R.J. REYNOLDS TOBACCO COMPANY

Patent Trials and Appeals Board

Oct 1, 2021

2020006035 (P.T.A.B. Oct. 1, 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.
13/647,670 10/09/2012 Anthony Richard Gerardi R60999 2940US.1 (0421.4) 4129
26158 7590 10/01/2021
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
NGUYEN, PHU HOANG
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
10/01/2021 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 ANTHONY RICHARD GERARDI
Appeal 2020-006035
Application 13/647,670
Technology Center 1700
Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18, 28, and 29. We have jurisdiction.
35 U.S.C. § 6(b).
We affirm-in-part.

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 is R.J.
Reynolds Tobacco Company. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to methods of extracting and isolating one or
more o-methylated flavonoids from Nicotiana plant material. Claim 1;
Spec. 1:3–4. Sole independent claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of extracting and isolating one or more o-
methylated flavonoids from plants of the Nicotiana species,
comprising:
receiving a plant material of the [Nicotiana] species;
contacting the plant material with a solvent for a time and
under conditions sufficient to extract one or more o-
methylated flavonoids from the plant material into the
solvent;
separating the solvent containing the one or more o-
methylated flavonoids from the extracted plant material,
wherein the solvent containing the one or more o-methylated
flavonoids contains at least about 0.1% of the o-methylated
flavonoids on a dry weight basis; and
purifying the solvent containing the one or more o-
methylated flavonoids to provide an isolate comprising at
least about 50% by weight of the one or more o-methylated
flavonoids on a dry weight basis.
REJECTIONS
I. Claims 1, 5–18, 28, and 29 under 35 U.S.C. § 103(a) as
unpatentable over Watanabe2;
II. Claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over
Watanabe in view of Murphy3; and

2 Watanabe et al., “Flavonoid and Certain Related Phenolic Compounds
in Parts of the Tobacco Flower,” Arch. Biochem. Biophys., 112(1):111–
14, Oct. 1965.
3 Murphy et al., “Methyl Ethers of Quercetin in Tobacco Flowers,” J.
Org. Chem., 25(11):2063–64, Nov. 1960.
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III. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over
Watanabe in view of Murphy, and further in view of ACTT.4
Final Act. 2–5.
OPINION
We review the appealed rejections for reversible error based on the
arguments and evidence presented by Appellant. 37 C.F.R.
§ 41.37(c)(1)(iv); Cf. 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”). Herein, we address
the claims separately to the extent they are so argued by Appellant.
Claim 1
In rejecting claim 1, the Examiner finds that Watanabe discloses
contacting a plant material of the Nicotiana species under conditions
sufficient to extract o-methylated flavonoids from the plant material into the
solvent. Id. at 2. Because “Watanabe discloses . . . the same starting
material as the claimed []plant material of the [Nicotiana] species and
solvent conditions to extract the claimed flavonoids,” the Examiner
determines that “it would have been obvious to one of ordinary skill in the
art that the solvent as taught by Watanabe would have at least about 0.1% of
the o-methylated flavonoids on a dry weight basis.” Id. The Examiner also
finds that Watanabe describes purification of the o-methylated flavonoids.

4 Arrangement and Classification of Tobacco Types, Nov. 2006, pp. 18, 129;
available at http://legacy.library.ucsf.edu/tid/uux76a99/pdf.
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Id. Based on this finding, the Examiner concludes that it also would have
been obvious to one of ordinary skill in the art “to purify[] the solvent
containing the one or more o-methylated flavonoids to provide an isolate
comprising at least about 50% by weight of the one or more o-methylated
flavonoids on a dry weight basis.” Id.
Appellant argues that the Examiner has failed to produce sufficient
evidence that the claimed amounts of o-methylated flavonoids can be
obtained by Watanabe’s method. Appeal Br. 5. Appellant points to its
Specification to evince the art’s understanding that “minimal amounts of o-
methylated flavonoids [are] commonly found in plants,” i.e., are typically
present in quantities of “less than 0.01% by weight.” Id. Appellant asserts
the claimed method has a “unique capability to obtain [the claimed] amounts
of o-methylated flavonoids.” Id.
Appellant contends that “Watanabe does not indicate the amount of o-
methylated flavonoid obtained from the extraction therein.” Id. at 6. Rather,
according to Appellant, Table 1 of Watanabe only evinces that o-methylated
flavonoids were present in each extract, but “gives no indication as to [their]
relative amount . . . in the extract with respect to any other component
present therein.” Id.; see also id. at 9 (arguing that the Examiner “has failed
to provide any evidence regarding the amount of o-methylated flavonoids
that . . . could be obtained from [Watanabe’s] extraction processes.”).
Appellant’s arguments are not persuasive of reversible error. The
facts of this case fall squarely within well-established case law regarding
burdens of proof before the Office.
Where, as here, the claimed and prior art products are . . .
produced by identical or substantially identical processes, the
PTO can require an applicant to prove that the prior art products
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do not necessarily or inherently possess the characteristics of his
claimed product. Whether the rejection is based on ‘inherency’
under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35
U.S.C. § 103 . . . the burden of proof is the same, and its fairness
is evidenced by the PTO’s inability to manufacture products or
to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Here, the Examiner undisputedly finds that Watanabe’s method uses
the same starting material, solvent, and extraction conditions as those
claimed. Final Act. 2. Thus, it is Appellant’s burden––not the Examiner’s–
–to show that Watanabe’s extract does not contain the claimed level of o-
methylated flavonoids, i.e., “at least about 0.1% of the o-methylated
flavonoids on a dry weight basis.” On this record, Appellant has failed to do
so.
Moreover, the Examiner undisputedly finds that Watanabe also
discloses purifying the extract and that purifying the solvent containing the
extract to the claimed concentration––i.e., “at least about 50% by weight . . .
on a dry weight basis”––would have been obvious. Id. at 2–3. Although
Appellant alludes to the claimed purity on several occasions (Appeal Br. 4,
5), Appellant does not appear to advance any specific substantive argument
regarding the Examiner’s findings and conclusion regarding purification.
Rather, Appellant’s arguments are focused on the “minimal amounts” or
“very low quantities” expected to be extracted by Watanabe’s method vis-à-
vis the amounts extracted by the claimed method. See Appeal Br. 5–7.
Thus, to the extent Appellant’s arguments could be understood to
apply to the claimed purification step, we are unpersuaded by such
contentions because they amount to no more than bare assertions devoid of
evidence. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he
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Board [has] reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Moreover, we note that “the mere purity of a product, by itself,
does not render the product unobvious.” MPEP 2144.04 VII. Even further,
the claims are broad as to purification methods, and Watanabe and the
instant application each disclose purification by chromatography. Watanabe
112; Spec. 17:1–31; Best, 562 F.2d at 1255.
Appellant also contends that “the method recited in the pending
claims represents unexpected results for the same reasons” discussed in the
Appeal Brief with respect to the expectations in the art. Appeal Br. 8. This
argument lacks persuasive merit for several reasons. First, Appellant has not
established sufficiently that such results would truly have been unexpected.
See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[B]y
definition, any superior property must be unexpected to be considered as
evidence of non-obviousness.”). Also, Appellant does not support its
assertion with factual evidence. See In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984) (“[I]t is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
the specification does not suffice.”). Moreover, Appellant has not produced
evidence commensurate in scope with the claims. “[O]bjective evidence of
non-obviousness must be commensurate in scope with the claims which the
evidence is offered to support.” In re Tiffin, 448 F.2d 791, 792 (CCPA
1971).
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Because Appellant has not shown reversible error in the Examiner’s
rejection of claim 1, we sustain it, along with the rejection of claims 2, 3, 5,
and 9–18 not separately argued.5
Claim 4
Claim 4 depends from claim 1 and requires that “the plant material . . .
is obtained from a Galpao communs plant.” Appeal Br. 17. The Examiner
relies on the combination of Watanabe, Murphy, and ACTT to reject this
claim. Final Act. 4–5.
Appellant first argues that claim 4 is patentable for the same reasons
articulated with respect to claim 1. Id. at 10. We reject that argument for
the same reasons we have already expressed supra.
Appellant next contends that the Examiner’s motivation to combine
Watanabe, Murphy and ACTT is lacking. Appeal Br. 11. We disagree for
the reasons expressed by the Examiner––i.e., the skilled artisan would have
been motivated to use the claimed tobacco variety because it has larger
leaves and has a lower relative price than the one sucker variety. Final Act.
5; Ans. 8.
Finally, Appellant argues that
[t]he ACTT reference does not disclose that the use of any
particular type of tobacco material (much less the Galpao
commun[s] variety tobacco specifically recited in claim 4) could
lead to an extract containing a high percentage of o-methylated
flavonoids when subjected to the processes of Watanabe and/or
Murphy, let alone that it would lead to an extract with the
surprisingly high amount . . . recited.

5 Although Appellant addresses claims 2 and 3 under a separate subheading,
Appellant makes no separate substantive arguments with respect to these
claims. Appeal Br. 9–10. Rather, Appellant merely relies on the same
arguments as presented for claim 1. Id. at 10.
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Appeal Br. 12.
This argument is unpersuasive because the Examiner need not point to
an express teaching in ACTT or the other relied upon prior art regarding a
“high” o-methylated flavonoid concentration. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007) (explaining that the “obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents.”). Here, the
Examiner has made the requisite fact findings and has provided a suitable
reason to combine the Watanabe, Murphy and ACTT references. Final Act.
4–5. As with claim 1, the burden lies with Appellant to show that the prior
art process would not inherently impart the claimed characteristics to the
prior art purified extract. Best, 562 F2d. at 1255. On this record, Appellant
has failed to meet that burden.
Claims 6–8 and 28
These claims depend from claim 1, and require higher solvent
concentrations of o-methylated flavonoids. Appeal Br. 18, 20. As with
claim 1, the Examiner finds that Watanabe discloses the same starting
material and solvent conditions to extract the flavonoids. Final Act. 3. The
Examiner furthermore finds that the skilled artisan could optimize
Watanabe’s solvent to arrive at the ranges recited in these claims. Id.
In addressing this rejection, Appellant largely repeats an argument
made with respect to claim 1––i.e., that Watanabe does not teach or suggest
the claimed amounts. Appeal Br. 13. This argument lacks persuasive merit
for these claims as it did for claim 1 because Appellant has not met its
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burden to show that Watanabe’s method does not yield the claimed amounts
of flavonoids. Best, 562 F2d. at 1255.
Appellant’s arguments also do not address the Examiner’s
optimization rationale, so no reversible error has been shown for this
additional reason. Final Act. 3.
Claim 29
Claim 29 depends from claim 1 and requires that “the solvent is
methanol.” Appeal Br. 20.
The Examiner finds that Watanabe discloses the solvent is methanol.
Final Act. 3 (citing Watanabe, p. 111).
Appellant argues, inter alia, “that the claim language ‘wherein the
solvent is methanol’ explicitly limits the extraction solvent to only
methanol.” Appeal Br. 14.
On this record, we agree with Appellant and reverse the rejection of
claim 29. Here, the Specification distinguishes between using individual
solvents and solvent mixtures. See Spec. 14:18–20 (listing individual
solvents such as methanol, hydrocarbons, methylene chloride and
combinations thereof); id. at 15:30–16:2 (“In certain embodiments, the o-
methylated flavonoid-containing extract is a methanol extract, although
other solvents (e.g., other alcohol solvents) could be used.”).
Moreover, the doctrine of claim differentiation supports a narrow
reading of claim 29. Claim 5 depends from claim 1 and recites that the
solvent comprises methanol, whereas claim 29 requires that the solvent “is
methanol.”
“‘There is presumed to be a difference in meaning and scope when
different words or phrases are used in separate claims. To the extent that the
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absence of such difference in meaning and scope would make a claim
superfluous, the doctrine of claim differentiation states the presumption that
the difference between claims is significant.’” U.S. v. Telectronics, Inc., 857
F.2d 778, 783–84 (Fed. Cir. 1988) (quoting Tandon Corp. v. U.S. Int’l Trade
Comm’n, 831 F.2d 1017 (Fed. Cir. 1987)).
For these reasons, we determine that the broadest reasonable
interpretation of claim 29 is that the solvent is limited to methanol. The
relied-upon disclosure of Watanabe does not limit its solvent choice to
methanol. Watanabe, 111 (disclosing that “[t]he material was finally
extracted with a water-saturated solvent mixture containing equal volumes
of isopropyl alcohol, n-butyl alcohol, benzene, chloroform, ethyl acetate,
and methyl alcohol.”).
Because the Examiner’s rejection of claim 29 relies on an
unreasonably broad interpretation of the scope of this claim, we do not
sustain this rejection.
CONCLUSION
The Examiner’s rejections are affirmed-in-part.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s) / Basis Affirmed Reversed
1, 5–18, 28,
29
103(a) Watanabe 1, 5–18, 28 29
2, 3 103(a) Watanabe, Murphy 2, 3
4 103(a) Watanabe, Murphy,
ACTT
4
Overall
Outcome
1–18, 28 29

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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