Ex Parte Chuprin

Board of Patent Appeals and Interferences

Aug 19, 2011

10763909 (B.P.A.I. Aug. 19, 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.
10/763,909 01/26/2004 Valery Chuprin 7797
7590 08/19/2011
I. BROROVSKY
16 Bantry Ct
Huntington, NY 11743
EXAMINER
HWU, DAVIS D
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
08/19/2011 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 VALERY CHUPRIN
____________________

Appeal 2009-009838
Application 10/763,909
Technology Center 3700
____________________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/763,909

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STATEMENT OF THE CASE
Valery Chuprin (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1, 2, 4, 7-10, 14, and 15. Claims 3, 5, 6, and
11-13 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).
THE INVENTION
Appellant’s claimed invention pertains to a method of and system for
stopping and extinguishing forest fires, and involves the erection of a fire
wall. Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method of stopping and extinguishing forest fires,
comprising the steps of erecting at least one substantially
vertical wall; making the wall of a fabric fire-resistant material
by unrolling said roll fire resistant material from a roll so as to
erect said wall and configured so that when a forest fire reaches
the wall it can be stopped and extinguished, supporting said at
least one wall on a plurality of supports extending over a whole
height of said at least one wall.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1, 2, 4, 7, 9, 10, and 14 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Farley (US 5,944,114, issued Aug. 31,
1999); and
2. Claims 8 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Farley.
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OPINION
The claims on appeal include method claims (independent claim 1 and
dependent claims 2, 4, 7, and 8) as well as system claims (independent claim
9 and dependent claims 10, 14, and 15) that recite the same or similar
structural elements utilized in or erected via the corresponding method.
Method claim 4 does not have a corresponding system claim. Appellant
argues the rejected claims (with the exception of claim 4) in pairs, grouping
the method claim with the corresponding system claim. Br. 9-13. For each
group, we select the method claim as the representative claim, and the
corresponding system claim stands or falls with that method claim. See
37 C.F.R. § 41.37(c)(1)(vii). No separate arguments are presented for claim
4, and therefore it stands or falls with claim 1 from which it depends.

1. The rejection of claims 1, 2, 4, 7, 9, 10, and 14 under 35
U.S.C. § 102(b) as being anticipated by Farley
Claims 1 and 9
Appellant argues that “[t]his construction [of Farley’s device] is
impossible to carry out” and that “[t]his construction can not be utilized in
practice.” Br. 9, 10. We understand Appellant to argue that Farley would
not have been enabling to one of ordinary skill in the art. However, the
disclosures of a prior art reference are presumed to be enabled. Amgen Inc.
v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003).
Appellant bears the burden of showing non-enablement of Farley, but has
not done so. Id. at 1355 (quoting In re Sasse, 629 F.2d 675, 681 (CCPA
1980)).
Appellant’s assertion that the rolled material of the invention is
unwound vertically whereas Farley’s is pulled horizontal (Br. 10) does not
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Application 10/763,909

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show error in the rejection because the assertion is not commensurate with
the language of claims 1 and 9. While those claims recite a substantially
vertical wall, the claims do not require unrolling in any particular direction
to create that wall.
To the extent that Appellant’s underlining of the word “fabric” in the
statement pointing out what the claims recite constitutes an argument
(Br. 10), that argument is not persuasive. The Examiner correctly found that
Farley discloses a fabric fire-resistant material. Ans. 3; Farley, col. 7, ll. 15-
18 (disclosing a sheet of fire-resistant material “composed of 2 mil
aluminum bonded to glass cloth with fire resistant adhesive”).
We therefore sustain the rejection of claim 1 as anticipated by Farley.
Claims 4 and 9 fall with claim 1.
Claims 2 and 10
Appellant’s arguments (Br. 11) that “Farley does not disclose any
anti-fire cut-through paths” and the reference to forest roads are not
commensurate with the language of claim 2, which does not require any
such paths or roads. To the extent that Appellant argues that a claimed
feature is missing from Farley, the Examiner’s response regarding claims 2
and 10 adequately addresses that argument. Ans. 4. We sustain the
rejection of claims 2 and 10 as anticipated by Farley.
Claims 7 and 14
Claim 7 calls for bringing vegetation behind the fire wall to the
ground and applying anti-fire foam to the vegetation. Appellant argues that
this is not disclosed in Farley. Br. 12. The Examiner maintains that “[o]nce
the wall is erected, the fire can be extinguished by conventional means
which includes bringing vegetation to the ground and applying anti-fire
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foam onto the vegetation” and “once the wall of Farley is erected, the fire
can be extinguished using anti-fire foam since the use of anti-fire foam is
widely used in the fire fighting art, and Farley has already disclosed not just
erecting to stop a fire but also extinguishing the fire . . . .” Ans. 3, 4-5.
While Farley does disclose that fires getting past the barrier “can be put out
by conventional methods” (Farley, col. 3, ll. 3-5), the Examiner did not find
that Farley specifically discloses bringing down vegetation and applying
foam. As such, we cannot sustain the rejection of claims 7 and 14 under
§ 102.
However, the Examiner’s articulation of the rejection, including the
fact findings and corresponding reasoning, is sufficient to establish a prima
facie showing that Appellant’s claimed subject matter – both the method of
claim 7 and the system of claim 14 – would have been obvious to one of
ordinary skill in the art. Further, we note that erecting a fire wall as in the
method of claim 1 and forming the trench for the fire wall as recited in claim
8 (discussed below) would tend to bring down vegetation (at least grass).
We also note that Appellant admits that it was known in the art to apply
anti-fire foam (Spec. 1) and does not dispute the Examiner’s finding that
bringing down vegetation and applying such foam was a conventional means
to extinguish a fire (Br. 12). Therefore, we enter a new ground of rejection
of claims 7 and 14 under 35 U.S.C. § 103(a) as being unpatentable over
Farley.

2. The rejection of claims 8 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Farley
Dependent claim 8 recites a method comprising forming a trench and
placing the wall in the trench. Appellant appears to contend that the
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Examiner’s conclusion of obviousness is flawed because Farley does not
disclose placing the roll of fire-resistant material in the trench for vertically
upwardly unrolling. Br. 13. Appellant’s argument is not commensurate
with the language of claim 8 (including the limitations of the claims from
which it depends), which does not require the wall to be erected in the
manner suggested by Appellant. As such, Appellant has not persuaded us of
error in the Examiner’s conclusion that the subject matter of claim 8 would
have been obvious. Claim 15 falls with claim 8.
DECISION
The decision of the Examiner to reject claims 7 and 14 as anticipated
by Farley is reversed. The decision of the Examiner to reject claims 1, 2, 4,
8-10, and 15 is affirmed. We enter a new ground of rejection of claims 7
and 14 under 35 U.S.C. § 103(a) as being unpatentable over Farley.
FINALITY OF THE DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board.” In addition to affirming the
Examiner’s rejections of one or more claims, this decision contains a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b)
provides “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. …

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. ….
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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