DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/20/2026 has been entered.
Response to Amendment
Amendments to the claims, filed on 08/20/2026, are acknowledged.
Claims 1-6, 8-10 and 16-26 are pending; claims 16-20 are withdrawn; claims 21-26 are new, but are withdrawn by original presentation (see below).
Claims 1-6 and 8-10 are hereby examined.
Election/Restrictions
Newly submitted claims 21-26 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Independent claim 21 is directed to different device since it requires “a pigment layer disposed on at least a portion of the intumescent coating”. This is different device than the one elected by Applicant in the election filed on 09/20/2024. Furthermore, “a pigment layer” is new matter and is rejectable under 112(a) because the original specification fails to disclose a “pigment layer”, as such. The original specification discloses that a pigment can be incorporated into the intumescent coating 104 and into the support layer 102 (see Par 0052). However, the specification does not have support for a pigment layer. Examiner notes that a pigment layer is distinct from incorporating pigments into coating 104 and layer 102. For these reasons, Examiner withdraws these claims.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-26 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Wall et al (WO 2022/040794 A1) in view of Herdman et al (U.S. 2014/0076587). Note: all references regarding Wall made in parenthesis hereafter are referencing the U.S. publication equivalent Wall et al (U.S. 2023/0338757).
Regarding claim 1, Wall teaches a fire suppression device (mesh seen in Fig 2) comprising:
a non-conductive support layer (mesh 12) including a plurality of non-conductive strands (defined by weaving non-metal strands 14) arranged to form a plurality of apertures (openings 16), the plurality of non-conductive strands comprising a thermally non-conductive material (Par 0021 discloses the strands made out of basalt, fiberglass, etc.; which are thermally non-conductive as acknowledged by Applicant’s own specification in Pars 0009 and 0010); and
an intumescent coating (18) disposed on at least a portion of the plurality of non-conductive strands (as seen in Fig 3 and disclosed in Par 0028), the intumescent coating configured to expand to at least partially close a portion of the plurality of apertures upon the intumescent coating being heated to a temperature greater than or equal to a threshold temperature (as disclosed in Par 0005); the threshold temperature indicative of a fire (Par 0036 discloses the mesh including the intumescent coating; and Par 0037 discloses the mesh “sealing”, i.e. closing the apertures, in the event of a “fire”; as such, it is clear from this disclosure that the threshold temperature, i.e. the temperature that causes the intumescent coating to close the apertures, is a temperature that is indicative of a fire).
However, Wall does not teach the device comprising a pigment applied to the non-conductive support layer and configured to render the fire suppression device a first color; wherein the pigment comprises a temperature-sensitive pigment configured to change the fire suppression device from the firs color to a second color upon the intumescent coating being heated to the temperature greater than or equal to the threshold temperature; and wherein the intumescent coating is applied after the pigment.
Herdman teaches a fire retardant device for protecting structures from fire comprising a fibrous matrix and a fire-retardant composition applied to the matrix (as disclosed by abstract), wherein the device comprises a pigment that is temperature-sensitive (see Par 0061); wherein the pigment renders the device a first color (gray) and then after exposure to fire the device changes from the first color to a second color (darked/charred color) (as disclosed in Par 0061).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wall to incorporate the teachings of Herman to provide the support layer with a pigment that is a temperature-sensitive pigment in order to change color after exposure to fire which serves as an indication to utility personnel that the device has been exposed to flame and that the fire suppression device as well as the device it is protecting may have suffered damage (as disclosed in Par 0072 of Herdman). Examiner notes that both Wall and Herdman teach fire suppression compositions for utility poles (see Par 0002 of Wall and Par 0072 of Herdman). Wall teaches that the intumescent coating changes phase, from a solid (see Par 0040) to a non-solid state in which the coating swells in order to close the apertures after a threshold temperature is reached (see Par 0005). That is, a phase-change in the art of intumescent materials corresponds to a temperature threshold being reached. As such, in combination, Wall and Herdman teach a color change (as taught by Herdman), which represents an indication that the device was heated to the threshold temperature (as taught by Wall).
Regarding the limitations of the pigment applied to the non-conductive layer and the intumescent coating disposed on the non-conductive strands (i.e. applied non-conductive layer) being applied after the pigment, Examiner notes that this limitation reads a step in a process of making/manufacturing the device, wherein determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (MPEP 2113). Therefore, the process of making the device does not have any patentable weight, since Wall and Herdman teach all the structure of the device. Nonetheless and furthermore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to arrange the pigment such that it is applied to the support layer and the intumescent coating is applied after the pigment, since it has been held that rearranging parts of an invention involves only routine skill in the art. As it was determined in In re Japikse, where the court found that rearrangement of parts is unpatentable if the modification would not have modified the operation of the device (see MPEP 2144.04 VI C). In the present case, rearranging the placement of the coating with respect to the pigment of the prior art would not change how the device operates. Furthermore, Applicant fails to teach any criticality to having the claimed arrangement. In fact, Applicant discloses in Par 0052 of their specification, that “the pigment can be applied to the support layer 102 before and/or after the intumescent coating 104 is applied”. Therefore, Applicant acknowledges that the order in which the pigment is applied with respect to the support layer and the intumescent coating does not affect how the device works; as such, this is considered an obvious design choice. Examiner notes that Herdman teaches the pigment applied to the fire suppression device as a whole (Par 0061) wherein the fire suppression device comprises a fibrous matrix (i.e. a support layer) and a fire-retardant composition coated to the matrix (Par 0070). Therefore, much like Applicant’s invention (as stated in Par 0052 of Applicant’s specification), the pigment of Herdman is applied to either or both structural features of the device.
Note: All references made in parenthesis hereafter are referencing Wall, unless otherwise stated.
Regarding claim 2, Wall and Herdman teach the fire suppression device of Claim 1, wherein the plurality of non-conductive strands comprises basalt fiber (as disclosed in Par 0021).
Regarding claim 3, Wall and Herdman teach the fire suppression device of Claim 1, wherein the plurality of non-conductive strands comprises at least one of carbon fiber, glass fiber, aramid, fiberglass, and quartz fiber (as disclosed in Par 0021).
Regarding claim 4, Wall and Herdman teach the fire suppression device of Claim 1, wherein the plurality of non-conductive strands comprises a first non-conductive composition and a second non-conductive composition, the first non-conductive composition being different than the second non-conductive composition (Par 0022 discloses the strands made out of a blend of suitable acrylic copolymers, thermoset polymers, etc. As such, it comprises at least two distinct non-conductive compositions, as claimed).
Regarding claim 5, Wall and Herdman teach the fire suppression device of Claim 1. However, Wall does not explicitly teach the device wherein each aperture of the plurality of apertures has a predetermined height and a predetermined width, the predetermined height being greater than or equal to 3.25 mm and less than or equal to 4.25 mm, wherein the predetermined width is greater than or equal to 3.25 mm and less than or equal to 4.25 mm.
it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select any suitable aperture height and width, including greater than or equal to 3.25 and less than or equal to 4.25 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves routine skill in the art. As it was determined in In re Aller: "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 II A). In the present case, Wall discloses all the general structure of the claim and discloses (Par 0004) a range of height and width being in between about 0.18 to 0.32 inches in width and height - wherein 0.18 inches is 4.57 mm, which is close to the claimed range. That is Wall, recognizes the importance of aperture size. Therefore, it would be obvious to find an optimal or workable aperture height and width. Furthermore, Applicant has not disclosed any criticality for having the claimed aperture height and range. In fact, the Applicant’s specification discloses the range of the aperture height and width as being between 3.25 mm to 4.75 mm – see Par 0046, which is a range that Wall clearly anticipates. In other words, the claim was amended to claim a range that falls right outside the range that Wall teaches, but the claimed range as amended does not have any criticality disclosed in the Specification. Finally, changes in aperture height and width affect the characteristics of the fire suppression device and how it functions, i.e. aperture cross-section is a result-effective variable. Therefore, it would be obvious to try (see KSR MPEP 2141 III) different aperture sizes to meet any desired fire suppression characteristic, based on the intended environment the device is placed in.
Regarding claim 6, Wall and Herdman teach the fire suppression device of Claim 1. However, Wall does not explicitly teach the device wherein a predetermined amount of intumescent coating is disposed on at least a portion of the plurality of non-conductive strands, the predetermined amount being greater than or equal to 0.08 and less than or equal to 0.20 pounds per square foot of the support layer.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select any suitable amount of intumescent coating, including 0.08 to 0.20 pounds per square foot of the support layer, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves routine skill in the art. As it was determined in In re Aller: "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 II A). In the present case, Wall discloses all the general structure of the claim. Therefore, it would be obvious to find an optimal or workable amount of intumescent material per square foot of support layer. Furthermore, Applicant has not disclosed any criticality for having the predetermined amount being between approximately 0.08 and approximately 0.20 pounds per square foot of the support layer. Finally, changes in the amount of intumescent coating affect the characteristics of the fire suppression mesh, i.e. the amount of intumescent material is a result-effective variable (Wall recognizes this in Par 0041 and Applicant also recognizes this in Par 0049 of their specification). Therefore, it would be obvious to try (see KSR MPEP 2141 III) different amounts of intumescent coating to meet any desired fire protection characteristic, based on the object to be protected and the intensity of the fire that can be present in its environment.
Regarding claim 8, Wall and Herdman teach the fire suppression device of Claim 1. However, Wall does not teach the threshold temperature being greater than or equal to 280°F and less than or equal to 300°F.
Nonetheless, Wall discloses that the activation temperature of the intumescent coating being 520°F, but could be lower by modifying the composition of the intumescent material (see Par 0028). As such, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select any suitable temperature threshold for the intumescent coating, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves routine skill in the art. As it was determined in In re Aller: "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 II A). In the present case, Wall discloses all the general structure of the claim. Therefore, it would be obvious to find an optimal or workable temperature threshold. Furthermore, Applicant has not disclosed any criticality for having the temperature threshold between 280°F and 300°F. Finally, changes in the activation temperature threshold for the intumescent material is a result-effective variable (Wall recognizes this in Pars 0029-0033). Therefore, it would be obvious to try (see KSR MPEP 2141 III) different threshold temperatures to meet any desired fire protection characteristic, based on the object to be protected and the ideal target temperature or maximum temperature the object should be exposed to.
Regarding claim 9, Wall and Herdman teach the fire suppression device of Claim 1, wherein the intumescent coating expands to form a char layer (see Par 0027) of a predetermined thickness, the predetermined thickness being greater than or equal to 10 mm and less than or equal to 30 mm (Examiner notes that char layer is not positively recited, instead the intumescent coating is configured to expand to form the char layer. That is, the char layer and its thickness is a result of the composition of the intumescent coating. Therefore, since Wall teaches every claimed aspect of the intumescent coating, including a char-forming component - Par 0027, the intumescent coating is deemed capable of producing a layer thickness of 10 to 30 mm).
Regarding claim 10, Wall and Herdman teach the fire suppression device of Claim 1, wherein the intumescent coating expands (i) outwardly toward a source of heat; (ii) inwardly away from the source of heat; and (iii) laterally to at least partially close at least a portion of the plurality of apertures (as seem in Figs 4A, the intumescent coating 18 expands in 360 degrees from the fibers; the mesh being a three-dimensional object, the coating expands towards the fire, away from the fire, and sideways, as claimed).
Response to Arguments
Applicant’s arguments with respect to claims 1-6 and 8-10 have been considered but are moot because the arguments do not apply in view of new grounds of rejection. Applicant's amendments filed on 08/20/2026 have resulted in the new grounds of rejection found above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUAN C BARRERA whose telephone number is (571)272-6284. The examiner can normally be reached on M-F Generally 10am-4pm and 6-8pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARTHUR O. HALL can be reached on 571-270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If there are any inquiries that are not being addressed by first contacting the Examiner or the Supervisor, you may send an email inquiry to TC3700_Workgroup_D_Inquiries@uspto.gov.
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/JUAN C BARRERA/
Examiner, Art Unit 3752
/CODY J LIEUWEN/Primary Examiner, Art Unit 3752
