10443302 (B.P.A.I. May. 17, 2011)

Ex Parte Bennett

Board of Patent Appeals and InterferencesMay 17, 2011

10443302 (B.P.A.I. May. 17, 2011)

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. 10/443,302 05/21/2003 Joseph Michael Bennett FIRE.0600 6254 39602 7590 05/18/2011 THE NOBLITT GROUP, PLLC 4800 NORTH SCOTTSDALE ROAD SUITE 6000 SCOTTSDALE, AZ 85251 EXAMINER NGUYEN, DINH Q ART UNIT PAPER NUMBER 3752 MAIL DATE DELIVERY MODE 05/18/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOSEPH MICHAEL BENNETT ____________ Appeal 2009-013085 Application 10/443,302 Technology Center 3700 ____________ Before MICHAEL W. O’NEILL, STEFAN STAICOVICI, and KEN B. BARRETT, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Joseph Michael Bennett (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1, 9-11, 13-15, 18, 30, 38-40, 42-44, 47-49, 57-59, 61-63, and 66 under 35 U.S.C. § 102(b) as anticipated by Tapscott (US 5,056,602, issued Oct. 15, 1991) and claims 2-6, 8, 12, 19-27, 31-35, 37, 41, 50-54, 56, and 60 under 35 U.S.C. § 103(a) as Appeal 2009-013085 Application 10/443,302 2 unpatentable in view of Tapscott and Thompson (US 4,616,049, issued Oct. 7, 1986). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Invention The claims on appeal relate to fire extinguishant. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A fire extinguishant, comprising: a suppressant; and a thermal absorbant configured to absorb radiation, wherein the thermal absorbant is proximate to the suppressant. OPINION We have carefully reviewed the Examiner’s rejections in light of the Appellant’s arguments and the Examiner’s responses. As a result of this review, we find that the Examiner’s rejection and response to Appellant fails to establish by a preponderance of the evidence that helium or argon gas is a suppressant. Because of this deficiency in the prima facie case of anticipation, the Examiner has failed to establish by a preponderance of the evidence that the claimed inventions are anticipated or rendered obvious by the prior art. Our reasons follow. Tapscott is silent in describing that argon or helium is a suppressant. Rather, Tapscott expressly describes that the argon or helium gas is a delivery mechanism. As such, in order to establish that argon or helium is inherently a suppressant, the Examiner needs to provide evidence or sufficient technical reasoning that argon or helium gas is a suppressant. The Examiner asserts that “inert gases are not reactive to fire therefore they have been used to fill void spaces in fuel tanks for explosion protection Appeal 2009-013085 Application 10/443,302 3 thus have been use[d] as fire suppressant.” Ans. 5. The Examiner proffers no evidence to support the assertion. The Examiner does not substantiate how the filling of a void space in a fuel tank with an inert gas for explosion protection necessarily leads to the inert gas acting as a suppressant. Inherency cannot be established by possibilities or probabilities (citations omitted). While the inherent characteristic does not have to be readily known to a person having ordinary skill in the art (citations omitted), the Examiner, to support a finding of inherency, must then establish through technical reasoning and/or evidence that helium or argon gas necessarily possess a suppressant characteristic (citations omitted). We agree with Appellant that assertions of technical facts in the areas of esoteric technology or specific knowledge of an art must be supported by citation to some reference work recognized as a standard in the pertinent art. Reply Br. 8. The Examiner has provided no documentary evidence to substantiate the Examiner’s assertion for this esoteric area of technology. As such, the Examiner has not established with sufficient evidence or technical reasoning that Tapscott, which expressly discloses the helium or argon gas as a delivery mechanism, inherently discloses those gases as a suppressant. CONCLUSION Based on the foregoing, the Examiner’s rejection and response to Appellant fails to establish by a preponderance of the evidence that helium or argon gas is inherently a suppressant. Appeal 2009-013085 Application 10/443,302 4 DECISION We reverse the Examiner’s decision to reject claims 1, 9-11, 13-15, 18, 30, 38-40, 42-44, 47-49, 57-59, 61-63, and 66 under 35 U.S.C. § 102(b) as anticipated by Tapscott and claims 2-6, 8, 12, 19-27, 31-35, 37, 41, 50-54, 56, and 60 under 35 U.S.C. § 103(a) as unpatentable in view of Tapscott and Thompson. REVERSED Klh