Ex Parte Szocs

Board of Patent Appeals and Interferences

Nov 26, 2008

09687763 (B.P.A.I. Nov. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ISTVÁN SZÖCS
____________________

Appeal 2008-4360
Application 09/687,763
Technology Center 3700
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Decided: November 26, 2008
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
István Szöcs (Appellant) seeks our review under 35 U.S.C. § 134 from
a final rejection of claims 2, 4, 9, 10, 14 and 15. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
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SUMMARY OF THE DECISION
We AFFIRM-IN-PART.
THE INVENTION
The Appellant’s claimed invention pertains to an apparatus for
producing and spreading fire fighting foam. (Spec. 1.) The apparatus may
be used to extinguish fires in hydrocarbon storage tanks. (Id.) Claim 2,
reproduced below, is representative of the subject matter on appeal.
2. A fixed apparatus for producing fire fighting foam
characterised in that it comprises a high-pressure foam source
(10), a foam expanding spreading device (60) and a pressure
resistant pipeline (40) connecting the high-pressure foam source
(10) with the foam expanding spreading device (60), the
pipeline having a reversible valve (42) inserted in the pressure
resistant pipeline of the apparatus.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Rustige US 1,335,394 Mar. 30, 1920
Freygang US 1,674,427 June 19, 1928
Aker US 2,563,300 Aug. 7, 1951
Hengesbach US 3,727,841 Apr. 17, 1973
The following rejections are before us for review:
1. Claims 2, 4, 9, 10, and 14 are rejected under 35 U.S.C. § 102(b)
as anticipated by Freygang;1
2. Claims 2 and 9 are rejected under 35 U.S.C. § 102(b) as
anticipated by Hengesbach;

1 Appellant incorrectly identified claim 15 as also being rejected as
anticipated by Freygang (App. Br. 4).
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3. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Hengesbach and Aker.

ISSUES
The issues before us include whether the Appellant has shown that the
Examiner erred in rejecting claims 2, 4, 9, 10, and 14 under 35 U.S.C.
§ 102(b) as anticipated by Freygang. These issues turn on whether Freygang
discloses a reversible valve, a foaming agent, a distributing body forming a
closed loop of tubes, a discharge mouth that increases in size as the distance
from the admission opening increases, and remote controlled valve.
The issues before us also include whether the Appellant has shown
that the Examiner erred in rejecting claims 2 and 9 under 35 U.S.C. § 102(b)
as anticipated by Hengesbach. These issues involve whether Hengesbach
discloses the apparatuses defined by claims 2 and 9.
The issues before us also include whether the Appellant has shown
that the Examiner erred in rejecting claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Hengesbach and Aker. This issue turns on whether one of
ordinary skill in the art would have found it obvious to combine the
teachings of Hengesbach and Aker to arrive at an apparatus with a foam
spreading device in which the discharge mouth is a slit.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. The customary meaning of “valve” in the mechanical arts is
“[a]ny of various devices that regulate the flow of gases, liquids, or loose
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materials through piping or through apertures by opening, closing, or
obstructing ports or passageways.” THE AMERICAN HERITAGE DICTIONARY
OF THE ENGLISH LANGUAGE (4th ed. 2000); accord MCGRAW-HILL
DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS (5th ed. 1994) (defining
“valve” as “[a] device used to regulate the flow of fluids in piping systems
and machinery.”). This meaning is consistent with prior art references in the
record. (See, e.g., Freygang 2, ll. 8-35 (suggesting that a valve is a device
that can impede or stop fluid flow); Hengesbach, col. 5, ll. 7-20 (describing
valves controlling fluid flow).)
2. The customary meaning of “reversible” in the mechanical arts
is capable of being reversed. See THE AMERICAN HERITAGE DICTIONARY OF
THE ENGLISH LANGUAGE (4th ed. 2000). The term “reversible” can refer to
something that is finished so that either side can be used, and to something
that can be returned to its original state. See id.
3. The customary meaning of “loop” in the mechanical arts is
“[s]omething having a shape, order, or path of motion that is circular or
curved over on itself.” THE AMERICAN HERITAGE DICTIONARY OF THE
ENGLISH LANGUAGE (4th ed. 2000).
4. Freygang discloses a fire extinguishing apparatus that includes
a container charged with a fire extinguishing agent maintained under
pressure, delivery nozzles, and piping between the container and the nozzles.
(Freygang 1, ll. 52-60.) Freygang explains that fire extinguishing agent
containers had a check or a stop at the outlet, usually a relatively thin metal
disc, which ruptured under excessive pressure. (Freygang 1, ll. 14-19.)
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5. Freygang further discloses a tubular cutter mounted in the
piping at the outlet of the container. (Freygang 1, ll. 68-82; Fig. 3.) The
cutter is disposed on the end of a threaded spindle. (Freygang 1, ll. 79-82;
Fig. 3.) The other end of the Freygang’s spindle has a connection through
which the spindle can be remotely rotated. (Freygang 1, ll. 100-03.)
Rotation of the spindle causes the cutter to rapidly rupture the stop disc,
allowing the fire extinguishing agent to flow through the piping to the
delivery nozzles. (Freygang 1, ll. 79-94.)
6. Freygang also teaches that, previously, fire extinguishers were
discharged by rupturing the stop disc by pressure or by the opening of a
seated valve. (Freygang 2, ll. 47-56; cf. Ans. 4 (Examiner’s finding that
Freygang discloses that a seated valve was known in the art).) Freygang
discloses that the cutter device replaces the previously used valve so as to
avoid the undesirable delay incident in the opening of the valve.
(Freygang 1, ll. 23-32; id. at 2, ll. 47-56.)
7. The seated valve disclosed in Freygang is reversible. (See
Ans. 4 (Examiner finding that a seated valve is reversible in that it has the
ability to open and close); cf. Reply Br. 6 (Appellant asserting that the mere
use of a “standard ‘bowtie’ symbol to represent a gate valve” discloses the
claimed reversible valve).)
8. Therefore, Freygang teaches the invention of claim 2 by the
disclosure of the earlier configuration having a seated valve in the place of
the cutter device.
9. Freygang explains that the cutter device does not serve as a
valve, stating:
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It will be observed that some of the ports g4 in the cutter g2 are
at all times in communication with the chamber f6 which is
formed in the coupling f΄ about the cutter and with which the
pipe b is in free communication. The cutter therefore does not
act as a valve to prevent or permit the flow of the gas. On the
contrary, as soon as the disc e is cut out by the cutter, the cut-
out portion is exposed on the one side to the full pressure of the
gas and on the other side is exposed to no pressure above
atmospheric. Consequently the cut-out portion of the disc is
immediately blown back through the cutter beyond the ports g4
within the chamber f6 and thereby immediate and full flow of
the gas to the pipe b is permitted.
(Freygang 2, ll. 8-24.)
10. Freygang identifies liquid carbonic acid as a common and
preferable fire extinguishing agent. (Freygang 1, ll. 8-10.)
11. A portion of Freygang’s figure 1 is reproduced below.

The above portion of Freygang’s figure 1 depicts the configuration of
delivery nozzles (d) and the section of the piping at the discharge end of the
system. (Freygang 1, ll. 41-43, 57-60.) Freygang’s U-shaped distribution
body is not a closed circular shape. Freygang’s delivery nozzles all appear
to be the same size and uniformly spaced in relationship to each other.
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12. Hengesbach discloses a pressurized fluid sprinkling, spraying
and diffusing device. (Hengesbach, col. 1, ll. 7-9.) Hengesbach teaches “an
elongated pipe line having discharge ports distributed along its length and
controlled by a valve capable of admitting thereinto water, aqueous solutions
of fertilizer and of insecticides, and other liquids or gases from a pressure
source at controlled rates of flow.” (Hengesbach, col. 2, ll. 5-10.)
13. Hengesbach further discloses that pressurized air can be
admitted to water concurrently with “fluid fertilizing, cleaning, or
disinfecting agents.” (Hengesbach, col. 5, ll. 11-18.)
14. Hengesbach teaches that “the device is adapted … for cleaning
as by injection of water and air under pressure concurrently with the
eduction of liquid soap.” (Hengesbach, col. 5, ll. 21-25.) Hengesbach also
teaches that the device may be used for “temporary fire extinguishing
installations.” (Hengesbach, col. 5, ll. 25-27.)
15. Dispensing of a mixture of water, compressed air, and soap
inherently creates foam. (Ans. 7; see also Reply Br. at 9-10 (Appellant
approvingly quoting a reference that indicates that foam is generated from a
mixture of pressurized air, pressurized water and soap); cf. Reply Br. 14
(Appellant conceding that “dispensing of a water and soap solution may
produce foam”).)
16. Hengesbach discloses a high-pressure foam source. (See
Hengesbach, col. 5, ll. 7-20; Fig. 18; Ans. 6, 7.) Hengesbach also discloses
a foam expanding spreading device 2. (See, e.g., Hengesbach, col. 6,
ll. 46-57; Figs. 20, 23; Ans. 6, 7.)
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17. Hengesbach discloses the tubular distributing body forming a
closed loop of tubes. (E.g., Hengesbach, Figs. 13, 20; see also Ans. 7.)
Hengesbach also discloses a fixed apparatus. (Final Rej. 4 (citing
Hengesbach, Fig. 23).)
18. Hengesbach discloses multiple discharge ports arranged in a
row on the tubular body. (See, e.g., Hengesbach, col. 3, ll. 38-41; Figs. 1,
13, 23.) The ports are holes. (Hengesbach, col. 4, ll. 57-63; Figs. 2, 4.)
Hengesbach discloses several possible locations of the ports on the
circumference of the tubular body, including the lower portion of the body
such that the discharge is directed partly downwards and partly sideways.
(Hengesbach, col. 2, ll. 61-64; Figs. 6-10.)
19. Aker discloses sprinkler heads that are inserted into holes in a
flexible tube or hose. (Aker, col. 2, ll. 44-50; Figs. 4-5.) Aker’s sprinkler
heads are plug-like in shape with a cap portion and a hollow shank or stem.
(Aker, col. 3, ll. 33-38; Figs. 1-8.)
20. Aker discloses sprinkler heads with round openings and with
slit openings. (Aker, Figs. 4, 5, 7, 8; see also Ans. 8.) Aker also discloses a
slit opening with the slit oriented along the longitudinal axis of the tubular
distributing body. (Aker, col. 4, ll. 19-33, 65-68; Fig. 5.) Aker teaches the
use of round shaped openings to emit a cone shaped spray. (Aker, col. 3, ll.
4-7; Fig. 8.) Aker also teaches the use of slits so as to produce a flat,
fan-shaped spray pattern (Aker, col. 3, ll. 42-46), and to facilitate the
adjustment of the spray width and angle (Aker, col. 2, ll. 48-52; Fig. 5; Ans.
8 (citing Aker, col. 1, ll. 37-48).)
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21. Aker teaches that the slit openings are interchangeable with the
round openings, and that the opening shape is selected to obtain the desired
spray pattern. (See Aker, col. 2, l. 48 – col. 3, l. 7; Figs. 5-8.)

PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We must be careful not to
read a particular embodiment appearing in the written description into the
claim if the claim language is broader than the embodiment. See Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
It is Appellant’s burden, not the United States Patent and Trademark
Office’s, to precisely define the invention. In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997) (citing 35 U.S.C. § 112, ¶ 2). The Appellant has the
opportunity to amend the claims during prosecution, and broad interpretation
by the Examiner reduces the possibility that the claim, once issued, will be
interpreted more broadly than is justified. Prater, 415 F.2d at 1404-05.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987) (citations omitted).
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
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Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Further,
[i]f … the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the
preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example,
the purpose or intended use of the invention, then the preamble
is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999) (citations omitted).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007) (quoting 35 U.S.C. § 103). The question of obviousness is
resolved on the basis of underlying factual determinations including: (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere Co.
of Kansas City, 383 U.S. 1, 17-18 (1966); see also KSR Int’l Co., 127 S. Ct.
at 1734 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”). The scope and content of the prior art includes the explicit and
inherent teachings of the prior art. In re Zurko, 258 F.3d 1379, 1383-84
(Fed. Cir. 2001) (citing In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995)).
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In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” KSR
Int’l Co., 127 S. Ct. at 1739, and discussed circumstances in which a patent
might be determined to be obvious. In particular, the Court pointed out that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss [v. Greenwood], 11 How. 248 [(1851)].” KSR Int’l Co., 127 S.
Ct. at 1739 (citing Graham, 383 U.S. at 12). The Court reiterated that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. The Court
also noted that “when a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”
Id. at 1740 (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)).

ANALYSIS
The Rejection of Claims 2, 4, 9, 10, and 14 under 35 U.S.C. § 102(b) as
Anticipated by Freygang
Claim 2
Appellant argues that the rejection of claim 2 is improper because
Freygang fails to disclose the recited “reversible valve.” (App. Br. 7.) The
Examiner found that Freygang’s stop cutter constitutes the reversible valve.
(Ans. 3.) The Examiner alternatively found that Freygang discloses the
claimed reversible valve in the teaching of the use of a seated valve rather
than the stop cutter of Freygang’s invention. (Ans. 4.)
The “reversible valve” language was added to claim 2 by amendment,
and the original Specification does not contain the word “reversible.” The
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customary meaning of “valve” in the mechanical arts is a device used to
regulate the flow of fluids in piping systems and machinery. (Fact 1.)
Appellant contends that one of ordinary skill in the art would understand that
the word “reversible” indicates a valve which may be opened or closed.
(Reply Br. 6.) Appellant asserts that the Specification’s disclosure of
embodiments with a remote controlled main valve and with gate valves
supports this conclusion. (Id. (citing Spec. 15; Fig. 1).) However, these
portions of the Specification describe only certain embodiments, and do not
define or limit the term “reversible valve.” We give the term its broadest
reasonable construction consistent with the Specification. Therefore, we
construe the reversible valve of claim 2 to be a device that regulates the flow
of fluids in a piping system and which is reversible in any way. For
example, a valve is reversible if it is capable of being returned to its original
state after actuation or if it is configured such that it functions properly in
either direction (i.e., the valve lacks flow polarity). (See Facts 1, 2; Ans. 9.)
The Examiner found that the positioning of the spindle of Freygang’s
cutter device regulates the flow of the fire extinguishing agent, and
concluded that Freygang’s device, therefore, “provides a valving function.”
(Ans. 4.) We disagree. Freygang’s device contains ports configured such
that, upon rupturing of the stop, there is immediate and full flow through the
device regardless of the spindle position. (See Fact 9.) Furthermore,
Freygang explicitly states that the cutter does not serve as a valve. (Fact 9.)
The Examiner has not shown that Freygang’s cutter device is a valve.
However, the Examiner responded to Appellant’s argument
concerning the purported meaning of “reversible valve” by pointing out that
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Freygang also discloses the use of a seated valve. (Ans. 4 (citing Freygang
2, ll. 50-55).) Freygang describes the fast-acting cutter invention as a
replacement for the slower opening seated valves previously used in the art.
(Fact 6.) The Examiner found that Appellant’s claimed invention would be
readable on the device prior to the incorporation of Freygang’s cutter.
(Ans. 4.) Appellant’s arguments appear to be confined to Freygang’s cutter,
and Appellant does not address the Examiner’s finding that the claimed
reversible valve is disclosed in the earlier seated valve. (See Reply Br. 4-7.)
Thus, Appellant has not shown error in the Examiner’s finding that the
recited “reversible valve,” when given the broadest reasonable construction
consistent with the Specification, encompasses the seated valve disclosed in
Freygang. We conclude that Freygang teaches the invention of claim 2 by
the disclosure of the earlier configuration having a seated valve in the place
of the cutter device. (Fact 8.)
Appellant has not persuaded us that the Examiner erred in rejecting
claim 2 as anticipated by Freygang.

Claim 4
Dependent claim 4 combines the requirement of a foaming
composition with the apparatus of claim 2. Claim 4 recites a “foaming
composition [that] includes water, a propellant gas absorbed in the water,
and a foaming agent.” Appellant asserts that Freygang fails to disclose a
foaming agent, and that Freygang’s carbonic acid is more appropriately
characterized as a propellant gas. (App. Br. 8.) The Examiner, citing
Rustige, found that Freygang discloses carbonic acid as a foaming agent.
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(Ans. 5, 10.) The Examiner does not direct us to any such teaching in
Freygang or Rustige, and we are unable to find where either reference
identifies carbonic acid as a foaming agent. Thus the Examiner has failed to
provide a prima facie case of anticipation.
The Examiner also asserts that “Applicant admits that carbonic acid
can form foam upon a drop in pressure.” (Ans. 10; see also Ans. 9.) The
Examiner does not identify where this purported admission can be found in
the record, and we do not discern any such admission. Appellant recognizes
that carbonic acid may effervesce upon a drop in pressure, but contends that
such a reaction does not form a foam. (App. Br. 8; see also Reply Br. 9
(asserting that carbon dioxide in water may produce bubbles but does not
produce a foam without the addition of a foaming agent).)
The Examiner has not shown that carbonic acid is a foaming agent in
the context of a fire extinguisher, and has failed to provide a prima facie case
of anticipation. We do not sustain the rejection of claim 4 as anticipated by
Freygang.

Claim 9
Claim 9 recites “a tubular distributing body (63) suitably forming a
closed loop of tubes.” The Examiner, without support, asserts that “[o]ne
definition for the term ‘loop’ is – anything shaped more or less like a loop.”
(Ans. 5.) The Examiner concluded that Freygang discloses the recited
closed loop based on the findings that Freygang’s U-shaped tubes are more
or less like a loop, and the tubes are closed at the ends. (Ans. 5.)
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The term “loop” refers to something having a circular shape. (Fact 3.)
In claim 9, the word “closed” modifies “loop,” not “tubes.” Thus, claim 9
requires the tubular distributing body to be in the form of a closed circular
shape. Freygang’s U-shaped body is not a closed circular shape. (Fact 11.)
Therefore, we do not sustain the rejection of claim 9 as anticipated by
Freygang.

Claim 10
Claim 10 recites:
the discharge mouth is formed in a way that the size of the
discharge mouth within a selected segment of the tubular
distributing body increases with the distance from the
admission opening (62) to the selected segment.
The Specification indicates that this phrase means that the size of the
discharge mouth grows as the distance from the admission opening
increases. (Spec. 11, 18-19; Figs. 4, 5.) In other words, the size of a given
section of the mouth is larger than the sections closer to the admission
opening. Appellant explains that the foam pressure is higher at the
admission opening than at points downstream, and the purpose for the
increasing mouth size is to maintain a uniform amount of released foam.
(Spec. 19.)
The Examiner found that the Freygang’s “aggregate nozzle opening
area size grows per unit length of the tube.” (Final Rej. 4; see also Ans. 11).
We understand the Examiner to have concluded that Freygang’s cumulative
opening area increases along with the distance from the admission opening
(i.e., the cumulative effective opening size increases as more nozzles are
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added to the total). However, the claim requires the size of a given mouth
section to be larger than in the sections located closer to the opening.
Freygang’s nozzles all appear to be the same size and uniformly spaced in
relationship to each other. (Fact 11.) The Examiner has not shown that
Freygang’s mouth size increases as the distance from the admission opening
increases. Thus, we reverse the rejection of claim 10 as anticipated by
Freygang.

Claim 14
Claim 14 depends from claim 2 and limits the recited valve to a
remote controlled valve. The Examiner found that Freygang’s cutter device
is the claimed remote controlled valve. (Ans. 6.) As discussed above
regarding claim 2, the Examiner has not shown that Freygang’s cutter device
is a valve. Although the Examiner noted that Freygang discloses the use of
prior art seated valves in firefighting apparatus piping (Ans. 4), the
Examiner does not point to any teaching that the seated valves were remote
controlled. Thus, the Examiner has failed to provide a prima facie case of
anticipation. We do not sustain the rejection of claim 14 as anticipated by
Freygang.

The Rejection of Claims 2 and 9 under 35 U.S.C. § 102(b) as Anticipated by
Hengesbach
Claim 2
Appellant argues that the Examiner erred in rejecting claim 2 because
Hengesbach fails to disclose the use, creation or discharge of any foams.
(App. Br. 12.) Based on this argument, Appellant contends that
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“Hengesbach necessarily fails to disclose a high-pressure foam source, and a
foam expanding spreading device.” (Id.)
Claim 2 covers an apparatus, not the process of using, creating, or
discharging foam. Neither the production nor the use of foam is a limitation.
The claim’s recitation of a use “for producing fire fighting foam” does not
impart patentability. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(The recitation of a new intended use for an old device will not defeat an
anticipation rejection.). Further, Hengesbach discloses a device for
dispensing a mixture of soap, water, and compressed air. (Facts 12-14.) The
Examiner found that the dispensing of such a mixture inherently creates
foam. (Ans. 7.) The Appellant does not appear to dispute this finding. (See
Reply Br. 14 (Appellant conceding that “dispensing of a water and soap
solution may produce foam”); see also id. at 9-10 (Appellant approvingly
quoting a reference that indicates that foam is generated from a mixture of
pressurized air, pressurized water, and soap).) Appellant has failed to show
that the Examiner erred in finding that Hengesbach discloses a high-pressure
foam source and foam expanding spreading device.
Appellant also appears to argue that the recitation of a “fixed
apparatus” distinguishes the claimed invention over the prior art. (App.
Br. 12.) The word “fixed” appears in the claim’s preamble. This term is of
no significance to the scope of the claim because the body of the claim sets
forth all of the limitations. See Pitney Bowes, 182 F.3d at 1305. This
interpretation is consistent with Appellant’s Specification, which indicates
that a “fixed” extinguisher is merely one “where all the components
necessary for producing the fire fighting foam are available and all the
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equipment is stored in a ready-to-use status on the site of the possible fire[.]”
(Spec. 5.) Furthermore, the term “fixed” does not distinguish the claimed
invention over the prior art because Hengesbach discloses a fixed apparatus.
(Fact 17.)
Appellant has not shown that the Examiner erred in rejecting claim 2
as anticipated by Hengesbach. Thus, we sustain the rejection of that claim.

Claim 9
Appellant argues that Hengesbach does not disclose the foam
expanding device because “[t]he discharge ports of Hengesbach do not
correspond to a discharge mouth that is situated on a nappe of the tubular
distributing body along its length[.]”2 (App. Br. 13.) Appellant contends
that “the ports of Hengesbach take the form of multiple independent
nozzles.” (Id.)
Appellant’s arguments are not commensurate with the scope of the
claim. Claim 9 is not limited to any specific mouth shape. The
Specification confirms that the recited “mouth” encompasses a set of holes.
(See Spec. 12 (describing the discharge mouth as “suitably a slit or a set of
holes.”).) The Specification also indicates that the recited “nappe of the
tubular distributing body” refers to the lower portion of the tubular body.
(Spec. 18; see also Figs. 6-7.) Hengesbach discloses a mouth in the form of
holes arranged in a row on the lower portion of a tubular body. (Fact 18.)

2 Appellant’s Reply Brief addresses Hengesbach’s alleged failure to disclose
the apparatus of claim 10. (Reply Br. 14-15.) However, claim 9, not claim
10, stands rejected as anticipated by Hengesbach.
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Thus, Appellant has not shown that the Examiner erred in rejecting claim 9
as anticipated by Hengesbach.

The Rejection of Claim 15 under 35 U.S.C. § 103(a) as Unpatentable Over
Hengesbach and Aker
Claim 15 recites: “[The] [a]pparatus according to claim 9,
characterised in that the discharge mouth is a slit.” Claim 9 provides that
“the discharge mouth is situated on a nappe of the tubular distributing body
along its length.” Appellant asserts that neither Hengesbach nor Aker
discloses a discharge mouth that is a slit on the tubular distributing body
along its length. (App. Br. 14; Reply Br. 15.) Appellant also argues that
neither reference provides a motivation to replace individual discharge
points with a slit along the distributing body because “doing so would
change the principle of operation of Aker.” (App. Br. 14.) Appellant
apparently contends that Aker’s “principle of operation” relates to a large
number of sprinkler outlet heads for effective sprinkling of long strips of
lawn or flower beds. (Id. at 14-15.)
We understand Appellant to argue the claim 15 requires a single,
continuous slit along the distributing body. (See App. Br. 14.) However,
claim 15 does not include the word “continuous.” Additionally, claim 15
uses the phrase “characterised in that,” thereby indicating that the claim is
open-ended and that the mouth is not limited to a single slit. See Mars, Inc.
v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). Claim 15, given its
broadest reasonable interpretation consistent with the Specification, covers a
discharge mouth that comprises one or more slit-shaped openings where the
slit is aligned along the longitudinal axis of the tubular body.
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20
Hengesbach discloses multiple hole-shaped discharge ports arranged
in a row on the tubular body. (Fact 18.) Aker discloses sprinkler heads to
be inserted into holes on a tubular body. (Fact 19.) Aker also discloses slit
openings with the slit oriented along the longitudinal axis of the body.
(Fact 20.) Aker further teaches that slit openings are interchangeable with
round openings, and that the opening shape is selected to obtain the desired
spray pattern. (Facts 20, 21.) Thus, Aker provides a motivation to add
Aker’s slit-shaped nozzles to Hengesbach’s foam spreading device.
Appellant’s argument regarding changing the “principle of operation
of Aker” appears to be based on Appellant’s contention that the claim
requires a continuous slit. (See App. Br. 14.) Appellant’s argument is not
persuasive because the claim is not limited to a continuous slit.
Appellant has not offered persuasive evidence or argument that it
would have been unobvious to one of ordinary skill in the art at the time of
the invention to combine Aker’s nozzles with Hengesbach’s device to arrive
at the claimed invention. Accordingly, Appellant has not demonstrated that
the Examiner erred in rejecting claim 15 as unpatentable over Hengesbach
and Aker. We sustain the rejection of claim 15.

CONCLUSIONS
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 4, 9, 10, and 14 under 35 U.S.C. § 102(b) as anticipated by
Freygang.
Appellant, however, has failed to show that the Examiner erred in
rejecting claim 2 under 35 U.S.C. § 102(b) as anticipated by Freygang, in
rejecting claims 2 and 9 under 35 U.S.C. § 102(b) as anticipated by
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Application 09/687,763

21
Hengesbach, and in rejecting claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Hengesbach and Aker.

DECISION
The decision of the Examiner to reject claims 4, 10, and 14 is
reversed. The decision of the Examiner to reject claims 2, 9, and 15 is
affirmed.
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) (2007).

AFFIRMED-IN-PART

hh

KOLISCH HARTWELL, P.C.
200 PACIFIC BUILDING
520 SW YAMHILL STREET
PORTLAND, OR 97204