Ex Parte Bygbjerg et al

Patent Trial and Appeal Board

Nov 13, 2018

13703906 (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/703,906 02/04/2013
35301 7590 11/15/2018
MCCORMICK, PAULDING & HUBER LLP
CITY PLACE II
185 ASYLUM STREET
HARTFORD, CT 06103
FIRST NAMED INVENTOR
Henrik Bygbjerg
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.
6495-0565WOUS 9250
EXAMINER
BOECKMANN, JASON J
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
11/15/2018 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):
patentdocket@ip-lawyers .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRIK BYGBJERG, STEEN GAARSTED KRISTENSEN,
CARSTEN WINDT, and JENS TOFT JEPSEN
Appeal2018-001992
Application 13/703,906
Technology Center 3700
Before BRETT C. MARTIN, JEREMY M. PLENZLER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
Decision rejecting claims 1, 3, 7-9, 11, and 13-16 under 35 U.S.C. § 103(a)
as being unpatentable over Newman (US 822,546, issued June 5, 1906) and
Pecht (US 7,370,815 B2, issued May 13, 2008). 1 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Claims 2, 4--6, 10, and 12 have been cancelled.
Appeal2018-001992
Application 13/703,906
CLAIMED SUBJECT MATTER
Claims 1 and 16 are independent, with claims 3, 7-9, 11, and 13-15
depending from claim 1. Claim 1 is representative of the claims on appeal,
and is reproduced below:
1. A spray head comprising:
a body defining a central axis and further comprising a
fixation structure for fixing the spray head to a fluid supply
system,
a fluid inlet, directing fluid into an interior of the body in
a first direction,
a plurality of outlet holes arranged around the central
axis, each outlet hole of the plurality of outlet holes comprising
an initial passage section fluidly connected directly to the
interior of the body, and
a flow path through the interior of the body between the
inlet and the holes,
wherein a first set of the plurality of outlet holes is
oriented to direct the fluid leaving the first set of the plurality of
outlet holes in a second direction opposite to the first direction,
wherein the body further comprises an arrangement for
holding a fire actuation member,
wherein an angle formed between the first direction of
the fluid and the second direction is in the range between 140-
160 degrees,
wherein the first set of the plurality of outlet holes is
located at a smaller radial distance from the central axis than a
second set of the plurality of outlet holes,
wherein the first set of the plurality of outlet holes is
located closer to the fluid inlet than the second set of the
plurality of outlet holes,
wherein the second set of the plurality of outlet holes is
oriented to direct the fluid leaving the second set of the plurality
of outlet holes in a third direction, wherein an angle formed
2
Appeal2018-001992
Application 13/703,906
between the first direction and the third direction is in the range
between 89-139 degrees, and
wherein the initial passage section takes an essentially
cylindrical shape, and being in fluid communication with an
expansion section having an essentially conical shape extending
all the way from the initial passage section to an exterior of the
body.
OPINION
The Examiner finds that Newman teaches the majority of the
limitations recited in claim 1, including "an arrangement [in the body of the
spray head] for holding a fire actuation member." Final Act. 3 (noting
"arrangement (inside 22 or 21 [ of Newman]) for holding a fire actuation
member (a valve or fire actuation member is fully capable of being be placed
in element 21 or 22[)]"); see also id. at 8 (explaining "the [E]xaminer i[s]
not modifying Ne[ w ]man to include a fire actuation member ... the claims
just require the body of Newman to have an arraignment that is capable of
holding a fire actuation member" and "Newman shows a section inside 21 or
22 that is being considered the [arrangement]," which "is fully capable of
holding a fire actuation member.").
Appellants dispute this finding. See Appeal Br. 15-16. Appellants do
not identify any particular structure required by the recited "arrangement,"
but contend, for example, that "the inside of Newman's ordinary fire hose 21
and shell 22 of the nozzle form a fluid passage for transporting water from a
fire hydrant to the outlets 23, 24, and 25" and "positioning a fire actuation
member within fire hose 21 or shell 22 would block water flow to
Newman's nozzle." Id. (citing Newman, Fig. 3).
3
Appeal2018-001992
Application 13/703,906
The Examiner responds to Appellants' contention, noting that "[ t ]he
[S]pecification of the present application defines the '[arrangement]/or
holding a fire actuation member' to be element 5" and "the claim does not
provide any other structure that further defines the housing other than just
that it is capable of holding a fire actuation member." Ans. 4. The
Examiner makes clear that the finding regarding the recited "arrangement" is
based on "Newman ha[ ving] a space that could hold a fire actuation
member" because "[t]hat is all the claim requires." Id. Appellants disagree,
"not[ing] the Examiner appears to acknowledge that some additional
structure on the body is required for the recited arrangement for holding a
fire actuation member," and "submit[ting] that element 5 in the drawings is
not merely 'a housing that creates an empty space inside it,' but rather a
structure that is able to couple a fire actuation member to the body." Reply
Br. 4. Again, without identifying any particular structure required by the
recited "arrangement," Appellants contend that "Newman does not teach
such an additional structure." Id.
We agree with Appellants, as well as the Examiner, that the
"arrangement" requires some sort of structure. The issue is whether
Newman teaches the required structure. Because there is some dispute as to
what structure that "arrangement" requires, we begin by construing that
limitation. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
2003) ("The first step in both [anticipation and obviousness] analyses is a
proper construction of the claims."). Based on the language of claim 1, we
know what function the "arrangement" performs, it "hold[ s] a fire actuation
member." We know nothing, however, regarding what structure is
associated with the "arrangement." Neither Appellants, nor the Examiner,
4
Appeal2018-001992
Application 13/703,906
proposes an express construction of that term, and we have no reason to
believe that "an arrangement for holding a fire actuation member" is
understood by persons of ordinary skill in the art as the name for any
particular structure. Therefore, we determine that the "arrangement" is a
means-plus-function term, subject to 35 U.S.C. § 112, sixth paragraph.
The standard for determining whether a limitation is a means-plus-
function term is not based merely on the presence or absence of the word
"means," but, rather, is based on "whether the words of the claim are
understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure." Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (internal citation omitted). As
Appellants do not propose any particular construction, Appellants do not
contend that "an arrangement for holding a fire actuation member" is
understood as the name for any particular structure. 2 Although there is a
presumption that a limitation lacking the word "means" is not subject to
§ 112, sixth paragraph, that presumption is overcome when it is
"demonstrate[ d] that the claim term fails to 'recite sufficiently definite
structure' or else recites 'function without reciting sufficient structure for
performing that function."' Id. As noted above, claim 1 recites function
"without reciting sufficient structure for performing that function." In fact,
claim 1 simply recites "arrangement," without any additional structure, for
performing the recited function. See id. at 1350 ("Generic terms such as
'mechanism,' 'element,' 'device,' and other nonce words that reflect nothing
2 Appellants include a Declaration from one inventor, Henrik Bygbjerg, at
Appendix A of the Appeal Brief (the "Declaration"). The Declaration also
fails to establish that "an arrangement for holding a fire actuation member"
is understood as the name for any particular structure.
5
Appeal2018-001992
Application 13/703,906
more than verbal constructs may be used in a claim in a manner that is
tantamount to using the word 'means' because they 'typically do not connote
sufficiently definite structure' and therefore may invoke§ 112, para. 6.").
A means-plus-function limitation "shall be construed to cover the
corresponding structure, material, or acts described in the specification and
equivalents thereof." 35 U.S.C. § 112, sixth paragraph. As Appellants note
(Reply Br. 4), the Specification describes the recited "arrangement" as "an
arrangement 5 for holding a fire actuation member, here a glass ampoule
(not shown)" (Spec. ,r 40), which is illustrated in Appellants' corresponding
Figures la and lb. We find no other description of the recited
"arrangement" in the Specification.
Accordingly, we construe the "arrangement" recited in claim 1 as
requiring the structure of "arrangement 5" from Appellants' Specification, or
equivalents thereof.
Applying the construction of the "arrangement for holding a fire
actuation member" noted above, we note that the Examiner makes no
finding regarding, nor do we see, any structure in Newman that is the same
as Appellants' "arrangement 5." The Examiner also makes no determination
as to what would be an equivalent to that structure. We decline to speculate
as to what would qualify as an equivalent structure, and leave it to the
Examiner to make such a determination and whether Newman teaches such
equivalent structure. 3
3 That we do not sustain the Examiner's decision to reject claim 1, should
not be viewed as indication that the claim is patentable. Rather, our decision
is based only on the Examiner's failure to make any finding regarding the
structure required by the "arrangement" limitation discussed above. We
note that such structure, itself, appears to be well-known in the art, because,
6
Appeal2018-001992
Application 13/703,906
The stated bases for the rejection of dependent claims 3, 7-9, 11, and
13-15 do not cure the deficiencies noted above. Accordingly, we do not
sustain the Examiner's decision to reject claims 1, 3, 7-9, 11, and 13-15.
Claim 16
Claim 16 recites limitations similar to those recited in claim 1, but
does not include "an arrangement for holding a fire actuation member." The
Examiner finds that Newman teaches the majority of the limitations recited
in claim 16. Final Act. 2-3. The Examiner acknowledges that Newman
"fails to specifically disclose that that each hole comprises an expansion
passage section, wherein the initial passage section takes an essentially
cylindrical shape, and ... the expansion passage section takes an essentially
conical shape" with "the conical shaped section extending all the way from
the second end of the initial passage to the exterior of the body." Id. at 3.
The Examiner cites Pecht as "teach[ing] a nozzle having a fluid passageways
with an expansion passage section ( 60, fig 9), wherein the initial passage
section takes an essentially cylindrical shape, and ... the expansion passage
section takes an essentially conical shape" with "the conical shaped section
extending all the way from the second end of the initial passage to the
exterior of the body." Id. The Examiner reasons that "it would have been
obvious to one of ordinary skill in the replace the nozzles of Newman with
as noted above, Appellants provide effectively no description in their
Specification of the corresponding structure. See Lindemann
Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F .2d 1452, 1463
(Fed. Cir. 1984) (explaining that "the specification need not disclose what is
well known in the art"); see also In re Myers, 410 F.2d 420,424 (CCPA
1969) ("A specification is directed to those skilled in the art and need not
teach or point out in detail that which is well-known in the art.").
7
Appeal2018-001992
Application 13/703,906
those of Pecht ... in order to produce a full conical spray pattern as taught
by Pecht." Id. (citing Pecht 6:36).
Appellants do not dispute the Examiner's findings, other than that
related to Newman teaching "a spray head." See Appeal Br. 17-20. With
respect to the "spray head," Appellants contend that "Newman teaches a
water flow nozzle, where a stream of water exits the nozzle openings/holes
... but does not teach a spray head, which generates a mist of water (i.e.
small drops) as in the spray head of the present application." Id. at 19 (citing
Spec. ,r 27). That contention is unpersuasive because Appellants offer no
explanation as to why "generat[ing] a mist of water (i.e. small drops)" is a
requirement for something to be considered a "spray head." Paragraph 27 of
the Specification, cited by Appellants, simply states that "[i]n one
embodiment of the invention the holes comprise an expansion passage
section," which "aid to form a fluid mist." Claim 16 specifically recites the
structure of the passages that purportedly produce the mist (i.e., the
"plurality of outlet holes"). We are apprised of no persuasive reason to read
the additional "mist" requirement into the claim.
The remainder of Appellants' contentions are directed to disputing the
Examiner's rationale for modifying Newman's teachings based on those of
Pecht. See Appeal Br. 18-19. Appellants contend, for example, that "a
person of ordinary skill in the art would not have found it obvious to modify
Newman's spay pattern 'in order to produce a full conical spray pattern'
since Newman teaches that its nozzles already cover the greatest possible
area with water." Id. at 18 (citing Declaration ,r 7). 4 Appellants contend that
4 Paragraph 7 of the Declaration simply repeats the quoted portion of the
Appeal Brief.
8
Appeal2018-001992
Application 13/703,906
the combined teachings of Newman and Pecht "would lead one of ordinary
skill in the art to believe that the modification would reduce the
effectiveness of Newman's fire fighting nozzle by spraying something less
than 'a sheet of water covering the greatest possible area' as taught by
Newman." Id. Appellants also contend that "the Examiner has not provided
a [sufficient] reason that one of ordinary skill in the art would want a conical
spray pattern from each of the nozzle outlets 23, 24, and 25" in Newman,
and alleges impermissible hindsight. Appeal Br. 19. Appellants'
contentions are not persuasive.
Appellants do not dispute, for example, the Examiner's finding that
"each individual nozzle of Newman will create a wider spray pattern than it
did prior to the proposed modification because of the conical outlet."
Ans. 3. Instead, Appellants contend that "the Examiner has not provided
any evidence to support the assertion that increasing the spray pattern of
each individual nozzle would necessarily increase the overall spray pattern
of the spray head simply because a conical nozzle creates a wider spray
pattern than a straight nozzle." Reply Br. 4. If a single conical nozzle has a
wider spray pattern than a single straight nozzle, we are persuaded that an
array of conical nozzles arranged in the same orientation as an array of
straight nozzles would also have a wider spray pattern than those straight
nozzles. Appellants offer no persuasive argument or evidence to the
contrary.
Appellants also fail to explain in any persuasive manner, any alleged
reduced effectiveness of the modified nozzle in Newman. As the Examiner
notes, because "each of the nozzles would create a larger spray pattern, the
spray head of Newman as modified by F echt would have a larger spray
9
Appeal2018-001992
Application 13/703,906
pattern than that of the spray head of just Newman," which "would be
helpful in the Newman." Ans. 3. If anything, the use of a larger spray
pattern may reduce the distance of the spray, as Appellants contend. See
Reply Br. 3. That, however, simply identifies a trade-off between coverage
area and spray distance, and does not identify error in the Examiner's
rejection.
Based on the record before us, and for the reasons set forth above, the
preponderance of the evidence supports the Examiner's decision to reject
claim 16.
DECISION
We REVERSE the Examiner's decision to reject claims 1, 3, 7-9, 11,
and 13-15.
We AFFIRM the Examiner's decision to reject claim 16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
10