Ex Parte Novak et al

Patent Trial and Appeal Board

May 22, 2018

13248847 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/248,847 09/29/2011
26158 7590 05/24/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Charles Jacob Novak III
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.
R60999 2310.1 (0254.8) 1591
EXAMINER
RUSHING-TUCKER, CHINYERE J
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
05/24/2018 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES JACOB NOV AK III, VERNON BRENT BARNES,
ROBERT WILLIAM BENFORD, MARGARETTE ELISA LOVETTE,
QUENTIN PAUL GUENTHER JR., JERRY WAYNE PIPES, and
WILLIAM ROBERT COLLETT
Appeal2017-008210
Application 13/248,84 7
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Charles Jacob Novak III et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 41, 42, 44--46, and
48. 2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is R. J. Reynolds
Tobacco Company. Appeal Br. 2.
2 Claims 1--40 are withdrawn, and claims 43 and 47 are cancelled. Appeal
Br. 20-28 (Claims App.).
Appeal2017-008210
Application 13/248,847
THE CLAIMED SUBJECT MATTER
Claims 41 and 45 are independent. Claim 41 is reproduced below and
is illustrative of the subject matter on appeal.
41. An apparatus for forming a cigarette filter rod member
defining a longitudinal axis, the apparatus comprising:
a rod-forming unit configured to form a continuous supply
of a filter material into a continuous cylindrical rod member; and
an insertion unit configured to introduce a plurality of
frangible microcapsule objects directly into the rod member at
discrete locations therealong, the insertion unit comprising:
a repository for receiving the plurality of
microcapsule objects, and defining a plurality of cavities
arranged in a substantially circular formation;
an arm member operably engaged with the
repository and configured to be rotatable therein to direct
at least a portion of the plurality of microcapsule objects
within the repository into the cavities; and
a charge delivery device operably engaged with the
repository and configured to serially engage each cavity
defined thereby to direct the at least a portion of the
microcapsule objects therefrom directly into the rod
member at one of the discrete locations therealong.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kawaguchi
Dawson
Novak
us 4,509,568
US 7,381,175 B2
US 2012/0055493 Al
2
Apr. 9, 1985
June 3, 2008
Mar. 8, 2012
Appeal2017-008210
Application 13/248,847
REJECTIONS
I. Claims 41, 42, and 44 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Novak. Non-Final Act. 2-3.
II. Claims 41, 42, 44--46, and 48 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Dawson and Kawaguchi. Id. at 4--7.
OPINION
Rejection I
The Examiner finds that Novak discloses all of the limitations of
independent claim 41, including, inter alia, "a rod-forming unit ( 50)
configured to form (pp 42) a continuous supply of a material (20) into a
continuous cylindrical rod member (25); and an insertion unit (300)
configured to introduce a plurality of objects directly into the rod member
(25) at discrete locations therealong. (pp 47)." Non-Final Act. 2-3.
Appellants assert that Novak fails to disclose a rod-forming unit as
claimed because "the continuous tubular member 25 of Novak [formed by
forming unit 50] is not identical to a continuous cylindrical rod member."
Appeal Br. 11. According to Appellants, Novak's continuous tubular
member 25 is hollow, whereas "the continuous cylindrical rod member of
Claim 41 is formed from a continuous supply of a filter material, such that
the cylindrical rod member is not hollow or tubular." Id. at 10-11.
Although we agree with Appellants that Novak's continuous tubular member
25 appears to be hollow (id. at 10), claim 41 does not recite any language
precluding the continuous cylindrical rod member formed by the rod-
forming unit from being hollow or tubular. See In re Self, 671 F .2d 1344,
1348 (CCPA 1982) (noting that it is well established that limitations not
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Application 13/248,847
appearing in the claims cannot be relied upon for patentability). In
particular, Appellants do not persuade us that the term "rod" cannot
reasonably extend to a hollow, tubular member. For example, Appellants do
not point to a definition in the Specification, or otherwise explain why the
Specification would preclude the term "rod" from extending to a hollow,
tubular member. Indeed, at least one rod described in the Specification
appears to comprise a web of filter material being sufficiently porous to
allow the introduction ofmicrocapsule objects. See, e.g., Spec. 12:12-17.
To the extent that Appellants are arguing that forming the cylindrical rod
member from a continuous supply of filter material necessarily means that
the cylindrical rod member cannot be hollow or tubular (Appeal Br. 10-11),
Appellants do not offer any evidence or persuasive technical explanation to
support such a position. Moreover, we note that Novak explicitly teaches
the formed tubular member is continuous. See Novak i-f 42 (referring to
"forming unit 50 configured to form a continuous supply of the pouch
material 20 into a continuous tubular member 25" (emphasis added)).
Appellants argue that Novak does not disclose "an insertion unit
configured to introduce a plurality of frangible microcapsule objects directly
into the rod member at discrete locations therealong," as recited in claim 41.
Appeal Br. 11 (emphasis omitted). In particular, Appellants assert that
"[t]he object insertion unit 500, rather than the tobacco insertion unit 300, of
Novak is configured to combine the objects 100 with a charge of the tobacco
material 350 dispensed by the tobacco insertion unit 300." Id. Appellants
also assert that Novak's objects 100 are not introduced directly into tubular
member 25 because "the objects 100 are combined with a charge of tobacco
material 350 prior to the combination being inserted into the tubular
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member." Id. (emphasis omitted); see also Reply Br. 2 (asserting that
"objects 100 are not introduced directly into the tubular member 25, as they
are first combined with the tobacco material 350 within the channels"). This
line of argument is not persuasive because is it not responsive to the
rejection presented. As discussed above, the Examiner points to Novak's
tobacco insertion unit 300 as representing the object insertion unit recited in
the claim. Non-Final Act. 2-3. In other words, the Examiner appears to rely
on Novak's tobacco 350 as the "objects" that are inserted into the tubular
member. Other than the bald assertion that "the tobacco material 350
dispensed by the tobacco insertion unit 300 of Novak is not identical to the
frangible microcapsule objects dispensed by the insertion unit" (Appeal
Br. 11 ), Appellants do not offer any evidence or persuasive technical
reasoning that identifies an error in the Examiner's position. To the extent
that Appellants are arguing that there are physical differences between
"frangible microcapsule objects" and Novak's tobacco material 350, we note
that claim 41 does not positively recite the frangible microcapsule objects as
an element of the claimed apparatus. Rather, the claim recites that the object
insertion unit must be "configured to introduce a plurality of frangible
microcapsule objects directly into the rod member." Id. at 27 (Claims App.)
(emphasis added). In this regard, Appellants do not identify error in the
Examiner's finding that Novak's tobacco insertion unit 300 likewise is
"configured to" directly introduce frangible microcapsule objects into
tubular member 25. Non-Final Act. 2-3; see also Ans. 7 (the Examiner
explaining that, "[ d]espite the differences in intended use of the reference
Novak, there is no physical distinction between the reference Novak and the
claimed limitations in the instant application").
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Appellants further argue that Novak is non-analogous art because the
reference is not in the same field of endeavor as Appellants' invention and is
not reasonably pertinent to the problem faced by Appellants. Reply Br. 3--4.
However, arguments directed to the issue of non-analogous art are not
germane to an anticipation rejection. In re Self, 671 F.2d at 1350-51; see
also In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) ("[T]he question
whether a reference is analogous art is irrelevant to whether that
reference anticipates.").
For the foregoing reasons, we are not persuaded that the Examiner
erred in finding that Novak discloses all of the limitations of independent
claim 41. \Ve sustain the rejection of claim 41under35 U.S.C. § 102(e) as
anticipated by Novak. \Ve also sustain the rejection of claims 42 and 44, for
which Appellants rely on the same arguments and reasoning we found
unpersuasive in connection with independent claim 41. See Appeal Br. 12.
Rejection II
The Examiner finds that Dawson teaches most of the limitations of
independent claim 41, including, inter alia, "a repository (28, Fig. 3) for
receiving (Col 4 line 13-23) the plurality of microcapsule objects (34), and
defining a plurality of cavities ( 54) arranged in a substantially circular
formation (Fig 3), (Col 4 line 23-33)." Non-Final Act. 4. The Examiner
acknowledges that "Dawson does not expressly disclose an arm member,
operably engaged with the repository and configured to be rotatable therein
to direct at least a portion of the plurality of microcapsule objects within the
repository into the cavities." Id. However, the Examiner finds that
Kawaguchi teaches this feature. Id. at 4--5 (citing Kawaguchi, col. 4, 11. 18-
22). The Examiner determines that it would have been obvious to modify
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the repository of Dawson "to include the arm member of Kawaguchi to aid
in the induction of the microcapsules into the cavities." Id. at 5, 6 (citing
Kawaguchi, col. 4, 11. 34--36).
Even accepting the Examiner's clarified interpretation that the
combination of dome 28 and pocket wheel 52 represents a repository (Ans.
8), we agree with Appellants that a sustainable case of obviousness has not
been established. In particular, given that Dawson's filter media 34 is drawn
upward via suction from below the repository (i.e., dome 28 and pocket
wheel 52) (Dawson, col. 4, 11. 26-29, 37--41), ratherthan being directed
downward to the bottom of a repository by gravity like the granular material
in Kawaguchi's hopper (in which a stirrer agitates the granular material so
that it falls into a duct) (Kawaguchi, col. 4, 11. 6-10, 18-19, 34--38), the
Examiner does not adequately explain how or why modifying Dawson's
apparatus to include Kawaguchi's stirrer would assist in directing Dawson's
filter media upward into the pockets of pocket wheel 52. First, we agree
with Appellants that incorporating a rotatable stirrer into suction dome 28
above pocket wheel 52 would not aid in induction of filter media 34 into the
pockets of pocket wheel 52 because there is no filter media 34 in suction
dome 28 on which the rotatable stirrer would act. Appeal Br. 14. Second,
we agree with Appellants that a rotating stirrer located below pocket wheel
52 would not be able to deliver filter media 34 against gravity and might
actually instead "at least temporarily block the filter media 34 from the
suction applied through the pockets 54, 58 by the vacuum dome 28." Id. at
15-16 (emphasis omitted). As such, the Examiner's articulated reason for
the proposed modification of Dawson-i.e., to aid in the induction of the
microcapsules into the cavities-lacks rational underpinnings. See In re
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Application 13/248,847
Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (requiring "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness") (cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007)).
For the foregoing reasons, we do not sustain the Examiner's rejection
of independent claims 41 and 45, and claims 42, 44, 46, and 48 depending
therefrom, under 35 U.S.C. § 103(a) as unpatentable over Dawson and
Kawaguchi.
DECISION
The Examiner's decision to reject claims 41, 42, and 44 under
35 U.S.C. § 102(e) as anticipated by Novak is affirmed.
The Examiner's decision to reject claims 41, 42, 44--46, and 48
under 35 U.S.C. § 103(a) as unpatentable over Dawson and Kawaguchi is
reversed.
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-IN-PART
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