PHILIP MORRIS PRODUCTS S.A.

Patent Trials and Appeals Board

Jan 3, 2020

15121554 - (D) (P.T.A.B. Jan. 3, 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.
15/121,554 08/25/2016 Ihar Nikolaevich Zinovik 0642.001241US01 9402
26813 7590 01/03/2020
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
EXAMINER
VALVIS, ALEXANDER M
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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):
ptodocketing@mrgs.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte IHAR NIKOLAEVICH ZINOVIK and
OLEG MIRONOV
__________

Appeal 2019-004350
Application 15/121,554
Technology Center 3700
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–11, 14, 17, and 18.2 We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Philip
Morris Products S.A.” Appeal Brief (“Br.”) 2, filed Nov. 29, 2018. A Reply
Brief has not been submitted for the subject appeal.
2 The Examiner has withdrawn the rejections of claims 2, 3, 12, 13, 15, 16,
and 19. Examiner’s Answer (“Ans.”) 4, dated Feb. 28, 2019. These claims
are not before us for review in the subject appeal.

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We AFFIRM and designate our affirmance as NEW GROUNDS OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
The claimed subject matter “relates to inductively heatable smoking
devices, wherein an aerosol is generated by inductively heating an aerosol-
forming substrate.” Spec. 1:3–5.3 Claims 1 and 10 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. Inductive heating device for aerosol-generation, the device
comprising:
- a device housing comprising a cavity having an internal surface
configured to receive at least a portion of an aerosol-
forming insert, the aerosol-forming insert comprising an
aerosol-forming substrate and a susceptor, the device
housing further comprising a pin extending into the cavity,
the pin being arranged to be at least partially surrounded
by the aerosol-forming insert when the aerosol-forming
insert is accommodated in the cavity;
- an induction coil arranged along the pin; and
- a power source connected to the induction coil and configured
to provide a high frequency current to the induction coil.

THE REJECTIONS
I. Claims 1, 4, 5, 7, 8, 10, 11, and 14 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Greim (US 2011/0155718 A1, published June 30,
2011) and Campbell (US 5,613,505, issued Mar. 25, 1997).

3 Specification (“Spec.”), filed August 25, 2016.
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II. Claims 6, 17, and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Greim, Campbell, and Thorens (US 2013/0306065 A1,
published Nov. 21, 2013).
III. Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over
Greim, Campbell, and Fournier (US 6,615,840 B1, issued Sept. 9, 2003).

ANALYSIS
Rejection I – Obviousness over Greim and Campbell
Appellant does not offer arguments in favor of claims 4, 5, 7, 8, 10,
11, and 14 separate from those presented for independent claim 1. Br. 5–12.
We select claim 1 as the representative claim, and claims 4, 5, 7, 8, 10, 11,
and 14 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Greim discloses an inductive heating device
for aerosol-generation in which the device comprises a cavity (area within
frame 113 or connection 205) and a pin (common pin 1034) extending into
the cavity and surrounded by an aerosol-forming insert (aerosol-forming
substrate 115). Final Act. 2; see also Greim Figs. 2–5, 7, 8, 11, 13. The
Examiner also finds that Greim discloses an induction coil (heating elements
107 and 207) arranged along the pin. Id. (citing Greim ¶ 38). The Examiner

4 In the Final Office Action, concerning the claimed pin, the Examiner refers
to Greim’s heating elements 107 and 207. See Final Office Action (“Final
Act.”) 2, dated July 16, 2018. However, the Examiner indicates that this
was a clear typographical error. See Ans. 3. We agree in light of the
Examiner’s finding that Greim’s heating elements 107 and 207 correspond
to the claimed induction coil and Greim’s reference number 103 is described
as a common pin. See Final Act. 2; Greim ¶ 74. As a Reply Brief has not
been filed, we determine this inadvertence as a harmless error.
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acknowledges that Greim “fails to provide the required details that would be
entailed/required by induction heating.” Id. at 2–3. The Examiner,
however, finds that Campbell “teaches an inductive heating system for
aerosol forming inserts comprising an insert with a susceptor (which is a
conductor that can be inductively heated[)].” Id. at 3 (citing Campbell 5:6–
8, Figs. 8–10). The Examiner concludes that it would have been obvious to
modify the inductive heating device of Greim “to include a susceptor if an
inducting heating system is employed as taught by Campbell” because “a
susceptor would be required for induction heating to work and further this
allows the outside paper to not be burned first during heating like more
direct forms of heating.” Id.
Appellant contends that “Greim is focused on devices that utilize
resistive heating.” Br. 6.
This argument is unpersuasive in that it does not negate, as recognized
by Appellant, that Greim discloses that “[a]lternatively, each of the plurality
of elongate heating elements may include . . . an inductive heating element.”
See Greim ¶ 38 (emphasis added); Br. 6.
Appellant contends that “there is no mention in Greim of an induction
coil at all, and nothing suggesting that the induction coil would be arranged
along the pin.” Br. 6; see also id. at 7 (“Greim is silent regarding an
induction coil and there is nothing in Greim suggesting that the induction
coil would be arranged along the pin.”); 9 (“Greim fails to teach or suggest
an induction coil at all. . . . there is no induction coil that would be arranged
along the heater (pin).”).
Greim clearly discloses heating element 107 arranged along common
pin 103. See Greim Figs. 7, 8. As discussed above, Greim discloses that the
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heating element can be an inductive heating element. See Greim ¶ 38.
Thus, Greim discloses an induction heating element arranged along a pin.
We agree with Appellant that Greim does not explicitly disclose an inductive
heating element in the form of a coil. However, the Examiner finds that
Campbell “teaches an inductive heating system.” Final Act. 3. Notably,
Campbell discloses that “[a]n induction heating source is provided for use
with an electrical smoking article.” Campbell Abstr. Campbell further
discloses using coils 12 as a form for a heating source 10. See Campbell
Figs. 1–3. “[I]f 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.” KSR Int’l.
Co. v. Teleflex Inc., 550 U.S 398, 417 (2007). “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 416. “If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. Moreover, an “[e]xpress suggestion to substitute
one equivalent for another need not be present to render such substitution
obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982). In this case, it
would have been obvious to a skilled artisan to modify the inductive heating
element of Greim, to be in the form of a coil, in view of Campbell’s
teachings, because the modification would predictably yield a form of
inductive heating.
Appellant contends that “[i]n stating that the heating elements may
include an inductive heating element, Greim does not specify what part of
the inductive heating system is meant,” “in order to maintain the principle of
operation of Greim, it must be assumed that if inductive heating was used,
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the heating elements 107 would heat up the substrate,” and thus, in Greim,
“heating elements 107 would act as the susceptor of the inductive heating
system.” Br. 6–7.
Appellant’s contentions are unpersuasive. Claim 1 requires an
“aerosol-forming insert comprising an aerosol-forming substrate and a
susceptor,” in which a cavity is configured to receive the aerosol-forming
insert. Br. 13 (Claims App.). Appellant does not provide evidence or
persuasive argument as to why Greim’s heating elements 107 and 207 must
function only as a susceptor and not as an inductive heating element, which
can be an induction coil. “Attorney’s argument in a brief cannot take the
place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Additionally, we note Appellant’s admission that “[a]s is known to persons
skilled in the art, inductive heating utilizes an inductive coil and a
susceptor.” Br. 6; see also Final Act. 3 (finding that Campbell also discloses
a susceptor). Thus, even if crediting Appellant’s argument that Greim does
not disclose its heating element 107 is an induction coil, in view of
Appellant’s admission and the teachings of Campbell, as discussed above, it
would have been obvious to modify Greim’s heating element 107 to be an
induction coil.
Appellant contends that the Examiner relies on improper hindsight
reconstruction in making the rejection. Br. 7.
We are not persuaded by Appellant’s argument, because Appellant
has not made a showing that the Examiner’s rationale was outside of the
knowledge within the level of ordinary skill in the art at the time the claimed
invention was made or was gleaned only from Appellant’s disclosure.
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Appellant contends that Campbell only discloses placing an induction
coil outside a chamber, rather than along a pin. Br. 8; see also id. at 9–10.
Appellant’s argument is unpersuasive because it does not address the
rejection as set forth by the Examiner. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references []. [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). In this case, the Examiner relies on Greim, rather than Campbell, for
disclosing an induction coil or an inductive heating element arranged along
the pin. See Final Act. 2. To the extent that Appellant is arguing that neither
Greim nor Campbell discloses an inductive heating element and a pin being
surrounded by an aerosol forming substrate or insert (see Br. 9), we note that
Greim’s Figures 7 and 8 clearly illustrate that common pin 103 and heating
element 107 are surrounded by aerosol-forming substrate 115. See Greim
Figs. 7, 8.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Greim and Campbell. Accordingly, we sustain the Examiner’s rejection of
claim 1. We further sustain the rejection of claims 4, 5, 7, 8, 10, 11, and 14,
which fall with claim 1. As our reasoning differs from or supplements the
Examiner’s, we designate our affirmance of claims 1, 4, 5, 7, 8, 10, 11, and
14 as a new ground of rejection under 37 C.F.R. § 41.50(b).

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Rejection II – Obviousness over Greim, Campbell, and Thorens
As to claims 6, 17, and 18, the Examiner acknowledges that Greim
does not disclose that the pin has a cylindrical shape. Final Act. 4. The
Examiner, however, finds that Thorens discloses a cylindrical pin and thus
concludes that it would have been obvious to modify Greim’s pin to have a
cylindrical shape. Id.
Appellant contends that Thorens “is silent to any other components of
an inductively heated system, such as an induction coil or a power source
connected to the induction coil” and that “in Thorens, the aerosol-forming
substrate is provided in a capillary wick 117, which is surrounded by the
heater 119.” Br. 11.
These arguments are unpersuasive because they do not address the
rejection as set forth by the Examiner. The Examiner relies on Thorens for
disclosing a cylindrical shaped pin, rather than for disclosing an induction
coil, a power source, or a pin being surrounded by an aerosol-forming insert.
See Final Act. 4. Thus, Appellant does not apprise us of Examiner error.
For these reasons, the rejection of claims 6, 17, and 18 as unpatentable
over Greim, Campbell, and Thorens is sustained. Because these claims
depend from claim 1, we also designate our affirmance of claims 6, 17, and
18 as a new ground of rejection under 37 C.F.R. § 41.50(b).

Rejection III – Obviousness over Greim, Campbell, and Fournier
Claim 9 depends from claim 1. Br. 14 (Claims App). Appellant relies
on the same arguments presented above for claim 1. See id. at 12. Because
we are not persuaded that the Examiner erred in rejecting claim 1, we thus
sustain the rejection of claim 9 as unpatentable over Greim, Campbell, and
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Fournier for the same reasons discussed above for claim 1. Because claim 9
depends from claim 1, we also designate our affirmance of claim 9 as a new
ground of rejection under 37 C.F.R. § 41.50(b).

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§ 
Reference(s)/
Basis
Affirmed Reversed New
Ground
1, 4, 5, 7,
8, 10, 11,
and 14
103   Greim and
Campbell
1, 4, 5, 7,
8, 10, 11,
and 14
6, 17, and
18
103 Greim,
Campbell, and
Thorens
6, 17, and
18
9 103 Greim,
Campbell, and
Fournier
9
Overall
Outcome
1, 4–11,
14, 17, and
18

FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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; 37 C.F.R. § 41.50(b)