Philip Morris Products S.A.

Patent Trials and Appeals Board

May 13, 2021

2020003966 (P.T.A.B. May. 13, 2021)

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.
14/377,433 08/07/2014 Oleg Mironov 436656US 7355
22850 7590 05/13/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
YAARY, ERIC
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
05/13/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OLEG MIRONOV and LAURENT EDOUARD POGET

____________

Appeal 2020-003966
Application 14/377,433
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, JENNIFER R. GUPTA, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s non-final rejection of claims 1, 3–7, 9–13, 17–20, and 23.2 We
have jurisdiction under 35 U.S.C. § 6(b).

1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Philip Morris Products S.A. as the real party in interest.
Appeal Brief filed December 17, 2019 (“Appeal Br.”), 3.
2 Non-Final Office Action entered May 20, 2019 (“Non-Final Act.”), 1. The
Examiner objected to claim 22 for depending from a rejected base claim, and
indicated that claim 22 would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims.
Non-Final Act. 9. The Examiner withdrew the rejection of claims 1, 3–7,
10–12, 20, and 21 for non-statutory, obviousness-type double patenting
(Non-Final Act. 8) in the Examiner’s Answer entered March 6, 2020
(“Ans.”), 7.
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We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1, the sole pending independent claim, illustrates the subject
matter on appeal, and reads as follows:
1. A smoking article comprising:
a combustible heat source having a front end and a rear
end;
an aerosol-forming substrate downstream of the rear end
of the combustible heat source;
a non-combustible, substantially air impermeable, first
barrier between a downstream end of the combustible heat
source and an upstream end of the aerosol-forming substrate,
the first barrier being adhered to or affixed to the downstream
end of the combustible heat source and abutting the upstream
end of the aerosol-forming substrate;
an outer wrapper circumscribing the aerosol-forming
substrate and at least a rear portion of the combustible heat
source; and
one or more airflow pathways along which air may be
drawn through the smoking article for inhalation,
wherein the combustible heat source is isolated from the
one or more airflow pathways such that air drawn through the
smoking article along the one or more airflow pathways does
not directly contact the combustible heat source.

Appeal Br. 28 (Claims Appendix) (emphasis added).
Figure 2 of Appellant’s application illustrates a smoking article
of Appellant’s invention. Figure 2 is reproduced below:
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Figure 2 is a schematic longitudinal cross-sectional view of smoking
article 2. Spec. 26–27. The downstream end of the combustible heat source
4 is on the right side of the combustible heat source 4 and the upstream end
of the aerosol-forming substrate 6 is on the left side of aerosol-forming
substrate 6. The “downstream” end of smoking article 2 is on the left, and
the “upstream” end of smoking article 2 is on the right. Figure 2 shows first
barrier 14 between the downstream end of combustible heat source 4 and the
upstream end of aerosol-forming substrate 6. Id. at 27. Figure 2 also shows
airflow pathway 16, and substantially air impermeable second barrier
coating 18 provided on the entire inner surface of airflow channel 16. Id.
REJECTIONS
The Examiner maintains the following rejections:
I. Claims 1, 3–6, 12, 13, and 17–20 under 35 U.S.C. § 103(a) as
unpatentable over Maeder3 in view of White4 or Roberts;5
II. Claims 7 and 9 under 35 U.S.C. § 103(a) as unpatentable over

3 US 2009/0065011 A1, published March 12, 2009.
4 US 4,771,795, issued September 20, 1988.
5 US 4,819,665, issued April 11, 1989.
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Maeder in view of White or Roberts, and Potter6 or Crooks;7
III. Claims 7 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Maeder in view of White or Roberts and Crooks;
IV. Claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable
over Maeder in view of White or Roberts, Potter or Crooks, and Chard;8 and
V. Claim 23 under 35 U.S.C. § 103(a) as unpatentable over
Maeder in view of White or Roberts and Oglesby.9
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1, 3–7, 9–13, 17–20, and 23 under 35 U.S.C. § 103(a) for reasons set
forth in the Non-Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Rejection I
We turn first to the Examiner’s rejection of claims 1, 3–6, 12, 13, and

6 US 2010/0059070 A1, published March 11, 2010.
7 US 2007/0215167 A1, published September 20, 2007.
8 US 4,848,374, issued July 18, 1989.
9 US 2008/0149118 A1, published June 26, 2008.
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17–20 under 35 U.S.C. § 103(a) as unpatentable over Maeder in view of
White or Roberts. To address this rejection, Appellant presents arguments
directed to independent claim 1 only, to which we accordingly limit our
discussion. Appeal Br. 11–23; 37 C.F.R. § 41.37(c)(1)(iv).
Maeder discloses a smoking article as shown in Maeder’s Figure 1,
reproduced below:

Figure 1 of Maeder illustrates a schematic longitudinal cross-section
of smoking article 2 according to a preferred embodiment of Maeder’s
invention. Maeder ¶ 4. Maeder’s smoking article 2 includes combustible
heat source 4, aerosol-forming substrate 6, airflow pathway 16, and barrier
coating 14 provided on the entire inner surface of airflow pathway 16.
Maeder ¶¶ 79, 80; Fig. 1. Maeder discloses that barrier coating 14 may be
substantially air impermeable and “may advantageously reduce or
substantially prevent the inflow of combustion by-products from the
combustible heat source into the airflow channel or channels.” Maeder
¶¶ 21, 33. Although Maeder discloses that heat source 4 and aerosol-
forming substrate 6 may abut against one another as shown in Figure 1,
Maeder also discloses that the rear portion of heat source 4 may be spaced
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apart from the front portion of substrate 6. Maeder ¶¶ 15, 47.
Maeder discloses that smoking article 2 further includes heat
conducting element 22 disposed “around and in direct contact with the
peripheries of both the rear portion of the combustible heat source [4] and
the front portion of the aerosol-generating substrate [6],” so as to “provide[]
a thermal link between these two components.” Maeder ¶ 11; Fig. 1.
The Examiner finds that Maeder’s smoking article includes all the
elements of the smoking article recited in claim 1, except Maeder’s smoking
article does not include a non-combustible, substantially air impermeable,
first barrier between a downstream end of the combustible heat source and
an upstream end of the aerosol-forming substrate. Non-Final Act. 3. The
Examiner relies on White, or alternatively, Roberts, for suggesting inclusion
of such a first barrier in Maeder’s smoking article. Non-Final Act. 3–4.
White discloses an elongated smoking article including “long” fuel
element 10A, 10B that circumscribes axially extending aerosol generating
means 12, 14. White col. 3, ll. 33–38; col. 7, ll. 15–36; Fig. 1. White
discloses disposing a heat-resistant sealing means 18 at the mouth end of the
fuel element, and providing a hole in barrier member 18 aligned with aerosol
generating means 12, 14. White col. 7, ll. 40–46; col. 13, ll. 37–39; Fig. 1.
White discloses that sealing means 18 prevents leakage of combustion gases
through fuel element 10A, 10B, and “ensures that little if any combustion
gases will mix with the aerosol being delivered to the user,” because sealing
means 18 “acts as an efficient seal against contamination of the mainstream
aerosol by fuel combustion gases.” White col. 5, ll. 48–52; col. 13, ll. 41–
44, 53–58.
In view of these disclosures in White, the Examiner concludes that it
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would have been obvious to one of ordinary skill in the art to include a
sealing means as disclosed in White affixed to the downstream end of
Maeder’s heat source “to further prevent leakage or inflow of combustion
gases as desired by both Maeder and White.” Non-Final Act. 3–4.
Roberts discloses cigarette-type aerosol delivery article 10 including
substrate 22, which “carries an aerosol forming substance” and is “in a
conductive heat exchange relationship with” combustible fuel element 18.
Roberts col. 8, ll. 4–11, 16–18; Fig. 1. Roberts discloses positioning air seal
47 at the mouth end of fuel element 18 “to provide an essentially air
impervious barrier which minimizes direct passage of combustion gases
from the burning fuel element into the other parts of the article and prevents
combustion gases from intermixing with the peripherally introduced air
employed in generating aerosol.” Roberts col. 9, ll. 37–44; Fig. 1.
In view of these disclosures in Roberts, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to include a
barrier as disclosed in Roberts “on the rear face of the combustible heat
source of Maeder to minimize direct passage of combustion gases from the
burning fuel element into the other parts of the article.” Non-Final Act. 4.
Appellant argues that the Examiner fails to consider Maeder and
White as a whole, and ignores “the vastly different configurations of Maeder
and White,” which “weigh against” a conclusion that the Examiner’s
proposed modification of Maeder’s smoking article would have been
obvious. Appeal Br. 16–17. Appellant argues that the Examiner fails to
consider Maeder’s use of conductive heat transfer between Maeder’s heat
source and aerosol-generating substrate, “preferably by abutting against one
another,” to heat the surface of the aerosol-generating substrate. Appeal Br.
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17. Appellant argues that the Examiner also fails to consider that White’s
sealing means 18 is located such that fuel element l0A/10B and aerosol-
generating substrate material 12 are on the same side of sealing means 18.
Id. Appellant argues that the Examiner fails to establish that one of ordinary
skill in the art would have ignored these structural differences between
Maeder and White’s smoking articles, as well as ignored “White’s failure to
disclose a non-combustible, substantially air impermeable, first barrier
between a downstream end of the combustible heat source and an upstream
end of the aerosol-forming substrate,” and “decided to provide a heat
resistant sealing means/barrier member as described in White on the
downstream end of the heat source of Maeder with a reasonable expectation
of success yielding predictable results.” Appeal Br. 17–18.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
As the Examiner aptly explains in the Answer (Ans. 8), although
Maeder discloses that conductive heat transfer occurs between the heat
source and aerosol-generating substrate of Maeder’s smoking article,
Maeder does not require such heat transfer to occur via a direct interface
between the two elements. Rather, as discussed above, Maeder explicitly
discloses that the rear portion of the heat source may be spaced apart from
the front portion of the substrate, such that a direct interface between the
heat source and substrate would not be present. Maeder ¶ 47. As also
discussed above, Maeder discloses disposing heat conducting element 22 in
direct contact with the peripheries of both the rear portion of the heat source
and the front portion of the aerosol-generating substrate, to provide a
thermal link between the two components. Maeder ¶ 11. Maeder explains
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that “the heat-conducting element transfers heat generated during
combustion of the heat source to the aerosol-generating substrate via
conduction,” and also “prevents combustion gases from the heat source
being drawn into the aerosol-generating substrate through its periphery.”
Maeder ¶¶ 16, 18. Maeder further provides barrier coating 14 on the entire
inner surface of airflow pathway 16 to reduce or substantially prevent the
inflow of combustion by-products from the combustible heat source into the
airflow pathway 16. Maeder ¶¶ 21, 33.
As discussed above, White discloses using a sealing means to prevent
leakage of combustion gases through White’s fuel element, so as to provide
“an efficient seal against contamination of the mainstream aerosol by fuel
combustion gases,” and “ensure[] that little if any combustion gases will mix
with the aerosol being delivered to the user.” White col. 5, ll. 48–52; col.
13, ll. 41–44, 53–58. Although White locates the sealing means at the
mouth end of the fuel element, one of ordinary skill in the art nonetheless
would have recognized that a sealing means as disclosed in White would act
in concert with Maeder’s barrier coating 14 and heat conducting element 22
to seal the only remaining possible path for combustion gases to flow from
Maeder’s heat source into Maeder’s aerosol-generating substrate—the
interface between the rear of the heat source and front of the substrate. In re
Preda, 401 F. 2d 825, 826 (CCPA 1968) (In assessing the content of the
applied prior art, “it is proper to take into account not only specific teachings
of the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.” (citation omitted)); KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976) (“[I]f a technique has been used to improve
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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.”); see also id.
at 417 (“[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.”).
One of ordinary skill in the art reasonably would have expected that
disposing a seal in this location would successfully prevent combustion
gases formed in Maeder’s heat source from entering the aerosol-generating
substrate and mixing with aerosol produced in the substrate and delivered to
a user of Maeder’s smoking article. In re Kubin, 561 F.3d 1351, 1360 (Fed.
Cir. 2009) (“Obviousness does not require absolute predictability of success
. . . all that is required is a reasonable expectation of success.”) (emphasis
omitted, citing In re O’Farrell, 853 F.2d 894, 903‒04 (Fed. Cir. 1988)).
Similar to Appellant’s arguments discussed above, Appellant argues
that the Examiner fails to consider Maeder and Roberts as a whole, and
ignores “the vastly different configurations of Maeder and Roberts,” which
“weigh against” a conclusion that the Examiner’s proposed modification of
Maeder’s smoking article would have been obvious. Appeal Br. 21.
Appellant argues that the Examiner fails to consider Maeder’s use of
conductive heat transfer between Maeder’s heat source and aerosol-
generating substrate, “preferably by abutting against one another,” to heat
the surface of the aerosol-generating substrate, and disclosure of providing a
controlled amount of convective heat transfer from the combustible heat
source to the aerosol-generating substrate. Appeal Br. 21–22. Appellant
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argues that the Examiner also fails to consider that a portion of Roberts’
substrate 22 is “closer to the mouthend than the air seal 47 and the air seal
47 and the substrate 22 [do] not contact[] each other (i.e., no convective heat
transfer from the fuel element to the substrate 22).” Id. Appellant argues
that the Examiner fails to establish that one of ordinary skill in the art would
have ignored these structural differences between Maeder and Roberts’
smoking articles, as well as ignored “Roberts’ failure to disclose a non-
combustible, substantially air impermeable, first barrier between a
downstream end of the combustible heat source and an upstream end of the
aerosol-forming substrate . . . to provide an air seal as described in Roberts
on the downstream end of the heat source of Maeder with a reasonable
expectation of success yielding predictable results.” Appeal Br. 22.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
As discussed above, Maeder does not require conductive heat transfer
to occur through a direct interface between Maeder’s heat source and
substrate. And, contrary to Appellant’s arguments, Maeder and Roberts both
disclose that convective heat transfer occurs in their respective smoking
articles from the heat source to the aerosol-generating substrate.
Specifically, Maeder discloses that a controlled amount of convective heat
transfer occurs from Maeder’s combustible heat source to the aerosol-
generating substrate, and Roberts discloses that heat generated from
Roberts’ heat source heats air that contacts Roberts’ aerosol forming
substance to convectively heat the substance. Maeder ¶¶ 20, 21; Roberts
col. 15, ll. 37–40.
As discussed above, Roberts discloses that air seal 47 provides an
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essentially air impervious barrier that minimizes direct passage of
combustion gases from Robert’s fuel element into the other parts of Robert’s
cigarette-type article, and prevents combustion gases from intermixing with
air used to generate an aerosol. Roberts col. 9, ll. 37–44. Although Roberts
locates the air seal at the mouth end of the fuel element, one of ordinary skill
in the art nonetheless would have recognized that an air seal as disclosed in
Roberts would act in concert with Maeder’s barrier coating 14 and heat
conducting element 22 to seal the only remaining possible path for
combustion gases to flow from Maeder’s heat source into Maeder’s aerosol-
generating substrate—the interface between the rear of the heat source and
front of the substrate. Preda, 401 F. 2d at 826; KSR, 550 U.S. at 417.
One of ordinary skill in the art reasonably would have expected that
disposing a seal in this location would successfully prevent combustion
gases formed in Maeder’s heat source from entering the aerosol-generating
substrate and mixing with aerosol produced in the substrate and delivered to
a user of Maeder’s smoking article. Kubin, 561 F.3d at 1360.
We, accordingly, sustain the Examiner’s rejection of claims 1, 3–6,
12, 13, and 17–20 under 35 U.S.C. § 103(a) as unpatentable over Maeder in
view of White or Roberts.
Rejections II–V
We turn now to the Examiner’s rejections of claims 7, 9–11, and 23
under 35 U.S.C. § 103(a) as unpatentable over Maeder in view of White or
Roberts and additional prior art references.
To address these rejections, Appellant relies on the arguments
Appellant presents for claim 1 (discussed above), and argues that the
additional prior art references applied in these rejections do not cure the
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deficiencies of Maeder and White or Roberts. Appeal Br. 23. Because
Appellant’s arguments do not identify reversible error in the Examiner’s
rejection of claim 1 for the reasons discussed above, Appellant’s arguments
also do not identify reversible error in the Examiner’s rejections of claims 7,
9–11, and 23, which we accordingly sustain.

CONCLUSION

Claim(s)
Rejected

35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 3–6, 12,
13, 17–20
103 Maeder, White or
Roberts
1, 3–6, 12,
13, 17–20

7, 9 103 Maeder, White or
Roberts, Potter or
Crooks
7, 9
7, 10 103 Maeder, White or
Roberts, Crooks
7, 10
10, 11 103 Maeder, White or
Roberts, Potter or
Crooks, Chard
10, 11
23 103 Maeder, White or
Roberts, Oglesby
23
Overall
Outcome
1, 3–7, 9–
13, 17–20,
23

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