Ex Parte Yu

Patent Trial and Appeal Board

Jan 9, 2013

11370904 (P.T.A.B. Jan. 9, 2013)

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.
11/370,904 03/09/2006 Hong-Zeng Yu FMG.017 3332
48234 7590 01/10/2013
MEREK, BLACKMON & VOORHEES, LLC
673 S. WASHINGTON ST
ALEXANDRIA, VA 22314
EXAMINER
REIS, RYAN ALEXANDER
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
01/10/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte HONG-ZENG YU
________________

Appeal 2010-011380
Application 11/370,904
Technology Center 3700
________________

Before MEREDITH C. PETRAVICK, MICHAEL W. KIM, and JAMES A.
TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011380
Application 11/370,904

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STATEMENT OF THE CASE1
Hong-Zeng Yu (Appellant) seeks our review under 35 U.S.C § 134 of
the Examiner’s final decision rejecting claims 1-3, 5, 7-9, 12, 13, 18, 19, and
22-25. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Appellant’s claimed invention relates to fire protection sprinkler
systems. Spec. 3.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A sprinkler system for protecting a space having a ceiling from
a fire producing a hot ceiling gas flow that flows generally
horizontally at the ceiling, comprising:
pipes for conducting to the fire an extinguishant from a
source of extinguishant under pressure;
sprinklers mounted on the pipes for issuing extinguishant
from the pipes to the fire, the sprinklers being actuatable from a
closed position to an open position and having thermal sensing
elements for actuating the sprinklers; and
a system valve positioned upstream of all of the sprinklers to
control flow of the extinguishant under said pressure to the
sprinklers,
wherein the pipes downstream of the system valve are filled
with liquid before any of the sprinklers is actuated, and wherein
the sprinklers each have a Response Time Index value in the
range of 40 - 100 (ft sec)1/2 and a temperature rating in the
range of 190°F - 650° F, whereby the combination of said
Response Time Index value and said temperature rating
prevents the sprinklers outside a designated area directly above

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Oct. 29, 2009) and Reply Brief (“Reply Br.,” filed Feb. 25, 2010),
and the Examiner’s Answer (“Ans.,” mailed Apr. 7, 2010).
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Application 11/370,904

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the fire from actuating before extinguishant under said pressure
is discharged from any of the sprinklers of the sprinkler system.
The Examiner relies upon the following evidence:
Yao ’118 US 3,692,118 Sep. 19, 1972
Yao ’621 US 5,511,621 Apr. 30, 1996
Pounder US 2006/0060361 A1 Mar. 23, 2006
Claims 1-3, 5, 7-9, 12, 13, 18, 19, and 22-25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Yao ’621, Pounder, and Yao
’118.
FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
ANALYSIS
Each of the claims at issue require sprinklers with a Response Time
Index (“RTI”) value in the range of 40-100 (ft sec)1/2 and a temperature
rating in the range of 190°F - 650° F, or more narrowly, in the range of
212°F - 650° F. All of the claims also require a wet-pipe sprinkler system,
that is, a system where “the pipes downstream of the system valve are filled
with liquid before any of the sprinklers is actuated,” or “filling the sprinkler
system downstream of the system valve with liquid before any of the
sprinklers actuate.”
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There is no dispute that sprinkler systems are disclosed by Yao ’621
that utilize an RTI within the claimed range, by Pounder that utilize a
temperature rating within the claimed range, and by Yao ’118 that utilize
pipes downstream of the system valve filled with liquid before sprinklers are
actuated. Appellant instead asserts, through various arguments, that the
cited prior art should not be considered in combination.
Yao ’621 and Pounder
Appellant argues against the combination of Yao ’621 and Pounder on
the grounds that: (1) applying the higher temperature rating of Pounder
would slow down the sprinkler response time of Yao ’621, which discloses
an adequate response at a lower temperature rating (App. Br. 14-15); (2)
Yao ’621 teaches away from a faster or slower response time other than as
disclosed (App. Br. 15-16); (3) Pounder’s disclosure of its temperature
rating only in connection with its RTI value would lead a person of ordinary
skill away from the claimed invention (App. Br. 16-17); (4) Pounder teaches
away from using the disclosed temperature rating with the claimed higher
RTI range because it implies that it would not insure adequately fast
sprinkler response (App. Br. 20-21); (5) Yao teaches away from using the
temperature range of Pounder because such a modification “might cause the
system of Yao ’621 not to operate in the manner that Yao ’621 intended
(App. Br. 21-22); and (6) Yao ’621 adjusts the timing of discharge by means
other than changing the RTI value and/or temperature rating (App. Br. 22-
23).
With regard to the arguments raised above, we find no error in the
Examiner’s reasoning that applying the higher temperature rating of
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Application 11/370,904

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Pounder, even if it results in a slower actuation, would yield an adequately
fast sprinkler time. Ans. 5. We further agree with the Examiner, in light of
the cited references, that the “RTI value and temperature rating are two
performance variables which can be chosen independent of each other and
tailored to produce a desired performance.” Ans. 6. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). Appellant offers insufficient evidence to
show that the claimed RTI and temperature rating ranges yield anything but
predictable results, and we note that argument of counsel cannot take the
place of evidence. See In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996);
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
We further disagree with Appellant’s assertion that the cited
references teach away from one another or otherwise would be rendered
inoperable in combination. It is not enough for Appellant to show that there
are differences between two references. See In re Beattie, 974 F.2d 1309,
1312-13 (Fed. Cir. 1992). In each instance where Appellant attacks the prior
art for the alternative temperature range or RTI employed, Appellant has not
convincingly shown that the prior art reference criticizes, discredits, or
otherwise discourages the solution claimed in the application. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). (“The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed in the ...
application.”). We are not persuaded, as Appellant suggests, that a choice in
the prior art to employ a particular RTI in connection with a temperature
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range, or a wet-pipe system versus a dry-pipe system, teaches away from
any other combination that results in a desired performance. By merely
pointing to differences in the individual cited references, Appellant has not
overcome the Examiner’s finding that the “references show that the matter in
appellant’s claimed invention was previously known and the sensing
elements are known to be readily adjustable according to desired
performance requirements.” Ans. 6.
Appellant’s attempt to distinguish the claimed invention from Pounder
on the grounds that the claimed RTI value range of 40-100 (ft sec)1/2 is
outside of the RTI value range disclosed in Pounder of less than 40 (ft sec)1/2
is also unpersuasive. See Titanium Metals Corp. v. Banner, 778 F.2d 775,
783 (Fed. Cir. 1985) (a prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are close enough
that one skilled in the art would have expected them to have the same
properties.). As noted above, the Examiner relies on Yao ’621 for a
disclosure of a sprinkler system that utilizes an RTI within the claimed
range, not Pounder. Moreover, Appellant recognizes that the system
disclosed in Pounder discloses an RTI of less than 40 (ft sec)1/2 to satisfy a
particular standard. App. Br. 26. Appellant has not shown that a marginally
higher RTI of 40 (ft sec)1/2 as claimed achieves unexpected results relative to
the prior art range. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990).

Yao ’621 and Yao ’118
Appellant argues against the combination of Yao ’621 and Yao ’118
on the grounds that: (1) the intended operation and purpose of Yao ’621, a
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dry-pipe system, would be defeated by modifying it to a wet-pipe system as
disclosed by Yao ’118 because it would alter the period of delay and may
actuate one or a few nozzles closest to the fire first (App. Br. 17-19, 23-24,
28-29) and (2) the Examiner’s reasoning that the combination would create a
fast response time is not valid because Yao ’621 intends to provide a delayed
response time (App. Br. 19).
We are unpersuaded by Appellant’s assertion that the wet-pipe system
of Yao ’118 may not be considered in combination with the dry-pipe system
of Yao ’621. The Appellant has not addressed the combination of prior art
references as a whole but simply improperly argues the merits of Yao ’621
and Yao ’118 individually. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is not . . . that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art”). “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co., 550 U.S. at 416. We find that
Appellant has not shown that the claimed combination of known elements
yields anything but predictable results, and that the Examiner’s reasoning to
combine the teachings of Yao ’621, Pounder, and Yao ’118 “for the purpose
of having an adequately fast sprinkler response to a fire,” and “to create a
fast response time for extinguishing material from the nozzle when the
nozzle is actuated,” articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. Ans. 4, see also KSR at 418
(2007).
Appeal 2010-011380
Application 11/370,904

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CONCLUSIONS OF LAW
We conclude that the Appellant has not overcome the Examiner’s
rejection of claims 1-3, 5, 7-9, 12, 13, 18, 19, and 22-25 under 35 U.S.C. §
103(a) as unpatentable over Yao ’621, Pounder, and Yao ’118.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-3, 5, 7-9,
12, 13, 18, 19, and 22-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).
AFFIRMED

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