Ex Parte Vogler et al

Board of Patent Appeals and Interferences

Jul 14, 2008

10646483 (B.P.A.I. Jul. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN WILLIAM VOGLER, LARRY WAYNE RENFRO,
DAVID LEE LARKINS, and DAVID GEARL DOUTHAT
____________

Appeal 2008-2517
Application 10/646,483
Technology Center 1700
____________

Decided: July 14, 2008
____________

Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, AND
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-5, 8, 9, 11-15,
and 17-21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2008-2517
Application 10/646,483

The invention relates “to a method of adhering cellulose acetate tow
to a paper to form a cigarette.” (Spec. 1, ll. 9-10.) Claims 1 and 12 are
illustrative of the invention and are reproduced below:
1. A method of adhering two or more components together, the method
comprising:

a) exposing to a plasticizing solvent at least one of:

i) a first component that includes cellulose ester fibers, and

ii) a second component that includes paper comprising cellulose
and having a cellulose ester incorporated therein;

b) contacting the first component and the second component together
to form a compound structure; and

c) curing the compound structure so that the first component and the
second component become adhered together.

12. A method of making a filter, the method comprising:

a) exposing an aggregation of cellulose ester fibers to a plasticizing
solvent;

b) contacting the aggregation of cellulose ester fibers exposed to the
plasticizing solvent with a cellulose ester-containing substrate comprising
paper having a cellulose ester incorporated therein; and

c) curing the aggregation of cellulose ester fibers contacted to the
substrate so that the substrate is adhered to the aggregation of cellulose ester
fibers.

The Examiner relies on the following prior art references to show
unpatentability:
McIntosh 1,631,750 Jun. 7, 1927
2
Appeal 2008-2517
Application 10/646,483

Cobb, Jr. (‘861) 3,025,861 Mar. 20, 1962
Cobb, Jr. (‘501) 3,106,501 Oct. 8, 1963
Pearman 3,426,764 Feb. 11, 1969

The Examiner finally rejected the claims as follows (Ans. 2-3, ¶ (6):
1. Claims 12-14 and 17-21 under 35 U.S.C. § 103 as unpatentable
over Cobb ‘861 in view of McIntosh.
2. Claims 1-5, 8, and 11 under 35 U.S.C. § 103 as unpatentable over
Cobb ‘861 in view of McIntosh and Pearman.
3. Claim 15 under 35 U.S.C. § 103 as unpatentable over Cobb ‘861 in
view of McIntosh as applied to claims 12-14 and 17-21, and further in view
of Cobb ‘501.
4. Claim 9 under 35 U.S.C. § 103 as unpatentable over Cobb ‘861 in
view of McIntosh and Pearman as applied to claims 1-5, 8, and 11, and
further in view of Cobb ‘501.

With respect to the first two grounds of rejection, Appellants do not
present arguments which are reasonably specific to any particular claim.
Accordingly, the dependent claims stand or fall together with independent
claims 12 and 1, upon which they ultimately depend.
Appellants argue claims 1-5, 8, 11-14 and 17-21 as a group (see App.
Br. 3-8), although claims 12 and 1, and the respective claims dependent
therefrom, are subject to separate grounds of rejection (i.e., the first two
grounds of rejection). We have considered all of these arguments with
respect to each of the first two grounds of rejection, i.e., to the extent that
they address limitations in claims 12 and 1. However, for the sake of
3
Appeal 2008-2517
Application 10/646,483

convenience, we have listed the arguments pertaining to Pearman under the
heading which pertains to the second ground of rejection.
(1) Rejection of claims 12-14 and 17-21 under 35 U.S.C. § 103
as unpatentable over Cobb ‘861 in view of McIntosh

The Examiner finds that Cobb ‘861 discloses the invention as claimed
in claim 12 with the exception of a cellulose ester incorporated into the
paper component. (Ans. 4.) However, the Examiner notes that Cobb ‘861
discloses coating the paper with cellulose acetate. (Ans. 4.) The Examiner
further finds that McIntosh discloses a method of forming paper wherein
cellulose acetate is incorporated into pulp fibers when forming the paper.
(Ans. 4.) The Examiner contends that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have formed the paper
wrapper of the Cobb ‘861 filter using McIntosh’s method in order to
improve its moisture repellency and durability. (Ans. 4-5.) The Examiner
further notes that one of ordinary skill in the art would have been motivated
to use McIntosh’s method to reduce processing steps, i.e., to eliminate the
Cobb ‘861 step of coating the paper with cellulose acetate. (Ans. 5.)
Appellants argue that the Examiner fails to identify proper motivation
to combine the references in the manner claimed, noting in particular that:
“there is no indication in [either of] the references [cited], or in the art
generally, that [improving the] moisture repellency and durability of the
paper of Cobb ‘861 would be an advantage” (Reply Br. 5); although
McIntosh’s process is said to be superior to impregnation processes, there is
no indication the process would be preferable to the coating process of Cobb
‘861 (Reply Br. 5-6); there is no indication in either reference that the
“somewhat flexible” paper products of McIntosh could be used as the paper
4
Appeal 2008-2517
Application 10/646,483

wrapper of Cobb ‘861 (App. Br. 6.); and one of ordinary skill in the art
would not employ the waterproof material of McIntosh as a filtering material
since it would impede the flow of cigarette smoke (App. Br. 8). Appellants
thus contend that the Examiner’s rejections are based on improper hindsight
reasoning.
(2) Rejection of claims 1-5, 8, and 11 under 35 U.S.C. § 103
as unpatentable over Cobb ‘861 in view of McIntosh and Pearman

The Examiner relies on the combined teachings of Cobb ‘861 and
McIntosh (as applied to claim 12) for a disclosure of the invention as
claimed in claim 1 with the exception of a specific teaching that the pulp
fibers forming the paper are cellulose fibers. (Ans. 5.) The Examiner finds
that Pearman discloses a method of forming paper wherein cellulose acetate
is incorporated into cellulose pulp fibers. (Ans. 5.) The Examiner contends
that “[i]t would have been obvious to one of ordinary skill in the art at the
time the invention was made to use as the pulp fibers of the paper taught by
Cobb as modified by McIntosh those formed from cellulose as was well
known in the art and shown by Pearman only the expected results of forming
a paper being achieved.” (Ans. 5-6.)
Appellants argue that Pearman fails to cure the deficiencies in the
Examiner’s proposed combination of Cobb ‘861 and McIntosh (as discussed
in connection with the rejection of claim 12). (App. Br. 7.) In addition,
Appellants argue lack of motivation to combine Pearman with Cobb ‘861
because “Pearman suggests that the paper itself provides suitable filtration, .
. . while Cobb ‘861 teaches the use of cellulose acetate filaments as the
filtering material, with a wrapper paper having an adhesive applied to assist
in adhering the paper to the filaments.” (App. Br. 7.) Appellants also argue
5
Appeal 2008-2517
Application 10/646,483

that “there is no motivation or suggestion to combine McIntosh with
Pearman” because the waterproof material of McIntosh is incompatible with
the moisture permeable filtration material of Pearman. (App. Br. 7-8.)
The contentions of the Examiner and the Appellants present the
following issue: Have Appellants identified reversible error in the
Examiner’s determination that it would have been obvious to one of ordinary
skill in the art at the time of the invention to have modified the paper
wrapper of the Cobb ‘861 cigarette filter based on the teachings of McIntosh
and Pearman to achieve the invention as claimed? We answer this question
in the negative.
The following enumerated findings of fact (“FF”) are relevant to our
consideration of this issue.
1) Cobb ‘861 discloses “a tobacco smoke filter prepared from
crimped, continuous cellulose acetate filaments enclosed in a paper
wrapper . . . wherein any by-passing between the wrapper and the
filaments forming the filter is obviated or minimized.” (Cobb ‘861,
col. 1, ll. 11-13.) Cobb ‘861 states that an object of the invention is to
provide a filter having improved filtration efficiency and physical
stability. (Cobb ‘861, col. 1, ll. 54-57.)
2) Cobb ‘861 utilizes “a plug (filament-filter) wrap paper coated with
an adhesive by means of which the outer layer of filaments in the
filter elements are made to adhere to the wrapping material.” (Cobb
‘861, col. 1, ll. 61-65.) According to Cobb ‘861, “[b]y thus fixing the
position of the filaments at the periphery of the filter, the shrinkage
associated with smoking, particularly with fine denier per filament
tows, is eliminated. As a result, the smoke must pass through the
6
Appeal 2008-2517
Application 10/646,483

filter between the filaments and the tar removal is increased and more
consistent.” (Cobb ‘861, col. 1, ll. 65-70.)
3) Cobb ‘861 states that the adhesive used to coat the paper wrapper
may be “a plasticizer-soluble adhesive, [such as] a compound
composed of a mixture of cellulose acetate and plasticizer.” (Cobb
‘861, col. 2, ll. 8-9.)
4) McIntosh discloses a method of making “a water-resistant fibrous
sheet homogeneously impregnated with cellulose acetate” (McIntosh
2, ll. 7-9) in which “a cellulose ester is added to the pulp or rag fibres
during processing” (McIntosh 1, ll. 20-22). Heat and pressure are
applied to the sheet “for a time sufficient to cause the cellulose ester
to fuse throughout the fibrous mass and to flow completely over the
surface, forming a continuous coating.” (McIntosh 1, ll. 77-81.)
5) According to McIntosh, the “process gives a product in which the
cellulose ester is intimately and uniformly dispersed throughout the
fibres as well as upon the surface, resulting in a more water-proof and
more durable product than has previously been possible by
impregnation.” (McIntosh 1, ll. 25-31).
6) McIntosh states that “[c]onsiderable modification is possible in the
processing of the paper and in the percentages of cellulose acetate
used with no departure from the essential features of the invention.”
(McIntosh 2, ll. 22-26.)
7) Pearman “relates to a paper cigarette filter, and to the composition
of the paper used therein, for extracting from tobacco smoke
deleterious ingredients including suspected carcinogenic substances.”
(Pearman, col. 1, ll. 24-27.)
7
Appeal 2008-2517
Application 10/646,483

8) According to Pearman, “it has been found that the filter properties
of a paper tobacco smoke filter can be improved by a substantial
amount through the use of a filter paper having fibers of an acyl ester
of cellulose incorporated therein.” (Pearman, col. 2, ll. 39-43.)
9) Pearman states that one advantage of adding fibers of cellulose
esters to the filter paper is that it reduces the amount of moisture that
will be absorbed by the paper. (Pearman, col. 2, ll. 47-48.) Pearman
notes that removing less moisture from the cigarette smoke presents a
cooler smoke to the cigarette smoker. (Pearman, col. 2, ll. 50-52.)
10) Pearman discloses that “the presence of cellulose ester fibers in
the paper filter can be used to improve the firmness or hardness of the
filter.” (Pearman, col. 2, ll. 52-54.) According to Pearman,
[t]his may be accomplished by applying bonding agents
for the cellulose ester to the paper prior to its being
formed into a filter rod. These bonding agents act to
bond the cellulose ester fibers together at random points
and thereby hold the filter in a fixed geometry. Thus the
use of cellulose ester fibers in paper cigarette smoke
filters permits the use of less material without the filter
rods becoming too soft to process. This bonding may be
effected by a plasticizer for the cellulose esters . . . .

(Pearman, col. 2, ll. 55-63.)
11) In Example 1, Pearman discloses a method of preparing
paper containing cellulose acetate fibers which includes the step
of blending chemical cellulose and cellulose acetate fibers in
water. (Pearman, col. 4, ll. 8-13.) In Example 3, Pearman
discloses spraying the Example 1 paper with a plasticizer prior
to forming the paper into filter rods. (Pearman, col. 5, ll. 8-12.)
8
Appeal 2008-2517
Application 10/646,483

When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007). An obviousness
determination does not require a showing that all the features of one
reference are capable of being physically incorporated into another
reference. In re Griver, 354 F.2d 377, 381 (CCPA 1966); In re Billingsley,
279 F.2d 689, 691 (CCPA 1960). Similarly, a suggestion, teaching, or
motivation to combine the relevant prior art teachings does not have to be
found explicitly in the prior art, but may be implicit. “The test for an
implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art.” In re
Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000) (internal citations omitted);
see also, In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (test for
obviousness is what the collective teachings of the prior art would have
suggested to one of ordinary skill in the art). In other words, in an
obviousness determination, it is appropriate to “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR, 127 S. Ct. at 1741.
Applying the foregoing principles of law, we find that the facts and
reasons relied on by the Examiner provide a reasonable basis to conclude
9
Appeal 2008-2517
Application 10/646,483

that the invention, as claimed in claims 12 and 1, would have been obvious
to one of ordinary skill in the art at the time of the invention based on the
applied prior art. We have considered Appellants’ arguments, but are not
convinced of reversible error on the part of the Examiner. More specifically,
we are not persuaded by Appellants’ arguments because they focus on the
explicit teachings of McIntosh and Pearman and, therefore, do not present an
effective rebuttal to the Examiner’s position, which is based on a
determination of what the ordinary artisan would have reasonably inferred
from the teachings of McIntosh and Pearman.
Turning first to McIntosh, Appellants essentially argue that McIntosh
does not disclose the type of paper products that one of ordinary skill in the
art would contemplate for use as a cigarette filter wrapper. (See, e.g., App.
Br. 6.) Appellants point out that McIntosh is primarily concerned with
manufacturing a hard, durable, compact, and waterproof material (App. Br. 5
and 6), i.e., features which are undesirable in a cigarette filter wrapper (see,
e.g., App. Br. 4 and Reply Br. 8). Appellants concede that McIntosh
indicates that the material is suitable for use as a raw material in “structures
which it is desirable shall be unaffected by moisture, oil or other liquids.”
(App. Br. 5 (citing McIntosh 2, ll. 10-21.)) However, Appellants maintain
that there is no indication that the material would serve as a functional
replacement for the filter paper of Cobb ‘861. (App. Br. 6.)
Contrary to Appellants’ contention, the Examiner’s rejection is not
based on a finding that McIntosh explicitly discloses a substitute for the
Cobb ‘861 plug (filament-filter) paper wrapper. Rather, the Examiner relies
on McIntosh for a disclosure of a method of forming a “paper product
ha[ving] a wide range of flexibilities as a function of the amount of cellulose
10
Appeal 2008-2517
Application 10/646,483

acetate used.” (Ans. 8; see FF 6.) Appellants have not explained why the
Examiner erred in finding that one of ordinary skill in the art would have
reasonably inferred that such method could be used to manufacture a paper
product suitable for use as the Cobb ‘861 cigarette paper wrapper by
adjusting the amount of cellulose acetate to achieve a desired level of
flexibility (see Ans. 8). Nor have Appellants established that it would not
have been within the knowledge or capability of the ordinary artisan to
modify McIntosh’s process so as to achieve a product having the desired
degree of flexibility and moisture permeability required in the Cobb ‘861
cigarette paper wrapper. (See Ans. 9-10; Ans. 5 (discussing routine
experimentation).) Moreover, Appellants have neither provided evidence to
establish, nor explained why one of ordinary skill in the art would expect
that a paper manufactured using McIntosh’s method would not function in
substantially the same manner as the Cobb ‘861 coated paper wrapper. (See
Ans. 10-11.)
For example, Appellants have not shown that the coating of cellulose
acetate formed in McIntosh’s method (FF 4) would not provide substantially
the same adhesive strength as the cellulose acetate coating (FF 3) on the
Cobb ‘861 paper filter (Ans. 11; see App. Br. 6), or shown a difference in
moisture permeability between the Cobb ‘861 coated paper wrapper and a
paper product produced by McIntosh’s method. Further, Appellants have
not shown that any differences in adhesive strength or moisture permeability
would have dissuaded one of ordinary skill in the art from using McIntosh’s
method to produce a paper wrapper for use in the Cobb ‘861 filter. (See
Ans. 8 (noting that McIntosh does not teach away).)
11
Appeal 2008-2517
Application 10/646,483

With respect to Pearman, Appellants essentially argue that because
Pearman’s paper is itself a filter, its use as a paper wrapper for adhering the
filter elements of Cobb ‘861 would be unnecessary and duplicative. (App.
Br. 7.) Appellants have not, however, attempted to refute the Examiner’s
finding that one of ordinary skill in the art would have understood from
Pearman that cellulose fibers may be used as the pulp fibers in forming a
cigarette paper wrapper (Ans. 5-6) and would provide various advantages to
a paper wrapper (FF 8-10). In other words, Appellants have not explained
why the Examiner erred in concluding that it would have been obvious to
have used a well known type of fibers, i.e., cellulose (as taught by Pearman),
as the pulp and rag fibers in the Cobb/McIntosh paper wrapper (Ans. 12).
In view the foregoing, we sustain the Examiner’s rejections of
appealed claims 1 and 12, as well as claims 2-5, 8, 11, 13, 14, and 17-21.
(3) Rejection of claim 15 under 35 U.S.C. § 103 as unpatentable
over Cobb ‘861 in view of McIntosh as applied to
claims 12-14 and 17-21, and further in view of Cobb ‘501
and
(4) Rejection of claim 9 under 35 U.S.C. § 103 as unpatentable
over Cobb ‘861 in view of McIntosh and Pearman as applied to
claims 1-5, 8, and 11, and further in view of Cobb ‘501

Appellants do not present any additional substantive arguments in
traversing the rejections of claims 15 and 9. (See App. Br. 8.) Accordingly,
we likewise sustain the Examiner’s rejections of these claims for the same
reasons discussed in connection with claims 12 and 1, from which these
claims depend.

12
Appeal 2008-2517
Application 10/646,483

ORDER
The decision of the Examiner rejecting claims 1-5, 8, 9, 11-15, and
17-21 under 35 U.S.C. § 103 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)(1)(iv).
AFFIRMED

PL Initial:
sld

MICHAEL K. CARRIER
EASTMAN CHEMICAL COMPANY
100 NORTH EASTMAN ROAD
KINGSPORT, TN 37660-5075

13