Ex Parte Neumeier et al

Board of Patent Appeals and Interferences

Jan 16, 2009

10897693 (B.P.A.I. Jan. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANTON NEUMEIER and REINHARD EFFENBERGER
____________________

Appeal 2008-3851
Application 10/897,693
Technology Center 3700
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Decided: January 16, 2009
____________________

Before: WILLIAM F. PATE, III, MICHAEL W. O'NEILL and
STEFAN STAICOVICI, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
10. We have jurisdiction under 35 U.S.C. § 6(b).
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The claims are directed to a method and apparatus for extinguishing
fires.
Claim 1 is illustrative of the claimed subject matter and reproduced
below:
1. A process for extinguishing metal fires by applying an
extinguishing agent to a fire source, comprising the steps of
using a totally water-free liquid extinguishing agent which
reacts with the burning metal while binding the air oxygen and
forming a non-flammable compound, and applying the liquid
extinguishing agent to the fire source substantially from above
in the form of a multitude of fine jets of the extinguishing
agent.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Livingston 3,698,482 Oct., 17, 1972
Hengesbach 3,727,841 Apr. 17, 1973
Barker 5,124,367 Jun. 23, 1992
Wedlake 5,607,787 Mar. 04, 1997
Nakagami 5,871,673 Feb., 16,1999
Huang US 6,540,163 B1 Apr. 01, 2003
Chen US 6,719,331 B1 Apr. 13, 2004

Claims 1-3 stand rejected under 35 USC § 103(a) as being
unpatentable over Livingston in view of Wedlake. Claim 4 stands rejected
under 35 USC § 103(a) as being unpatentable over Livingston in view of
Wedlake and further in view of Barker. Claim 5 stands rejected under 35
USC § 103(a) as being unpatentable over Livingston in view of Wedlake
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and further in view of Nakagami. Claims 6, 7 and 9 stand rejected under 35
USC § 103(a) as being unpatentable over Chen. Claim 8 stands rejected
under 35 USC § 103(a) as being unpatentable over Chen in view of Huang.
Claims 6 and 10 stand rejected under 35 USC § 103(a) as being unpatentable
over Hengesbach. The rejection of all of the claims is appealed. Appellants
concede that claims 4, 5 and 8-10 will stand or fall with the claims from
which they depend (Brief p. 7).
ISSUES
Have Appellants established that the Examiner erred in rejecting
claims 1-3 under 35 USC § 103(a) as being unpatentable over Livingston in
view of Wedlake?
Have Appellants established that the Examiner erred in rejecting
claims 6 and 7 under 35 USC § 103(a) as being unpatentable over Chen?
Have Appellants established that the Examiner erred in rejecting
claim 6 under 35 USC § 103(a) as being unpatentable over Hengesbach?

FINDINGS OF FACT
1. Livingston discloses a process for extinguishing fires (Col. 2, l. 28), by
applying an extinguishing agent to a fire (Col. 2, l. 32 et seq.)
substantially from above (Fig. 2) in the form of a multitude of fine jets
(via 28,30).
2. Livingston further discloses water as an exemplary extinguishing agent
(Col. 3, l. 9), but recognizes that other suitable extinguishing agents are
known in the art (Col. 1, l. 26-27), which suggests that alternative
extinguishing agents may be used with the disclosed system. Livingston
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does not, however, disclose any specific examples of an alternative
extinguishing agent.
3. Livingston further discloses implementing the system to extinguish
combustible materials or fuel piles (Col. 3, ll. 60-61). Livingston does
not, however, disclose any specific example of the material composition
of the combustible materials or fuel piles.
4. Wedlake teaches that it is known in the art of fire containment that alkali
metals such as sodium (Col. 1, ll. 63-64) may ignite (Col. 4, ll. 62-63).
5. Wedlake further teaches deploying a protective substance containing a
fire inhibiting or retarding element upon detection of an abnormal
temperature rise within a battery, which may occur if a fire breaks out in
the battery (Col. 4, ll. 38-55).
6. Wedlake explicitly contemplates using the protective substance for
inhibiting or retarding a fire, however, since the substance may also be
used to extinguish a fire by restricting the air available for combustion
(Col. 4, l. 66), the substance may be considered an extinguishing agent.
7. Wedlake further teaches that it is known in the art that non-aqueous (Col.
3, l. 24) fire extinguishing agents may be employed in order to retard or
prevent a metal fire (Col. 4, ll. 38-55).
8. Wedlake further teaches that it is known in the art that extinguishing
agents containing a proportion of solids (Col. 3, l. 10) may be employed
in order to retard or prevent a metal fire (Col. 4, ll. 38-55).
9. Wedlake further teaches that it is known in the art that non-aqueous
extinguishing agents comprising polydimethyl-siloxane (Col. 3, ll. 47-48)
may be employed in order to retard or prevent a metal fire (Col. 4, ll. 38-
55).
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10. The customary meaning of “gun” is a device that has the ability to
project something under pressure. See THE AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000). Therefore, an
“extinguishing gun” is any device that is capable of projecting an
extinguishant.
11. Chen discloses a telescopic tube which discharges water (Col. 2, ll. 57-
58) (“extinguishing gun”; See Fact 10), with a nozzle wand 40, 50 having
a plurality of small outlet nozzles arranged adjacent to one another to
form a plurality of fine jets (i.e., a sprinkler Col. 2, l. 59).
12. The sprinkler structure of Chen is disclosed only as an alternative to the
brush structure 41 (Col. 1, ll. 46-47; Col. 2, ll. 58-59) and is not depicted
in the figures.
13. Chen does not describe how water supplied to the brush 41 is expelled.
Chen fails to disclose any particular arrangement of the nozzles on the
sprinkler or the shape of the sprinkler.
14. Chen does not specify that the disclosed device may be used for fire
extinguishing applications.
15. Chen does not specify that the disclosed device may be used with a non-
aqueous fluid.
16. Hengesbach discloses an multiple jet fluid sprinkling, spraying, and
diffusing device (Col. 3, ll. 38-40) (“extinguishing gun”; See Facts 10
and 19), with a nozzle wand 2, 4 having a plurality of small outlet
nozzles 3, wherein the extinguishing wand is an approximately tubular
(Fig. 1-3) body with an approximately flat end piece 2, protruding from
the gun 1, in which the nozzles 3, are arranged on one side so that the
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extinguishing agent jets emerge approximately perpendicular to the end
piece (Fig. 1).
17. Hengesbach teaches that nozzles 3, may be oriented so that jets emerge
from above the target of the jets (See e.g., Figs. 11, 21, and 23).
18. Hengesbach additionally teaches the end piece 2, of the tubular
extinguishing wand 2, 4 may be angled slightly upwards in relation to the
remaining tubular body of the extinguishing wand (See e.g., Figs 21 and
23; See also Col. 2, l. 32-38).
19. Hengesbach additionally teaches that the extinguishing gun may be used
for fire extinguishing applications (Col. 5 ll. 26-28).
20. Hengesbach additionally teaches that the extinguishing gun may be
supplied with water, aqueous solutions or other liquids (Col. 3 ll. 54-55),
which implies Hengesbach contemplated use with non-aqueous liquids.

PRINCIPLES OF LAW
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, _, 127 S. Ct. 1727, 1731 (2007) noted that the analysis supporting
a rejection under 35 U.S.C. § 103 should be made explicit. The Federal
Circuit has stated that “rejections on obviousness grounds cannot be
sustained with mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
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conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
See also KSR, 127 S. Ct., at 1741.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR, 127 S. Ct., at 1739.
A prima facie conclusion of obviousness may be supported by a
showing that the claims are directed to a process, machine, manufacture, or
composition of matter already known in the prior art that is altered by the
mere substitution of one element for another known in the field, and such
modification yields a predictable result. See Id. (citing United States v.
Adams, 383 U.S. 39, 40).
If the claim preamble, when read in the context of the entire claim,
recites limitations of the claim, or, if the claim preamble is necessary to give
life, meaning, and vitality’ to the claim, then the claim preamble should be
construed as if in the balance of the claim.” Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). If the body of a claim
fully and intrinsically sets forth all of the limitations of the claimed
invention, and the preamble merely states, for example, the purpose or
intended use of the invention, rather than any distinct definition of any of the
claimed invention’s limitations, then the preamble is not considered a
limitation and is of no significance to claim construction. Id. Statements in
the preamble reciting the purpose or intended use of the claimed invention
must be evaluated to determine whether the recited purpose or intended use
results in a structural difference between the claimed invention and the prior
art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312
F.2d 937, 938 (CCPA 1963).
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ANALYSIS
The rejection of claims 1-3 under 35 USC 103(a) as being unpatentable over
Livingston in view of Wedlake is affirmed.
Appellants argue that the Examiner erred in rejecting claim 1 because
the claimed extinguishing agent is applied not in the form of pressure jets
but in the form of fine droplets (Brief p. 5). This argument is not
commensurate in scope with the claim which recites, “a multitude of fine
jets.” Furthermore, Appellants do not support this assertion with any
discussion of how the Livingston jets differ from those recited in the claim.
Although the claims are interpreted in light of the specification, limitations
from the specification are not read into the claims.
Appellants argue that the Examiner erred in rejecting claims 1-3
because Wedlake fails to disclose a fire extinguishing agent (Brief pp. 5-6;
Reply Brief p. 2). This argument is premised on the notion that the
protective substance of Wedlake contains a fire inhibiting or retarding
component and is therefore not specifically concerned with extinguishing of
fires. Despite the expressly recited intended use of the Wedlake substance, it
may properly be considered an extinguishing agent within the broadest
reasonable interpretation of that term (Facts 5-6).
Appellants argue that the Examiner erred in rejecting claims 2-3
because Wedlake fails to disclose that polydimethyl-siloxane used as the
extinguishing agent. Appellants further argue that the Examiner erred in
rejecting claim 3 because Wedlake fails to disclose that the extinguishing
agent contains a proportion of solids (Brief p. 6; Reply Brief p. 1).
Appellants conclude that these findings are misrepresentations on the part of
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the Examiner. The only support we can find for this premise is that in
paragraph 3 of the Office Action mailed August 18, 2006 the Examiner
incorrectly referenced column 4 instead of column 3 to show this feature.
Since a thorough reading of Wedlake would provide Appellants with
sufficient notice that these claimed elements are disclosed (Facts 8-9) this
does not constitute reversible error.

The rejection of claim 6 under 35 USC 103(a) as being unpatentable over
Chen or Hengesbach is affirmed.
Appellants argue that the Examiner erred in rejecting claim 6 because
neither Chen nor Hengesbach is concerned with the extinguishing of metal
fires (Brief p. 7). This argument is not commensurate in scope with the claim
which only describes extinguishing metal fires as an intended use.
Appellants have not established that the recited intended use results in a
structural difference between the claimed invention and the prior art.
Hengesbach explicitly discloses fire extinguishing capability (Fact 19) and
operation with a non-aqueous liquid (Fact 20). Though Chen does not
explicitly recite such capabilities, the Examiner has reasoned that, like
Hengesbach, the Chen device would be capable of performing the recited
intended use. Appellants have not rebutted this assertion by setting forth any
facts or arguments to establish that the Hengesbach and Chen devices would
be incapable of performing the recited intended use.

The rejection of claim 7 under 35 USC 103(a) as being unpatentable over
Chen is reversed.
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Appellants argue that the Examiner erred in rejecting claim 7 because
Chen and Hengesbach [sic] fail to disclose that the wand is a tubular body
with a flat end piece, in which the nozzles are arranged so that the
extinguishing agent jets emerge approximately perpendicular to the
orientation of the end piece. This argument is persuasive. To support this
rejection the Examiner improperly combines the features of two mutually
exclusive embodiments of Chen, citing features from both the sprinkler and
brush (Fact 12). Since Chen does not describe any specific shape of the
sprinkler or orientation of the nozzles thereon, citing the sprinkler to meet
this limitation amounts to mere speculation. Additionally, since Chen does
not describe the manner in which water is expelled from the brush 41 citing
the brush 41 to meet this limitation also amounts to mere speculation. There
is no factual support or articulating reasoning of record to support this
conclusion.

Pursuant to our authority under 37 C.F.R. § 41.50(b) we enter new grounds
of rejection of claims 7-8 under 35 USC 103(a) as being unpatentable over
Hengesbach.
With respect to claim 7, Hengesbach additionally discloses an
extinguishing gun 1 (Col. 3, ll. 38-40), with a nozzle wand 2, 4 having a
plurality of small outlet nozzles 3, wherein the extinguishing wand is an
approximately tubular (Fig. 1-3) body with an approximately flat end piece
2, protruding from the gun 1, in which the nozzles 3, are arranged on one
side so that the extinguishing agent jets emerge approximately perpendicular
to the end piece (Fig. 1) (Fact 16).
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With respect to claim 8, Hengesbach teaches, nozzles 3 may be
oriented so that jets emerge from above the target of the jets (See e.g., Figs.
11, 21, and 23) (Fact 17) and that the end piece 2, of the tubular
extinguishing wand 2, 4 may be angled slightly upwards in relation to the
remaining tubular body of the extinguishing wand (See e.g., Figs 21 and 23).
Combining features from the various embodiments of Hengesbach involves
merely the combination of prior art elements according to known methods in
order to yield the predictable result of obtaining the desired shower shape
and size (See e.g., Col. 2 ll. 32-38) and therefore would have been obvious
to one having ordinary skill in the art.

CONCLUSION OF LAW
On the record before us, Appellants have not established that the
Examiner erred in, rejecting claims 1-3 under 35 USC § 103(a) as being
unpatentable over Livingston in view of Wedlake; or rejecting claim 6 under
35 USC § 103(a) as being unpatentable over Chen or Hengesbach.
Appellants have established that the Examiner erred in rejecting claim 7
under 35 USC § 103(a) as being unpatentable over Chen.

DECISION
For the above reasons, the Examiner’s rejection of, claims 1-3 under
35 USC § 103(a) as being unpatentable over Livingston in view of Wedlake;
and claim 6 under 35 USC § 103(a) as being unpatentable over Chen or
Hengesbach; is affirmed. The Examiner’s rejection of claims 7 and 8 under
35 USC § 103(a) as being unpatentable over Chen is reversed. Pursuant to
our authority under 37 C.F.R. § 41.50(b)(2008), new grounds of rejection of
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claims 7 and 8 under 35 USC § 103(a) as being unpatentable over
Hengesbach is set forth above.
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) (2008).

FINALITY OF 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 from
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 new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 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 grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(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. . . .

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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 rejection is 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) (2008).

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

vsh

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