RAI STRATEGIC HOLDINGS, INC.

Patent Trials and Appeals Board

Oct 4, 2021

2021002114 (P.T.A.B. Oct. 4, 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.
15/349,619 11/11/2016 Michael F. Davis R60999 12350US.1
(1154.7)
5637
26158 7590 10/04/2021
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
NORTON, JOHN J
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
10/04/2021 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 MICHAEL F. DAVIS, BALAGER ADEME, and
PERCY D. PHILLIPS
____________

Appeal 2021-002114
Application 15/349,619
Technology Center 3700
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
JAMES A. WORTH, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–3, 5–10, 12–17, and 19–21, which are the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
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., a
subsidiary of RAI Innovations Company, as the real party in interest.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
“The present disclosure relates to aerosol delivery devices such as
smoking articles, and more particularly to aerosol delivery devices that may
utilize electrically generated heat for the production of aerosol (e.g.,
smoking articles commonly referred to as electronic cigarettes).” Spec. 1, ll.
3–6.
Claims 1, 8, and 15 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. An aerosol delivery device comprising:
at least one housing equipped with a heating element and
containing an aerosol precursor composition having a specific
formulation including a flavorant for which information is
stored within memory, the heating element being controllable to
activate and vaporize components of the aerosol precursor
composition;
a resistance temperature detector (RTD) having a
resistance that is variable and proportional to a temperature of
the heating element, the RTD also having a temperature
coefficient of resistance that is invariable with respect to the
temperature of the heating element; and
a control component configured to direct power to the
heating element to activate and vaporize components of the
aerosol precursor composition, the control component being
configured to measure the resistance of the RTD and therefrom
determine the temperature of the heating element, and control at
least one functional element in real time based on the
temperature so determined, control of the at least one functional
element including adjustment of the power to the heating
element based on the temperature and the information to
provide a specific temperature for the specific formulation,
wherein the specific temperature is a temperature at which the
flavorant is provided in an inhalable state.

Appeal Br. 16 (Claims App.).
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REJECTIONS
Claims 1–3, 5–10, 12–17, and 19–21 stand rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement.
Claims 1–3, 5–10, 12–17, and 19–21 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Bellinger (US 2015/0359263 A1,
published Dec. 17, 2015) and Hawes (US 2016/0360789 A1, published Dec.
15, 2016).

ANALYSIS
Written Description
The test for sufficiency under the written description requirement “is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). This test “requires an
objective inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art.” Id. To have
“possession,” “the specification must describe an invention understandable
to that skilled artisan and show that the inventor actually invented the
invention claimed.” Id.
The Examiner notes that claims 1, 8, and 15 each recite “an aerosol
precursor composition having a specific formulation including a flavorant,”
and “adjustment of the power to the heating element based on the
temperature and the information to provide a specific temperature for the
specific formulation, wherein the specific temperature is a temperature at
which the flavorant is provided in an inhalable state.” Final Act. 2
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(emphasis added). The Examiner states that “the claim[s] now seem to
specifically recite that the temperature is based around the flavorant, rather
than the overall precursor composition having a specific formulation which
happens to include a flavorant.” Id. at 2–3. The Examiner finds that “the
disclosure fails to show support for a specific temperature that is associated
with a flavorant, and instead only support for a specific temperature
associated with a specific aerosol precursor composition.” Ans. 9.
The Examiner submits that the following disclosure provides the
“closest support” for this limitation:
In some examples, in which the heating element is or includes a
resistance temperature detector (RTD), the RTD may be used to
provide an optimal temperature for specific e-liquids. For
example, the aerosol precursor composition within a cartridge
104 may have a particular flavor in which information
indicating the flavor type is stored within memory of the
cartridge (e.g., stored on a microchip). The information may be
utilized to determine (or “read”) the flavor of the aerosol
precursor composition within the cartridge, and a value of the
RTD may be adjusted to provide an optimal temperature for
that specific flavor.
Final Act. 3 (citing Spec. 18, l. 29–19, l. 5) (emphasis added). However, the
Examiner determines that this passage only describes “‘an optimal
temperature for that specific flavor,’ not flavorant, where it seems the flavor
is merely an indicator of the type of e-liquid used.” Id.
Appellant contends that the rejection is erroneous. Appeal Br. 4.
Appellant points out that the Specification discloses that the “aerosol
delivery devices can provide specific substances, such as flavors and/or
pharmaceutical active ingredients, in an inhalable state.” Id. at 5 (citing
Spec. 8, l. 25–9, l. 4). This passage describes that “[a]erosol delivery
systems . . . also can be characterized as being vapor-producing articles or
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medicament delivery articles. Thus, such articles or devices can be adapted
so as to provide one or more substances (e.g., flavors and/or pharmaceutical
active ingredients) in an inhalable form or state.” Spec. 8, ll. 25–28
(emphasis added).
Appellant also contends that the Specification discloses that “the
resistance temperature detector (RTD) may be used to provide an optimal
temperature for a specific component—namely, a flavorant or flavor—of an
aerosol precursor composition.” Appeal Br. 5 (citing Spec. 18, l. 29–19, l.
5) (emphasis added). Appellant points out that the Specification “explicitly
identifies a flavorant as a component of an aerosol precursor composition.”
Id. (citing Spec. 21, l. 30–22, l. 2). This passage describes that “[t]he
aerosol precursor composition, also referred to as a vapor precursor
composition, may comprise a variety of components including, by way of
example, a polyhydric alcohol . . . , nicotine, tobacco, tobacco extract and/or
flavorants.” Spec. 21, l. 30–22, ll. 2 (emphasis added). Appellant also
contends that “the [S]pecification . . . uses the terms ‘flavor’ and ‘flavorant’
interchangeably to denote certain component substances in the aerosol
precursor composition” (Appeal Br. 6), and that “the terms ‘flavor’ and
‘flavorant’ should be construed as effectively equivalent” (Reply Br. 4).
Appellant’s contentions are persuasive. Claims 1, 8, and 15 each
recite “a specific temperature for the specific formulation.” The Examiner
concedes that the Specification supports “a specific temperature associated
with a specific aerosol precursor composition.” Ans. 9.
We agree with Appellant that the Specification also evidences
possession of the limitation “the specific temperature is a temperature at
which the flavorant is provided in an inhalable state.” Appeal Br. 6. We
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disagree with the Examiner that Appellant is impermissibly conflating the
terms “flavor” and “flavorant.” Ans. 9. Rather, we agree with Appellant
that “the [S]pecification . . . uses the terms ‘flavor’ and ‘flavorant’
interchangeably to denote certain component substances in the aerosol
precursor composition.” Appeal Br. 6 (emphasis added). For example, the
Specification discloses “a disposable flavor-containing cartridge,” and “[t]he
aerosol precursor composition . . . may comprise . . . components including .
. . flavorants.” Spec. 10, ll. 2–3; 21, l. 30–22, l. 2 (emphasis added). The
Specification further discloses “provid[ing] an optimal temperature for [the]
specific flavor” of the aerosol precursor composition. Id. at 19, ll. 4–5. One
of ordinary skill in the art would understand from the disclosure that this
“specific flavor” corresponds to a flavor or flavorant component of the
precursor composition. As the Specification further discloses that the
“devices can be adapted so as to provide . . . flavors . . . in an inhalable form
or state” (id. at 8, ll. 25–28 (emphasis added)), we agree with Appellant that
the Specification supports the limitation “the specific temperature is a
temperature at which the flavorant is provided in an inhalable state.” Appeal
Br. 6.
For these reasons, we do not sustain the rejection of claims 1–3, 5–10,
12–17, and 19–21 under 35 U.S.C. § 112(a), written description
requirement.

Obviousness
Appellant argues claims 1–3, 5–10, 12–17, and 19–21 as a group.
Appeal Br. 6–14. We select claim 1 as representative to decide the appeal as
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to the rejection, and the remaining claims of the group stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
The Examiner finds that Bellinger discloses an aerosol delivery device
that meets all limitations of claim 1 except for “a memory that stores
information regarding an aerosol precursor having a specific formulation
including a flavorant” (herein also “information storage limitation”), and
“adjustment of the power to the heating element . . . to provide a specific
temperature for the specific formulation, wherein the specific temperature is
a temperature at which the flavorant is provided in an inhalable state”
(herein also “power adjustment limitation”). Id. at 4. The Examiner relies
on Hawes as teaching these limitations. Id. (citing Hawes ¶¶ 40, 42, 110,
118, 122). The Examiner concludes that “it would have been obvious to one
of ordinary skill in the art to add the aerosol precursor data and profile
management feature of Hawes into the controller and reservoir of Bellinger .
. . to automatically optimize the vaporization of the precursor.” Id. at 5.
Appellant contends that the Examiner fails to establish how Hawes
supports a prima facie case of obviousness. Appeal Br. 7. According to
Appellant, “the Examiner simply asserts . . . the presence of words and
phrases in Hawes that are arguably similar to the Examiner’s parsed and
paraphrased version of the claim.” Id. at 8.
This contention fails to identify any specific finding for Hawes that is
erroneous. Appellant also asserts, “[w]ith respect to [the] feature of
‘automatically optimiz[ing]’ referenced by the Examiner, the claims do not
use such a term, and the Examiner provides no clear analysis of how that
feature relates to the actual language of the claims.” Appeal Br. 8. This
assertion pertains to the Examiner’s statement that “[t]he advantage of this
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feature is that it automatically optimizes the vaporization of the precursor.”
See Final Act. 5. However, the Examiner does not state that claim 1 recites
“automatically optimiz[ing],” or find that Hawes explicitly discloses this
feature. Rather, the Examiner’s rationale for combining Hawes’ teachings
with Bellinger is premised on this advantage. See id. at 5; Ans. 11.
Appellant also contends that the obviousness analysis fails to consider
the claims as a whole. Appeal Br. 8. According to Appellant, the Examiner
ties the obviousness rejection to the written description rejection, and “also
improperly reduces the claim to a general gist or thrust by asserting that ‘the
inhalable state of the flavorant would still correspond to the inhalable state
of the precursor.’” Id. at 8–9.
We agree with the Examiner that these contentions are unpersuasive
because they fail to point out specific error in the Examiner’s findings, or the
Examiner’s rationale for combining the reference teachings. Ans. 11–12.
Appellant further contends that the rejection relies on several
erroneous factual interpretations for Hawes. Appeal Br. 9. First, Appellant
contends that Hawes does not disclose the claimed information storage
limitation. Id. Rather, Appellant contends, “[p]aragraph 110 of Hawes at
best teaches storing information about a generalized ‘vapor precursor
composition,’” and fails to teach or suggest “an aerosol precursor
composition with a specific formulation that contains a flavorant.” Id. at 10
(bold face omitted). As for the Examiner’s citations to paragraphs 40 and
122 of Hawes as teaching an aerosol precursor composition having a specific
formulation including a flavorant, Appellant asserts, “paragraph 40 . . . at
best teaches that natural or artificial flavors may be included in a vapor
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precursor . . . and [p]aragraph 122 contains a bare reference to ‘flavor.’” Id.
at 10.
These contentions are unpersuasive. Claim 1 recites that the “specific
formulation includ[es] a flavorant,” but does not limit the “flavorant” or
require the “specific formulation” to include any other component. We
agree with Appellant that paragraph 110 of Hawes does not mention a
flavorant. Appeal Br. 10. However, paragraph 40 discloses that the e-vapor
apparatus may include a pod assembly, which may include a vapor precursor
compartment “configured to hold a vapor precursor,” which, in turn, may
include “natural or artificial flavors.” Accordingly, we agree with the
Examiner that Hawes teaches “an aerosol precursor composition having a
specific formulation including a flavorant,” as recited in claim 1.
Hawes further discloses that heater 2215 “transfers heat to the vapor
precursor in accordance with the commanded profile (. . . temperature (based
on power profile) and flavor) from the controller.” Hawes ¶ 122. As such,
Hawes discloses that the heater heats the vapor precursor based, in part, on
the “flavor.” A skilled artisan would understand that the “flavor” of the
vapor precursor would depend on the flavor(s) that the vapor precursor
contain(s).
Appellant also contends, “[s]imply stating that ‘natural or artificial
flavors’ may be included in a vapor precursor is not a teaching or suggestion
of a specific formulation that includes a flavorant for which information is
stored within memory.” Appeal Br. 11 (bold face omitted). We are
unconvinced that Hawes fails to disclose or suggest storing information
about “a specific formulation that includes a flavorant” within a memory.
Hawes discloses that “stored information on the CC-NVM include[es] . . .
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vapor precursor composition.” Hawes ¶ 110. The stored information would
include information about “flavors” contained in the vapor precursor
composition, and would be on a memory. And, as noted, Hawes discloses
that the “commanded profile” used to transfer heat to the vapor precursor
includes information about the flavor of the vapor precursor. See id. ¶ 122.
The “commanded profile” would be “information stored on a memory.”
Second, Appellant contests the Examiner’s finding that Hawes
discloses the claimed power adjustment limitation. Appeal Br. 11.
Appellant points out that “the ‘temperature’ recited [in the claims] is the
temperature of the heating element that is determined by measuring the
resistance of the RTD.” Id. Appellant contends that it is clear from
paragraph 122 of Hawes that the temperature is “neither the measured
temperature recited in the claims nor a specific temperature tied to the
properties of a specific flavorant in a specific formulation of an aerosol
precursor.” Id. at 11–12.
The Examiner disagrees with Appellant for two reasons. First, the
Examiner explains that the rejection cites Bellinger, not Hawes, for teaching
the use of an RTD to measure temperature. Ans. 12; see Final Act. 4 (citing
Bellinger ¶ 30, 33). Second, the Examiner points out that Hawes teaches
using “‘a resistive based sensor . . . configure[d] to measure current.’” Ans.
12 (citing Hawes ¶ 93). The Examiner submits that one of ordinary skill in
the art would understand that a “‘resistive based sensor’ . . . [is] the same as,
or analogous to, the claimed resistance temperature detector.” Id.
We agree with the Examiner that Bellinger discloses determining the
temperature of a heating element by measuring resistance. See, e.g.,
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Bellinger ¶ 30. Additionally, we are unpersuaded by Appellant that Hawes
fails to disclose this “temperature.” See, e.g., Hawes ¶ 93
Appellant also contends that the “temperature” described in paragraph
122 of Hawes does not teach or suggest “a specific temperature or as being
tied to a specific formulation; it is ‘based’ on a power profile.” Appeal Br.
12. Appellant contends that both Hawes and the Examiner fail to explain
how this “temperature” “can be both a temperature determined from the
resistance of an RTD and a specific temperature tied to a specific
formulation of the aerosol precursor composition.” Id. at 12–13.
In response, the Examiner submits that “the controller would control
power to achieve the appropriate temperature, and . . . the flavor clearly
affects the temperature because it otherwise recites, ‘heater 2215 is actuated
. . . in accordance with the commanded profile (. . . flavor),’ where the heater
actuation is unavoidably linked to temperature itself.” Ans. 13.
We agree with the Examiner that paragraph 122 of Hawes describes,
or implies, supplying power to the heater based on both temperature and the
flavor of the vapor precursor. A skilled artisan would understand that the
power profile utilized would affect heat transfer to the vapor precursor, and
thus its temperature, as well as the temperature of heater 2215.
Furthermore, although the rejection indicates that Bellinger does not
disclose the entire information storage limitation and power adjustment
limitation (Final Act. 4), Bellinger provides the following relevant disclosure
in addition to the teachings of Hawes discussed by the Examiner:
Another parameter or characteristic influencing the user
experience is a quality of the vapor (e.g., taste, feeling, etc.).
This parameter generally correlates to a temperature of the
heating element 132. Fluid 138 can be a mixture of propylene
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glycol, glycerin, water, nicotine, and flavorings. At a high
temperature, these compounds can degrade into less flavorful
materials, or potentially harmful substances. Accordingly, the
controller 120 can determine the temperature of the heating
element 132 and control the power source 110 to prevent the
temperature of the heating element 132 from exceeding a set
temperature.
Bellinger ¶ 29 (bold face omitted, emphasis added). As such, Bellinger
discloses that the fluid (i.e., vapor precursor) can contain flavorings, and that
the temperature of the heating element can be determined to control the
power supplied to it to thereby avoid exceeding a set temperature. A skilled
artisan would understand that the set temperature would be “a temperature at
which the flavorant is provided in an inhalable state” and has desirable taste.
Bellinger also discloses, for example, that “[t]he safe level used to control
the temperature of the heating element may be set below the breakdown
temperature of the components of the fluid to prevent the fluid from being
converted chemically into potentially harmful or foul-tasting components.”
See id. ¶ 37 (emphasis added). These paragraphs indicate that the power
supplied to the heating element can be controlled/adjusted based on the
determined temperature of the heating element and the liquid formulation,
for which information can be stored.
Appellant further contends that the Examiner misinterpreted the
“vapor precursor calibration data” described in paragraph 118 of Hawes.
Appeal Br. 12. Appellant asserts that this paragraph does not teach that “the
temperature of a heating element is controlled to achieve a specific
temperature at which a particular flavorant in a specific formulation of an
aerosol precursor composition is provided in an inhalable state.” Id.
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The Examiner responds that the rejection cites paragraph 118 only for
teaching the “information” limitation. Ans. 13; see Final Act. 4 (“the
information”). As such, the Examiner does not rely on paragraph 118 for the
specific teaching indicated by Appellant.
We have also considered Appellant’s arguments against the rejection
set forth in the Reply Brief. See Reply Br. 6–12. Appellant states, “[t]he
Examiner cites to ¶ [0122] of Hawes as suggesting that the flavor is a
separate factor considered for controlling the heater, alongside ¶ [0040] as
disclosing that the flavor would be defined by ‘natural and artificial
flavors.’” Id. at 6. Appellant disagrees and then “offers [a] cohesive
explanation of Hawes’ disclosure.” Id. We note, however, that this
explanation includes a substantial amount of argument that was not
presented in the Appeal Brief. For example, Appellant extensively discusses
structural features and operation of Hawes’ e-vapor apparatus, including
citations to numerous passages in Hawes that were not addressed in the
Appeal Brief. Id. at 6–12. Appellant also contends that Hawes is “non-
enabling regarding measured temperature,” but this issue was not mentioned
in the Appeal Brief. Id. at 11. As a further example, Appellant further
contends:
Even using the Examiner’s interpretation of the relevant
passages, the controller 2105 and storage medium 2145 of
Hawes’ device system 2100 are within the device compartment
of the dispensing body 104/204, and not within Hawes’ pod
system 2200 of the pod assembly 502, that is, within a housing
containing an aerosol precursor composition and equipped with
a heating element, as required by the claims.
Id. at 12. We are unable to find this argument as well in the Appeal Brief.
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Apart from specific exceptions, arguments that were not raised in the
Appeal Brief, but raised for the first time in the Reply Brief, “will not be
considered by the Board for purposes of the present appeal, unless good
cause is shown.” 37 C.F.R. § 41.41(b)(2). Appellant does not show good
cause as to why the new arguments presented in the Reply Brief could not
have been made earlier, so that the Examiner could have considered them.
In this regard, we note that the Reply Brief includes only a single citation to
the Examiner’s Answer. See Reply Br. 6 n. 9. Accordingly, we do not
address these new arguments.
For the above reasons, Appellant has not apprised us of error in the
Examiner’s findings, or in the Examiner’s stated rationale for combining the
reference teachings. Thus, we sustain the rejection of claim 1, and claims 2,
3, 5–10, 12–17, and 19–21 falling with claim 1, as being unpatentable over
Bellinger and Hawes.

CONCLUSION
The disposition of the Examiner’s rejections is summarized below.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–10,
12–17, 19–
21
112(a) Written
Description
1–3, 5–10,
12–17, 19–
21
1–3, 5–10,
12–17, 19–
21
103 Bellinger, Hawes 1–3, 5–10,
12–17, 19–21

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Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1–3, 5–10,
12–17, 19–21

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