Ex Parte Mironov et alDownload PDFPatent Trials and Appeals BoardMay 2, 201914899742 - (D) (P.T.A.B. May. 2, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/899,742 12/18/2015 26813 7590 05/06/2019 MUETING, RAASCH & GEBHARDT, P.A. P.O. BOX 581336 MINNEAPOLIS, MN 55458-1336 FIRST NAMED INVENTOR Oleg Mironov 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. 0642.001244US01 9652 EXAMINER NGUYEN, PHU HOANG ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 05/06/2019 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): ptodocketing@mrgs.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLEG MIRONOV and IHAR NIKOLAEVICH ZINOVIK Appeal2019-002625 Application 14/899,742 Technology Center 1700 Before ADRIENE LEPIANE HANLON, DEBRA L. DENNETT, 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 a final rejection of claims 1, 2, 4--14, and 16-20. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appeal2019-002625 Application 14/899,742 The invention is directed to an aerosol-forming substrate comprising a solid material that, when used in combination with an inductive heating device, is capable of releasing volatile compounds that can form an aerosol. App. Br. 2. Claim 1 is illustrative of the subject matter claimed and is reproduced below: 1. An aerosol-forming substrate for use in combination with an inductive heating device, the aerosol- forming substrate comprising a solid material capable of releasing volatile compounds that can form an aerosol upon heating of the aerosol-forming substrate, and at least a first susceptor material for heating the aerosol-forming substrate, the first susceptor material having a first Curie-temperature and being arranged in thermal proximity of the solid material, the aerosol-forming substrate comprising at least a second susceptor material having a second Curie-temperature and being arranged in thermal proximity of the solid material, the first and second susceptor materials having specific absorption rate (SAR) outputs which are distinct from each other and/or the first Curie-temperature of the first susceptor material being lower than the second Curie-temperature of the second susceptor material, and the second Curie-temperature of the second susceptor material defining a maximum heating temperature of the first and second susceptor materials, and the second Curie-temperature of the second susceptor material does not exceed 370°C. App. Br. Claims App'x. Appellant1 requests review of the Examiner's decision to finally reject claims 1, 2, 4--14, and 16-20 under 35 U.S.C. § 103 as unpatentable over Campbell (US 5,613,505, issued March 25, 1997), Counts (US 5,269,327, issued December 14, 1993), Jacobs (US 5,911,898, issued June 15, 1999), 1 PHILIP MORRIS PRODUCTS S.A. is the Applicant/ Appellant and is also identified as the real party in interest. App. Br. 2. 2 Appeal2019-002625 Application 14/899,742 and Khatua (US 2008/0006796 Al, published January 10, 2008). App. Br. 4; Final Act. 2. Appellant presents arguments for independent claim 1 and dependent claims 7 and 17 only. See generally App. Br. Accordingly, [ c ]laims 2, 4---6, 8-14, 16, and 18-20 stand or fall with claim 1. We address claims 7 and 17 separately. OPINION After review of the respective positions the Appellant provides in the Appeal and Reply Briefs and the Examiner provides in the Final Action and the Answer, we AFFIRM the Examiner's prior art rejection of claims 1, 2, 4--14, and 16-20 for the reasons the Examiner presents. We add the following for emphasis. Claim 1 Claim 1 recites an aerosol-forming substrate comprising two susceptor materials in thermal proximity to a solid material capable of releasing volatile compounds, where the susceptor materials have different properties (Curie-temperature and/or specific absorption rate) to help control the temperature needed for the release of the volatile compounds. The Examiner finds that Campbell discloses an aerosol-forming substrate for use in combination with an inductive heating device, the aerosol-forming substrate comprising a solid material capable of releasing volatile compounds that can form an aerosol and first and second susceptors for heating the aerosol-forming substrate. Final Act. 2-3; see Campbell col. 1, 11. 19-22, col. 3, 11. 47--49, 56-62, col. 5, 11. 27-37; col. 9, 11. 36-62. The Examiner finds that Campbell suggests using combinations of suitable 3 Appeal2019-002625 Application 14/899,742 susceptor materials, such as conductive carbon, aluminum, copper, and bronze. Final Act. 3--4; Campbell col. 9, 1. 65---col. 10, 1. 1. According to the Examiner, Campbell recognizes that the selected susceptor materials are a factor in determining the desired heating for the solid material. Ans. 6; Campbell col. 8, 11. 5-14. The Examiner finds that Jacobs teaches as known to use materials having different Curie-temperatures to control heating of a substrate more accurately. Final Act. 3; see Jacobs Abst., col. 2, 1. 62 -col. 3, 1. 8; col. 5, 11. 1-17. Jacobs also teaches inductively heating the selected materials. Jacobs col. 4, 11. 2, 52. The Examiner also finds Khatua teaches as known to use filler materials based on their Curie-temperature to control heating in a heating device. Final Act. 3; Khatua ,r,r 5, 42. Jacobs's and Khatua' s materials include a number of Campbell's susceptor materials. Campbell col. 9, 11. 65-67; Jacobs col. 4, 1. 35; Khatua ,r,r 27, 49. The Examiner additionally finds Counts, directed to electrically heated smoking articles, discloses as known to heat tobacco material to a temperature in a range of from about 100°C to 600°C to release or generate the desired flavors. Final Act. 3; Counts col. 1, 11. 15-16, 45-51; col. 5, 11. 45-51. Thus, the Examiner determines that it would have been obvious to one skilled in the art to arrive at the claimed invention from the combined teachings of the cited art. Final Act. 3. Appellant argues that there is no teaching or suggestion in Campbell to provide two different susceptor materials with two different Curie- temperatures because Campbell only teaches the use of a single susceptor at a time. App. Br. 6, 7. Appellant asserts that Campbell's disclosure of using "any combination" of "graphite, aluminum, stainless steel, copper, bronze" (Campbell col. 9, 1. 65---col. 10, 1. 1) is not suggestive of mixtures of the 4 Appeal2019-002625 Application 14/899,742 listed susceptor materials but, instead, is suggestive only of alloys of the same (that is, a chemical combination). Id. at 7. According to Appellant, one skilled in the art would assume that Campbell's combination of susceptor materials would be an alloy and, therefore, act as a single susceptor material. Id. Appellant's argument does not identify error in the Examiner's determination of obviousness. First, Appellant directs us to no portion of Campbell or any other evidence that supports the assertion that Campbell's combination of susceptors refers to alloys, let alone is limited to alloys. Appellant, at most, has provided mere attorney argument and such argument of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303,315 (CCPA 1979). On the contrary, combination is defined as "a number of things combined; mixture"2 and, thus, it is not limited to chemical combinations as argued. Therefore, one skilled in the art would reasonably expect that Campbell's invention would not be limited to alloys but also encompasses the use of susceptor particles having different properties, such as different Curie- temperatures. Second, Appellant's arguments do not address the rejection the Examiner presents. As the Examiner finds, the prior art, as represented by the teachings of Jacobs and Khatua, recognizes the advantages of using materials having different properties, such as the Curie-temperature, to regulate heating. Final Act. 3. Appellant does not adequately address this 2 Random House Kemerman Webster's College Dictionary, © 2010 K Dictionaries Ltd. Copyright 2005, 1997, 1991 by Random House, Inc. All rights reserved. 5 Appeal2019-002625 Application 14/899,742 finding by the Examiner or the reasons for combining the teachings of the prior art. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,425 (CCPA 1981) ("[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art."). Appellant argues that Jacobs's materials are resistively heated and that Khatua relates to electrically conductive articles. App. Br. 9. The Examiner relied on these references for the teaching that it is known to use materials based on their Curie-temperatures to control a heating process. Final Act. 3; Ans. 6-7. While Jacobs and Khatua are directed to different heating systems, Appellant has not explained sufficiently why the Examiner reversibly erred in finding that one skilled in the art would have found the teachings of Jacobs and Khatua useful in controlling the heating of Campbell's aerosol forming substrate. Likewise, Appellant has not explained sufficiently why one skilled in the art, using ordinary creativity, would not have been capable of modifying Campbell's aerosol forming substrate to comprise susceptor materials based on their Curie-temperature characteristics to ensure that the solid material is heated adequately to release the desired volatile compounds. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art). Moreover, Jacobs does describe an alternate inductive heating of the materials (Jacobs col. 4, 11. 2, 52). Appellant's arguments neither address 6 Appeal2019-002625 Application 14/899,742 this feature of Jacobs's invention nor adequately explain why Jacobs's inductive heating is different from the claimed inductive heating. We have also considered Appellant's arguments with respect to Counts (App. Br. 10) but find them unavailing because Appellant does not adequately explain why the Examiner reversibly erred in finding that one skilled in the art, using ordinary creativity, would have been capable of modifying Campbell's aerosol-forming substrate to comprise susceptor materials that can generate the heat necessary for a solid material to release the desired volatile flavors. Claims 7 and 17 Claims 7 and 1 7 recite that the first and second susceptor materials are of particulate configuration and are arranged in heaped formation at different locations within the aerosol-forming substrate in a specific pattern. We refer to the Examiner's Final Action for the statement of rejection of these claims. Final Act. 4. To the extent that Appellant relies on the arguments presented when discussing claim 1 (App. Br. 8), we find these arguments unpersuasive of reversible error for the reasons given above. Appellant additionally argues that the Examiner failed to point to anything in the cited references teaching or suggesting the limitations of claims 7 and 17. Id. We find this argument unavailing for the reasons presented by the Examiner. Final Act. 4. Appellant's argument does not address adequately the Examiner's findings with respect to these claims. Final Act. 4. 7 Appeal2019-002625 Application 14/899,742 Moreover, Campbell discloses that the susceptor materials can be interposed in patterns to delineate target areas to be inductively heated. Campbell col. 10, 11. 41--43. Campbell further discloses that the pattern can be printed for discrete regions, each region integrated and in intimate contact with a corresponding region of solid material sized to generate a volatile substance. Id. at col. 14, 11. 27-29. Appellant has not explained adequately why one skilled in the art, given Campbell's disclosure, would not have been capable of arranging the different susceptors in a manner that facilitates the desired release of the volatile compound from the solid material. Appellant has also not explained criticality for the claimed pattern. Accordingly, we affirm the Examiner's prior art rejection of claims 1, 2, 4--14, and 16-20 under 35 U.S.C. § 103 (a) for the reasons presented by the Examiner and given above. DECISION The Examiner's prior art rejection of claims 1, 2, 4--14, and 16-20 under 35 U.S.C. § 103(a) is affirmed. TIME PERIOD 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 8 Copy with citationCopy as parenthetical citation