Ex Parte Bennett

Patent Trial and Appeal Board

Nov 13, 2012

11566063 (P.T.A.B. Nov. 13, 2012)

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.
11/566,063 12/01/2006 Joseph Michael Bennett FIRE.0217 5259
39602 7590 11/14/2012
THE NOBLITT GROUP, PLLC
8800 NORTH GAINEY CENTER DRIVE
SUITE 279
SCOTTSDALE, AZ 85258
EXAMINER
NGUYEN, DINH Q
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
11/14/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSEPH MICHAEL BENNETT
____________________

Appeal 2010-005934
Application 11/566,063
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD, and
BRADFORD E. KILE, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005934
Application 11/566,063

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
21, 22, 27-31, 36, and 38-40. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The Invention
Appellant’s claimed invention relates to “thin, breakable panels
containing dry chemical fire extinguishant.” Spec. para. [0003].1 Claims
21, 30, and 40 are the independent claims on appeal, and claim 21,
reproduced below, is illustrative of the claimed subject matter (emphasis
added):
21. A hazard control system for a hazardous
material container, comprising:
a one-piece non-planar shatterable
container configured to contain a hazard control
material and comprising a first surface and a
second surface and comprising a surface area,
wherein:
the first surface comprises a first material
with a first brittleness;
the second surface comprises a second
material with a second brittleness;
a majority of the surface area of the
container comprises the first surface and the
second surface; and
a majority of the first surface is non-planar
and configured to substantially conform to and
substantially cover a non-planar exterior surface of
the hazardous material container.

1 Because Appellant makes reference to the pre-grant publication of this
application rather than the original Specification as filed, for consistency, we
do so as well. See e.g., App. Br. 6; US 2007/0107915, pub. May 17, 2007.
Appeal 2010-005934
Application 11/566,063

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The Rejections
The following rejections are before us on appeal:
Claims 21, 22, 27, 30, 31, 36, and 40 under 35 U.S.C. § 102(b) as
anticipated by Lee (US 4,251,579; iss. Feb. 17, 1981).
Claims 28, 29, 38, and 39 under 35 U.S.C. § 103(a) as unpatentable
over Lee and Bennett (US 5,762,145; iss. Jun. 9, 1998).

OPINION
Claims 21, 22, 27, 30, 31, 36, and 40 as anticipated by Lee
Independent claims 21 and 30 each call for a one-piece non-planar
shatterable container that includes a first and second surface comprised of a
first and second material having a first and second brittleness, respectively.
Similarly, independent method claim 40 is directed to a method of
controlling a hazard of a hazardous material in a non-planar housing that
includes the step of securing a one-piece non-planar shatterable container to
the housing wherein the shatterable container comprises a first surface with a
first brittleness and a second surface with a second brittleness. The context
of the independent claims suggests that the brittle surface areas are
shatterable.
The Specification does not provide a lexicographical definition of
brittleness or shatterable. “Brittle” is commonly understood to mean that the
material has a lack of ductility so that it fractures without plastic
deformation, and “shatter” is commonly understood to mean to dash into
Appeal 2010-005934
Application 11/566,063

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fragments.2 Spec. passim. We discern nothing in the Specification
inconsistent with these ordinary meanings.
In parity with the ordinary meaning, the Specification states that the
claimed container is optimally constructed to fracture sufficiently due to the
selection of proper brittle materials to maximize outer face breakup and
resultant powder discharge. Spec. para. [0010]. For example, a container,
such as shroud 11, should “break apart” due to impact and release
extinguishant. Spec. para. [0026].
The Specification also states as background that Lee3 discloses a panel
comprised of thin face sheets sandwiching a honeycomb structure filled with
an extinguishing chemical. Spec. para. [0007]. These face sheets are quite
ductile and designed to “tear locally at the point of impact as opposed to
shattering in their entirety.” Id. By this contrast, the Specification makes
clear that a brittle material shatters as contrasted to tearing.
Read in light of the Specification as would be interpreted by a person
of ordinary skill in the art, the shatterable container of claims 21, 30, and 40
is formed of a brittle material having a lack of ductility so that it fractures
into fragments without plastic deformation (as opposed to tearing).
The Examiner found that Lee’s container is comprised of a first and
second material having a first and second brittleness as called for in the
independent claims for two reasons.

2 Brittle: “[o]f the fracture of a material: occurring without plastic
deformation due to a lack of ductility; an instance of this,” adj., def. 1.b..
Shatter: “to dash into fragments,” v., def. 2.a. Oxford English Dictionary
(1989) available at www.OED.com, last accessed Oct. 31, 2012.
3 The same Lee used as prior art for the rejections at hand.
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First, according to the Examiner, Lee’s first and second surfaces are
comprised of glass, a material well known to be brittle. Ans. 3-5 (citing col.
3, ll. 13-27 regarding panel composition). However, Lee does not disclose a
container comprised of glass; rather, Lee discloses that the panels of the
invention “may be of a resin-impregnated fibre, such as glass, polyamide, or
carbon fibre.” Lee, col. 3, ll. 13-16. As such, Lee discloses glass in the
form of a resin-impregnated fibre. We agree with Appellant that such
disclosure refers to fiberglass4 rather than glass5. See Reply Br. 2. Further,
Lee does not disclose that the resin impregnated fibre glass is brittle,
shatterable, or fractures into fragments without plastic deformation. Lee,
passim. Rather, Lee discloses that impact with a projectile causes the panels
to “peels away, or otherwise preferentially breaks up or away.” Lee, col. 1,
ll. 31-34; see also Spec. para. [0007].
Second, the Examiner reasons that Lee’s container is comprised of
materials which are the same as or similar to the materials used to form the
claimed container, and therefore have similar properties such as brittleness.

4 Fibreglass: “[a]ny material consisting of very thin glass filaments made
into a textile or paper, or embedded in plastic or other substances for use as a
construction or insulating material; also, glass in the form of filaments
suitable for such uses.” “Fibreglass,” n., Oxford English Dictionary (1989)
available at www.OED.com, last accessed on Oct. 31, 2012. See also
MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 906 (6th
ed. 2003), “Glass fiber: A glass thread less than a thousandth of an inch (25
[microns]) thick, used loosely or in woven from as an acoustic, electrical, or
thermal insulating material and as a reinforcing material in laminated
plastics. Also known as fiberglass.”
5 Glass: [a] substance, in its ordinary forms transparent, lustrous, hard, and
brittle, produced by fusing sand (silica) with soda or potash (or both),
usually with the addition of one or more other ingredients, esp. lime,
alumina, lead oxide.” “Glass,” n., def. I.1., Oxford English Dictionary
(1989) available at www.OED.com, last accessed on Oct. 31, 2012.
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Application 11/566,063

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Ans. 5-6. Lee’s container may be formed of resin-impregnated fibre (e.g.,
glass, polyamide, or carbon fibre) or metal (e.g., stainless steel or aluminum
alloy), and the claimed container may be formed of polycarbonate, plastic
extrusions, or acrylic. See Lee, col. 3, ll. 13-16; Spec. paras. [0026], [0027],
[0033]. These materials are not the same. See Reply Br. 2-3; contra. Ans.
5-6. Nor has the Examiner provided evidence or technical reasoning
sufficient to explain how a resin-impregnated fibre material or metal is
similar to polycarbonate, plastic extrusions, or acrylic. Id.
On the record before us, the Examiner has not established by a
preponderance of the evidence that Lee discloses a container comprised of a
first and second material having a first and second brittleness as called for in
the independent claims. Consequently, we do not sustain the rejection of
independent claims 21, 30, and 40 and their respective dependent claims 22,
27, 31, and 36 on the basis of anticipation.

Claims 28, 29, 38, and 39 as unpatentable over Lee and Bennett
Claims 28 and 29 depend directly or indirectly from claim 21, and
claims 38 and 39 depend directly or indirectly from claim 30. Therefore,
claims 28, 29, 38, and 39 each contain the limitation that the one-piece non-
planar shatterable container includes a first and second surface comprised of
a first and second material having a first and second brittleness,
respectively.6
The Examiner found that Lee discloses the claimed subject matter
“except for the non-planar shatterable container that surrounds the hazardous

6 Such limitation is contained in the respective independent claims 21 and
30.
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material container.” Ans. 4. The Examiner found that Bennett discloses a
hazard control system having a one-piece shatterable container 1. Id. The
Examiner concluded that it would have been obvious to provide the device
of Lee with the shatterable container disclosed by Bennett. Id.
Appellant argues that Lee and Bennett, alone, or in combination, do
not disclose or suggest a container that includes a first and second surface
comprised of a first and second material having a first and second
brittleness, respectively, as claimed. App. Br. 17-18.
To the extent that the rejection relies upon Lee for disclosure of a first
and second surface having a first and second brittleness as claimed, as
explained in the first rejection, supra, Lee does not sufficiently support such
a disclosure. Further, while Bennett discloses that the first and second
surfaces (face sheets 2) “completely shatter to assure total release” of the
extinguishant, Bennett does not disclose that these surfaces have a first and
second brittleness. See App. Br. 18; Bennett, col. 6, ll. 1-2. Thus, the
rejection does not adequately explain how Lee and Bennett would have led a
person of ordinary skill in the art to the claimed subject matter.
Accordingly, we do not sustain the rejection of claims 28, 29, 38, and
39 on the basis of obviousness.

DECISION
We reverse the Examiner’s decision to reject 21, 22, 27-31, 36, and
38-40.

REVERSED
Klh