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 without traverse of Group I, claims 1-7 and 13-18, in the reply filed on 12/15/2025 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 01/23/2024 and 11/15/2024 have been considered by the examiner.
Claim Objections
Claims 5 and 14 is objected to because of the following informalities:
Claim 5 requires the limitation of “wherein the resin has a glass transition temperature of 55 to 110°C” and should read “wherein the resin has a glass transition temperature of 55°C to 110°C
Claim 14 requires the limitation of “wherein the adherend is one of an injection molded article and a press molded article” and should read “wherein the adherend is one of an injection molded article or a press molded article.”
Appropriate correction is required.
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 3 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 3 requires the limitation of “wherein the salt is a potassium salt.” However, it is unclear if the salt the claim is referring to is the hygroscopic organic salt or the inorganic salt. Therefore, the claim is rejected for failing to distinctly claim the subject matter that is applicant’s invention. For the purposes of examination, the salt of claim 3 is to be interpreted as either the hygroscopic organic salt or the inorganic salt.
Claims 2 and 4-5 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. Each of claims 2, 4 and 5 refer to a resin (Claim 2, Line 3; Claim 4, Line 2; Claim 5, Line 2). However, each of these claims depend from claim 1 which requires at least one of a polyvinyl acetal resin and a polyvinyl alcohol resin and it is unclear which resin claims 2, 4 and 5 refer to. Therefore, the claim is rejected for failing to distinctly claim the subject matter that is applicant’s invention. For the purposes of examination, the resins of claims 2, 4 and 5 are to be interpreted as either the polyvinyl acetal resin or the polyvinyl alcohol resin.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Petrovich et al. (EP 0627244).
Regarding claim 1, Petrovich teaches a fire extinguishing composition including a thermally dispersible component, an oxidizing agent, an oxygen-containing binder and conventional additives (Paragraph [0015]). The oxidizing agent may be potassium perchlorate (“a fire extinguishing agent including at least one of a hygroscopic organic salt and an inorganic salt”) and the binder may be polyvinyl butyral (“a binder including at least one of a polyvinyl acetal resin or a polyvinyl alcohol resin”) (Paragraphs [0023]; [0026]).
Regarding claim 3, Petrovich teaches the compositions as discussed above with respect to claim 1. As discussed above, the oxidizing agent may be potassium perchlorate.
Claim 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Petrovich et al. (EP 0627244).
Regarding claim 7, Petrovich teaches a fire extinguishing composition including a thermally dispersible component, an oxidizing agent, an oxygen-containing binder and conventional additives (Paragraph [0015]). The oxidizing agent may be potassium perchlorate (“a fire extinguishing agent including at least one of a hygroscopic organic salt and an inorganic salt”) and the binder may be polyvinyl butyral (“a binder including at least one of a polyvinyl acetal resin or a polyvinyl alcohol resin”) (Paragraphs [0023]; [0026]). Additionally, one of ordinary skill in the art would recognize that a mixture of the materials of the fire extinguishing composition would teach a “fire extinguishing material.”
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Petrovich et al. (EP 0627244) as applied to claim 1.
Regarding claim 2, Petrovich teaches the compositions as discussed above with respect to claim 1. The oxidizing agent in the composition is present in the range of 50% to 94% by weight, overlapping with the instantly claimed range (Paragraph [0015]).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Petrovich et al. (EP 0627244) as applied to claim 1 above, and further in view of Smith et al. (US 2018/0009914).
Regarding claims 4 and 5, Petrovich teaches the compositions as discussed above with respect to claim 1. As discussed above, the binder may be a PVB resin.
Petrovich is silent with respect to the PVB having a weight average molecular weight of 10,000 to 150,000.
Smith teaches PVB dispersion which are useful as tough, durable and water-resistant coatings (Paragraph [0006]). The dispersions are formed with PVB polymers which are taught to have a molar mass of 10,000 to 120,000 g/mol and have glass transition temperatures of 66°C to 84°C (Paragraphs [0023]-[0026]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the PVB binder of Petrovich to have a molar mass of 10,000 g/mol to 120,000 g/mol in order to form a tough, durable dispersion as taught by Smith.
Regarding claim 5, Petrovich teaches the compositions as discussed above with respect to claim 1. As discussed above, the binder may be a PVB resin.
Petrovich is silent with respect to the PVB having a glass transition temperature of 55°C to 110°C.
Smith teaches PVB dispersion which are useful as tough, durable and water-resistant coatings (Paragraph [0006]). The dispersions are formed with PVB polymers which are taught to have a molar mass of 10,000 to 120,000 g/mol and have glass transition temperatures of 66°C to 84°C (Paragraphs [0023]-[0026]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the PVB binder of Petrovich to have a glass transition temperature of 66°C to 84°C in order to form a tough, durable dispersion as taught by Smith.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Petrovich et al. (EP 0627244) as applied to claim 1 above, and further in view of Mulligan et al. (US 2010/0276625).
Regarding claim 6, Petrovich teaches the compositions as discussed above with respect to claim 1.
Petrovich is silent with respect to the compositions further including a liquid medium.
Mulligan teaches fire-fighting foaming compositions (Paragraph [0001]). The compositions include a polyvinyl alcohol and a solvent which “wets” the polymer allowing to aid in incorporation to an aqueous phase (Paragraphs [0017]; [0039]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the compositions of Petrovich to further include a solvent in order to aid incorporation into an aqueous phase as taught by Mulligan.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ootsuki et al. (US 2020/0377690) in view of Petrovich et al. (EP 0627244).
Regarding claim 13, Ootsuki teaches a fire-resistant resin sheet (“a fire extinguishing member”) formed from a fire-resistant resin composition (Paragraph [0001]). The compositions include PVB as a binder resin, endothermic agents and flame retardants (Paragraphs [0098]; [0105]; [0159]). The resin sheets include a base material and the composition on the base (Fig. 1; Paragraphs [0239]). The base material may be formed with a plurality of holes which are filled in with the composition (“an adherend having an uneven surface to be treated” & “a fire extinguishing agent containing layer provided on the surface to be treated”) (Fig. 3; Paragraphs [0264]-[0266]).
Ootsuki is silent with respect to the compositions comprising the materials of claim 1.
Petrovich teaches a fire extinguishing composition, which inhibits chemical combustion resulting in an ecologically harmless manor to extinguish fires, including a thermally dispersible component, an oxidizing agent, an oxygen-containing binder and conventional additives (Paragraph [0015]). The oxidizing agent may be potassium perchlorate (“a fire extinguishing agent including at least one of a hygroscopic organic salt and an inorganic salt”) and the binder may be polyvinyl butyral (“a binder including at least one of a polyvinyl acetal resin or a polyvinyl alcohol resin”) (Paragraphs [0023]; [0026]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the compositions of Ootsuki from the materials of Petrovich which are taught to inhibit chemical combustion resulting in an ecologically harmless manor to extinguish fires.
Regarding claim 14, Ootsuki teaches the sheets as discussed above with respect to claim 13. Ootsuki teaches the base material being formed from a resin film (Paragraph [0241]).
Concerning the resin films being one of an injection molded article and a press molded article, it is noted that these limitations are product-by-process limitations which do not further limit adherend of claim 13. MPEP 2113: "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. In the instant case, the final product results in the adherend being formed from a resin material, which is taught by Ootsuki as discussed above.
Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ootsuki et al. (US 2020/0377690) in view of Petrovich et al. (EP 0627244) as applied to claim 13 above, in further view of Idemi et al. (EP 0329991).
Regarding claim 15, Ootsuki teaches the sheets as discussed above with respect to claim 13.
Ootsuki is silent with respect to the sheets further including a protective member provided on the surface of the composition.
Idemi teaches an aromatic polycarbonate film with excellent transparency, heat resistance, and mechanical strength and is improved with respect to low moisture permeability and surface hardness (Pg. 2, Lines 7-10).
Therefore, it would have been obvious to one of ordinary skill in the art to further provide the sheets with the aromatic polycarbonate films of Idemi which are taught to have excellent transparency, heat resistance, and mechanical strength and is improved with respect to low moisture permeability and surface hardness.
Regarding claim 16, Ootsuki teaches the sheets as discussed above with respect to claim 15. As discussed above, the sheets are provided with the films of Idemi. Idemi further teaches the films comprising other thermoplastic resins such as olefins and acrylates (Pg. 7, Lines 25-28).
Regarding claim 17, Ootsuki teaches the sheets as discussed above with respect to claim 15. As discussed above, the sheets are provided with the films of Idemi. Idemi further teaches the films having a water vapor transmission rate of 1.98 to 3.07 g/m2/day (Table 1).
Regarding claim 18, Ootsuki teaches the sheets as discussed above with respect to claim 15. As discussed above, the sheets are provided with the films of Idemi. Idemi further teaches the films having a surface hardness of H or F (Table 1).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 and 13-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 19/015,013 in view of Petrovich et al. (EP 0627244).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of application ‘013 teaches “A fire-extinguishing material, comprising: a fire-extinguishing agent layer containing a fire-extinguishing agent and a binder resin, wherein the fire-extinguishing agent contains at least one of a deliquescent organic salt and a deliquescent inorganic salt, and a surface of the fire-extinguishing agent layer has an arithmetic mean roughness Ra of 1.3 pm or less.”
Petrovich further teaches a fire extinguishing composition, which inhibits chemical combustion resulting in an ecologically harmless manor to extinguish fires, including a thermally dispersible component, an oxidizing agent, an oxygen-containing binder and conventional additives (Paragraph [0015]). The binder may be polyvinyl butyral (“a binder including at least one of a polyvinyl acetal resin or a polyvinyl alcohol resin”) (Paragraphs [0023]; [0026]).
Therefore, it would have been obvious to form the binder as a PVB binder as taught by Petrovich.
Additionally, claims 2-7 and 13-18 are taught by claims 1-16 of application ‘013 in view of the references discussed above with respect to the 35 U.S.C. 103 rejections.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 and 13-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 19/015,039 in view of Petrovich et al. (EP 0627244)
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of application ‘039 teaches “A fire-extinguishing material, comprising: a fire-extinguishing agent layer containing a fire-extinguishing agent and a binder resin, wherein the fire-extinguishing agent contains at least one of an organic salt and an inorganic salt, and the fire-extinguishing agent layer has a porosity of 37% or less in a cross section of the fire-extinguishing agent layer.”
Petrovich further teaches a fire extinguishing composition, which inhibits chemical combustion resulting in an ecologically harmless manor to extinguish fires, including a thermally dispersible component, an oxidizing agent, an oxygen-containing binder and conventional additives (Paragraph [0015]). The binder may be polyvinyl butyral (“a binder including at least one of a polyvinyl acetal resin or a polyvinyl alcohol resin”) (Paragraphs [0023]; [0026]).
Therefore, it would have been obvious to form the binder of claim 2 as a PVB binder as taught by Petrovich.
Additionally, claims 2-7 and 13-18 are taught by claims 1-8 of application ‘039 in view of the references discussed above with respect to the 35 U.S.C. 103 rejections.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 and 13-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of copending Application No. 18/962,871 in view of Petrovich et al. (EP 0627244).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of application ‘871 teaches “A fire-extinguishing material composition, comprising: a fire-extinguishing agent containing at least one salt of a deliquescent organic salt or inorganic salt; and a compound having an acid anhydride group.” Claim 2 further requires the composition to contain a binder resin.
Petrovich further teaches a fire extinguishing composition, which inhibits chemical combustion resulting in an ecologically harmless manor to extinguish fires, including a thermally dispersible component, an oxidizing agent, an oxygen-containing binder and conventional additives (Paragraph [0015]). The binder may be polyvinyl butyral (“a binder including at least one of a polyvinyl acetal resin or a polyvinyl alcohol resin”) (Paragraphs [0023]; [0026]).
Therefore, it would have been obvious to form the binder of claim 2 as a PVB binder as taught by Petrovich.
Additionally, claims 2-7 and 13-18 are taught by claims 1-25 of application ‘871 in view of the references discussed above with respect to the 35 U.S.C. 103 rejections.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783