Ex Parte Popp

Patent Trial and Appeal Board

Mar 3, 2015

12293865 (P.T.A.B. Mar. 3, 2015)

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.
12/293,865 08/24/2009 James B. Popp 02100.0091 4943
22852 7590 03/03/2015
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
03/03/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES B. POPP
____________

Appeal 2013-001289
Application 12/293,865
Technology Center 3700
____________

Before HUBERT C. LORIN, MICHAEL W. KIM, and
CYNTHIA L. MURPHY Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant
1
appeals under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1–5 and 7–20. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

We AFFIRM-IN-PART.

1
According to the Appellant, the real party in interest is Federal Express
Corporation. (Appeal Br. 4.)
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2
STATEMENT OF THE CASE
The Appellant’s invention relates to suppressing and/or extinguishing
a fire associated with a container. (Spec. ¶ 2.)

Illustrative Claim
2

1. A device for suppressing and/or extinguishing a fire
associated with a container, the device comprising:
a housing defining a hollow sleeve; and
a column configured to be received within the hollow
sleeve, the column defining a first chamber, a second chamber,
at least one aperture, and a piercing end configured to pierce a
barrier,
wherein the first chamber is configured to receive an
expansion agent and the second chamber is configured to
receive a fire extinguishing agent, and
wherein the device is configured such that upon
activation of the expansion agent, the column extends from the
housing so as to enable the piercing end to penetrate the
container and to enable the fire extinguishing agent to be
delivered into an interior of the container via the at least one
aperture.

Prior Art
Ranney US 3,833,064 Sept. 3, 1974
Hawelka US 4,830,421 May 16, 1989
McClenahan US 5,062,486 Nov. 5, 1991
Sioutis US 6,688,664 B2 Feb. 10, 2004
Setzer US 7,121,353 B2 Oct. 17, 2006

2
The illustrative claim is quoted from the Claims Appendix provided on
pages 36–40 of the Appeal Brief. Our subsequent citations to the Claims
Appendix (i.e., “Claim App.”) correspond to these pages of the Appeal
Brief.
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Rejections
3

I. The Examiner rejects claims 1–5, 15, and 16 under 35 U.S.C. § 102(e)
as anticipated by Setzer.
II. The Examiner rejects claims 1–3, 15, and 17 under 35 U.S.C. § 102(b)
as anticipated by McClenahan.
III. The Examiner rejects claims 7, 9–11, and 18 under 35 U.S.C. § 103(a)
as unpatentable over McClenahan and Sioutis.
IV. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as
unpatentable over McClenahan, Sioutis, and Hawelka.
V. The Examiner rejects claims 12–14 and 20 under 35 U.S.C. § 102(b) as
anticipated by McClenahan.
VI. The Examiner rejects claims 12–14 and 19 under 35 U.S.C. § 102(b) as
anticipated by Ranney.

3
The Appellant appeals the non-Final Office Action mailed on October 13,
2011. In this Office Action, claim 18 is rejected under 35 U.S.C. §112,
second paragraph (see Non-Final Act. 2–3), but this rejection is withdrawn
by the Examiner (see Answer 3). Also in this Office Action, claim 18 is
rejected under 35 U.S.C. § 101 (see Non-Final Act. 3). In the Appeal Brief,
the Appellant asks for review, and argues, the rejection of claim 18 under 35
U.S.C. § 101 (see Appeal Br. 10). In the Answer, the Examiner does not
indicate that the rejection of claim 18 under 35 U.S.C. § 101 is withdrawn
(see Answer 3), but the Examiner does not list 35 U.S.C. § 101 as a ground
of rejection, and does not acknowledge the Appellant’s arguments advanced
for this rejection (id. at 4–6). In the Reply Brief, the Appellant indicates that
the rejection of claim 18 under 35 U.S.C. § 101 is considered withdrawn
(see Reply Br. 2). We likewise consider this rejection withdrawn and do not
address it in this appeal.

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ANALYSIS
Independent claims 1, 7, and 12 set forth, respectively, a device, a
cargo vehicle, and a method. (Claims App.) More specifically, independent
claim 1, and the claims depending therefrom (claims 2–5 and 15–17), set
forth a “device for suppressing and/or extinguishing a fire associated with a
container.” (Id.) Independent claim 7, and the claims depending therefrom
(claims 8–11 and 18), set forth a “cargo vehicle” comprising the device set
forth in claim 1. Independent claim 12, and the claims depending therefrom
(claims 13, 14, 19, and 20), set forth a “method for suppressing and/or
extinguishing a fire associated with a container.” (Id.)

Device Claims 1–5 and 15–17
Independent claim 1 sets forth that the device comprises a “housing
defining a hollow sleeve” and a “column configured to be received within
the hollow sleeve.” (Claims App.) The column defines a “first chamber,” a
“second chamber,” and a “piercing end.” (Id.) The first chamber is
“configured to receive an expansion agent,” the second chamber is
“configured to receive a fire extinguishing agent,” and the piercing end is
“configured to pierce a barrier.” (Id.) Claim 1 further recites that “the
device is configured such that upon activation of the expansion agent, the
column extends from the housing so as to enable the piercing end to
penetrate the container.” (Id.)
Before turning to the Examiner’s individual rejections of the device
claims, we note that independent claim 1 recites positively a “housing,” a
“hollow sleeve,” a “column,” a “first chamber,” a “second chamber,” and a
“piercing end.” Thus, for a prior art device to anticipate claim 1, it must
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comprise each of these elements. However, independent claim 1 does not
recite positively an “expansion agent,” a “fire extinguishing agent,” and/or a
“barrier.” The claim language does not require, for example, the first
chamber to contain an expansion agent, the second chamber to contain a fire
extinguishing agent, an expansion agent to be activated, a fire extinguishing
agent to be delivered, and/or a barrier to be pierced. These functional terms,
used only in “configured to” clauses, can be met by prior art elements that
are capable of performing the recited function, even if the prior art does not
disclose that the recited function is actually performed or accomplished. See
In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).

Rejection I
The Appellant argues that Setzer “fails to disclose all of the subject
matter recited in independent claim 1.” (Appeal Br. 24.) Specifically, the
Appellant disagrees with the Examiner’s finding that Setzer’s aircraft 4
corresponds to the “housing” recited in claim 1. (Id. at 25.) Furthermore,
the Appellant disagrees with the Examiner’s finding that Setzer’s column
(airborne capsule 1 with rounded nose 21) has “a piercing end configured to
pierce a barrier” as recited in claim 1. (Id. at 26.) We are persuaded by the
Appellant’s arguments because the Examiner’s findings are based on overly
broad interpretations of the claim terms “housing,” “hollow sleeve,”
“piercing end,” and “configured to pierce a barrier.”
We determine the scope of independent claim 1 by giving the claim
terms their broadest reasonable construction in light of the specification as it
would be interpreted by one of ordinary skill in the art. See In re American
Academy of Science Tech Center, 367 F.3d 1359, 1369 (Fed. Cir. 2004). In
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the Specification, the Appellant describes and/or depicts its device 10 as a
structure intended to be “located in a cargo area of an aircraft.” (See Spec., ¶
26; Fig. 5.) Also, the Specification describes and/or depicts housing 14, and
particularly its hollow sleeve 16, with a shape and size corresponding to the
shape and size of column 28 when it is received therein. (Id. at ¶ 28; Fig. 1.)
Additionally, the column’s piercing end 42 has a triangular shape with a
pointed leading edge, so that it can pierce, for example, the top of a cargo
container. (Id. at ¶ 37; Figs. 1–2.)
When we construe the claim terms in light of the Specification,
Setzer’s aircraft 4 cannot correspond properly to “a housing defining a
hollow sleeve” as required by independent claim 1. Allowing Setzer’s
aircraft 4 to correspond to the recited “housing” would essentially unbound
the term “housing” to read on any hollow object of any size. Such an
interpretation would be unreasonable in light of the Appellant’s
Specification.
Additionally, Setzer’s rounded nose 21 is not a “piercing end” and it
is not a structure “configured to pierce a barrier” as required by independent
claim 1. Every object, in theory, can have a “piercing end” when launched
at a high enough velocity at a thin enough object. However, we determine
that a broadest reasonable construction in light of the Specification requires
that the “piercing end” have at least some minimal design to effect a
piercing. We are not persuaded that Setzer’s rounded nose 21 was designed
for piercing. (See Setzer, col. 7, ll. 42–51; Fig. 3.)
Accordingly, the Examiner does not show, sufficiently, that Setzer
discloses all of the subject matter recited in independent claim 1.
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Thus, we do not sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 102(e) as anticipated by Setzer.
Dependent Claims 2–5, 15, and 16
The Examiner’s further findings and determinations with respect to
dependent claims 2–5, 15, and 16 (see Answer 14–15), all of which depend
ultimately from independent claim 1, do not compensate for the above-
discussed shortcomings in Setzer.
Thus, we do not sustain the Examiner’s rejection of dependent claims
2–5, 15, and 16 under 35 U.S.C. § 102(e) as anticipated by Setzer.

Rejection II
The Appellant argues that “McClenahan does not disclose “all of the
subject matter” set forth in independent claim 1. (See Appeal Br. 11.) We
are not persuaded by the Appellant’s arguments. The Examiner’s findings
that McClenahan discloses the required subject matter are based on
appropriate interpretations of the pertinent claim terms (e.g., “chamber,”
“configured to,” “piercing end,” etc.). And the Examiner’s findings are
supported sufficiently by McClenahan’s disclosure.
The Appellant argues that McClenahan “does not disclose a column
having first and second chambers” as required by independent claim 1. (See
Appeal Br. 12.) Specifically, the Appellant disagrees with the Examiner’s
finding that the space defined socket 55 is a “first chamber.” (Id.)
According to the Appellant, McClenahan’s socket 55 “is not a chamber” but
“merely a socket configured to receive a taper 65 of a slide rod 60.” (Id. at
13.)
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We agree with the Appellant that socket 55 performs a rod-retention
function when McClenahan’s tool 10 is in a compact condition for storage.
(See McClenahan, col. 4, ll. 10–13; 48–50.) In this compact condition, rod
60 is stowed within barrel 40 and its tapered end 65 is “locked” in the socket
55. (Id.) However, when McClenahan’s tool is in its elongated condition,
tapered end 65 is “pulled out” of socket 55 so that rod 60 can be withdrawn
from barrel 40. (Id. at col. 4, ll. 51–56, Fig. 1.) In other words, socket 55 is
“empty” and forms a “chamber.”
The Appellant argues also that even if McClenahan’s socket-defined
space is considered a “first chamber,” this chamber is not “configured to
receive an expansion agent.” (See Appeal Br. 13.) The Appellant asserts
that the space defined by socket 55 is instead “configured to receive a taper
65 of a slide rod 60, not an expansion agent.” (Id.)
We agree with the Appellant that socket is 55 is configured to receive
tapered end 65 of rod 60. (See McClenahan, col. 4, ll. 10–13; 48–50.) But
when McClenahan’s tool 10 is in its elongated condition, the “empty” space
defined by socket 55 communicates with fluid passage 41. (Id. at Fig. 1.)
When fluid agent is admitted through inlet 27 and received by passage 41,
this socket-defined space likewise receives the fluid agent, and thus is
“configured to receive” a fluid agent.
The Appellant argues additionally that McClenahan “fails to disclose
a device configured such that upon activation of an expansion agent, a
column extends from a housing so as to enable a piercing end to penetrate a
container.” (See Appeal Br. 13.) The Appellant asserts that in the
operational sequence disclosed by McClenahan, no fluid pressure is
admitted to the barrels until after the barrier has been penetrated. (Id. at 14.)
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According to the Appellant, McClenahan “teaches away” from using an
expansion agent to enable a piercing end to penetrate a container. (Id.)
We appreciate that McClenahan discloses an operational sequence
different from that recited in independent claim 1. But this, alone, does not
establish that McClenahan’s device is not “configured” to operate in the
sequence set forth in the claim language. The “configuration” of
McClenahan’s device remains structurally the same, whether or not this
reference teaches away from a certain operational sequence. When the fluid
agent is admitted through McClenahan’s inlet 27, inner barrel 40 and sharp-
ended point 12 extend in a frontward path from barrel 15. (See McClenahan,
col. 5, ll. 1–5.) McClenahan’s sharp-ended point 12 (designed specifically
for piercing) can “penetrate” a barrier placed in this frontward path during
barrel extension. (See Answer 7–8.)
Accordingly, we are not persuaded that McClenahan does not disclose
“all of the subject matter” set forth in independent claim 1.
Thus, we sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 102(b) as anticipated by McClenahan.
Dependent Claim 2
Dependent claim 2 sets forth that “the expansion agent comprises a
pyrotechnic charge.” (Claims App.) The Appellant argues that McClenahan
“fails to disclose an expansion agent comprising a pyrotechnic charge.” (See
Appeal Br. 17.) We are not persuaded by these arguments because the
“expansion agent” and the “pyrotechnic charge” are not positively-recited
elements in claim 2.
Independent claim 1 does not require the first chamber to “receive an
expansion agent,” and does not require “activation” of an expansion agent.
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Likewise dependent claim 2 does not require the first chamber to receive a
“pyrotechnic” expansion agent, and does not require “activation” of a
“pyrotechnic” expansion agent.
As discussed above, McClenahan’s first chamber (i.e., the space
defined by socket 55) is configured to receive a fluid agent. And
McClenahan’s device 10 has structural features allowing it to operate in the
claimed manner upon admission of the fluid agent though inlet 27. The
Appellant does not explain, persuasively, why these configurations would
not also accommodate an expansion agent comprising “a pyrotechnic
charge.” For example, the Appellant does not offer evidence that additional
or different structural features would be required for an expansion agent
“comprising a pyrotechnic charge.”
Thus, we sustain the Examiner’s rejection of dependent claim 2 under
35 U.S.C. § 102(b) as anticipated by McClenahan.
Dependent Claim 3
Dependent claim 3 sets forth that “the fire extinguishing agent
comprises a fire extinguishing pyrotechnic charge.” (Claims App.) The
arguments advanced by the Appellant are akin to those discussed above for
dependent claim 2. (See Appeal Br. 17.) For the same reasons, we are not
persuaded by these arguments. Specifically, for example, the Appellant does
not explain, persuasively, why a fire extinguishing agent comprising a
pyrotechnic charge would require McClenahan’s device to have additional
or different structural features.
Thus, we sustain the Examiner’s rejection of dependent claim 3 under
35 U.S.C. § 102(b) as anticipated by McClenahan.
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Dependent Claim 15
Dependent claim 15 sets forth that the device “further comprises an
expansion agent received in the first chamber.” (Claims App.) In this claim,
an “expansion agent” is recited positively, and the Appellant argues that
McClenahan “fails to disclose an expansion agent received in a first chamber
of a column.” (See Appeal Br. 18; Reply Br. 8.) We are not persuaded by
these arguments because McClenahan discloses an “expansion agent” and
McClenahan’s expansion agent is “received in the first chamber” of its
column.
In McClenahan, a fluid agent is admitted through inlet 27. (See
McClenahan, col. 3, ll. 31–40; Fig. 1.) When this occurs, “[t]he pressure of
the agent fluid” overcomes “any resistance to extension of the nozzle
barrel,” and this “extend[s] the nozzle barrel and expose[s] the ports.” (Id. at
col. 5, ll. 1–5.) In other words, McClenahan’s fluid agent is an expansion
agent that, upon admission through inlet 27 (“activation”), causes inner
barrel 40 (“column”) to extend from outer barrel 15 (“housing”). As
discussed above, the fluid agent flows into the space defined by socket 55,
so the “expansion agent” is “received in” McClenahan’s “first chamber.”
Thus, we sustain the Examiner’s rejection of dependent claim 15
under 35 U.S.C. § 102(b) as anticipated by McClenahan.
Dependent Claim 17
The Appellant’s comments do not argue dependent 17 further or
separately for this rejection, so it falls with independent claim 1.
Thus, we sustain the Examiner’s rejection of dependent claim 17
under 35 U.S.C. § 102(b) as anticipated by McClenahan.

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Cargo Vehicle Claims 7, 9–11 and 18
Independent claim 7 sets forth a cargo vehicle with a device
comprising the same positively-recited elements, and thus the same recited
configurations, as set forth in independent claim 1. (Claims App.)
Independent claim 7 requires additionally that the housing of the device be
“mounted in the cargo vehicle.” (Id.)

Rejection III
The Appellant argues that it would not have been obvious to mount
the housing of McClenahan’s device in a cargo vehicle. (See Appeal Br. 29–
31; Reply Br. 19–20.) We are not persuaded by these arguments because
they do not address the Examiner’s articulated reason for the combination
(“quick access and transport” of fire equipment). (See Answer 6.)
The Appellant asserts that that mounting McClenahan’s device in a
vehicle would be “contrary to its teachings” regarding “portable” tools. (See
Reply Br. 20.) We disagree, as even portable tools need to be transported
from their storage location (e.g., the firehouse) to a fire site. Mounting the
housing (e.g., McClenahan’s outer barrel 15) of a portable device to a cargo
vehicle during this transport would allow “quick transport” to the fire site
and/or “quick access” upon arrival at the fire site.
Accordingly, we are not persuaded that the Examiner’s combination
would not have been obvious and/or would not otherwise result in the cargo
vehicle set forth in independent claim 7.
Thus, we sustain the Examiner’s rejection of independent claim 7
under 35 U.S.C. § 103(a) as unpatentable over McClenahan and Sioutis.
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Dependent Claim 9
Dependent claim 9 sets forth that a plurality of the devices are
mounted in the cargo area of the vehicle, “so as to enable the piercing end to
penetrate the container.” (Claims App.) We are persuaded by the
Appellant’s arguments that the prior art does not show or suggest this
mounting arrangement. (See Reply Br. 23–24.) According to the Examiner,
“[t]he mounting orientation of the device is merely a design choice for ease
in storage.” (Answer 16.) However, the Examiner does not explain why,
when transporting a plurality of McClenahan’s devices to a fire site, “ease in
storage” would be achieved by mounting these devices in a manner
consistent with piercing containers in the vehicle’s cargo area. As
McClenahan’s devices would be removed from the cargo vehicle at the fire
site before being used for piercing barriers, there would be no reason to do
so.
Thus, we do not sustain the Examiner’s rejection of dependent claim 9
under 35 U.S.C. § 103(a) as unpatentable over McClenahan and Sioutis.
Dependent Claims 10 and 11
Dependent claims 10 and 11 depend, directly or indirectly, from
dependent claim 9. Any further findings and determinations made by the
Examiner with respect to claims 10 and 11 (see Answer 5–6) do not
compensate for the above-discussed shortcomings in the McClenahan-
Sioutis combination.
Thus, we do not sustain the Examiner’s rejection of dependent claims
10 and 11 under 35 U.S.C. § 103(a) as unpatentable over McClenahan and
Sioutis.
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Dependent Claim 18
Dependent claim 18 sets forth that “the housing is mounted to the
vehicle during use.” (Claims App.) We are not persuaded by the
Appellant’s arguments that McClenahan’s portable tool cannot be mounted
to cargo vehicle “during use. (See Appeal Br. 34.) The Appellant’s position
presupposes that fire equipment is only in “use” when it is being carried by a
firefighter. However, transporting firefighting equipment to a fire site also
constitutes “use” of this equipment as it is being deployed for firefighting
purposes. (See Answer 5–6.) As such, the housing of McClenahan’s device
would be “mounted to the vehicle during use” as it is transported to the fire
site.
Thus, we sustain the Examiner’s rejection of dependent claim 18
under 35 U.S.C. § 103(a) as unpatentable over McClenahan and Sioutis.

Rejection IV
Dependent claim 8 sets forth that “the cargo vehicle comprises an
aircraft.” (Claims App.) We are not persuaded by the Appellant’s argument
that the prior art does not disclose an aircraft (see Appeal Br. 32), because
Hawelka evidences that it is well known to install firefighting equipment in
an aircraft for transport (see Answer 6). We are also not persuaded by the
Appellant’s argument that it would not have been obvious to mount
McClenahan’s device to the cargo vehicle. (See Reply Br. 20–21.) As
discussed above, mounting McClenahan’s outer barrel 15 to the cargo
vehicle (i.e., the aircraft) would allow “quick transport” to the fire site and/or
“quick access” upon arrival at the fire site.
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Thus, we sustain the Examiner’s rejection of claim 8 under
35 U.S.C. § 103(a) as unpatentable over McClenahan, Sioutis, and Hawelka.

Method Claims 12–14 and 20
In the method set forth in independent claim 12, a device is provided
that comprises a “housing,” a “column,” an “expansion agent,” and a “fire
extinguishing agent.” (Claims App.) The method comprises the steps of
“activating the expansion agent such that the column extends from the
housing,” and “delivering the fire extinguishing agent to an interior of [a]
container.” (Id.)
Before turning to the Examiner’s individual rejections of the method
claims, we note that independent claim 12, like independent claim 1, recites
positively a “housing” and a “column.” However, unlike device claim 1,
method claim 12 does not require the column to have a “first chamber,” a
“second chamber,” or a “piercing end.” Additionally, claim 12 does not
require “piercing” of a container or other barrier.
We note also that independent claim 12 recites positively an
“expansion agent.” As pointed out by the Appellant, method claim 12
differs from device claim 1 in that the “expansion agent” is not introduced in
a “configured to” clause. (See Appeal Br. 19.) Thus, for a prior art process
to anticipate claim 12, it must include “an expansion agent,” and it must
include the step of “activating” this expansion agent. However, claim 12
does not require the “expansion agent” to reside in a chamber of the column
or be otherwise contained thereby.

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Rejection V
The Appellant argues that McClenahan does not disclose the method
recited in independent claim 12. (See Appeal Br. 19–20, Reply Br. 8–9.)
We are not persuaded by these arguments because they either overlook
elements disclosed by McClenahan or they rely upon distinctions not
required by the claim language.
The Appellant argues that McClenahan “fails to disclose either an
expansion agent or activating any agent.” (See Appeal Br. 19.) However, as
discussed above, upon admission of McClenahan’s fluid agent (“expansion
agent”) through inlet 27 (“activation”), inner barrel 40 (“column”) extends
from outer barrel 15 (“housing”). (See McClenahan, col. 3, ll. 31–40; col. 5,
ll. 1–5; Fig. 1.) As such, McClenahan discloses an “expansion agent” and
McClenahan discloses the step of “activating the expansion agent such that
the column extends from the housing” as required by independent claim 12.
The Appellant argues additionally that McClenahan “teaches away”
from activating an expansion agent to pierce a container and/or piercing a
container while a column extends from a housing. (See Appeal Br. 16, 19.)
Be this as it may, method claim 12 does not require piercing of a container,
during extension of the column or otherwise. (See Claims App.) As such
the operational sequence of McClenahan’s barrier-piercing and barrel-
extending steps are not germane to this rejection. Specifically, for example,
it does not matter that McClenahan’s fluid agent is “admitted to the barrels,”
after “the point has penetrated the barrier.” (See McClenahan, col. 5, ll. 1–
2.)
4

4
Dependent claim 13 sets forth that “delivering the fire extinguishing agent
to an interior of the container comprises piercing the container via the
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Accordingly, we are not persuaded by the Appellant’s position that
McClenahan does not disclose the method set forth in independent claim 12.
Thus, we sustain the Examiner’s rejection of independent claim 12
under 35 U.S.C. § 102(b) as anticipated by McClenahan.
Dependent Claims 13 and 14
The Appellant’s comments do not argue dependent claims 13 and 14
further or separately (see Appeal Br. 20), so they fall with independent claim
12.
Thus, we sustain the Examiner’s rejection of dependent claims 13
and 14 under 35 U.S.C. § 102(b) as anticipated by McClenahan.
Dependent Claim 20
Dependent claim 20 sets forth that the activating step “results in the
column extending and not separating from the housing.” (Claims App.) The
Appellant’s comments do not argue this claim limitation. (See Appeal Br.
20.) We nonetheless note that, in McClenahan, “[t]he engagement of tapers
21 and 46 on the barrels will prevent the nozzle from separating from the
impact barrel.” (McClenahan, col. 5, ll. 6–8.)
Thus, we sustain the Examiner’s rejection of dependent claim 20
under 35 U.S.C. § 102(b) as anticipated by McClenahan.

Rejection VI
We are not persuaded by the Appellant’s arguments that Ranney does
not disclose the method recited in independent claim 12. (See Appeal Br.

column.” (Claims App.) Although this dependent claim is not argued
separately from independent claim 12, we nonetheless note that claim 13
does not preclude the column from piercing the container prior to
“activating” the expansion agent, as is done in McClenahan.
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20–22, Reply Br. 10–11.) We are not persuaded because the Examiner’s
readings of the pertinent claim terms (e.g., “column,” “housing,” “extends,”
“expansion agent,” and “activating”) do not reach beyond their broadest
reasonable interpretations. (See Answer 7–10.) Furthermore, the
Examiner’s related findings (that Ranney discloses the elements/steps
corresponding to these claims terms) are supported sufficiently by this
reference. (Id.)
The Appellant argues that Ranney does not disclose a step wherein a
column extends from a housing. (See Appeal Br. 21, Reply Br. 11.) Method
claim 12 does not limit structurally the “housing” and requires only that the
“column” be “configured to extend from the housing.” (See Claims App.)
Method claim 12 does not preclude the column from separating from the
housing when it extends therefrom.
5
(Id.) Ranney discloses a tube 46, a
cartridge 54, and a step wherein cartridge 54 is propelled outwardly from
tube 46. (See Ranney, col. 3, ll. 6–9 and 17–21, Fig. 7.) In other words,
Ranney discloses a column 54 that extends from a housing 46 (and thus is
configured to extend from housing 46) when it is propelled therefrom. (See
Answer 4–5, 11.)
The Appellant argues also that Ranney does not disclose the step of
“activating” an “expansion agent” such that cartridge 54 extends from tube
46. (See Appeal Br. 21, Reply Br. 11.) However, as indicated above,
method claim 12 does not require the expansion agent to reside within a

5
Dependent claim 20 (not at issue in this rejection) recites that “activating
the expansion agent results in the column extending and not separating from
the housing.” (Claims App.) The Examiner refers to claim 20 as evidence
that claim 12 encompasses the column separating from the housing. (See
Answer 11.)
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chamber of the column, or be otherwise contained thereby. Ranney
discloses that “[a] blast of air or the like” (from source 50) is supplied to
tube 46 “so as to propel the cartridge outwardly therefrom.” (See Ranney,
col. 3, ll. 17–20; Fig. 7.) In other words, Ranney discloses an expansion
agent (pressurized air) that is activated (“blasted”) such that its column
(cartridge 54) extends from its housing (tube 46). (See Answer 12.)
Accordingly we are not persuaded by the Appellant’s position that
Ranney does not disclose a method as forth in independent claim 12.
Thus, we sustain the Examiner’s rejection of independent claim 12
under 35 U.S.C. § 102(b) as anticipated by Ranney.
Dependent Claim 13
Dependent claim 13 sets forth that “delivering the fire extinguishing
agent to an interior of the container comprises piercing the container.”
(Claims App.) We are not persuaded by the Appellant’s arguments that
Ranney does not disclose a “container” and/or does not disclose “piercing” a
container because the reference shows otherwise. (See Reply Br. 12.)
Ranney depicts its cartridge 54 on route to break a window of building 26,
so that fire extinguishing material 17 can be delivered to the interior of
building 26. (See Ranney, Fig. 7.) Claim 13 does not preclude the term
“container” from reading on Ranney’s building 26; and claim 13 does not
preclude the term “piercing” from reading on window breaking.
Thus, we sustain the Examiner’s rejection of dependent claim 13 as
anticipated by Ranney.
Dependent Claim 14
The Appellant’s comments do not argue dependent claim 14 further or
separately (see Appeal Br. 23), so it falls with independent claim 12.
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Thus, we sustain the Examiner’s rejection of dependent claim 14
under 35 U.S.C. § 102(b) as anticipated by Ranney.
Dependent Claim 19
Dependent claim 19 sets forth that “the expansion agent comprises a
pyrotechnic charge.” (Claims App.) We are persuaded by the Appellant’s
argument that Ranney does not disclose such an expansion agent. (See
Appeal Br. 23–24, Reply Br. 12–13.) As discussed above, Ranney’s
expansion fluid is pressurized air supplied by source 50. Ranney discloses a
pyrotechnic charge (i.e., dynamite 14), but it is carried by cartridge 54 for
later explosion “so that the fire extinguishing material 17 is scattered over
the fire.” (See Ranney col. 2, ll. 9–10, col. 3, 24–27.) Ranney’s dynamite
14 does not constitute a component of Ranney’s “expansion agent,” so
Ranney does not disclose an expansion agent that “comprises a pyrotechnic
charge” as required by the claim language.
Thus, we do not sustain the Examiner’s rejection of dependent claim
19 under 35 U.S.C. § 102(b) as anticipated by Ranney.

DECISION
We REVERSE the Examiner’s rejection of claims 1–5, 15, and 16
under 35 U.S.C. § 102(e) as anticipated by Setzer.
We AFFIRM the Examiner’s rejection of claims 1–3, 15, and 17
under 35 U.S.C. § 102(b) as anticipated by McClenahan.
We AFFIRM the Examiner’s rejection of claims 7 and 18 under
35 U.S.C. § 103(a) as unpatentable over McClenahan and Sioutis.
We REVERSE the Examiner’s rejection of claims 9–11 under
35 U.S.C. § 103(a) as unpatentable over McClenahan and Sioutis.
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We AFFIRM the Examiner’s rejection of claim 8 under
35 U.S.C. § 103(a) as unpatentable over McClenahan, Sioutis, and Hawelka.
We AFFIRM the Examiner’s rejection of claims 12–14 and 20 under
35 U.S.C. § 102(b) as anticipated by McClenahan.
We AFFIRM the Examiner’s rejection of claims 12–14 under
35 U.S.C. § 102(b) as anticipated by Ranney.
We REVERSE the Examiner’s rejection of claim 19 under
35 U.S.C. § 102(b) as anticipated by Ranney.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
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