Ex Parte Marshall et al

Patent Trial and Appeal Board

Nov 14, 2018

14055449 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/055,449 10/16/2013
26158 7590 11/16/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Jerry Wayne Marshall
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.
R60999 10560US.l
(0625.0)
CONFIRMATION NO.
2949
EXAMINER
SZEWCZYK, CYNTHIA
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
IPDocketing@wbd-us.com
BostonPatents@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY WAYNE MARSHALL, DANIEL VERDIN CANTRELL,
and SERBAN C. MOLDOVEANU
Appeal 2018-001883
Application 14/055,449
Technology Center 1700
Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 is generally illustrative of the subject matter on
appeal and is reproduced below:
1. A smokeless tobacco pastille configured for insertion
into the mouth of a user, the smokeless tobacco pastille
comprising: (i) a tobacco material present in an amount of less
than about 40 dry weight percent, based on the total dry weight
of the pastille; (ii) at least one natural gum binder present in an
amount of at least about 25 dry weight percent; and (iii) a
plurality of sugar alcohols present in a total amount of at least
Appeal 2018-001883
Application 14/055,449
about 40 dry weight percent, the predominant component of the
plurality of sugar alcohols being isomalt or erythritol, wherein
the shape of the smokeless tobacco pastille is moldable in the
oral cavity.
Appellant1 (see generally App. Br. 2) requests review of the following
rejections from the Final Office Action:
I. Claims 1-3, 5-14, and 17-27 rejected under 35 U.S.C. §
I02(a)(l) as anticipated by Cantrell (US 2012/0138074 Al, published June
7,2012).
II. Claim 4 rejected under 35 U.S.C. § 103 as unpatentable over
Cantrell and O'Connell (US 2012/0145170 Al, published June 14, 2012).
III. Claims 15 and 16 rejected under 35 U.S.C. § 103 as
unpatentable over Cantrell and Liu (US 2004/0101543 Al, published May
27, 2004).
OPINION
The Prior Art Rejections
Appellant relies on the same line of arguments to address the rejection
of claims 1-3, 5-14, and 17-27 (Rejection I) and separately rejected claim 4
(Rejection II). See generally App. Br. Appellant presents separate
arguments for the rejection of claims 15 and 16 (Rejection III).
App. Br. 8-9. Accordingly, we select independent claim 1 as representative
of the subject matter before us on appeal for Rejections I and II and decide
the appeal as to claims 1-14 and 17-27 based on the arguments made by
1 R.J. Reynolds Tobacco Company is the Applicant/ Appellant and is also
identified as the real party in interest. App. Br. 1.
2 The Appeal Brief is not paginated. For the purposes of this opinion, we
number the pages of the Appeal Brief beginning with the Title page as page
1.
2
Appeal 2018-001883
Application 14/055,449
Appellant in support of patentability of claim 1. We address claims 15 and
16 separately.
After review of the respective positions provided by Appellant and the
Examiner, we affirm the Examiner's rejections of claims 1-27 under
35 U.S.C. §§ 102(a)(l) and 103 for the reasons presented by the Examiner.
We add the following for emphasis.
Claim 1
Independent claim 1 is directed to a smokeless tobacco pastille
configured for insertion into the mouth of a user comprising a plurality of
sugar alcohols present in a total amount of at least about 40 dry weight
percent, the predominant component of the plurality of sugar alcohols being
isomalt or erythritol.
The Examiner finds Cantrell anticipates the claimed invention by
describing a smokeless tobacco pastille comprising a sugar alcohol
component in an amount that overlaps the claimed amount of at least about
40 dry weight percent. Final Act. 2; Cantrell ,r,r 29, 40, and 43.
Appellant's principal argument is that, while Cantrell discloses that
the filler (e.g., a sugar alcohol) will not exceed about 50% (Cantrell ,r 40),
Cantrell provides no examples that would guide one skilled in the art to a
pastille having sugar alcohols present in a total amount of at least about 40
dry weight percent as claimed because all exemplified formulations have
sugar alcohols at a concentration that is less than the claimed concentration.
App. Br. 4---6.
We are unpersuaded. The Examiner must establish a prima facie case
of anticipation under 35 U.S.C. § 102 by showing that all elements arranged
3
Appeal 2018-001883
Application 14/055,449
as specified in a claim are disclosed within the four comers of a reference,
either expressly or inherently, in a manner enabling one skilled in the art to
practice an embodiment of the claimed invention without undue
experimentation. Clear Value, Inc. v. Pearl River Polymers, Inc., 668 F.3d
1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v. Apotex Inc., 550 F.3d
1075, 1083 (Fed. Cir. 2008). When the prior art discloses a range that
overlaps a specified range, but no specific examples falling within the
specified range are disclosed, a fact-dependent question arises as to whether
the reference describes the claimed subject matter "with sufficient specificity
to anticipate" the claim. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991,
999 (Fed. Cir. 2006). In Atofina, the court held that a reference's
temperature range of 100-500 degrees C did not describe the specified range
of 330-450 degrees C with sufficient specificity to anticipate the claim.
Atofina, 441 F3d. at 999; see MPEP § 2131.03 (Part II). However, as
explained in Clear Value, the finding of a lack of anticipation in Atofina can
be understood to be based on the criticality of the claimed temperature range
to enable the process to operate effectively. Clear Value, 668 F.3d at 1344--
45.
We are not persuaded of Examiner error based on Appellant's
contention that Cantrell does not describe the invention because it lacks of
specific examples meeting the limitations of Appellant's claims. The
Examiner identifies particular teachings in Cantrell that are relied upon to
reject Appellant's claims. Final Act. 2; Ans. 2 ( citing Cantrell ,r 40). The
Examiner also notes that Cantrell's teachings are not limited to what is
disclosed in the examples. Ans. 2; In re Mills, 470 F.2d 649, 651 (CCPA
1972) ("All the disclosures in a reference must be evaluated, including
4
Appeal 2018-001883
Application 14/055,449
nonpreferred embodiments, ... and a reference is not limited to the
disclosure of specific working examples.") ( citations omitted). Moreover,
while Appellant argues a relatively high level of sugar alcohols in the
present invention surprisingly provides a pastille having desirable
characteristics, 3 such as the presently claimed moldability (App. Br. 4 ( citing
to Spec. 15) ), the portion of the Specification relied upon by Appellant to
support such an allegation does not recite that the amount of sugar levels is
critical for an effective pastille.
Thus, we find that the Examiner adequately explains why Cantrell's
disclosure of sugar alcohol levels ("will not exceed about 50 percent")
describes the specified range ("at least about 40 dry weight percent) with
sufficient specificity to anticipate claim 1. A person of ordinary skill in the
art following the teachings of Cantrell by forming a smokeless tobacco
pastille comprising a sugar alcohol component such as in an amount of 49
percent (i.e. not exceeding about 50 percent) would have been practicing the
invention as described by Cantrell and also infringing claim 1.
We are also unpersuaded by Appellant's argument that none of the
examples include erythritol as a dominant sugar alcohol component. App.
Br. 6. Claim 1 recites the predominant component of the plurality of sugar
alcohols to be isomalt or erythritol. As Appellant acknowledges, Cantrell's
Example 4 exemplifies isomalt as the predominant sugar alcohol component.
Id. This disclosure is sufficient to meet the claimed limitation.
3 We understand Appellant's contention to also be analogous to a contention
that the claimed invention yields unexpected results. An Appellant, however,
cannot overcome a rejection under 35 U.S.C. § 102 by showing unexpected
results. In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974).
5
Appeal 2018-001883
Application 14/055,449
Accordingly, we affirm the Examiner's rejection of claims 1-14 and
17-27 under 35 U.S.C. §§ 102(a)(l) and 103 for the reasons given by the
Examiner and presented above.
Claims 15 and 16
We refer to the Examiner's Final Action for a statement of the
rejection. Final Act. 6. Briefly, Liu, directed to a nicotine containing
lozenge, was cited to supplement the teachings of Cantrell with regard to the
ratios of sugar alcohols to meet the claimed limitation of at least two
additional sugar alcohols being present in a dry weight ratio of at least about
3: 1. Final Act. 26; Liu ,r 26.
Appellant's argument for this rejection are premised on Liu teaching a
lozenge product instead of a pastille product. App. Br. 8-9. According to
Appellant, Liu' s lozenge is different from Cantrell's pastille and, thus, the
teachings of the cited art are not combinable absent impermissible hindsight.
App. Br. 8-9.
We are unpersuaded for the reasons provided by the Examiner. Ans.
3. Moreover, Merriam-Webster defines lozenge as "a small usually
sweetened and flavored medicated material that is designed to be held in the
mouth for slow dissolution especially: one that contains a demulcent sore
throat lozenges- called also pastille, troche."4 In view of this, Appellant's
arguments are not persuasive of reversible error.
4 httns://www.rnerriarn-webster.com/dictionary/lozenge (last accessed
October 31, 2018).
6
Appeal 2018-001883
Application 14/055,449
Accordingly, we affirm the Examiner's rejection of claims 15 and 16
under 35 U.S.C. § 103 for the reasons given by the Examiner and presented
above.
DECISION
The Examiner's prior art rejections of claims 1-27 under 35 under
U.S.C. §§ 102(a)(l) and 103 are 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).
AFFIRMED
7