Appeal No. 2004-1334
Application 09/526,457
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Fortune and Mallow
and of Fortune alone with appellant’s countervailing evidence of and argument for
nonobviousness and conclude that the claimed invention encompassed by appealed claims 3, 6,
8, 11, 12 and 14 would have been obvious as a matter of law under 35 U.S.C. § 103(a).
Turning now to the rejection of appealed claims 5 and 15 over the combined teachings of
Fortune and Ellis, we find that the claim language of claim 15 in issue here is “wherein at least
an exterior surface of said walls is covered with a means for sealing said means for allowing
ingress and egress to said self contained room,” which “means” is modified in claim 5 as “a paint
which expands when heated.” We find that the “means for” language in claim 15 does not
recited structure to carry out the means, thus falling within § 112, sixth paragraph, and that the
examiner has not interpreted this language in either Paper No. 10 or in the answer. Accordingly,
the examiner has not established a prima facie case of obviousness with respect to claim 15
because he has not considered all the limitations of that claim, and therefore, on this basis, we
reverse the rejection of appealed claim 15 under § 103(a). Cf. Donaldson, 16 F.3d at 1195-97,
29 USPQ2d at 1850-52; Geerdes, supra.
Appealed claim 5 provides “paint” structure for the “means,” and thus any paint that is
capable of covering the exterior surface of a wall or door such that it will “seal” the means for
allowing ingress and egress to the self contained room upon exposure to fire is encompassed.
The examiner contends that Ellis provides “a fire barrier coating or intumescent paint for a
means for protecting (column 5, lines 9-12)” which one of ordinary skill in this art would have
applied to the door of the unit of Fortune for “protecting the door . . . in the event of a fire”
(Paper No. 10. pages 3-4).
Appellant argues that “Ellis does not disclose any substance which will perform” the
function specified in appealed claim 5 because “Ellis teaches a paint that, when applied to wood
or plastic substrates, will form a fire barrier on these substrates,” and not a sealing means for a
door (brief, pages 10-11). The examiner responds that Ellis “teaches that intumescent fire
retardant coatings are well known in the prior art (column 5, lines 7-12),” and “[a]n intumescent
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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