Ex Parte TalonDownload PDFPatent Trial and Appeal BoardMay 21, 201814361178 (P.T.A.B. May. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/361,178 05/28/2014 Pascal Talon 22850 7590 05/23/2018 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 433512US 7550 EXAMINER YAARY,ERIC ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 05/23/2018 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): patentdocket@oblon.com oblonpat@oblon.com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PASCAL TALON 1 Appeal2018-002371 Application 14/361, 178 Technology Center 1700 Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and MERRELL C. CASHION, JR., Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies the real party in interest as Philip Morris Products S. A. App. Br. 3. Appeal2018-002371 Application 14/361, 178 Appellant requests our review under 35 U.S.C. § 134(a) of the Examiner's decision rejecting claims. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). STATEMENT OF THE CASE Claim 1 is illustrative of Appellant's subject matter on appeal and is set forth below: 1. An aerosol generating device configured for user inhalation of a generated aerosol, the device comprising: a heater element configured to heat an aerosol-forming substrate contained in an aerosol generating article, the aerosol generating article being partially contained within the aerosol generating device; a power source connected to the heater element; and a controller connected to the heater element and to the power source, wherein the controller is configured to control power supplied to the heater element from the power source to raise a temperature of the heater element to a target temperature and subsequently to reduce power supplied to the heater element to maintain the heater element at the target temperature, and after the temperature of the heater element has reached the target temperature, is configured to monitor changes in the temperature of the heater element, or changes in the power supplied to the heater element, to detect a change in air flow past the heater element indicative of the user inhalation directly from the aerosol generating article. 2 Appeal2018-002371 Application 14/361, 178 The Examiner relies on the following prior art references as evidence of unpatentability: Knepler us 6,124,574 Niemeyer US 2007 /004 7931 A 1 Herbrich et al. US 2009/0095312 Al (hereinafter "Herbrich") Bohlender et al. US 2009/0189420 Al (hereinafter "Bohlender") Weinstein et al. US 2010/0024816 Al (hereinafter "Weinstein") Wang US 2010/0307518 Al Cohen et al. US 2011/0036346 Al (hereinafter "Cohen") Greim et al. US 2011/0155718 Al (hereinafter "Greim") Kennedy et al. US 2011/0186560 Al (hereinafter "Kennedy") Haartsen et al. US 2012/0291779 Al (hereinafter "Haartsen") Allen US 2012/0295141 Al THE REJECTIONS Sept. 26, 2000 Mar. 1, 2007 Apr. 16, 2009 July 30, 2009 Feb.4,2010 Dec. 9, 2010 Feb. 17, 2011 June 30, 2011 Aug. 4, 2011 Nov. 22, 2012 Nov. 22, 2012 1. Claims 1, 7, and 11-12 are rejected under pre-AIA 35 U.S.C. §I03(a) as being unpatentable over Greim in view of Weinstein and Niemeyer. 2. Claims 2, 3, and 13 are rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over Greim, Weinstein, and Niemeyer as applied to claims 1 and 12 above, and further in view of Kennedy. 3 Appeal2018-002371 Application 14/361, 178 3. Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over Greim, Weinstein, Niemeyer, and Kennedy as applied to claim 3 above, and further in view of Haartsen. 4. Claim 5 is rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over Greim, Weinstein, and Niemeyer as applied to claim 1 above, and further in view of Knepler. 5. Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over Greim, Weinstein, and Niemeyer as applied to claim 1 above, and further in view of Allen. 6. Claims 8 and 14 are rejected under pre-AIA 35 U.S.C. §103(a) as being obvious over Greim, Weinstein, and Niemeyer as applied to claims 1 and 12 above, and further in view of Wang or Bohlender . 7. Claim 9 is rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over Greim, Weinstein, and Niemeyer as applied to claim 1 above, and further in view of Herbrich. 8. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over Greim, Weinstein, and Niemeyer as applied to claim 1 above, and further in view of Cohen. ANALYSIS Upon consideration of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence on this record supports Appellant's position and reverse the rejections for the reasons discussed hereafter. 4 Appeal2018-002371 Application 14/361, 178 The dispositive issue in this case is whether there is sufficient motivation to modify Greim according to Niemeyer as proposed by the Examiner on pages 3 and 4 of the Answer. We agree with Appellant that incorporating the teachings of Niemeyer into those of Greim would result in a device that no longer energizes its heating element when the sensor senses a consumer taking a puff or when a user operates the manually operable switch, but maintains the energizing of its heating element. As such, as Appellant submits, forcing Greim to maintain the energizing of its heating element changes the principle of operation of Greim because Greim is directed to a flash heating system, so there would be no benefit of maintaining a target temperature of the heater of Greim throughout use for the reasons discussed on pages 14--16 of the Appeal Brief. The Examiner believes that this argument is incorrect. The Examiner states that "Greim makes no mention of a "flash heating system." The Examiner submits that in the embodiment including a manually operable switch [Greim ,r,r 49, 69], it would be clear to one of ordinary skill in the art that when the switch is turned on, power is supplied to the heating element and energizing of the heating element is maintained for a pre- determined period of time or until the switch is turned off. Ans. 11. On pages 6-7 of the Reply Brief, Appellant extensively explains: Further, the Examiner asserts that the arguments that Greim relates to a "flash heating system" are erroneous. The Examiner refers to the disclosure of a manually operated switch in paragraphs 49 and 69 of Greim. The Examiner states that "it would be clear to one of ordinary skill in the art that when the switch is turned 5 Appeal2018-002371 Application 14/361, 178 on, power is supplied to the heating element and energizing of the heating element is maintained for a pre- determined period of time or until the switch is turned off." However, the inclusion of a manually operated switch does not change the fact that Greim relates to a system which heats only for a short period of time corresponding to a user puff. Referring to paragraphs 49 and 69, it is clear that either the system includes a sensor to detect flow indicative of a consumer taking a puff, so that the system can be arranged to energize the heating element when the senor sensors a consumer taking a puff, or the system includes a manually operable switch for the consumer to "initiate a puff'. One of ordinary skill in the art would understand that the words "initiate a puff" mean that the switch can be switched in order to tum on the heating element when the user is about to puff. The heater will only be turned on for a period corresponding to the length of a typical user puff. The manually operated switch is used to initiate energization of the heater, not to maintain it. There is nothing in Greim to suggest that the heater can be energized for a longer period of time, corresponding to a plurality of user puffs. Taking the whole of the teachings of Greim into account, it is clear to the skilled person that the system of Greim is a flash heating system. Any suggestion that Greim teaches that the heater can be energized for a period corresponding to a plurality of user puffs can only be the result of impermissible hindsight reasoning of the prior art based on knowledge of Applicant's invention. Accordingly, in Greim, there is either a puff sensor for detecting a user puff, which is a dedicated electro-mechanical device or there is no puff sensor and the system relies on the 6 Appeal2018-002371 Application 14/361, 178 user to operate a manually operable switch every time that they wish to take a puff. Thus, one of ordinary skill in the art would understand Greim to be a flash heating system and incorporating the teachings of Niemeyer into those of Greim would result in a device that no longer energizes its heating element when the sensor senses a consumer taking a puff or when a user operates the manually operable switch, but maintains the energizing of its heating element. Forcing Greim to maintain the energizing of its heating element changes the principle of operation of Greim. Reply Br. 6-7. We are persuaded by the aforementioned stated position in the record as presented by Appellant. As such, we agree that there is insufficient motivation for making the modification, as proposed by the Examiner, without changing the principle of operation of Greim. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) ("If the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification."); In re Ratti, 270 F.2d 810, 813 ( CCP A 19 59) ("If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious."). In view of the above, we reverse Rejection 1. Because the additionally applied references in the other rejections are not relied upon by the Examiner to remedy the deficiencies of the 7 Appeal2018-002371 Application 14/361, 178 combination of Greim in view of Niemeyer, we also reverse Rejections 2-8. DECISION Each rejection is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation