Ex Parte Williams et al

Board of Patent Appeals and Interferences

Jan 9, 2009

10380750 (B.P.A.I. Jan. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DWIGHT P. WILLIAMS and DENNIS W. CRABTREE
____________

Appeal 2008-1827
Application 10/380,750
Technology Center 3700
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Decided: January 9, 2009
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Dwight P. Williams and Dennis W. Crabtree (Appellants) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 1-28. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to a pressure regulating
nozzle and method designed to effectively discharge a fire extinguishing
fluid at a pre-selected discharge pressure and range, up to a targeted flow
rate, and thereafter to maintain relatively constant flow rate while discharge
pressure and range are allowed to increase. Spec. 2:25-28. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A selectively automatic fire fighting nozzle,
comprising:
a body portion of the nozzle defining a fire
fighting fluid conduit terminating in an adjustable
discharge orifice;
the adjustable discharge orifice defined, at
least in part, by elements that relatively adjust over
an available range and that relatively adjust
automatically to maintain a selected firefighting
fluid discharge pressure over at least portion of the
range; and
a stop, connected to the nozzle body,
adjustable to further limit, within the available
range, the range of automatic relative adjustment
between orifice defining elements.

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THE REJECTIONS
The Examiner relies upon the following evidence:
Rehse US 2,207,758 Jul. 16, 1940
Sons US 3,552,658 Jan. 5, 1971
The Appellants seek review of the following Examiner’s rejections:
1. Claims 2, 10, 11, 15, 20, 25, and 26 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement
requirement.
2. Claims 3, 7-10, 12, 19, 20, 23, and 27 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
3. Claim 27 is rejected under 35 U.S.C. § 112, second paragraph, as
being incomplete for omitting essential elements.
4. Claims 1-4, 7, 8, 11-18, and 21-28 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Sons.
5. Claims 1, 3, 4, 7, 12, 13, 17, and 18 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Rehse.
6. Claims 5, 6, 9, 10, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rehse.1

1 The Appellants present arguments on appeal concerning the Examiner’s
objection to claims 2 and 11. App. Br. 15-16. As correctly noted by the
Examiner in the Answer, the Examiner’s objection to claims 2 and 11 is
reviewable by petition under 37 C.F.R. § 1.181 and is not an appealable
matter. Ans. 2. Thus, the objection of claims 2 and 11 is not within the
jurisdiction of the Board. In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
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ENABLEMENT REJECTION
ISSUES
The Examiner determined that claims 2, 11, 15, 25, and 26 are
unpatentable because the Appellants’ Specification fails to describe the
claimed nozzle having a stop adjustably located on the nozzle body to divide
the flow window in such a way as to enable one skilled in the art to make
and/or use the invention. Ans. 3.
The Appellants contend that one of ordinary skill in the art would
understand that “flow window” for a nozzle corresponds to an operable or
available range of discharge orifice openings, or gap sizes, for that nozzle
absent any stop or the like. App. Br. 16. The Appellants assert that “[u]se
of an effective, adjustable stop ST, as illustrated in Figure 1C, ‘divides’ this
flow window by reducing the maximum gap achievable with the selected
stop in place.” App. Br. 17. As such, the Appellants contend that one
having ordinary skill in the art would understand, in light of the
Specification, the phrase “divides the flow window.”
The Examiner also determined that claims 10 and 20 are unpatentable
because the Appellants’ Specification fails to describe the claimed method
step of adjustably metering foam concentrate in such a way as to enable one
skilled in the art to make and/or use the invention. Ans. 3.
The Appellants assert that U.S. Patent No. 6,749,027, incorporated by
reference in the present application, teaches a self-metering nozzle having an
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adjustable discharge orifice for use with foam concentrate.2 The Appellants
thus contend that one of ordinary skill in the art would understand that the
adjustable stops of the present application could be used with a self-metering
nozzle design that adjustably meters foam concentrate as illustrated in the
‘027 patent. App. Br. 18.
The issues presented by this rejection are:
Does the disclosure of the present application teach one skilled in the
art how to make and use a nozzle having a stop adjustably located on the
nozzle body to divide the flow window without undue experimentation?
Does the disclosure of the present application teach one skilled in the
art how to make and use a method for operating an automatic fire fighting
nozzle that can adjustably meter foam concentrate into the nozzle as the
discharge orifice adjusts without undue experimentation?

FINDINGS OF FACT
We find that the following enumerated findings 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).
1. The Appellants’ Specification discloses that nozzle body conduits
and discharge orifices may be designed with an effective flow

2 The Appellants’ Appeal Brief refers to U.S. Patent No. 6,744,027. It
appears, however, that the correct number of the patent incorporated by
reference is 6,749,027. We treat this as a typographical error in the Brief.
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window in terms of a range of flow measured in gallons per minute
(GPM), given anticipated supply ranges, in pressure and flow, for
the fire fighting fluid. Spec. 4:4-10.
2. The Appellants’ Specification discloses that there are practical
minimum and maximum “gap” size limits on an effective flow
window. Spec. 4:14-20.
3. Figures 1A-1C of Appellants’ Specification show a nozzle having
an effective flow window of at least 1,000 GPM and greater than
4,000 GPM. Spec. 10:29-11:1.3
4. The Appellants’ Specification discloses that a floating bafflehead
B moves outwardly to the right to widen a gap 220 which controls
the flow. Spec. 10:27-29.
5. Figure 1C of Appellants’ Specification shows the bafflehead B
abutting the end of a flow stop ST, which has been set to adjust the
gap for a flow of 4,000 GPM.
6. The Specification explains that “[w]hen an inside surface of
floating bafflehead B reaches or contacts flow stop SD [sic, ST],
floating bafflehead B ceases to further adjust outward or to the
right.” Spec. 11:6-8.

3 The Appellants added new Figure 1D and amended the Specification to
refer to this new figure by Amendment on July 5, 2006. It is unclear from
the subsequent Office Action whether the Examiner approved and entered
this new figure and the corresponding amendment to the Specification. See
Final Rejection dated October 11, 2006. Nonetheless, we do not find it
necessary to rely on Figure 1D or the accompanying amended text in our
resolution of the enablement rejection.
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7. Thus, the Appellants’ Specification describes a nozzle having a
flow window of at least 1,000 GPM and greater than 4,000 GPM,
wherein the flow window is lessened or “divided” by flow stop ST.
8. The Appellants’ Specification further describes that the flow stop
ST can be adjustable, for example, by screwing the stop inwardly
or outwardly in the piston 26 or by selecting from among a set of
flow stops, each stop with a different shank length to govern a
different gap size. Spec. 11:30-12:2.
9. The Appellants’ Specification incorporates the disclosure of U.S.
Patent No. 6,749,027 (“the ‘027 patent”) by reference in its
entirety. Spec. 1:6-9. The Specification further discloses that
“[t]he nozzle show[n] in Figures 2A and 3B are adaptable to be
used with a self-metering self-educting nozzle as disclosed more
fully in the above referenced and incorporated patent application.”
Spec. 12:5-7.
10. Figures 2A and 3B-1 of the Appellants’ Specification show
nozzles each having a flood plate 300 attached by pins 308 to a
floating bafflehead B, where the flood plate can be adjusted for a
foam application. Spec. 11:17-19. In Figure 2A, a flow stop is
positioned to fully close the gap for the water discharge so that the
nozzle is designed to throw foam concentrate. Spec. 11:24-28. In
Figure 3B-1, the flow stop is positioned to allow the bafflehead B
to move outwardly to discharge both water and foam concentrate.
Spec. 11:27-29.
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11. In the Appellants’ Specification, the discharge opening of the
foam/chemical tube 28, through which foam concentrate FC or
chemical C flows, is shown as having a fixed size. Spec. 11:2-3;
Figs. 2A and 3B-1.
12. The ‘027 patent discloses a self-educting and self-adjusting nozzle
that transports and discharges foam concentrate through the center
of the nozzle. ‘027 patent, col. 5, ll. 55-62; Figs. 3A & 3B.
13. The nozzle of Figures 3A and 3B of the ‘027 patent channels foam
concentrate through a slidable flow metering tube 96 and fixed
stem 28. The flow metering tube 96 slides with bafflehead B over
fixed stem 28 and the relative position of the sliding bafflehead B
over stem 28 and within nozzle N can effect the metering or the
amount of foam educted through stem 28 and tube 96. ‘027 patent,
col. 10, ll. 12-15 and 47-62.

PRINCIPLES OF LAW
The PTO bears the initial burden when rejecting claims for lack of
enablement.
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an
initial burden of setting forth a reasonable
explanation as to why it believes that the scope of
protection provided by that claim is not adequately
enabled by the description of the invention
provided in the specification of the application;
this includes, of course, providing sufficient
reasons for doubting any assertions in the
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specification as to the scope of enablement. If the
PTO meets this burden, the burden then shifts to
the applicant to provide suitable proofs indicating
that the specification is indeed enabling.
In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)).
It is by now well-established law that the test for compliance with the
enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether
the disclosure, as filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
“Enablement is not precluded by the necessity for some experimentation . . ..
However, experimentation needed to practice the invention must not be
undue experimentation. The key word is ‘undue,’ not ‘experimentation.’”
Id. at 736-37.
To evaluate whether a disclosure would require undue
experimentation, the Federal Circuit has adopted the following factors to be
considered:
(1) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure;
(2) The amount of direction or guidance presented;
(3) The existence of working examples;
(4) The nature of the invention;
(5) The state of the prior art;
(6) The relative skill of those in the art;
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(7) The level of predictability in the art; and
(8) The breadth of the claims.
Id. at 737. The examiner’s analysis must consider all the evidence related to
each of these factors, and any conclusion of nonenablement must be based
on the evidence as a whole. Id.
“To incorporate material by reference, the host document must
identify with detailed particularity what specific material it incorporates and
clearly indicate where that material is found in the various documents.”
Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007)
(quoting Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365, 1376 (Fed. Cir.
2006)); see also Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d
1272, 1282 (Fed. Cir. 2000). Whether and to what extent material has been
incorporated by reference into a host document is a question of law.
Advanced Display, 212 F.3d at 1282 (citing Quaker City Gear Works, Inc. v.
Skil Corp., 747 F.2d 1446, 1453-54 (Fed. Cir. 1984)).

ANALYSIS
Claims 2, 11, 15, 25, and 26
Claims 2, 11, 15, 25, and 26 recite generally a stop adjustably located
on the nozzle body to divide a flow window of the nozzle. The Appellants’
Specification discloses that nozzle body conduits and discharge orifices have
flow windows that are designed based on supply ranges to have minimum
and maximum flow rates (Facts 1 & 2). The Appellants’ Specification
further discloses the use of a stop that prevents the flow gap from widening
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to its maximum opening size, thereby effectively dividing the flow window
of the nozzle (Facts 3-7). The Appellants’ Specification further discloses
that the positioning of the stop is adjustable (Fact 8). Thus, the Appellants’
Specification appears to include a disclosure that is sufficiently complete to
enable one of ordinary skill in the art to make and use the claimed invention
without undue experimentation.
The Examiner has failed to provide a reasonable explanation as to
why the scope of protection provided by these claims is not adequately
enabled by the description of the invention provided in the Appellants’
Specification. In particular, the Examiner has failed to sufficiently show
why the Appellants’ disclosure would require undue experimentation in
order to make and use the claimed invention. As such, the Examiner has
failed to show lack of enabling disclosure.
Claims 10 and 20
Claims 10 and 20 recite “adjustably metering foam concentrate into
the nozzle as the discharge orifice adjusts.” The Examiner determined that
the Specification “does not appear to teach adjustably metering foam
concentrate because the exit opening of the foam concentrate is always
constant.” Ans. 3. Although the Figures of the present application show the
discharge opening of the foam/chemical tube as having a fixed size (Fact
11), the Appellants’ Specification discloses that the nozzle shown in Figures
2A and 3B are adaptable to be used with a self-metering self-educting
nozzle, such as the nozzles disclosed in the ‘027 patent, which was properly
incorporated by reference in the present application (Fact 9). Figures 2A
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and 3B-1 of the Appellants’ Specification show nozzles designed for foam
application (Fact 10). Likewise, the ‘027 patent discloses nozzles designed
for foam application; however, the nozzles of the ‘027 patent include a flow
metering tube to adjustably meter the amount of foam discharged (Facts 12
& 13). The Appellants’ Specification thus discloses how its nozzle design
making use of flow stops can be adapted to be used with the self-metering
nozzle design of the ‘027 patent.
The Examiner has failed to provide a reasonable explanation as to
why the scope of protection provided by these claims is not adequately
enabled by the description of the invention provided in the Appellants’
Specification. In particular, the Examiner has failed to sufficiently show
why the Appellants’ disclosure would require undue experimentation in
order to make and use the claimed invention. As such, the Examiner has
failed to show lack of enabling disclosure.

INDEFINITENESS REJECTION
ISSUE
The Examiner determined that “(approximately)” in claim 7 rendered
the claim uncertain as to whether it is a positive limitation of the claim. Ans.
3. The Appellants assert that the use of parentheses about the word
“approximately” effects a permissible grammatical nuance. Reply Br. 4.
The issue presented by this rejection is:
Does the use of “(approximately)” render the claims indefinite under
35 U.S.C. § 112, second paragraph?
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ADDITIONAL FINDINGS OF FACT
14. The Appellants’ Specification discloses that “(The word
‘approximately’ is used herein throughout because automatic
nozzle designs are only ‘approximately’ accurate.)” Spec. 5:11-12.
15. The Specification further discloses:
In operation, the adjustable nozzle would be
presumed to set to target a preselected discharge
pressure such as 100 psi. The operator, as in the
preferred embodiment of Figures 3 and 3B, will
select a stop that approximately targets a given
flow rate. The operator will affix the stop in the
position provided in the fixed piston. The floating
bafflehead will then maintain a fixed pressure until
the bafflehead is stopped by abutting the end of the
flow stop that extends through the piston into the
baffle chamber. Thereafter, if supply pressure
rises and supply flow is adequate, the discharge
pressure at the nozzle will rise. The gap will
remain constant and the flow rate will remain
approximately constant.
Spec. 12:8-16.

PRINCIPLES OF LAW
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).

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ANALYSIS
The Examiner’s rejection based on the use of “(approximately)”
includes a rejection of claims 3, 7-10, 12, 19, 20, 23, and 27. The use of
“(approximately),” however, appears only in claims 7-10. Claims 3, 12, 19,
20, 23, and 27 do not include the word “approximately” in the claims.
Finding no other reason provided by the Examiner for the rejection of claims
3, 12, 19, 20, and 234 under 35 U.S.C. § 112, second paragraph, we
summarily reverse the rejection of these claims.
Claim 7 recites “allowing fluid discharge pressure to rise above the
selected discharge pressure while maintaining (approximately) fluid flow
rate upon reaching the targeted flow rate.” The Appellants’ Specification
clearly discloses that once the bafflehead abuts the flow stop, the discharge
pressure at the nozzle will rise while the flow rate will remain
“approximately constant” (Facts 14 & 15). As such, those skilled in the art,
upon reading the Appellants’ Specification, would understand that the use of
“(approximately)” in claim 7 is a positive limitation of the claim. The use of
parentheses is nothing more than punctuation that interrupts the sentence’s
structure to add information. Although Appellants chose to use the word
“approximately” without the parentheses in other claims, this does not
somehow imply that the use of the word within parentheses in claim 7

4 The Examiner provides a separate reason for the rejection of claim 27
under 35 U.S.C. § 112, second paragraph, based on an omitted element,
which is addressed infra.
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renders the word optional or otherwise reads the word out of the claim.
Accordingly, claim 7 and its dependent claims 8-10 are not indefinite.

OMITTED ELEMENT REJECTION
ISSUE
The Examiner determined that claim 27 is indefinite because it omits
recitation in the claim of the structural elements required to automatically
adjust a discharge orifice within a range so as to maintain a selected, fire
fighting fluid discharge pressure. Ans. 4. The Appellants contend that one
of ordinary skill in the art of fire fighting nozzles would be familiar with
discharge orifice designs structured and regulated to automatically adjust to
maintain a selected fluid discharge pressure, such nozzles being referred to
in the trade as “pressure regulating nozzles” or “automatic nozzles.” App.
Br. 19.
The issue presented by this rejection is:
Is claim 27 indefinite because it omits the structural elements required
to automatically adjust a discharge orifice to maintain a selected discharge
pressure?

PRINCIPLES OF LAW
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). Yet,
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choosing to define an element functionally, i.e., by what it does, carries with
it a risk. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As stated in
Swinehart:
where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the
prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to
be in the prior art does not possess the
characteristic relied on.
439 F.2d at 213.

ANALYSIS
The Examiner’s rejection of claim 27 is grounded on the Examiner’s
misapplication of the law. In particular, the Examiner states that “Appellant
is attempting to claim what the apparatus does rather than what it is. MPEP
[§] 2114 explicitly provides that an apparatus claim must be distinguished
from the prior art in terms of structure rather than function.” Ans. 8.
A patent applicant is free to recite features of an apparatus either structurally
or functionally. See Swinehart, 439 F.2d at 212. As such, a § 112 rejection
of an apparatus claim solely on the basis that it defines an element
functionally rather than structurally is improper.
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PRIOR ART REJECTIONS
ISSUES
The Examiner found that claims 1-4, 7, 8, 11-18, and 21-28 are
anticipated by Sons. Ans. 4-5. The Appellants assert that Sons does not
disclose “elements that relatively adjust to maintain a selected or targeted
discharge pressure, or the step of maintaining a selected discharge pressure
for flow rates up to a targeted rate.” App. Br. 20.
The issue presented by this rejection is:
Does Sons disclose maintaining a selected discharge pressure?
The Examiner found that claims 1, 3, 4, 7, 12, 13, 17, and 18 are
anticipated by Rehse and that claims 5, 6, 9, 10, 19, and 20 are unpatentable
over Rehse. Ans. 6-7. The Appellants assert that Rehse does not teach
“elements that relatively adjust automatically to maintain a selected
discharge pressure (or other analogous terms.)” App. Br. 21-23.
The issue presented by these rejections is:
Does Rehse disclose maintaining a selected discharge pressure?

ADDITIONAL FINDINGS OF FACT
16. Sons discloses that in operation the size of the discharge opening
may be adjusted by sliding the lower body member 40 within the
bore 64 of the upper body member 38 to adjust the distance
between the end 42 of the lower body member 40 and the end 106
of the ram 98. Sons, col. 4, ll. 39-45.
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17. Sons further discloses that to move the spray valve assembly
toward the closed position, pressurized air is introduced through
inlet 94 to exert a downward force on ram 98 sufficient to
overcome the action of the spring 116, and that when no air is
supplied to the valve, the spring 116 moves the ram 98 to a fully
open position. Sons, col. 4, l. 49 - col. 5, l. 3.
18. Thus, Sons discloses that the opening and closing of the spray
valve assembly is accomplished entirely by the competing forces
of spring 116 and pressurized air from air inlet 94. See Sons, col.
5, ll. 19-23.
19. Sons discloses that one advantage of using a remote pressurized air
supply to control the opening and closing of the spray valve
assembly is that the control of the air supply may be located near
the operator when at the operator’s station or position. Sons, col.
5, ll. 11-16.
20. As such, the control of the pressurized air and thus control over
adjustment of the discharge orifice is accomplished by the operator
and does not occur automatically.
21. Sons does not disclose specifically how or when the operator
determines to introduce pressurized air from air inlet 94. In
particular, Sons does not disclose that the determination to
introduce pressurized air into the air inlet in order to partially or
fully close the opening is based at all on the discharge pressure of
the fluid being discharged through the opening.
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22. Sons further does not disclose how the operator determines the
amount of pressurized air introduced into the air inlet 94. In
particular, Sons does not disclose that the amount of pressurized
air introduced into the air inlet in order to partially or fully close
the opening is based at all on maintaining a certain discharge
pressure.
23. Thus, Sons does not disclose that the opening and closing of the
spray valve assembly is accomplished automatically so as to
maintain a selected discharge pressure.
24. Likewise, Sons does not disclose that the opening and closing of
the spray valve assembly is accomplished at least in part in
response to variation in fluid pressure so as to maintain a selected
discharge pressure.
25. Further, Sons does not disclose that the operator considers flow
rate and/or maintaining a selected discharge pressure when
opening or closing the spray valve assembly. As such, Sons does
not disclose maintaining a selected discharge pressure for fluid
flowing through the nozzle for fluid flow rates up to approximately
a targeted flow rate.
26. Rehse discloses with reference to Figures 1-3 embodiments of fire
fighting nozzles having an adjustment wheel that can be manually
rotated to adjust a discharge orifice from an effective maximum
opened position to a closed position. Rehse, p. 2, col. 2, ll. 49-53.
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27. As such, the adjustment wheel of Rehse is not an element that
adjusts automatically to maintain a selected discharge pressure.
28. Rehse discloses that in the embodiment of Figure 4, the core is
secured to the shaft by means of a coil spring 96 “of less capacity
than the fluid pressure to be used in the nozzle, and a nut 98.
Sufficient tension is put on the spring to maintain the core in
closed position, as shown, when not in use.” Rehse, p. 4, col. 1, ll.
32-37.
29. As such, Rehse discloses a spring that is overcome whenever the
nozzle is in use.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
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prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
Rejection based on Sons
The Examiner found that claims 1-4, 7, 8, 11-18, and 21-28 are
anticipated by Sons. Each of the independent apparatus claims requires an
adjustable or variable discharge orifice that maintains a selected fire fighting
fluid discharge pressure. Each of the independent method claims similarly
requires the step of maintaining approximately a selected fire fighting fluid
discharge pressure for fire fighting fluid flowing through the nozzle for fluid
flow rates up to a targeted flow rate or maintaining a constant fire fighting
fluid discharge pressure for fire fighting fluid flow rates at or above the
targeted flow rate.
Sons discloses a spray valve assembly in which opening and closing
of a discharge orifice is accomplished using a spring and pressurized air
(Facts 16-18). Sons further discloses that control over the opening and
closing of the discharge orifice is accomplished by the operator (Facts 19-
20). Sons does not disclose that the determination to introduce pressurized
air into the air inlet in order to partially or fully close the opening is based at
all on the discharge pressure of the fluid being discharged through the
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opening, nor does it disclose that the amount of pressurized air introduced
into the air inlet in order to partially or fully close the opening is based at all
on maintaining a certain discharge pressure (Facts 21 & 22). Thus, Sons
does not disclose that the opening and closing of the spray valve assembly is
accomplished automatically so as to maintain a selected discharge pressure
(Fact 23). In other words, Sons does not disclose that the spray valve
assembly is capable of maintaining a selected fluid discharge pressure at a
fixed air inlet pressure and the nature of Sons’ assembly is not such as to
support a finding that a selected fluid discharge pressure is inherently
maintainable. Likewise, Sons does not disclose that the opening and closing
of the spray valve assembly is accomplished at least in part in response to
variation in fluid pressure so as to maintain a selected discharge pressure
(Fact 24). Further, Sons does not disclose that the operator considers flow
rate and/or maintaining a selected discharge pressure when opening or
closing the spray valve assembly. As such, Sons does not disclose
maintaining a selected discharge pressure for fluid flowing through the
nozzle for fluid flow rates up to approximately a targeted flow rate (Fact 25).
Rejections based on Rehse
The Examiner found that claims 1, 3, 4, 7, 12, 13, 17, and 18 are
anticipated by Rehse and determined that claims 5, 6, 9, 10, 19, and 20 are
unpatentable over Rehse.
The Examiner found that Rehse teaches elements that adjust the
discharge orifice automatically as claimed, because Rehse discloses an
adjustment wheel that may be rotated to adjust the orifice from a maximum
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23
opened position to a closed position. Ans. 9 (citing Rehse, p. 2, col. 2, ll.
49-53 and p. 3, col. 1, ll. 43-46). The portions of the disclosure of Rehse
cited by the Examiner pertain to the embodiments of Figures 1-3 of Rehse in
which the adjustment wheel is operated manually (Fact 26). As such, the
adjustment wheel of Rehse is not an element that adjusts automatically to
maintain a selected discharge pressure (Fact 27).
The Examiner further found that the embodiment disclosed in Figure
4 of Rehse has a modified core mounting to provide for its closure except
when fluid is passing through and thus any intermediate position of the core
is inherent. Ans. 9.
Rehse discloses that in the embodiment of Figure 4, the core is
secured to the shaft by means of a coil spring, which is overcome whenever
the nozzle is in use (Facts 28 & 29). This may mean simply that the nozzle
opens to a fully open position as soon as fluid flows through the nozzle at
some predetermined minimum threshold pressure and that the nozzle
remains in the fully opened position regardless of variations in discharge
pressure until the pressure falls below the minimum threshold pressure. It is
not necessarily the case, based on the disclosure provided in Rehse, that the
core and spring will automatically adjust the orifice to maintain a selected
fluid discharge pressure over a portion of a range. As such, the embodiment
of Figure 4, although configured to automatically close the orifice, is not
inherently configured to maintain a selected fluid discharge pressure over a
portion of a range, as required by claims 1, 3-6, and 12. Similarly, the
embodiment of Figure 4 of Rehse does not maintain approximately a
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Appl. No. 10/380,750

24
selected fire fighting fluid discharge pressure for fire fighting fluid flowing
through the nozzle for fluid flow rates up to a targeted flow rate or
maintaining a constant fire fighting fluid discharge pressure for fire fighting
fluid flow rates at or above the targeted flow rate, as required by claims 7, 9,
10, 13, 17-20.

CONCLUSIONS
The disclosure of the present application adequately teaches one
skilled in the art how to make and use a nozzle having a stop adjustably
located on the nozzle body to divide the flow window without undue
experimentation. The disclosure of the present application also adequately
teaches one skilled in the art how to make and use a method for operating an
automatic fire fighting nozzle that can adjustably meter foam concentrate
into the nozzle as the discharge orifice adjusts without undue
experimentation. As such, the Examiner’s rejection of claims 2, 10, 11, 15,
20, 25, and 26 under 35 U.S.C. § 112, first paragraph is improper.
The Examiner failed to provide any explanation to support the
determination that claims 3, 12, 19, 20, and 23 are indefinite. The use of
“(approximately)” does not render claims 7-10 indefinite. Further, the use of
functional language in place of structural elements required to automatically
adjust a discharge orifice to maintain a selected discharge pressure does not
render claim 27 indefinite. As such, the Examiner’s rejections of claims 3,
7-10, 12, 19, 20, 23, and 27 under 35 U.S.C. § 112, second paragraph, are
improper.
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Appl. No. 10/380,750

25
Sons and Rehse both fail to disclose maintaining a selected discharge
pressure. As such, the Examiner’s rejection of claims 1-4, 7, 8, 11-18, and
21-28 under 35 U.S.C. § 102(b) as anticipated by Sons, claims 1, 3, 4, 7, 12,
13, 17, and 18 under 35 U.S.C. § 102(b) as anticipated by Rehse, and claims
5, 6, 9, 10, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Rehse
are improper.

DECISION
The decision of the Examiner to reject claims 1-28 is REVERSED.

REVERSED

hh

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