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 May 13th, 2026 is acknowledged. One page of amended drawings and four pages of amended claims were received on 5/13/2026. The drawings have been amended such that they are no longer objected to. Claims 1-2, 4, and 7-12 have been amended. The claims have been amended to overcome previous claim objections and some previous rejections under 35 U.S.C. 112(b) in the non-final rejection mailed 1/14/2026, however Claim 10 remains rejected under 35 U.S.C. 112(b) and Claims 1-13 remain rejected under 35 U.S.C. 103 as noted below.
Election/Restrictions
Applicant’s election without traverse of the product of Invention Group I, Firefighting Accessory Species A (Figs. 1-5), and Compartment Species B (Figs. 16-18) in the reply filed on 11/6/2025 in response to the requirement for restriction mailed 9/9/2025 is acknowledged. Claims 14-19 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
The “expanding mechanism” in Claim 1, which uses the generic placeholder “mechanism” coupled with functional language without reciting sufficient structure for the recited function in Claim 1; and
The “biasing arrangement” in Claim 10, which uses the generic placeholder “arrangement” coupled with functional language without reciting sufficient structure for the recited function in Claim 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitations:
The “expanding mechanism” in Claim 1 corresponds to the disclosure in Paragraph 0092 of the Specification which states, “The firefighting accessory 1000 further includes an expanding arrangement in the form of a reconfigurable barb arrangement 1200”. Furthermore, dependent Claim 2 states “wherein the expanding arrangement is a barb arrangement”. Therefore, based on the disclosure and the claims as a whole the examiner interprets the “expanding mechanism” in Claim 1 to be a barb arrangement and equivalents thereof.
The “biasing arrangement” in Claim 10 corresponds to Paragraph 0095 of the Specification which states “The biasing arrangement 1500 includes an elastic ring member 1510 that extends around the outer periphery of the plurality of barb members, and is located within a channel 1520 located on an outer surface of each of the barb members 1220 towards a fore end of each barb member.”. Furthermore, Paragraph 0097 of the Specification states “It is envisaged that a wide variety of biasing arrangements could be used to bias the barb members to their deployed position. As an example, in alternative embodiments leaf springs, helical springs or the like could be used acting in either compression or tension.”. Due to usage of the term “or the like” in the Specification, it is not clear what exact corresponding structure is to be considered for performing the entire function of the claimed biasing arrangement. Therefore, for the purpose of examination the “biasing arrangement” in Claim 10 will be interpreted as being any structure capable of biasing a barb member between a deployed position and a retracted position.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The examiner notes that the term “tensioning arrangement” in Claim 1 is not being interpreted under 35 U.S.C. 112(f) because the claim recites sufficient structure of “a closure configured for threaded engagement with the thread formations on the conduit body”.
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.
Claim 10 is 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.
Claim 10 is indefinite because the limitation “a biasing arrangement” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to clearly disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The “biasing arrangement” in Claim 10 appears to correspond to Paragraph 0095 of the Specification which states “The biasing arrangement 1500 includes an elastic ring member 1510 that extends around the outer periphery of the plurality of barb members, and is located within a channel 1520 located on an outer surface of each of the barb members 1220 towards a fore end of each barb member.”. Furthermore, Paragraph 0097 of the Specification states “It is envisaged that a wide variety of biasing arrangements could be used to bias the barb members to their deployed position. As an example, in alternative embodiments leaf springs, helical springs or the like could be used acting in either compression or tension.”. Due to usage of the term “or the like” in the Specification, it is not clear what exact corresponding structure is to be considered for performing the entire function of the claimed biasing arrangement. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For the purpose of examination the “biasing arrangement” in Claim 10 will be interpreted as being any structure capable of biasing a barb member between a deployed position and a retracted position.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 5,575,340 to Williams (“Williams”) in view of US PGPUB 2013/0037281 A1 to Szentimrey et al. (“Szentimrey”).
As to Claim 1, Williams discloses a firefighting accessory (See Figs. 3-4) for use in fighting a fire through an aperture (#10) in a bulkhead (#14, #16, and #18), the firefighting accessory comprising:
a. a securing arrangement adapted for securing the firefighting accessory at or towards the aperture in the bulkhead (See Figs. 3-5), the securing arrangement including:
a conduit body (#20) including a fore end and a rear end (See Annotated Fig. 5) and defining a conduit for a flow of firefighting agent (See Annotated Fig. 5 and See Col. 5 Lines 25-50 disclosing that a hose is inserted through #20 or attached to #20 to flow inert gas, thus #20 is for flow of firefighting agent), the conduit body being configured for extending the fore end through the aperture, in use (See Fig. 4 and Annotated Fig. 5); and
an expanding mechanism (#22, which is structure that is equivalent to a barb arrangement as shown in Figs. 3-4) movable between
a retracted configuration in which the expanding mechanism can be at least partially inserted through the aperture with the conduit body in use (See Annotated Fig. 5 and Col. 4 Lines 30-35), and
a deployed configuration in which the expanding mechanism is not movable through the aperture in use (See Annotated Fig. 4 and Col. 4 Lines 35-40); and
a tensioning arrangement (See Annotated Fig. 5, the tensioning arrangement is made up of #24, #28, and #G) including a closure (#24 and #G), the tensioning arrangement being configured for tensioning the conduit body between the expanding mechanism and the closure in use (See Figs. 3-4 and Col. 3 Lines 45-65); and
b. a connector (See V in Fig. 6) configured for connection to a source of fire extinguishing agent (See Col. 5 Lines 25-50 disclosing that #T is attached to #20 to flow inert gas, thus #V is fluidly connected to a source of fire extinguishing agent that provides inert gas via #T. See #IG in Fig. 9);
c. wherein the firefighting accessory is configured for guiding firefighting agent through the aperture to fight the fire in operation (See Col. 5 Lines 50-58).
Regarding Claim 1, in reference to the firefighting accessory of Williams as applied to Claim 1 above, Williams does not specifically disclose wherein the conduit body includes thread formations at least partly along a length of the conduit and wherein the closure is configured for threaded engagement with the thread formations on the conduit body (Col. 3 Lines 45-65 disclose multiple bolts #28 being screwed through #24, but based on Fig 4, the conduit body does not have any threads.).
However, Szentimrey discloses, in the same field of endeavor of fire extinguishing (See Paragraph 0002) a firefighting accessory (See Fig. 8) for use in fighting a fire through an aperture (See Annotated Fig. 8) in a bulkhead (#14), the firefighting accessory comprising:
a. a securing arrangement adapted for securing the firefighting accessory at or towards the aperture in the bulkhead (See Annotated Fig. 8), the securing arrangement including:
a conduit body including a fore end and a rear end and defining a conduit for a flow of firefighting agent (See Annotated Fig. 8), the conduit body being configured for extending the fore end through the aperture (See Annotated Fig. 8), in use, the conduit body including thread formations at least partly along a length of the conduit (See Annotated Fig. 8);
an expanding mechanism (#68, which is a structure formed as a barb shape and is at least capable of expanding when compressed); and
a tensioning arrangement (#89 and #87) including a closure (#89) configured for threaded engagement with the thread formations on the conduit body (See Annotated Fig. 8 and Paragraph 0027), the tensioning arrangement being configured for tensioning the conduit body between the expanding mechanism and the closure in use (See Fig. 8 and Paragraph 0027); and
b. a connector (#42) configured for connection to a source of fire extinguishing agent (#22, See Paragraph 0020);
c. wherein the firefighting accessory is configured for guiding firefighting agent through the aperture to fight the fire in operation (See Paragraph 0028).
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 firefighting accessory of Williams as applied to Claim 1 above such that the conduit body includes thread formations at least partly along its length and wherein the closure is configured for threaded engagement with the thread formations on the conduit body by applying threads on the conduit body of Williams and using the tensioning arrangement of Szentimrey in place of the tensioning arrangement of Williams since doing so would yield the predictable result of securing the firefighting accessory to the bulkhead upon tightening of a single nut (See Szentimrey Fig. 8 and Paragraph 0027).
As to Claim 2, in reference to the firefighting accessory of Williams in view of Szentimrey as applied to Claim 1 above, Williams further discloses wherein the expanding mechanism is a barb arrangement (See Fig. 4 and Annotated Fig. 5, the expanding mechanism made up of #22 is structure that is equivalent to a barb arrangement).
As to Claim 3, in reference to the firefighting accessory of Williams in view of Szentimrey as applied to Claim 1 above, Williams further discloses wherein the connector is configured for connection to one or more selected from a firefighting hose, and a pressurised vessel of fire extinguishing agent (See Col. 5 Lines 9-50, the connector #V can be fluidly connected to another segment of hose #T and can be fluidly connected to #IG, which is a pressurized vessel of inert gas).
As to Claim 4, in reference to the firefighting accessory of Williams in view of Szentimrey as applied to Claim 2 above, Williams further discloses wherein the barb arrangement includes a barb body and one or more barb members (See Annotated Fig. 5, the barb arrangement is made up of two barb bodies and two barb members).
As to Claim 5, in reference to the firefighting accessory of Williams in view of Szentimrey as applied to Claim 1 above, Williams further discloses wherein the firefighting accessory includes a nozzle (See Annotated Fig. 5 and Col. 5 Lines 50-58, an outlet of the firefighting accessory is equivalent to a nozzle that is a projecting tube to direct fluid flow).
As to Claim 6, in reference to the firefighting accessory of Williams in view of Szentimrey as applied to Claim 1 above, Williams further discloses wherein the firefighting accessory includes a hose (See Fig. 13 and See Col. 5 Lines 9-50 disclosing that #T can be a hose and can be connected to additional segments of tubing that are hoses).
As to Claim 7, in reference to the firefighting accessory of Williams in view of Szentimrey as applied to Claim 6 above, Williams further discloses wherein the hose is attached or attachable to an inlet of the conduit (See Annotated Fig. 4, Col. 4 Lines 7-10, and Col. 5 Lines 9-50, the hose is fluidly attached to an inlet of the conduit via #32).
As to Claim 8, in reference to the firefighting accessory of Williams in view of Szentimrey as applied to Claim 4 above, Williams further discloses wherein the barb members are reconfigurable between a retracted position and a deployed position (See Annotated Fig. 4 and See Annotated Fig. 5 and See Col. 4 Lines 30-40).
As to Claim 9, in reference to the firefighting accessory of Williams in view of Szentimrey as applied to Claim 4 above, Williams further discloses wherein the one or more of the barb members are pivotable relative to the conduit body (See Annotated Fig. 4, Annotated Fig. 5, and See Col. 4 Lines 30-40).
As to Claim 10, in reference to the firefighting accessory of Williams in view of Szentimrey as applied to Claim 4 above, Williams further discloses wherein the firefighting accessory includes a biasing arrangement for biasing the one or more barb members between a deployed position and a retracted position (See Col. 3 Lines 40-46 and 55-60 disclosing that #22 are biased outwardly, thus some biasing arrangement structure is part of the firefighting accessory that biases #22 between the position shown in Fig. 4 and the position shown in Fig. 5).
As to Claim 11, in reference to the firefighting accessory of Williams in view of Szentimrey as applied to Claim 10 above, Williams further discloses wherein the one or more barb members are biased to the deployed position (See Col. 3 Lines 40-46 and 55-60 and See Annotated Fig. 4).
As to Claim 12, in reference to the firefighting accessory of Williams in view of Szentimrey as applied to Claim 10 above, Williams further discloses wherein the one or more barb members are receivable within channels in the conduit body when the one or more barb members are in the retracted position (See Annotated Fig. 3 and See Annotated Fig. 5).
As to Claim 13, in reference to the firefighting accessory of Williams in view of Szentimrey as applied to Claim 1 above, Williams as modified by Szentimrey further discloses wherein the closure is configured for closing the aperture in the bulkhead (See Williams Figs. 3-4and See Szentimrey Fig. 8).
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Response to Arguments
Applicant's arguments filed 5/13/2026 have been fully considered but they are not persuasive.
Regarding the term “expanding mechanism” in Claim 1 being interpreted under 35 U.S.C. 112(f), applicant argues that the term “expanding mechanism” provides a structural term and that it denotes a physical assembly and is not a generic placeholder.
This argument is not found persuasive because the term “expanding mechanism” uses the generic placeholder “mechanism” coupled with functional language and the term “expanding mechanism” on its own is not understood by one of ordinary skill in the art to be any specific structure. Therefore, the term “expanding mechanism” in Claim 1 is being interpreted under 35 U.S.C. 112(f). The examiner notes that amending “expanding mechanism” in Claim 1 to “expanding barb arrangement” would prevent the term “expanding mechanism” from being interpreted under 35 U.S.C. 112(f).
Regarding Claim 10 being rejected under 35 U.S.C. 112(b) for being indefinite, applicant argues that the claimed “biasing arrangement” corresponds to “any structure capable of biasing a barb member between a deployed position and a retracted position” as proposed by the examiner, and thus is not indefinite.
This argument is not found persuasive. The “biasing arrangement” in Claim 10 appears to correspond to Paragraph 0095 of the Specification, however due to usage of the term “or the like” in the Specification, it is not clear what exact corresponding structure is to be considered for performing the entire function of the claimed biasing arrangement. The examiner notes that interpreting the “biasing arrangement” as “any structure capable of biasing a barb member between a deployed position and a retracted position” still does not apply a specific structure to the “biasing arrangement”. The examiner notes that amending the “biasing arrangement” in Claim 10 to “a biasing ring” or “a biasing spring” would overcome the rejection under 35 U.S.C. 112(b) and ensure that the term “biasing arrangement” is not interpreted under 35 U.S.C. 112(f).
Regarding Claim 1 being rejected under 35 U.S.C. 103 as being unpatentable over Williams in view of Szentimrey, applicant argues that Williams does not contemplate threading the conduit itself such that it could be used for threaded engagement and that Williams is not concerned with the type of rapid deployment in emergency situations contemplated by the claimed invention. Applicant argues that Szentimrey does not relate to a structure designed to be secured from one side and thus the equivalent of the claimed securing arrangement is not analogous to the claimed structure. Applicant argues that #68 of Szentimrey is explicitly provided as an escutcheon, is not collapsible, cannot be inserted through the aperture, and has no retractable configuration for allowing engagement of an opposite surface through an aperture and thus is structurally and functionally unlike the claimed expanding mechanism. Applicant argues that while threading is utilized in Szentimrey, such threading is not designed for tensioning an expanding mechanism such as that claimed in the context of a rapid deployment, and such threading does not allow for tensioning the structure without access to an inside of a compartment. Applicant also argues that the combination of Williams and Szentimrey would not function because Williams has no threading on the conduit body, and requires a more robust sealing mechanism with a gasket for proper implementation, while Szentimrey is not designed to be applied from one side of a substrate. Applicant argues that Williams teaches that the sealing gasket is critical and removing the plate-and-bolt assembly in that structure would eliminate this sealing mechanism, thus Williams would no longer function as intended if this mechanism were removed. Applicant also argues that no motivation is provided for modifying Williams and that Williams provides a complete solution, and the tensioning approach of Szentimrey would require threading the conduit but would not provide any benefit identifiable in either reference. Applicant further argues that Szentimrey provides its threaded nut 89 as part of a bilateral clamping system drawing plates against both faces of the substrate and that utilizing the threaded nut of Szentimrey in the context of Williams would serve no equivalent purpose. Applicant additionally argues that Szentimrey appears to be a permanent sprinkler installation system requiring pre-planned construction access to both sides of a substrate 14 and that an engineer would have no reason to look to Williams when modifying Szentimrey or vice versa. Applicant additionally argues that neither reference contemplates the problems that lead to the claimed structure, since the claimed structure is designed for a situation where a fire is to be fought through a bulkhead from the non-fire side only, without access to the compartment in which it is needed. Applicant argues that the claimed structure allows access quickly through an aperture and allows the device to be fixed to the aperture without tools and while a firefighter is wearing full equipment, including protective gloves, while Williams requires tightening of multiple bolts using a tool, which is not suited for rapid deployment while wearing protective gloves and Szentimrey requires a second person or access to both sides of the substrate 14 in order to position and secure escutcheon 68, neither of which provide a solution that can be deployed quickly, by one person, and from one side only under emergency conditions.
These arguments are not found persuasive. 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 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). 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). All benefits of the claimed invention need not be explicitly disclosed in reference to render claim unpatentable under 35 U.S.C 103. See In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990). Since the claimed subject matter would have been obvious from the references, it is immaterial that the references do not state the specific problems or advantage ascribed by applicant. See In re Wiseman, 201 USPQ 658. Furthermore, 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. It is noted that skill, not the converse, is presumed on the part of those practicing in the art (In re Sovish, 226 USPQ 771) and a conclusion of obviousness can be made from "common sense" of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. (In re Bozek, 163 USPQ 545, 549 (CCPA 1969)).
Williams teaches a firefighting accessory having the limitations of Claim 1 other than wherein the conduit body includes thread formations at least partly along a length of the conduit and wherein the closure is configured for threaded engagement with the thread formations on the conduit body, as Williams discloses multiple bolts #28 being screwed through #24 without the conduit body having any threads. Szentimrey discloses a firefighting accessory having thread formations at least partly along a length of a conduit, with closure #89 configured for threaded engagement with the thread formations as shown in Annotated Fig. 8. Therefore, regardless of the differences between, Williams, Szentimrey, and the claimed invention, 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 firefighting accessory of Williams such that the conduit body includes thread formations at least partly along its length and wherein the closure is configured for threaded engagement with the thread formations on the conduit body by applying threads on the conduit body of Williams and using the tensioning arrangement of Szentimrey in place of the tensioning arrangement of Williams since doing so would yield the predictable result of securing the firefighting accessory to the bulkhead upon tightening of a single nut, as opposed to using multiple bolts in Williams. Such a modification would simply substitute known tensioning arrangements and would not only reduce the number of components in the firefighting accessory of Williams but would also reduce the number of threading operations required to install the firefighting accessory of Williams while still allowing for sealing of #20 without destroying functionality of the firefighting accessory, thus helping improve efficiency of using the firefighting accessory of Williams in some aspects. Therefore, the rejection of Claim 1 under 35 U.S.C. 103 is proper, and Claims 1-13 remain rejected under 35 U.S.C. 103 as being unpatentable over Williams in view of Szentimrey as noted above.
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.
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/KEVIN EDWARD SCHWARTZ/Primary Examiner, Art Unit 3752 May 27, 2026
Prosecution Insights