Ex Parte Winterson et al

Patent Trial and Appeal Board

Feb 14, 2017

12003219 (P.T.A.B. Feb. 14, 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.
12/003,219 12/20/2007 Warren D. Winterson 1021238-000806 8558
145992 7590 02/16/2017
ALCS Law Dept. - Product and IP c/o
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
NGUYEN, PHU HOANG
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
02/16/2017 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
following e-mail address(es):
ADIPDOCl@BIPC.com
kenneth.lilly @ altria.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WARREN D. WINTERSON and TOMMY C. HOLLAND
Appeal 2016-002308
Application 12/003,219
Technology Center 1700
Before TERRY J. OWENS, KAREN M. HASTINGS, and
AVELYN M. ROSS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—20 under 35 U.S.C. 103(a) as being
unpatentable over at least the combined prior art of Yamaguchi (US
4,057,391, iss. Nov. 8, 1977), Kawamori (JP 2005-0168544, pub. June 30,
2005), and Albino (US 2006/0157072 Al, pub. July 20, 2006).2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Real Party in Interest is stated to be Philip Morris USA Inc. (App. Br.
2).
2 Quinter (US 2005/0115580 Al, pub. June 2, 2005) was additionally
applied to dependent claims 11, 12, and 20 (Ans. 4, 5); Thai (US 4,944,317,
iss. July 31, 1990) andBorel (US 3,715,856, iss. Feb. 13, 1973) were
additionally added to dependent claims 16, 17, and 19 (Ans. 5, 6).
Appeal 2016-002308
Application 12/003,219
Claim 1 is illustrative of the claimed subject matter:
1. A process for treating a moist tobacco product
comprising:
subjecting a consumer-ready hermetically-sealed
container having an amount of moist tobacco packed therein to
a thermal stabilization treatment, such that volatile tobacco
compounds are retained in the container;
wherein the moisture content of the moist tobacco is
about the same before and after the thermal stabilization
treatment; and
production of TSNAs is reduced in comparison to a
moist-tobacco product not subjected to a thermal stabilization
treatment.
Independent claim 15 is also directed to a process for treating a moist
tobacco product similar to claim 1, except it additionally recites a cooling
step after the heat treatment step (Claims App’x).
Appellants’ arguments are directed to the rejection of the group of
claims that include independent claims 1 and 15 (App. Br. 5—9). Appellants’
arguments directed to separately rejected dependent claims mainly rely upon
these same arguments (App. Br. 9, 10).
ANALYSIS
We have reviewed each of Appellants’ arguments for patentability.
We are in agreement with the Examiner that the claimed subject matter of
independent claims 1 and 15 (as well as the not separately argued dependent
claims) is unpatentable under § 103 in view of the applied prior art.
Accordingly, we sustain the Examiner’s prior art rejections of all the claims
for the reasons explained in the Answer.
We add the following primarily for emphasis.
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Appeal 2016-002308
Application 12/003,219
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
It is also well settled that a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom. See In re Fritch,
972 F.2d 1260, 126A-65 (Fed. Cir. 1992); In rePreda, 401 F.2d 825, 826
(CCPA 1968). See also In re Keller, 642 F.2d 413, 425-26 (CCPA 1981)
(“The test for obviousness ... is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”); In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.”).
We are not persuaded by Appellants’ arguments that the Examiner has
engaged in impermissible hindsight (e.g., App. Br. 6, 10; Reply Br.
generally). Appellants’ arguments focus on the references separately and do
not fully consider the applied prior art as a whole. As pointed out by the
Examiner, one of ordinary skill would have readily inferred from the applied
prior art of Kawamori and Albino that the sealed product of Yamaguchi’s
sterilization process may include a sealed tobacco product, and should be
hermetically sealed (e.g., Ans. 7). A preponderance of the evidence also
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Appeal 2016-002308
Application 12/003,219
supports the Examiner’s position that such a process would have reduced the
production of TSNAs since Albino discloses the advantage of keeping
tobacco product in an airtight hermetically sealed container so microbes can
be kept out (| 271), and further discloses that sterilizing vapor, heat or
radiation prevent the conversion of alkaloid to TSNAs (1215) (e.g. Ans. 10).
On this record, Appellants have not provided persuasive reasoning or
credible evidence why one of ordinary skill in the art would not have, using
no more than ordinary creativity, predictably used a steam sterilization
process on a sealed tobacco product as both Kawamori and Albino
exemplify the need for sterilizing tobacco products, in order to obtain the
known benefits of sterilizing a sealed product as exemplified in Yamaguchi,
and to achieve a reduction in the production of TSNAs (as one would readily
infer from Albino that such a sterilization process would have resulted in
such a reduction) (Ans. 6—10; App. Br. generally). See KSR, 550 U.S. at 421
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton”); Ball Aerosol and Specialty Container, Inc. v. Limited Brands,
Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (Under the flexible inquiry set forth
by the Supreme Court, the PTO must take account of the “inferences and
creative steps,” as well as routine steps, that an ordinary artisan would
employ).
To the extent any of the separately rejected claims are separately
argued (App. Br. 9, 10), a preponderance of the evidence supports the
Examiner’s obviousness conclusion (Ans. 8, 9).
Thus, we affirm all of the Examiner’s § 103 rejections of the claims
on appeal.
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Appeal 2016-002308
Application 12/003,219
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
DECISION
AFFIRMED
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