Ex Parte Yang et alDownload PDFPatent Trial and Appeal BoardMay 26, 201613008563 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/008,563 01/18/2011 21839 7590 05/31/2016 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 FIRST NAMED INVENTOR Zuyin Yang 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. 1021238-000763 9025 EXAMINER SAMUELS, LAWRENCE H ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 05/31/2016 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 ZUYIN YANG and SUSAN E. WRENN Appeal2014-003781 Application 13/008,563 Technology Center 3700 Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Zuyin Yang and Susan E. Wrenn (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-3, 5, 7-14, and 18- 28.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify Philip Morris USA Inc. as the real party in interest. Appeal Br. 1. Appeal2014-003781 Application 13/008,563 THE CLAIMED SUBJECT MATTER Claims 1, 2, 13, 25, and 28 are the independent claims on appeal. Claims 1 and 2, reproduced below, are illustrative of the subject matter on appeal, with disputed limitations italicized for emphasis. 1. An aerosol generator comprising: a reservoir configured to hold multiple liquids, wherein the multiple liquids are separated into discrete layers with lower density liquids forming over higher density liquids; a heating element operable to volatilize the multiple liquids to form a volatilized fluid, which mixes with ambient air to form an aerosol; a composite conduit to transport the multiple liquids to the heating element, wherein the composite conduit includes a first capillary tube, which is concentrically surrounded by second and third capillary tubes, and where in the first, second, and third capillary tubes have different lengths adapted to be in contact with a different liquid within the multiple liquids; and a mouthpiece configured to receive the aerosol, from which the aerosol may be inhaled. 2. An aerosol generator comprising: a reservoir configured to hold an emulsion of immiscible liquids; a heating element operable to volatilize the emulsion of immiscible liquids to form a volatilized fluid, which mixes with ambient air to form an aerosol; a first wick operable to transport a first liquid, a second wick operable to transport a second liquid, and a third wick operable to transport a third liquid from the emulsion of immiscible liquids to the heating element; and a mouthpiece configured to receive the aerosol, from which the aerosol can be inhaled. Appeal Br., Claims App. 2 Appeal2014-003781 Application 13/008,563 THE REJECTIONS Claim 25 stands rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1, 8-10, and 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kotary (US 7 ,007 ,863 B2; iss. Mar. 7, 2006), Martinez (US 7,055,764 Bl; iss. June 6, 2006), and Yip (US 6,950,607 B2; iss. Sept. 27, 2005). Claims 2, 3, 5, 7, and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kotary, Yip, and Wood (US 4,676,237; iss. June 30, 1987). Claims 13, 14, 18, 19, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kotary and Yip. Claims 11, 12, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kotary, Yip, Martinez, Wood, and Valinotti (US 2008/0017667 Al; pub. Jan. 24, 2008). Claims 25-27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kotary, Martinez, Newman (US 2009/0101729; pub. Apr. 23, 2009), and Yip. Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Kotary, Martinez, and Wood. OPINION Claim 25- Written description requirement The Examiner finds that claim 25 contains subject matter not described in Appellants' Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors had possession of the 3 Appeal2014-003781 Application 13/008,563 claimed invention, at the time the Specification was filed. Final Act. 3. Specifically, the Examiner determines that claim 25 recites "a method comprising 'separating multiple liquids into discrete layers' but nowhere in the disclosure is it taught how one separates these liquids." Id. Appellants argue that paragraph 1 7 of the Specification discloses that "the liquid may separate into discrete layers with lower density phases forming over higher density phases," and thus, "it is clear that the liquid separates based on density." Appeal Br. 6. The Examiner responds that if the separation step is "a natural occurrence when [multiple] liquids ... of different densities or hydrophobic properties are mixed together," then the method step is improper for "claiming a natural occurrence," and if the separation step is not a natural occurrence, then "the disclosure does not describe how to actively separate these layers." Ans. 18-19. Appellants reply that "to perform the step, one of ordinary skill must actively choose to allow the multiple liquid[ s] to separate into discrete layers such that the method step is active, rather than passive." Reply Br. 3. Thus, the Examiner agrees that claim 25 has adequate written description support for the step of separating multiple liquids into discrete layers by allowing the liquids to separate based on density. Regarding the Examiner's position that claim 25, as supported by paragraph 17 of the Specification, improperly claims a natural occurrence, the Examiner has not stated a rejection. Accordingly, we do not sustain the Examiner's rejection of claim 25 under 35 U.S.C. § 112, first paragraph. 4 Appeal2014-003781 Application 13/008,563 Claims 1, 8-10, and 23 - Obviousness over Kotary, Martinez, and Yip Regarding independent claim 1, the Examiner finds, inter alia, that Kotary's wick 3 corresponds to the claimed composite conduit, and that although Kotary fails to teach a composite conduit including first, second, and third capillary tubes, as claimed, Kotary teaches that "the wicks could have different parts, [and] could be concentric around each other." Ans. 5 (citing Kotary col. 5, 1. 28, col. 6, 11. 1--4, 15-20, Figs. 2A-2D); see also Final Act. 4--5; Ans. 20. The Examiner relies on Yip for teaching "a third wick prepared to transport a third fluid." Final Act. 5. The Examiner reasons that "it would have been obvious to combine the references ... to add a third wick and/or capillary tube" to Kotary's wick-based delivery system. Ans. 20 (emphasis added). Appellants argue that the combination of references ... fail to disclose or suggest a first capillary tube, which is concentrically surrounded by second and third capillary tubes[.] l\1oreover, the [Examiner] fails to identify any teaching in the secondary references which would lead a person of ordinary skill in the art to combine the references as suggested. Appeal Br. 9; see also Reply Br. 3--4. Appellants submit that Kotary employs wicks, not capillary tubes. Appeal Br. 9-10. Appellants further submit that none of Martinez, Yip, or Wood disclose or suggest the claimed composite conduit. Id. at 10-11. Appellants' Specification distinguishes between passages which are "capillary tubes" and passages which are "wicks" or "wick material" that "operate by capillary action." Spec. i-f 14. The Specification describes wicks as "contain[ing] numerous pores, which act as capillaries and cause the liquid to be drawn into them," and depicts wicks as porous material. Id. i-f 5 Appeal2014-003781 Application 13/008,563 14, Figs. la, lb (reference numerals 2, 3, 4). In contrast, the Specification describes capillary tubes as having preferred diameters, implying that the tubes are long, hollow cylinders, and depicts capillary tubes as long, hollow cylinders. Id. i-f 15, Figs. la, lb (reference numeral 1). Moreover, the Specification consistently discloses embodiments wherein wicks are combined with one or more capillary tubes, indicating that wicks and capillary tubes are distinct structures. Id. i-f 15 ("wicking materials may be arranged in a concentric pattern around a central capillary tube"); see also, e.g., id. i-f 16, Figs. la. Thus, an ordinary definition of the claim term "wick," 2 in view of the Specification, is "a material containing numerous pores for drawing in liquid by capillary action," and an ordinary definition of the claim term "capillary tube," in view of the Specification, is "a long, hollow cylinder that, by capillary action, draws liquid into the tube's hollow center." Kotary discloses "a two-section wick for transporting the oil-based material and the water-based material from the container to an upper surface of the wick." Kotary col. 4, 11. 9-11. Although Kotary also refers to "a capillary member," Kotary does not mention "capillary tubes," but rather consistently describes and depicts a two-section, porous wick as containing numerous pores that act as capillaries to cause liquid to be drawn into them. Id. at col. 2, 11. 27-28, col. 3, 1. 4, col. 4, 11. 29-33. With reference to Figure 2B, which depicts "a top view of the wick," Kotary discloses that "the two sections could be in the shape of concentric cylinders," and further that "it may be preferable to have a number of concentric cylinders, with alternating sections of hydrophobic and hydrophilic wick materials." Id. at col. 3, 11. 2 See, e.g., claim 2. 6 Appeal2014-003781 Application 13/008,563 51-51, col. 5, 11. 62---col. 6, 1. 4 (emphasis added). With reference to Figures 5A, which depicts a top view of a wick, and 5B, which depicts a cross- sectional view of the wick depicted in Figure 5A, Kotary discloses that "wick 3 comprises two sections 3g and 3h in the shape of concentric cylinders," wherein "the inner cylinder 3g is comprised of either porous ceramic-based material or a porous sand-based material, and the outer cylinder 3h is comprised of porous plastic material." Id. at col. 3, 11. 62---65, col. 7, 11. 8-14. Thus, Kotary's use of the claim term "wick" is consistent with the use of the claim term "wick" in Appellants' Specification. In view of the above, we agree with Appellants that the Examiner failed to support a finding that a capillary tube is disclosed in any one of Kotary, Martinez, Yip, or Wood. Moreover, the Examiner articulated no reasoning for modifying Kotary's wick-based delivery system to include capillary tubes, as claimed. Accordingly, we do not sustain the Examiner's rejection of independent claim 1 and claims 8-10 and 23 depending therefrom. Claims 2, 3, 5, 7, and 24- Obviousness over Kotary, Yip, and Wood Regarding independent claim 2, the Examiner finds, inter alia, that Kotary teaches "a reservoir configured to hold an emulsion of immiscible liquids." Final Act. 8 (citing Kotary, col. 2, 1. 5). The Examiner construes "emulsion" to mean "a mixture of liquids," and finds that Kotary' s "teaching of oil and water based liquids within a single container" discloses "an emulsion of immiscible liquids," as recited in claim 2. Ans. 21. Additionally, the Examiner finds that drawing liquid from the emulsion "speaks to the capability of the wick" and that because Kotary discloses oil and water based liquids within a single container, Kotary discloses "a 7 Appeal2014-003781 Application 13/008,563 reservoir configured to hold an emulsion of immiscible liquids," as claimed. Ans. 21. Appellants argue that "Kotary actually discloses a composite wick for delivering two liquids with different properties," for example, "the device can include a container for holding a mixture that contains oil-based and water-based liquids." Appeal Br. 13 (citing Kotary, col. 1, 11. 65----67, col. 2, 11. 4----6, col. 3, 11. 12-18); see also Reply Br. 4--5. Appellants contend, however, that "Kotary' s brief mention of oil or water based liquids fails to teach or suggest 'an emulsion of immiscible liquids,' as recited in [ c ]laim 2." Id. An ordinary definition of the claim term "emulsion" is "an intimate mixture of two incompletely miscible liquids (as oil and water) in which one of the liquids in the form of fine droplets is dispersed in the other usually with the aid of an emulsifier." WEBSTER'S THIRD NEW INT'L DICTIONARY, 745 (1993); see also Spec. i-f 24, Fig. 4. Thus, we agree with Appellants that the Examiner erred in finding that Kotary's teaching of oil and water based liquids discloses an emulsion of immiscible liquids, because Kotary does not disclose that one of the liquids is in the form of fine droplets dispersed in the other. Notwithstanding the Examiner's error regarding the meaning of the claim term "emulsion of immiscible liquids," we note that claim 2 recites, inter alia, "a reservoir configured to hold an emulsion of immiscible liquids" and first, second, and third wicks operable to transport first, second and third liquids ''from the emulsion of immiscible liquids to the heating element." Appeal Br., Claims App. Appellants' Specification, referring to Figure 4, states that 8 Appeal2014-003781 Application 13/008,563 [a] first wick 12 transports a first phase which may be a hydrophilic liquid, of a liquid 111 to the heating element 120 form reservoir 116 .... [L ]iquid 111 can be an emulsion of immiscible liquids (e.g., a hydrophilic liquid, a hydrophobic liquid and a neutral liquid or a combination of any thereof). Second and third wicks 14 and 16 transport additional phases which may be neutral and hydrophobic liquids, respectively, of liquid 111 to the heating element. ... [F]irst, second and third wicks 12/14/16 may be interwoven (e.g., braided) or separate. Interwoven wicks can be of various materials to transport the various phases. For example, synthetic wick materials to transport the hydrophilic phase can include plastic or rubber molecules with OH groups having an affinity for the polar phase liquids. Non-plastic material without OH group constituents have an affinity for the non-polar phase liquid and natural materials such as cotton have an affinity for the neutral phase liquid. As such, first[,] second and third wicks 12/14/16 can transport separate phases from liquid 111 to the heating element 120 such that the phases are present at the heating element in desirable concentration. Spec. i-fi-124--25, Fig. 4. We are not apprised of error in the Examiner's finding that Kotary's bottle 1 is "configured to" hold an emulsion of immiscible liquids, if an emulsion rather than a mixture of liquids were to be placed in Kotary's bottle. See, e.g., Kotary, Fig. 1, cf Spec. Fig. 4, reservoir 116. In other words, the Specification does not identify any features of reservoir 116 that are designed for holding an emulsion as opposed to a mixture of liquids. Rather, as correctly noted by the Examiner, the Specification identifies wicks 12, 14, 16 as critical to the transportation of the separate phases of the emulsion of immiscible liquids, as discussed supra. However, the Examiner has not provided a finding that Kotary's wicks "are operable to transport" first, second, and third liquids "from the 9 Appeal2014-003781 Application 13/008,563 emulsion of immiscible liquids," as required by independent claim 2, or reasoning as to why it would have been obvious to modify Kotary's wicks (including a third wick, as disclosed in Yip) to transport first, second, and third liquids from the emulsion of immiscible liquids, as required by independent claim 2. 3 Accordingly, we do not sustain the Examiner's rejection of independent claim 2 and claims 3, 5, 7, and 24 depending therefrom. Claims 13, 14, 18, 19, and 22 - Obviousness over Kotary and Yip Regarding independent claim 13, the Examiner again relies on Kotary for disclosing "one liquid supply holding an emulsion of immiscible liquids" (Final Act. 12 (citing Kotary, col. 2, 11. 4--7); see also Ans. 21-22), and Appellants argue that the Examiner "erred in alleging that Kotary discloses an emulsion," as recited in claim 13, and that "Yip fails to remedy the deficiency in Kotary." Appeal Br. 15; see also Reply Br. 5---6. As discussed supra with respect to independent claim 2, the Examiner erred in determining that Kotary discloses "an emulsion of immiscible liquids," and therefore, with respect to claim 13, we agree with Appellants that the Examiner erred in determining that Kotary discloses the step of "transporting first, second, and third liquids through first, second, and third wicks from at least one liquid supply holding an emulsion of immiscible liquids," as required by independent claim 13. Appeal Br., Claims App. Accordingly, we do not sustain the Examiner's rejection of independent claim 13 and claims 14, 18, 19, and 22 depending therefrom. 3 Notably, Kotary discloses that "wick 3 can be made of a variety of materials, depending on the application;" for example, the hydrophobic sections may be polymeric and the hydrophilic sections may be ceramic- based. Kotary col. 5, 11. 6, 31-55. 10 Appeal2014-003781 Application 13/008,563 Claims 11, 12, 20, and 21-0bviousness over Kotary, Yip, Martinez, Wood, and Valinotti Claims 11 and 12 depend from independent claim 1, and claims 20 and 21 depend from independent claim 13. Because the Examiner's reliance on Valinotti for teaching "essential oils" does not cure the deficiencies in the Examiner's findings with respect to independent claims 1 and 13, we also do not sustain the Examiner's rejection of claims 11, 12, 20, and 21. See Final Act. 14. Claims 25-27-0bviousness over Kotary, Martinez, Newman, and Yip Regarding independent claim 25, the Examiner finds, inter alia, that "Kotary teaches 'transporting the multiple liquids from the single liquid supply through first, [and] second' capillary tubes."' Final Act. 15 (emphasis added). The Examiner further finds that "Martinez teaches [] 'capillary action through [a] wick,"' and "[t]hus, 'wick' and 'capillary tube' (used as a noun) are synonymous." Id.; see also Ans. 23. The Examiner further reasons that "all of these references are analogous art, having to do with drawing up liquids from a reservoir through wick-like devices, and [Appellants rely] on an unclaimed distinction, arguing only that 'claim [25] is structurally different from the wick of Martinez." Ans. 23. The Examiner relies on Yip for teaching "a 'third capillary tube.'" Final Act. 15; see also Appeal Br. 18 (citing Yip, col. 3, 11. 5-18, col. 3, 1. 59, Fig. 16, 18). Appellants argue that the Examiner erred by finding that "Kotary discloses first and second capillary tubes[,] and that Martinez's wicks are synonymous to the capillary tube of [c]laim 25." Appeal Br. 18. Appellants further argue that "Yip also fail to disclose a capillary tube." Id. In particular, Appellants contend that "the capillary tube of [ c ]laim 25 is 11 Appeal2014-003781 Application 13/008,563 structurally different from the wick of Martinez because a tube has a definite structure, and there is no disclosure or suggestion in Martinez to use a capillary tube as a wick." Reply Br. 7; see also Appeal Br. 19. As discussed supra, the Specification distinguishes between wicks and capillary tubes, and thus, we agree with Appellants that the Examiner erred in determining that wicks and capillary tubes are synonymous, such that the disclosure of wicks in Kotary, Martinez, and/or Yip may be interpreted as disclosures of capillary tubes. Accordingly, we do not sustain the Examiner's rejection of independent claim 25 and claims 26 and 27 depending therefrom. Claim 28 - Obviousness over Kotary, Martinez, and Wood Regarding independent claim 28, the Examiner finds, inter alia, that Kotary teaches that a "composite conduit includes an inner capillary tube, which is concentrically surrounded by one or more outer capillary tubes." Final Act. 17 (citing Kotary, col. 6, 11. 1--4, 15-20, Figs. 2A-2D, 3). In particular, the Examiner finds that Kotary discloses "concentric cylinders." Ans. 24 (citing Kotary col. 6, 11. 1--4, 15-20, Figs. 2A-2D). Appellants argue that the Examiner erred in finding that "Kotary discloses the claimed inner and outer capillary tubes," but rather discloses wick 3, and Appellants also submit that neither Martinez nor Wood cure this deficiency. Appeal Br. 21-22; see also Reply Br. 8. We agree for the reasons stated supra with respect to Kotary, Martinez, and Wood, as applied to claim 1. Accordingly, we do not sustain the Examiner's rejection of independent claim 28. 12 Appeal2014-003781 Application 13/008,563 DECISION The Examiner's rejection of claim 25 under 35 U.S.C. § 112, first paragraph, is reversed. The Examiner's rejections of claims 1, 2, 3, 5, 7-14, and 18-28 under 35 U.S.C. § 103(a) are reversed. REVERSED 13 Copy with citationCopy as parenthetical citation