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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 19, 2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, organophosphorous 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) 1 and 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizuno et al. (US Pub. No. 2017/0002211).
Mizuno et al. teaches a composition comprising a cationic polymer in 0.01-70 g/l (0.001-7 wt%) and a phosphorus compound such as trimethyl phosphoric acid (trimethyl phosphate, organophosphorus compound) in 0.01-50 g/l (0.001-5 wt%) ([0001], [0007]-[0008], and [0012]). While Mizuno et al. does not teach the composition as a foam fire extinguishing agent, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed May 19, 2026 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. 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). A person of ordinary skill in the art would have reasonably expected any amount within the 1-50 wt% disclosed by Nakamura et al. to be suitable for the invention, including amounts from 1-2 wt%.
In response to Applicant’s arguments regarding the criticality of the claimed range, it is noted that the data cited by Applicant (Examples 12, 18, and 24) are not commensurate in scope with the claimed invention (MPEP 716.02(d)). The examples cited by Applicant utilize only a single cationic polymer (polyethyleneimine) and a single phosphorus-containing compound (resorcinol bisdiphenyl phosphate). It is not clear that the results cited would be similarly seen with any cationic polymer and any organophosphorous compound.
Applicant’s arguments regarding the combination of Nakamura et al. and Nakayama et al. or Yamanaka et al. are persuasive, and rejections base on these combinations of references have been withdrawn.
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 May 27, 2026
Prosecution Insights