IN THE UNITED STATES PATENT AND TRADEMARK …fishpostgrant.com/wp-content/uploads/IPR2015-00072...Bao is directed to a portable machine for filling hollow cigarette tubes with tobacco

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In the Inter Partes Review of: Trial Number: To Be Assigned

U.S. Patent No. 8,261,752 Attorney Docket No.: 186512-4595US

Issued: September 11, 2012 Petitioner: Republic Tobacco, L.P.

Inventor: Fan BAO Panel: To Be Assigned

Assignee: None

Title: CRANK TYPE AUTOMATIC CIGARETTE TUBE INJECTOR

PETITION FOR INTER PARTES REVIEW OF

U.S. PATENT NO. 8,261,752

i

TABLE OF CONTENTS

I. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) ........................................................ 1

Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) ................................................ 1 A. Related Matters (37 C.F.R. § 42.8(b)(2)) ......................................................... 1 B. Lead and Back-Up Counsel and Power of Attorney (37 C.F.R. C.

§ 42.8(b)(3) and 42.8(b)(4)).............................................................................. 1

Service of Information (37 C.F.R. § 42.8(b)(4)) .............................................. 2 D.

II. PAYMENT OF REVIEW AND OTHER FEES ............................................................... 2

III. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a) ....................................... 2

IV. EXPERT DECLARATION ............................................................................................... 2

V. STATEMENT OF RELIEF REQUESTED ....................................................................... 3

VI. IDENTIFICATION OF GROUNDS OF UNPATENTABILITY (37 C.F.R.

§42.104) ............................................................................................................................. 3

VII. BACKGROUND ............................................................................................................... 3

Bao Subject Matter ........................................................................................... 3 A. Prior Art ............................................................................................................ 4 B.

1. References Relied Upon ........................................................................ 4

2. Relationship of References to Bao ........................................................ 5

a. Bao Design Objectives .............................................................. 5

b. Design Objectives of Moser, Kastner, Chen and Brown ........... 6

VIII. DETAILED DESCRIPTION OF BAO .............................................................................. 7

Specification ..................................................................................................... 7 A.1. Coined Claim Terms ............................................................................. 8

2. Tobacco Cavity and Housing Length .................................................... 9

3. Mechanism For Manual First Step ...................................................... 10

4. Automatic Feeding Mechanism .......................................................... 12

5. Overall Operation ................................................................................ 13

Prosecution History ........................................................................................ 14 B.1. Preliminary Amendment ..................................................................... 14

2. Response to First Office Action .......................................................... 15

IX. DETAILED DESCRIPTION OF PRIOR ART RELIED UPON .................................... 20

Moser (Exh. 1004) ......................................................................................... 20 A. Chen (Exh. 1006) ........................................................................................... 23 B. Kastner (Exh. 1005)....................................................................................... 24 C. Brown (Exh. 1010).......................................................................................... 25 D.

ii

Relationship of Moser, Chan, Kastner and Brown to Art Cited in E.Prosecution of Bao .......................................................................................... 26

Challenged Claims .......................................................................................... 27 F.

X. CLAIM-BY-CLAIM DETAILED EXPLANATION OF GROUNDS OF

UNPATENTABILITY .................................................................................................... 27

Claim Construction ......................................................................................... 27 A.1. Person of Ordinary Skill in the Art ..................................................... 27

2. Coverage of Independent Claim 1....................................................... 28

Ground 1: Claim 1 is Obvious Over Moser ................................................... 29 B.1. Claim 1 Features ................................................................................. 29

a. Automatic cigarette tube injector ............................................ 29

b. Tobacco cavity and feeding opening for cigarette tube ........... 30

c. Housing is less than two cigarette tubes in length ................... 30

d. Electric motor .......................................................................... 31

e. Motor arrangement automatically feeds tobacco through feeding opening to cigarette tube ............................................. 31

f. Longitudinally supported motor driven tobacco feeder .......... 32

g. Member for retaining tobacco leaves from tobacco cavity ..... 32

h. Feeding member slides perpendicularly to injection direction and couples with retention member to form tubular tobacco chamber .......................................................... 32

i. Reciprocating unit transmits motor rotation to sliding movement of tobacco feeder .................................................... 32

j. Tobacco feeder moves linearly and longitudinally out of feeding opening and into cigarette tube ................................... 33

k. Tobacco feeder is longitudinally received in housing to minimize housing length to less than two tube lengths ........... 33

Ground 2: Claim 1 is Obvious Over Chen. ................................................... 36 C.1. Claim 1 Features ................................................................................. 36




d. Electric motor .......................................................................... 37






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Ground 3: Claim 1 is Obvious Over Kastner in View of Moser .................... 42 D.1. Motivation to Combine Kastner with Moser ...................................... 42

2. Claim 1 Features ................................................................................. 44




d. Electric motor .......................................................................... 45








Dependent Claims 2-25 are Obvious Over Chen, Kastner and Brown .......... 51 E.

XI. CONCLUSION ................................................................................................................ 60

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EXHIBIT LIST (37 CFR §42.63 (e))

EXHIBITS CITED IN PETITION FOR INTER PARTES REVIEW OF BAO

(U.S. PATENT NO. 8,261,752)

Exhibit No. Brief Description

1001 Bao (U.S. Patent No. 8,261,752)

1002 Bao application (U.S. Application No. 12/584, 110)

1003 Bao prosecution history

1004 Moser reference (U.S. Application No. 11/312,782)

1005 Kastner reference (U.S. Patent No. 5,088,506)

1006 Chen reference (Chinese Utility Model No. CN201138314Y)

1007 Patel reference (U.S. Patent No. 7,905,235)

1008 Chaze reference (U.S. Patent No. 2,551,095)

1009 Declaration of Dr. Steven R. Schmid

1010 HARRY T. BROWN, FIVE HUNDRED AND SEVEN MECHANICAL

MOVEMENTS, 42-43 (New York, Brown & Seward, 18th ed.

1896)

1011 Parsed Bao claim language

1012 Steven R. Schmid Curriculum Vitae

1013 Steven R. Schmid expert testimony dates

Republic Tobacco, L.P. (“Petitioner”) submits this petition for inter partes

review of claims 1-25 of U.S. Patent No. 8,261,752 to Fan Bao, titled “Crank Type

Automatic Cigarette Tube Injector” (“Bao”). Bao is attached as Exh. 1001.

I. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1))

Real Party-in-Interest (37 C.F.R. §§§§ 42.8(b)(1)) A.

Republic Tobacco, L.P. is the real party-in-interest.

Related Matters (37 C.F.R. § 42.8(b)(2)) B.

Bao is presently the subject of a patent infringement lawsuit filed by Fan

Bao and his purported exclusive licensee, Zico USA, Inc. The lawsuit is captioned

Fan Bao and Zico USA, Inc. v. Republic Tobacco, LP, C.D. of California, No.

2:14-cv-03655, filed May 13, 2014 and was served June 6, 2014. That case may

affect, or be affected by, decisions made in this proceeding.

Lead and Back-Up Counsel and Power of Attorney (37 C.F.R. C.

§§§§ 42.8(b)(3) and 42.8(b)(4))

Lead Counsel for Republic Back-Up Counsel for Republic

Barry W. Sufrin Registration No. 27,398 Drinker Biddle & Reath LLP 191 N. Wacker Drive, Suite 3700 Chicago, IL 60606 Telephone: 312-569-1489 Fax: 312-569-3489 Email: [email protected]

Carrie A. Beyer Registration No. 59,195 Drinker Biddle & Reath LLP 191 N. Wacker Drive, Suite 3700 Chicago, IL 60606 Telephone: 312-569-1487 Fax: 312-569-3487 Email: [email protected]

2

Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney with designation of

counsel accompanies this Petition.

Service of Information (37 C.F.R. § 42.8(b)(4)) D.

Service information is provided in the designation of counsel above.

II. PAYMENT OF REVIEW AND OTHER FEES

The undersigned authorizes the Office to charge $28,000 to Deposit Account

No. 070181 for the fees set forth in 37 C.F.R. § 42.15(a) ($10,000 for the Inter

Partes Review request fee for 25 claims; $18,000 for the Inter Partes Review Post-

Institution fee) for this Petition for Inter Partes Review.

Payment of any additional fees due in connection with this Petition may be

charged to Deposit Account No. 070181.

III. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)

Petitioner certifies that Bao is available for inter partes review and that

Petitioner is not barred or estopped from requesting inter partes review challenging

the claims of Bao on the grounds identified herein.

IV. EXPERT DECLARATION

This petition is supported by the declaration of Dr. Steven R. Schmid (Exh.

1009) which provides his credentials, defines a person having ordinary skill in the

art in the context of Bao and applies that definition, describes the prior art that

Petitioner is relying upon, provides claim charts (which are also included and

3

addressed below) with underlying facts and data supporting petitioner’s invalidity

positions, and expresses his opinion regarding invalidity of Bao.

V. STATEMENT OF RELIEF REQUESTED

Republic seeks a final, written decision that claims 1-25 of Bao are

unpatentable as anticipated under pre-AIA 35 U.S.C. § 102(a) or obvious under

pre-AIA 35 U.S.C. § 103(a).

VI. IDENTIFICATION OF GROUNDS OF UNPATENTABILITY

(37 C.F.R. §42.104)

• Ground 1: Cancellation of claim 1 under 35 U.S.C. §103(a) as

obvious over Moser.

• Ground 2: Cancellation of claim 1 under 35 U.S.C. §103(a) as

obvious over Chen.

• Ground 3: Cancellation of claim 1 under 35 U.S.C. §103(a) as being

obvious over Kastner in view of Moser.

• Ground 4: Cancellation of dependent claims 2-25 under 35 U.S.C.

§103(a) as being obvious over Chen, Kastner and Brown.

VII. BACKGROUND

Bao Subject Matter A.

Bao is directed to a portable machine for filling hollow cigarette tubes with

tobacco to make cigarettes. Exh. 1001 at col. 2, l. 39 and col. 4, l. 21-25; Exh.

1009 at 18. The Bao device is partially automatic in that, after the tobacco is

4

placed in a tobacco-receiving cavity, it is compressed into a cylindrical shape by

manually operating an external handle that drives a compactor (called a “feeding

member” in Bao) against an arc-shaped retention member resting in the cavity to

capture and compress the tobacco into a cylindrical shape. Exh. 1001 at col. 5, l.

40-51 and col. 4, l. 21-28; Exh. 1009 at 21. This cylindrically-shaped compressed

tobacco is injected into the hollow tube automatically by triggering an electric

motor that drives a tobacco feeder perpendicularly to the direction of travel of the

compactor to carry the compressed tobacco from the tobacco-receiving cavity

through a feeding opening into the cigarette tube. Exh. 1001 at col. 6, l. 30-51;

Exh. 1009 at 22.

Prior Art B.

1. References Relied Upon

Reference No./Title Inventor Publication Exh.

Moser US 2006/0096604:

“Device for filling a

cigarette”

Moser et al. May 11, 2006 1004

Kastner US 5,088,506:

“Portable manually

operable cigarette-

making machine”

Arnold Kastner Feb. 18, 1992 1005

5

Chen CN201138314Y:

“Tobacco shred filling

machine . . . ”

Chen et al. Oct. 22, 2008 1006

Brown Five Hundred and

Seven Mechanical

Movements

1896 1010

2. Relationship of References to Bao

a. Bao Design Objectives

Bao addresses the following design objectives that were met by cigarette-

making machines well-known for many years before the filing of the application

for Bao:

a. Manual compaction of tobacco placed in an open cavity (Exh. 1001 at

col. 6, l. 33-38; Exh. 1009 at 23);

b. Transfer of the compacted tobacco to a hollow tube perpendicularly to

the compaction direction (Exh. 1001 at col. 5, l. 40-51; Exh. 1009 at 23);

c. Use of a motor driven reciprocating unit to automatically transfer the

compacted tobacco to the tube (Exh. 1001 at col. 6, l. 40-49; Exh. 1009 at 23);

and

6

d. Cigarette machine size less than two cigarette tube in length (Exh.

1001 at col. 3, l. 59-60; Exh. 1009 at 23).

b. Design Objectives of Moser, Kastner, Chen and

Brown

Moser, Kastner and Chen are representative of prior art cigarette-making

machines that meet the Bao design objectives. Exh. 1004, 1005, 1006 and 1009 at

27. The cigarette-making machines that they describe include: A) cavities for

receiving loose tobacco, B) manually operated compacting members that move

across the tobacco in the cavity to compress the tobacco into a cylinder, and

C) manual and motorized tobacco feeders that transport the compressed tobacco

cylinder perpendicularly to the direction of movement of the compacting member

through a feeding opening into a hollow cigarette tube to fill the tube and prepare a

completed cigarette. Exh. 1004, 1005, 1006 and 1009 at 17.

In Kastner the compressing and injecting mechanisms operate manually

whereas Moser and Chen are automatic because after handle-controlled

mechanisms are manually operated to compress the tobacco (as in Bao), they

employ motor-driven reciprocating units to linearly move tobacco feeders to

automatically inject the compressed tobacco into cigarette tubes. The machines

described in Moser and Chen are less than two cigarette tube lengths in length.

Additionally the fully-manual Kastner machine could be readily converted to

7

automatic operation to make it faster and more convenient to use by motorizing its

injection mechanism and employing the Brown mechanism to convert circular

motor motion to linear tobacco injection. Exh. 1004, 1005, 1006 and 1009 at 28-

31.

VIII. DETAILED DESCRIPTION OF BAO

Bao is titled “Crank Type Automatic Cigarette Tube Injector” and was

issued September 11, 2012 from U.S. Application No. 12/584, 110, and is attached

as Exh. 1001. Bao claims priority from U.S. Provisional Application No. 61/209,

953 (the ’953 provisional), filed March 11, 2009 which is attached as Exh. 1002.

Specification A.

Bao describes an automatic cigarette tube device for injecting tobacco into

cigarette tubes in a two-step process. In an initial manual step, loose tobacco

leaves are placed in a tobacco cavity and a manual actuator is operated to cause a

“feeding member” to compress the tobacco into a cylindrical shape. Exh. 1009 at

col. 6, l. 32-33. This compressed tobacco cylinder rests on a holder (referred to as

“a retention member”) of a slidably supported driving member. Exh. 1001 at col.

5, l. 40-51.

In the next step, an electric motor is activated to transport the driving and

retention members to a second position as the compressed tobacco cylinder is

8

pushed through a feeding opening into a hollow cigarette paper tube affixed to the

feeding opening. Exh. 1001 at col. 6, l. 39-51.

The exterior of the tube injector of Bao is depicted in FIG.1:

1. Coined Claim Terms

The following claim terms were coined by the Bao applicant, acting as his

own lexicographer:

Claim Term Meaning Specification

feeding

crank/tobacco

feeder

structure to push compressed

tobacco into cigarette tube.

Exh. 1009 at 24A.

tobacco feeder 31 is a feeding

crank with a driving member

311 that reciprocates across

tobacco cavity 11 to push

tobacco into cigarette tube.

Exh. 1001 at col. 4, l. 29-45.

9

Claim Term Meaning Specification

retention

member

member that retains tobacco

within a tobacco cavity before

it passes through feeding

opening into a cigarette tube.

Exh. 1009 at 24A.

retention member 313 retains

tobacco leaves 40 within

tobacco cavity 11, and passes

through feeding opening 12 to

enter cigarette paper tube 50.

Exh. 1001 at col. 4, l. 65 to

Col. 5, l. 2.

feeding

member

member that compacts loose

tobacco into cylinder. Exh.

1009 at 24A.

feeding member 32 pushes

tobacco leaves 40 towards

retention member 313 to form

tobacco cylinder. Exh. 1001 at

col. 5, l. 40-44.

2. Tobacco Cavity and Housing Length

FIG. 1 above illustrates tobacco cavity 11 for receiving loose tobacco in the

first step of operating the device before the tobacco is compressed and includes

cigarette tube 50 to receive the compressed tobacco.

An unlabeled filter is shown at the distal end of tube 50. Bao states that:

a longitudinal length of the housing 10 is lesser(sic) than two cigarette

lengths of the cigarette paper tube 50.

10

Exh. 1001 at col. 4, l. 59-60. It also calls for the following relationship between

the tobacco cavity length and the tube length:

The length of the tobacco cavity 11 is around the length of the

cigarette paper tube 50.

Exh. 1001 at col. 3, l. 50-51. Bao thus establishes a 1:1 relationship between the

length of the tobacco cavity and the total length of the cigarette tube including the

empty tobacco-receiving portion and the filter at its distal end.

3. Mechanism For Manual First Step

The initial manual step of operating the Bao device is illustrated below in

sectional views in the order of FIGS. 2, 4 and 3.

In FIG. 2, cigarette tube injector feeding member 32 is retracted before

tobacco is placed in tobacco cavity 11. In FIG. 4 tobacco leaves 40 are disposed in

tobacco cavity 11 between arc-shaped retention member 313 and arc-shaped

feeding wall 321 of feeding member 32. Finally, in FIG. 3, handle 341 is rotated

downwardly to advance feeding member 32 to compress the tobacco between

retention member 313, and feeding wall 321 and retention member 313 form a

compressed tobacco cylinder. Exh. 1001 at col. 5, l. 40-44. This compressed

tobacco cylinder, which is not shown in the figures, would reside in tubular

chamber 35 of FIG.3. Exh. 1001 at col. 5, l. 40-64 and col. 6, l. 16-29.

11

Feeding member 32 is driven by manual actuator 34 to slide along guiding

compartment 14 perpendicularly to the direction of the injection of the tobacco

cylinder into hollow tube 50. Exh. 1001 at col. 5, l. 48-51. The actuator is

operated by handle member 341 and push unit 342 which is pivotally coupled to

housing 10. Exh. 1001 at col. 6, l. 16-20. Thus, manually pressing handle member

341 drives feeding wall 321 of feeding member 32 toward arc-shaped retention

12

member 313 of driving member 311 to form the tobacco cylinder. Exh. 1001 at

col. 6, l. 20-29. The feeding wall of the feeding member and the retention member

are matched semicircular shapes so that when they meet edge-by-edge they form a

tubular chamber 35 (FIG. 3), which presses tobacco leaves 40 into the tobacco

cylinder that will be injected into cigarette tube 50. Exh. 1001 at col. 5, l. 52-65.

4. Automatic Feeding Mechanism

The automatic feeding mechanism can be understood from FIGS. 5 and 6:

Reciprocating unit 33 has a transmission wheel 331 coupled to the output

shaft 21 of electric motor 20. The transmission wheel has an eccentric shaft 3311

located at its edge as well as a connecting arm 332 rotatably connected to

transmission arm 333 through two pivots. Transmission arm 333 has one end

pivotally connected to the housing and the other end pivotally connected to

connecting arm 332, and transmission arm 333 has a transmitting slot 334 slidably

13

coupled with eccentric shaft 3311. When transmission wheel 331 is rotated by

motor output shaft 21, eccentric shaft 3311 drives transmission arm 333 causing

driving member 311 to move linearly along sliding compartment 13. Col. 5, l. 9-

39.

When electric motor 20 is activated its output shaft 21 drives cigarette filling

arrangement 30 to automatically transport the compacted cylinder of tobacco 40

through feeding opening 12 into cigarette tube 50. As a result:

the rotating movement of the output shaft 21 is transmitted into linear

movement of the driving member 311 between the first position and

the second position.

Exh. 1001 at col. 5, l. 36-39. This conversion of rotary movement of motor shaft

21 to linear sliding movement of driving member 311 causes the driving member

to move between a first position at one end of sliding compartment 13 and a

second position at the opposite end of the sliding compartment by operation of

reciprocating unit 33. Exh. 1001 at col. 4, l. 30-51.

5. Overall Operation

A user wishing to inject a cigarette tube with tobacco using this device first

loads a hollow cigarette paper tube 50 onto tubular holder 121 and places tobacco

leaves 40 into tobacco cavity 11. Exh. 1001 at col. 6, l. 32-34. The user then pulls

handle member 311 down to manually form a compressed tobacco cylinder. Exh.

14

1001 at col. 6, l. 34-38. Then, the user presses start button 50 (FIG. 1) whereupon

electric motor 20 rotates transmission wheel 331 to move driving member 341

from its first position to its second position, pushing the tobacco cylinder 40 into

cigarette paper tube 50. Exh. 1001 at col. 6, l. 38-51. The driving member then

returns to the first position. Exh. 1001 at col. 7, l. 30-31.

Prosecution History B.

The prosecution history of the application for Bao is attached as Exh. 1003.

This application, which was filed August 31, 2009, included one independent

claim (claim 1) and 24 dependent claims. Exh. 1003 at 15-18.

1. Preliminary Amendment

A Preliminary Amendment was filed (Exh. 1003 at p. 60-67) in which

independent claim 1 was amended to read:

Claim 1: An automatic cigarette tube injector for injecting

tobacco leaves into a hollow cigarette paper tube, comprising:

a housing having a tobacco cavity for said tobacco leaves

disposing thereat and a feeding opening for said cigarette paper tube

alignedly supporting thereat, wherein a length of said housing is lesser

than two cigarette lengths of said cigarette tube;

an electric motor, having an output shaft, received in said

housing; and

a cigarette filling arrangement, which is driven by said electric

motor via said output shaft for automatically feeding said tobacco

15

leaves to said cigarette paper tube through said feeding opening of

said housing, wherein said cigarette filling arrangement comprises:

a tobacco feeder driven by said output shaft

a retention member for retaining said tobacco leaves from said

tobacco cavity; and

a feeding member slidably supported in said housing along a

direction perpendicularly to said injection direction, wherein said

tobacco feeder is able to be slid to couple with said retention member

to form a tubular chamber for holding said tobacco leaves therein such

that said tobacco feeder is able to be driven to push towards said

feeding opening of said housing for feeding said tobacco leaves into

said cigarette paper tube.

2. Response to First Office Action

A First Office Action issued in the prosecution of Bao on February 15, 2012.

Exh. 1003 at 41-51. It rejected independent claim 1 under 35 U.S.C. §103(a) in

view of the teaching of U.S. Patent No. 7,905,235 to Patel (referred to below as

“Patel”; Exh. 1007).

This Office Action argued, inter alia, that it was evident from FIG. 2 of

Patel that since the width (23) of this machine was about a fourth of its length,

Patel met the requirement of claim 1 that the rolling machine be “lesser than two

cigarette lengths” of a cigarette paper tube. Exh. 1003 at 44. Independent claim 1

and its dependent claims 2-25 were also rejected under 35 U.S.C. §103(a) over

16

U.S. Patent No. 2,551,095 to Chaze (referred to below as “Chaze”, Exh. 1007), in

view of Patel. Exh. 1003 at 45-50.

The Office Action argued that it was known from Patel to provide cigarette

machines that have electrical motors to push tobacco into cigarette tubes. Exh.

1003 at 43-44. Therefore, the Examiner stated that it would have been obvious to

one having ordinary skill in the art at the time of the invention to have modified the

Chaze manual cigarette rolling machine to include a motor having an output shaft

to deliver power to push cylindrical tobacco into a cigarette paper tube. Exh. 1003

at 47. The Office Action also stated that although Chaze did not clearly show that

“a length” of its machine is “lesser than two cigarette lengths of said cigarette

paper tube”, it would have been obvious from FIG. 2 of Patel to have provided the

Chaze cigarette machine in the Patel machine size. Exh. 1003 at 47-48.

In the Response independent claim 1 was further amended (Exh. 1003 at 78-

91.):

Claim 1 (currently amended): An automatic cigarette tube

injector for injecting tobacco leaves into a hollow cigarette paper tube,

comprising:

a housing having a tobacco cavity for said tobacco leaves

disposing thereat, and a feeding opening for said cigarette paper tube

alignedly supporting thereat, wherein a longitudinal length of said

housing is lesser than two cigarette lengths of said cigarette paper

tube;

17

an electric motor, having an output shaft, received in said

housing; and

a cigarette filling arrangement, which is driven by said electric

motor via said output shaft for automatically feeding said tobacco

leaves to said cigarette paper tube through said feeding opening of

said housing, wherein said cigarette filling arrangement comprises:

a tobacco feeder, which is a feeding crank, longitudinally

supported in said housing and driven by said output shaft at a

longitudinal direction which is an injection direction;

a retention member for retaining said tobacco leaves from said

tobacco cavity; and

a feeding member slidably supported in said housing along a

direction perpendicularly to said injection direction, wherein said

tobacco feeder is able to be slid to couple with said retention member

to form a tubular chamber for holding said tobacco leaves therein such

that said tobacco feeder is able to be driven to push towards said

feeding opening of said housing for feeding said tobacco leaves into

said cigarette paper tube; and

a reciprocating unit for transmitting a rotational power of said

output shaft to a sliding movement of said tobacco feeder, wherein

said tobacco feeder is linearly moved at said longitudinal direction out

of said feeding opening for feeding said tobacco leaves into said

cigarette paper tube and is longitudinally received in said housing to

minimize said longitudinal length of said housing which is lesser than

two cigarette lengths of said cigarette paper tube.

18

The applicant argued that Patel failed to teach a housing with a longitudinal

length “lesser” than two cigarette paper tubes as in further amended claim 1. Exh.

1003 at 86-87. The applicant also argued that Patel did not teach a feeding

member that was slidable perpendicularly to the injection direction or a

reciprocating unit for transmitting the rotation of the motor shaft to sliding

movement of the tobacco feeder as in further amended claim 1. Exh. 1003 at 87.

The applicant further stated that Chaze did not teach a housing “lesser” than

two cigarette tube lengths and that it was silent regarding a reciprocating unit for

transmitting rotation of a motor shaft to sliding movement of a tobacco feeder.

Exh. 1003 at 88.

Bao argued with respect to independent claim 1 and dependent claims 2-25

that the prior art failed to resolve how to minimize the longitudinal length of the

housing to lesser (sic) than two cigarette lengths and that there was no teaching in

the identified prior art that suggests any reciprocating unit that can substantially

minimize the longitudinal length of the housing. Exh. 1003 at 90. It was also

argued that the motorized feeding mechanism of Patel could not be incorporated

into the Chaze device. Exh. 1003 at 90.

Thus claim 1 was allowed after introduction of amendments in the Response

as indicated here:

19

20

IX. DETAILED DESCRIPTION OF PRIOR ART RELIED UPON

Moser (Exh. 1004) A.

The application for Moser was filed December 20, 2005 under U.S.

Application. No. 11/312,782 and published May 11, 2006, nearly three years prior

to the filing of the provisional application from which Bao derives. Exh. 1004 at

p.1.

Moser describes and illustrates ten overlapping embodiments of devices for

filling cigarette tubes with tobacco. Exh. 1004 at [0031], [0070], [0076], [0088],

[0092], [0098], [0107], [0118], [0131], and [0143]. Moser explains that the

embodiments contain separate metering, compression and injection mechanisms

which may be manual, partially automatic or fully automatic. Exh. 1004 at [0002].

Similar components appear in the various embodiments which generally build

upon each other. Exh. 1009 at 29A.

The first embodiment comprises a partially-automated device 10 for filling

tubes 70 with a measured amount of tobacco. Exh. 1004 at [0034]. In this

embodiment, metering of the tobacco is automated, while both tobacco

compression and injection are performed manually. Exh. 1004 at [0041], [0066]-

[0068]. It states that device 10 is preferably sized to sit on a table for easy use by a

“roll your own” smoker and that it could be made larger or smaller to fit a desired

implementation. Exh. 1004 at [0033]. Comparing cigarette tubes 70 (FIG. 4) to

21

the width of the machine in, e.g., FIGS. 1A-1D, demonstrates that the longitudinal

length of this device is well less than two cigarette tube lengths. Exh. 1009 at 29B.

Device 10, which is illustrated in FIGS. 1A-1D, includes a body 11, a

compressing unit 80, a cigarette tube magazine 130, an injecting unit 150 and a

clamping unit 180 to hold an open end of a cigarette tube 170 adjacent injecting

unit 150 during insertion of a compressed plug of tobacco 76. Exh. 1004 at

[0033]-[0034].

Device 10 also includes a compression chamber 90, a compression member

100 and a cranking unit 110 as illustrated in FIG. 1C and discussed in Exh. 1004 at

[0046]-[0047]. Exh. 1004 at [0052] further explains that handle 113 on a crank

arm 112 is used to rotate cam member 116 so that clamp pin 108 moves within an

eccentric slot to move compression member 100 up and down. When the

compression member moves down it compresses loose tobacco at the bottom of

compression chamber 90. Exh. 1004 at [0053].

FIG. 1A shows injecting unit 150, including a movable shuttle 160

positioned below compression chamber 90. Exh. 1004 at [0054] explains that

insertion member 164 preferably defines a half-cylindrical surface that tapers

toward its distal end and represents known art for facilitating the insertion of a

compressed plug of tobacco into a cigarette tube. In this device, as crank arm 112

22

is rotated in a clockwise direction, it causes a shuttle 160 to move toward tube

magazine 130. Exh. 1004 at [0057].

During operation of the device a user manually inserts a tube 70 over tube

holder or nozzle 178 adjacent to compression chamber 90. Exh. 1004 at [0061].

After the tobacco is metered onto injection member 164, the user manually rotates

cam arm 112 to move compression member 100 downward within compression

chamber 90 whereby the cylindrical end of compression member 100 presses

against the loose tobacco collected in the insertion member 164, forming a

cylindrical plug of tobacco. Exh. 1004 at [0066].

Exh. 1004 at [0068] references FIG. 4 in explaining that as the user

continues to rotate arm 112 it contacts a trigger on shuttle 160 to move it laterally

so that the compressed plug of tobacco 76 is advanced through nozzle 178 into the

cylindrical paper portion 72 of cigarette tube 70.

In the third embodiment which is described at Exh. 1004 beginning at

[0076], an automated device 300 for filling cigarette tubes is described. This

device includes an injection motor 370. Exh. 1004 at [0077]. It is further noted in

Exh. 1004 at [0078] that the components of the compression mechanism are

largely similar to those disclosed with respect to the first embodiment (discussed

above), except that manual crank arm 112 is replaced by compression motor 310

and a gearbox. It is also explained in Exh. 1004 at [0080] that injection motor 370

23

moves shuttle 160 toward magazine 160 to inject previously-compressed tobacco

into a waiting cigarette tube 70 and, in a reverse direction, to return shuttle 162 to

its position under compression chamber 90. Injection member 164, which is

carried by shuttle 160 operated by a motor driven pinion 372 and cooperating rack

374 transports compressed plug of tobacco 76 through nozzle 178 and into a

cigarette tube 70. Exh. 1004 at par. [0054], [0080].

Chen (Exh. 1006) B.

This document, which is a certified translation of the original Chinese

language Utility Model No. CN201138314Y, published October 22, 2008,

describes a cigarette tube filling machine having a motor 10 with a shaft 11

connected to a crank wheel 9 when motor 10 is operated, crank wheel 9 operates a

rocking mechanism 7 that moves a pressing bar 6. Exh. 1006 at p. 4-5; FIGS. 2

and 3.

When the utility model is the standby state of FIG. 2, a filtered cigarette tube

is clamped to cigarette forming slot 2 and tobacco is placed in storage trough 1.

Exh. 1006 at p. 4-5. Switch 16 is turned to the left causing the motor shaft to rotate

anti-clockwise moving pressing block 6 downwardly to press the tobacco in the

storage trough into cigarette forming slot 2 and form a cylindrical shape. Exh.

1006 at p. 4-5. At this time pusher 3 is at its initial position. Switch 16 is then

moved rightwardly causing crank wheel 9 to rotate clockwise. Exh. 1006 at p. 4-5.

24

Pressing block 6 stops temporarily, at which time oscillating bar 13 moves forward

along the axial direction of cigarette forming slot to push the cylindrical shredded

tobacco into the filtered cigarette tube after which pressing blocks 6 and pusher 3

return to their initial positions and the tobacco-filled cigarette can be removed from

the machine. Exh. 1006 at p. 4-5.

Kastner (Exh. 1005) C.

Kastner (U.S. Patent No. 5,088,506), which issued in 1982, is directed to

another portable manually operable cigarette-making machine. Exh. 1005 at col. 1,

l. 5-7. As can be seen from FIGS. 1 and 2 below, this machine includes a casing

14, a cigarette tube nipple 16, a tobacco slot 18 a handle 20 and a handle drive 22.

Exh. 1005 at col. 5, l. 15-18.

25

Tobacco is placed in slot 18 and handle drive 22 rotated in an anti-clockwise

direction to urge a compactor 22 forward to compact the tobacco. Exh. 1005 at

col. 5, l. 25-30. When the drive handle reaches the position shown in FIG. 3, it

remains at rest while continuing movement of the drive handle allows stud 52

engage lever 52 which ultimately moves tobacco plunger and spoon 60 toward and

through cigarette tube nipple 16 ejecting the compacted tobacco into a cigarette

tube mounted on the nipple. Exh. 1005 at 39-48.

Brown (Exh. 1010) D.

Brown describes a crank-pin on a rotating disk working in the slot of a bell

crank mechanism to convert circular motion into linear motion. This structure for

converting circular motion into linear motion has been known and used by

designers for this purpose since at least 1896. Exh. 1009 at 31.

26

Relationship of Moser, Chan, Kastner and Brown to Art Cited in E.

Prosecution of Bao

As noted earlier, two references were cited during the Bao prosecution, Patel

(Exh. 1007) and Chaze (Exh.1008). These references are far less relevant to Bao

than Moser, Chan, Kastner or Brown.

Patel, which was cited alone in rejecting claim 1, is directed to a cigarette

rolling machine that uses a rotating coil to force tobacco through a fixed hollow

tube into a cigarette tube. Patel fails to teach, inter alia, a tobacco-receiving cavity

in which tobacco is compacted into a cylindrical shape or means for transporting

such a cylindrically compressed tobacco shape into a cigarette tube. It also does

not teach a cigarette-making machine that is less than two cigarette tubes long. As

explained in detail below, Moser, Chen, and Kastner teach these features.

Chaze, which issued in 1951, was cited in view of Patel, in support of the

rejection of original claims 1-25. Chaze is primarily concerned with a device for

delivering predetermined amounts of tobacco to a cigarette machine slot by

swinging a scraper containing a supply of tobacco across the slot. Once the slot is

filled, the tobacco is compacted into a cylindrical roll which is driven into a

cigarette tube by means of a pushrod. The pushrod is not illustrated in the patent.

Chaze lacks, inter alia, a reciprocating unit for transmitting rotational power to

sliding movement of the (unillustrated) pushrod. Patel does not remedy these

shortcomings since it employs a coil tobacco delivery mechanism and hence no

27

sliding movement. And, it is not possible to ascertain the width of the Chaze

machine from the figures of this patent. As explained in detail below, however,

Moser, Chen, and Kastner teach these features.

Challenged Claims F.

The claims of Bao are reproduced in Exh. 1011, parsed consistent with the

discussion below and Claim Charts I, II, III, and IV below.

The challenged claims of Bao include sole independent claim 1 and

dependent claims 2-25. Claim groups 3/10, 4/12, 5/11/18, 6/13, 7/14/21,

8/15/19/22, 16/20/23 and 17/24/25 are identical except for their dependency.

Therefore duplicate dependent claims 10-15 and 18-25 are not addressed

separately below but fall with their identical claims 3-9, 16 and 17.

X. CLAIM-BY-CLAIM DETAILED EXPLANATION OF GROUNDS OF

UNPATENTABILITY

Claim Construction A.

The claims of Bao are given their broadest reasonable construction in light

of the specification of the patent, as understood by one of ordinary skill in the art.

Exh. 1009 at 24. See also p. 8-9 above regarding claim terms coined by Bao.

1. Person of Ordinary Skill in the Art

As explained in the Schmid declaration, a person of ordinary skill in the art

of Bao from at least as early as 1993 through the earliest possible effective filing

date of Bao (March 11, 2009) would have at least a Bachelor’s Degree in

28

mechanical engineering or equivalent engineering design experience. Such a

person would also have familiarity with machines to achieve consolidation through

compression of loose materials like tobacco to fill hollow tubes and other

receptacles and experience in designing machines to achieve consolidation through

compression. Finally, a person of ordinary skill in the pertinent art would have and

apply logic, judgment and common sense based on such education and experience.

Exh. 1009 at 10.

2. Coverage of Independent Claim 1

Based on the teaching of Bao as summarized above, independent claim 1

would be construed by one of ordinary skill in the art as covering:

a) an automatic device for injecting tobacco into cigarette tubes,

b) having a tobacco holding cavity, a cigarette tube feed opening/tube

support and an electric motor electric motor,

c) where the longitudinal dimension of the housing of the device is less than

two cigarette tubes,

d) a motor driven arrangement for automatically feeding tobacco through the

tube holder into the tube,

e) a longitudinally supported tobacco feeder that is longitudinally driven in

an injection direction by the motor shaft,

f) a tobacco retaining member,

29

g) a feeding member that operates perpendicularly to the injection direction

of the tobacco feeder to form a tubular chamber with the retaining member for

holding tobacco before it is injected, and

h) a reciprocating unit to convert rotation of the motor shaft to sliding

movement of the tobacco feeder so that the tobacco feeder is moved longitudinally

through the feeding opening and longitudinally received in the housing. Exh. 9 at

25.

Ground 1: Claim 1 is Obvious Over Moser B.

Claim Chart I below is from the Schmid declaration (Exh. 1009 at 17-19)

and provides element-by-element evidence in support of the challenge to claim 1

as obvious over Moser (Exh. 1004). The bold parenthetical references below

correspond to Ref. 100-111 in the right column of Claim Chart I.

1. Claim 1 Features

a. Automatic cigarette tube injector

Moser provides an automatic machine for injecting tobacco into cigarette

tubes (100) since it employs a motor to fill an empty cigarette tube (104). Exh.

1009 at 33.

30

b. Tobacco cavity and feeding opening for cigarette tube

Moser includes a tobacco cavity in the form of hopper 20 and a feeding

opening and tube support at nozzle 178 which receives the open end of the

cigarette tube (101, 102). Exh. 1009 at 34.

c. Housing is less than two cigarette tubes in length

This feature was added during prosecution prior to allowance of Bao. Moser

discloses automatic cigarette machine housings less than two cigarette tubes in

length (103).

This is established by visually comparing the length of cigarette tubes 70 in

the figures, including, e.g., FIGS. 13A, 13B and 6A. Exh. 1009 at 35. And when,

as here, a person of skill in the art can derive the claimed dimensions from the

disclosure of a prior art reference, there is no additional requirement that its

specification explicitly disclose the precise proportions. Cummins-Allison Corp. v.

SBM, 484 Fed. Appx. 499, 507 (Fed. Cir. 2012).

Also, as noted above, Bao explains that the length of its tobacco cavity 11 is

around the length of cigarette paper tube 50 ( Exh. 1001 at col. 3, l. 50-51),

establishing an approximately 1:1 relationship between the length of the tobacco

cavity and the length of the cigarette paper tube. Since Moser tobacco

compression chamber 90 takes up most of the length of the Moser machine,

31

structurally Moser must be less than two cigarette tubes in length, consistent with

the noted figures. Exh. 1009 at 36.

Finally, the recitation of relative dimensions of the claimed device (less than

two cigarette tube lengths) cannot render it patentably distinct from prior art

devices, since Bao performs the same function in the same manner, whatever its

length. Gardner v. Tec Syst., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) and

M.P.E.P. §2144.04 IV. Note in this connection that Moser states: “the disclosed

device 10 could be made larger or smaller to fit a desired implementation.”

Exh. 1004 at [0033] and Exh. 1009 at 37.

d. Electric motor

Moser includes a motor 370 which has an unlabeled output shaft (104). Exh.

1009 at 38.

e. Motor arrangement automatically feeds tobacco

through feeding opening to cigarette tube

This feature was added during prosecution prior to allowance of Bao.

Moser, however, discloses this feature since it teaches an injection member 164

carried by shuttle 160 that is operated by a motor driven pinion 372 and

cooperating rack 374 to transport a compressed plug of tobacco 76 through nozzle

178 into cigarette tube 70 (105). Exh. 1009 at 39.

32

f. Longitudinally supported motor driven tobacco

feeder

Moser injection member 164 is longitudinally supported and driven in an

injection direction by pinion 372 of motor 370 (106). Exh. 1009 at 40.

g. Member for retaining tobacco leaves from tobacco

cavity

Moser’s injection member 164 retains tobacco within a tobacco cavity

before it passes through a feeding opening carrying tobacco into a cigarette tube

(107). Exh. 1009 at 41.

h. Feeding member slides perpendicularly to injection

direction and couples with retention member to form

tubular tobacco chamber

Moser compression member 100 operates perpendicularly to the direction

that injection member 164 moves. The compression member includes a cylindrical

compression end 104 that forms a cylindrical chamber with injection member 164

(108). Exh. 1009 at 42.

i. Reciprocating unit transmits motor rotation to sliding

movement of tobacco feeder


teaches this feature in its pinion 372 and rack 374 which convert the rotation of

33

motor 37 to reciprocal sliding movement of injection unit 150 (109). Exh. 1009

at 43.

j. Tobacco feeder moves linearly and longitudinally out

of feeding opening and into cigarette tube


teaches this feature in its injection member 164 which transports a compressed

tobacco plug 176 through nozzle 178 into cigarette tube 70 (110). Exh. 1009 at 44.

k. Tobacco feeder is longitudinally received in housing

to minimize housing length to less than two tube

lengths


teaches this feature in its injection member 164 which is longitudinally received in

the Moser. See also p. 30-31 above regarding Moser’s teaching of a housing

length less than two tube lengths (111). Exh. 1009 at 45.

In summary, Moser includes all of the elements of Bao claim 1 in its manual

and automatic embodiments, as discussed above and detailed in Chart I below.

And, these elements perform the same functions in Moser as they do in Bao to

produce the same result and product, a tobacco-filled cigarette tube, rendering Bao

obvious over Moser. Exh. 1009 at 46, 47.

34

Chart I: Bao Claim 1 elements in view of Moser

Description of Element Moser (Exh. 1004 ) Ref.

An automatic cigarette tube injector for injecting tobacco leaves into a hollow cigarette tube, comprising:

This patent application illustrates multiple embodiments of manual and automated devices for filling cigarette tubes with tobacco. Exh. 1004 at par. [0002].

100

a housing having a tobacco cavity for said tobacco leaves disposing thereat,

A tobacco holding cavity is provided in the form of hopper 20 which holds tobacco 76. Exh. 1004 at par. [0036].

101

and a feeding opening for said cigarette paper tube alignedly supporting thereat,

A feed opening and tube support is provided at nozzle 178 which receives open end of cigarette tube 70. Exh. 1004 at par. [0048] and [0056].

102

wherein a longitudinal length of said housing is lesser than two cigarette lengths of said cigarette paper tube;

FIGS. 13A, 13B, and 6A (as well as other figures) of Exh. 1004 show that housing 102 is less than twice the width of compression chamber 90.

103

an electric motor, having an output shaft, received in said housing; and

Motor 370 has an unlabeled output shaft that rotates pinion 372. Exh. 1004, FIG. 6A.

104

a cigarette filling arrangement, which is driven by said electric motor via said output shaft for automatically feeding said tobacco leaves to said cigarette paper tube through said feeding opening of said housing,

Injection member 164, which is carried by shuttle 160 operated by a motor driven pinion 372 and cooperating rack 374 transports compressed plug of tobacco 76 through nozzle 178 and into a cigarette tube 70. Exh. 1004 at par. [0054], [0080] and FIG. 6A.

105

wherein said cigarette filling See following:

35



arrangement comprises:

a tobacco feeder, which is a feeding crank, longitudinally supported in said housing and driven by said output shaft at a longitudinal direction which is an injection direction;

Injection member 164 is a longitudinally supported tobacco feeder that is driven in a longitudinal injection direction by pinion 372 of motor 370. Exh. 1004 at par. [0064], [0076], and [0080].

106

a retention member for retaining said tobacco leaves from said tobacco cavity;

Insertion member 164 is a tobacco retaining member before it passes through a feeding opening carrying tobacco into a cigarette tube. Exh. 1004 at par. [0054], [0068], and FIG. 4.

107

a feeding member slidably supported in said housing along a direction perpendicularly to said injection direction, wherein said tobacco feeder is able to be slid to couple with said retention member to form a tubular chamber for holding said tobacco leaves therein such that said tobacco feeder is able to be driven to push towards said feeding opening of said housing for feeding said tobacco leaves into said cigarette paper tube; and

Compression member 100 operates perpendicularly to the injection direction of injection member 164 and includes a cylindrical compression end 104 that forms a cylindrical chamber with injection member 164. Exh. 1004 at par. [0047].

108

a reciprocating unit for transmitting a rotational power of said output shaft to a sliding movement of said tobacco feeder,

Pinion 372 and rack 374 convert rotation of motor 370 to reciprocal sliding movement of injection unit 150 to feed tobacco into a cigarette tube. Exh. 1004 at par. [0080].

109

wherein said tobacco feeder is linearly moved at said longitudinal

Injection member 164 of shuttle 160 moves compressed tobacco plug 76

110

36



direction out of said feeding opening for feeding said tobacco leaves into said cigarette paper tube

through nozzle 178 into cigarette tube 70. Exh. 1004 at par. [0054], [0066] and [0068].

and is longitudinally received in said housing to minimize said longitudinal length of said housing which is lesser than two cigarette lengths of said cigarette paper tube.

Injection member 164 is longitudinally received in the housing of this device, which is shorter than two cigarette tubes in length. Exh. 1004, FIGS. 4 and 6A. See also 103 above.

111

Ground 2: Claim 1 is Obvious Over Chen. C.

Claim Chart II below is from the Schmid declaration (Exh. 1009 at 48) and

provides element-by-element evidence in support of the challenge to claim 1 as

obvious over Chen (Exh. 1006). The bold parenthetical references below

correspond to Ref. 200-211 in the right column of Claim Chart II.

1. Claim 1 Features


Chen provides an electric cigarette tube filling machine (200). Exh. 1009

at 49.


Chen includes a tobacco cavity in the form of tobacco storage trough (1) and

a feed opening at tube clamp (5). (201, 202). Exh. 1009 at 50.

37


The recitation of relative dimensions in the Bao claims cannot render them

patently distinct from prior art devices like Chen, since the Chen machine performs

in the same fashion whatever its length. Gardner, 725 F.2d at 1349 and M.P.E.P.

§2144.04 IV. Exh. 1009 at 51.

Also, the Chen figures, which are schematic diagrams, show a substantial

amount of dead space to the right of crank wheel (9) which would be eliminated by

one of ordinary skill in the art as a routine matter if it were deemed desirable to

make the Chen housing (15) less than two cigarette tubes in length. In such an

obvious modification, the person of ordinary skill would reposition the

schematically depicted restoring spring (14), again as a routine matter. Finally,

Chen also includes additional dead space in the housing on either side of pressing

block (6) which also could be removed as a routine matter (203). Exh. 1009 at 52.

d. Electric motor

Chen includes a motor (10) which with an output shaft (11) (204). Exh.

1009 at 53.

38



This feature was added during prosecution prior to allowance of Bao. It is

taught by Chen which has a crank wheel (9) and oscillating bar (13) driven by

motor (10) for feeding tobacco into a cigarette tube (205). Exh. 1009 at 54.


feeder

Chen pusher (3) is a tobacco feeder longitudinally supported and driven in

longitudinal injection direction by shaft of motor (206). Exh. 1009 at 55.


cavity

Chen cigarette forming slot (2) retains the shredded tobacco as it is pushed

into the cigarette tube and therefore serves as a retention member (207). Exh. 1009

at 56.




Chen pressing block (6) operates perpendicularly to the injection direction of

pusher (3) to enclose loose tobacco and form a cylindrical shredded tobacco that is

injected into a cigarette tube (4). Since the shredded tobacco is formed into a

39

cylinder, the pressing block and pusher must form a tubular chamber to accomplish

this. (208). Exh. 1009 at 57.



This feature was added during the prosecution prior to allowance of Bao.

Chen teaches this feature in its oscillating bar (13) in combination with motor shaft

(11) and pusher (3) convert rotation of motor shaft to sliding movement of pusher

(3) (209). Exh. 1009 at 58.



This feature was added during prosecution prior to allowance of Bao. Chen

teaches this feature in its pusher (3) which feeds cylindrical shredded tobacco

through opening at cigarette tube clamp (5) into cigarette tube (4) (210). Exh.

1009 at 59.



lengths

This feature was added during prosecution prior to allowance of Bao.

Chen’s pusher (3) returns to the Chen housing which can be seen by comparing

FIGS. 2 and 3 (111). Regarding obviousness of making housing less than two

cigarette tube lengths (see p. 37 above). Exh. 1009 at 60.

40

[INSERT 200]

Chart II: Bao Claim 1 Elements in View of Chen (Exh. 1006)

Description of Element Chen Ref.


This utility model is titled “Portable Electric Filtered Cigarette Tube Filling Machine” and fills cigarettes with shredded tobacco. Exh. 1006 at p. 1.

200


A tobacco holding cavity is provided in the form of tobacco storage trough (1). Exh. 1006 at p. 4-5 and FIG. 2.

201


An unlabeled feed opening and tube support is shown at cigarette tube clamp (5). Exh. 1006 at p. 4-5 and FIG. 2.

202


See below. 203

an electric motor, having an output shaft, received in said housing; and

Motor (10) has an output shaft (11). Exh. 1006 at p. 4-5 and FIG. 2.

204


Crank wheel (9) and oscillating bar (13) are driven by motor (10) for feeding tobacco into a cigarette tube (4) through the feeding opening at clamp (5). Exh. 1006 at p. 4-5 and FIG. 2.

205

wherein said cigarette filling arrangement comprises:

See following:

a tobacco feeder, which is a feeding Pusher (3) is a tobacco feeder 206

41



crank, longitudinally supported in said housing and driven by said output shaft at a longitudinal direction which is an injection direction;

longitudinally supported and driven in longitudinal injection direction by shaft of motor (10). Exh. 1006 at p. 4-5 and FIG. 2.


Cigarette forming slot (2) retains the shredded tobacco as it is pushed into the cigarette tube. Exh. 1006 at p. 4-5 and FIG. 2.

207


Pressing block (6) operates perpendicularly to the injection direction of pusher (3) to enclose loose tobacco and form a cylindrical shredded tobacco that is injected into a cigarette tube (4). Exh. 1006 at p. 4-5 and FIG. 2.

208


Oscillating bar (13) in combination with motor shaft (11) and pusher (3) convert rotation of motor shaft to sliding movement of pusher (3). Exh. 1006 at p. 4-5 and FIG. 2.

209

wherein said tobacco feeder is linearly moved at said longitudinal direction out of said feeding opening for feeding said tobacco leaves into said cigarette paper tube

Pusher (3) feeds cylindrical shredded tobacco through opening at cigarette tube clamp (5) into cigarette tube (4). Exh. 1006 at p. 4-5 and FIG. 3.

210

and is longitudinally received in Pusher (3) is shown longitudinally 211

42



said housing to minimize said longitudinal length of said housing which is lesser than two cigarette lengths of said cigarette paper tube.

received in the Chen housing. See below regarding obviousness of making housing less than two cigarette tube lengths. Exh. 1006 at p. 4-5 and FIG. 2.

Ground 3: Claim 1 is Obvious Over Kastner in View of Moser D.

Claim Chart III below is from the Schmid declaration (Exh. 1009 at 62) and

provides element-by-element evidence in support of the challenge to claim 1 as

obvious over Kastner in view of selected teachings of Moser. The bold

parenthetical references below correspond to Ref. 300-311 in the right column of

Claim Chart III.

1. Motivation to Combine Kastner with Moser

An inventor or one of ordinary skill in the art would be motivated to look to

Kastner and Moser to design an automatic cigarette-making machine as in Bao

because Kastner and Moser describe portable cigarette making machines for filling

hollow tubes with tobacco, and these references establish that all the claim

elements were known in the prior art and the combination yields nothing more than

predictable results to one of ordinary skill in the art, rendering claim 1 obvious.

KSR, 550 U.S. 398, 416, 82 USPQ2d 1385, 1395. Exh. 1009 at 63.

43

As in Bao, the cited cigarette machines include cavities for receiving loose

tobacco and manually operating compactors to capture and compress the tobacco

into a cylindrical shape that is injected into the tube. Exh. 1009 at 64. Moser

includes a motor as in Bao for automatically feeding the compressed tobacco

through a feeding opening into the tube. Exh. 1009 at 65. While Kastner performs

the feeding operation manually, the feeding operation is accomplished by

transmitting rotation to sliding movement as in Bao. Brown teaches how to

achieve this conversion in the fashion employed in Bao. Exh. 1009 at 66.

In Kastner and Moser, the compactor is slidably supported for moving

perpendicularly to the injection direction and the Moser machine is less than two

cigarette tubes in length. Exh. 1009 at 67. Finally, combining the elements of

these references by installing them in a single cigarette-making machine according

to known assembly methods with no change in their functions will yield

predictable results, making the claimed Bao machine obvious. Exh. 1009 at 68;

KSR, 550 U.S. at 416, 82 USPQ2d at 1395.

Also, with reference to the proposed combination of Kastner with Moser, it

would have been obvious to one of ordinary skill in the art that motorizing the

Kastner machine as in the Chen and Moser machines would produce a predictable

combination that had a reasonable expectation of success because the features in

the combination function in the same way as they do in the references. Exh. 1009

44

at 69; In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 379 (Fed. Cir.

1986). Indeed, because Moser motorizes a cigarette making machine it

demonstrates that the Kastner machine was ready for the motorizing improvement.

Exh. 1009 at 70; KSR at 1739-40. Therefore the resulting design is not a product

of innovation, but rather of ordinary skill and common sense and Bao is obvious

over these combined references. Exh. 1009 at 71.

2. Claim 1 Features


Kastner and Moser provide machines for injecting or filling tobacco into

cigarette tubes which can be made automatic by motorizing the injection feature of

the machine as taught by Chen and Moser (300). Exh. 1009 at 72.


Kastner includes a tobacco holding cavity in the form of slot 18 and a feed

opening and tube support at tube nipple 16. (301, 302). Exh. 1009 at 73.


The Kastner housing is less than or nearly less than two cigarette tubes in

length as can be seen by the figures where tobacco slot 18 or spoon 60 is taken to

correspond to a cigarette tube length. The Moser machine is less than two cigarette

tubes in length as is clear, for example, from FIGS. 13A, 13B and 6A (303). Exh.

1009 at 74. See also the discussion of length of Moser machine above at p. 30-31.

45

d. Electric motor

Moser includes a motor 370 which has an unlabeled output shaft (304). Exh.

1009 at 75.



Moser teaches an injection member 164 carried by shuttle 160 that is

operated by a motor driven pinion 372 and cooperating rack 374 to transport a

compressed plug of tobacco 76 through nozzle 178 into cigarette tube 70 (305).

Exh. 1009 at 76.


feeder

Moser injection member 164 is longitudinally supported and driven in an

injection direction by pinion 372 of motor 370 (306). Exh. 1009 at 77.


cavity

Spoon 60 is shown in Kastner being located below tobacco slot 18 and is

arranged to carry tobacco toward and through cigarette tube nipple 16 and into the

cigarette tube. (307). Exh. 1009 at 78.

46




In Kastner, compactor 32 is urged perpendicularly to the injection direction

of spoon 62 form a cylindrical body of tobacco before it is injected into a cigarette

tube. Since the tobacco is formed into a cylindrical body, a tubular chamber must

be formed to accomplish this. (308). Exh. 1009 at 79.




teaches this feature in its pinion 372 and rack 374 which convert rotation of motor

37 to reciprocal sliding movement of injection unit 150 (309). Exh. 1009 at 80.



Kastner’s spoon 60 is longitudinally received in casing 14 (311). Also,

Moser’s injection member 164 is longitudinally received in the housing of this

device, which is shorter than two cigarette tubes in length (311).

Kastner’s spoon 60 is moved linearly through tube nipple 16 and into a

cigarette tube (310). Exh. 1009 at 81.

47



lengths

Kastner and Moser are in the same field as Bao, namely the field of portable

devices for injecting tobacco into cigarette tubes. They also both address the same

problem, i.e., how to provide a device for injecting the tobacco that is small and

portable. The Bao design flows from a simple substitution of one known element

in Chen or Moser for another in Kastner to obtain a predictable result. Exh. 1009

at 82.

Kastner teaches a portable manual cigarette tube filling machine that

includes, as in independent claim 1, a cavity for holding loose tobacco, an opening

for attaching an empty cigarette tube, and a cigarette-filling arrangement for

feeding tobacco into the cigarette tube that includes a spoon (tobacco feeder) for

holding the tobacco and a compacting member that cooperates with the spoon to

form a tubular chamber hold the tobacco before it is injected into the cigarette tube.

The cigarette-filling arrangement of Kastner converts rotation to sliding movement

of the spoon or tobacco feeder. Exh. 1009 at 83.

While the Kastner machine does not employ a motor, it would be obvious to

one of ordinary skill in the art wishing to make this machine faster and more

convenient to use to employ a motor to inject tobacco on the spoon into a cigarette

tube in view of the motorized cigarette-making machine of Moser and since this

48

produces a predictable combination with a reasonable expectation of success, and

because the features of the combination function in the same way as they do in

Kastner and Moser. Exh. 1009 at 84.

Chart III: Bao Claim 1 Elements Over Kastner in View of Moser

Description of Element Kastner (Exh. 1005)

Moser (Exh. 1004)

Ref.


Kastner discloses manually operable, portable cigarette making machines. Exh. 1005 at col. 1, l. 5-8.

This patent application illustrates multiple embodiments of automated devices for filling cigarette tubes with tobacco. Exh. 1004 at par. [0002].

300


A tobacco holding cavity is provided in the form of tobacco slot 18. Exh. 1005 at col. 18 and FIG. l.

301


A feed opening and tube support is provided at tube nipple 16. Exh. 1005 at col. 5, l. 16 and l. 31-33 and FIG. 3. (retainer 40)

302


Housing is less than or nearly less than two cigarette tubes in length as can be seen by the figures where tobacco slot 18 or spoon 60 is taken to correspond to a cigarette tube length. Exh. 1005 at FIGS. 1 and 3.

FIGS. 13A, 13B, and 6A (as well as other figures) of Exh. 1004 show that housing 102 is less than twice the width of compression chamber 90.

303

an electric motor, having an output shaft, received

Does not have a motor. Motor 370 has an unlabeled output shaft that

304

49



Moser (Exh. 1004)

Ref.

in said housing; and rotates pinion 372. Exh. 1004, FIG. 6A.


Tobacco is fed manually through tube nipple 16 into a cigarette tube. Exh. 1005 at col. 5, l. 44-47.

Injection member 164, which is carried by shuttle 160 operated by a motor driven pinion 372 and cooperating rack 374 transports compressed plug of tobacco 76 through nozzle 178 and into a cigarette tube 70. Exh. 1004 at par. [0054], [0076] and FIG. 6A.

305

wherein said cigarette filling arrangement comprises:

Follows below.

a tobacco feeder, which is a feeding crank, longitudinally supported in said housing and driven by said output shaft at a longitudinal direction which is an injection direction;

Spoon 60 (tobacco feeder) moves in a longitudinal direction. Exh. 1005 at col. 5, l. 44-46 and FIG. 4.

306


Spoon 60 is shown in the figures as being located below tobacco slot 18 and is arranged to carry tobacco toward and through cigarette tube nipple 16 and into the cigarette tube. Exh. 1005 at col. 5, l. 44-46 and

307

50



Moser (Exh. 1004)

Ref.

FIGS. 1 and 2.


Compactor 32 is urged perpendicularly to the injection direction of spoon 60 to form a cylindrical body of tobacco before it is injected into a cigarette tube. Exh. 1005 at col. 2, l. 17-19 and col. 6, l. 44-49 and FIG. 2.

Compression member 100 operates perpendicularly to the injection direction of injection member 164 and includes a cylindrical compression end 104 that forms a cylindrical chamber with injection member 164. Exh. 1004 at par. [0047].

308


Rotary motion of manually operated handle 20 rotates cam 24 causing lever 52 to slide spoon 62 longitudinally through tube nipple 16 and into the cigarette tube. Exh. 1005 at col. 5 l. 18-23 and l. 39-46.

Pinion 372 and rack 374 convert rotation of motor 370 to reciprocal sliding movement of injection unit 150 to feed tobacco into a cigarette tube. Exh. 1004 at par. [0080].

309

wherein said tobacco feeder is linearly moved at said longitudinal direction out of said feeding opening for

Spoon 60 is moved linearly through tube nipple 16 and into the cigarette tube. Exh. 1005 at col. 5, l. 39-46.

310

51



Moser (Exh. 1004)

Ref.

feeding said tobacco leaves into said cigarette paper tube

and is longitudinally received in said housing to minimize said longitudinal length of said housing which is lesser than two cigarette lengths of said cigarette paper tube.

Spoon 60 is longitudinally received in casing 14. Exh. 1005 at FIG. 3.

Injection member 164 is longitudinally received in the housing of this device, which is shorter than two cigarette tubes in length. (103 above). Exh. 1004, FIGS. 4 and 6A.

311

Dependent Claims 2-25 are Obvious Over Chen, Kastner and E.

Brown

The above analyses of independent claim 1 vis-à-vis Moser, Chen, and

Kastner in view of Chen, establish that claim 1 is unpatentable on three

independent bases. The analyses of the dependent claims which follow below

should be understood to separately incorporate each of these analyses of claim 1

and to further establish that the dependent claims do not further limit claim 1 in a

way that would render any dependent claim patentable.

All of the dependent claims were initially rejected during the prosecution of

Bao, and dependent claims 8, 9, and 10 were amended to remove the language that

was incorporated into independent claim 1.

52

The following discussion references Claim Charts IV-1 to IV-10 in which

the dependence of each claim is indicated in the chart caption, and a description of

each claim element appears in parsed form. The complete dependent claim

language appears in Exhibit 1011.

Claim 2 requires that the tobacco feeder slide between a loading position and

a filling position, and that corresponding arc-shaped feeding and retention

members form a tubular chamber for holding tobacco and a pusher wall for feeding

the tobacco into a cigarette tube. Exh. 1009 at 86.

Chen employs all of the features of claim 2 in an automatic cigarette

machine as shown in Chart IV-1 below and therefore renders claim 2 obvious.

Exh. 1009 at 87.

Chart IV-1: Claim 2 (dependent on claim 1)

Element Prior Art

tobacco feeder comprises a driving member, having a front pusher wall, reciprocatingly driven by output shaft of electric motor to slide it between a first position and a second position along said injection direction through said feeding opening of said housing and

In Chen, pusher (3) is a driving member that includes an unlabeled wall at its back edge. The pusher is reciprocatingly driven by shaft (11) of motor (10) between a first position shown in solid lines and a second position shown in broken lines where the pusher moves through a feeding opening of the housing. Exh. 1006 at 4-5 and FIG. 3.

an arc-shaped retention member frontwardly extended from said front pusher wall of said driving member for retaining said tobacco leaves at an inner wall of said retention member from said

The Chen tobacco feeder/driving member comprises an arc-shaped retention member in FIGS. 2 and 3. Tobacco leaves in shredded tobacco storage trough (1) are retained at the inner wall of this retention

53


Element Prior Art

tobacco cavity; member.

arc-shaped feeding member slidably supported in said housing along said direction perpendicularly to said injection direction, wherein said feeding member is slid to couple with said retention member at said first position to form said tubular chamber within said inner wall of said retention member and an inner wall of said feeding member for holding said tobacco leaves within said tubular chamber, such that when said driving member is driven to slide at said second position, said front pusher wall of said driving member is driven to push towards said feeding opening of said housing for feeding said tobacco leaves into said cigarette paper tube.

Chen FIGS. 2 and 3 show a pressing block (or feeding member) (6) slidably supported in a direction perpendicular to injection direction. Chen states that the pressing block forms tobacco into cylindrical shape which indicates that it is arc-shaped. Exh. 1006 at 4-5 and FIG.

Claim 3/10 requires that the corresponding inner walls of the retention and

feeding members have a semi-circular shape so that when they are coupled they

form a circumferential size corresponding to the cigarette tube. Exh. 1009 at 88.

Chen employs all of the features of claim 3/10 as shown in Chart IV-2 below

and therefore renders claim 3/10 obvious. Exh. 1009 at 89.

Chart IV-2: Claims 3 and 10 (dependent on claims 2 and 9)

Element Prior Art

each of said inner walls of said retention member and said feeding

Chen describes the cigarette forming slot (2) as cylindrical; FIGS. 2 and 3 show the cigarette

54

member is formed in a semi-circular shape that when said feeding member is coupled with said retention member to form said tubular chamber, said tubular chamber has a circumferential size corresponding to cigarette paper tube

forming slot as coupled with tobacco pressing block (6) and Chen states that the tobacco is formed into a cylindrical shape. Exh. 1006 at 4-5 and FIG. 3.

Claim 4/12 requires that the retention member carries the tobacco out of the

housing into the cigarette tube. Exh. 1009 at 90.




Element Prior Art

at said second position, said retention member is slidably pushed out of said feeding opening of said housing into said cigarette paper tube for loading said tobacco leaves therein.

Chen FIG. 3 (Exh. 1006) shows pusher (3) (retention member) slidably pushed out of the feeding opening into a cigarette paper to load tobacco leaves in the tube.

Claim 5/11/18 requires that the reciprocating unit have a transmission wheel

with an eccentric shaft on the motor shaft, a connecting arm coupled to the driving

member, and a transmission arm with a transmitting slot slidably coupled to the

eccentric shaft and rotatably coupled to the connecting arm so that rotation of the

shaft drives the connecting arm and transmission arm to move reciprocatingly to

55

cause the tobacco feeder to slide between its first and second positions. Exh. 1009

at 92.

This claim 5/11/18 incorporates the following design which was known

since at least 1896 to convert circular motion into linear motion by a crank-pin on a

rotating disk working in the slot of a bell-crank. Exh. 1009 at 93.

Chen alone and in combination with Brown employs all of the features of

claim 5/11/18 in view of this and as shown in Chart IV-4 below and therefore

renders claim 5/11/18 obvious. Exh. 1009 at 94.

Chart IV-4: Claims 5, 11 and 18 (dependent on claims 2, 10 and 12)

Element Prior Art

reciprocating unit comprises a transmission wheel, having an eccentric shaft, coaxially coupling with said output shaft,

Chen FIGS. 2 and 3 (Exh. 1006) show a reciprocating unit in which crank wheel (9) has an unlabeled eccentric shaft attached to connector bar (8) coaxially coupling the crank wheel to the motor output shaft.

reciprocating unit comprises a connecting arm rotatably coupling with said driving member, and

Chen FIGS. 2 and 3 (Exh. 1006) show reciprocating unit of Chen as including a connecting arm in the form of connector bar

56

(8) that is rotatably coupled with oscillating bar (13) which serves as a driving member.

reciprocating unit comprises a transmission arm, having a transmitting slot slidably coupling with said eccentric shaft, rotatably coupling with said connecting arm, such that when said electric motor generates said rotational power at said output shaft, said connecting arm and said transmission arm are driven to move reciprocatingly through said transmission wheel so as to reciprocatingly drive said tobacco feeder to slide between said first and second position.

Chen FIGS. 2 and 3 (Exh. 1006) show reciprocating unit driven by an electric motor that rotates at its output shaft that causes pusher (3) to slide between a first position at the bottom of tobacco storage trough (1) (FIG.2) and a second position within the cigarette tube (FIG.3) and Brown teaches a structure to convert such rotation into linear motion by a crank-pin on a rotating disk working in the slot of a bell-crank. Exh. 1009 at 31.

Claim 6/13 requires that the tobacco feeder is slidably supported and

receives tobacco leaves from the tobacco cavity. Exh. 1009 at 95.




Element Prior Art

housing further has a sliding compartment communicating with said tobacco cavity for said tobacco feeder being slidably supported at said sliding compartment, such that when said tobacco leaves are disposed within said tobacco cavity, said tobacco leaves are filled at said inner wall of said retention member.

In Chen (Exh. 1006) FIGS. 2 and 3 cigarette forming slot (2) (tobacco feeder) is disposed in a sliding compartment communicating with tobacco storage trough (1) (tobacco cavity). FIGS. 2 and 3 show that cigarette forming slot (2) is mounted for sliding movement from within the Chen machine through the opening at cigarette tube clamp (5). The slot positioned so that tobacco

57

placed in trough (1) is filled at the inner wall of the slot. FIG. 2.

Claim 7/14/21 requires that a manual actuator be provided to actuate and

couple the coupling the feeding member with the retention member, that the

manual actuator is a pivotally mounted handle, and that the device is arranged so

that when the handle is actuated the feeding member slides toward the retention

member. Exh. 1009 at 97.

Kastner employs all of the features of claim 7/14/21 as shown in Chart IV-6

below and therefore renders claim 7/14/21 obvious. Exh. 1009 at 98.


Element Prior Art

said cigarette filling arrangement further comprises a manual actuator for actuating said feeding member being shifted within said tobacco cavity to couple with said retention member,

Kastner includes a manual actuator in the form of handle 20 a handle drive 22 and a pressing unit for actuating compactor 32 which slides within tobacco slot 18 to couple with spoon 60 (retention member). Exh. 1005 at col. 5, l. 18-30 and FIG. 5.

said manual actuator comprises a handle member pivotally coupled with said housing and a pusher unit which is coupled between said handle member and said feeding member and is arranged in such a manner that when said handle member is manually actuated, said feeding member is driven to slide towards said retention member through said pusher unit.

Kastner handle 20/handle drive 22 are rotatably mounted to the housing. Exh. 1005 at col. 5, l. 25-26. When the handle is manually rotated, pressure is supplied to slide the feeding member toward the spoon (retention member) Exh. 1005 at col. 5, l. 25-29.

58

Claim 8/15/19/22 requires that a compartment be provided for guiding the

feeding member to slide toward the retention member. Exh. 1009 at 99.

Chen employs all of the features of claim 8/15/19 as shown in Chart IV-7

below and therefore renders claim 3-10 obvious. Exh. 1009 at 100.

Chart IV-7: Claims 8, 15, 19 and 22

(dependent on claims 7, 14, 18 and 21)

Element Prior Art

housing further comprises a guiding compartment longitudinally extended from said tobacco cavity to guide said feeding member to slide towards said retention member.

Chen pressing block (6) is confined and guided to slide towards storage trough (1) to form a tobacco cylinder. Exh. 1006 at p. 4-5.

Claim 9 requires that the retention member extends from a driving member

having a pusher wall to push tobacco leaves toward the feeding opening of the

machine. Exh. 1009 at 101.

Chen employs all of the features of claim 8/15/19/22 as shown in Chart IV-8

below and therefore renders claim 8/15/19/22 obvious. Exh. 1009 at 102.


Element Prior Art

said retention member is integrally extended from a circumferential side of said driving member such that when said tobacco leaves are retained at said inner wall of said retention member, said front pusher wall of said driving member is driven to push said tobacco

Chen FIG.2 (Exh. 5) shows cigarette forming slot (2) (retention member) integrally extending from an unlabeled driving member so that when tobacco is on the inner wall of the slot it’s unlabeled pusher wall is driven to push tobacco leaves toward the feeding opening of the Chen housing.

59

leaves towards said feeding opening of said housing.

Claim 16/20/23 requires that the edge of the tobacco cavity is provided with

a sharp cutting edge so that when the feeding member moves across this edge it

trims protruding tobacco leaves. Exh. 1005 at 103.

The movement of Chen pressing blocks 60 across the corresponding

tobacco-holding cavity creates a trimming action. Therefore Chen employs all of

the features of claim 16/20/23 in view of this and as shown in Chart IV-9 below

and therefore renders claim 16/20/23 obvious. Exh. 1005 at 104.

Chart IV-9: Claims 16, 20 and 23

(dependent on claims 12, 19 and 22)

Element Prior Art

an opening of said tobacco cavity forms a sharp cutting edge that when said feeding member is slid to couple with said retention member, said sharp cutting edge is adapted for trimming said tobacco leaves to receive in said tubular chamber.

Chen FIGS.2 and 3 (Exh. 1006) indicate that Chen pressing block (6) passes across an edge of a tobacco-holding cavity as the compactor/block moves to compress the tobacco. Moser teaches a sharp leading edge 774 on compression member 735 to cut loose tobacco during the compression process. Exh. 1004 at [0013] and FIG. 10C.

Claim 17/24/25 requires that a tube holder is provided on the feeding

opening to hold the cigarette tube. Exh. 1009 at 105.

Chen employs all of the features of claim 17/14/25 as shown in Chart IV-10

below and therefore renders claim 17/14/25 obvious. Exh. 1009 at 106.

60


Element Prior Art

housing further comprises a tubular holder coaxially extended from said feeding opening for said cigarette paper tube encirclingly retaining with said tubular holder.

Chen FIG. 2 (Exh. 1006) shows an unlabeled tubular tube holder at cigarette clamp (5) which extends coaxially from the feeding opening to encircle and retain the cigarette tube.

XI. CONCLUSION

Challenged claims 1-25 are unpatentable, as shown above. Accordingly,

petitioner requests institution of an inter partes review.

Respectfully submitted, /Barry W. Sufrin/ ______________________________ Barry W. Sufrin, Reg. No. 27,398 Drinker Biddle & Reath LLP 191 N. Wacker Drive, Suite 3700 Chicago, Illinois 60606-1698 (312) 569-1000 (telephone) (312) 569-3000 (facsimile) Customer No.: 08968 Date: October 16, 2014

CERTIFICATE OF SERVICE

The undersigned certifies service pursuant to 37 C.F.R. §§42.6(e) and 42.105(b) on

the Patent Owner by Express Mail of a true and correct copy of this “Petition for

Inter Partes Review” and the Exhibits thereto at the following correspondence

address of record for U.S. Patent No. 8,261,752:

David and Raymond Patent Firm 108 N. Ynez Ave.

Suite 128 Monterey Park, CA 91754

Attn: Raymond Chan, David Lee and Albert Lum

Dated: October 16, 2014

/Barry W. Sufrin/ ______________________________ Barry W. Sufrin, Reg. No. 27,398 Drinker Biddle & Reath LLP 191 N. Wacker Drive, Suite 3700 Chicago, Illinois 60606-1698 (312) 569-1000 (telephone) (312) 569-3000 (facsimile) Customer No.: 08968

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IN THE UNITED STATES PATENT AND TRADEMARK …fishpostgrant.com/wp-content/uploads/IPR2015-00072...Bao is directed to a portable machine for filling hollow cigarette tubes with tobacco