DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1,4-11,13,15-16,19-27,29,31-32,36-39 and 41-42 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1,15, 32 and 36, the claims require a vent or valve that is configured to allow gas to escape from the pipe network through the vent or valve in response to the system pressure within the pipe network reaching a prescribed limit and not allowing gas to escape from the pipe network through the at least one vent or valve when the system pressure has not reached the prescribed limit.
Paragraph [0056] discloses a vent or valve, but the specification does not provide any explanation as to how the claimed vent or valve is configured to perform the claimed function of allowing gas to escape from the pipe network through the vent or valve in response to the system pressure within the pipe network reaching a prescribed limit and not allowing gas to escape from the pipe network through the at least one vent or valve when the system pressure has not reached the prescribed limit.
Claims 1, 15, 31, 32, 36, 37, 38, and 39 all require the vent or valve to be configured to allow gas including oxygen displaced by the nitrogen to exit the pipe network in response to the system pressure of the pipe network reaching the prescribed limit while preventing liquid from passing therethrough and out of the pipe network and maintaining the system pressure within the pipe network until the water-based fire protection system is actuated.
Again, the specification discloses a vent or relief valve in general [0056], but does not provide any specific structure or describe how the vent or valve functions.
The drawings just show the vent or valve as a box with no internal structure. One cannot tell how the vent or valve functions by the drawings.
The examiner is unsure of what type of vent or valve is being claimed and how the vent or valve functions. To the examiner’s knowledge, a vent or valve that performs the claimed functions is not a well-known valve. In order to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention, the applicant must provide some sort of explanation as to how the vent or valve performs the claimed functions. What does the internal structure of the valve look like to let the gas vent above the predetermined limit, but not below it, and also not let the liquid escape?
If the claimed vent or valve is one that the applicant has invented, the examiner suggests the applicant amend some structure into the specification and claims to further clarify how the claimed valve is configured to perform the above function. If the claimed vent or valve is a well-known vent or valve, the examiner suggests amending the specification to include information about that particular vent or valve.
The remainder of the claims are rejected due to dependency.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if 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. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 4, 5, 7-9, 11, 13,15, 19-21, 23-27, 29, 31, 32, 36, 37-39, 41 and 42 is/are rejected, as best as understood, under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Nakamura (JP 3928201) in view of Herlihy (6,513,541)
Regarding claims 1, Nakamura shows a water-based fire protection system (figure 1) comprising: a sprinkler system comprising at least one fusible sprinkler (Sp), a pipe network (2) connected to the at least one fusible sprinkler, and having one or more drains (4, 15); the pipe network pitched toward the one or more drains (figure 2) the one or more drains selectively allowing liquid to exit the pipe network (inherent to a drain), a nitrogen generator (10) coupled to the pipe network (fig 2) the nitrogen generator operable to pressurize the pie network with nitrogen to a system pressure until the water-based fire protection system is actuated ([0012]), the sprinkler system including a pressure regulator (8) distinct from the one or more drains,
But fails to show at least one vent distinct from the one or more drains and positioned within the pipe network, wherein the at least one vent is configured to allow gas to escape from the pipe network through the at least one vent in response to the system pressure within the pipe network reaching a prescribed limit and not allowing gas to escape from the pipe network through the at least one vent when the system pressure has not reached the prescribed limit, the at least one vent configured to allow gas including oxygen displaced by the nitrogen to exit the pipe network in response to the system pressure of the pipe network reaching the prescribed limit while preventing liquid from passing therethrough and out of the pipe network and maintaining the system pressure within the pipe network until the water-based fire protection system is actuated, thereby increasing the concentration of nitrogen and decreasing the concentration of oxygen in the pipe network to reduce or eliminate the rate of corrosion in the pipe network.
However, Herlihy teaches at least one vent (fig 11) distinct from the one or more drains and positioned within the pipe network, wherein the at least one vent is configured to allow gas to escape from the pipe network through the at least one vent in response to the system pressure within the pipe network reaching a prescribed limit (fig 11, gas is leaving the vent) and not allowing gas to escape from the pipe network through the at least one vent when the system pressure has not reached the prescribed limit (fig 10), the at least one vent configured to allow gas including oxygen displaced by the nitrogen to exit the pipe network in response to the system pressure of the pipe network reaching the prescribed limit while preventing liquid from passing therethrough and out of the pipe network and maintaining the system pressure within the pipe network until the water-based fire protection system is actuated (fig 11).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the applicant’s invention to add the vent of Herlihy to the pipe network of Nakamura in order to have the valve automatically vent gas to prevent the formation of air pockets as taught by Herlihy (col 1, liens 6-10)
In the use of the above combination, adding nitrogen from the nitrogen generator will inherently increase the concentration of nitrogen and decreasing the concentration of oxygen in the pipe network to reduce or eliminate the rate of corrosion in the pipe network.
Regarding claim 4, the pipe network including a void space (the space inside the pipes) within the pipe network, and wherein the at least one vent is connected with the pipe network at a location in which it is in fluid communication with the void space within the pipe network and is further configured to allow gas from the void space to exit the pipe network (fig 2, Nakamura).
Regarding claim 5, the pipe network further including an amount of liquid (water) contained within the pipe network, and wherein the void space is located above the amount of liquid within the pipe network (air will always stay above liquid in the pipes and the water will accumulate at the low points, which are the vents 15 and 4).
Regarding claim 7, wherein the at least one vent is operable to continuously vent gas including oxygen displaced by the nitrogen from the pipe network. (The vent of Herlihy will do this)
Regarding claim 8, the at least one vent is operable to continuously or periodically vent gas including oxygen displaced by the nitrogen from the pipe network (The vent of Herlihy will do this)
Regarding claim 9, the at least one vent is operable to allow gas including oxygen displaced by the nitrogen to exit the pipe network when the system pressure reaches or exceeds the prescribed limit and wherein the prescribed limit is preset or adjustable (The vent of Herlihy will do this.)
Regarding claim 11, further comprising a flow valve (1, Nakamura) configured to control introduction of a water-based fire suppression medium into the pipe network.
Regarding claims 13, the above combination fails to disclose that the system is a wet pipe system.
However, wet and dry pipe systems are well known in the art and each have their known advantages and disadvantages.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the applicant’s invention to replace the dry pipe valve of Nakamura as modified above with a wet pipe valve, and operate the system as a wet pipe system, in order to achieve a lower cost of installation and maintenance.
Regarding claims 32 and 36, the above combination shows a sprinkler system (Nakamura ) comprising at least one fusible sprinkler (Sp), a pipe network (fig 2) connected to the at least one fusible sprinkler, and having one or more drains (4, 15); the pipe network pitched toward the one or more drains, the one or more drains (fig 2) selectively allowing liquid to exit the pipe network (inherent to a drain); a nitrogen generator (10) coupled to the pipe network, the nitrogen generator operable to pressurize the pipe network with nitrogen to a system pressure until the water-based fire protection system is actuated; at least one vent (the vent of Herlihy) distinct from the one or more drains and positioned within the pipe network, wherein the at least one vent is configured to allow gas to escape from the pipe network through the at least one vent in response to the system pressure within the pipe network reaching a prescribed limit and not allowing gas to escape from the pipe network through the at least one vent when the system pressure has not reached the prescribed limit, the at least one vent configured to allow gas including oxygen displaced by the nitrogen to exit the pipe network in response to the system pressure of the pipe network reaching the prescribed limit while preventing liquid from passing therethrough and out of the pipe network and maintaining the system pressure within the pipe network until the water-based fire protection system is actuated, thereby increasing the concentration of nitrogen and decreasing the concentration of oxygen in the pipe network to reduce or eliminate the rate of corrosion in the pipe network.
Regarding claim 37 in its use, the above combination inherently performs all the method steps of claim 37 as discussed above.
Regarding claim 39, Nakamura as modified above shows A water-based fire protection system (Nakamura) comprising: a sprinkler system comprising at least one fusible sprinkler (Sp), a pipe network (fig 2) connected to the at least one fusible sprinkler, and having one or more drains (4, 15); the pipe network pitched toward the one or more drains (fig 2), the one or more drains selectively allowing liquid to exit the pipe network; a nitrogen generator (10) coupled to the pipe network, the nitrogen generator operable to pressurize the pipe network with nitrogen to a system pressure until the water-based fire protection system is actuated;- 15 - HB: 4839-4799-7688.1Application of BurkhartApplication No. 16/248,113Filed: 01/15/2019Page 16 at least one vent (the vent of Herlihy) distinct from the one or more drains and positioned within the pipe network, wherein the at least one vent is configured to allow gas to escape from the pipe network through the at least one vent in response to the system pressure within the pipe network reaching a prescribed limit and not allowing gas to escape from the pipe network through the at least one vent when the system pressure has not reached the prescribed limit, the at least one vent configured to allow gas including oxygen displaced by the nitrogen to exit the pipe network in response to the system pressure of the pipe network reaching the prescribed limit while preventing liquid from passing therethrough and out of the pipe network and maintaining the system pressure within the pipe network until the water-based fire protection system is actuated, thereby increasing the concentration of nitrogen and decreasing the concentration of oxygen in the pipe network to reduce or eliminate the rate of corrosion in the pipe network.
Regarding claim 41, further including the step of pulling water within the system into the nitrogen after the step of introducing nitrogen from the nitrogen generator into the pipe network (this will inherently occur when the piping network is full of nitrogen).
Regarding claim 15, 19-21, 23- 27, 29, 31, 38 and 42 , the vent of the above combination can be considered a relief valve since it vents off gas over a certain pressure (fig 11 Herlihy ).
Claims 6 and 22 is/are rejected, as best as understood, under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Nakamura (JP 3928201) as modified by Herlihy (6,513,541) above, further in view of Wagner et al. (7,717,776).
Nakamura as modified above shows all aspects of the applicant's invention but fails to specifically disclose an oxygen sensor connected with the system and in communication with the nitrogen generator and configured to generate a sensor signal in response to a level of oxygen measured in the pipe network; and wherein the nitrogen generator is configured to respond to the sensor by adjusting the amount of nitrogen introduced into the pipe network
However, Wagner et al. 776 teaches an oxygen sensor 7 coupled to a sprinkler system (fig 1) configured to generate a sensor signal in response to a level of oxygen measured in a specific area.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the applicant’s invention to add the oxygen sensor of Wagner et al. '776 to the invention of Nakamura as modified above in order to measure the oxygen content in a given area.
It is noted that the oxygen sensor is operable to determine oxygen level in said piping network and the nitrogen generator can be activated automatically in response to said oxygen sensor in order to supply nitrogen to the piping network when oxygen in the piping network is above a particular level.
Claims 10, 16 and 31 is/are rejected, as best as understood, under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Nakamura (JP 3928201) as modified by Herlihy (6,513,541) above, further in view of Jackson (7,389,824)
Regarding claims 10, 16 and 31, Nakamura as modified above shows all aspects of the applicant's invention but fails to specifically disclose wherein the at least one vent is positioned adjacent to the terminal end of at least one of the one or more branch lines
However, Jackson teaches similar pipe network and wherein the at least one vent (39) is positioned adjacent to the terminal end of at least one of the one or more branch lines (fig 1).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the applicant’s invention to locate the vent of Herlihy at the terminal end of the branch lines of Nakamura as modified above, in order to help vent all the gases in that particular branch line.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-11, 13, 15-27, 29 and 31-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 9,144,700 in view of Herlihy (6,513,541)
The claims of the pending application disclose all aspects of the claims of the 700’ patent except for the fact that the vent or relief valve that operates in response to pressure inside the pipe network and prevents the liquid from passing through.
However, Herlihy teaches at least one vent (fig 11) distinct from the one or more drains and positioned within the pipe network, wherein the at least one vent is configured to allow gas to escape from the pipe network through the at least one vent in response to the system pressure within the pipe network reaching a prescribed limit (fig 11, gas is leaving the vent) and not allowing gas to escape from the pipe network through the at least one vent when the system pressure has not reached the prescribed limit (fig 10), the at least one vent configured to allow gas including oxygen displaced by the nitrogen to exit the pipe network in response to the system pressure of the pipe network reaching the prescribed limit while preventing liquid from passing therethrough and out of the pipe network and maintaining the system pressure within the pipe network until the water-based fire protection system is actuated (fig 11).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the applicant’s invention to add the vent of Herlihy to the pipe network of Nakamura in order to have the valve automatically vent gas to prevent the formation of air pockets as taught by Herlihy (col 1, liens 6-10)
Claims 1-11, 13, 15-27, 29 and 31-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 9,186,533 in view of Herlihy (6,513,541)
The claims of the pending application disclose all aspects of the claims of the 700’ patent except for the fact that the vent or relief valve that operates in response to pressure inside the pipe network and prevents the liquid from passing through.
However, Herlihy teaches at least one vent (fig 11) distinct from the one or more drains and positioned within the pipe network, wherein the at least one vent is configured to allow gas to escape from the pipe network through the at least one vent in response to the system pressure within the pipe network reaching a prescribed limit (fig 11, gas is leaving the vent) and not allowing gas to escape from the pipe network through the at least one vent when the system pressure has not reached the prescribed limit (fig 10), the at least one vent configured to allow gas including oxygen displaced by the nitrogen to exit the pipe network in response to the system pressure of the pipe network reaching the prescribed limit while preventing liquid from passing therethrough and out of the pipe network and maintaining the system pressure within the pipe network until the water-based fire protection system is actuated (fig 11).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the applicant’s invention to add the vent of Herlihy to the pipe network of Nakamura in order to have the valve automatically vent gas to prevent the formation of air pockets as taught by Herlihy (col 1, liens 6-10)
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON J BOECKMANN whose telephone number is (571)272-2708. The examiner can normally be reached on M-F 9am to 5pm.
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/JASON J BOECKMANN/Primary Examiner, Art Unit 3752 7/27/2026
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