Ex Parte KONO et al

Patent Trials and Appeals Board

Jan 17, 2019

14583945 - (D) (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/583,945 12/29/2014 Takafumi KONO
116 7590 01/22/2019
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
OBA-53856 6815
EXAMINER
REIS,RYAN ALEXANDER
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
01/22/2019 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAFUMI KONO, TAKASHI SHIMAOKA,
MITSUNORI EHARA, and KOICHIRO FUSHIY A 1
Appeal2018-004391
Application 14/583,945
Technology Center 3600
Before MICHELLE R. OSINSKI, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3-8, and 17-222 under 35 U.S.C. § 102(a)(l) as
1 Mitsubishi Aircraft Corporation ("Appellant") is the Applicant as provided
in 37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal
Br. 2.
2 Claim 2 is cancelled. Appeal Br. 27 (Claims App.). Claims 9 and 12-16
are allowed, and claims 10 and 11 are objected to as being dependent upon a
rejected base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims.
Final Act. 6.
Appeal2018-004391
Application 14/583,945
anticipated by Trey (US 5,469,147, issued Nov. 21, 1995). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
Claims 1 and 21 are independent. Claim 1 is reproduced below.
1. A fire extinguishing system of an aircraft comprising a
nozzle device that is provided on an installation member
forming a compartment of the aircraft,
wherein the nozzle device includes:
a nozzle that is passed into an insertion hole
formed in a nozzle installation section, said nozzle
installation section provided on the installation member,
and said nozzle discharges a fire extinguishing agent
supplied from a supply source into the compartment; and
a lid member that closes a gap between the nozzle
and the nozzle installation section,
wherein the gap is a continuous gap provided
along an entire circumference of the nozzle, said gap
being provided by said insertion hole being formed with
an inner diameter that is larger than an outer diameter of
said nozzle; and
wherein the nozzle is not rigidly coupled with the
nozzle installation section.
OPINION
Claims 1, 3---8, 17-20, and 22
The Examiner finds that Trey discloses all of the limitations of
independent claim 1 including, in relevant part, that the nozzle is not rigidly
coupled with the nozzle installation section. Final Act. 2-3. In particular,
the Examiner finds that "nozzle 5 is not rigidly coupled to the nozzle
installation section because lid member [ or sealing ring] SR is pliable and
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Application 14/583,945
permits relative movement between nozzle 5 and nozzle installation section
7." Id. at 3 (citing Trey, Figs. 3--4); see also Ans. 8 (emphasis omitted)
("[T]he only connection between the nozzle 5 and nozzle installation section
7 ... is a pliable sealing ring, gasket or caulking which is present merely to
prevent smoke from passing through the hole 'O' and not for any structural
rigidity between the parts. This allows for relative movement between the
parts with little resistance.").
Appellant argues that Trey "fails to specify whether its nozzle 5 i[ s]
rigidly coupled or not" (Reply Br. 4) and, more particularly, "does not
disclose that sealing ring SR is pliable," only that the subsequent seal of
"caulking" is pliable (Appeal Br. 17-18 (citing Trey 4:35-37)). Appellant
also argues that "Trey's disclosure is unclear and ambiguous at best with
regard to the shape and position of the sealing ring SR" (Appeal Br. 18) and
that Figures 3 and 4 of Trey "show that the hole O shares an outline with
nozzle 5, [ such that] the skilled person would understand that the rigid
connection is a result of a form-fitting design, caused by the nozzle 5 and the
hole O having substantially the same diameter" (id. at 13) ( emphasis
omitted). Appellant also argues that "[ o ]ne can easily conceive of ways that
a sealing ring can be provided to seal a rigid connection." Id. at 18.
The Examiner has not demonstrated that Trey explicitly discloses that
the sealing ring or gasket inserted into the hole O is pliable. That is, we
agree with Appellant that Trey explicitly discloses only that "it is also
possible to provide a subsequent seal with the aid of a plyable sealing
material such as caulking." Trey 4:35-37 (emphasis added). The Examiner
has also not demonstrated that Trey implicitly or inherently discloses that the
sealing ring or gasket inserted into the hole O is pliable by providing any
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Application 14/583,945
evidence or persuasive technical reasoning to support such a determination.
Without further evidence or explanation, one of ordinary skill in the art can
only speculate as to (i) the type of material of the sealing ring or gasket, (ii)
the dimensions of the sealing ring or gasket, and (iii) whether the material
and dimensions of the sealing ring or gasket allow for relative movement
between the nozzle and the nozzle installation section. Thus, one of
ordinary skill in the art can only speculate whether nozzle 5 is not rigidly
coupled to the nozzle installation section. Such speculation is insufficient to
support the anticipation rejection under review. 3
For the foregoing reasons, we find that the Examiner erred in finding
that Trey discloses all of the limitations of independent claim 1. We do not
sustain the rejection of claim 1 under 35 U.S.C. § 102(a)(l) as anticipated by
Trey. We also do not sustain the rejection of claims 3-8, 17-20, and 22,
which depend directly or indirectly from independent claim 1.
Claim 21
Independent claim 21 does not recite that the nozzle is not rigidly
coupled with the nozzle installation section. Appeal Br. 31 (Claims App).
Independent claim 21 recites, in relevant part, "a lid member that closes a
gap between the nozzle and the nozzle installation section, wherein the lid
member is combined with or connected to the nozzle installation section."
Id. The Examiner finds that Trey discloses all of the limitations of
independent claim 21, including "a lid member (SR) that closes a gap
between the nozzle and the nozzle installation section." Final Act. 5 ( citing
3 We note that any consideration of what one of ordinary skill in the art may
deem obvious regarding the material and dimensions of the gasket is
immaterial to the anticipation rejection made here and before us for review.
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Application 14/583,945
Trey 4:29-37, Figs. 1--4). In particular, the Examiner finds that "inner
diameter of insertion hole O is larger than the outer diameter of the nozzle 5
to allow nozzle 5 to be inserted through the insertion hole O and allow lid
member SR [sealing ring] to fit between insertion hole O and nozzle 5." Id.
at 3 ( citing Trey 4:29-35); see also Ans. 7 ("Since a sealing ring, gasket or
caulking is inserted into the hole between the nozzle and the installation
section of Trey ... , a gap is present between the nozzle and the installation
section at least at the space occupied by the sealing ring SR.").
Appellant argues that a "skilled person would understand [ from
Figures 3 and 4] that there is no gap between the nozzle 5 and the hole O"
and "Trey [does] not make any mention of the word 'gap' or any
equivalents." Appeal Br. 24 ( emphasis omitted). Appellant also argues that
Trey's description of nozzle 5, insertion hole 0, and sealing ring SR is
inconsistent. Id. at 8-13, 24. More particularly, Appellant argues that
Figure 3 suggests that SR is "'hidden' within O," whereas Figure 4 suggests
that SR "'surround[s]' O," in which case SR must be "located on top of the
bottom 1 O" "as the diameter of the area indicated SR well exceeds the
diameter indicated as O." Id. at 11-12. Appellant also points to the
Examiner-identified portion of Trey, i.e., column 4, lines 29-35, with the
"first sentence ... seem[ing] to indicate that the sealing ring SR is provided
inside the hole" and "the second sentence seem[ing] to indicate that the
sealing ring SR is provided as caulking on top of the hole." Id. at 13.
An Examiner's burden of proving unpatentability when rejecting
claims in a patent application is by a preponderance of the evidence. In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). In order to satisfy this
standard, the evidence must demonstrate that it is more likely than not that
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the alleged facts are actually true. See Bosies v. Benedict, 27 F.3d 539, 542
(Fed. Cir. 1994) (noting that the preponderance of the evidence standard
"only requires the fact finder 'to believe that the existence of a fact is more
probable than its nonexistence.'" (quoting In re Winship, 397 U.S. 358, 371
(1970)). For the reasons that follow, we determine that the Examiner has
met that burden in this case.
The Examiner points to Trey's explicit textual disclosure that "the
extinguishing nozzle 5 [is] preferably sealed off relative to the enclosing rim
7, 7 A by a sealing element SR formed, for example, as a prefinished sealing
ring or gasket inserted into the respective hole[] O." Trey 4:32-35
( emphasis added). That (i) Trey also discloses that "it is also possible to
provide a subsequent seal with the aid of a plyable sealing material such as
caulking" (id. at 4:35-37), (ii) Figure 4 suggests an SR with an outer
diameter that is greater than that of the diameter of the insertion hole 0, or
(iii) Figures 3 and 4 appear to illustrate that hole O shares an outline with
nozzle 5 does not negate this explicit disclosure of Trey in which the sealing
ring is inserted into the hole. That is, the textual disclosure of Trey conveys
that it is more probable than not that there is an embodiment in which a
sealing ring or gasket is inserted into the insertion hole O to seal the nozzle
relative to the enclosing rim. Accordingly, we agree with the Examiner that
because "a sealing ring [or] gasket ... is inserted into the hole between the
nozzle and the installation section of Trey ... , a gap is present between the
nozzle and the installation section at least at the space occupied by the
sealing ring SR." Ans. 7.
We have also considered Appellant's argument that "the provision of
a sealing ring does not, in and of itself, indicate the presence of a gap
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Application 14/583,945
between parts." Appeal Br. 24. For example, Appellant argues that "a
sealing ring [might] merely amount[] to an additional insurance that contact
between ... contacting parts will be maintained in case of application of
force" or "a sealing ring could be provided in a groove or recess spanning
the circumference of the nozzle 5, with the non-recessed portions of the
nozzle 5 being in contact with the base 10." Id. at 24--25. As an initial
matter, neither Trey's written disclosure, nor drawings, gives any indication
that there is a groove or recess spanning the circumference of the nozzle.
Secondly, that a sealing ring could be used with contacting parts does not
negate the explicit disclosure of a sealing ring or gasket inserted into the
insertion hole of the nozzle. Thus, on the record before us, the Examiner's
findings that there is a gap between a nozzle and nozzle installation section
in at least one embodiment is supported by a preponderance of the evidence.
For the foregoing reasons, we do not find that the Examiner erred in
finding that Trey discloses all of the limitations of independent claim 21.
We sustain the rejection of claim 21 under 35 U.S.C. § 102(a)(l) as
anticipated by Trey.
DECISION
The Examiner's decision to reject claims 1, 3-8, 17-20, and 22 under
35 U.S.C. § 102(a)(a) as anticipated by Trey is reversed.
The Examiner's decision to rejection claim 21 under 35 U.S.C.
§ 102(a)(a) as anticipated by Trey is affirmed.
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Application 14/583,945
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)(l )(iv).
AFFIRMED-IN-PART
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