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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al (English machine translation of JPS61280876A).
Regarding Claim 1: Nakamura et al. teaches a foam fire extinguishing agent comprising cationic polymer in 0.1-10 wt% and a phosphate or phosphate ester (phosphorous-containing compound) in 1-50 wt% ([0001]).
Nakamura et al. does not teach the claimed range of the phosphorous-containing compound with sufficient specificity. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding Claim 3: Nakamura et al. teaches the cationic polymer as polyethyleneimine ([0001]).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (English machine translation of JPS61280876A) in view of Nakayama et al. (English machine translation of JPS5176900A).
Nakamura et al. renders obvious the composition of claim 1 as set forth above.
Nakamura et al. is silent as to the types of phosphates in the composition. However, Nakayama et al. teaches fire extinguishing compositions comprising trimethyl phosphate (Pg. 2). Nakamura et al. and Nakayama et al. are analogous art because they are concerned with the same field of endeavor, namely aqueous fire extinguishing compositions. At the time of the invention a person of ordinary skill in the art would have found it obvious to include the trimethyl phosphate of Nakayama et al. in the composition of Nakamura et al. and would have been motivated to do so because Nakayama et al. teaches that it a suitable fire extinguishing agent (Pg. 1).
Claim(s) 2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (English machine translation of JPS61280876A) in view of Yamanaka et al. (English machine translation of JP2004-18733A).
Nakamura et al. renders obvious the composition of claim 1 as set forth above.
Nakamura et al. is silent as to the types of phosphates in the composition. However, Yamanaka et al. teaches resorcinol bisdiphenyl phosphate as a flame retardant ([0129]). Nakamura et al. and Yamanaka et al. are analogous art because they are concerned with the same field of endeavor, namely fire protection compositions. At the time of the invention a person of ordinary skill in the art would have found it obvious to include the resorcinol bisdiphenyl phosphate of Yamanaka et al. in the composition of Nakamura et al. with a reasonable expectation of success and would have been motivated to do so because it is disclosed by Yamanaka et al. as being a suitable composition for extinguishing fires ([0133]).
Response to Arguments
Applicant's arguments filed November 10, 2025 have been fully considered but they are not persuasive.
Applicant argues that Nakamura et al. does not teach the specific claimed range amount of phosphorous-containing compound of 0.1-2% by mass. It is initially noted that while Nakamura et al. does teach 1-50% phosphates, the grounds and reasoning of the rejection over Nakamura et al. remains the same as the previous Office action which referred to such amount as “0.5-20 wt%.” As set forth above and in the previous Office action, even though Nakamura et al. does not teach the claimed range of the phosphorous-containing compound with sufficient specificity, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05).
With regards to Applicant’s arguments concerning the combination of Nakamura et al. and Nakayama et al., the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The weight percentages of the secondary reference are not necessarily required to be utilized in the invention of the primary reference where a explicit range is disclosed, and one of ordinary skill in the art would understand that differing amounts of a fire extinguishing agent can be utilized in differing compositions.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PETER F GODENSCHWAGER/ Primary Examiner, Art Unit 1767 February 25, 2026