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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/07/2026 has been entered.
Response to Amendment
Amendments to the claims, filed on 08/07/2026, are accepted and do not introduce new matter.
Previous 112(a) rejection of claim 37 is overcome by amendment. The claim no longer discloses the second transition temperate being between 50°C to 1000°C.
Previous objection to the specification is overcome is view of amendment to claim 37.
Previous 112(b) rejection of claim 45 is overcome by amendment. Claim 45 now correctly depends on claim 37.
Claims 29, 31-37 and 39-50 are pending; claims 1-28, 30 and 38 are cancelled; claims 49-50 are new.
Claim Rejections - 35 USC § 112
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 29, 31-37 and 39-50 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.
Independent claims 29 and 37 disclose: “wherein the internal compression stress ensures tight sealing action by maintaining pressure tightness when rising temperature tends to create a leakage path through a joint sealed by the fire seal”. This is indefinite because it includes a limitation that depends on unknown factors. By using the word “tends” it is unclear if the tight sealing action occurs all the time or not. It appears that the sealing action is reliant on a specific occurrence of a leakage path that may or may not happen, wherein the factors that create a leakage path are not known or defined. This renders the claims indefinite. Furthermore, is unclear if the “joint” is a structural part of the claimed seal or if the joint is part of the object the fire seal is meant to protect. If the latter is true, then the “joint” is not a positively recited structure of the fire seal, it is merely something the seal is used on, i.e. the joint is not part of the claimed invention. For these reasons, claims 29 and 37 are indefinite.
Claims 31-36 and 39-50 are indefinite for depending on claims 29 or 37 directly or indirectly.
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, 31-32 and 36 are, as best understood, 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), wherein the bulk material is a seal matrix-material (Examiner notes that Applicant’s specification does not provide a special definition for this term. Nonetheless, the general definition of a matrix in materials science is: a constituent of a composite material that serves to bind fiber reinforcements; wherein one of the most common matrices is Kevlar, as such Handermann teaches a bulk material that has a seal matrix); 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) wherein the internal compression stress ensures tight sealing action by maintaining pressure tightness when rising temperature tends to create a leakage path through a joint sealed by the fire seal (as best understood, since Handermann teaches all of the claimed structural features, including the a bulk material and a phase-change material made out of the same material disclosed by Applicant, the seal of Handermann is deemed capable of performing this limitation).
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, as best understood, 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, 39-44, 48 and 50 are, as best understood, 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), wherein the bulk material is a seal matrix-material (Examiner notes that Applicant’s specification does not provide a special definition for this term. Nonetheless, the general definition of a matrix in materials science is: a constituent of a composite material that serves to bind fiber reinforcements; wherein one of the most common matrices is Kevlar, as such Handermann teaches a bulk material that has a seal matrix);
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); and
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) wherein the internal compression stress ensures tight sealing action by maintaining pressure tightness when rising temperature tends to create a leakage path through a joint sealed by the fire seal (as best understood, since Handermann teaches all of the claimed structural features, including the a bulk material and a phase-change material made out of the same material disclosed by Applicant, the seal of Handermann is deemed capable of performing this limitation).
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 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).
Regarding claim 50, Handermann teaches the fire seal of Claim 37, wherein the first phase-changing material comprises particles (first phase-changing material 16 is disclosed as having particles embedded in the bulk material 12, see Par 0034 and Fig 1 of Handermann; Par 0042 discloses the particles as powders).
However, Handermann does not disclose the particles having an average particle size of less than 1 µm.
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 particle size, including less than 1 µm, 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, Handermann discloses all the general structure of the claim. Therefore, it would be obvious to find an optimal or workable particle size. Moreover, Par 0042 of Handermann discloses the particles as powders, which implies minute particle sizes. Furthermore, Applicant has not disclosed any criticality for having an average particle size of less than 1 µm. As such, this is considered an obvious design choice.
Claims 45-47 are, as best understood, 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.
Claim 49 is, as best understood, rejected under 35 U.S.C. 103 as being unpatentable over Handermann (U.S. 2014/0248814).
Regarding claim 49, Handermann teaches the fire seal of Claim 29, wherein the first phase-changing material comprises particles (first phase-changing material 16 is disclosed as having particles embedded in the bulk material 12, see Par 0034 and Fig 1 of Handermann; Par 0042 discloses the particles as powders).
However, Handermann does not disclose the particles having an average particle size of less than 1 µm.
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 particle size, including less than 1 µm, 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, Handermann discloses all the general structure of the claim. Therefore, it would be obvious to find an optimal or workable particle size. Moreover, Par 0042 of Handermann discloses the particles as powders, which implies minute particle sizes. Furthermore, Applicant has not disclosed any criticality for having an average particle size of less than 1 µm. As such, this is considered an obvious design choice.
Response to Arguments
Applicant's arguments filed 08/07/2026 have been fully considered but they are not persuasive.
Applicant argued against the prior art rejections of both independent claims 29 and 37 based in Handermann. Specifically, Applicant argues that Handermann does not describe phase-change expansion that triggers internal compression stress in a fire seal, and does not describe use of the stress to ensure tight sealing action that maintains pressure tightness against a leak-path. Examiner notes that this argument is based on the newly added limitation of “wherein the internal compression stress ensures tight sealing action by maintaining pressure tightness when rising temperature tends to create a leakage path through a joint sealed by the fire seal”, which has been deemed indefinite, as stated in the 112(b) rejection above. As such, this issue should be amended first in order to advance prosecution. Nonetheless, as stated in the rejection above, Handermann teaches all the claimed structure and the same materials that Applicant’s invention uses. Therefore, it is deemed capable of performing this function.
Applicant argues that inherency rationale applied in the rejections is not proper because Handermann teaches many other materials and Nomex and Kevlar appear to be optional materials. Applicant cites MPEP 2112 which states that a result that may occur is insufficient for inherency, and MPEP 2114 which states that an explanation is needed to support evidence that the prior art inherently possesses a functional limitation. Examiner respectfully disagrees. The claims are written with “comprising of” language, which is synonymous with "including," "containing," or "characterized by," and is inclusive or open-ended and does not exclude additional, unrecited elements or method steps (see MPEP 2111.03 I). Therefore, the fact that Handermann teaches a fire seal made with additional materials than the ones claimed, does not preclude Handermann from reading on claim language. Examiner also notes that enough explanation was provided to show that Handermann has the capability of performing the claimed functions – which is that Handermann teaches a fire seal made with the exact materials that Applicant’s invention also uses, therefore it must also function is the same way as claimed. Examiner advises that if there are any particulars in the structure or specific materials that make up the fire seal that result in the claimed functions being achieved, these should be claimed in order to differentiate from Handermann. Alternatively, Examiner advises claiming the device with transitional phrase of “consisting of” which excludes any element, step, or ingredient not specified in the claim (see MPEP 2111.03 II).
For these reasons, Examiner has maintained the current grounds of rejection.
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.
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/JUAN C BARRERA/
Examiner, Art Unit 3752
/CHEE-CHONG LEE/Primary Examiner, Art Unit 3752 September 3, 2026
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