Herholdt, Arnold Leslie. et al.

Patent Trials and Appeals Board

Oct 1, 2020

13393209 - (D) (P.T.A.B. Oct. 1, 2020)

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.
13/393,209 05/14/2012 Arnold Leslie Herholdt BM30100US 2428
23413 7590 10/01/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
WITTENSCHLAEGER, THOMAS M
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARNOLD LESLIE HERHOLDT and
GERHARD MALAN LE ROUX
Appeal 2019-003699
Application 13/393,209
Technology Center 3700

Before JENNIFER D. BAHR, EDWARD A. BROWN, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2019-003699
Application 13/393,209

2
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–13, 15–17, and 22–24. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Independent claims 1, 11, and 15 are directed to a machine for making
filter rods for use in the manufacture of smoking articles, a garniture of a
machine for making filter rods for use in the manufacture of smoking
articles, and a method of making filter rods for use in the manufacture of
smoking articles, respectively. Claim 1, reproduced below, is illustrative of
the claimed subject matter (emphasis added):
1. A machine for making filter rods for use in the
manufacture of smoking articles, comprising:
a garniture that receives filter plug material and filter
wrapping material and forms a wrapped elongate filter rod, the
garniture comprising a garniture tape and a tapering garniture
inlet channel through which filter wrapping material is dragged
on the garniture tape, the garniture further comprising a tongue,
the tongue being tapered to compress filter plug material and
convey filter plug material onto the filter wrapping material
being dragged through the tapering garniture inlet channel on the
garniture tape as it passes through the tongue;

1 In this Decision, we refer to (1) the Examiner’s Final Office Action dated
April 3, 2018 (“Final Act.”), Advisory Action dated June 29, 2018 (“Adv.
Act”), and Answer dated February 8, 2019 (“Ans.”), and (2) Appellant’s
Appeal Brief dated December 4, 2018 (“Appeal Br.”) and Reply Brief dated
April 8, 2019 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Tobacco Research
and Development Institute (Proprietary) Limited. Appeal Br. 1.
Appeal 2019-003699
Application 13/393,209

3
a rotatable object-transport member that delivers objects
directly into filter plug material passing through the tongue and
which has been conveyed onto filter wrapping material being
dragged through the garniture inlet channel on the garniture tape;
and
a cutter configured to cut the elongate filter rod, thereby
forming filter rod segments, each segment having one or more
objects therein.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Green US 4,862,905 Sept. 5, 1989
Deal US 2005/0070409 A1 Mar. 31, 2005
Esposti EP 1 917 871 A1 May 7, 2008
REJECTION
1. Claims 1–13, 15–17, and 22–24 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Esposti, Deal, and Green.
Ans. 3–9.
OPINION
Claims 1–13, 15–17, and 22–24
as Unpatentable over Esposti, Deal, and Green
Independent Claims 1, 11, and 15
The Examiner finds that claims 1–13, 15–17, and 22–24 are
unpatentable over Esposti, Deal, and Green. Final Act. 11–19; Adv. Act. 2;
Ans. 18–19. More specifically, the Examiner finds that Esposti discloses all
of the limitations of independent claims 1, 11, and 15 except for the
limitation reciting “a rotatable object-transport member.” Final Act. 12
(claim 1), 16–17 (claim 11), 18–19 (claim 15) (emphases omitted). For this
missing limitation, the Examiner finds that Deal “teaches a rotatable object-
Appeal 2019-003699
Application 13/393,209

4
transport member (74 – Fig. 12) that delivers objects (300 – Fig. 12) directly
into filter plug material (16 – Fig. 1) passing through a tongue (the assembly
of 30 and 32 – Fig. 1) in order to incorporate distinctive flavors into a
cigarette and improve the desirability of a cigarette.” Final Act. 12 (claim
1), 16 (claim 11), 18 (claim 15) (emphases omitted). The Examiner reasons
that it would have been obvious to one of ordinary skill in the art “to have
modified the machine of Esposti to include a rotatable object-transport
member as taught by Deal in order to incorporate distinctive flavors into a
cigarette and improve the desirability of a cigarette.” Id.
In its Appeal Brief, Appellant initially argues that the Examiner’s
argument is erroneous because “Deal does not teach or disclose a rotatable
object-transport member that corresponds with Applicant’s claimed rotatable
object-transport member.” Appeal Br. 22. According to Appellant,
[Deal’s] filter material passes through the tongue 30, such that at
the point of insertion of the objects into the filter material, the
filter material has NOT been conveyed onto filter wrapping
material. As indicated in paragraph [0051] of Deal, “as the
insertion wheel 74 rotates, the capsules held within the pocket 75
are brought into contact with the filter material 16 within the
block 30 where the capsule is then ejected from the pocket into
the gathering filter material.” Instead, the Deal insertion wheel
74 delivers objects into the filter material at a position prior to
the filter material being on the filter wrapping material, which is
being conveyed by the garniture tape, as the filter material is only
delivered onto the wrapping material, which is being conveyed
by the garniture tape, once it reaches the wrapping mechanism
34, well downstream of the point at which the rotatable object
transport member 34 delivers objects into the filter material. See
also, Figure 1.
Id. at 21–22. Appellant argues that Deal does not disclose the claimed
rotatable object-transport member because Deal’s rotatable member delivers
Appeal 2019-003699
Application 13/393,209

5
objects into the filter material before the filter material is positioned on the
filter wrapping material. Id. According to Appellant, at the point of
insertion of the objects into the filter material, the filter material has not been
conveyed onto filter wrapping material. Id.
Appellant’s arguments are not persuasive because Appellant is
attacking the teachings of Deal individually. Nonobviousness, however,
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner’s
rejections of claims 1, 11, and 15 are based on the combination of Esposti,
Deal, and Green. The Examiner relies on Esposti, not Deal, for its
disclosure of a garniture comprising tongue 21, filter plug material 9, filter
wrapping material 12, and garniture tape 19. Final Act. 12 (claim 1), 15–16
(claim 11), 17–18 (claim 15). Referring to Figure 2 of Esposti, the
Examiner finds that Esposti, not Deal, discloses that garniture tape 19 drags
filter wrapping material 12 through the inlet of the tongue (e.g., tapering
inlet channel 30a of tongue 21 in Fig. 4) and filter plug material 9 is
conveyed onto filter wrapping material 12 at inlet channel 30a of tongue 21.
Id. The Examiner relies on Deal for its teaching of rotatable object-transport
member 74. Id. (citing Deal, Fig. 12). In the Examiner’s proposed
combination of Esposti and Deal, the rotatable object-transport member
delivers objects to a filter plug material at a position after the filter plug
material has been conveyed onto filter wrapping material being dragged
through the garniture inlet channel on the garniture tape. Id. Appellant does
not address the rejection as articulated by the Examiner, and, thus, does not
identify error by the Examiner.
Appeal 2019-003699
Application 13/393,209

6
In its Reply Brief, Appellant presents new arguments that (1)
Esposti’s tongue (connecting element 21) is “neither identified as a ‘tongue’,
nor even a part of the ‘garniture’” (Reply Br. 4), and (2) Deal’s rotatable
object-transport member could not be bodily incorporated into Esposti’s
connecting element 21 and one of ordinary skill in the art would have “no
motivation to modify Esposti so as to provide it with the rotatable object
transport member of Deal so that objects are delivered into the connecting
element (21) because a skilled person would have to make substantial further
modifications to Esposti in order to achieve this” (id. at 5–7). Because these
arguments could have been presented in the Appeal Brief to rebut the
rejections as set forth in the Final Office Action, thus affording the Examiner
an opportunity to consider and respond to the arguments, Appellant’s
arguments are untimely. See 37 C.F.R. § 41.37(c)(vii)(second sentence); In
re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not
first raised in the brief to the Board is waived on appeal); Ex parte Borden,
93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (The Board is not
required “to take up a belated argument that has not been addressed by the
Examiner, absent a showing of good cause.”).
For the reasons above, the rejection of independent claims 1, 11, and
15 is sustained.

Dependent Claims 2–10, 12, 13, 16, 17, and 22–24
Appellant makes no separate arguments as to the rejections of claims
2–10, 12, 13, 16, 17, and 22–24 which depend from independent claims 1,
11, or 15. Appellant asserts that these dependent claims “being dependent
on allowable claims 1, 11, and 15, respectively, are also allowable over
Appeal 2019-003699
Application 13/393,209

7
Esposti in view of Deal/Green” and “these dependent claims recite
additional features further distinguishing them over both Deal and Green.”
Appeal Br. 24.
For the reasons discussed above, the rejection of claims 1, 11, and 15
is sustained. Although Appellant references “additional features further
distinguishing them over Deal and Green” (id.), because Appellant does not
specifically identify any patentable features of these claims over the
independent claims, we sustain the rejection of claims 2–10, 12, 13, 16, 17,
and 22–24. See also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (37
C.F.R. § 41.37 requires “more substantive arguments in an appeal brief than
a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”).

CONCLUSION
The Examiner’s rejection of claims 1–13, 15–17, and 22–24 as being
unpatentable over Esposti, Deal, and Green is AFFIRMED.

Appeal 2019-003699
Application 13/393,209

8
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–13, 15–
17, 22–24
103(a) Eposti, Deal,
Green
1–13, 15–
17, 22–24

Overall
Outcome
1–13, 15–
17, 22–24

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED