/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 .
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 60-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 10,850,147. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same composition including a) a comminuted foamed polymer; b) a nitrogen-containing fuel; and c) an oxidizer.
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 60, 61, 63-77 are rejected under 35 U.S.C. 103 as being unpatentable over Van Der Jagt (9227098) in view of Blount (4778844).
Regarding claims 60, 61, 63-64, Van Der Jagt discloses a fire extinguishing composition that produces an aerosol when burned to extinguish a fire. The composition includes oxidant, a fuel, and a phenol-formaldehyde resin (abstract). The components can be solid form and mixed together or wet mixed (col. 3, lines 25-30). The fuel can be guanidine salts from 10-22 % of size 40-80 micron (col. 4, lines 10-28). The oxidant is potassium nitrate from 65-75 % of size 50-150 micron (col. 3, lines 35-45 and claim 5). The composition can include additives at 5 % (col. 4, lines 28-37).
Blount teaches the addition of a filler including particles of foamed polymer (polystyrene) (col. 13, lines 40-45) to a flame retardant composition which can include oxidizers and dycandiamide (see description of component A in col. 2 and 3). Blount also refers to these compounds as the particulate or pulverulent component in col. 13, lines 24-26. Col. 7, lines 15-18 indicate that the particulate or pulverulent component is present at up to 300 %.
It would have been obvious to one having ordinary skill in the art at the time the invention was made and/or filed to add the particles of foamed polymer as taught by Blount since Blount suggests that the addition of foamed polymers can serve as a filler in a flame retardant compositions. Fillers are known for being used to reduce the amount of active ingredient needed in the composition. Both Blunt and Van Der Jagt disclose compositions for fire extinguishing which include similar compounds such as oxidizers and guanidine type compounds such as dicyandiamide, urea, etc. One of skill in the fire suppression/extinguishing art would be motivated to add the foamed polymer particles of Blunt to the composition of Van Der Jagt to provide filler which reduces the amount of active ingredient needed in the composition. The composition as taught is capable of forming gas upon ignition since the composition results in the same claimed composition. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation (i.e. “adapted for”, “capable of”, etc.). These clauses are essentially method limitations or statements of intended or desired use and do not serve to patentably distinguish the claimed structure over that of the reference. See In re Pearson, 181 USPQ 641; In re Yanush, 177 USPQ 705; In re Finsterwalder, 168 USPQ 530; In re Casey, 512 USPQ 235; In re Otto, 136 USPQ 458; Ex parte Masham, 2 USPQ 2nd 1647. The composition as taught will inherently have the temperature of combustion. Further, the temperature of combustion is an additional statement of intended use of the composition.
Regarding claim 63, Van Der Jagt discloses a polymer with a particle size of 70-120 micron (ex. 1).
Regarding claims 65-67, Van Der Jagt discloses that the fuel can be guanidine salts from 10-22 % of size 40-80 micron (col. 4, lines 10-28).
Regarding claims 68-70, Van Der Jagt discloses that the oxidant is potassium nitrate from 65-75 % of size 50-150 micron (col. 3, lines 35-45 and claim 5).
Regarding claims 71 and 72, Van Der Jagt discloses various ratios of resin to oxidizer which are the same or similar to that which is claimed. It is obvious to vary the parameters such as amounts of resin to achieve the claimed properties. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Regarding claims 73-75, Blount teaches the addition of water and aqueous processing. Compositions can be dried which will result in an intermediate that is a paste.
Regarding claims 76 and 77, Van Der Jagt discloses that the composition can include additives at 5 % (col. 4, lines 28-37).
Claims 62, 78, and 79 are rejected under 35 U.S.C. 103 as being unpatentable as applied above, and further in view of Abolins (4233199).
Regarding claims 62 and 78 (duplicate of claims 60 and 62), Abolins teaches the use of foamed polymer materials such a phenols (open cell) that are atomized or ground to act as a fire retardant material.
It would have been obvious to one having ordinary skill in the art at the time the invention was made and/or filed to substitute the ground foamed phenol materials in place of the foamed polyurethane of Blount since Abolins teaches that the ground foamed phenol materials can be used a fire retardant additive and since Blount teaches the addition of particles of foamed polyurethane that can be added to fire extinguishing equipment as a fire extinguishing agent.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it is obvious to add the particles of foamed polymer as taught by Blount since Blount suggests that the addition of foamed polymers can act to as a filler in a flame retardant composition. Fillers are known for being used to reduce the amount of active ingredient needed in the composition.
Applicant argues that the fire extinguishing compositions are used in different ways. This is not persuasive in a composition claim since the claim recites what the composition is and not how it is used.
Applicant argues that the secondary reference discloses that alkali metal nitrates are not used. First, Van Der Jagt clearly states that the oxidant can be a perchlorate which renders this argument moot. Second, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant agues the oxidizer and the dicyandiamide are not present together. This is irrelevant to the rejection as set forth which relies on Blount to teach the addition of the foamed polymer which is clearly taught by Blount.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Regarding the double patenting rejection, the patent number relied upon was inadvertently typed incorrectly 10850147. This patent is by the same inventors and is known to the applicant.
Applicant argues that the combination renders the prior art unsatisfactory for its intended purpose. There is no evidence of this allegation and the prior art provides a motivation for such a combination.
Applicant’s claims contain no amendments as alleged in the arguments and thus the double patenting rejection is not overcome.
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 AILEEN BAKER FELTON whose telephone number is (571)272-6875. The examiner can normally be reached on Monday 9-5:30, Thursday 11-3, Friday 9-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AILEEN B FELTON/Primary Examiner, Art Unit 1734
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