Ex Parte Williams

Patent Trial and Appeal Board

Feb 23, 2018

12451687 (P.T.A.B. Feb. 23, 2018)

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.
12/451,687 11/23/2009 Dwight P. Williams 12715-425 8709
102352 7590 02/27/2018
Rrinks / WTT T FTRF/TFNfl
EXAMINER
Amir Penn, Brinks Gilson & Lione BOECKMANN, JASON J
P.O. Box 10395
Chicago, IL 60610 ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
02/27/2018 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):
IPCORRESPONDENCE@TYCOFP.COM
jbluhmg@jci.com
officeactions @brinksgilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DWIGHT P. WILLIAMS
Appeal 2016-007727
Application 12/451,687
Technology Center 3700
Before JOHN C. KERINS, KEVIN F. TURNER, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dwight P. Williams (Appellant)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s October 26, 2015, final decision (“Final Act.”)
rejecting claims 1-22. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
1 The Appeal Brief identifies Tyco Fire & Security GMBH as the real party
in interest. Appeal Br. 2.
Appeal 2016-007727
Application 12/451,687
SUMMARY OF THE DECISION
We REVERSE.
SUMMARY OF THE INVENTION
Appellant’s disclosure is directed to fire fighting nozzles. Spec. 1:11.
Claim 1, reproduced below from page 13 (Claims Appendix) of the Appeal
Brief, is illustrative of the claimed subject matter:
1. An at least 95 gpm, at 100 psi, range and landing pattern
optimized, fog nozzle for fire fighting, comprising:
the nozzle having elements defining
a nozzle inlet in fluid communication with a source of
fire fighting liquid;
an annular conduit in fluid communication with the inlet,
having an annular discharge port and outward swedge angle;
a sleeve surrounding the annular discharge port,
adjustable to extend downstream from the elements defining the
annular discharge port and outward swedge angle, the annular
port and sleeve structured and adjustable in combination to
discharge both a straight stream and a fog pattern from the
annular port, including alternately;
a solid bore conduit in fluid communication with the
nozzle inlet, having a solid bore discharge port forming a
discharge port of the nozzle, located radially inward of the
annular conduit and discharge port, the solid bore conduit and
port sized and structured to discharge at least 50% of the nozzle
discharge;
a stream straightener in the annular conduit, located
approximately mid-nozzle;
a stream straightener for the bore conduit located
proximate to or upstream of an inlet of the bore conduit; and
wherein the annular discharge port has an outward
swedge angle of between 30 degrees to 50 degrees;
the solid bore conduit, annular conduit, adjustable sleeve,
bore conduit stream straightener, annular conduit stream
straightener and outward swedge angle structured in
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Application 12/451,687
combination to maximize nozzle discharge range and tightness
of discharge landing pattern.
REJECTIONS
Claims 1 and 17 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crabtree (US 2004/0084192 Al, published May 6, 2004),
Appellant’s admitted prior art, Williams (US 5,992,529, issued Nov. 30,
1999), and Steingass (US 6,102,308, issued Aug. 15, 2000).
ANALYSIS
Indefiniteness
The Examiner determines claim 1 to be indefinite because it is unclear
if “an outward swedge angle” recited in line 19 of the claim refers to the
same swedge angle recited in line 6 of the claim. Final Act. 2; see also
Ans. 3. The Examiner makes a similar determination regarding independent
claim 17. Final Act. 2; Ans. 3.
Appellant responds by stating “[cjlaims 1 and 17 cover a single
outward swedge angle but do not rule out two (or more) other outward
swedge angles.” Reply Br. 2.
A claim is indefinite when it contains language that is “ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing and defining
the claimed invention.” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir.
2014); see also Ex parte McAward, No. 2015-006416, 2017 WL 3669566, at
*2-6 (PTAB Aug. 25, 2017) (precedential). Here, the Specification sets
forth that “swedge angle” refers to the “beveled angle [of the nozzle barrel]
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Application 12/451,687
that helps guide the stream discharging from the annular port in its outer
circumference.” Spec. 2:10-11. Appellant’s drawing figures illustrate a
single swedge angle. See, e.g., Spec., Fig. 1A. One of ordinary skill in the
art, upon reviewing Appellant’s Specification and considering Appellant’s
statement quoted above, would understand that each of claims 1 and 17
requires the annular discharge port to have a single swedge angle of between
30 degrees and 50 degrees.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 1 and 17 as being indefinite.
Obviousness
The Examiner finds that Crabtree discloses a nozzle substantially as
recited in claim 1, including, inter alia, a nozzle inlet in fluid
communication with a source of firefighting liquid, an annular conduit, and a
solid bore conduit. Final Act. 3—4 (citing Crabtree, Figs. 1A-1C, 2B-1,
3A-1). The Examiner takes the position that the nozzles illustrated in
Figures 1A-1C, 2B-1, and 3A-1 have the inlet shown in Figure 3A-R. Ans.
4-5. The Examiner finds that Crabtree’s solid bore conduit has a solid bore
discharge port, and that such conduit and port are sized and structured to
discharge at least 50% of the nozzle discharge. Final Act. 3-4. The
Examiner finds that Appellant has admitted that solid bore stream
straighteners are known in the art, and reasons that it would have been
obvious to one of ordinary skill to add a stream straightener in Crabtree’s
solid bore conduit proximate the inlet to straighten the stream of fluid in the
solid bore conduit and increase the effective firefighting radius. Id. at 4
(citing Spec. 10:23-25; Williams 3:59-61).
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Application 12/451,687
Although the Examiner finds that Crabtree discloses an annular
conduit stream straightener, the Examiner relies on Williams to teach an
annular conduit stream straightener and reasons that it would have been
obvious to one of ordinary skill to add a stream straightener to a mid-nozzle
point in Crabtree’s annular conduit to straighten the pressurized liquid flow
and increase the effective firefighting radius. Id. at 4-5 (citing Williams
3:59-61, Fig. 3; Crabtree, Fig. 4A). The Examiner finds that Steingass
teaches an outward swedge angle of 35°, and reasons that it would have been
obvious to one of ordinary skill to form Crabtree’s annular discharge port
with such a swedge angle to produce the desired spray pattern and to direct
the flow at a specified angle to create a specific landing pattern. Id. at 5.
The Examiner further finds that “in its use, the device of Crabtree as
modified above inherently performs the method steps of [claim 17].”
Appellant traverses, arguing, inter alia, that, in Crabtree, “[n]o
percentage of discharge between an annular conduit and a self-educting bore
conduit is taught.” Appeal Br. 11. Continuing, Appellant asserts:
The ordinary skilled artisan would know that when self-
educting a foam concentrate into a fire fighting nozzle, a
minimum amount of the motive water is used for the eduction
and the discharge of the self-educted foam concentrate and
water combined would not comprise at least 50% of the nozzle
discharge.
Id.
The Examiner answers that the “the solid bore conduit and port sized
and structured to discharge at least 50% of the nozzle discharge” language of
claim 1 is a functional recitation. Ans. 6. Continuing, the Examiner states:
The examiner notes that if the [AJppellanf s device was not in
use, then greater than 50% of the nozzle discharge would not
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Application 12/451,687
come from the solid bore conduit. Similarly, if the solid bore
conduit was blocked, greater than 50% of the nozzle discharge
would not come from the solid bore conduit. The [EJxaminer’s
position is that if the solid bore of Crabtree was connected to
fluid flow and not [the] annular bore, then greater than 50% of
the nozzle discharge would have to come from the solid bore
conduit. Additionally, since the claim does not define the term
nozzle discharge as the fluid discharged from both the solid
bore and the annular bore, the [EJxaminer is interpreting the
term “nozzle discharge” to be only the fluid leaving the solid
bore discharge port.
Id. at 6-7. Similarly, regarding claim 17, the Examiner states:
[l]f the solid bore was connected to a source and the annular
conduit connected to a different source (the claims do not
require them to both be connected to the same source), the
sources could easily be controlled so that 90% of the fluid went
to the solid bore and 10% of the fluid went to the annular bore.
Id. at 7.
Appellant replies “[t]he issue is whether [Crabtree] discloses, teaches
or suggests the . . . claimed limitation, including discharge ratios, not
whether ‘[A]ppellanf s device’ could be ‘not in use’ or ‘have its solid bore
conduit blocked.’” Reply Br. 12. (emphases omitted). Appellant further
argues that “[o]ther limitations in claims 1 and 17 contradict, or rule out,
having only the [Crabtree] solid bore conduit, not the annular conduit, being
‘connected to fluid flow.’” Id. (emphasis omitted).
We are persuaded by Appellant’s arguments. Claim 1 recites, in
relevant part, “the solid bore conduit and port sized and structured to
discharge at least 50% of the nozzle discharge.” Appeal Br. 13 (Claims
App.) (emphasis added). This language describes physical attributes of the
solid bore conduit and the solid bore discharge port, and, thus, is a structural
recitation rather than merely indicating a function performed by the nozzle.
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Application 12/451,687
The Examiner has not set forth any supporting evidence or persuasive
technical reasoning as to how or why one of ordinary skill would operate
Crabtree’s device such that input flow would be directed only through the
solid bore conduit. Nor has the Examiner explained how or why one of
ordinary skill would modify the annular conduit—which claim 1 requires to
be in fluid communication with the same nozzle inlet with which the solid
bore conduit is in fluid communication—such that no firefighting liquid
would flow therethrough. The hypothetical modifications suggested by the
Examiner fail to set forth any rational underpinning to support the legal
conclusion of obviousness.
Similarly, the Examiner has not provided sufficient reasoning to
support the determination that only the portion of the nozzle discharge
passing through the solid bore conduit corresponds to the recited nozzle
discharge. To the contrary, one of ordinary skill would understand the
ordinary and customary meaning of the nozzle discharge to be the entire
discharge of the nozzle, including discharge from both the annular and the
solid bore conduits—which, as noted above, claim 1 requires to be in fluid
communication with the same source of firefighting liquid.
Regarding claim 17, the claim requires “discharging at least 10% of
the inlet fire fighting liquid through the annular discharge port.” Appeal Br.
15 (Claims App.). Thus, the Examiner’s modifications to preclude flow
through the annular conduit are incompatible with the requirements of
claim 17. Furthermore, the Examiner’s position that “the device of
[Crabtree] can be used in such a way that the ratios and percentages of
claim[] 17 can be met” (Ans. 7) is insufficient to establish unpatentability of
the claim. See, e.g., In re Chaganti, 554 F. App’x 917, 922 (Fed. Cir. 2014)
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Application 12/451,687
(“It is not enough to say that... to do so would ‘have been obvious to one
of ordinary skill.’ . . . Such circular reasoning is not sufficient—more is
needed to sustain an obviousness rejection.”).
Finally, we note that claim 17 requires “discharging at least 50% of a
nozzle inlet fire fighting liquid through the solid bore conduit and solid bore
discharge port” and “discharging at least 10% of the inlet fire fighting liquid
through the annular discharge port.” Appeal Br. 15-16 (Claims App.).
Thus, contrary to the Examiner’s interpretation (see Ans. 7), the claim
requires both ports to discharge the same liquid and, therefore, to be in fluid
communication with the same source of such liquid. The Examiner’s
suggestion to connect the conduits to separate sources, therefore, is
incompatible with the requirements of the claim.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 1 and 17, nor of their respective dependent claims 2-16 and 18-22,
as being unpatentable over Crabtree, Appellant’s admitted prior art,
Williams, and Steingass. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988) (“Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonob vious.”).
DECISION
The Examiner’s decision to reject claims 1-22 is reversed.
REVERSED
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