R. J. REYNOLDS TOBACCO COMPANY

Patent Trials and Appeals Board

Aug 12, 2021

2021000260 (P.T.A.B. Aug. 12, 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.
14/950,724 11/24/2015 Stephen Benson Sears R60999 10840US.CP1 4161
26158 7590 08/12/2021
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
08/12/2021 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):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN BENSON SEARS, KAREN V. TALUSKIE,
MICHAEL F. DAVIS, BALAGER ADEME, and
SAWYER AUSTIN HUBBARD
____________

Appeal 2021-000260
Application 14/950,724
Technology Center 1700
____________

Before JEFFREY T. SMITH, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, 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 finally reject claims 1–4 and 6–12. An oral hearing
was held on July 22, 2021.2 We have jurisdiction under 35 U.S.C. § 6(a).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies RAI Strategic Holdings, Inc. as the
real party in interest. Appeal Br. 1.
2 A written transcript of the oral hearing will be entered into the record when
available.
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Application 14/950,724

2
The invention relates generally to aerosol delivery devices and
systems using electrically-generated heat to produce aerosol for electronic
cigarettes and smoking articles. Spec. 1. Claim 1, reproduced from the
Claims Appendix to the Appeal Brief, illustrates the invention:
1. An aerosol delivery system, comprising:

a control body portion including a first elongate tubular
member having opposed ends, and a power source disposed
therein;

a cartridge body portion including a second tubular
member having opposed first and second ends, the first end
being engaged with one of the opposed ends of the control body
portion, the cartridge body portion further comprising a first
aerosol generation arrangement disposed within the second
tubular member and configured to operably engage the power
source upon engagement between the one of the opposed ends
of the control body portion and the first end of the cartridge
body portion, the second end of the cartridge body portion
facing toward a mouth-engaging end of the aerosol delivery
system; and

a second aerosol generation arrangement disposed
between the first aerosol generation arrangement and the
mouth-engaging end of the aerosol delivery system, the second
aerosol generation arrangement being either removably engaged
with the cartridge body portion or housed within the second
tubular member of the cartridge body portion, and

wherein the second aerosol generation arrangement
includes a plurality of aerosol-generating elements in the form
of beads or pellets positioned between a first separating element
and a second separating element, each of the first separating
element and the second separating element comprising a porous
material with pore sizes selected so as to retain the plurality of
aerosol-generating elements therebetween.

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Application 14/950,724

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Appeal Br. 26 (Claims App.).

Appellant requests review of the Examiner’s rejection of claims 1–4
and 6–12 under 35 U.S.C. § 103 as unpatentable over Sanchez (WO
2014/116974 A1, published July 31, 2014), Zhuang (US 2007/0000505 A1,
published January 4, 2007), and Keith II (US 3,251,365, issued May 17,
1966). Appeal Br. 14; Final Act. 3.
Appellant’s arguments focus on the subject matter of independent
claim 1 and Appellant relies on these arguments to address the rejections of
the remaining claims. See generally Appeal Br. Accordingly, we select
claim 1 as representative of the subject matter claimed and decide the appeal
as to all grounds of rejections based on the arguments presented for claim 1.

OPINION
After review of the respective positions of Appellant and the
Examiner, we affirm the Examiner’s rejection of claims 1–4 and 6–12 under
35 U.S.C. § 103(a) for essentially the reasons the Examiner presents. We
add the following for emphasis.
Claim 1
Claim 1 recites an aerosol delivery system comprising first and second
aerosol generation arrangements where the second aerosol generation
arrangement includes a plurality of aerosol generating elements in the form
of beads or pellets. Claim 1 also recites that the beads or pellets are
positioned between a first separating element and a second separating
element, each of the first separating element and the second separating
element comprising a porous material with pore sizes selected so as to retain
the plurality of aerosol-generating elements therebetween.
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The Examiner finds Sanchez teaches an aerosol delivery system (an e-
cigarette) comprising an aerosol generation arrangement and a separate
insert containing a flavor that reacts with the unflavored aerosol to produce a
flavored aerosol. Final Act. 3–4; Sanchez Figure 3. The Examiner finds
Sanchez’s aerosol delivery system differs from the claimed invention in that
Sanchez (1) discloses using powdered tobacco materials and flavors in the e-
cigarette but does not expressly disclose beads or pellets as the fragrance
releasing material and (2) does not disclose the claimed separating elements.
Final Act. 4–5. With respect to difference (1), the Examiner finds Zhuang
teaches it was known to use extruded beads or pharmaceutical pellets in
cigarettes to flavor a stream previously treated with sorbents to remove a
portion of the gas-phase constituents from the smoke. Final Act. 4; Zhuang
¶¶ 50, 55. Further, Zhuang also discloses aerosol forming agents can be
added to the flavoring beads. See Zhuang ¶ 51. The Examiner determines
that it would have been obvious to one of ordinary skill in the art to
substitute Zhuang’s flavoring beads/pellets having aerosol forming agents
for Sanchez’s flavoring material to provide a second aerosol generation
arrangement with the expectation that such substitution would have
predictably resulted in a flavored aerosol. Final Act. 5. With respect to
difference (2), the Examiner finds Keith II teaches it was well known in the
art to provide porous separating elements in a smoking article that allow
smoke to pass through to contact absorbent material held in place by the
separating elements. Final Act. 5; Keith II Figure 2; col. 1, ll. 10–15, col. 3,
ll. 14–34, col. 4, ll. 45–71. The Examiner determines it would have been
obvious to one of ordinary skill to use Keith II’s porous separating elements
to contain the Zhuang’s flavoring beads/pellets in the modified aerosol
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delivery system from the combined teachings of Sanchez and Zhuang for the
reasons disclosed by Keith II. Final Act. 6.
Appellant argues that the claimed invention as well as the primary
reference to Sanchez are directed to modern aerosol delivery devices while
the secondary references to Zhuang and Keith II are directed to the field of
conventional cigarette filters (from a decade or more earlier). Appeal Br. 15.
According to Appellant, these secondary references would not have led one
skilled in the art to modify Sanchez aerosol generating means so as to arrive
at the claimed invention because they are not from the art of aerosol delivery
devices. Id. Appellant further contends that the Examiner does not provide
any articulated reasoning or any underpinning rationale explaining why a
person of ordinary skill in the art would have combine the teachings of the
cited art to modify flavor delivery in a modern aerosol-forming article. Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination of obviousness for the reasons the Examiner
presents in the Answer. Ans. 8.
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art or the inferences and creative steps a person of
ordinary skill in the art would have employed. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
Moreover, “the test for combining references is not what the individual
references themselves suggest but rather what the combination of disclosures
taken as a whole would suggest to one of ordinary skill in the art.” In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). It is also well established
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that the obviousness inquiry does not ask “whether the references could be
physically combined[,] but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425
(CCPA 1981) (stating “[t]he test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference”).
As the Examiner explains, Appellant’s arguments fails to address the
rejection that the Examiner presents. Ans. 8. First, Appellant concedes that
one skilled in the art would consider the field of modern aerosol delivery
devices and the field of conventional cigarette filters as pertinent to each
other’s art. Reply Br. 2 (“Appellant has not argued that Sanchez and
Zhuang are non-analogous art rendering their use by the examiner per se
improper.”).
Further, Appellant recognizes Zhuang teaches it is known to combine
aerosol forming agents in flavoring beads. Appeal Br. 17; see Zhuang ¶ 51.
In fact, Sanchez also discloses “the taste, fragrance and/or nicotine
composition may comprise a vapor pressure modifier,” which suggests the
use of an aerosol forming material in the flavorant insert. Sanchez ¶ 9.
Given that Zhuang’s flavorant beads are placed after the first stream
treatment in a manner similar to Sanchez’s flavorant insert is placed after the
non-flavored aerosol generating means (Zhuang Figure 6; Sanchez Figure
3), there is a reasonable basis for one skilled in the art to have modified
Sanchez’s aerosol delivery device by replacing the disclosed flavorant insert
with Zhuang’s aerosol generating flavorant beads, bound by Keith II’s
porous endcaps, and reasonably expect the modified aerosol delivery device
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would be suitable for Sanchez’s purposes of generating a functionalized
aerosol vapor which emulates the organoleptic characteristics and properties
of mainstream smoke experienced by smoking traditional tobacco-based
smoking articles. Sanchez Abstr.; In re O’Farrell, 853 F.2d 894, 904 (Fed.
Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.”); see also KSR, 550 U.S. at 417 (explaining that
patentable subject matter must “involve more than the simple substitution of
one known element for another or the mere application of a known
technique to a piece of prior art ready for the improvement”). Note that the
aerosol delivery device of the combined teachings would comprise two
aerosol generating means. Thus, Appellant fails to explain why one skilled
in the art, using no more than ordinary creativity, would not have been
capable of arriving at the claimed invention from the teachings of the cited
art. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738,
743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in
the art).
Appellant argues Zhuang discloses a cigarette filter configured such
that its bead can release flavorant additives to flavor mainstream smoke and
not to flavor an aerosol as claimed. Appeal Br. 17. Appellant further
contends Zhuang does not teach an aerosol-generating element in the form
of beads or pellets as claimed. Id. According to Appellant, Zhuang teaches
that aerosol forming agents are added to the beads but that the beads
themselves are not the aerosol-generating elements as claimed. Id.
Appellant’s arguments are unavailing.
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According to the Specification, “[t]he aerosol forming material can be
applied to a formed material [(bead)], can be incorporated into processed
materials during manufacture of those materials, or can be endogenous to
that material. Spec. 28. Zhuang discloses “the tobacco beads 206 can
contain volatile liquids, such as aerosol forming agents, and/or flavors.”
Zhuang ¶ 51. In other words, both the claimed invention and Zhuang form
the aerosol generating element (bead/pellet) by adding the aerosol forming
agent to the bead. Thus, Appellant’s arguments does not distinguish the
claimed invention from Zhuang’s aerosol generating element. While
Zhuang discloses flavoring smoke instead of an aerosol, Appellant has not
explained why the nature of the stream treated impacts the function of the
flavorant beads to deliver the desired flavor to either.
Appellant argues Sanchez also fails to disclose or suggest aerosol-
generating elements that are themselves made into a solid form, such as
beads or pellets. Appeal Br. 18. According to Appellant, Sanchez uses
matrices specifically configured so that taste, fragrance, and/or nicotine may
be released from the matrix in which they are held into the aerosol. Appeal
Br. 18; Sanchez ¶ 19. Thus, Appellant asserts there is no teaching or
suggestion in Sanchez and/or Zhuang that the fragrance of Sanchez in a high
vapor pressure solvent may be provided in the form of a solid material, such
as beads or pellets. Appeal Br. 18.
These arguments are also unpersuasive of reversible error in the
Examiner’s determination of obviousness.
The premise of Appellant’s argument is that Sanchez’s fragrances
cannot flavor an aerosol in the form of beads or pellets because Sanchez’s
fragrances are in a high vapor pressure solvent.
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As we note above, Sanchez also discloses “the taste, fragrance and/or
nicotine composition may comprise a vapor pressure modifier,” which
suggests the use of an aerosol forming material in the flavorant insert.
Sanchez ¶ 9. Further, Sanchez utilizes high vapor pressure solvent as an
optional carrier for the fragrances. Id. ¶¶ 19, 22. Sanchez also discloses
alternative carriers for the fragrances, including tubes. Id. ¶¶ 30, 42. Even if
the alternative carriers still required the use of a high vapor pressure solvent,
it is important to understand that the fragrance is the component that needs
to be released into the aerosol. Id. ¶ 4. Both Sanchez and Zhuang teach the
use of coffee and menthol as fragrances. Sanchez ¶ 23 (see Table); Zhuang
¶ 69. Given that both references disclose the same fragrances for their
respective inventions as well as a component to release the fragrances,
Appellant does not explain adequately why one skilled in the art using no
more than ordinary creativity, would not have been capable of modifying
Zhuang’s beads for use in Sanchez’s aerosol generating system and
reasonably expect that these beads would flavor Sanchez’s aerosol. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”); see also In
re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of
one of ordinary skill in the art).
Appellant argues none of the cited prior art references teaches the
claimed separating elements composed of pores that prevent the aerosol
generating elements from leaving the cavity. Appeal Br. 18. According to
Appellant, the Examiner “merely alleges - without any analysis or
supporting rationale - that ‘the purpose of the end caps would have been
obvious to one of ordinary skill in the art reading Keith II.’” Id. at 18–19.
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Thus, Appellant contends that one skilled in the art would have arrived at the
claimed invention from the teachings of the cited art absent impermissible
hindsight. Id. at 19–22.
Appellant’s arguments do not point to reversible error in the
Examiner’s determination of obviousness.
As the Examiner explains, Keith II teaches it is well known to use
filtering material enclosed by porous ends in a smoking article where the
porous ends allows smoke to pass though and contact the filtering material
for the purpose of removing deleterious materials from the smoke. Ans. 10–
11; Keith II col. 1, ll. 10–15, col. 3, ll. 14–34, col. 4, ll. 45–71. In other
words, Keith II teaches an alternate technique for providing contact with a
material that can make the aerosol/smoke more pleasant. Given that Zhuang
uses Sanchez’s fragrances in bead form for that same purpose, Appellant has
not explained adequately why one skilled in the art using no more than
ordinary creativity, would not have been capable of modifying Sanchez’s
aerosol generating system by substituting Keith II’s technique using
Zhuang’s beads in place of the technique disclosed by Sanchez to provide
the aerosol generating elements and reasonably expect the modified aerosol
generating system would result in a pleasant aerosol. See KSR, 550 U.S. at
421; see also Sovish, 769 F.2d at 743.
We have considered Appellant’s arguments that the Examiner relies
on impermissible hindsight to combine the teachings of the cited art. Appeal
Br. 20–22. These arguments essentially repeat the arguments we address
above. Therefore, we find these arguments unpersuasive for the reasons we
give above.
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Application 14/950,724

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Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents.

CONCLUSION
Accordingly, we affirm the Examiner’s prior art rejection of claims 1–
4 and 6–12 under 35 U.S.C. § 103 for the reasons the Examiner presents and
we give above.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–12 103 Sanchez, Zhuang,
Keith II
1–4, 6–12

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)(1)(iv).

AFFIRMED