R.J. Reynolds Tobacco CompanyDownload PDFPatent Trials and Appeals BoardApr 8, 20212020002411 (P.T.A.B. Apr. 8, 2021) Copy Citation 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. 14/946,167 11/19/2015 Daniel Verdin Cantrell R60999 1700US.C1 (1138.5) 5669 26158 7590 04/08/2021 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER SPARKS, RUSSELL E ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 04/08/2021 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 DANIEL VERDIN CANTRELL, ROBERT FRANK BOUTIN, and THOMAS HINKEMEYER Appeal 2020-002411 Application 14/946,167 Technology Center 1700 Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–10, 12, and 29–37. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as R.J. Reynolds Tobacco Company (Appeal Br. 1). Appeal 2020-002411 Application 14/946,167 2 CLAIMED SUBJECT MATTER The claims are directed to a smokeless tobacco pastille. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A smokeless tobacco composition configured for insertion into the mouth of a user, the smokeless tobacco composition comprising a tobacco material and a polysaccharide filler component, wherein the polysaccharide filler component comprises polydextrose, and wherein the composition is in the form of a pastille. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Brown US H561 Dec. 6, 1988 Baskevitch US 6,679,270 B2 Jan. 20, 2004 Strickland US 2005/0244521 A1 Nov. 3, 2005 Holton US 2007/0186941 A1 Aug. 16, 2007 Wrenn US 2008/0149121 A1 June 26, 2008 Wu US 2009/0232896 A1 Sept. 17, 2009 Lockhart US 2009/0252788 A1 Oct. 8, 2009 Appeal 2020-002411 Application 14/946,167 3 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 4–9 103(a) Strickland, Lockhart 1, 3–5, 8–9 103(a) Strickland, Brown 6, 7, 10 103(a) Strickland, Brown, Holton 10 103(a) Strickland, Lockhart, Holton 12 103(a) Strickland, Lockhart, Wrenn 32, 33 103(a) Strickland, Lockhart, Wu 32, 33 103(a) Strickland, Brown, Wu 37 103(a) Strickland, Lockhart, Baskevitch 37 103(a) Strickland, Brown, Baskevitch OPINION Rejections involving Strickland and Lockhart We need address only the sole independent claim, i.e., claim 1. That claim requires a smokeless tobacco pastille comprising polydextrose. Strickland discloses a smokeless tobacco composition that can comprise a starch filler (¶¶ 23, 28). An exemplary composition contains “Starch/Maltodextrin” (¶ 39, Table A1). Lockhart discloses “methods of producing pharmaceutical formulations of balsalazide” (Abstract), which “is a prodrug that is enzymatically cleaved in the colon to produce mesalamine (5-aminosalicylic acid), an antiinflammatory drug” (¶ 56). Carriers, diluents, and fillers suitable for use in the pharmaceutical formulations include maltodextrins and polydextrose (¶ 72). Appeal 2020-002411 Application 14/946,167 4 The Examiner finds that one of ordinary skill in the art would have substituted Lockhart’s polydextrose for Strickland’s maltodextrin because “Strickland discloses a maltodextrin filler and Lockhart teaches that maltodextrin and polydextrose are both suitable fillers for oral tablets” (Final 7). The Examiner finds that one of ordinary skill in the art would recognize that maltodextrin, starch, and polydextrose would all function similarly in compositions that are administered to users orally. Since the simple substitution of one known element for another is likely to be obvious when predictable results are achieved (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395–97 (2007) (see MPEP § 2143, B.)), one of ordinary skill in the art would therefore have been motivated to substitute maltodextrin with polydextrose [(Ans. 18)]. When an examiner’s findings are not challenged by an appellant, we may accept them as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964). The Appellant, however, has challenged the Examiner’s findings (Appeal Brief 15). The Examiner, therefore, must provide evidentiary support for the findings that one of ordinary skill in the art would have expected maltodextrin and polydextrose to function similarly in balsalazide and smokeless tobacco and that substituting polydextrose for Strickland’s maltodextrin would achieve results one of ordinary skill in the art would have predicted. The Examiner has not provided that evidentiary support, so we reverse the rejections involving Strickland and Lockhart.2 2 The Examiner does not rely upon Holton, Wrenn, Wu, or Baskevitch for any disclosure that remedies the deficiency in Strickland and Lockhart as to the independent claim (Ans. 11–15). Appeal 2020-002411 Application 14/946,167 5 Rejections involving Strickland and Brown Although references in addition to those applied to sole independent claim 1 are applied to some of the dependent claims, the Appellant does not separately argue the dependent claims (Appeal Br. 16–18, 21–22). The claims, therefore, stand or fall together, and we limit our discussion to the independent claim. See 37 C.F.R. § 41.37 (c)(1)(iv) 2013. Strickland discloses that the smokeless tobacco composition may include sucrose (¶ 5). Brown discloses an edible fruit filling composition containing a major amount of sweetener (col. 3, ll. 3–4, 10–13). Suitable sweeteners include dextrose (col. 3, l. 10–12; col. 4, ll. 44–45). Brown teaches that polydextrose “is a low calorie bulking agent that is suitable as a sweetener component” (col. 4, ll. 49–51). The Appellant argues that Strickland and Brown provide no suggestion that substituting Brown’s polydextrose for Strickland’s dextrose would provide a composition having unique and surprising chewable properties (Appeal Br. 17). In support of that argument, the Appellant relies upon a Declaration by Thomas Hinkemeyer (id.). Hinkemeyer does not provide experimental results but, rather, states: 4. . . . the selection of polydextrose in the presently recited compositions provided surprising results in the form of unique physical properties, which would not be expected by one of skill in the art based on common knowledge in the art and/or on the cited documents [(Strickland and US 2007/0144544 to Cai)]. . . . 6. When polydextrose was incorporated into the compositions disclosed in the present application, the compositions exhibited unique physical properties. Specifically, such products were noted to be somewhat chewable and formable (staying together without falling Appeal 2020-002411 Application 14/946,167 6 apart during use), and were further noted to exhibit slow dissolution during use. As described, e.g., on page 5 of the application as filed, the composition exhibited a “lightly chewable” quality. 7. I did not anticipate, prior to this work, that the incorporation of polydextrose would endow the product with such a unique set of properties. In fact, when we incorporated ingredients that are commonly considered to provide chewiness in place of the polydextrose (e.g., vegetable protein and fish gelatin), the resultant products actually exhibited less chewiness than the polydextrose- containing product. The vegetable protein and fish gelatin-containing products were described by users as “hard,” and “lozenge-like” and were noted to “fall apart,” whereas the polydextrose-containing products were described by users as being “formable without falling apart,” and as having “chewing gum type properties.” The Hinkemeyer Declaration relied upon by the Appellant as evidence of unexpected results does not identify the closest prior art and provide a comparison of the claimed composition with the closest prior art that is commensurate in scope with the claims (which can comprise as little as a trace amount of polydextrose) and shows an unexpected difference between the claimed composition and the closest prior art. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). Thus, the totality of the evidence including the Hinkemeyer Declaration supports a conclusion of obviousness of the Appellant’s claimed composition. For the above reasons, we affirm the rejections involving Strickland and Brown. Appeal 2020-002411 Application 14/946,167 7 CONCLUSION The Examiner’s decision to reject claims 1, 3–10, 12, and 29–37 is affirmed in part. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–9 103(a) Strickland, Lockhart 1, 4–9 1, 3–5, 8–9 103(a) Strickland, Brown 1, 3–5, 8– 9 6, 7, 10 103(a) Strickland, Brown, Holton, Jr 6, 7, 10 10 103(a) Strickland, Lockhart, Holton, Jr 10 12 103(a) Strickland, Lockhart, Wrenn 12 32, 33 103(a) Strickland, Lockhart, Wu 32, 33 32, 33 103(a) Strickland, Brown, Wu 32, 33 37 103(a) Strickland, Lockhart, Baskevitch 37 37 103(a) Strickland, Brown, Baskevitch 37 Overall Outcome 1, 3–10, 32, 33, 37 12 TIME 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 IN PART Copy with citationCopy as parenthetical citation