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 .
Response to Amendment
The response filed on March 12th 2026 is acknowledged. Five pages of amended claims were received on 3/12/2026. Claims 1, 6, 10, 14, and 17-19 have been amended. Claims 20 and 21 are newly presented. Claims 4 and 16, which were previously withdrawn from consideration, have been cancelled. The claims have been amended to overcome previous claim objections and previous rejections under 35 U.S.C. 112(b) in the non-final rejection mailed 9/12/2025. Claim 21 is now objected to and Claims 1-3, 5-13, 15, and 17-19 remain rejected under 35 U.S.C. 103 as noted below.
Claim Objections
Claim 21 is objected to because of the following informalities:
In Claim 21 Line 2, “providing wildfire containment barrier apparatus” should be revised to “providing a wildfire containment barrier apparatus” to ensure proper grammar.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
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 1-3, 5-13, 15, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 2010/0294520 A1 to Aguirre (“Aguirre”) in view of US PGPUB 2018/0318908 A1 to Stergioulas (“Stergioulas”).
As to Claim 1, Aguirre discloses a wildfire containment method for containing wildfires in an external environment (See Fig. 3), the method including a step of providing wildfire containment barrier apparatus (#200), the apparatus comprising a plurality of elongate barrier members (#210), each barrier member comprising:
an interior (See fabric #510 in Fig. 7, which per Paragraph 0044 is fibrous and thus has some interior between fibers, and forms an interior between #511 and #512);
an inlet arrangement, through which air can enter the interior (See Fig. 3 and Fig. 7 and Paragraph 0044, the fabric has must have some holes equivalent to inlets through which some amount of air can pass in);
an outlet arrangement, through which air can exit from the interior (See Fig. 3 and Fig. 7 and Paragraph 0044, the fabric has must have some holes equivalent to outlets through which some amount of air can pass out),
the method including arranging the apparatus, so that, in an installed condition,
each barrier member abuts at least one adjacent barrier member (See Fig. 3);
each barrier member extends along a longitudinal axis (See Fig. 3, a longitudinal axis can be considered an upwards direction),
each barrier member includes a metal wall (See Fig. 7 and Paragraph 044 disclosing a metal film #511),
each wall defines the interior of the respective barrier member (See Fig. 7, the interior is between #511 and #512); and
the wall of each barrier member defines an array of through holes with at least some of the holes of the array forming the inlet arrangement (See Fig. 7, since the fabric #510 is fibrous, it has some amount of through holes that form the inlet arrangement, which are partially defined based on placement of #511);
wherein, the method includes the step of installing the barrier members with the longitudinal axis of each barrier member extending generally upwardly, with each barrier member including an upper end and a lower end (See Fig. 3 and Paragraph 0041),
wherein, in the installed condition, the apparatus in contact with a ground surface of the external environment (See Fig. 3 and Paragraph 0041); and
wherein the inlet arrangement is located at or towards the lower end and the outlet arrangement is located at or towards the upper end (See Fig. 3 and Fig. 7. The inlet arrangement is located at the lower end and the upper end, and the outlet arrangement is also located at both the lower end and the upper end).
Regarding Claim 1, Aguirre does not specifically disclose wherein the barrier members are hollow (See Figs. 3 and 7. The barrier members do not appear to be hollow).
However, Stergioulas discloses, in the same field of endeavor of fire extinguishing (See Paragraphs 0046 and 0052), a fire containment barrier apparatus (See Fig. 11 showing multiple rolls #104 arranged together in a container #106), the apparatus comprising a plurality of elongate, hollow barrier members (#104, which has a hollow interior portion at #124 and in space contained within the barrier member outer wall formed by a single layer of mesh as shown in Annotated Fig. 6), each barrier member comprising: an interior (See an interior within an external layer of #100 in Annotated Fig. 6); an inlet arrangement, through which air can enter the interior (See holes on a “hot side” of #100 in Annotated Fig. 6 and see apertures #110 in Fig. 1a); an outlet arrangement, through which air can exit from the interior (See holes on a “cold side” of #100 in Annotated Fig. 6 and see apertures #110 in Fig. 1a), wherein in an installed condition, each barrier member abuts at least one adjacent barrier member (See Fig. 11); each barrier member extends along a longitudinal axis (See Annotated Fig. 6 and Fig. 11), each barrier member includes a metal wall (#100, See Paragraph 0042 and See Annotated Fig. 6 showing the metal wall as an outer layer of rolled mesh), each wall defines the interior of the respective barrier member (See Annotated Fig. 6); the wall of each barrier member defines an array of through holes with at least some of the holes of the array forming the inlet arrangement (See Fig. 1a, Fig. 1b, and Annotated Fig. 6); wherein the barrier members are installed with the longitudinal axis of each barrier member extending generally upwardly (See Annotated Fig. 6 and Fig. 11), with each barrier member including an upper end and a lower end (See Fig. 6), wherein, in the installed condition, the apparatus in contact with a ground surface of an environment (See Fig. 6 and Fig. 11), wherein the inlet arrangement is located at or towards the lower end and the outlet arrangement is located at or towards the upper end (See Annotated Fig. 6 and Fig. 11. The inlet arrangement is located at the lower end and the upper end, and the outlet arrangement is also located at both the lower end and the upper end).
Therefore, it would have been obvious to one of ordinary skill of the art before the effective filing date of the claimed invention to modify the method of Aguirre as applied to Claim 1 above to use the apparatus of Stergioulas in place of the apparatus of Aguirre while installing the barrier members of Stergioulas in place of the barrier members of Aguirre, since doing so would utilize substitution of known components to yield the predictable result of preventing spread of fire (See Stergioulas Paragraph 0046) while also being able to prevent explosions (See Stergioulas Paragraph 0077).
As to Claim 2, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 1 above, Stergioulas further discloses in which, in use, the inlet arrangement permits air to enter the interior from a hot side of the apparatus where a fire is located or from both the hot side where a fire is located and a cold side (See Annotated Fig. 6, a fire can be located at any side of the apparatus such that air can enter the interior from any side of the apparatus regardless of where the fire is located, including both the hot side and the cold side).
As to Claim 3, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 1 above, Stergioulas further discloses in which some of the holes of the array comprise the outlet arrangement, and/or each barrier member defines an end opening at the upper end which comprises the outlet arrangement (See Annotated Fig. 6 and Paragraph 0045, multiple holes of the array comprise the outlet arrangement that allows air to exit the interior.).
As to Claim 5, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 1 above, Stergioulas further discloses in which, in an uninstalled condition, each barrier member is open at both ends (See Fig. 6. When a barrier member is uninstalled, it can be moved from one location to another with both ends being open).
As to Claim 6, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 1 above, Aguirre as modified by Stergioulas further discloses in which, in the installed condition, each barrier member is closed at its lower end by the ground surface (See Aguirre Fig. 3 and See Stergioulas Fig. 11. When the barrier members of Stergioulas are used in the method of Aguirre, the barrier members will be closed at their lower end by the ground surface of Aguirre).
As to Claim 7, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 1 above, Stergioulas further discloses in which each barrier member wall is predominantly formed of a single layer of material (See Annotated Fig. 6, the barrier member wall can be considered the external wall formed by one revolution of the rolled mesh, which is made up of one layer of the rolled mesh).
As to Claim 8, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 1 above, Stergioulas further discloses in which each barrier member wall is seamless, and is formed as a tube (See Annotated Fig. 6, each barrier member wall is one uninterrupted layer of the rolled mesh which is rolled to form a tube structure).
As to Claim 9, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 1 above, Stergioulas further discloses in which each barrier member comprises a sheet of material (See #132 in Fig. 6, which per Paragraph 0050 can be made from a strip of mesh sheet #100) having two side edges or two side edge portions, which is formed so that the two side edges butt against each other or the two edge portions overlap each other, each barrier member including one or more edge fixings which fix the side edges or the side edge portions together (See Paragraph 0050 disclosing edges of #132 being welded together, thus the edges of #132 either overlap or butt against each other. A weld is equivalent to an edge fixing).
As to Claim 10, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 1 above, Aguirre as modified by Stergioulas further discloses in which, in the installed condition, each barrier member is free-standing, with the respective lower end located in the ground surface (See Aguirre Fig. 3, Aguirre Annotated Fig. 6, and Stergioulas Fig. 11. When the barrier members of Stergioulas are used in the method of Aguirre, the barrier members will be free-standing and will have at least a portion of their lower ends placed on the ground surface of Aguirre such that they put a force on the ground surface resulting in at least a portion of the lower ends being in the ground surface).
As to Claim 11, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 1 above, Aguirre as modified by Stergioulas further discloses in which the apparatus includes a plurality of support members (See Annotated Fig. 6 of Stergioulas, inner layers of the rolled mesh are equivalent to support members which at least provide a level of support to the barrier members as a whole) which, in the installed condition, support the barrier members (See Fig. 11 of Stergioulas, inner layers of the rolled mesh support the barrier members as a whole by providing mass at a center of the barrier members) and which, in the installed condition, engage the ground surface to anchor the apparatus to the ground surface (See Aguirre Fig. 3, Aguirre Annotated Fig. 6, and Stergioulas Fig. 11. When the barrier members of Stergioulas are used in the method of Aguirre, the barrier members will be free-standing and will have at least a portion of their lower ends placed on the ground surface of Aguirre such that support members that are inner layers of the rolled mesh put a force on the ground surface resulting in at least a portion of the support members engaging with the ground surface due to gravitational force).
As to Claim 12, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 11 above, Stergioulas further discloses in which, in the installed condition, an upper part of each support member is located in the interior of a respective one of the barrier members (See Annotated Fig. 6, an upper part of each inner layer of the rolled mesh is located in the interior of the barrier member which is formed by the outer barrier member wall).
As to Claim 13, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 11 above, Stergioulas further discloses in which the apparatus includes one or more assembly fixings (See one assembly fixing #106 in Fig. 11), wherein each assembly fixing fixes one barrier member to the adjacent abutting barrier member (See Fig. 11, the container #106 that each barrier member is stored in contains each barrier member in place and fixes each barrier member adjacent to each other in the space within #106).
As to Claim 15, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 1 above, Stergioulas further discloses wherein the barrier members are arranged in one or more rows (See Fig. 11 showing multiple rows).
As to Claim 18, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 1 above, Stergioulas further discloses in which the apparatus comprises a barrier module (See Container #106 with barrier members #104 in Fig. 11), the barrier module comprising a plurality of the barrier members (#104) and a frame (#106), wherein the barrier members are located in the frame for storage, transportation and installation (See Fig. 11, the barrier members #104 can be stored and transported in #106 for future installation in the method of Aguirre).
As to Claim 19, Aguirre discloses a wildfire containment barrier apparatus for containing wildfires in an external environment (See #200 in Fig. 3), the apparatus comprising a plurality of elongate barrier members (#210), each barrier member comprising:
an interior (See fabric #510 in Fig. 7, which per Paragraph 0044 is fibrous and thus has some interior between fibers, and forms an interior between #511 and #512);
an inlet arrangement, through which air can enter the interior (See Fig. 3 and Fig. 7 and Paragraph 0044, the fabric has must have some holes equivalent to inlets through which some amount of air can pass in);
an outlet arrangement, through which air can exit from the interior (See Fig. 3 and Fig. 7 and Paragraph 0044, the fabric has must have some holes equivalent to outlets through which some amount of air can pass out),
each barrier member abutting at least one adjacent barrier member (See Fig. 3);
each barrier member extending along a longitudinal axis (See Fig. 3, a longitudinal axis can be considered an upwards direction),
each barrier member including a metal wall (See Fig. 7 and Paragraph 044 disclosing a metal film #511),
each wall defining the interior of the respective barrier member (See Fig. 7, the interior is between #511 and #512);
the wall of each barrier member defines an array of through holes with at least some of the holes of the array forming the inlet arrangement (See Fig. 7, since the fabric #510 is fibrous, it has some amount of through holes that form the inlet arrangement, which are partially defined based on placement of #511);
the longitudinal axis of each barrier member extending generally upwardly, each barrier member including an upper end and a lower end (See Fig. 3 and Paragraph 0041), and
wherein the inlet arrangement is located at or towards the lower end and the outlet arrangement is located at or towards the upper end (See Fig. 3 and Fig. 7. The inlet arrangement is located at the lower end and the upper end, and the outlet arrangement is also located at both the lower end and the upper end).
Regarding Claim 19, Aguirre does not specifically disclose wherein the barrier members are hollow (See Figs. 3 and 7. The barrier members do not appear to be hollow).
However, Stergioulas discloses, in the same field of endeavor of fire extinguishing (See Paragraphs 0046 and 0052), a fire containment barrier apparatus (See Fig. 11 showing multiple rolls #104 arranged together in a container #106), the apparatus comprising a plurality of elongate, hollow barrier members (#104, which has a hollow interior portion at #124 and within the barrier member outer wall formed by a single letter of mesh as shown in Annotated Fig. 6), each barrier member comprising: an interior (See an interior within an external layer of #100 in Annotated Fig. 6); an inlet arrangement, through which air can enter the interior (See holes on a “hot side” of #100 in Annotated Fig. 6 and see apertures #110 in Fig. 1a); an outlet arrangement, through which air can exit from the interior (See holes on a “cold side” of #100 in Annotated Fig. 6 and see apertures #110 in Fig. 1a), wherein in an installed condition, each barrier member abuts at least one adjacent barrier member (See Fig. 11); each barrier member extends along a longitudinal axis (See Annotated Fig. 6 and Fig. 11), each barrier member includes a metal wall (#100, See Paragraph 0042 and See Annotated Fig. 6 showing the metal wall as an outer layer of rolled mesh), each wall defines the interior of the respective barrier member (See Annotated Fig. 6); the wall of each barrier member defines an array of through holes with at least some of the holes of the array forming the inlet arrangement (See Fig. 1a, Fig. 1b, and Annotated Fig. 6); wherein the barrier members are installed with the longitudinal axis of each barrier member extending generally upwardly (See Annotated Fig. 6 and Fig. 11), with each barrier member including an upper end and a lower end (See Fig. 6), wherein, in the installed condition, the apparatus in contact with a ground surface of an environment (See Fig. 6 and Fig. 11), wherein the inlet arrangement is located at or towards the lower end and the outlet arrangement is located at or towards the upper end (See Annotated Fig. 6 and Fig. 11. The inlet arrangement is located at the lower end and the upper end, and the outlet arrangement is also located at both the lower end and the upper end).
Therefore, it would have been obvious to one of ordinary skill of the art before the effective filing date of the claimed invention to modify the apparatus of Aguirre as applied to Claim 19 above to use the barrier members of Stergioulas in place of the barrier members of Aguirre, since doing so would utilize substitution of known components to yield the predictable result of preventing spread of fire (See Stergioulas Paragraph 0046) while also being able to prevent explosions (See Stergioulas Paragraph 0077).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Aguirre in view of Stergioulas and US PGPUB 2013/0284464 A1 to Koban et al. (“Koban”).
As to Claim 17, in reference to the method of Aguirre in view of Stergioulas as applied to Claim 1 above, Stergioulas further discloses in which each barrier member is substantially circular or polygonal in cross section shape and has a maximum cross section dimension, which is a diameter or a diagonal (See Annotated Fig. 6, each barrier member is circular in cross section shape and has a maximum cross section diameter A); wherein the maximum cross-section dimension is an external dimension (See Annotated Fig. 6).
Regarding Claim 17, Stergioulas does not disclose wherein the maximum cross-section dimension is no more than 70 mm (See Paragraph 0088 disclosing that the diameter can be greater than 60 cm which is more than 70 mm).
However, Stergioulas further discloses wherein the diameter each barrier member can be selected based on the size and configuration of the area where the barrier members are being placed (See Paragraph 0088).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Aguirre in view of Stergioulas as applied above such that the maximum cross-section dimension of each barrier member is no more than 70 mm, since doing so would yield the predictable result of having the barrier members sized appropriately for a particular area where a fire may occur.
Regarding Claim 17, in reference to the method of Aguirre in view of Stergioulas as applied above, Stergioulas does not specifically disclose wherein for each barrier member, the array provides a total open area, which is a sum of areas of all of the array, and, in which, for each barrier member, an open area portion of a total open area to a total area of a wall surface of the barrier member is at least 10%, and is no more than 95%; wherein, in use, the barrier members are either arranged in one or more rows with the open area proportion of each barrier member being 65% and lower, or are arranged in two or more rows with the open area proportion being greater than 65% and less than 95% (See Fig. 11 showing multiple rows of barrier members. Paragraph 0039 discloses a spacing of 2 to 3 mm between holes, however a specific percentage of total open area to total area of the wall surface is not disclosed).
However, Koban discloses, in the same field of endeavor of fire extinguishing (See Paragraph 0001) a barrier member (See Fig. 3), wherein for each barrier member, an array of holes provides a total open area, a proportion of the total open area to a total area of an external surface of a wall is between 10% and 95% (See Col. 4 Lines 24-34 which discloses that the mesh has a total open area percentage of 63% or less and a preferable open area percentage of 56% or less, so if the proportion is 56%, then it is between 10% and 95%).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention such that for each barrier member, the array provides a total open area, which is a sum of areas of all of the array, and, in which, for each barrier member, an open area portion of a total open area to a total area of a wall surface of the barrier member is at least 10%, and is no more than 95%; wherein, in use, the barrier members are either arranged in one or more rows with the open area proportion of each barrier member being 65% and lower, or are arranged in two or more rows with the open area proportion being greater than 65% and less than 95%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. See MPEP 2144.05.II. The Examiner notes that a particular parameter must be recognized as a result effective variable, in this case, that parameter is a proportion of the total open area to a total area of a wall surface of the barrier member, which achieves the recognized result of effectively reducing propagation of flames (See Koban Paragraph 0024), therefore, one of ordinary skill in the art at the filing date of the invention would have found the claimed range through routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See also In re Boesch, 617 F.2d 272, USPQ 215 (CCPA 1980). No criticality is apparent for the claimed range (See Paragraph 0125 of Applicant’s Specification which states “Thus, according to these preliminary results, the barrier members could be arranged in one or more rows when the open area proportion of each barrier member is approximately 65% and lower, and could be arranged in two or more rows when the open area proportion is greater than 65% and less than 95%. However, rather than these results being limiting to the scope of the invention, they are presented to demonstrate that, in principle, the barrier members of the invention can be used in wildfire containment”).
PNG
media_image1.png
482
618
media_image1.png
Greyscale
Allowable Subject Matter
Claim 20 and 21 are allowed.
The following is an examiner’s statement of reasons for allowance:
The prior art fails to teach, disclose, or suggest, in combination with other limitations recited in independent Claims 20 and 21: “wherein the or some of the assembly fixings locate through the holes of the array”.
Claim 14 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.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach, disclose, or suggest, in combination with other limitations recited in dependent Claim 14: “in which one or more assembly fixing locate through the holes of the array”.
Regarding Claims 14, 20, and 21, in reference to the prior art of Aguirre in view of Stergioulas as applied above, Stergioulas does not disclose any fixings through holes of the array (See Figs. 3, 6, and 11, the holes #110 in the array do not have any fixings located through them, and when the holes #110 are formed on an exterior layer on #100 of #104, the holes #110 are not specifically shown with any space for fixings to be attached). One having ordinary skill in the art before the effective filing date of the claimed invention would not be motivated to reconfigure the prior art of Aguirre in view of Stergioulas as applied above such that one or more fixings locate through the holes of the array of Stergioulas as required by independent Claim 20, independent Claim 21, and dependent Claim 14, as such a modification would require reconfiguration of the barrier members of Stergioulas and there is no prior teaching in Aguirre, Stergioulas, or other prior art that indicates that making such a further modification would be an obvious design choice without utilizing improper hindsight.
Response to Arguments
Applicant's arguments filed 3/12/2026 have been fully considered but they are not persuasive.
Regarding independent Claims 1 and 19 being rejected under 35 U.S.C. 103, applicant argues that Aguirre's element #210 is a flat, fire-resistant sheet fabric material and is not a hollow elongate barrier member, and that Aguirre's fire shield system operates by blocking and reflecting radiant heat, not by directing air flow through hollow perforated members. Applicant further argues that there is no disclosure of use of the Stergioulas mesh sheet in an uncontained situation, such as an outdoor wildfire situation, and that a skilled person, starting from Aguirre Fig. 3, may consider incorporating the Stergioulas mesh sheet 100 into the structure of the Aguirre fire shield material 210 of Aguirre Fig. 3 to provide enhanced fire retardant or fire inhibition functionality, but that Stergioulas provides no motivation to replace the Aguirre fire shield material 210 with the Stergioulas mesh sheet 100. Applicant further argues that even if the Aguirre fire shield material 210 was replaced with the Stergioulas mesh sheet 100, this would not result in the structure of the claimed invention, and that the skilled person would have no motivation to look at the Stergioulas mesh roll embodiments, since there is no disclosure in Stergioulas that these provide any advantage over the sheet form 100 and there is no disclosure of use of the mesh roll in a wall container. Applicant argues that there is no disclosure in Stergioulas of the use of the Stergioulas mesh roll 104 in an uncontained condition, or in contact with a ground surface, or with airflow therethrough. Applicant argues that #124 of Stergioulas does not designate a defined hollow interior of a barrier member in any functional sense and that it merely identifies an edge of the mesh sheet that happens to be located at the center of the wound roll, and that apertures #110 of Stergioulas do not function to direct air flow through a wildfire barrier. Applicant argues that there is no disclosure in Stergioulas that the apertures serve as inlet arrangements through which air enters the interior or outlet arrangements through which air exits from the interior in any directional manner.
Applicant additionally argues that the substitution rationale is improperly applied because Stergioulas's mesh rolls are not known wildfire barrier members but are fuel tank inserts for explosion suppression, and that substituting a flat, fire-resistant sheet material designed to block radiant heat in an open wildfire environment with wound rolls of expanded metal mesh designed to suppress detonation inside enclosed fuel containers is not a simple substitution of equivalent components, because the two components serve fundamentally different functions in fundamentally different technical contexts. Applicant also argues that there is no basis to predict that mesh rolls designed for placement inside fuel tanks would function as effective wildfire containment barriers when stood upright in an external environment. Applicant states that the operating principles of Aguirre and Stergioulas are different and that the proposed combination of Aguirre and Stergioulas requires extracting mesh rolls from a fuel container application and repurposing them as standalone upright wildfire barriers which requires impermissible hindsight reasoning guided by the applicant's own disclosure. Applicant also argues that neither Aguirre nor Stergioulas teach an inlet arrangement being located at or towards the lower end and the outlet arrangement being located at or towards the upper end of each barrier member.
These arguments are not found persuasive. The claimed invention need not be expressly suggested in any one or all of the references. Rather, the test for obviousness is what the combined teachings of the applied references, taken as a whole, would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) and In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Regarding the prior art of Aguirre, in response to Applicant's piecemeal analysis of the references, one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references. The above rejection under 35 U.S.C. 103 characterizes #210 of Aguirre as a plurality of elongate barrier members, but does not state that the barrier members of Aguirre are hollow. Aguirre is modified by Stergioulas to use the hollow barrier members of Stergioulas.
Regarding the modification of Aguirre with the barrier members of Stergioulas, a prima facie case of obviousness is established by presenting evidence indicating that the reference teachings would appear to be sufficient for one of ordinary skill in the relevant art having those teachings before him to make the proposed combination or other modification. See In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972). The law does not require that references be combined for the reasons contemplated by the inventor as long as some motivation or suggestion to combine them is provided by the prior art taken as a whole. In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992). As to the desirability of the modification, the proper inquiry is “whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination,’ not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” In re Fulton, 391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004). In response to Applicant's argument that there is no suggestion to combine the references, the Examiner recognizes that references cannot be arbitrarily combined and that there must be some reason why one skilled in the art would be motivated to make the proposed combination of primary and secondary references. In re Nomiya, 184 USPQ 607 (CCPA 1975).
While Stergioulas is not specifically used in wildfire applications, Stergioulas is still utilized in the field of fire extinguishing. 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 judgement 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. In re McLaughlin, 443 F.2d 1392; 170 USPQ 209 (CCPA 1971). Replacing the barrier members of Aguirre with the barrier members of Stergioulas would yield the predictable benefit of preventing spread of fire (See Stergioulas Paragraph 0046) while also being able to prevent explosions (See Stergioulas Paragraph 0077), therefore regardless of the differences between Aguirre and Stergioulas, one of ordinary skill in the art would be motivated to modify Aguirre with Stergioulas to yield the claimed invention without utilizing improper hindsight.
Regarding applicant’s additional arguments, in accordance with MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004). Furthermore, when the prior art fails to disclose a functional limitation, the examiner may be able to rely on the theory of inherency. See: MPEP §2112. In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. See: MPEP §2112 IV; Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). Claims 1 and 19 require “an inlet arrangement, through which air can enter the interior; an outlet arrangement, through which air can exit from the interior”. The barrier members of Stergioulas can be considered hollow since they have an unfilled space within them as shown in Annotated Fig. 6. Furthermore, the holes in the barrier members of Stergioulas read on a broadest reasonable interpretation of the claimed functional limitations of allowing air to enter the interior and allowing air to exit the interior, with all of the holes acting as inlets and outlets that air can enter and exit through.
Therefore, one of ordinary skill in the art would be motivated to modify the prior art of Aguirre in view of Stergioulas without use of improper hindsight, and making such a modification would result in an invention that reads on the broadest reasonable interpretation of the structural and functional limitations of Claims 1 and 19, thus Claims 1-3, 5-13, 15, and 17-19 remain rejected under 35 U.S.C. 103.
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 KEVIN E SCHWARTZ whose telephone number is (571)272-1770. The examiner can normally be reached Monday - Friday 9:00AM - 5:00PM MST.
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, Arthur O Hall can be reached at (571)-270-1814. 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.
/KEVIN EDWARD SCHWARTZ/Examiner, Art Unit 3752 March 23, 2026