Ex Parte Sugai et al

Patent Trial and Appeal Board

Oct 17, 2016

13250117 (P.T.A.B. Oct. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/250, 117 09/30/2011
127226 7590 10/19/2016
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747
FIRST NAMED INVENTOR
Kazunori Sugai
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.
0042-0642PUS 1 4071
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
10/19/2016 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUNORI SUGAI, Y ASUNOBU INOUE,
KIYOHIRO SASAKA WA, MITSURU KONDO, TSUTOMU SAKAI,
SADAKO IMAI, and FUMIKO MURATA1
Appeal2015-004180
Application 13/250,117
Technology Center 1700
Before BRADLEY R. GARRIS, A VEL YN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 4, 6, and 9-13. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
1 Japan Tobacco Inc. is identified as the real party in interest. App. Br. 1.
Appeal2015-004180
Application 13/250,117
Appellants claim a cigarette and method wherein shredded tobacco
has been treated with a transition metal salt of an organic acid such as iron
fumarate (independent claims 1, 6, and 11).2 In a narrower embodiment, the
cigarette comprises cigarette paper that "contains essentially no transition
metals" (independent claim 1, dependent claim 12).
A copy of the appealed claims, taken from the Claims Appendix of
the Appeal Brief, appears below. 3
1. A cigarette comprising a shredded tobacco rod and a cigarette
paper that wraps the outer peripheral surface of the shredded tobacco rod,
wherein the shredded tobacco contains a transition metal salt of an
organic acid and the cigarette paper contains essentially no transition metals;
wherein the transition metal is selected from the group consisting of
Ti, Mn, Fe, Co, Ni, Cu, Y, Zr, Nb, Mo and Ce; and
the organic acid is selected from the group consisting of fumaric acid,
citric acid, oxalic acid, formic acid, benzoic acid and lactic acid.
4. The cigarette according to claim 1, wherein the transition metal salt
of the organic acid is contained in an amount of 1 to 50% by weight in the
shredded tobacco.
6. A method for treating a cigarette material, comprising treating
shredded tobacco with a transition metal salt of an organic acid;
wherein the transition metal is selected from the group consisting of
Ti, Mn, Fe, Co, Ni, Cu, Y, Zr, Nb, Mo and Ce; and
the organic acid is selected from the group consisting of fumaric acid,
citric acid, oxalic acid, formic acid, benzoic acid and lactic acid.
2 Appellants disclose that such transition metal salts are catalyst precursors
for reducing carbon monoxide in mainstream smoke (Spec. 5).
3 For reasons that will become clear in our opinion, we emphasize that an
inspection of the Image File Wrapper of this application reveals that
Appellants have accurately reproduced the appealed claims in their Claims
Appendix.
2
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Application 13/250,117
9. The method according to claim 6, wherein a solution in which the
transition metal salt of the organic acid dispersed in an organic solvent is
spread onto the shredded tobacco.
10. The method according to claim 9, wherein the solution further
contains an emulsifier.
11. A cigarette comprising a shredded tobacco rod and a cigarette
paper that wraps the outer peripheral surface of the shredded tobacco rod,
wherein the shredded tobacco and/or the cigarette paper contains iron
fumarate.
12. The cigarette according to claim 11, wherein the cigarette paper
contains essentially no transition metals.
13. The cigarette according to claim 11, wherein the iron fumarate is
contained in an amount of 1 to 50% by weight in the shredded tobacco.
The Examiner rejects claims 1, 4, 6, 9, 10, and 12 under the pt
paragraph of 35 U.S.C. § 112 as failing to comply with the written
description requirement (Final Action 2-3) because "[t]he specification does
not reasonably convey that the cigarette paper should contain 'essentially no
transition metals'" (id. at 3).
We do not sustain this rejection as applied to claims 6, 9, and 10
because these claims do not require the limitation criticized by the Examiner
wherein the cigarette paper contains "essentially no transition metals" as
recited in claims 1 and 12.
However, claims 1, 4, and 12 require this limitation, and we sustain
the written description rejection as applied to these claims for the reasons
given by the Examiner (Final Action 3; Ans. 4). We emphasize that
Appellants' argument against this rejection is limited to whether their
3
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Application 13/250,117
Specification describes an embodiment wherein a transition metal salt of an
organic acid is contained in the shredded tobacco but not the cigarette paper
(App. Br. 8; Reply Br. 1-2), whereas the rejection is based on the claim
limitation that the cigarette paper contains essentially no transition metals of
any kind. As explained by the Examiner in responding to this argument,
"[t]here appears to be no teaching in the instant application that transition
metals should be entirely excluded from the paper, even if one were to
exclude the salts claimed" (Ans. 4).
Under 35 U.S.C. § 103(a), the Examiner rejects claims 1, 4, 6, 9, and
10 as unpatentable over Rasouli et al. (US 2005/0155616 Al, published July
21, 2005) ("Rasouli") in view of Dyer et al. (US 4,605,639, issued Aug. 12,
1986) ("Dyer") and Magistro (US 5,112,793, issued May 12, 1992) (Final
Action 4---6) and rejects claims 11-13 as unpatentable over Rasouli in view
of Yamamoto et al. (US 2010/0076217 Al, published Mar. 25, 2010)
("Yamamoto") (id. at 6-7).4
The Examiner finds that Rasouli discloses adding an oxyhydroxide
catalyst precursor, albeit not a precursor comprising the claimed transition
metal salt of an organic acid, to tobacco cut filler (i.e., shredded tobacco) in
order to convert carbon monoxide in cigarette smoke to carbon dioxide
(Final Action 4, 6). The Examiner concludes that it would have been
obvious to replace the oxyhydroxide precursor of Rasouli (i) with the
4 In contesting the§ 103 rejections, Appellants do not present separate
arguments specifically directed to dependent claims 4, 9, 10, and 13 (App.
Br. 3-7). As a consequence, these dependent claims will stand or fall with
their parent independent claims.
4
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Application 13/250,117
catalyst precursors disclosed by Dyer and Magistro as required by
independent claims 1 and 6 (id. at 4) or (ii) with the iron fumarate precursor
disclosed by Yamamoto as required by independent claim 11 (id. at 6). 5
Appellants' sole argument against the§ 103 rejections is that Rasouli
is limited to cigarettes wherein the cigarette paper contains the oxyhydroxide
catalyst precursor whereas "independent claim 1 (from which claims 4, 6, 9,
and 10 depend) and claim 12 (which depends from independent claim 11)
specifies that 'the cigarette paper contains essentially no transition metals"'
(App. Br. 5; see also id. at 5-7 and Reply Brief 2--4).6
Contrary to Appellants' belief, claims 6, 9, and 10 do not depend from
claim 1 and do not require that the cigarette paper contains essentially no
transition metals. Likewise, claims 11 and 13 have no such requirement.
Because Appellants' argument is not relevant to claims 6, 9-11, and 13, the
§ 103 rejections of these claims are sustainable for this reason alone.
As for remaining claims 1, 4, and 12, we do not agree with Appellants
that these claims patentably distinguish from Rasouli and the other applied
references via the claim limitation "the cigarette paper contains essentially
no transition metals" (claims 1 and 12).
For the reasons given by the Examiner, one having ordinary skill in
this art would interpret Rasouli as disclosing the use of a catalyst precursor
with cigarette paper or cut filler (i.e., shredded tobacco) or both (Ans. 2--4).
5 We emphasize that Appellants do not contest the Examiner's above
obviousness conclusions.
6 Implicit in this argument is the proposition that the Examiner's proposed
modification of Rasouli would result in cigarette paper containing a
transition metal-based catalyst precursor.
5
Appeal2015-004180
Application 13/250,117
As the Examiner explains, such an interpretation is evinced, for example, by
paragraph 33 of Rasouli that discloses providing the cut filler but not the
cigarette paper with a catalyst precursor (id. at 3). This interpretation is
further evidenced by Rasouli' s disclosure "[ w ]hile the use of these catalysts
reduces the amount of carbon monoxide in mainstream smoke during
smoking, it is further desirable to minimize or prevent contamination and/or
deactivation of the catalysts used in the cigarette filler, particularly over long
periods of storage" (i-f 13 (emphasis added)). Similarly, the interpretation is
supported by Rasouli's disclosure of using oxyhydroxide catalyst precursors
in smoking article components that are listed in the alternative (i-f 16
("Preferred oxyhydroxide compounds are stable when present in cigarette
wrappers, e.g., cigarette paper or other paper used in the manufacture of
smoking articles such as cigarettes, cut filler compositions or in cigarettes, at
typical room temperature and pressure, as well as under prolonged storage
conditions." (emphasis added))). In this regard, we emphasize that the
Specification also describes Rasouli as disclosing the use of oxyhydroxide in
smoking article components listed in the alternative (Spec. 2:8-10 ("Patent
Literature 3 [i.e., Rasouli] discloses that a metal oxyhydroxide is added to
[the] cigarette paper, tobacco cut filler, filter or the like" (emphasis added));
see also id. at 2:22-23).
Appellants' argument is further deficient in that it presumes without
analysis that one having ordinary skill in this art, in replacing the
oxyhydroxide precursor of Rasouli with a transition metal-based precursor,
necessarily and inevitably would have made this replacement in Rasouli' s
cigarette paper. Appellants fail to explain why an artisan would not have
used a transition metal-based precursor only in the shredded tobacco of
6
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Application 13/250,117
Rasouli' s cigarette, thereby leaving the cigarette paper with no precursor at
all or with one of Rasouli' s non-transition metal oxyhydroxide precursors. 7
For the reasons stated above and given in the Final Action as well as
the Answer, Appellants fail to show error in the Examiner's§ 103 rejections
of claims 1, 4, 6, and 9-13. Therefore, we sustain these rejections.
The decision of the Examiner 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
7 Appellants indicate that cigarette paper by itself contains no transition
metals (Reply Br. 2 ("[O]nly calcium carbonate is used as a whitener in
cigarette wrappers ... [such that] cigarette wrapper paper does not contain
titanium dioxide."); see also Rasouli i-f 20 disclosing a control cigarette
having only CaCQ3 filler in the paper).
7