Ex Parte Siewert et al

Patent Trial and Appeal Board

Sep 27, 2017

13976472 (P.T.A.B. Sep. 27, 2017)

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.
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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
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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.”
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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.
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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
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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
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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
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