Ex Parte Siewert et alDownload PDFPatent Trial and Appeal BoardSep 27, 201713976472 (P.T.A.B. Sep. 27, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/976,472 06/27/2013 Bryan Robert Siewert 67183-037PUS1; 57055US01 1016 26096 7590 09/29/2017 TART SON OASKFY fr OT DS P C EXAMINER 400 WEST MAPLE ROAD SUITE 350 REIS, RYAN ALEXANDER BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 09/29/2017 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): ptodocket @ cgolaw. com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRYAN ROBERT S IE WERT, ULF J. JONS SON, and MIKE LINDSAY Appeal 2016-007278 Application 13/976,472 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRADLEY B. BAYAT, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 21—23, 25—33, and 35—40. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM-IN-PART. 1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed Dec. 10, 2015) and Reply Brief (“Reply Br.,” filed July 25, 2016), the Examiner’s Answer (“Ans.,” mailed May 26, 2016) and the Final Office Action (“Final Act.,” mailed May 1, 2015). 2 Appellants identify UTC Fire & Security Americas Corporation, Inc. as the real party in interest (Appeal Br. 1). Appeal 2016-007278 Application 13/976,472 THE INVENTION Appellants’ claimed invention relates to a fire suppression system that includes a sprinkler nozzle (Spec. 1, line 25). Claim 21, reproduced below, is illustrative of the subject matter on appeal. 21. A sprinkler system, comprising: a sprinkler nozzle; at least one conduit connected with the nozzle for delivering a fire extinguishing fluid to the nozzle, the conduit and the nozzle establishing a discharge path; a pneumatically driven pump connected with the conduit for pumping fluid into the conduit; and a gas source providing pressurized gas to the pump for driving the pump, the gas source providing the gas to the discharge path for achieving a bubbly mixture of liquid and gas bubbles in the discharge path, wherein the gas bubbles burst upon exiting the nozzle causing the fluid to break up into liquid droplets establishing an effervescent mist discharge of the fluid from the nozzle. THE REJECTIONS 1. Claims 21—23, 26—33, and 36-40 are rejected under 35 U.S.C. § 102(b) as being anticipated by Smagac (US 6,267,183 Bl, iss. July 31, 2001). 2. Claims 25 and 35 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Smagac. 2 Appeal 2016-007278 Application 13/976,472 ANALYSIS Anticipation Independent system claim 21 Independent claim 21 is directed to a sprinkler system including four structural components: “a sprinkler nozzle,” “at least one conduit,” “a pneumatically driven pump,” and “a gas source.” See Appeal Br. 10, Claims App. The Examiner finds, inter alia, the claimed sprinkler nozzle in Smagac’s spray nozzle 114, and that Smagac’s nitrogen bottles 101 constitute the claimed gas source. Ans. 2. The Examiner also finds that “[t]he Smagac reference discloses a pressurized water and foam mixture which is expelled from a nozzle. The Examiner maintains that at least a portion of the bubbles within the mixture of Smagac burst upon exiting the nozzle due to the nature of the high pressure discharge.” Id. at 7. Appellants’ arguments solely attempt to distinguish claim 21 based on the type of discharge from the Smagac device. Appeal Br. 2—6. For example, Appellants argue: The Smagac reference teaches that a low moisture content fire suppressant foam or a dry fire suppressant foam is used and applied by the device of that reference, which is quite the opposite from teaching a bubbly mixture of liquid and gas bubbles or that such gas bubbles burst upon exiting a nozzle causing fluid to break up into liquid droplets establishing an effervescent mist discharge of fluid from the nozzle. The foam of the Smagac reference is a pressurized expanded foam that has consistent bubble structure when applied to a structure to be protected with the foam. In order for those bubbles to have longevity and for the foam to have proper adhesion, those bubbles will not burst upon exiting the nozzle and therefore 3 Appeal 2016-007278 Application 13/976,472 cannot cause tiny droplets or an effervescent mist to be formed. If that were the case, then the intended result of applying the foam would be lost. In other words, if the foam bubbles burst, the discharge ceases to be a foam so it is improper to attempt to equate a dry foam with a liquid mist. Id. at 3^4. There is no dispute that the structural limitations of claim 21 are met by Smagac. The only question being whether the functional limitations of claim 21 can be found in Smagac. Schreiber teaches that writing a claim by mixing structural and functional limitations comes at a price. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The price being, when the structural limitations are met by a single prior art reference, and when the examiner “has reason to believe” that the prior art reference inherently teaches the functional limitation, the burden shifts to the patent applicant to show that the functional limitation cannot be met by the single prior art reference. Id. (citing In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). Here, the Examiner provides justification for this belief by finding that the Smagac device is capable of producing “gas bubbles [that] burst upon exiting the nozzle causing the fluid to break up into liquid droplets establishing an effervescent mist” as claimed.3 The Examiner cites column 6 line 42 to column 7 line 36 of Smagac as disclosing this functionality. See Ans. 3. This portion of Smagac discloses that nozzle 114 can be a “spray nozzle” and that “outlet 114 can also be a plurality of sprinkler heads located on the interior or exterior of a structure to provide a 3 We note that claim 21 does not specify the extent to which gas bubbles must “burst upon exiting the nozzle” in order to result in “an effervescent mist discharge.” 4 Appeal 2016-007278 Application 13/976,472 passive application of the foam to the object to be protected.” Smagac, col. 7, lines 32—36. Smagac’s sprinkler head operates in a similar environment as Appellants’ claimed sprinkler system. Moreover, Smagac’s design depicted in Figure 1, and relied upon by the Examiner, is similar in design to the claimed sprinkler system, as shown in Appellants’ Figure 1 embodiment. As such, we find that the Examiner’s belief is grounded in sufficient rationale so as to establish a prima facie case of anticipation. See Schreiber, 128 F.3d at 1478 (explaining that the examiner’s observation that the prior art device had the “same general shape” as the claimed device established a prima facie case of inherent anticipation); see also Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886 (Fed, Cir. 2011). Therefore, the Examiner met the initial duty of supplying a factual basis for supporting the proffered inherency position to shift the burden to Appellants to show that the prior art structure does not inherently possess the functionally defined limitation of the claimed device. Appellants, however, have not offered any explanation as to why the spray nozzle and sprinkler heads disclosed in Smagac are not capable of performing the claimed function. Instead, Appellants argue that “[t]he sprinkler nozzle of Appellant’s [sic] claim 21 inherently has structural limitations that provide the discharge recited in that claim.” Reply Br. 2. But the only structural limitation on the sprinkler nozzle of claim 21 is that it is connected to a conduit. Appellants’ arguments fail to persuasively rebut the Examiner’s rejection because they fail to show that Smagac’s prior art structure does not inherently possess the functionally defined limitations of the claimed system. 5 Appeal 2016-007278 Application 13/976,472 Accordingly, we sustain the rejection of independent claim 21, and its dependent claims 23 and 26—30, which are not separately argued. Dependent system claim 22 Claim 22 depends from independent claim 21 and recites “wherein the discharge is an effervescent water mist discharge.” Thus, claim 22 further defines the functional limitation of claim 21, and does not add any additional structural limitation. Appellants’ arguments regarding the functional limitation of claim 22 (see Appeal Br. 6—7) are unpersuasive for the same reasons set forth above. Accordingly, the rejection of claim 22 is sustained. Independent method claim 31 Claim 31 recites “achieving an effervescent mist discharge of the fluid from the nozzle as gas bubbles from the mixture of liquid and gas bubbles burst upon exiting the nozzle, thereby causing the fluid to break up into liquid droplets establishing the effervescent mist discharge from the nozzle.” In rejecting method claim 31 as anticipated by Smagac, the Examiner relies on the same findings as system claim 21. See Ans. 4. Appellants contend that “the Examiner’s intended use argument is inapplicable to Appellants’ method claims 31—40” because “[t]he effervescent mist discharge of the method claims is positively recited as something that is achieved as one of the method steps.” Reply Br. 2. We agree with Appellants. Due to the difference in scope between system claim 21 and method claim 31, we find that the Examiner has not made the requisite findings to establish a prima facie case of anticipation as 6 Appeal 2016-007278 Application 13/976,472 to claim 31. Accordingly, we do not sustain the rejection of independent claim 31, and its dependent claims 32, 33, and 36-40. Obviousness Dependent system claim 25 The Examiner finds that “Smagac discloses fire extinguishing water from a municipal water supply is a known water source.” Ans. 6 (citing Smagac at col. 4, lines 13—32). Appellants contend that “a private well is not a municipal water supply” and “there is effectively no teaching within the Smagac reference to suggest having water supplied at a municipal supply pressure level.” Appeal Br. 8. Appellants also contend that “[i]f anything, the Smagac reference is teaching away from using a municipal water supply.” Reply Br. 2. Appellants’ arguments are not persuasive. Smagac discloses, at column 4, lines 13—32, that in “remote location^]” there are “no hydrants.” See Final Act. 6. A person of ordinary skill in the art would understand that a hydrant in this context means a fire hydrant that is typically attached to a municipal water supply and used to provide water for fighting fires. Thus, Smagac discloses that a municipal water supply is a well-known source of water, as asserted by the Examiner on page 8 of the Answer. Regarding Appellants’ teaching away argument, Smagac’s teaching that no hydrants are available in remote locations is not a teaching that hydrants should not be used where available. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away when a person 7 Appeal 2016-007278 Application 13/976,472 of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”). Accordingly, the rejection of claim 25 under 35 U.S.C. § 103 is sustained. Dependent method claim 35 Claim 35 depends from independent claim 31, and the obviousness rejection suffers from the same deficiency discussed above with respect to claim 31. Accordingly, the rejection of claim 35 under 35 U.S.C. § 103 is not sustained. DECISION The rejection of claims 21—23 and 26—30 under 35 U.S.C. § 102(b) is affirmed. The rejection of claims 31—33 and 36-40 under 35 U.S.C. § 102(b) is reversed. The rejection of claim 25 under 35 U.S.C. § 103 is affirmed. The rejection of claims 35 under 35 U.S.C. § 103 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation