E-One, Inc.

Patent Trials and Appeals Board

Oct 9, 2020

2020000616 (P.T.A.B. Oct. 9, 2020)

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.
15/925,431 03/19/2018 Leroy C. Stephens 212411-9033-US04 8372
23510 7590 10/09/2020
MICHAEL BEST & FRIEDRICH LLP (Mad)
790 N WATER ST
SUITE 2500
Milwaukee, WI 53202
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
10/09/2020 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):
madipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LEROY C. STEPHENS and RICKIE W. WHITE JR.
____________

Appeal 2020-000616
Application 15/925,431
Technology Center 3700
____________

Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–3, 11, and 13–16 as unpatentable under 35 U.S.C.
§ 103(a) over Kudo (US 6,615,675 B1, iss. Sept. 9, 2003), and of claim 12
over Kudo and Huszagh (US 4,529,127, iss. July 16, 1985). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies E-One, Inc. as the applicant and real
party in interest. Appeal Br. 3.
Appeal 2020-000616
Application 15/925,431
2
THE INVENTION
Appellant’s invention is a fire truck. Spec. ¶ 2. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A firefighting vehicle comprising:
a water tank for storing water;
a discharge outlet for discharging liquid from the firefighting
vehicle;
a pump for pumping liquid to the discharge outlet;
a foam tank for storing a liquid foam concentrate;
a foam metering device for metering fluid flow therethrough;
a foam addition system comprising one or more conduits for
directing fluid from the foam metering device toward the
discharge outlets;
a flow control system for controlling fluid flow to the foam
metering device from the water tank and from the foam
concentrate tank, wherein the flow control system is
shiftable between a normal mode and a test mode, wherein
when the flow control system is in the normal mode, fluid
flow from the foam concentrate tank to the foam metering
device is permitted, fluid flow from the water tank to the
discharge outlet is permitted, and fluid flow from the water
tank to the foam metering device is prevented, wherein
when the flow control system is in the test mode, fluid flow
from the water tank to the foam metering device is
permitted and fluid flow from the foam concentrate tank to
the foam metering device is prevented; and
a flow meter for measuring the flow of water through the foam
metering device when the flow control system is in the test
mode.
OPINION
Unpatentability of Claims 1–3, 11, and 13–16
over Kudo
The Examiner finds that Kudo discloses the invention substantially as
claimed except for measuring the flow of water through the foam metering
Appeal 2020-000616
Application 15/925,431
3
device when the flow control system is in the test mode. Final Act. 2–3.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to provide a flow
meter to pipe 82 of Kudo to measure flow 83. Id. at 3; see Kudo Fig. 2.
Appellant argues that a person of ordinary skill in the art would not
have been motivated to modify Kudo in the manner proposed in the
rejection. Appeal Br. 8. Appellant points out that Kudo’s test mode
contemplates a trailer 12 with water tank 14 that is separate and apart from
the fire truck. Id. at 10. According to Appellant, Kudo does not
contemplate flowing fluid through pipe 82 in test mode and, therefore, there
would have been no reason to measure the flow rate of such non-existent
flow during test mode. Id. This argument, taken by itself, is not persuasive
as the Examiner’s proposed modification contemplates that flow would take
place through pipe 82 and manifold 66 in test mode.
We appreciate the Examiner’s effort and analysis that went into the
subject rejection. The Examiner, for the most part, is correct that Kudo is
very similar to Appellant’s invention, both in its purpose and in its
execution. After all, Kudo and Appellant’s invention both disclose fire
trucks that dispense foam fire suppressant chemicals as is commonly used in
aircraft rescue and firefighting applications. Kudo, col. 1, ll. 8–21. Both
Kudo and Appellant’s invention operate in a normal mode and in a test
mode. Id. col. 2, ll. 7–25. In both Appellant’s and Kudo’s systems, the tank
containing fire suppressant foam chemicals is isolated from certain fluid
conduits, particularly the spray nozzle outlets during system tests. Id.
(Appellant admits that Kudo’s ball valve 54 is closed during system tests.
Appeal Br. 10).
Appeal 2020-000616
Application 15/925,431
4
However, Kudo differs from Appellant’s stand-alone system in that it
uses a separate tank and trailer to supply water for its test mode. Kudo,
col. 2, l. 64 – col. 3, l. 32, Figs. 1, 4–6. A flow meter for measuring the rate
of fluid flow during testing resides in the trailer. Id. During testing, fluid
flows from trailer/tank 12, 14 through pipe 26, then through flow
transmitter 28 and fluid flow sensor 29, through hose connector 36, ball
valve 48, pipe 60, check valve 62, valve 69, pipe 64, manifold 66, pipe 70,
eductor 72, pipe 76, and nozzles 81. Id. col. 5, ll. 32 – col. 6, l. 5, Figs. 1–6.
A person of ordinary skill in the art would understand that pipe 82 in the fire
truck is isolated from the fluid flow through manifold 66 during test mode
by reason of valve 67 being closed in test mode. Id. Fig. 2, col. 3, ll. 60–64
(“When one valve 67 or 69 is open the other valve is closed”).
In order to meet the claim language, the Examiner modifies Kudo so
that the testing facilities reside entirely within the fire truck as opposed to
significant parts of the testing system residing in a separate trailer. We
deduce this from the Examiner’s findings in the final rejection identifying
tank 75 in the truck, as opposed to tank 14 in the trailer, as meeting the
“water tank” limitation in the claim. Final Act. 2. The Examiner then
modifies Kudo to insert a flow meter in pipe 82. Id. at 3. As to whether this
would have been obvious to achieve the claimed invention, we engage in a
two-step analysis. First, we look to whether more than mere ordinary skill is
required to equip pipe 82 with a flow meter. In that regard, we tend to agree
with the Examiner that inserting a flow meter into pipe 82 requires no more
than ordinary skill. Secondly, we consider whether a person of ordinary
skill in the art would have had a reason to do so.
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“An obviousness determination requires finding that a person of
ordinary skill in the art would have been motivated to combine or modify the
teachings in the prior art and would have had a reasonable expectation of
success in doing so.” Regents of Univ. of Cal. v. Broad Inst., Inc., 903
F.3d 1286, 1291 (Fed. Cir. 2018). “[O]bviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention.” Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
2015) (emphasis added). The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not necessarily make the
modification obvious. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).
In the instant case, Kudo’s pipe 82 is not used for testing. Although
placing a flow meter in pipe 82 would have the result of measuring the flow
of water through manifold 66 when valve 67 is open, such would not thereby
convert pipe 82 into part of a “test” system. Water that is pumped from
tank 75 encounters a junction that is upstream of eductor 72 and nozzles 81.
Kudo, Fig. 2. There is no valve that selectively directs water from tank 75
alternatively either into pipe 82 or pipe 74. Id. Thus, some of the flow that
is pumped from tank 75 flows directly into eductor 72 and nozzles 81 when
ball valve 67 is open, thereby by-passing pipe 82. Id. Although Kudo
appears to be silent on this subject, it is our impression that Kudo, after
dispensing foam, uses pipe 82 and valve 67 to flush fire suppressant
chemicals from the system via manifold 66 through pipe 95, ball valve 99,
and into storage tank 91. Id.
In our opinion, it is unlikely that a person of ordinary skill in the art
would have inserted a flow meter into pipe 82, because it would have
Appeal 2020-000616
Application 15/925,431
6
measured only a portion of the flow from tank 75 to eductor 72 and
nozzle 81. Although the Examiner is technically correct that a flow meter in
pipe 82 would measure the flow through manifold 66 so as to literally satisfy
the claim language, this would not actually “test” the system, because it
would not also measure the direct flow through pipe 74 to eductor 72 and
nozzle 81. Kudo explains that foam discharge tests verify that the foam
delivery system functions properly. Kudo, col. 1, ll. 15–21. The Examiner
does not explain how measuring only a portion of the total flow to
eductor 72 effectively subjects the system to a reliable test. “The court
should consider a range of real-world facts to determine ‘whether there was
an apparent reason to combine the known elements in the fashion claimed by
the patent at issue.’” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc.,
876 F.3d 1350, 1359 (Fed. Cir. 2017) (quoting Intercontinental Great
Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1344 (Fed. Cir. 2017).
Here, due to the divergence of flow into pipes 82 and 74, the Examiner’s
proposed reason for modifying Kudo in the manner proposed does not stack
up to the “real-world facts” before us. Id.
In light of the foregoing discussion, we do not sustain the Examiner’s
unpatentability rejection of claim 1.
Claims 2, 3, 11, and 13–16
Claims 2 and 3 depend from claim 1. Claims App. Claim 13 is an
independent claim that is substantially similar in scope to claim 1 and
claims 14–16 depend therefrom. Id. The Examiner’s rejection of these
claims suffers from the same infirmity that was identified above with respect
to claim 1. Thus, for essentially the same reason expressed above in
Appeal 2020-000616
Application 15/925,431
7
connection with claim 1, we do not sustain the rejection of claims 2, 3, 11,
and 13–16.
Unpatentability of Claim 12
over Kudo and Huszagh
Claim 12 depends from claim 1. Claims App. In the rejection
thereof, the Examiner relies on Huszagh as teaching an air compressor and
an actuator for shifting a valve. Final Act. 4. The Examiner’s rejection
relies on the same reasoning for modifying Kudo with a flow meter that we
determined to be reversible error with respect to claim 1 as discussed above.
Our analysis with respect to claim 1 applied with equal force to the rejection
of claim 12. Thus, for similar reasons, we do not sustain the Examiner’s
unpatentability rejection of claim 12.

CONCLUSION
Claims
Rejected
§ References Affirmed Reversed
1-3, 11, 13-16 103 Kudo 1-3, 11, 13-16
12 103 Kudo, Huszagh 12
Overall
Outcome
1-3, 11-16

REVERSED