R.J. REYNOLDS TOBACCO COMPANY

Patent Trials and Appeals Board

Mar 1, 2022

2021003457 (P.T.A.B. Mar. 1, 2022)

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. 14/928,584 10/30/2015 Rodney Owen Williams R60999 11080US.1 (0775.2) 8370 26158 7590 03/01/2022 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER DODSON, JUSTIN C ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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 RODNEY OWEN WILLIAMS, RAYMOND CHARLES HENRY JR., WILSON CHRISTOPHER LAMB, and FREDERIC PHILIPPE AMPOLINI Appeal 2021-003457 Application 14/928,584 Technology Center 3700 Before JENNIFER D. BAHR, JEREMY M. PLENZLER, and MICHAEL L. WOODS, Administrative Patent Judges. PLENZLER, 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 reject claims 1, 3-10, and 12-20, which constitute all the claims pending in this application. Claims 2, 11, and 21 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as RAI Strategic Holdings, Inc. Appeal Br. 1. Appeal 2021-003457 Application 14/928,584 2 We REVERSE and enter a NEW GROUND OF REJECTION in accordance with 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The claims relate to an aerosol delivery device and method. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An aerosol delivery device comprising: at least one housing defining a reservoir configured to retain an aerosol precursor composition; a heating element contained within the at least one housing; an application specific integrated circuit (ASIC) contained within the at least one housing and configured to: manage a battery that is configured to power the aerosol delivery device based on an input from a microprocessor of the aerosol delivery device, output a signal indicating detection of a flow of air through at least the portion of the housing based at least in part on an input from a flow sensor, cause activation of the heating element to vaporize components of the aerosol precursor composition in response to detection of the flow of air, and control a power level of the heating element based on a signal input to the ASIC independent of the flow sensor; and the microprocessor contained within the at least one housing, external to the ASIC and operatively coupled to the ASIC, in at least one instance the microprocessor being configured to receive the signal output from the ASIC indicating detection of the flow of air, and in response, the microprocessor being configured to awaken from an inactive state. Appeal 2021-003457 Application 14/928,584 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Blake US 2003/0226837 A1 Dec. 11, 2003 Ampolini ’782 US 2014/0096782 A1 Apr. 10, 2014 Ampolini ’727 US 2014/0270727 A1 Sept. 18, 2014 Xiang US 2014/0360512 A1 Dec. 11, 2014 Sullivan US 2015/0257447 A1 Sept. 17, 2015 Henry US 2015/0258289 A1 Sept. 17, 2015 Shekar WO 2015/107552 A1 July 23, 2015 REJECTIONS Claims 1, 3-10, and 12-20 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Claims 1, 3, 7-10, 12, 13, and 17-19 are rejected under 35 U.S.C. § 103 as being unpatentable over Shekar and Ampolini ’727. Claims 4 and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Shekar, Ampolini ’727, and Ampolini ’782. Claims 5, 6, 15, and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Shekar, Ampolini ’727, Ampolini ’782, and Sullivan. Claims 10 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Shekar et al. (WO2015/107552), hereinafter Shekar, in view of in view of Shekar, Ampolini ’727, and Henry. OPINION Indefiniteness-New Ground of Rejection Independent claim 1 requires “an application specific integrated circuit (ASIC) . . . configured to control a power level of the heating element based on a signal input to the ASIC independent of the flow sensor.” Appeal 2021-003457 Application 14/928,584 4 Independent claim 12 similarly requires “controlling a power level of the heating element based on a signal input to the ASIC independent of the flow sensor.” The meaning of the quoted language from each of these claims is central to both the written description rejection and the obviousness rejections. Appellant and the Examiner disagree as to the meaning of the phrase noted above. See, e.g., Appeal Br. 12-16; Ans. 9-14. In response to the written description rejection, for example, Appellant contends that “[t]he broadest reasonable interpretation of the claims would allow the phrase ‘independent of the flow sensor’ to modify the term ‘input’ within the clause ‘input to the ASIC’, which in turn describes the ‘signal,’” and “[t]hus, ‘independent of the flow signal’ describes the way in which the ‘signal’ was ‘input to the ASIC.’” Appeal Br. 12. That is, according to Appellant, the signal simply must not be input directly from the flow sensor, but may be input via a different mechanism, such as a microprocessor. Id. In response to the obviousness rejection, however, Appellant appears to take the position that the claims prohibit use of the flow sensor to control the power level of the heating element. See Reply Br. 4-5. Based on Appellant’s contentions, and the plain language of the claims, it is unclear whether the claim allows for use of the flow sensor to control the power level of the heating element. Under one interpretation, for example, the claim could allow use of the flow sensor as long as the signal is not provided directly from the sensor to the ASIC (Appellant’s example using the microprocessor noted above). In another interpretation, for example, the claim could prohibit any flow sensor input (direct or indirect) from being used to control the power level of the heating element. And in Appeal 2021-003457 Application 14/928,584 5 yet another example, the control being “based on a signal input to the ASIC independent of the flow sensor” could simply mean that some other signal independent of the flow sensor is used for heating element control, while not precluding use of an additional signal (provided directly or indirectly) from the flow sensor. Appellant points to pages 28-29 of its Specification as written description support for the claim language noted above. See Appeal Br. 10 (“As described in the specification of the present Application, as originally filed, the controlled power heater block 704 of the ASIC ‘may ... receive a voltage input and direct power to the heater ... in which different heater power levels may be signaled via various signal inputs”.). Pages 28-29 of the Specification support more than one signal being used for heater power level control. Other portions of the Specification support using the flow sensor signal to control heater power levels. See Spec. 23-26. The original claims also include heater power level regulation using the flow sensor. Original claim 9, for example, recites that “the flow sensor interface block further includes a power regulation subsidiary block coupled to the sensor subsidiary block and configured to, in at least one instance, control the heating element.” Id. at 35. Based on the record before us, it is fair to require Appellant to more clearly specify what its claims intend to prevent others from practicing. A claim is properly rejected as indefinite if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam); see also Ex parte McAward, Appeal No. 2015-006416, 2017 Appeal 2021-003457 Application 14/928,584 6 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). The claims are sufficiently unclear, for the reasons explained above, to warrant a rejection under 35 U.S.C. § 112(b) as being indefinite. Appellant has the opportunity to resolve ambiguities during prosecution. See, e.g., McAward, at *6-7. For the reasons set forth above, we reject claims 1, 3-10, and 12-20 under 35 U.S.C. § 112(b) as being indefinite. Written Description The Examiner’s rejection of the claims as lacking written description support relates to the limitation discussed above in the indefiniteness rejection. We do not reach the written description rejection at this time, as the outcome of that rejection ultimately depends on how the indefiniteness rejection is resolved. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (“Once having determined that the subject matter defined by the claims is particular and definite, the analysis then turns to the first paragraph of section 112 to determine whether the scope of protection sought is supported and justified by the specification disclosure.”); see also In re Walter, 698 F. App'x 1022, 1027 (Fed. Cir. 2017) (“Having determined that claims . . . are indefinite, we do not reach the issue of whether they are also unpatentable for failing to comply with the written description requirement under 35 U.S.C. § 112, first paragraph.”). Obviousness Our ability to address the Examiner’s obviousness rejections is also affected by the indefiniteness issue discussed above. Because we determine Appeal 2021-003457 Application 14/928,584 7 the claims to be indefinite, and addressing the rejection would require speculation on our part as to what is actually required by the claims, we do not reach the merits of the rejection of claims 1, 3-10, and 12-20. Instead, we reverse those rejections. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). It should be understood that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. CONCLUSION The Examiner’s rejection under 35 U.S.C. § 112(a) is not reached. The rejection under 35 U.S.C. § 103 is reversed. We enter a new ground of rejection for all claims under 35 U.S.C. § 112(b). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 3-10, 12-20 112(a) Written Description2 1, 3, 7- 10, 12, 13, 17- 19 103 Shekar, Ampolini ’727 1, 3, 7- 10, 12, 13, 17-19 2 We do not reach this rejection. Appeal 2021-003457 Application 14/928,584 8 4, 14 103 Shekar, Ampolini ’727, Ampolini ’782 4, 14 5, 6, 15, 16 103 Shekar, Ampolini ’727, Ampolini ’782, Sullivan 5, 6, 15, 16 10, 20 103 Shekar, Ampolini ’727, Henry 10, 20 1, 3-10, 12-20 Indefiniteness 1, 3-10, 12-20 Overall Outcome 1, 3-10, 12-20 1, 3-10, 12-20 TIME PERIOD FOR RESPONSE Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. Appeal 2021-003457 Application 14/928,584 9 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). REVERSED; 37 C.F.R. § 41.50(b)