Ex Parte Daspit et al

Board of Patent Appeals and Interferences

Apr 26, 2012

09569178 (B.P.A.I. Apr. 26, 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.
09/569,178 05/11/2000 Douglas A. Daspit 44099 8463
102352 7590 04/26/2012
TYCO FIRE PROTECTION PRODUCTS - WILLFIRE HC LLC
SUE Z SHAPER PC
1800 WEST LOOP SOUTH
SUITE 1450
HOUSTON, TX 77027
EXAMINER
HWU, DAVIS D
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
04/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS A. DASPIT and DWIGHT P. WILLIAMS
____________

Appeal 2010-003668
Application 09/569,178
Technology Center 3700
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Douglas A. Daspit and Dwight P. Williams (Appellants) originally
appealed under 35 U.S.C. § 134 from the Examiner’s decision rejecting
claims 1-28. See Not. of App. (stating “Applicant hereby appeals . . . from
the last decision of the examiner.”) In the Appeal Brief, however,
Appellants do not include claims 4 and 5 in the status of claims or the
grounds of rejection to be reviewed on appeal and do not present arguments
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for patentability of claims 4 and 5. App. Br. 2, 4. As such, we understand
Appellants to have withdrawn the appeal as to claims 4 and 5. We suggest
that the Examiner cancel these claims upon return of jurisdiction of this
application to the Examiner. See Ex Parte Ghuman, 88 USPQ2d 1478, 1480
(BPAI 2008) (precedential). Appellants seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-3 and 6-28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellants’ claimed invention pertains to a “portable wall-attachable
monitor apparatus and methods of use, particularly applicable to fighting
tank seal fires and for inhibiting vapor release from tanks having sunken or
dislodged roofs and for blanketing roof seal tank fires with foam.” Spec. 1,
ll. 4-7. Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. Portable wall-attachable monitor apparatus,
comprising:
a base structure, a nozzle and a monitor
attached between the nozzle and the base structure,
the monitor providing at least one degree of
freedom for the nozzle with respect to the base
structure;
the apparatus structured in combination to
surround, and to adjustably yet fixedly attach to, a
wall rim portion and having one or more fittings
for attaching a hose to the apparatus;
the monitor providing a positive angle of
inclination above the horizon for the nozzle when
the apparatus is oriented for attachment to the wall
rim portion.
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Independent claim 6 is directed to a method for fighting tank fires
comprising “adjustably yet fixedly affixing to and over a rim portion of a
tank wall a portable monitor apparatus having a nozzle attached.”
Independent claim 16 is directed to a portable wall-attachable monitor
apparatus and wall rim portion in combination comprising “a portable wall
rim portion” where the apparatus is “structured in combination to adjustably
yet fixedly attach to and over the wall rim portion.”
PROCEDURAL HISTORY
The present application came before the Board previously on appeal.
See Prior Board Decision in Appeal 2007-0621, dated April 30, 2007 (“Prior
Decision”). In the prior appeal, the Board affirmed the prior art rejections of
then-pending claims 1-3 and 6-28 based on Banner and Wilburn. Prior
Decision at 13. In a subsequent decision granting Appellants’ request for
rehearing, the Board designated the Prior Decision as containing a new
ground of rejection. See Decision on Request for Rehearing in Appeal 2007-
0621, dated January 29, 2008. Appellants then re-opened prosecution and
amended the claims. The Examiner rejected these amended claims as being
unpatentable over Banner and Wilburn. Final Office Action at 2-3, dated
May 13, 2008.
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1, 3, and 6-28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Banner (US 3,866,687; iss. Feb. 18, 1975) and
Wilburn (US 4,781,252; iss. Nov. 1, 1988).
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Banner, Wilburn, and McMillan (US 3,863,844; iss. Feb. 4, 1975).
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ISSUES
The issues presented by this appeal are:
Would one having ordinary skill in the art have been led by Wilburn
to fixedly attach Banner’s apparatus to a wall rim portion?
Would the combined teachings of Banner and Wilburn have rendered
obvious an apparatus having a lockdown lug and a pressure fit element?
Does Banner’s hook form a “saddle” at the point where the hook is
attached to the base?
Would the combined teachings of Banner and Wilburn have rendered
obvious an apparatus structured in combination to adjustably yet fixedly
attach to and over a portable wall rim portion?
ANALYSIS
Rejection Under 35 U.S.C. § 103(a) based on Banner and Wilburn
Appellants offer arguments pertaining to all the appealed claims
subject to this rejection (claims 1, 3, and 6-28) and offer additional
arguments for certain ones of these claims. App. Br. 13-19.1 For the
arguments pertaining to all of the appealed claims, we select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We separately
consider infra the additional arguments pertaining to the claims separately
argued.

1 Appellants presented arguments rebutting the rationale and combination of
references as set forth in the Prior Decision. App. Br. 5-13. We do not
address these arguments because we understand the rejection as set forth in
the Prior Decision has been overcome by the amendments made to the
claims subsequent thereto. The present Opinion addresses the arguments
rebutting the Examiner’s rationale and combination of references as set forth
in the Final Office Action dated May 13, 2008, and the Examiner’s Answer.
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Claim 1
The Examiner determined that “the device of Banner discloses the
structural limitations of the instant invention and the Wilburn et al. reference
provides a teaching of a portable wall-attachable monitor apparatus being
attached to a wall rim portion of a storage tank.” Ans. 5. The Examiner
determined that “[i]t would have been obvious to one having ordinary skill
in the art at the time the invention was made to have placed the device of
Banner on a wall rim portion since such an arrangement for a wall-
attachable monitor apparatus has already been taught by Wilburn et al.”
Ans. 3. The Examiner further stated that “[w]hen the device of Banner is
attached to a wall rim portion of a tank, it is fixedly attached but still
movable making it adjustable to [move] to another location, and thus, the
device is ‘adjustable yet fixedly’ attachable to a wall rim portion.” Ans. 5.
Appellants do not contest the Examiner’s findings as to the scope and
content of Banner. Rather, Appellants argue that one of ordinary skill in the
art would not have been led to use the fire extinguisher of Banner on a wall
rim portion of a tank because one would not have had a reasonable
expectation of success and because Wilburn suggests to movably couple a
fire extinguishing wand to the wall rim portion. App. Br. 15.
Banner discloses an automatic fire extinguisher means affixed to a
wall by hooks in an oil burner room example. Col. 3, ll. 24-26; col. 4, ll. 45-
50; fig. 1. Banner discloses that the automatic fire extinguisher has
“component parts built into one integral unit” to “add[] portability” and
“make[] servicing easier.” Col. 5, ll. 25-27. Banner also discloses that
“[t]he nozzles 24 operate on a universal joint 23 [and are] therefore
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positionable to [a] given hazard coverage as specifically needed.” Col. 6, ll.
2-4; fig. 4D.
Wilburn teaches that prior art apparatuses for extinguishing a fire in a
storage tank suffer from shortcomings. For example, Wilburn teaches that
one prior art distributed sprinkler apparatus that is designed to be
permanently fixed to the floating roof inside the storage tank suffers from
the disadvantages that: (1) the apparatus is incapable of providing a large
enough quantity of fire suppressant material directly onto a particularly
intense portion of a fire because each sprinkler is capable of providing only a
fixed amount of fire suppressant material at a given location; and (2) the
apparatus cannot be moved from tank to tank in response to fire conditions,
and thus the cost of each storage tank is greatly increased. Col. 1, l. 64 –
col. 2, l. 14. Wilburn teaches that another prior art apparatus, which hoists a
foam nozzle over the lip of a storage tank so as to be capable of being
moved from tank to tank, is very difficult to move around the lip of the tank
once it has been positioned, thereby rendering the apparatus ineffective at
suppressing fires. Col. 2, ll. 15-32. Wilburn addresses these shortcomings
by providing an apparatus “coupled to the storage tank in such a way as to
enable the fire suppressant material to be quickly applied directly at the
location of the fire” and “movable around the tank so that the fire
extinguishing materials may be quickly and accurately directed to the fire
source.” Col. 2, ll. 36-41; see also col. 1, ll. 11-17
While Wilburn’s solution to the shortcomings of the prior art uses an
apparatus that can be movably coupled to the rim of the storage tank to
quickly apply the fire suppressant material to the location of the fire, Banner
discloses an alternative apparatus that overcomes the shortcomings
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identified in Wilburn in a slightly different manner. Specifically, Banner’s
apparatus, like Wilburn’s, is portable from tank-to-tank in that Banner’s
apparatus is attached to a wall by hooks. Further, Banner’s apparatus, like
Wilburn’s, can apply fire suppressant material directly at the location of the
fire; however, Banner achieves this result by positioning the nozzles to
achieve a given hazard coverage as specifically needed, while Wilburn
moves the entire apparatus around the rim to position it where needed. See
Ans. 4 (“[s]ince the device is portable and includes the hooks, it can be
movably coupled to the lip of a storage tank” and “[s]ince the nozzles of the
monitor apparatus of Banner are adjustable, fire extinguishing material can
be quickly and accurately directed down into the tank to fight a fire in the
tank.”) Thus, the use of Banner’s fire extinguisher apparatus on the wall rim
of a tank is nothing more than the substitution of one known fire
extinguisher apparatus on the wall rim of a tank for another known in the
field to yield predictable results. See KSR Int’l Inc. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (citing United States v. Adams, 383 U.S. 39, 51-52 (1966)).
The Examiner found that the nozzle shown in the Banner reference can
obviously accommodate a pressure of 100 psi since one having ordinary skill
in the art knows that water pressure is higher than 100 psi for fire fighting
equipment. Ans. 6. Appellants do not contest this finding. Thus, we find
the Examiner’s determination that one of ordinary skill in the art would have
been led to apply the fire fighting apparatus of Banner to the wall rim
portion of a tank based on the teachings of Wilburn to be based on rational
underpinnings.
While Appellants argue that “Banner never teaches or suggests
affixing his fire extinguisher to a wall rim portion, or how that might be
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done, or whether that might be done, or any advantages from doing so,” the
Examiner does not rely on Banner for this suggestion. App. Br. 14. Instead,
the Examiner relies on Wilburn, which suggests attaching a fire extinguisher
apparatus to the wall rim portion of a tank, for the suggestion. Ans. 3-4.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted); In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (citation omitted). Further, while
Banner’s primary purpose may have been to use its apparatus to fight fires
caused by heating plants in homes and factories, Banner is an example of an
automatic fire extinguisher for general use, such as with fires caused by
electric, oil natural gas, liquid petroleum or other fuel, that combats the fire
immediately after start. Banner, col. 1, ll. 28-41 and col. 2, ll. 53-59.
Banner further teaches that the automatic fire extinguisher can be used for
“fuel containers that may require special fire fighting apparatus.” Banner,
col. 2, ll. 63-64. Appellants further contend that “[t]here is an absence in
Wilburn of any teaching of, or of any suggestion for, or of any advantage
for, or of any means suitable for, attaching a Banner type portable fire
extinguisher (as opposed to a wand) to a wall rim.” App. Br. 15. “Common
sense teaches, however, that familiar items may have obvious uses beyond
their primary purposes.” KSR Int’l Inc. v. Teleflex Inc., 550 U.S. 398, 420
(2007).
Appellants further argue that “Banner teaches attaching his device to a
flat wall portion, having inherently pre-established, pre-measured mating
eyelets for Banner’s four hooks 12 or suspending Banner’s device in [the]
air from an overhead hook.” App. Br. 17. To the extent that to hang Banner
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on the wall rim portion of a tank would require some modification of the
hooks or the use of mating eyelets around the tank wall, Appellants have not
provided adequate evidence to show that such modifications would have
been beyond the level of skill of one of ordinary skill in the art. See KSR,
550 U.S. at 421 (“[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.”) Appellants traverse that one of ordinary skill
“could have without undue experimentation and testing figured out how to,
if at all, attach Banner’s portable fire extinguisher to a wall rim portion.”
App. Br. 15. Appellants also argue that “[t]here is no reasonable expectation
of success” because “[a] monitor/nozzle has attachment issues relating to
weight and torque and back thrust.” Id. Appellants have not presented any
objective evidence to support these assertions. An attorney’s arguments in a
brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
Appellants also argue that “[n]either Banner nor Wilburn are
interested in solving applicant’s problem.” App. Br. 15. The Examiner,
however, has not relied on the Appellants’ problem as the stated reason to
combine the teachings of Banner and Wilburn. Ans. 3-4. “Under the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” KSR, 550 U.S. at 420 (holding the
Court of Appeals erred in holding that courts and patent examiners should
look only to the problem the patentee was trying to solve).
Appellants further argue that “[t]here is no suggestion that Wilburn’s
‘movable coupling means 10,’ designed for a ‘wand,’ could be redesigned to
support a Banner fire extinguisher apparatus.” App. Br. 16. We do not
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understand the Examiner’s rejection of claim 1 to propose mounting or
otherwise supporting Banner’s fire extinguisher apparatus on the “movable
coupling means” of Wilburn. Rather, the Examiner simply takes from
Wilburn the suggestion to mount a fire extinguisher apparatus on the wall
rim portion of a tank and applies that suggestion to use the hooks 12 of
Banner to mount Banner’s portable fire extinguisher on the wall rim portion
of a tank instead of on the wall of a boiler room, as shown in Figure 1 of
Banner. Ans. 3-4. As such, we do not find any of Appellants’ arguments
persuasive of error in the rejection of claim 1. Accordingly, we sustain the
rejection of claim 1 as unpatentable over Banner and Wilburn.
Dependent claims 10, 12, 15, and 26
Appellants argue that “a lockdown lug (claim 26) and a pressure fit
element (claim[s] 12, 18 [sic, 15]) help solve the problem of adjustably yet
fixedly attaching to a wall rim portion (claim 10)” and “[c]laim[s] 10, 12, 15
and 26 are independently allowable.” App. Br. 17-18. We agree with
Appellants that the Examiner’s proposed combination, which proposes to
use Banner’s hooks 12 to attach the fire fighting apparatus to the wall rim
portion of a tank, does not include the pressure fit element or lockdown lug
called for in claims 10, 12, 15, and 26. As such, we do not sustain the
rejection of these claims as unpatentable over Banner and Wilburn.
Dependent claim 11
The only argument specific to claim 11 is one sentence in which
Appellants state that “Banner’s hook 12 does not provide a saddle, as recited
in claim 11, as commonly understood in the art.” App. Br. 16. Appellants
do not provide any explanation or evidence to show how the term “saddle”
would be understood by one of ordinary skill in the art. The Examiner found
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that “[a] hook 12 along the back of the base where the hook is attached
provides a saddle as recited in claim 11.” Ans. 3. Appellants’ Specification
does not provide a lexicographical definition of “saddle.” An end view of
Appellants’ base 12 forms an upside down U-shape, similar to the shape of a
saddle. Spec. 4, l. 25, figs. 1A, 1B. Likewise, the hook 12 of Banner along
the back of the base where the hook is attached to the base provides a similar
upside down U-shape that resembles the shape of a saddle. Banner, figs. 2,
3. As such, we find the Examiner’s position reasonable, and we sustain the
rejection of claim 11.
Independent claim 16 and dependent claims 17-22, 24/16, and
27/24/16
Independent claim 16, and by virtue of their dependence, claims 17-
19, 24/16, and 27/24/16, recite “a portable wall rim portion” and an
apparatus “structured in combination to adjustably yet fixedly attach to and
over the wall rim portion.” Claims 20-22, which depend from method claim
6, similarly recite “utilizing a portable frame to provide a rim portion of a
wall.” While Banner discloses embodiments that attach the automatic fire
extinguisher to a dolly (col. 8, ll. 37-42; fig. 16) and to the end of a raised
ladder of a fire ladder truck (col. 8, ll. 47-53; fig. 18), in these embodiments,
the fire extinguisher apparatus is not adjustably yet fixedly attached or
affixed to and over a portable wall rim portion. While the Examiner found
that “[t]he device [of Banner] can be attached to a truck bed or rest on the
ground” (Ans. 3), the Examiner did not provide a reason why one of
ordinary skill would have been led to modify these embodiments of Banner
to attach or affix the apparatus to and over a portable wall rim portion. As
such, we cannot sustain the rejection of claims 16-22, 24/16, and 27/24/16.
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Dependent claims 3, 13, 14, 24/1, 25, 27/24/1, and 28
With respect to claims 24/1, 25, 27/24/1, and 28, Appellants simply
recite the limitations in these claims and argue that “the examiner has not
pointed to the location of the above limitations in the references” and that
“Applicant does not find the limitations in the references, nor is the issue a
matter of mere design choice.” App. Br. 16. Appellants further argue that
“providing a stable operation under 100 psi while maintaining a positive
angle of inclination, adding two degrees of freedom and a three inch
diameter waterway all raise significant engineering issues, not addressed by
Wilburn or Banner.” Id. These arguments are not presented under a
separate subheading and do not specifically address how the Examiner erred
in determining the subject matter of each of these claims to be obvious.
These vague statements do not constitute separate arguments for
patentability of the dependent claims pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board had reasonably interpreted 37 C.F.R.
§ 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”). For the same
reasons, Appellants’ reference to dependent claims 3, 13 and 14 on page 18
of the Appeal Brief do not amount to arguments for separate patentability of
these claims. As such, claims 3, 6-9, 13, 14, 23, 24/1, 25, 27/24/1, and 28
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Rejection based on Banner, Wilburn, and McMillan
The Examiner rejected dependent claim 2 based on the combination of
Banner and Wilburn, as applied to claim 1, and further in view of McMillan.
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Ans. 4. Appellants chose to rely on the arguments made for patentability of
claim 1 as the basis for the asserted patentability of claim 2. See Appellants’
Response to Examiner in Regard to Order Returning Undocketed Appeal,
dated November 5, 2009. Finding Appellants’ arguments as to claim 1
unpersuasive, we sustain the rejection of claim 2 based on Banner, Wilburn,
and McMillan, for the reasons set forth supra in our analysis of claim 1.
CONCLUSIONS
One having ordinary skill in the art would have been led by Wilburn
to fixedly attach Banner’s apparatus to a wall rim portion.
The Examiner has not adequately shown how the combined teachings
of Banner and Wilburn would have rendered obvious an apparatus having a
lockdown lug and a pressure fit element.
Banner’s hook forms a “saddle” along the back of the base at the point
where the hook is attached to the base.
The Examiner has not adequately shown how the combined teachings
of Banner and Wilburn would have rendered obvious an apparatus structured
in combination to adjustably yet fixedly attach to and over a portable wall
rim portion.
DECISION
The decision of the Examiner to reject claims 1-3, 6-9, 11, 13, 14, 23,
24/1, 25, 27/24/1, and 28 is AFFIRMED. The decision of the Examiner to
reject claims 10, 12, 15-22, 24/16, 26, and 27/24/16 is REVERSED.

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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

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