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 .
Election/Restrictions
Applicant's election with traverse of Species I (figure 27) in the reply filed on October 23, 2025 is acknowledged. The traversal is on the ground(s) that the Office has failed the analysis under rule 1.475(a) and (b). This is not found persuasive because Applicant appears to be arguing different categories of inventions, i.e., product and process. The current lack of unity is based on Applicant’s disclosure of mutually exclusive species. Additionally, Applicant alleged that all of the claims are readable on elected Species I (figure 27). If all of the claims are readable on the elected species, Applicant’s traversal would seem moot, i.e., all of the claims would be examined in light of the election requirement or not.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7, 8 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 23, 2025.
Applicant alleged that all of the claims are readable on elected Species I (figure 27). Claim 7 recites “two lugs” and claim 8 recites “each anchoring point comprises a lug.” Lugs 48 can only be found in the embodiments of figures 15-17, 19 and 25. Claim 10 recites “a cable” that is only readable on cable 39 found only in the embodiments of figures 15-17.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6, 9 and 11-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for two anchoring points, does not reasonably provide enablement for more than two anchoring points. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. Claim 1 recites the limitation “at least two anchoring points” in line 7. The limitation is inclusive of two or more anchoring points. It appears that the specification is only enabling for two anchoring points.
Claims 1-6, 9 and 11-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for one clamping collar, does not reasonably provide enablement for more than one clamping collar. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. Claim 1 recites the limitation “at least one clamping collar” in line 8. The limitation is inclusive of one or more clamping collars. It appears that the specification is only enabling for one clamping collar.
Claims 3-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for at least one end of the elongate element being inserted in the through opening for forming a loop, does not reasonably provide enablement for at least one end of the elongate element being inserted in the through openings for forming a loop. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. Claim 3 recites the limitation “…inserting at least one end of the elongate element in the through openings and by forming a loop around the borders of said base.” It appears that each end of the elongate element is inserted in a respective through opening to form a loop.
Claim 12 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 12 recites the limitation “the adjustment means…comprise markers” in lines 2-3. The specification discloses that the clamping collar 30 has markers. See paragraphs 0049 and 0135. The specification does not appear to disclose that the adjustment means has markers.
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.
Claims 1-6, 9 and 11-20 are 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 1 recites the limitation "the connection" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation “said elongate element cooperating with the base at said anchoring points” in lines 9-10. It is uncertain what is being limited by the term “cooperating.” The interpretation of the term requires a subjective determination. What may constitute “cooperating” to one of ordinary skill in the art may not be considered “cooperating” to another of ordinary skill in the art.
Claim 1 recites the limitation “adjustment means, independent of the base, making it possible…” in line 11. It is uncertain whether the adjustment means is structurally independent of the base and/or the adjustment means is functionally independent of the base. Additionally, it is uncertain what is being referenced by the term “it.”
Claim 1 recites the limitation "the length" in lines 11-12. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation “pipelines” in line 13. At least one of the “pipelines” appears to be a double inclusion of the “pipeline” recited in line 2.
Claim 2 recites the limitation "either side" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "the main direction" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation “the anchoring points are through openings” in line 2. It is uncertain whether the anchoring points, collectively, are through openings or each anchoring point is a through opening.
Claim 3 recites the limitation "the borders" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the space" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the two ends" in line 2. There is insufficient antecedent basis for this limitation in the claim.
In claim 6, the recitation “disposed either side of the base” in line 3 is grammatically incorrect.
Claim 6 recites the limitation "either side" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation “it” in line 2. It is uncertain what is being referenced by the term “it.”
Claim 14 recites the limitation “an element for blocking said through-hole sensitive to temperature and configured to release the through-hole” in lines 2-3. The claim fails to recite structure to accomplish the function “for blocking said through-hole sensitive to temperature and configured to release the through-hole.” Presumably, not every “element” is capable of accomplishing the function. The structure recited by the claim is not commensurate in scope with the function required by the claim.
Claim 15 recites the limitation “it” in line 2. It is uncertain what is being referenced by the term “it.”
Claim 16 recites the limitation "the head" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the deflector" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the stirrups" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the blocking element" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the head" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the deflector" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the stirrups" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the blocking element" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation “the head being mounted on the base by screwing.” The claim fails to recite structure to accomplish the function “by screwing.” The structure recited by the claim is not commensurate in scope with the function required by the claim. Additionally, the limitation is idiomatically incorrect.
Regarding claim 18, the recitation “a pipeline” in claim 1 appears to be a double inclusion of the “at least one pipeline” recited in claim 18, line 2.
Regarding claim 18, the recitation “an opening” in claim 1 appears to be a double inclusion of the “at least one opening” recited in claim 18, line 2.
Claim 18 recites the limitation “at least one extinguisher according to claim 1” in line 3. The preamble of claim 1 is inconsistent with “at least one extinguisher.”
Claim 20 recites the limitation "the painting" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
The claims are replete with indefiniteness. The above listing is only exemplary. Applicant is required to review and amend ALL of the claims in their entirety to ensure full compliance with 35 U.S.C. 112(b).
Applicant should not misconstrue any lack of art rejection as an indication of allowable subject matter.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 attempts to exclude limitations for parent claim 1, e.g., more than one clamping collar and more than two anchoring points. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 9 and 18 (as best understood) is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hermann (DE 201 06 522 cited in the IDS filed on August 30, 2023).
Hermann discloses an automatic water extinguisher configured to be mounted on an opening of a pipeline, said pipeline forming part of an installation configured to contain water pressurized between 5 and 20 bars, said extinguisher comprising:
a one-piece base 13 having a through-hole 14, and
a seal 21 configured to seal the connection between the opening of said pipeline and the through-hole of said base, wherein:
the base further comprises at least two anchoring points (attachment points for straps 15), and
the extinguisher comprises at least one clamping collar 15 comprising:
an elongate element configured to partially surround the pipeline, said elongate element cooperating with the base at said anchoring points, and
adjustment means 16, independent of the base, making it possible to adapt the length of the at least one clamping collar so that the extinguisher is able to be mounted on pipelines of different diameters.
Claim(s) 1, 2, 6, 9 and 18 (as best understood) is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boisset (FR 2402825 cited in the IDS filed on August 30, 2023).
Boisset discloses an automatic water extinguisher configured to be mounted on an opening of a pipeline, said pipeline forming part of an installation configured to contain water pressurized between 5 and 20 bars, said extinguisher comprising:
a one-piece base 7 having a through-hole (hole through part 6), and
a seal 10 configured to seal the connection between the opening of said pipeline and the through-hole of said base, wherein:
the base further comprises at least two anchoring points 17, and
the extinguisher comprises at least one clamping collar 2 comprising:
an elongate element configured to partially surround the pipeline, said elongate element cooperating with the base at said anchoring points, and
adjustment means 20, independent of the base, making it possible to adapt the length of the at least one clamping collar so that the extinguisher is able to be mounted on pipelines of different diameters.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KIM whose telephone number is (571)272-4905. The examiner can normally be reached M-F 7:30-3:30.
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, 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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/CHRISTOPHER S KIM/Primary Examiner, Art Unit 3752 CHRISTOPHER S. KIM
Examiner
Art Unit 3752
CK