Ex Parte Luan et al

Patent Trial and Appeal Board

Mar 21, 2017

12576996 (P.T.A.B. Mar. 21, 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.
12/576,996 10/09/2009 Zhaohua Luan 1021238-000986 3281
145992 7590 03/23/2017
ALCS Law Dept. - Product and IP c/o
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
MAYES, DIONNE WALLS
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/23/2017 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):
ADIPDOCl@BIPC.com
kenneth.lilly @ altria.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte
ZHAOHUA LUAN, DONALD MISER, DARIN COLASSACO,
W. GEOFFREY CHAN, PADMANABHA REDDY ETTIREDDY,
SAROJINI DEEVI, and MARC KRAUS S
Appeal 2016-002613
Application 12/576,9961
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and
JAMES C. HOUSEL, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the December 26, 2014
Final rejection of claims 1 and 19-30.2 We have jurisdiction under
35 U.S.C. §6.
1 The real party in interest is Philip Morris USA Inc. App. Br. 2.
2 Claims 3—18 have been withdrawn from consideration. App. Br. 2.
Appeal 2015-002613
Application 12/576,996
Appellants’ invention generally relates to a method for removing one
or more heavy metals from an aqueous plant extract, comprising contacting
the aqueous plant extract with a sorbent. Independent claim 1 is
representative of the scope of the subject matter presented on appeal. Claim
1 is reproduced from the Brief below:
1. A method for removing one or more heavy metals from
an aqueous plant extract, comprising:
contacting the aqueous plant extract with, and sorbing at
least a portion of the one or more heavy metals on, a
sorbent comprising one or more surface activated
titanium oxide particles, to form a mixture of sorbent and
heavy metal-depleted aqueous plant extract; and
separating the sorbent from the mixture to provide a
heavy metal-depleted aqueous plant extract, wherein the
sorbent comprising one or more surface activated
titanium oxide particles is selective toward the targeted
one or more heavy metals such that sorbent sites are not
taken up by non-targeted constituents of the aqueous
plant extract that decrease the loading of the sorbent for
the targeted one or more heavy metals.
Appellants, Appeal Brief 3, requests review of the rejection of claims
1 and 19-30 under 35 U.S.C. §103(a) as unpatentable over Zimmerman
(WO 2008/090477 A2 published July 31, 2008) in view of Dadachov (US
2006/0144793 A1 published July 6, 2006).
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Appeal 2015-002613
Application 12/576,996
OPINION3
We have reviewed each of Appellants’ arguments for patentability.
We sustain the Examiner’s rejection for essentially those reasons expressed
in the Final Action and Answer, including the Response to Argument
section. We add the following:
We refer to the Examiner’s Final Action for a complete statement of
the rejection. Final Act. 4—14.
The Examiner found Zimmerman describes a method of preparing
smoking materials from plants such as tobacco wherein reconstituted
materials can be made by separating a soluble extract from the insoluble
portion of the plant. Final Act. 3. Zimmerman’s method comprises the
selective removal of a plurality of constituents including the removal of
specific metal ions (e.g., cadmium, lead and mercury). Zimmerman pp. 1—2
and 8. Zimmerman discloses suitable metal selective adsorption agents are
those that are effective at selectively removing soluble metal ions from
aqueous tobacco extracts. Zimmerman p. 8. The Examiner found
Zimmerman discloses the metal selective adsorption agent can be any agent
that effectively removes soluble metals from the aqueous extract to a greater
extent than it adsorbs other constituents. Final Act. 4—5, Zimmerman pp. 8—
9. The Examiner recognized that Zimmerman failed to disclose the metal
selective adsorption agent includes surface activated titanium oxide. Final
Act. 4. The Examiner found Dadachov describes surface-activated titanium
dioxide as an adsorption agent to remove heavy metals (i.e., cadmium, lead,
3 Appellants present their substantive arguments addressing independent
claim 1. We limit our discussion to independent claim 1 as representative of
the subject matter on appeal.
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Appeal 2015-002613
Application 12/576,996
nickel) from aqueous streams like natural water, ground water and/or surface
water. Final Act. 3, Dadachov^Hf 32, 51. The Examiner concluded that it
would have been obvious to a person of ordinary skill in the art to use a
surface-activated titanium dioxide as an adsorption agent to remove heavy
metals from aqueous tobacco extracts. Final Act. 4.
Appellants argue the Examiner has not provided a reason to modify
Zimmerman to include a titanium oxide as the metal selective absorption
agent because Zimmerman fails to describe ineffectiveness of the absorption
agents described in the reference. App. Br. 5. Appellants argue Dadachov
does not teach or suggest the suitability of utilizing titanium oxide with a
plant extract and the Examiner is speculating that surface activated titanium
oxide would have been effective in removing heavy metals from an aqueous
tobacco extract. App. Br. 8—9.
Appellants’ arguments are not persuasive of reversible error for the
reasons provided by the Examiner. Appellants have not disputed that
activated titanium oxide was an absorption agent suitable for removal of
heavy metals, such as cadmium, lead, nickel, from aqueous systems.
Zimmerman is concerned with the use of absorption agents for the removal
of the same heavy metals from aqueous plant extracts. A person of ordinary
skill in the art would have reasonably expected that activated titanium oxide
would have been suitable for removal of heavy metals from aqueous plant
extracts. “Obviousness does not require absolute predictability of success ...
all that is required is a reasonable expectation of success.” In re Kubin, 561
F.3d 1351, 1359-60 (Fed. Cir. 2009) (citingIn re O’Farrell, 853 F.2d 894,
903—04 (Fed. Cir. 1988)). In the present case, a person of ordinary skill in
the art would have recognized activated titanium oxide was selective to
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Appeal 2015-002613
Application 12/576,996
heavy metal compounds in aqueous systems. We have not been directed to
evidence that establishes that aqueous plant extracts contain ingredients that
would have been expected to interfere with the expected selectivity property
of activated titanium oxide.
Accordingly, we sustain the Examiner’s decision to reject claims 1
and 19-30 for the reasons presented by the Examiner and given above.
ORDER
The Examiner’s obviousness rejection of claims 1 and 19—30 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)(1).
AFFIRMED
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