R.J. Reynolds Tobacco Company

Patent Trials and Appeals Board

Jan 29, 2021

2020004031 (P.T.A.B. Jan. 29, 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.
14/808,450 07/24/2015 Yi-Ping Chang R60999 10850US.1
(0717.5)
9695
26158 7590 01/29/2021
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
ROSARIO-APONTE, ALBA T
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
01/29/2021 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YI-PING CHANG, MICHAEL F. DAVIS,
STEPHEN BENSON SEARS, KAREN V. TALUSKIE, and
SUSAN K. PIKE
____________

Appeal 2020-004031
Application 14/808,450
Technology Center 3700
____________

Before DANIEL S. SONG, WILLIAM A. CAPP, and
NATHAN A. ENGELS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 2, 4, 7, 8, 11–14, 19, 22, 28, 32–36, and 38–41. We
have jurisdiction under 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(a). Appellant identifies R.J. Reynolds Tobacco Company as
the Applicant and RAI Strategic Holdings, Inc. as the real party in interest.
Appeal Br. 1.
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THE INVENTION
Appellant’s invention relates to e-cigarettes. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An aerosol delivery device comprising:
an outer shell;
a radiation-trapping chamber positioned within the outer
shell and comprising a chamber wall, wherein an interior of the
chamber wall is configured as a black body or a white body;
a radiation source configured to provide radiation within the
radiation-trapping chamber.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Tao US 2011/0226266 A1 Sept. 22, 2011
Tucker US 2013/0192623 A1 Aug. 1, 2013
Kerdemelidis US 2016/0338407 A1 Nov. 24, 2016
The following rejections are before us for review:
1. Claims 1, 4, 7, 8, 13, 14, 19, 35, and 38–40 are rejected under 35
U.S.C. § 102(a)(1) as anticipated by Tucker
2. Claims 2 and 36 are rejected under 35 U.S.C. § 103 as being
unpatentable over Tucker.
3. Claims 11, 22, 28, 32–34, and 41 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Tucker and either Kerdemelidis or Tao.
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OPINION
Anticipation of
Claims 1, 4, 7, 8, 13, 14, 19, 35, and 38–40
by Tucker
Appellant argues claims 1, 4, 7, 8, 13, 14, 19, 35, and 38–40 as a
group. Appeal Br. 4–10. We select claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Tucker discloses each
limitation of claim 1. Final Act. 2.
Appellant argues that Tucker does not disclose a chamber wall that is
configured as either a black body or a white body. Appeal Br. 4. Appellant
argues that nothing in Tucker discloses a material for inner tube 62 that
exhibits “any type of radiation reflective or radiation absorptive properties.”
Id. at 6.
In response, the Examiner points out that Appellant’s Specification
defines a black body as having an emissivity greater than 0.5. Ans. 12
(citing Spec. p. 19, ll. 17–21). The Examiner finds that Tucker’s chamber
wall 62 can be made of polypropylene. Id. 11 (citing Tucker ¶ 79). The
Examiner finds that polypropylene possesses an emissivity of 0.97. Id.
at 12.
In reply, Appellant argues that Tucker never explicitly discloses that
its inner tube 62 is configured as a black body. Reply Br. 3. This argument
is, on its face, unpersuasive. See In re Gleave, 560 F.3d 1331, 1334 (Fed.
Cir. 2009) (explaining that a reference need not satisfy an ipsissimis verbis
test); see also In re Bode, 550 F.2d 656, 660 (CCPA 1977) (explaining that
while anticipation requires disclosure of each and every element of the claim
at issue in a single prior art reference, the disclosure need not be in haec
verba).
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Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims of the patent at issue. Id.
“During examination, ‘claims ... are to be given their broadest reasonable
interpretation consistent with the specification, and ... claim language should
be read in light of the specification as it would be interpreted by one of
ordinary skill in the art.”’ Id. (quoting In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation
analysis involves comparing the claims to prior art. Id. A prior art reference
anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every
claim limitation. Id.
In the Appeal Brief, Appellant construes “black body” as a surface
that absorbs all radiant energy falling on it. Appeal Br. 7 (citing
Encyclopedia Britannica). Appellant construes “white body” as a surface
that reflects all incident radiation. Id. (citing Wikipedia). However, turning
to Appellant’s own disclosure, we note that the Specification defines a
“black body” as having an emissivity of greater than 0.5. Spec. p. 19,
ll. 17–21. Similarly, the Specification defines a “white body” as having an
emissivity of less than 0.5. Id. p. 19, ll. 22–29. It is well settled that when a
patent applicant has elected to be a lexicographer by providing an explicit
definition in the specification for a claim term, such definition controls.
Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1249 (Fed.
Cir. 1998). For purposes of deciding this appeal, we will apply the
construction of “black body” and “white body” that Appellant has assigned
to such terms in the Specification. Thus, the claim limitation directed to a
chamber wall that is configured as a “black body or a white body” is
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construed, in accordance with Appellant’s Specification as encompassing
any emissivity between 0.0 and 1.0.
Tucker discloses an electronic cigarette. Tucker, Abstract. Tucker
features replaceable cartridge 70 defined axially and circumferentially by
outer tube 6. Id. ¶ 33, Fig. 1. Disposed and arranged inside of cartridge 70
are, among other things, wick 28, liquid supply reservoir 22, passages 20
and 63, and heater 14. Id. ¶¶ 33–34, Fig. 1. Heater 14 is disposed in
chamber 9 which is defined axially and circumferentially by inner tube 62.
Heater 14 is arranged to communicate with wick 28 to heat the liquid
material contained in wick 28 to a temperature sufficient to vaporize the
liquid material and form an aerosol. Id. ¶ 40. Heater 14 transfers heat to
incoming air which, in turn, heats the liquid by convection. Id. ¶ 44. In use,
liquid is transferred from supply reservoir 22 by capillary action in wick 28.
Id. ¶ 61. Heater 14 surrounds a central portion of wick 28 such that when
the heater is activated, liquid in the central portion of wick 28 is vaporized
by heater 14 to form an aerosol. Id. Inner tube 62 is formed of
polypropylene material. Id. ¶ 79.
A skilled practitioner reading Turner would understand that heat
energy emanating from heater 14 interacts with the walls of Turner’s inner
tube 62 by well-known principles of heat transfer such as convection. See
Tucker Fig. 1. Thus, the Examiner’s finding that Turner’s inner tube defines
a radiation-trapping chamber is amply supported by the record before us. Id.
Further in that regard, we note that Appellant’s Specification expressly
contemplates that its radiation-trapping chamber may be substantially
tubular. Spec. p. 3, ll. 1–2. Appellant provides no convincing explanation
or argument as to why its own tubular chamber is a “radiation-trapping”
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chamber, but Tucker’s similarly shaped and similarly situated tubular
chamber is not.
Having reviewed Turner and the Examiner’s findings regarding
Turner, we do not find Appellant’s black body argument persuasive.
Claim 1 merely requires that the inner wall of the claimed chamber is
configured as either a black body or a white body. Claims App.
Considering that claim 1 is broad enough to encompass a chamber wall with
any and all levels of emissivity from 0.0 to 1.0, Appellant fails to convincing
explain how any e-cigarette chamber wall made of polypropylene is not
either a black body or a white body as defined by Appellant in its
Specification. In the instant case, the Examiner finds that Tucker’s
polypropylene chamber wall is configured as a black body. Ans. 11–12.
That finding is supported by a preponderance of the evidence. However,
even if Tucker’s wall is not a black body (it is), it is a near certainty that
Tucker’s chamber wall is either a black body or a white body and, therefore,
satisfies the claim limitation.
Appellant next argues that Tucker teaches that proximity of the wick
to the heater is the key factor in causing vaporization. Appeal Br. 8.
Appellant argues that, if Tucker’s inner tube 62 absorbed or reflected a
substantial amount of heat from heater 14, such would reduce the efficiency
of heater 14. Id. From this, Appellant concludes that Tucker cannot be seen
as disclosing that the inner tube is configured as a black body or a white
body. Id. However, this argument is speculative, ignores the claim
language as defined by the Specification, and flies in the face of well-known
scientific principles of energy absorption and reflection. At least some of
the electromagnetic energy radiating from Turner’s heater 14 will either be
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absorbed by or reflected from the wall of inner tube 62. Appellant provides
no persuasive evidence or explanation as to how a chamber wall made of a
solid material such as polypropylene would neither absorb nor reflect
energy.
Appellant also argues, in essence, that Tucker’s disclosure of
polypropylene as a raw material is not determinative of whether Tucker’s
chamber wall has an emissivity of greater than .50. Appeal Br. 3–4.
According to Appellant, Tucker merely discloses that polypropylene is one
“possible” material to be used for inner tube 62.
Tucker does not require that its inner tube (62) is formed of
polypropylene. Thus, at most, the examiner has pointed out a
possible outcome . . . of Tucker - i.e., that the inner tube (62)
possibly may be formed from polypropylene.
Appeal Br. 4. This argument is not persuasive. Tucker discloses a plurality
of embodiments which are made from “suitable materials.” Tucker ¶ 79.
One of those “suitable” materials is polypropylene. Id. The Examiner’s
rejection is based on the embodiment made of polypropylene. Final Act. 2.
We need not concern ourselves with alternative embodiments made of other
suitable materials. It is sufficient for purposes of reviewing the Examiner’s
rejection that the polypropylene embodiment satisfies the claim limitation in
question.
We have considered Appellant’s other arguments concerning claim 1
and find them to be unpersuasive. The Examiner’s rejection is supported by
a preponderance of the evidence. Accordingly, we sustain the Examiner’s
anticipation rejection of claims 1, 4, 7, 8, 13, 14, 19, 35, and 38–40.
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Unpatentability of Claims 2 and 36
over Tucker
Claim 2 depends from claim 1 and adds the limitation: “wherein the
radiation-trapping chamber is spherical.” Claims App. Claim 36 depends
from independent claim 35 and adds a similar limitation. Id. The Examiner
considers the spherical shape of the chamber to be a matter of design choice.
Final Act. 5.
Appellant argues the spherical chamber limitation in traverse of the
rejection of independent claim 22. Appeal Br. 10–12. Appellant argues that
using a spherical shape for the chamber facilitates trapping radiation. Id.
at 11. According to Appellant, this results in expenditure of less energy to
operate the device. Id.
In response, the Examiner points out that Appellant’s Specification
teaches that the chamber may take on a variety of shapes other than
spherical. Ans. 14 (citing Spec. 18, ll. 24–26).
Although the Examiner is correct that Appellant’s Specification
teaches that the chamber can assume a variety of shapes, the claim before us
is limited to spherical chambers. Claims App. For purposes of the rejection
before us, we need not be concerned with the patentability of embodiments
that have different shapes. Here, the Examiner oversimplifies the matter by
just looking at the cited passage. Appellant’s Specification, in an expanded
context, teaches the following:
An atomizer according to the present disclosure can be
defined in some embodiments by a chamber within which the
radiation is emitted and from which vaporized aerosol precursor
composition may be released. When a laser radiation source in
particular is utilized, the chamber may be reduced in size
because of the ability to focus the radiation energy and avoid
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energy losses. Thus, the desired amount of vapor may be
produced from a smaller volume since less energy is wasted . . .
The chamber may take on a variety of shapes. For example,
the chamber may be substantially spherical. Multifaceted
structures may also be utilized. In some embodiments, the
chamber may be substantially elongated (e.g., tubular).
Chamber shape (optionally in combination with the airflow
path through and/or around the chamber) can enhance not only
the energy absorption but also vapor elution.
The chamber can, in some embodiments, be a radiation-
trapping chamber. The chamber preferentially is configured to
maximize the capture and/or release of incident radiation on
the chamber walls. As such, the interior of the wall(s) forming
the chamber can be configured to one or more of absorb, emit,
and reflect radiation from the radiation source.
Spec. p. 18, l. 9 – p. 19, l. 1 (emphasis added). Thus, in context, Appellant
teaches that there are advantages to using a spherical chamber in terms of
energy efficiency and space reduction. This contradicts the unfounded
allegations of the Examiner in the Final Action that Appellant fails to
disclose that using a spherical chamber solves a problem, is for any
particular purpose, or the device would perform equally well with a
cylindrical chamber. Final Act. 5. A finding of obvious design choice is
precluded where the claimed structure and the function that it performs are
different from the prior art. In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995)
citing In re Gal, 980 F.2d 717, 719-20 (Fed. Cir. 1992).
The Examiner’s “design choice” finding constitutes reversible error.
We do not sustain the Examiner’s unpatentability rejection of claims 2
and 36.
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Unpatentability of Claims 11, 22, 28, 32–34, and 41
over Tucker and either Kerdemelidis or Tao
Claims 22, 28, and 32–34
Claim 22 is an independent claim. Claims App. Claims 28 and 32–34
depend therefrom.2 Id. Claim 22 contains a limitation similar to that of
claim 2 directed to a spherical chamber. Id. As with claim 2, the Examiner
finds that modifying Tucker to have a spherical chamber is a matter of
obvious design choice. Final Act. 7.
The Examiner’s finding and conclusion that modifying Tucker to have
a spherical chamber is a matter of design choice is as much in error with
respect to claims 22, 28, and 32–34 as it is with respect claims 2 and 36. For
reasons previously expressed, we do not sustain the Examiner’s
unpatentability rejection of claims 22, 28, and 32–34.
Claims 11 and 41
Claim 11 depends directly from claim 1 and claim 41 depends directly
from claim 35. Claims App. Both claims add limitations directed to using a
laser diode as the radiation source. Id. The Examiner relies on each of
Kerdemelidis and Tao as satisfying such limitation. Final Act. 5–6.
Appellant does not argue for the separate patentability of claims 11
and 41 apart from arguments presented with respect to claim 1 and 35 which
we have previously considered. We sustain the Examiner’s rejection of
claims 11 and 41. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately
argue claims constitutes a waiver of arguments for separate patentability).

2 Claims 28 and 32–34 recite that they depend from claim 27, which is
cancelled. Claims App. For purposes of this appeal, we will analyze these
claims as if they depend from claim 22. Appellant is admonished to make
an appropriate amendment to these claims after this appeal is concluded.
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CONCLUSION
Claims
Rejected
§ References Affirmed Reversed
1, 4, 7, 8, 13,
14, 19, 35,
38–40
102 Tucker 1, 4, 7, 8, 13, 14, 19, 35,
38–40

2, 36 103 Tucker 2, 36
11, 22, 28,
32-34, 41
103 Tucker, Kerdemelidis, Tao 11, 41 22, 28,
32-34
Overall
Outcome
1, 4, 7, 8, 11,
13, 14, 19,
35, 38-41
2, 22, 28,
32-34, 36

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 IN PART