Ex Parte Novak et al

Patent Trial and Appeal Board

Dec 7, 2017

13788455 (P.T.A.B. Dec. 7, 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.
13/788,455 03/07/2013 Charles Jacob Novak III R60999 2900US.1 (0411.7) 1058
26158 7590 12/11/2017
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
YAARY, ERIC
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
12/11/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES JACOB NOVAK III, FREDERIC PHILIPPE
AMPOLINI, ALLEN MICHAEL EAST,
RAYMOND C. HENRY, and WILLIAM ROBERT COLLETT
Appeal 2017-001332
Application 13/788,455
Technology Center 1700
Before GRACE KARAFFA OBERMANN, JULIA HEANEY, and
AVELYN M. ROSS, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 request review pursuant to 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—6 and 8—38 of Application
13/788,455. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 This Decision refers to the Specification dated Mar. 7, 2013 (“Spec.”), the
Final Rejection dated Nov. 20, 2015 (“Final Act.”), the Examiner’s Answer
dated Sept. 1, 2016 (“Ans.”), the Appeal Brief dated Apr. 18, 2016, and the
Reply Brief dated Nov. 1, 2016 (“Reply Br.”).
2 RAI Strategic Holdings, Inc., is identified as the applicant (hereinafter
“Appellants”) and the real party in interest. App. Br. 1.
Appeal 2017-001332
Application 13/788,455
BACKGROUND
The subject matter on appeal relates to a smoking article that uses
electrical energy to heat or vaporize the consumable contents of a cartridge,
and which is adapted to detect if the cartridge has been used. Spec. 1:5—7,
14—17, 2:25—27. The smoking article comprises a control component that
can be configured to actuate a current flow from the power source sufficient
to initiate heating by the heating element, and which current flow also causes
the failure of a fusible link that is in circuit connection with the heating
element. Spec. 3:13—28. In that way, the fusible link functions as a
sacrificial device to detect if the cartridge has been used. Spec. 20:15—19.
Claim 1, reproduced below with highlighting to indicate the disputed
limitation, is illustrative of the subject matter on appeal:
1. A smoking article, comprising:
a power source;
a control component adapted to control power delivery from the
power source; and
a heating connection comprising a heating element and a fusible
link, wherein the fusible link is adapted to fail upon flow of
sufficient electrical current to heat the heating element.
Claims Appx.
THE REJECTIONS
1. Claims 1—5, 9, and 20-24 are rejected under 35 U.S.C. § 102(e) as
anticipated by Flick.3 Final Act. 3.
3 Flick, US 2013/0306084 Al, Nov. 21, 2013.
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Application 13/788,455
2. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Flick and Noguchi.4 Id. at 4.
3. Claims 10-12 and 14—19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Flick, Arai,5 and Becker.6
Id.
4. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Flick, Arai, Becker, and Capuano.7 Id. at 5.
5. Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Flick and Zuber.8 Id.
6. Claims 26—29 and 33—37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Flick and Arai. Id.
7. Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Flick, Arai, and Becker. Id. at 6.
8. Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Flick, Arai, and Zuber. Id. at 7.
9. Claims 1—4, 8, 9, 20-31, and 33—38 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Conley9 and
Arai. Id.
10. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Conley, Arai, and Noguchi.
Id. at 8.
4 Noguchi et al., US 2005/0157578 Al, July 21, 2005.
5 Arai et al., US 2002/0164169 Al, Nov. 7, 2002.
6 Becker et al., US 2004/0017203 Al, Jan. 29, 2004.
7 Capuano, US 2013/0319440 Al, Dec. 5, 2013.
8 Zuber et al., US 2011/0126848 Al, June 2, 2011.
9 Conley et al., US 2013/0220315 Al, Aug. 29, 2013.
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Application 13/788,455
11. Claims 10-12, 14—19, and 32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Conley, Arai, and
Becker. Id. at 9.
12. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Flick, Arai, Becker, and Capuano. Id.
DISCUSSION
Appellants argue for patentability of the appealed claims on the basis
of the limitation which is italicized above in claim 1, and is also recited in
claim 26, the only other independent claim. Claims Appx. We therefore
focus our discussion on claims 1 and 26 as argued by Appellants; all
dependent claims will stand or fall with the claim from which they depend.
37 C.F.R. § 41.37(c)(l)(iv) (2013).
Upon consideration of the evidence presented in this Appeal in light
of each of Appellants’ contentions, we determine that a preponderance of the
evidence supports the Examiner’s conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied prior art. We sustain the
rejections for the reasons expressed by the Examiner in the Final Action and
Answer, which we adopt as our own. We add the following primarily for
emphasis.
Anticipation Rejection
The Examiner finds that Flick discloses a smoking article comprising
a power source, a control component, and a heating connection comprising a
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Application 13/788,455
heating element and a fuse,10 as recited in claim 1. Ans. 3 (providing
citations to Flick). The Examiner further finds that Flick teaches when the
heating element is heated and overheats upon reaching a critical temperature,
the device is disabled by blowing the fuse. Id. The Examiner finds that
Flick’s fuse therefore is “adapted to fail upon flow of sufficient electrical
current to heat the heating element” as recited in claim 1, because the fuse is
blown when a sufficiently high electrical current flows to the heating
element. Id.
Appellants argue that Flick does not anticipate claim 1 because Flick’s
fuse is blown under different conditions than in the appealed claims;
specifically, Appellants argue that Flick’s microcontroller 21111 sends a
signal to blow the electrical fuse when cartridge 113 is near empty, which is
determined by monitoring the temperature of heating element 119. App.
Br. 6, citing Flick || 59—61. Appellants thus argue that Flick’s fuse is used
under different conditions because, unlike the fuse recited in Appellants’
claims which is configured to be blown the first time electrical current
sufficient to heat the heating element is delivered, Flick’s fuse is used to
render the device non-functioning once the consumable material has been
used up. App. Br. 6, 9.
Appellants’ arguments are not persuasive of reversible error. The
feature of Appellants’ fuse relied upon to distinguish Flick, i.e., that it is
blown the first time that a cartridge is used, is not recited in claim 1.
10 The Examiner and Appellants both refer to the “fusible link” recited in
the appealed claims as a fuse. Answer and Appeal Brief, generally.
11 Labels to elements are presented in bold font, regardless of their
presentation in the original document.
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Application 13/788,455
Claim 1 recites that the fuse is “adapted to fail upon flow of sufficient
electrical current to heat the heating element” and Flick’s fuse reads upon
that limitation because it is blown when “sufficient electrical current to heat
the heating element” is delivered as a result of the heater reaching a critical
temperature. Flick || 60—61. Accordingly, we sustain the anticipation
rejection.
Obviousness Rejections
Appellants’ arguments against the obviousness rejections are based on
their arguments against Flick, described above, as well as an argument that
Arai is non-analogous art. App. Br. 10-11. Although Appellants present
argument against Conley, a primary reference relied upon by the Examiner
for several of the rejections (App. Br. 11), and other secondary references
(App. Br. 9), those arguments are conclusory and lack supporting
explanation. See In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011) (“[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art”). Accordingly, we limit our discussion to Appellants’
arguments against Arai.
Arai teaches a printer that uses a consumable cartridge having an
internal fuse that is blown when the cartridge is installed in the printer. Arai
Abstract, || 22—35. The Examiner relies upon Arai as teaching the use of a
fuse within a consumable cartridge to indicate whether the cartridge is new
or used. Ans. 11. Appellants argue that Arai is non-analogous art because it
is not directed to the same field of endeavor or reasonably pertinent to the
particular problem with which the inventors were concerned. App. Br. 10.
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Application 13/788,455
Specifically, Appellants contend that Arai is not related to the same field of
endeavor because it is directed to a printer cartridge rather than a smoking
article, and that it is not reasonably pertinent to the problem because a
person of ordinary skill in the art would not recognize printer components as
being designed to include vaporizing heating elements. App. Br. 10—11.
Appellants further argue that Arai is not reasonably pertinent to the problem
because Arai’s fuse is adapted to fail immediately when the consumable
component is installed, whereas the Specification describes that the control
component can initiate a low power pulse that does not cause the fuse of
Appellants’ cartridge to fail, but rather communicates the status of the
smoking article. Id. at 11.
The Examiner responds to Appellants’ argument that Arai is not
reasonably pertinent to the problem, by noting that Arai additionally teaches
its consumable component is tested before blowing its fuse, and therefore
Arai’s fuse is not solely adapted to fail upon installation of the consumable
component. Ans. 1 50, citing Arai 30-32, 100. Arai supports the
Examiner’s finding. Although Appellants additionally argue that Arai also
teaches that a consumer can choose not to blow the fuse in order to allow
testing (Reply Br. 5, citing Arai 30-32), this additional teaching does not
outweigh the Examiner’s finding, based on Arai as a whole, that Arai is
reasonably pertinent to the problem of a consumable cartridge comprising a
fusible link to indicate whether the cartridge is new or used. Ans. 149.
Accordingly, we find that a preponderance of the evidence supports the
determination of obviousness.
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Application 13/788,455
SUMMARY
We affirm the rejections of claims 1—6 and 8—38.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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