Ex parte Smagac

Board of Patent Appeals and Interferences

Nov 20, 2000

08786974 (B.P.A.I. Nov. 20, 2000)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DENNIS E. SMAGAC
_____________
Appeal No. 1999-0615
Application No. 08/786,974
______________
HEARD: October 26, 2000
_______________
Before CALVERT, FRANKFORT, and JENNIFER D. BAHR,
Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 10 and 12 through 16. Claim 11,
the only other claim in the application, stands withdrawn from
Appeal No. 1999-0615
Application No. 08/786,974
2
further consideration under 37 CFR § 1.142(b) as being
directed to a non-elected species.
Appellant's invention is directed to a backpack mounted
fire suppressant foam generation apparatus and to a method of
using such an apparatus for generating fire suppressant foam.
As seen in Figure 8 of the application drawings, the backpack
unit is designed to be carried on the back of a single
firefighting individual and to be used in wildland/urban
locations which do not have access to an adequate supply of
the traditional fire suppressant material, i.e., water.
Independent claims 1 and 12 are representative of the subject
matter on appeal and a copy of those claims, as reproduced
from the Appendix to appellant's brief, is attached to this
decision.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Farison 3,337,195 Aug. 22,
1967
Stults 3,592,269 Jul. 13,
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Application No. 08/786,974
3
1971
Good, Jr. (Good) 3,802,511 Apr. 9,
1974
Teske et al. (Teske) 5,255,747 Oct. 26,
1993
Claims 1 through 5, 10, 12 through 14 and 16 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Good
in view of Farison and Stults.
Claims 6 through 9 and 15 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Good in view of Farison and
Stults as applied to claims 1, 12 and 14 above, and further in
view of Teske.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the examiner's
answer (Paper No. 16, mailed October 2, 1998) for the
reasoning in support of the rejections, and to appellant's
substitute brief (Paper No. 15, filed August 10, 1998) for the
Appeal No. 1999-0615
Application No. 08/786,974
4
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Like appellant, we note that Good discloses (e.g., in
Figs. 1, 2, 16 and 17) a portable fire extinguisher in the
form of what the patentee describes as "a water tank adapted
to be worn on the back of a fireman, a hand-held gun that
includes a discharge nozzle and which is connected to the
water tank by a flexible hose, and a gas pressure-operated
pump located between the water tank and the nozzle of the
hand-held gun, for pumping water from the backpack tank and
discharging it at high pressure through the nozzle" (col. 2,
lines 10-18). In column 2, lines 43-45, it is further noted
Appeal No. 1999-0615
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that a single bottle of compressed gas, which is normally air,
will be sufficient to pump several tanks of water, "or some
other fire extinguishing liquid." The gas pressure-operated
pumps of the various embodiments in Good are described (col.
2, lines 49-54) as having the common feature of being able to
"produce a high pressure stream of water or other
extinguishing liquid from the nozzle of the hand-held gun,
without requiring the fireman to exert himself and become
fatigued" (emphasis added). As recognized by the examiner
(answer, page 4), nothing in the Good patent discloses or
suggests an apparatus and method for generating fire
suppressant foam and consequently this patent lacks most of
the recited components necessary for generating such a fire
suppressant foam.
Farison addresses a foam generating apparatus, e.g., for
foams used in industrial cleaning applications (col. 2, lines
21-22), which apparatus is specifically designed to be used
with an open drum (4) of foamable liquid. The apparatus
includes a source of compressed gas (not shown) capable of
supplying, via supply conduit (1), compressed gas (such as air
Appeal No. 1999-0615
Application No. 08/786,974
6
or nitrogen) at a pressure of from about 25 to 200 pounds per
square inch or more. In addition, the apparatus includes a
compressed gas operated piston pump (5) for producing a flow
of the foamable liquid from the drum (4) to a mixing T (10)
where the foamable liquid is mixed with the compressed gas
from conduit (9) to generate a foam. From the mixing T (10),
the foam is passed via conduit (17) to an expansion chamber
(11) and subsequently to discharge conduit (12) which carries
the foam to a nozzle (14) for application at the point of use.
Stults discloses a high-expansion foam generating fire
extinguishing system for a fixed installation such as a
warehouse or storage building (10). In this instance, the
system includes a container (22) of nitrogen gas under
pressure that is used to force a concentrate mix solution of
foamable liquid through line (40) to a manifold (44)
associated with a plurality of nozzles (60) which emit conical
streams (68) of concentrate mix solution against a foam
generating screen (56) to thereby create copious amounts of
foam (70). The examiner specifically points to the disclosure
in Stults at column 1, lines 15-18, relating to the statement
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7
that "[t]he prior art discloses some high-expansion foam fire
fighting systems, both portable and fixed installations."
In contrast to the examiner's position (answer, pages 4-
5) that it would have been obvious to one of ordinary skill in
the art at the time of appellant's invention to modify the
invention of Good "to generate fire suppressant foam" and to
provide the backpack system of Good with each of appellant's
recited components necessary for generating such a fire
suppressant foam, we note that none of the prior art applied
by the examiner teaches or suggests a fire suppressant foam
generating apparatus which is of a size so as to be mountable
on the backpack of Good. Each of the patents relied upon by
the examiner that relates to a foam generating system
discloses large arrangements, e.g., for a fixed storage
building (Stults) or for drawing a foamable liquid from an
open storage drum (Farison). Thus, while we might, in the
abstract, agree with the examiner that it would have been
obvious to one of ordinary skill in the fire fighting art to
use a foam fire suppressant material instead of the liquid
(e.g., water) in the tank of Good, we see no basis in the
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applied references for concluding that it would have been
obvious to one of ordinary skill in the art to modify the
backpack apparatus of Good so as to include an entire fire
suppressant foam generating system miniaturized and
consolidated to fit a backpack like that seen in Good.
As for the examiner's reliance on the comment in Stults
column 1, lines 15-18, relating to a prior art "portable"
high-expansion foam fire fighting system, we note that the
term "portable" as used in Stults most likely indicates that
the system is truck mounted and thus is portable in the sense
that the truck can be moved to the location of a fire when
needed. There is clearly nothing in the Stults patent or any
other reference of record in this application to suggest that
a high-expansion fire suppressant foam generating system sized
and consolidated to fit on a backpack was suggested or known
in the prior art before appellant's invention thereof. In
this regard, we also point to the patent to Teske relied upon
by the examiner in the § 103 rejection of claims 6 through 9
and 15 on appeal, noting that the Teske patent discloses a
fire suppressant foam generating system that is "portable"
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Application No. 08/786,974
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because it is apparently sized to be mounted on a fire truck
and driven from the transmission thereof (col. 2, lines 64-
67).
Absent knowledge of appellant's invention, we see nothing
in Good, Farison and Stults which would have suggested their
combination in the manner urged by the examiner so as to
result in a backpack mounted fire suppressant foam generating
system. In our opinion, the examiner has used impermissible
hindsight derived from appellant's own teachings to
reconstruct the backpack liquid fire extinguisher of Good so
as to result in a fire suppressant foam generating system
miniaturized and consolidated to fit a backpack as required in
the claims before us on appeal.
Since we have determined that the teachings and
suggestions found in Good, Farison and Stults would not have
made the subject matter as a whole of claims 1 through 5, 10,
12 through 14 and 16 on appeal obvious to one of ordinary
skill in the art at the time of appellant's invention, we must
refuse to sustain the examiner's rejection of those claims
Appeal No. 1999-0615
Application No. 08/786,974
10
under 35 U.S.C. § 103.
As a further commentary on the examiner's rejection of
claims 1 through 5, 10, 12 through 14 and 16 under 35 U.S.C.
§ 103, we note that it appears that the examiner has not
properly construed the "means for expanding the fire
suppressant foam" of independent claim 1 or the step of
"expanding the fire suppressant foam" as set forth in method
claim 12, in accordance with 35 U.S.C. § 112, sixth paragraph.
Appellant has consistently argued with regard to these
limitations that the prior art relied upon by the examiner
fails to disclose any mechanism for mechanically agitating the
fire suppressant foam to expand the fire suppressant foam,
i.e., appellant has argued that the corresponding structure
and acts described in the specification distinguish the
claimed "means for expanding" in claim 1 and step of
"expanding" in claim 12 from the applied prior art references.
The examiner instead of providing a proper analysis under 35
U.S.C. § 112, sixth paragraph, has merely asserted that
appellant has presented arguments that are "directed toward
features not claimed as argued" (answer,
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page 10) and pointed to the expansion chamber (11) of Farison
as being readable on the claimed terminology. However, since
there is no indication in Farison that the expansion chamber
(11) therein includes any agitating structure like that seen
in Figures 2 through 7 of the application and described on
pages 11 through 13 of appellant's specification, or is in any
way capable of providing agitation of the foam to mechanically
expand the foam subsequent to its formation, it is clear to us
that the expansion chamber of Farison is not the same as or
the equivalent of the apparatus for expanding the foam
disclosed in appellant's specification and thus is not
readable under
35 U.S.C. § 112, sixth paragraph, as the "means for expanding"
in appellant's claim 1 or as responding to the step of
"expanding" in appellant's claim 12. Accordingly, for this
additional reason we find that the examiner's rejection of
independent claims 1 and 12 based on the teachings of Good,
Farison and Stults, and the claims which depend therefrom, is
not sustainable.
As for the examiner's rejection of claims 6 through 9 and
Appeal No. 1999-0615
Application No. 08/786,974
As for the Horner patent relied upon by the examiner on1
page 12 of the answer, we note that this patent has not been
set forth in the statement of the § 103 rejection before us on
appeal and therefore forms no part of the issues presently
before us for review. As pointed out by the Court in In re
Hoch,
428 F.2d 1341, 1342, 166 USPQ 406, 407 (CCPA 1970), where a
reference is relied upon to support a rejection, whether or
not in a minor capacity, there would appear to be no excuse
for not positively including the reference in the statement of
the rejection.
12
15 under 35 U.S.C. § 103 as being unpatentable over Good in
view of Farison and Stults as applied to claims 1, 12 and 14
above and further in view of Teske, we have reviewed the Teske
patent and find nothing therein which provides for that which
we have indicated above to be lacking in the examiner's main
combination of Good, Farison and Stults. Thus, the examiner's
rejection of
claims 6 through 9 and 15 under 35 U.S.C. § 103 also will not
be
sustained.1
Appeal No. 1999-0615
Application No. 08/786,974
A-1
In light of the foregoing, the decision of the examiner
rejecting claims 1 through 10 and 12 through 16 under 35
U.S.C.
§ 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF:lmb
JAMES M. GRAZIANO
DUFT GRAZIANO & FOREST
1790-30TH STREET SUITE 140
BOULDER, CO 80301-1018
Appeal No. 1999-0615
Application No. 08/786,974
A-2
CLAIM 1
Apparatus for generating fire suppressant foam
comprising:
a backpack;
a source of fire suppressant foam fluid mounted on said
backpack;
Appeal No. 1999-0615
Application No. 08/786,974
A-2
a source of pressurized gas mounted on said backpack;
means for producing a flow of said fire suppressant foam
fluid from said source of said fire suppressant foam fluid;
means for injecting a flow of said pressurized gas into
said flow of said fire suppressant foam fluid to create the
fire suppressant foam;
means for expanding the fire suppressant foam; and
means for delivering the fire suppressant foam.
CLAIM 12
A method for generating fire suppressant foam using
apparatus comprising a backpack, a source of fire suppressant
foam fluid mounted on said backpack, and a source of
pressurized gas mounted on said backpack, said method
comprising the steps of:
producing a flow of said fire suppressant foam fluid from
said source of said fire suppressant foam fluid;

injecting a flow of said pressurized gas into said flow
of said fire suppressant foam fluid to create the fire
suppressant foam;
expanding the fire suppressant foam; and
delivering the fire suppressant foam via a delivery
system.