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.
Response to Amendment
Amendments to the claims, filed on 01/21/2026, are acknowledged.
Applicant has cancelled all previous claims 1-28 and has introduced new claims 29-48.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification does not disclose the second phase-changing material having a second phase transition temperature between 50 °C and 1000 °C
Claim Interpretation
Claim limitations regarding phase transition temperatures of the first and second phase-changing material, and decomposition temperature of the bulk material are tied to the material composition used by the fire seal. Therefore, if the prior art teaches the same materials as disclosed in the specification, the prior art also teaches the limitations regarding transition temperatures and decomposition temperatures. Note that the claims are directed to a fire seal, i.e. an apparatus; they are not directed at a chemical composition. Moreover, functional limitations of the fire seal are tied to the materials in the seal. Therefore, if the prior art teaches the same materials as disclosed in the specification, the prior art is deemed capable of performing the claimed functions.
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 37-48 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.
Claim 37 discloses: “wherein the second phase-changing material has a second phase transition temperature between 50 °C and 1000 °C”. However, this range with regards to the second phase-changing material is not disclosed in Applicant’s specification, as originally filed. For this reason, it is considered new matter.
Claims 38-48 are also rejected under 112(a) for depending on claim 37.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 45-46 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 45 discloses “a first structural member”, “a second structural member”, and “the fire seal of claim 36”. However, claim 36 discloses “a fire-sealing method comprising positioning the fire seal of Claim 29 between a first structural member and a second structural member”. As such, if claim 45 depends on claim 36, the first and second structural members are already introduced, which renders the limitations of “a first structural member”, “a second structural member” as double inclusion, which makes the claim indefinite because it is unclear if there are one or more than one first structural members and second structural members. Based on disclosure and claim language, it is believed that claim 45 was intended to be dependent on claim 37, Examiner will interpret it as such.
Claim 46 is indefinite for depending on claim 45.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 29-32 and 36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Handermann (U.S. 2014/0248814).
Regarding claim 29, Handermann teaches a fire seal (composite flame barrier, see abstract and Par 0001) comprising:
a bulk material (fiber sheet material 12, made out of Nomex and Kevlar, see Par 0036. Note: Applicant discloses, in Par 0023-24 of their specification, the bulk material as a polymeric material that includes fibers such as Nomex and Kevlar) having a decomposition temperature of at least 400°C (bulk material is disclosed as a polymeric material that includes fibers such as Nomex and Kevlar - Par 0036, which is the same material used in the claimed invention – see Applicant’s specification Par 0023-24; as such, the bulk material of Handermann has a decomposition temperature of at least 400°C); and
a first phase-changing material (mineral hydrate 16) embedded within the bulk material (as disclosed in Par 0034 and seen in Fig 1), wherein expansion of the first phase-changing material due to phase change of the first phase-changing material triggers internal compression stress in the fire seal (mineral hydrate 16 is composed of magnesium chloride hexahydrate, see Par 0041. Note: Applicant discloses, in Par 0025 of their specification, that the first phase-change material is magnesium chloride hexahydrate. As such, Handermann teaches a bulk material and a first phase-changing material that are made out of the same materials disclosed by Applicant; as such, these materials have the same properties as claimed, and are deemed capable of triggering internal compression stress when the first material changes phase, as claimed).
Regarding claim 30, Handermann teaches the first seal of Claim 29 wherein the bulk material is a seal matrix-material (Par 0036 discloses the bulk material as woven fibers, which is considered a seal matrix. Note: Applicant does not provide a specific definition for what a “matrix material” is, and the claim does not further define it. As such, this is broadly claimed).
Regarding claim 31, Handermann teaches the fire seal of Claim 29 wherein the first phase-changing material has a first phase transition temperature between 50°C and 1000°C (first phase-changing material 16 is disclosed as magnesium chloride hexahydrate – Par 0041, which is the same phase-changing material used in the claimed invention – see Applicant’s specification Par 0025; as such, the phase-changing material of Handermann is deemed capable of performing this function).
Regarding claim 32, Handermann teaches the fire seal of Claim 29, further comprising an infrared-reflective coating on an outside surface of the fire seal (the seal has an outer laminar layer 20 that is disclosed as a metallic foil – Par 0038; wherein metallic foils act as infrared reflectors).
Regarding claim 36, Handermann teaches a fire-sealing method, comprising positioning the fire seal of Claim 29 between a first structural member (20a) and a second structural member (20b) (as seen in Fig 4, the fire seal is in between 20a and 20b; at least Par 0043 discloses the laminar layers 20a and 20b as polymeric or metallic films that are bonded to either side of the fire seal 12; thus they are considered structural members).
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 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Livingston et al (U.S. 2014/0262358) in view of Handermann (U.S. 2014/0248814).
Regarding claim 33, Livingston teaches a multi-member assembly (disclosed in abstract and Par 0009) comprising: a first structural member (an engine 16, see Par 0009), wherein the first structural member is an engine (Par 0009); a second structural member (a pylon 18) opposed from the first structural member (as disclosed in Par 0009 and seen in Fig 1); and a seal (crossover seal, disclosed in Par 0009) positioned between the first structural member and the second structural member (Par 0009 discloses the seal positioned between the engine and the pylon). However, Livingston does not teach the seal being a fire seal such as the one of Claim 29.
Handermann teaches the fire seal of claim 29 (see rejection above).
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 Livingston to incorporate the teachings of Handermann to provide the fire seal as disclosed in claim 29 in order to provide a fire protecting seal that is lightweight, handleable and easy to install (as disclosed in Par 0003 of Handermann), which are beneficial features in the aircraft art, such as for the aircraft engine of Livingston.
Regarding claim 34, Livingston and Handermann teach the multi-member assembly of Claim 33, wherein the second structural member is a pylon (as disclosed in Par 0009 of Livingston).
Regarding claim 35, Livingston teaches a vehicle (aircraft 10), comprising: a first structural member (engine 16) of the vehicle; a second structural member (pylon 18) of the vehicle opposed from the first structural member (as seen in Fig 1); and a seal (crossover seal, disclosed in Par 0009) positioned between the first structural member and the second structural member (Par 0009 discloses the seal positioned between the engine and the pylon). However, Livingston does not teach the seal being a fire seal such as the fire seal of Claim 29.
Handermann teaches the fire seal of claim 29 (see rejection above).
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 Livingston to incorporate the teachings of Handermann to provide the fire seal as disclosed in claim 29 in order to provide a fire protecting seal that is lightweight, handleable and easy to install (as disclosed in Par 0003 of Handermann), which are beneficial features in the aircraft art, such as for the aircraft engine of Livingston.
Claims 37-44 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Handermann (U.S. 2014/0248814) in view of Crompton (U.S. 6,616,866).
Regarding claim 37, Handermann teaches a fire seal (composite flame barrier, see abstract and Par 0001) comprising:
a bulk material (fiber sheet material 12, made out of Nomex and Kevlar, see Par 0036. Note: Applicant discloses, in Par 0023-24 of their specification, the bulk material as a polymeric material that includes fibers such as Nomex and Kevlar) having a decomposition temperature, wherein the decomposition temperature is at least 400 °C (bulk material is disclosed as a polymeric material that includes fibers such as Nomex and Kevlar - Par 0036, which is the same material used in the claimed invention – see Applicant’s specification Par 0023-24; as such, the bulk material of Handermann is deemed capable of performing this function), wherein the bulk material is fire resistant (as disclosed at least in Pars 0005 and 0041);
a first phase-changing material (mineral hydrate 16) embedded within the bulk material (as disclosed in Par 0034 and seen in Fig 1), wherein the first phase-changing material has a first phase transition temperature between 50 °C and 1000 °C (first phase-changing material is disclosed as magnesium chloride hexahydrate – Par 0041, which is the same phase-changing material used in the claimed invention – see Applicant’s specification Par 0025; as such, the phase-changing material of Handermann is deemed capable of performing this function).
However, Handermann does not teach a second phase-changing material embedded within the bulk material, wherein the second phase-changing material has a second phase transition temperature between 50 °C and 1000 °C, wherein the second phase transition temperature is different from the first phase transition temperature.
Crompton teaches a fire barrier material that is embedded with a phase-changing material in the form of tin particles (powdered tin – see col 1, line 64 to col 2, line 2. Note: Applicant discloses in Par 0030 in their specification, that the second phase-changing material is tin (Sn)); wherein the phase-changing material has a phase transition temperature between 50 °C and 1000 °C (Applicant discloses in Par 0030 and 0031 that tin has a phase change temperature of about 232°C, which is within the claimed range).
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 Handermann to incorporate the teachings of Crompton to embed the bulk material with a second phase-change material in the form of tin particles in order to melt the bulk material progressively as the temperature rises (as disclosed in see col 1, line 64 to col 2, line 2 of Crompton). This would be beneficial to the device of Handermann, since Handermann focusses on fire seals that can operate over prolonged periods of time (see Pars 0001, 0002, and 0020). In combination, the second phase transition temperature (232°C of tin) is different from the first phase transition temperature (117°C of magnesium chloride hexahydrate, as acknowledged by Applicant in Par 0030 of their own specification). Moreover, Examiner points to Claim Interpretation section above, which states that since the prior art teaches all the same materials disclosed in Applicant’s specification, it is understood it teaches the claimed temperature characteristics.
Note: references made in parenthesis hereafter are referencing Handermann, unless otherwise stated.
Regarding claim 38, Handermann and Crompton teach the first seal of Claim 37 wherein the bulk material is a seal matrix-material (Par 0036 discloses the bulk material as woven fibers, which is considered a seal matrix. Note: Applicant does not provide a specific definition for what a “matrix material” is, and the claim does not further define it. As such, this is broadly claimed).
Regarding claim 39, Handermann and Crompton teach the fire seal of Claim 37 wherein a difference between the first phase transition temperature and the decomposition temperature is at least 10 °C (the transition temperature of magnesium chloride hexahydrate, i.e. the first transition temperature, is 117°C, as acknowledged by Applicant in Par 0030 of their own specification; and the decomposition temperature of the bulk material in the form of fibers such as Nomex and Kevlar is at least 400°C, as acknowledged by Applicant in Par 0022-23 of their own specification; wherein their difference of temperatures is more than 10 °C, as claimed). Moreover, Examiner points to Claim Interpretation section above, which states that since the prior art teaches all the same materials disclosed in Applicant’s specification, it is understood it teaches the claimed temperature characteristics.
Regarding claim 40, Handermann and Crompton teach the fire seal of Claim 37 wherein a difference between the second phase transition temperature and the decomposition temperature is at least 10 °C (the transition temperature of tin, i.e. the second phase transition temperature is 232°C, as acknowledged by Applicant in Par 0030-31 of their own specification; and the decomposition temperature of the bulk material in the form of fibers such as Nomex and Kevlar is at least 400°C, as acknowledged by Applicant in Par 0022-23 of their own specification; wherein their difference of temperatures is more than 10 °C, as claimed). Moreover, Examiner points to Claim Interpretation section above, which states that since the prior art teaches all the same materials disclosed in Applicant’s specification, it is understood it teaches the claimed temperature characteristics.
Regarding claim 41, Handermann and Crompton teach the fire seal of Claim 37 wherein a difference between the first phase transition temperature the second phase transition temperature is at least 50 °C (the transition temperature of magnesium chloride hexahydrate, i.e. the first transition temperature, is 117°C, as acknowledged by Applicant in Par 0030 of their own specification; and the transition temperature of tin, i.e. the second phase transition temperature is 232°C, as acknowledged by Applicant in Par 0030-31 of their own specification; wherein their difference of temperatures is more than 50 °C, as claimed). Moreover, Examiner points to Claim Interpretation section above, which states that since the prior art teaches all the same materials disclosed in Applicant’s specification, it is understood it teaches the claimed temperature characteristics.
Regarding claim 42, Handermann and Crompton teach the fire seal of Claim 37 wherein first phase-changing material is in the form of particles embedded within the bulk material (first phase-changing material 16 is disclosed as particles embedded in the bulk material 12, see Par 0034 and Fig 1 of Handermann).
Regarding claim 43, Handermann and Crompton teach the fire seal of Claim 37 wherein second phase-changing material is in the form of particles embedded within the bulk material (the second phase-changing material is powdered tin embedded in the barrier material, i.e. bulk material – see col 1, line 64 to col 2, line 2 of Crompton).
Regarding claim 44, Handermann and Crompton teach the fire seal of Claim 37, further comprising an infrared-reflective coating on an outside surface of the fire seal (the seal has an outer laminar layer 20 that is disclosed as a metallic foil – Par 0038; wherein metallic foils act as infrared reflectors).
Regarding claim 48, Handermann and Crompton teach a fire-sealing method, comprising positioning the fire seal of Claim 37 between a first structural member (20a) and a second structural member (20b) (as seen in Fig 4, the fire seal is in between 20a and 20b; at least Par 0043 discloses the laminar layers 20a and 20b as polymeric or metallic films that are bonded to either side of the fire seal 12; thus they are considered structural members).
Claims 45-47 are rejected under 35 U.S.C. 103 as being unpatentable over Livingston et al (U.S. 2014/0262358) in view of Handermann (U.S. 2014/0248814) and Crompton (U.S. 6,616,866).
Regarding claim 45, as best understood, Livingston teaches a multi-member assembly (disclosed in abstract and Par 0009) comprising: a first structural member (an engine 16, see Par 0009), wherein the first structural member is an engine (Par 0009); a second structural member (a pylon 18) opposed from the first structural member (as disclosed in Par 0009 and seen in Fig 1); and a seal (crossover seal, disclosed in Par 0009) positioned between the first structural member and the second structural member (Par 0009 discloses the seal positioned between the engine and the pylon). However, Livingston does not teach the seal being a fire seal such as the fire seal of Claim 37.
Handermann and Crompton teach the fire seal of claim 37 (see rejection above).
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 Livingston to incorporate the teachings of Handermann and Crompton to provide the fire seal as disclosed in claim 37 in order to provide a fire protecting seal that is lightweight, handleable and easy to install (as disclosed in Par 0003 of Handermann), which are beneficial features in the aircraft art, such as for the aircraft engine of Livingston.
Regarding claim 46, Livingston, Handermann and Crompton teach the multi-member assembly of Claim 45, wherein the second structural member is a pylon (as disclosed in Par 0009 of Livingston).
Regarding claim 47, Livingston teaches a vehicle (aircraft 10), comprising: a first structural member (engine 16) of the vehicle; a second structural member (pylon 18) of the vehicle opposed from the first structural member (as seen in Fig 1); and a seal (crossover seal, disclosed in Par 0009) positioned between the first structural member and the second structural member (Par 0009 discloses the seal positioned between the engine and the pylon). However, Livingston does not teach the seal being a fire seal such as the fire seal of Claim 37.
Handermann and Crompton teach the fire seal of claim 37 (see rejection above).
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 Livingston to incorporate the teachings of Handermann and Crompton to provide the fire seal as disclosed in claim 37 in order to provide a fire protecting seal that is lightweight, handleable and easy to install (as disclosed in Par 0003 of Handermann), which are beneficial features in the aircraft art, such as for the aircraft engine of Livingston.
Response to Arguments
Applicant’s arguments with respect to claims 29-48 have been considered but are moot because the claims are new and include subject matter that has not been considered before. Applicant's amendments filed on 01/21/2026 includes a new set of claims whilst cancelling all previous claims. As such, Examiner is applying prior art to these claims for the first time herewith.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
/ARTHUR O. HALL/Supervisory Patent Examiner, Art Unit 3752
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