Ex Parte Novak et al

Patent Trial and Appeal Board

Nov 20, 2017

12874420 (P.T.A.B. Nov. 20, 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.
12/874,420 09/02/2010 Charles J. Novak III R60999 1590.1 (0077.4) 7220
26158 7590 11/22/2017
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
11/22/2017 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
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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 J. NOVAK III1
and David Charles Bovender
Appeal 2016-007848
Application 12/874,420
Technology Center 1700
Before LINDA M. GAUDETTE, MARK NAGUMO, and
BRIAN D. RANGE, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Charles J. Novak III and David Charles Bovender (“Novak”) timely
appeal under 35 U.S.C. § 134(a) from a non-final rejection2 of claims 1
and 7.3 We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The real party in interest is identified as R. J. Reynolds Tobacco
Company. (Appeal Brief, filed 8 March 2016 (“Br.”), 2.)
2 Office action mailed 8 October 2015 (“Office Action”; cited as “OA”).
A Request for Continued Examination under 37 C.F.R. § 1.114 was filed
on 2 December 2013.
3 Remaining copending dependent claims 3—6, 8 and 9 have been objected
to by the Examiner (FR 1 § 8), and remaining copending independent
Appeal 2016-007848
Application 12/874,420
OPINION
A. Introduction* * 4 5
The subject matter on appeal relates to smokeless tobacco products
commonly referred to as “snus,” which, the '420 Specification informs, are
“commonly supplied in small teabag-like pouches.” (Spec. 2,11. 17—18.)
In the present invention, a device is provided that is said to enable the rapid,
highly automated manufacture of snus incorporating an object, e.g.,
“rupturable capsules, pellets, strips, sheets, strands, or combinations
thereof.” {Id. at 4,11. 19-20.) The objects are said to provide “distinctive,
different pleasurable sensory experiences, for a user.” {Id. at 2,11. 28—29.)
The device comprises forming unit 50s, which directs a continuous
supply of pouch material 20 about a hollow shaft 54 to form a continuous
tubular member 25. {Id. at 9,1. 28—10,1. 2.) In the words of the
Specification, “[a] tobacco insertion unit 300 is configured to introduce
tobacco material into the continuous tubular member 25 through the hollow
shaft 54. An object insertion unit 500 is configured to introduce objects into
the continuous tubular member 25, also through[ ]the hollow shaft 54.”
{Id. at 10,11. 2—5.) The clearest explanation of the nature of those
claim 10 has been indicated to be allowable (Ans. 4). Accordingly, these
claims are not before us.
4 Application 12/874,420, Apparatus for manufacturing a smokeless
tobacco product incorporating an object, and associated method,
filed 2 September 2010. We refer to the “'420 Specification,” which we cite
as “Spec.”
5 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Application 12/874,420
introductions follows immediately: “[t]he tobacco insertion unit 300 may be
directly or indirectly engaged with the hollow shaft 54. Further, the object
insertion unit 500 may be directly or indirectly engaged with the hollow
shaft 54.” {Id. at 11. 5—7.) However, none of the 22 Figures appears to
illustrate an embodiment of these “direct or indirect” engagements. The
apparatus further comprises a closing and dividing unit 600 that seals
continuous tube 25 at the trailing edge of a discrete pouch member
portion 116, which may also form the sealed leading edge of the next
discrete pouch member portion 116. {Id. at 11. 12—24.) Moreover, “closing
and dividing unit 600 may be configured to divide the continuous tubular
member 25, between the closed trailing end 165 and the closed leading
end 162 . . . into a plurality of discrete pouch member portions 116 . . . .”
{Id. at 11. 25-31.)
Claim 1 is representative and reads:
An apparatus [1] for manufacturing a smokeless tobacco
product, the apparatus comprising:
a forming unit [50] configured to form
a continuous supply of a pouch material [20] into a
continuous tubular member [25] defining a longitudinal
axis;
a closing and dividing unit [600/ configured to
close a first portion of the tubular member [25] to form
a closed leading edge [162] of a pouch member
portion [116] and a closed trailing edge [165] of a
previous pouch member portion [116];
a tobacco insertion unit [300] configured to form an
individual charge of tobacco material; and
an object insertion unit [500] having
a tobacco channel [510] extending between
a tobacco inlet [512] and an outlet [514], and
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Application 12/874,420
an object channel [504] extending from an object
inlet [506] into communication with the tobacco
channel [510] between the tobacco inlet [510] and the
outlet [512],
the tobacco channel [510] being configured to receive
the individual charge of tobacco material from the
tobacco insertion unit [300] via the tobacco inlet [512],
the object insertion unit [500] being configured to direct
at least one object
into the object inlet [506],
into the tobacco channel [510], and
into the individual charge of tobacco material,
between the tobacco inlet [512] and the outlet [514],
the object insertion unit [500] being further configured to
direct the individual charge of tobacco material
having the at least one object therein
through the outlet [514] and
into the pouch member portion [116]
such that the individual charge of tobacco material
having the at least one object therein is retained in
the pouch member portion [116] by the closed
leading edge [162] thereof,
wherein the closing and dividing unit [600] is further
configured
to close a second portion of the tubular member
to form a closed trailing edge [165] of the pouch
member portion and a closed leading edge [162] of a
subsequent pouch member portion, and
to divide the tubular member [25],
between the closed trailing edge [165] and the closed
leading edge [162] of the respective pouch members
along the longitudinal axis of the tubular member, [25],
into a plurality of discrete pouch member portions [116]
such that
each discrete pouch member portion [116] includes
the individual charge of tobacco material and the at
least one object.
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Application 12/874,420
(Claims App., Br. 31; some indentation, paragraphing, emphasis, and
bracketed labels to elements in various figures added.)
The Examiner maintains the following ground of rejection6,7’8:
Claims 1 and 7 stand rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Holton9,10 and Boldrini.11
6 Examiner’s Answer mailed 1 July 2016 (“Ans.”).
7 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
8 The Examiner has withdrawn a rejection of claim 10 in view of Holton,
Boldrini, and Paules. (Ans. 4.)
9 Darrell Eugen Holton, Jr., and Daniel Verdin Cantrell, Smokeless tobacco
composition, U.S. Patent Application Publication 2007/0186941 A1 (2007),
issued 4 January 2011 as U.S. Patent No. 7,861,728B2, assigned to
R.J. Reynolds Tobacco Co., the present real party in interest. Holton is cited
in the '420 Specification and incorporated by reference. (Spec. 1,1. 20; 2,
1.1.)
10 Timothy Frederick Thomas et al., Equipment for insertion of objects into
smoking articles, U.S. Patent Application Publication 2007/0068540 Al
(2007) (incorporated by reference in Holton and cited by the Examiner);
issued 20 January 2009 as U.S. Patent No. 7,479,098 B2 and assigned to R.
J. Reynolds Tobacco Co. Thomas is cited in the '420 Specification.
(Spec. 3,1. 4.)
11 Fulvio Boldrini and Roberto Ghiotti, Machine for manufacturing pouches
of cohesionless material, U.S. Patent Application Publication
2010/0101588 Al (29 Apr. 2010). Boldrini is cited in the '420 Specification
and is “incorporated herein by reference in its entirety.” (Spec. 5,11. 20-21.)
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Application 12/874,420
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Novak urges the Examiner erred harmfully in concluding that
Holton’s suggestion that a representative snus packaging machine “may be
suitably modified with a capsule insertion apparatus of the general type”
(Holton 7 [0057]) described by Thomas would have been applied to the
snus-manufacturing machine described by Boldrini. More particularly,
Novak argues that Holton “does not teach or suggest, in any manner how
such a capsule insertion apparatus would be incorporated or used with
smokeless tobacco product manufacturing equipment to produce the
representative tobacco product disclosed by Holton, Jr.” (Br. 18,11. 6—8;
underscore omitted.) Novak urges further that “Boldrini is particularly
directed to a discontinuous process of ejecting individual portions of tobacco
into individual pouch portions.” {Id. at 11. 21—22; bold and underscore
omitted.) Similarly, in Novak’s view, “Thomas discloses that an insertion
unit inserts objects into a continuous web of filter material that is
subsequently passed through a rod-forming unit to create a continuous filter
rod with objects disposed at predetermined intervals therein.” {Id. at 19,
I. 28 to 20,1. 1; bold and underscore omitted.) “[A]t most,” Novak
concludes, “any combination of Boldrini and Thomas would merely suggest
that [a modified machine] . . . would be configured to deposit the objects
directly into the carrier material (i.e., the continuous web material 18 that
sheaths the tubular mandrel 17 of the wrapping station 8 . . . .” (Id. at 20,
II. 23—28; bold, underscore, and italics omitted.)
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Application 12/874,420
We do not find these arguments persuasive of harmful error. First,
Holton’s silence regarding the details of modifying a “representative
packaging machine” by an “insertion apparatus of the general type set forth”
in Thomas indicates, on the present record, that the ordinary designer of
such equipment would have needed no more than the mere suggestion that
such a combination would be desirable. Consistently, we note that Novak
has not provided details regarding the introduction of a tobacco portion
containing an object into a continuous tubular member; and no rejection for
lack of enablement or written description under 35U.S.C. § 112, first
paragraph (post-AIA § 112(a)) has been raised. On the present record, such
express instructions do not appear to be necessary to those having ordinary
skill in the art. The machines described by Thomas and Boldrini are
complicated, sophisticated devices that bring together disparate materials in
an orderly, time-dependent fashion, to produce serially large numbers of
objects. Novak’s general objection is not sufficient to show the Examiner
erred reversibly in finding that the routineer would have combined the
object-dispensing wheel with the snus-producing machine described by
Boldrini in order to carry out Horton’s express suggestion of the general
combination.
In this regard, we find Novak’s insistence that it is the web 18 of
wrapping material described by Boldrini that corresponds to the filter
“carrier” material 40 described by Thomas devoid of merit. Clearly, it is the
cylindrical solid portion of tobacco, not the cylindrical shell of the wrapper,
that Boldrini provides, that corresponds to the filter material into which
Thomas inserts an object or objects. Moreover, we find it of little moment
that Thomas teaches a method of inserting objects such as flavor-containing
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capsules (Thomas 2 [0012], 3 [0029]) into a continuous filter material 40
{id. at 4 [0038]), whereas Boldrini produces discontinuous portions 7 of
tobacco. Whether the objects are to be placed into a continuous material at
particular intervals of length, or into discrete portions at particular intervals
of time, would appear to be of little significance to the ordinarily skilled
device designer. Both involve the matching of an insertion of an object into
a material that depends on the relative rates of delivery of a “carrier
material” and an object.
Novak’s final “argument” (Br., para, bridging 21—22) amounts to
reciting language from claim 1 and merely denying that the references teach
or suggest the claimed subject matter. Such argument is not, under the rules
governing appeals, “separate.” 37 C.F.R. § 41.37(c)(l)(iv) (2015) (last
sentence). Novak does not present substantively distinct arguments for the
patentability of dependent claim 7. (Br. 22.)
As for the alleged absence of a “channel” as required by claim 1,
raised belatedly in the Reply12 (Reply 4, 1st full para.), when the object is
inserted into the continuous filter material 40, or a discontinuous tobacco
portion 7, it is in a confined region, and it would have been obvious to
provide the discontinuous tobacco portion 7 in a confined region—i.e., a
“channel”—when the object is inserted in order to maintain the integrity of
the portion.
We conclude Novak has not demonstrated harmful error in the
appealed rejections.
12 Reply Brief filed 18 August 2016 (“Reply”).
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C. Order
It is ORDERED that the rejection of claims 1 and 7 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).
AFFIRMED
9