Ex Parte Kikkawa et al

Patent Trial and Appeal Board

Jun 2, 2016

12733423 (P.T.A.B. Jun. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121733,423 03/01/2010 Akimitsu Kikkawa
23364 7590 06/06/2016
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
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.
KIKK3002/FJD 6389
EXAMINER
GORMAN, DARREN W
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
06/06/2016 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):
MAIL@BACONTHOMAS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKIMITSU KIKKA WA, YOSHIO WATANABE,
TAKAHIRO ISHIHARA, TAKAFUMI ANEZAKI, and TATSUKI ENDO
Appeal2014--005525
Application 12/733,423
Technology Center 3700
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Akimitsu Kikkawa et al. (Appellants) 1 seek our review under 35
U.S.C. § 134 of the Examiner's Final Rejection under 35 U.S.C. § 102(b) of
claims 1, 4, 6-12, and 14 as anticipated by Lueddecke (US 5,762,144, iss.
June 9, 1998); and as anticipated by Pounder (US 4,580,729, iss. Apr. 8,
1986). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Yamato Protec
Corporation. Appeal Br. 1.
Appeal2014--005525
Application 12/723,423
CLAIMED SUBJECT MATTER
Claim 1, the only independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A fire-extinguishing spray nozzle, comprising:
a main body with a circular port for injecting fire-
extinguishing liquid:
a support portion supported by said main body; and
an obstacle with which the fire-extinguishing liquid
injected from the port collides, wherein:
said obstacle which is a truncated-cone includes:
an opposing swface opposite to said injecting port, which
is a circular plane; and an inclined surface,
said obstacle is fixed through said support portion to said
main body, the support portion has a beam connected to the
obstacle; and a support column positioned at the main body so as
to be opposite to the obstacle,
a joint portion of the beam to the inclined surface has an
outer diameter larger than an inner diameter of the injecting port,
and
said opposing surface is arranged within an injection
region of the fire-extinguishing liquid injected from the injecting
port.
ANALYSIS
Anticipation of Claims 1, 4, 6-12, and 14 by Lueddecke
Appellants argue claims 1, 4, 6-12, and 14 as a group. See Appeal Br.
5---6; Reply Br. 2-3. We select independent claim 1 as the representative
claim for this group such that the remaining claims stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(l)(iv). We have considered Appellants'
arguments raised in the Appeal and Reply Briefs, but do not find them
persuasive to demonstrate error in the Examiner's rejection of claim 1 as
being anticipated by Lueddecke.
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Application 12/723,423
The Examiner finds that Lueddecke anticipates claim 1 by disclosing
a fire-extinguishing spray nozzle comprising a main body with a circular
port for injecting fire-extinguishing liquid, including, inter alia,
an obstacle (9) with which the fire-extinguishing liquid injected
from the port collides, wherein the obstacle is a truncated cone
[having] an opposing [circular] surface (top of9) opposite to the
injecting port, the surface . . . being located in a plane; and
[having] an inclined surface (outer-peripheral surface of 9),
wherein the obstacle is fixed through the support portion to the
main body.
Final Act. 3.
Appellants take issue with the analysis and conclusions presented in
the Final Action, first contending that "Lueddecke discloses a sprinkler
nozzle including a scattering pot 7 .... [that] is truncated, but [that] no spray
strikes the inclined surfaces," which "is not the case with the present
invention." Appeal Br. 5. Appellants also submit that because "the scatter
pot sits on the support cone 9," that "the spray strikes the scatter pot 7 and
not the support cone 9, and certainly not as an initial encounter," so that
"support cone 9 cannot be the [claimed] 'obstacle."' Reply Br. 3
However, the Examiner observes that "it is unclear why Appellants[]
are arguing about the element designated with reference numeral '7 ', as no
part of that element is relied upon to anticipate any feature of the instant
application claims," explaining that the element designated with reference
number '9' is relied upon to anticipate the recited 'obstacle,"' and that "[i]t
is unmistakable to anyone viewing the prior art drawings [of] Lueddecke
that element '9' is an obstacle .... formed in the shape of a truncated cone."
Ans. 2-3. The Examiner also reasons that "since element '9' is clearly in
the direct path of the liquid ejected from the circular port (3) of Lueddecke,
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Application 12/723,423
there is no question that at least some of the ejected liquid will collide with
obstacle '9', including its truncated-conical outer surface." Id. at 3.
We agree with the Examiner that "the existence of element '7' of
Lueddecke does not preclude the other shown and disclosed elements of
Lueddecke from clearly anticipating the recited structural limitations of the
claimed device." Id.. The presence of additional structures in the prior art
does not undermine a rejection where the claim uses "comprising." See
Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1319 (Fed. Cir.
2009) ("The claim uses the term 'comprising,' which is well understood in
patent law to mean 'including but not limited to."').
Appellants continue as if the Examiner is relying on scattering pot 7
being the obstacle, next asserting that "Lueddecke does not disclose that, in
an obstacle, a portion opposite to an injection port is a plane surface,"
because "the support cone has a scattering pot [7 that] comprises a
cylindrical bore and an inner cone as a base." Appeal Br. 6.
In response, the Examiner explains that "it is unmistakable that the
upper surface [of element 9] (see reference number '18' in Figure 1 of
Lueddecke) is a planar surface," also pointing to Figure 3 of Lueddecke as
disclosing that "the upper surface of obstacle element '9' is clearly circular."
Ans. 3. Although acknowledging that "[it] is true that support 9 has a
circular top surface," Appellants continue to assert that the spray does not
strike this surface," but "strikes the inner core 11 of the scatter pot 7." Reply
Br. 3.
We agree with the Examiner that "it is clear that Lueddecke shows 'an
obstacle with which the fire-extinguishing liquid injected from the port
collides."' Ans. 3. "A reference anticipates a claim if it discloses the
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Application 12/723,423
claimed invention 'such that a skilled artisan could take its teachings in
combination with his own knowledge of the particular art and be in
possession of the invention."' In re Graves, 69 F.3d 1147, 1152 (Fed. Cir.
1995) (quoting In re LeGrice, 301F.2d929, 936, In re Donohue, 766 F.2d
531, 533 (Fed. Cir. 1985)) (parallel citations omitted).
For the reasons set forth above, we discern no error in the Examiner's
findings and agree that the fire-extinguishing spray nozzle disclosed by
Lueddecke anticipates claim 1, and claims 4, 6-12, and 14 which fall with
claim 1.
Anticipation of Claims 1, 4, 6-12, and 14 by Pounder
Appellants also argue claims 1, 4, 6-12, and 14 as a group. See
Appeal Br. 6-8. We select independent claim 1 as the representative claim
for this group such that the remaining claims stand or fall with claim 1. We
have considered Appellants' arguments raised in the Appeal and Reply
Briefs, but do not find them persuasive to demonstrate error in the
Examiner's rejection of claim 1 as being anticipated by Pounder.
The Examiner finds that Pounder anticipates claim 1 by disclosing a
fire-extinguishing spray nozzle comprising a main body with a circular port
for injecting fire-extinguishing liquid, including, inter alia,
an obstacle (24) with which the fire-extinguishing liquid injected
from the port collides, wherein the obstacle is a truncated cone
[having] an opposing [circular] surface (top of 24, shown as
reference number 36 in Figure 6) opposite to the injecting port,
the surface ... being located in a plane; and [having] an inclined
surface (outer-peripheral surface of 24), wherein the obstacle is
fixed through the support portion to the main body.
Final Act. 4.
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Appeal2014--005525
Application 12/723,423
Appellants first contend that while "Pounder discloses a central boss
24 with an inclined .... top surface [that] has a loading pin 28 provided to
receive the lower end of a thermally responsive element 30," that"[ w ]ithout
a circular plane surface as defined in claim 1 for receiving flow which is
then dispersed and collides with the dispersion flow which strikes the
inclined surface, the desired dispersion of the fire-extinguishing fluid is not
possible." Appeal Br. 6-7.
However, the Examiner explains that "it is clear when viewing at least
Figure 1 of Pounder that the top surface of obstacle element '24' is a circular
planar surface," and that "[t ]he existence of element '28' of Pounder does
not preclude the other shown and disclosed elements of Pounder from
clearly anticipating the recited structural limitations of the claimed device."
Ans. 4. Again we note that the presence of additional structures in the prior
art does not undermine a rejection where the claim uses "comprising."
Exergen Corp., 575 F.3d at 1319.
Appellants also contend that in Pounder "a member corresponding to
the column of the present invention is not located opposite to another
member corresponding to the obstacle of the present invention," because "in
Fig. 3 of Pounder, the vertically-oriented portion 22 is not opposite to a boss
24." Appeal Br. 7. Appellants assert that "[i]f a configuration of the boss is
decided upon so that the boss may be opposite to the vertically-oriented
portion of each of the frame arms, a portion adjacent to the boss of each of
the frame arms [of Pounder] has to be rather longer in the axial direction."
Appeal Br. 7-8.
However, we determine the scope of the claims in a patent application
not solely on the basis of the claim language, but upon giving claims "their
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Application 12/723,423
broadest reasonable interpretation consistent with the specification" and "in
light of the specification as it would be interpreted by one of ordinary skill in
the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (citations omitted). "It is the [Appellants'] burden to precisely define
the invention, not the PTO's." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997) (citation omitted).
As the Examiner points out, "elements '20' and '22' of[] Pounder ...
are laterally outwardly located frame arms which are positioned so as to be
laterally outward of, and longitudinally parallel with the obstacle (24) and
supported by the main body (12) of the nozzle." Ans. 4--5. While agreeing
that Pounder's elements "are not 'opposite to the obstacle,"' the Examiner
reasons that "the broadest reasonable interpretation of this limitation, in view
of Appellants' disclosure, is that the support column is located laterally
outward of, and longitudinally parallel with the obstacle," and that "since
such is exactly what is shown by Pounder, this limitation is met since the
support column(s) [20, 22] of Pounder are opposite to the obstacle [24] in
the same manner that Appellants' support column(s) [52] are opposite to the
obstacle [36]." Id. at 5. Appellants have not apprised us of any error in the
Examiner's findings and conclusions, and we find none.
For the reasons set forth above, we agree with the Examiner that the
fire-extinguishing spray nozzle disclosed by Pounder anticipates claim 1,
and claims 4, 6-12, and 14 which fall with claim 1.
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Application 12/723,423
DECISION
We AFFIRM the Examiner's rejections.
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) (2012).
AFFIRMED
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