R.J. REYNOLDS TOBACCO COMPANY

Patent Trials and Appeals Board

Oct 18, 2021

2021002109 (P.T.A.B. Oct. 18, 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.
14/282,768 05/20/2014 Stephen Benson Sears R60999 10840US.1
(0715.9)
8882
26158 7590 10/18/2021
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
10/18/2021 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, and BALAGER ADEME
____________

Appeal 2021-002109
Application 14/282,768
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, 3, 9, 10, 15, 21, 22, and 28–
30.2 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 An oral hearing was scheduled for September 28, 2021. However, the
hearing was waived on August 26, 2021.
Appeal 2021-002109
Application 14/282,768

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 removably 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, wherein the first aerosol generation
arrangement comprises a liquid reservoir disposed within the
second tubular member and configured to receive an aerosol
precursor substance used by the first aerosol generation
arrangement to generate a first aerosol, a heating element
configured to provide heat for producing the first aerosol, and a
liquid transport element configured to transport the aerosol
precursor substance from the liquid reservoir to the heating
element; and

a second aerosol generation arrangement comprising an
elongate tubular body and opposed end members that are each
air permeable, the elongate tubular body and the opposed end
members cooperating to contain a plurality of aerosol
generating elements in the form of discrete pieces, the second
aerosol generation arrangement being configured to be received
as a unit by the second tubular member of the cartridge body
Appeal 2021-002109
Application 14/282,768

3
portion without loss of the aerosol-generating elements through
the mouth-engaging end of the aerosol delivery system, the
aerosol-generating elements being arranged to interact with the
first aerosol to produce a second aerosol, drawn therethrough
toward the mouth-engaging end, in response to a suction
applied to the mouth-engaging end, and wherein the aerosol-
generating elements comprise a tobacco material.
Appeal Br. 27–28 (Claims App.).
Appellant requests review of the Examiner’s rejection of claims 1, 3,
9, 10, 15, 21, 22, and 28–30 under 35 U.S.C. § 103 as unpatentable over
Sanchez (WO 2014/116974 A1, published July 31, 2014) and Zhuang (US
2007/0000505 A1, published January 4, 2007). Appeal Br. 13; Final Act. 5.
Appellant’s arguments focus on the subject matter of independent
claim 1 and Appellant relies on these arguments to address the rejection 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 1.3

OPINION
After review of the respective positions of Appellant and the
Examiner, we affirm the Examiner’s rejection of claims 1, 3, 9, 10, 15, 21,
22, and 28–30 under 35 U.S.C. § 103 for essentially the reasons the
Examiner presents. We add the following for emphasis.

3 The Examiner objected to the drawings under 37 C.F.R. § 1.83(a). Final
Act. 2–3. Appellant presents arguments addressing this objection. Appeal
Br. 25. We decline to reach these arguments because the Examiner’s
objection to the drawings is a petitionable matter subject to supervisory
review by petition under 37 C.F.R. § 1.181. See 37 C.F.R. § 1.113(a) and
MPEP § 1002.02(c)(4).
Appeal 2021-002109
Application 14/282,768

4
Claim 1
Claim 1 recites an aerosol delivery system having (1) a control body
portion (power source), (2) a cartridge body portion including a first aerosol
generation arrangement that engages the power source, wherein the first
aerosol generation arrangement comprises a liquid reservoir configured to
receive an aerosol precursor substance used to generate a first aerosol, a
heating element configured to provide heat for producing the first aerosol,
and a liquid transport element configured to transport the aerosol precursor
substance from the liquid reservoir to the heating element, and (3) a second
aerosol generation arrangement that interacts with the first aerosol to
produce a second aerosol, drawn therethrough toward a mouth-engaging
end.
The Examiner finds Sanchez teaches an e-cigarette acting as an
aerosol delivery system that includes a battery, an aerosol cartridge and a
fragrance insert. Final Act 5–6; Sanchez Figures 2–3. The Examiner finds
Sanchez teaches the listed components can be physically integrated with
each other. Final Act. 6; Sanchez ¶ 28. The Examiner finds Sanchez
teaches using tobacco materials and flavors in the form of powder but does
not teach the use of spherical tobacco as the fragrance releasing material in
the second aerosol generation element. Final Act. 6; Sanchez ¶ 30. The
Examiner finds Zhuang teaches it is known in the art to use tobacco
beads/pellets (spherical shapes) as a flavoring source for aerosol streams,
such as downstream of absorbents that remove flavor, leaving a tasteless
aerosol of cigarette smoke. Final Act. 6. The Examiner determines that it
would have been obvious to one of ordinary skill in the art to substitute
Zhuang’s flavoring beads/pellets for Sanchez’s flavoring material to provide
Appeal 2021-002109
Application 14/282,768

5
a second aerosol generation arrangement with the expectation that such
substitution would have predictably resulted in a flavored aerosol. Final
Act. 6–7.
Appellant argues that the claimed invention as well as the primary
reference to Sanchez are directed to modern aerosol delivery devices while
the secondary reference to Zhuang is directed to the field of conventional
cigarette filters (from a decade or more earlier). Appeal Br. 15. According
to Appellant, Zhuang would not have led one skilled in the art to modify
Sanchez aerosol generating means so as to arrive at the claimed invention
because Zhuang is 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 turned to Zhuang’s teachings to
modify flavor delivery in a modern aerosol-forming article. Id.
Specifically, Appellant argues the combined teachings of Sanchez and
Zhuang would not result in a disposable fragrance components as disclosed
by Sanchez because there would be no structure available to maintain the
Zhuang’s tobacco beads in place. Id. at 21. Appellant further argues
Zhuang requires that its smoking article includes filter components and the
Examiner has provided absolutely no reason why a skilled artisan would
extract the tobacco beads in Zhuang’s filter segment and somehow insert
them into Sanchez's filter segment. 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. 6–7.
Appeal 2021-002109
Application 14/282,768

6
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
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”).
Appellant’s arguments fails to address the rejection that the Examiner
presents. 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. 24; see Zhuang ¶ 51.
In fact, Sanchez also discloses “the taste, fragrance and/or nicotine
Appeal 2021-002109
Application 14/282,768

7
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. 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. Appellant’s
argument that direct substitution of Zhuang’s beads for the Sanchez’s
flavorant extract would not be reasonable because there would be no
structure available to maintain the tobacco beads in place (Appeal Br. 21–
22) is also unavailing because it does not take into account the Examiner’s
reasons for combining the prior art teachings. Final Act. 6–7. As the
Examiner explains, one skilled in the art would package Zhuang’s flavorant
beads within a tube along with end portions such as the separator and
mouthpiece as shown Sanchez’s Figure 3. Ans. 11. That is, one skilled in
the art would understand that substituting Zhuang’s flavorant beads for
Sanchez’s flavorant extract requires modifying Sanchez’s aerosol generating
device so as to hold the beads in place in the device as taught by Zhuang.
Appeal 2021-002109
Application 14/282,768

8
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 the Examiner’s determination that it would have
been obvious to one of ordinary skill in the art to form the three parts shown
in Sanchez’s Figures 2 and 3 as one (to make integral) so that they can be
inserted by a user into an aerosol container of Sanchez is based on
impermissible hindsight. Appeal Br. 16–17. According to Appellant,
Sanchez does not teach combining the separator, flavor segment, and mouth
end piece illustrated in Figure 3 into a single unit. Appeal Br. 17. Instead,
Appellant asserts Sanchez’s teachings as a whole would lead one skilled in
the art to expect that the separator is likely permanently positioned within
the aerosol forming cartridge, and a flavor component is either permanently
positioned with the same cartridge or the mouth end piece is separately
removable so that the flavor component may be changed out. Id. Appellant
also contends Sanchez never states that the flavor component is intended to
be inserted by a user but instead teaches that the flavor component is
included in the cartridge during manufacturing. Id. at 18. Appellant further
argues that Sanchez discloses the fragrance insert is disposable but is silent
as to the disposability of the separator and the mouthpiece. Id. Thus,
Appellant asserts that Sanchez expressly teaches against forming a single
unit of these components. Id. at 18–19.
Appeal 2021-002109
Application 14/282,768

9
We first note that claim 1 does not recite the separator, flavor
segment, and mouth end piece as a single unitary/integral piece as Appellant
argues. Appeal Br. 22. Instead, the claim recites that these components
interact with each other when placed in a second tube that forms part of the
aerosol generating device. Thus, Appellant’s arguments are unpersuasive
because Sanchez’s embodiments having separate e-cigarette major
components meets the claimed limitations. See Sanchez ¶ 28.
Assuming arguendo that the claim encompasses an integral unit of e-
cigarette components, both the Examiner and Appellant acknowledge that
Sanchez discloses embodiments comprising such integral units. Ans. 9;
Appeal Br. 16–17, Sanchez ¶ 28. While Sanchez does not explicitly disclose
combining the separator, flavor segment, and mouth end piece, Appellant
fails to explain why one skilled in the art, using no more than ordinary
creativity, would not have been capable of adapting Sanchez’s separate e-
cigarette components, such as the separator, flavor segment, and mouth end
piece, into an integral unit for use in the disclosed aerosol generating device
given Sanchez’s noted broad disclosure. See KSR, 550 U.S. at 421; see also
Sovish, 769 F.2d at 743.
Appellant argues that Sanchez does not teach the structure of the
claimed second aerosol generating arrangement. Appeal Br. 19.
Specifically, Appellant argues that Sanchez does not teach the second
aerosol generation arrangement comprises an elongate tubular body but
instead teaches a disc. Id. at 20. Appellant contends the Examiner provides
no basis for why a person of ordinary skill in the art seeking to modify
Sanchez would look outside Sanchez’s disclosure for additional teaching on
how to modify the flavor insert. Id.
Appeal 2021-002109
Application 14/282,768

10
Appellant’s arguments are unpersuasive of reversible error in the
Examiner’s determination of obviousness because they do not address the
rejection the Examiner presents. The premise of Appellant’s argument is
that the teachings Sanchez and Zhuang cannot be physically incorporated.
However, Appellant’s arguments do not address the Examiner’s reasons for
combining the references as we discuss above. Etter, 756 F.2d at 859; see
also Keller, 642 F.2d at 425.
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. 24. 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.
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. 19. 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 do not distinguish the
claimed invention from Zhuang’s aerosol generating element. While
Zhuang discloses flavoring smoke instead of an aerosol, Appellant has not
Appeal 2021-002109
Application 14/282,768

11
explained why the nature of the stream treated impacts the function of the
flavorant beads to deliver the desired flavor to either.
We have considered Appellant’s arguments throughout the Appeal
and Reply Briefs that the Examiner relies on impermissible hindsight to
combine the teachings of the cited art. See generally Appeal Br. and Reply
Br. These arguments essentially rely on the arguments we address above.
Therefore, we find these arguments unpersuasive for the reasons we give
above.
Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1,
3, 9, 10, 15, 21, 22, and 28–30 under 35 U.S.C. § 103 for the reasons the
Examiner presents and we give above.

CONCLUSION
The Examiner’s prior art rejection of claims 1, 3, 9, 10, 15, 21, 22,
and 28–30 is affirmed.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 9, 10,
15, 21, 22,
28–30
103 Sanchez, Zhuang 1, 3, 9, 10,
15, 21, 22,
28–30

Appeal 2021-002109
Application 14/282,768

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