consisting of solanesol; neophytadiene; 3-methyl-1-
pentanol; 1- nonadecanol; 2-ethyl-1-hexanol; bomeol; 4-( 4-
tolyl)-1-butanol; levoglucosan; a duvene alcohol;
pdimethoxybenzene; 3-methylanisole; eugenol methyl ether; 4-
methylbenzaldehyde; 2 ,4-dimethylbenzaldehyde; 2,4-dimethyl-
3-pentanone; 3-hexanone; 2-nonanone; 2,6-heptanedione; 5-
isopropyl-8-methylnona-6,8-dien-2-one; 5-methyl-2-( 1-
methylethyl)-cyclohexanone; cycloheptanone; 1-phenyl-1-
pentanone; 2,3-dimethyl-4-ethylacetophenone; 3,4-dimethoxyl-
acetophenone; 4-phenylbutanone; 3 ,4-dimethylacetophenone;
3-pyridyl methyl ketone; 3-pyridyl ethyl ketone; 3-pyridyl
propyl ketone; 4-methylvaleramide; phenylacetamide; 3-
phenylpropionamide; nicotinamide; 6-ethyl-3-pyridine-
carboxamide; 2-isobutylpyridine; 3-butylpyridine; 3-acetyl-5-
methylpyridine; (R)-cotinine; nicotyrene; (R)-N'-
alkanoylnomicotine; (R)-N-methylanabasine; (S)-N-
valerylanabasine; (R)-N'-ethylnomicotine; (R)-N'-
carbomethoxyanabasine; (R)-N'-carbomethoxynomicotine; 2-
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Application 11/444,331
furylpyrazine; 2, 6-dimethyl-5-ethylpyrazine; pentylpyrazine; a
butenylpyrazine; 4-(3-methyl-2-pyrazinyl)-butyl alcohol; 2-(6-
methyl-2-pyrazinyl)-ethyl alcohol; 2-methyl-3-hydroxyethyl
pyrazine; or 4-acetylthiazole; or a combination thereof, ( c) the
natural tar diluent is solanesol or neophytadine, and/or (d) the
natural tar diluent comprises at least solanesol and
neophytadiene,
wherein the natural tar diluent is present in an amount of
about 25 to about 75 weight percent of total tobacco tar
produced from burning the tobacco comprising composition,
and
wherein the composition further comprises an artificial
tar diluent.
Claims Appendix at Appeal Br. 9 (emphasis added).
REJECTIONS
The Examiner made the following rejections:
A. Claims 1, 4, 6-9, 11, and 16-22 stand rejected under 35 U.S.C
§ 112 first paragraph as failing to comply with the enablement
requirement. Final 2.
B. Claims 1, 4, 6-9, 11, and 16-22 stand rejected under 35 U.S.C
§ 112 second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the inventor regards as the invention. Id. at 4.
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Application 11/444,331
9--10.
C. Claims 1, 4, 6-9, 11, and 16-223 stand rejected under 35
U.S.C § 103(a) as being unpatentable over Reich et al. 4 in
view of McGrath et al. 5 with evidence by Brown. 6 Id. at 5.
Appellant seeks our review of rejections A and B only. See infra p.
OPINION
Rejection A - Enablement
The Examiner rejects claims 1, 4, 6-9, 11, 13, and 16-22 as failing to
comply with the enablement requirement of 35 U.S.C § 112 first paragraph.
Final 2. Specifically, the Examiner contends that, as originally filed, the
"specification only teaches what constitutes an effective amount of
neophytadiene and solanesol in order to achieve the natural tar diluent
present in the tar at the [claimed] range of [about] 25-75 weight percent."
Id. 2-3. According to the Examiner, because the claims include numerous
compositions which will result "in a multitude of chemical reactions" when
burned, and without knowing what chemicals are actually present, undue
experimentation would have been required to determine which starting
composition of the tar diluent would result in the claimed range present in
the tar produced. Id. at 3; Ans. 2. Furthermore, the "tar composition is
3 The Examiner in his recitation of claims relevant to the obviousness
rejection inadvertently includes claim 3. Final 5. Claim 3 was cancelled on
March 21, 2013 and is not being appealed by Appellants. Appeal Br. 2.
4 Reich et al., US 2006/0237024 Al, published October 26, 2006
(hereinafter "Reich").
5 McGrath et al., US 2006/0162733 Al, published July 27, 2006 (hereinafter
"McGrath").
6 Colin L. Browne, The Design of Cigarettes, (Hoechst Celanese, 3rd ed.,
1990) (hereinafter "Browne").
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Application 11/444,331
effected by additional factors other than tobacco composition such as
tobacco type (page 9), reconstituted sheet properties (page 9), specifications
of the filter rod (page 66), and physical variables in the cigarette and the
tobacco shred (p. 90)." Ans. 2-3 (citing Browne). Thus, a tobacco
composition may have a different tar composition based on these additional
factors. Id. at 3.
The Appellant replies that "the total tobacco tar produced from
burning a particular tobacco comprising composition is an inherent property
of that particular tobacco comprising composition." Appeal Br. 6. And,
"[ o ]ne skilled in the art understands that the total tar weight can be
determined by measuring the amount of each tar component produced from
burning the tobacco comprising composition. Further, based on the resultant
total tar weight, the recited natural tar diluent amount can be calculated." Id.
Therefore, according to Appellant, a determination of whether a tobacco
composition meets the requirements of claim 1, requires two measurements
that can be determined without undue experimentation. Id. Appellant also
clarifies that burning the tobacco comprising composition is not burning the
tobacco composition plus added components such as a filter in cigarettes.
Reply Br. 2. Furthermore, Appellant explains that the additional variables
discussed by the Examiner are specific to the particular tobacco comprising
composition selected and "do not constitute 'additional factors other than
tobacco composition."' Id.
"[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without 'undue experimentation."' In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993). "Whether undue experimentation is needed is not a single,
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Application 11/444,331
simple factual determination, but rather is a conclusion reached by weighing
many factual considerations." In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988). "[A] considerable amount of experimentation is permissible," as
long as it is "merely routine" or the specification "'provides a reasonable
amount of guidance' regarding the direction of experimentation." Wyeth &
Cordis Corp. v. Abbott Labs., 720 F.3d 1380, 1386 (Fed. Cir. 2013) (quoting
Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1360-61 (Fed. Cir.
1998) ). The Examiner must "advance acceptable reasoning inconsistent
with enablement." In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982);
Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed.Cir.1991).
Enablement is a question of law based on underlying factual inquiries. Enzo
Biochem Inc. v. Calgene Inc., 188 F.3d 1362, 1369 (Fed. Cir. 1999).
We agree with the Appellant's postion in the record. The
Specification describes a method for "maintaining and/or enhancing flavor
and taste of smoked tobacco compositions, while decreasing the levels of
certain components in the tar, such as TSNAs [Tobacco Specific
Nitrosamines]." Spec. i-f 3. To that end, the Specification instructs
increasing one or more natural tar diluents in a tobacco containing
composition to an effective amount, i.e, "to about 5 to about 75 weight
percent of the total tobacco tar produced from burning the tobacco
comprising composition." Spec. i-fi-1 10 and 21. The Specification continues
that "[t]otal tar weight is the weight of the tar present in the tobacco that is
present in the tobacco containing article." Spec. i-f2 l. And, "[t]ar can be
calculated from the measurement of the total particulate matter minus the
nicotine minus the water." Id. The Specification notes that tar can be
measured by several standard techniques. Id. And, "based on the resultant
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Application 11/444,331
total tar weight, the recited natural tar diluent amount can be calculated."
Appeal Br. 6.
The Examiner fails to explain how the Specification would not enable
the skilled artisan to practice the invention or what teaching is missing from
the Specification that would not have been within the knowledge base of the
skilled artisan. That a person of skill in the art may have to engage in some
experimentation-without more---does not make the level of
experimentation undue as the Examiner suggests. See Wyeth & Cordis
Corp., 720 F.3d at 1386.
In light of the Specification, we determine that a preponderance of the
evidence supports Appellant's position and we reverse the Examiner's
rejection of claims 1, 4, 6-9, 11, 13, and 16-22 as failing to comply with the
enablement requirement.
Rejection B-Indefiniteness
The Examiner rejects claims 1, 4, 6-9, 11, 13, and 16-22 as indefinite
under 35 U.S.C § 112 second paragraph. Final 4. The Examiner argues that
the claims are indefinite because
[ c ]laim 1 recites "a tobacco comprising composition comprising
. . . " in line 1 while lines 27-28 recite a property of the tar
produced by burning the tobacco comprising composition. The
claim is drawn to a product therefore it is unclear how the
tobacco composition can be limited by a process that occurs to
the product.
Final 4. Also, per the Examiner, it is "unclear how to determine if a tobacco
composition meets the [claim] limitation ... if it is used in a non-burning
tobacco product such as snuff or a flavor release pouch[]." Id. And, because
"tar production is dependent upon additional factors other than tobacco
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Application 11/444,331
composition" it is not clear that "total tobacco tar produced" is an inherent
property of a particular tobacco comprising composition. Id.
Appellant counters that the claims require an amount of a natural tar
diluent which can be ascertained through burning the tobacco composition.
Appeal Br. 7. The burning of the tobacco composition is not a limitation of
the claims. Id. ("the fact that the determination of the amount requires
burning does not make the burning process a limitation to the claimed
product."). The Appellant analogizes the instant case to a claim that requires
a compound having a particular melting point which "does not make a
melting process which is required to determine the melting point of the
compound a limitation to the compound." Id. Therefore, the Examiner's
concern about non-burning tobacco is misplaced. Id. And, the "tobacco
comprising composition" includes the variables identified by the Examiner
so the "tar production of a particular tobacco comprising composition is an
inherent property to that tobacco comprising composition." Reply Br. 3.
The second paragraph of 35 U.S.C. § 112 requires the specification
"conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention." 35
U.S.C. § 112 i-f 2. This portion of the statute requires the claims "be cast in
clear-as opposed to ambiguous, vague, indefinite---terms." In re Packard,
751F.3d1307, 1313 (Fed. Cir. 2014). Although exact precision is not
required, the claim language must be as reasonably precise as the subject
matter permits. Id.; see also In re Moore, 439 F.2d 1232, 1235 (CCPA
1971) (The first inquiry "is merely to determine whether the claims do, in
fact, set out and circumscribe a particular area with a reasonable degree of
precision and particularity."). However, a claim is not indefinite merely
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Application 11/444,331
because it is broad. See In re Miller, 441 F .2d 689, 693 (CCP A 1971)
("breadth is not to be equated with indefiniteness.").
We agree with Appellant's postion in the record. In this instance, we
conclude that those skilled in the art would have no uncertainty concerning
the subject matter of the claims. The Examiner's argument that because the
"claim is drawn to a product ... it is unclear how the tobacco composition
can be limited by a process that occurs to the product" (Final 4) places
unnecessary emphasis on the process of burning rather than on the claimed
product. In doing so, the Examiner goes astray. The purpose of the claim
language requiring that "the natural tar diluent is present in an amount of
about 25 to about 75 weight percent of total tobacco tar produced from
burning the tobacco comprising composition" (Claims Appendix at Appeal
Br. 9, claim 1) is not to bum the tobacco comprising composition but
instead to express the amount of natural tar diluent required by the claims in
comparison to the total tobacco tar content of the composition.
Accordingly, we find the scope of the claims to be sufficiently precise
and conclude that claims 1, 4, 6-9, 11, 13, and 16-22 are not indefinite.
Rejection C - Obviousness
The Examiner rejects claims 1, 4, 6-9, 11, 13, and 16-22 as obvious
over Reich, McGrath, and with evidence by Brown. Final 5. Appellant does
not identify the Examiner's obviousness rejection as an issue on appeal.
Appeal Br. 5. Rather, Appellant states that they "will file a Statement of
Common Ownership to disqualify McGrath at a later time. Therefore, this
rejection is not being appealed herein." Id. at n.1.
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Here, Appellant merely says that the requisite statement will be
provided at some later date. Because Appellant has neither responded to the
Examiner's rejection nor supplied a statement of common ownership, in
compliance with MPEP § 706.02(1)(2), we affirm the Examiner's rejection
of claims 1, 4, 6-9, 11, 13, and 16-22 as unpatentable over Reich and
McGrath with further evidence by Brown.
CONCLUSION
The Examiner erred in rejecting claims 1, 4, 6-9, 11, and 16-22 under
35 U.S.C § 112 first paragraph as failing to comply with the enablement
requirement.
The Examiner erred in rejecting claims 1, 4, 6-9, 11, and 16-22 under
35 U.S.C § 112 second paragraph as being indefinite.
Appellants have not identified an error in the Examiner's rejection of
claims 1, 4, 6-9, 11, and 16-22 under 35 U.S.C §103(a) as being
unpatentable over Reich et al. in view of McGrath et al. with evidence by
Brown.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 4, 6-9,
11, and 16-22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2009).
AFFIRMED
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