Ex Parte Rasouli et alDownload PDFPatent Trial and Appeal BoardFeb 9, 201612222723 (P.T.A.B. Feb. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/222,723 08/14/2008 21839 7590 02/11/2016 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 FIRST NAMED INVENTOR Firooz Rasouli 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. 1021238-001009 5756 EXAMINER FELTON, MICHAEL J ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 02/11/2016 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): ADIPDOC 1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FIROOZ RASOULI, ANDREY BAGREEV, and WEIJUN ZHANG Appeal2014-004189 Application 12/222,723 Technology Center 1700 Before ROMULO H. DELMENDO, GEORGE C. BEST, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal the Examiner's rejection of claims 15 and 16. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons set forth below, we AFFIRM. 1 Appellants identify Philip Morris USA Inc. as the real party in interest. Br. 2. Appeal2014-004189 Application 12/222,723 The Claimed Invention Appellants' disclosure relates to a system for maintaining carbon dioxide levels in a smoking article prior to smoking. Br. 2, 8. Independent claim 15 and dependent claim 16 are representative of the claims on appeal and are reproduced below from the Claims Appendix to the Appeal Brief (id. at 8): 15. A system for maintammg carbon dioxide levels in a smoking article prior to smoking comprising: a smoking article including a first sorbent and a second sorbent, the second sorbent comprising a carbon molecular sieve; a sealed container; and a charge of carbon dioxide absorbed and/or retained within the second sorbent prior to smoking, the charge of carbon dioxide being effective to increase the amount of carbon dioxide at least in initial puffs of smoking and enhance flavor of the initial puffs, wherein said smoking article is contained in said sealed container. 16. The carbon dioxide delivery system of Claim 15, wherein said container includes a sealed compartment for each smoking article contained therein, each sealed compartment including one or more flavorants therein. The References The Examiner relies on the following prior art in rejecting the claims on appeal: Plunkett et al. US 2006/0207620 Al Sept. 21, 2006 (hereinafter "Plunkett") Weiss et al. WO 2006/032661 Al Mar. 30, 2006 (hereinafter "Weiss") 2 Appeal2014-004189 Application 12/222,723 R.W. Triebe and F.H Tezel, Adsorption of Nitrogen, Carbon Monoxide, Carbon Dioxide and Nitric Oxide on Molecular Sieves, 9 Gas Sep. Purif. 223-30 (1995) (hereinafter "Triebe") The Rejection Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Weiss in view of Plunkett and Triebe. OPINION Claim 15. Appellants present a separate argument for the patentability of claim 15. The Examiner finds that the combination of Weiss, Plunkett, and Triebe discloses all the limitations of claim 15. Final Act. 3--4. The Examiner finds Weiss discloses a container for one or more cigarettes (i.e., smoking articles) that is substantially gas impermeable (i.e., sealed) and is pressurized (i.e., charged) with carbon dioxide or other inert gas. Final Act. 3 (citing Weiss col. 2; 11. 18-25; col. 3; 11. 14--21). The Examiner further finds that Weiss suggests the container can be used with any type of smoking article. Id. The Examiner finds that Weiss does not expressly disclose a smoking article with a first and second sorbent where the second sorbent is a carbon molecular sieve that has adsorbed a charge of carbon dioxide, as required by claim 15, but further finds that, as taught by Plunkett, the use of multiple sorbents and carbon molecular sieve sorbents in the filter segments of cigarettes was well-known in the art at the time of Appellants' claimed invention. Final Act. 3. In particular, the Examiner finds Plunkett discloses a cigarette filter with a carbon molecular sieve adsorbent along with one or 3 Appeal2014-004189 Application 12/222,723 more other sorbents, such as activated charcoal or magnesium silicate. Id. (citing Plunkett i-f 55). The Examiner concludes it would have been obvious to one of ordinary skill in the art at the time of the invention to package the cigarette with Plunkett's sorbent in Weiss's sealed, pressurized container because Weiss discloses that smoking articles packaged in such a container may have longer shelf lives and be less likely to be affected by storage conditions such as humidity and odors. Final Act. 3. The Examiner also concludes it would have been obvious to one of ordinary skill in the art at the time of the invention that storing Plunkett's cigarette in Weiss's container would have caused the sorbents contained within the cigarette to become charged with carbon dioxide because, as taught by Triebe, it was well-known in the art that molecular sieves adsorb gases, including carbon dioxide. Id. at 4. In particular, based on Triebe's teaching regarding the adsorption of carbon dioxide by several different molecular sieves (Triebe 223-30), the Examiner finds one of ordinary skill would have expected that the carbon dioxide in Weiss's container would have been adsorbed by the molecular sieves present in the cigarette. Id. at 4. The Examiner also concludes it would have been obvious to one of ordinary skill that Plunkett's molecular sieves would have adsorbed the carbon dioxide used to preserve cigarettes in Weiss's container. Ans. 4. Appellants argue that neither Weiss nor Plunkett nor Triebe disclose or suggest "a charge of carbon dioxide effective to increase the amount of carbon dioxide at least in initial puffs of smoking and enhance flavor of the initial puffs as recited in Claim 15." Br. 6, 7. We are not persuaded by Appellants' argument. First, a naked assertion that the references fail to disclose or suggest a claim limitation is 4 Appeal2014-004189 Application 12/222,723 not an argument in support of separate patentability. Cf In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011); 37 C.F.R. § 41.37(c)(l)(iv) (2013). Second, Appellants attack the references individually, rather than consider the combined teachings of the prior art as a whole. One cannot show non- obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 425 (CCP A 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."). Thus, Appellants' argument as to what each reference fails to teach individually is not persuasive. Considering the combined teachings of the prior art as a whole, the Examiner's finding that the combination of Weiss, Plunkett, and Triebe discloses all of claim 15 's limitations is well-supported by the record and based upon sound technical reasoning. As the Examiner found (Final Act. 3), Weiss discloses a container for one or more smoking articles that is sealed and charged with carbon dioxide, as recited in claim 15. Weiss col. 2, 11. 18-25; col. 3, 11. 14--21. Indeed, as the Examiner further found (Final Act. 3--4), both the use of multiple sorbents and carbon molecular sieve sorbents in the filter segments of cigarettes (Plunkett i-f 55), and the fact that molecular sieves adsorb gases, including carbon dioxide (Triebe 223-30), were well-known in the art at the time of Appellants' claimed invention. Appellants' argument fails to show reversible error in the Examiner's factual findings and legal conclusions in this regard. Appellants' argument also fails to show reversible error in the Examiner's finding (Ans. 3) that one of ordinary skill would have expected the prior art structure to have the same effect and perform in the same manner as the claimed invention. As the Examiner found (id.), because the 5 Appeal2014-004189 Application 12/222,723 structure of the prior art as combined would have the same structure as the claimed invention (i.e., a smoking article with first and second sorbents, carbon molecular sieve, in a sealed container, with a charge of carbon dioxide absorbed and/or retained within the second sorbent), it follows that one of ordinary skill would expect the prior art structure to perform the same intended use and achieve the same results as the claimed invention, including meeting "the charge of carbon dioxide effective to increase the amount of carbon dioxide at least in initial puffs of smoking and enhance flavor of the initial puffs" limitation of claim 15. The Examiner's finding in this regard is well-supported by the evidence, and Appellants do not point to any unexpected results or other evidence sufficient to rebut it. Appellants' conclusory assertions (Ans. 7; Reply Br. 5-6) that "[i]nherency ... may not be established by probabilities or possibilities" and that "it is improper to speculate as to whether or not the unknown quantity of freshness preserving gas in Weiss would inherently create a charge of carbon dioxide in a carbon sorbent and produce the remammg combination of features recited in Claim 15," without more, are insufficient to establish reversible error in the Examiner's obviousness analysis and conclusion. Appellants do not provide an adequate technical explanation or sufficient evidence to support these assertions, and attorney argument cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants argue that Weiss "provides no examples of using carbon dioxide or the benefits thereof in enhancing flavor of initial puffs of a smoking article having a carbon molecular sieve sorbent." Br. 6. We do not find this argument persuasive because Weiss's teachings are not limited to the disclosures in its examples. In re Mills, 470 F.2d 649, 651(CCPA1972) ("[A] reference is not limited to the disclosure of specific working 6 Appeal2014-004189 Application 12/222,723 examples."). Further, as the Examiner found (Ans. 2) and Appellants admit (Br. 6), Weiss expressly discloses using carbon dioxide. See, e.g., Weiss col. 3, 11. 14--21. Appellants argue that the "use of argon or nitrogen as suggested by Weiss would not provide a charge of carbon dioxide." Br. 7. This argument is misplaced because as the Examiner found (Ans. 2) and previously discussed above, Weiss expressly discloses the use of carbon dioxide. Weiss col. 2, 11. 18-25; col. 3, 11. 14--21. Thus, it is of no moment whether Weiss also discloses or suggests the use of argon or nitrogen in addition to carbon dioxide. Appellants argue that "even if carbon dioxide is used as the freshness preserving gas, there is no suggestion in Weiss, Plunkett or Triebe of providing a charge of carbon dioxide effective to increase the amount of carbon dioxide at least in initial puffs of smoking and enhance flavor of the initial puffs as recited in Claim 15." Br. 7. We are not persuaded by Appellants' argument. As previously discussed above, we find no reversible error in the Examiner's finding that the combination of Weiss, Plunkett, and Triebe discloses all the limitations of claim 15, including "the charge of carbon dioxide effective to increase the amount of carbon dioxide at least in initial puffs of smoking and enhance flavor of the initial puffs" limitation. Additionally, as noted by the Examiner (Ans. 4), the fact that Appellants have "recognized another advantage which would flow naturally from following the suggestion of the prior art [(i.e., increased amount of carbon dioxide at least in initial puffs of smoking and enhanced flavor of the initial puffs)] cannot be the basis for patentability when the differences would otherwise [have been] obvious." See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). 7 Appeal2014-004189 Application 12/222,723 Accordingly, based on the findings and technical reasoning provided by the Examiner (Final Act. 2--4; Ans. 2--4), which we adopt as our own, and for the reasons discussed above, we affirm the Examiner's rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable over Weiss in view of Plunkett and Triebe. Claim 16. For the patentability of dependent claim 16, Appellants repeat and incorporate by reference the same arguments presented above for claim 15. Br. 8. Thus, based on the findings and technical reasoning provided by the Examiner (Final Act. 2--4; Ans. 2--4), which we adopt as our own, and for the reasons discussed above for claim 15, we find that Appellants fail to show reversible error in the Examiner's factual findings and legal conclusions with respect to claim 16. Accordingly, we affirm the Examiner's rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable over Weiss in view of Plunkett and Triebe. DECISION/ORDER The Examiner's rejection of claims 15 and 16 under 35 U.S.C. § 103(a) is affirmed. It is ordered that the Examiner's decision 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 8 Copy with citationCopy as parenthetical citation