10568520 (P.T.A.B. May. 20, 2016)

Ex Parte Williams

Patent Trial and Appeal BoardMay 20, 2016

10568520 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 10/568,520 09/19/2006 Dwight P. Williams 102352 7590 05/24/2016 TYCO FIRE PROTECTION PRODUCTS - WILLFIRE/TFSG SUEZ SHAPER PC 1800 WEST LOOP SOUTH SUITE 350 HOUSTON, TX 77027 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. R-FP-00086US/02 - 50262 1195 EXAMINER KIM, CHRISTOPHER S ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 05/24/2016 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): IPCORRESPONDENCE@TYCOFP.COM sshaper@msn.com montgomery. smith@tycofp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DWIGHT P. WILLIAMS Appeal2013-007748 Application 10/568,520 Technology Center 3700 Before EDWARD A. BROWN, JAMES P. CALVE, and ANNETTE R. REIMERS, Administrative Patent Judges. CAL VE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from the final rejection of claims 1-3, 8-12, 14-16, and 32-35. Appeal Br. 5. Claim 31 is cancelled and claims 4-7, 13, and 17-30 are withdrawn from consideration. Id. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 41.50(b). Appeal2013-007748 Application 10/568,520 CLAIMED SUBJECT MATTER Claims 1, 8, and 32 are independent. Claim 1 is reproduced below. 1. A method of treating a difficult to extinguish fire of a flammable liquid associated with an industrial scale tank having a fixed roof, and an internal roof and a substantially enclosed space above liquid and/or the internal roof in the tank and below the fixed roof, comprising: establishing over a period of minutes a foam/film blanket over at least 90% of a surface of the liquid and/or internal roof within the tank; and discharging dry powder, for a period of less than minutes, into a space between the fixed roof and said blanket through an opening or vent in structure of the tank or fixed roof above a level of the liquid. REJECTIONS Claims 1-3, 8-12, 14-16, and 32-35 are rejected under 35 U.S.C. Â§ 112, first paragraph, for lack of written description. Claims 1-3, 8-12, and 14-16 are rejected under 35 U.S.C. Â§ 112, second paragraph, for indefiniteness. Claims 1and32-35 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Sharma (US 5,573,068, iss. Nov. 12, 1996) in view of Appellant's Admitted Prior Art ("AAPA"). Claims 1, 2, 8-12, 14, 16, and 32-35 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Boyd (US 1,917,694, iss. July 11, 1993) in view of Sharma, the AAPA, and Williams (US 5,913,366, iss. June 22, 1999) or Kimber1 (US 2,996,119, iss. Aug. 15, 1961). 1 The Final Action and Answer refer to this reference as "Foden" who was one of the co-inventors, but not the first-named inventor on the patent. 2 Appeal2013-007748 Application 10/568,520 ANALYSIS Claims 1-3, 8-12, and 14-16/or indefiniteness "difficult" (Claims 1, 8) The Examiner found that the term "difficult" in claims 1 and 8 is a relative term that renders those claims indefinite because the specification does not provide a standard to ascertain the degree of difficulty. Final Act. 4, 5. Appellant argues that the Specification does describe such fuels. The term "difficult to extinguish fuel or flammable liquid" or "difficult fuel or flammable liquid fires" is used herein to refer to fluid fuels or flammable liquids that are, at least, in substantial part, low surface tension fuels/liquids and/or high vapor pressure fuels/liquids and/or octane-boosted fuels/liquids and/or oxygenated fuels/liquids. The implied comparison in these instances would be recognized by one of ordinary skill in the art to be with the historic straight chain fuels or historical flammable liquids of the mid-20th century. Spec. 3:8-14; Appeal Br. 8. Appellant also argues that Appendix Y of the Response filed on April 7, 2010, provides pages from the Fire Protection Handbook that use the term "high vapor pressure." Appeal Br. 9-10; Reply Br. 4. Appellant further argues that a search of US patents finds the term "high vapor pressure" and "low surface tension" in the claims and specification. Appeal Br. 10. We agree with the Examiner that the term "difficult" in the preamble of claims 1 and 8 is a relative term that renders the scope of those claims indefinite. The disclosure in Appellant's Specification describes "difficult to extinguish fuel or flammable liquid" in terms of "high vapor pressure" and "low surface tension" fuels or liquids. Appellant thus describes the relative term "difficult" using two other relative terms - "high" and "low." 3 Appeal2013-007748 Application 10/568,520 There is no indication in Appellant's Specification that Appellant adopted any particular industry definition or standard for "difficult" fuels and liquids or for "high vapor pressure" and "low surface tension" fuels or liquids. Evidence of the use of these terms in previously-issued United States patents is not persuasive as the specifications of those patents may provide different disclosures for those terms than the present Specification, which does not provide any disclosure to guide our interpretation of the term "difficult." We sustain this rejection of claims 1-3 and 8-16 for indefiniteness. "space" (claim 1) The Examiner also determined that the term "space" in claim 1, line 6, appears to be a double inclusion of the "substantially enclosed space" recited in line 2. Final Act. 4. Appellant argues persuasively that the term "space" is not a double inclusion because the "space" recited in claim 1, line 2, is below the fixed roof and above the liquid and/or the interior roof, whereas "[t]he 'space' recited in claim 1 line 6 is the space below the fixed roof and above the newly established blanket." Appeal Br. 11. We do not sustain this rejection of claim 1 for indefiniteness. "cavity" (claim 15) The Examiner further determined that the term "cavity" in claim 15, line 2, appears to be double inclusion of "cavity" in claim 8, line 4. Final Act. 5. Appellant argues persuasively that the term "cavity" in claim 15 is between the floater and the fixed roof and this cavity might be different from the cavity recited in claim 8 between "the fuel/liquid and/or interior roof' and the fixed roof. Appeal Br. 11. We do not sustain this rejection of claim 15 for indefiniteness. 4 Appeal2013-007748 Application 10/568,520 "structure;; (claims 1, 8) The Examiner determined that the term "structure" in claims 1 and 8 lacks antecedent basis because an article appears to be missing before the term "structure" so it is unclear if "in structure" describes the "opening or vent" that is recited in claim 1 Final Act. 4-5. We agree with Appellant that this term in the context of claims 1 and 8 means that "an opening or vent [is] located in structure of the tank or fixed roof." Appeal Br. 11. Appellant's Specification discloses that there are vents or openings on the tank or on the roof. Spec. 6:19-21, Figs. 1-3, 5. There is no other use of"structure" in claims 1 or 8. We do not sustain this rejection. NEW GROUND OF REJECTION "The specification must conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention." 35 U.S.C. Â§ 112, ,-r 2.2 Pursuant to our authority under 37 C.F.R. Â§ 41.50(b); we reject claims 1-20 under 35 U.S.C. Â§ 112, second paragraph, for indefiniteness, because they do not particularly point out and distinctly claim the subject matter that Appellants regard as the invention. Independent claims 1, 8, and 32 recite the limitations of "establishing over a period of minutes a foam/film blanket" (claim 1 ), "discharging foam over a period of minutes" (claim 8), and "covering the surface of the liquid ... with a blanket of foam over a period of minutes" (claim 32). Claims App'x 31, 32, 35 (emphasis added). 2 Paragraph 2 of 35 U.S.C. Â§ 112 was replaced with newly designated Â§ 112(b) whenÂ§ 4(c) of the America Invents Act ("AIA"), Pub. L. No. 112- 29, took effect on September 16, 2012. Because the present application was filed before that date on September 30, 2008, we will refer to the pre-AIA version ofÂ§ 112. 5 Appeal2013-007748 Application 10/568,520 Claims 1, 8, and 32 also recite "discharging dry powder, for a period of less than minutes" (claim 1) and "discharging dry chemical for a period of less than minutes" (claims 8 and 32). Id. (emphasis added). We determine that a skilled artisan would not understand what is meant by the limitations "a period of minutes" and "less than minutes" in claims 1, 8, and 32. A plain and ordinary meaning of "a period of minutes" could include a period of several minutes, a period of minutes that is less than an hour, or a period of minutes that may extend more than 60 minutes without specific limitation. Appellant's Specification discloses "[ fJorty-five minutes represents a typical regulatorily approved time period for launching and sustaining a foam attack in a cavity between a floating roof and a top roof." Spec. 6:32- 7:7. Appellant's Specification discloses that the period of time for creating a foam blanket varies with the type of foam used, the capacity for discharging foam, the size and complexity of the tank and the nature of the fuel/liquid that it contains. Id. at 6:30-32. Appellant's Specification further discloses that a foam attack can last over 55 to 60 minutes. Id. at 7 :24-26. Thus, a review of Appellant's Specification indicates that a "period of minutes" typically includes around forty-five minutes and can extend more than 60 minutes. More than 60 minutes indicates that the "period of minutes" can actually be at least one hour. It is not clear whether claims 1, 8, and 32 are directed to particular embodiments, or are intended to encompass the entire range of examples in Appellant's Specification. It also is unclear whether "a period of minutes" is an open-ended range, as the Examiner found, such that it encompasses periods beyond the examples disclosed in Appellant's Specification. Final Act. 3--4. 6 Appeal2013-007748 Application 10/568,520 Appellant also argues that "a period of minutes" would be understood to be two minutes based on NFP A minimum application rates for foam on a liquid in a tank. Appeal Br. 7. Appellant argues that it would take 2-3 minutes to establish a foam blanket of 1 to 1 Yz inches. Id. Appellant's arguments are not persuasive because the calculations in the Appeal Brief do not appear in the Specification. In addition, Appellant discloses that NFP A guidelines for foam rate application are inadequate to distinguish a difficult fuel or flammable liquid, as claimed. Spec. 2: 1-8. In the context of extinguishing "difficult" fuels, it is unclear how much of a foam blanket must be established under claims 1, 8, and 32. This ambiguity is further compounded by the fact that claim 1 recites a period of minutes to establish a foam/film blanket over at least 90% of the surface of a liquid or internal roof in the tank. Claims 8 and 32 do not recite any degree of coverage so it is unclear how many inches of foam and what degree of coverage must be established within the "period of minutes." In addition, claim 1 recites "establishing over a period of minutes," claim 8 recites "discharging foam over a period of minutes," and claim 32 recites "covering the surface of the liquid ... with a blanket of foam over a period of minutes." It is unclear what degree of coverage must occur within the claimed "period of minutes" to "establish" or "discharge" or "cover the surface" in claims 1, 8, and 32, and whether any difference in claim scope is intended among these claims. Appellant's Specification discloses "covering at least 90% of the liquid surface with a foam blanket and/or after establishing a foam blanket for a significant period of time under the circumstances, such that at least a minimal blanket of foam is created under the circumstances." Spec. 4:6-9 7 Appeal2013-007748 Application 10/568,520 (emphasis added). It is unclear if the foam blanket in claims 1 and 32 is a "minimal" foam blanket of a particular thickness and coverage established in a minimal amount of time, and/or a blanket maintained and sustained for a period of time such as the 45 minutes for "launching and sustaining a foam attack in a cavity between a floating roof and a top roof." Id. at 6:32-7: 1 (emphasis added). A "period of minutes" in claims 1 and 8 cannot be construed as two minutes because this would exclude the preferred embodiment that inserts dry chemicals during the last ten minutes of a foam attack. Spec. 7 :2--4. Also, claim 3, which depends from claim 1, recites a dry powder discharge occurring during the last 10 minutes of "a 2002 NFP A regulated time of application of foam." Claim 11 depends from claim 8 and recites that dry chemical is discharged "after at least 40 minutes of foam application." Claim 3 's recitation of an NFP A regulated time for a foam application indicates that claim 1 recites a period of minutes of foam application that is not necessarily an NFP A regulated time. To the extent Appellant intends the "period of minutes" to mean an NFP A guideline, 45 minutes is described as a typical, regulatorily-approved time period for launching and sustaining a foam attack in a cavity. Spec. 6:32-7:1. And, Appellant's Specification discloses that dry chemical attacks should occur preferably at least after two-thirds of the time period for a standard recommended NFPA foam attack as per NFPA guidelines. Id. at 7 :22-24. Thus, the "period of minutes" would need to be much more than just 2 minutes. The claimed "a period of less than minutes" for a dry chemical attack suffers from similar ambiguities. Appellant argues that this limitation means 8 Appeal2013-007748 Application 10/568,520 less than two minutes. See Appeal Br. 8-9; Reply Br. 3. The Specification discloses that dry chemical powder typically is discharged for a period of 5 to 15 seconds. Spec. 4: 13-14. However, "a ten second application of dry chemical offers a reasonable expectation of extinguishing the remnants of the fire." Id. at 7:7-8. Because dry chemical is a scarce commodity, the discharge of dry chemical "even for a period of minutes" is unfeasible or impossible. Id. at 7: 17-20. When "a period of less than minutes" is read in light of Appellant's Specification, it is unclear whether it is a few seconds, e.g., 10-15 seconds, or many seconds up to a period of less than minutes as Appellant argues. Appeal Br. 8. In this regard, it is unclear whether Appellant disclaimed dry chemical attack periods of more than "a period of minutes" and, if so, what period is disclaimed by this phrase, which is ambiguous, as discussed above. A plain and ordinary meaning of "a period of less than minutes" might support Appellant's position in that a period of less than minutes, i.e., less than two minutes, could be 120 seconds or less. However, the Specification discloses that dry chemical is discharged for periods of 10 to 15 seconds and a period of minutes is unfeasible or impossible. Spec. 7: 17-20. Because the phrase "a period of minutes" could include a period of minutes that exceeds an hour or more, as discussed above, this "disclaimer" is ambiguous as to its limitation on the use of dry chemical. It could be understood to mean a time less than a couple of minutes or a time that is less than many minutes up to and exceeding 60 minutes. For all of the foregoing reasons, we determine that claims 1-3, 8-12, 14-16, and 32-35 are indefinite. 9 Appeal2013-007748 Application 10/568,520 Claims 1-3, 8-12, 14-16, and 32-35forlackofwritten description The Examiner interpreted "a period of minutes" in claims 1, 8, and 32 as a time 2: 2 minutes. Final Act. 3; Ans. 5, 9. The Examiner interpreted "a period of less than minutes" in those claims as a time between zero seconds and infinity. Final Act. 3; Ans. 5, 9. The Examiner found that Appellant's Specification did not support these ranges. Final Act. 3--4; Ans. 5, 9-10. Because these limitations render claims 1, 8, and 32 indefinite, we cannot determine whether Appellant's Specification provides an adequate written description of these features. See In re Moore, 439 F.2d 1232, 1235 (CCAP 1971).Accordingly, we do not sustain this rejection. Prior Art Rejections of Claims 1, 2, 8-12, 14, 16, and 32-35 Because we determine that claims 1-3, 8-12, 14-16, and 32-35 are indefinite, we proforma reverse the prior art rejections of claims 1, 2, 8-12, 14, 16, and 32-35 because analysis of those rejections would be based on a speculative interpretation of the meaning of those claims. Irz re Steele; 305 F.2d 859, 862-63 (CCPA 1962) (determinations as to obviousness cannot be made for indefinite claims). Our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. DECISION We AFFIRM the rejection of claims 1-3, 8-12, and 14-16 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite based on the term "difficult" and REVERSE the rejection of claims 1-3, 8-12, and 14-16 underÂ§ 112, second paragraph, as being indefinite based on the terms "space" in claim 1, "cavity" in claim 8, and "structure" in claims 1 and 8. 10 Appeal2013-007748 Application 10/568,520 We REVERSE the rejection of claims 1-3, 8-12, 14-16, and 32-35 under 35 U.S.C. Â§ 112, first paragraph. We REVERSE the prior art rejections of claims 1, 2, 8-12, 14, 16, and 32-35 U.S.C. Â§under 35 U.S.C. Â§ 103(a). As provided supra, we enter a NEW GROUND OF REJECTION: Claims 1-3, 8-12, 14-16, and 32-35 are rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. Regarding the affirmed rejection, 37 CPRÂ§ 41.52(a)(l) provides "Appellant may file a single request for rehearing within two months from the date of the original decision of the Board." 37 C.F.R. Â§ 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter considered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. Â§ 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. Â§ 141or145 with respect to the affirmed rejections, the effective date of the affirmance is deferred until conclusion of the 11 Appeal2013-007748 Application 10/568,520 prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejections are overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejections, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED-IN-PART; 37 C.F.R. Â§ 41.50(b) 12