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 Group II (claims 2, 12-14, and 16-21) in the reply filed on 11/17/2025 is acknowledged. The traversal is on the grounds that:
The special technical feature shared by all three groups is therefore: a fire-extinguishing- agent-containing layer containing a binder resin and an aerosol-generating fire-extinguishing agent component, wherein this layer is formed by a wet coating method on an adherend having a surface to be treated with an uneven shape.
This is not found persuasive. How does the above represent the special technical feature if it is not fully represented in the independent claims? At least the uneven shape is relegated to the dependent claims. Additionally, as noted in the restriction (and similarly in the rejection below), the claimed features are taught by, and thus do not make a contribution over, the prior art, and cannot be considered to be a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 12 is objected to because of the following informalities:
Claim 12 recites “the surface to be treated”, where “to be treated” had been otherwise omitted in other instances in the amended claims. For consistency, this should be amended similarly.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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.
Claims 2, 16, and 18-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shoda et al. (JP2021137346, with reference to translation).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim 2: Shoda et al. discloses a method for producing a fire-extinguishing member (e.g. Fig. 3a), the method comprising: providing an adherend (1) that has a surface (1a); forming a fire-extinguishing-agent-containing layer (3) on the surface (paragraph 17); and forming a protective layer (4/5 - paragraph 39) on the fire-extinguishing-agent-containing layer to obtain a fire-extinguishing member that includes the adherend, the fire-extinguishing-agent-containing layer provided on the surface, and the protective layer provided on the fire-extinguishing-agent-containing layer (Fig. 3a), wherein the fire-extinguishing-agent-containing layer contains a binder resin and a fire-extinguishing agent component capable of combusting to generate an aerosol (paragraphs 11, 23), and wherein at least one of the fire-extinguishing-agent-containing layer or the protective layer is formed by a wet coating method (paragraph 37).
Claim 16: Shoda et al. further discloses dip coating (immersion - paragraph 37)
Claim 18: The fire-extinguishing-agent includes an inorganic oxidizing agent and a radical-generating agent (paragraph 11).
Claim 19: The binder resin is an epoxy (paragraph 31).
Claim 20: The fire-extinguishing-agent-containing layer has a thickness of 120 to 500 μm (paragraph 24).
Claim 21: The fire-extinguishing agent is 70% to 97% by mass of the fire-extinguishing-agent-containing layer (paragraph 25).
Claims 2, 12, and 16-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tode et al. (JP2021147942, with reference to translation).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim 2: Tode et al. discloses a method for producing a fire-extinguishing member (e.g. 30 - Fig. 3), the method comprising: providing an adherend (1) that has a surface (paragraph 17); forming a fire-extinguishing-agent-containing layer (2) on the surface (paragraphs 17, 29); and forming a protective layer (3/4) on the fire-extinguishing-agent-containing layer to obtain a fire-extinguishing member that includes the adherend, the fire-extinguishing-agent-containing layer provided on the surface, and the protective layer provided on the fire-extinguishing-agent-containing layer (Fig. 3, paragraph 50), wherein the fire-extinguishing-agent-containing layer contains a binder resin and a fire-extinguishing agent component capable of combusting to generate an aerosol (paragraphs 18, 29, 31), and wherein at least one of the fire-extinguishing-agent-containing layer or the protective layer is formed by a wet coating method (coated as a liquid - paragraph 44).
Claim 12: The surface to be treated has an uneven shape (paragraph 19 - having voids, in the form of a nonwoven fabric made by entangling non-combustible or flame-retardant fibers, or a woven fabric made by knitting non-combustible or flame-retardant fibers).
Claim 16: The wet coating method is a dip coating method (immersing - paragraph 46).
Claim 17: The protective layer may be made from similar materials as the substrate, including claimed materials (paragraphs 19 and 51).
Claim 18: The fire-extinguishing-agent includes an inorganic oxidizing agent and a radical-generating agent (paragraph 31).
Claim 19: The binder resin is an epoxy (paragraph 40).
Claim 20: The fire-extinguishing-agent-containing layer has a thickness of 120 to 500 μm (paragraph 32).
Claim 21: The fire-extinguishing agent is 70% to 97% by mass of the fire-extinguishing-agent-containing layer (paragraph 33).
Claims 2, 17-19, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tomiyama et al. (WO2020050209, cited in IDS, with 2021/0331013 as an English equivalent).
Claim 2: Tomiyama et al. discloses a method for producing a fire-extinguishing member (1), the method comprising: providing an adherend that has a surface (e.g. paper - paragraph 66); forming a fire-extinguishing-agent-containing layer (11) on the surface (paragraphs 31, 48-52, 60, 66); and forming a protective layer (13 or 15 - paragraphs 33 and 35) on the fire-extinguishing-agent-containing layer to obtain a fire-extinguishing member that includes the adherend (paper), the fire-extinguishing-agent-containing layer (11) provided on the surface, and the protective layer (13/15) provided on the fire-extinguishing-agent-containing layer, wherein the fire-extinguishing-agent-containing layer contains a binder resin (paragraphs 66-67) and a fire-extinguishing agent component capable of combusting to generate an aerosol (paragraphs 31, 48-52), and wherein at least one of the fire-extinguishing-agent-containing layer or the protective layer is formed by a wet coating method (spreading resin, which is implicitly liquid pre-cured if it were epoxy, for example - paragraphs 66-67).
Claim 17: A material of the protective layer is at least one selected from the group consisting of polyolefin, polyester, fluororesin, polyvinyl chloride, polyvinyl alcohol, acrylic resin, epoxy resin, polyamide, polyimide, a metal, an oxide, a nitride, and an oxynitride (paragraphs 33, 35).
Claim 18: The fire-extinguishing-agent includes an inorganic oxidizing agent (chlorates) and a radical-generating agent (e.g. potassium salt - paragraphs 48 and 52). Chlorates and potassium salt are consistent with the examples given in the instant application for the respective agents.
Claim 19: The binder resin is an epoxy (paragraph 67).
Claim 21: The fire-extinguishing agent is 70% to 97% by mass of the fire-extinguishing-agent-containing layer (paragraph 48).
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Shoda et al. in view of Dimanshteyn (U.S. PGPub 4,612,239, cited in IDS) or alternatively Murray (U.S. PGPub 2022/0288435).
It is unclear whether the surface of Shoda it has an “uneven shape”. However, Dimanshteyn teaches a similar method wherein gas permeable substrates such as woven fiberglass, graphite fiber, ceramic fibers or silica textile may be used (column 4, lines 61-64). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used such an alternative substrate since when the substrate is gas permeable, the thus generated gas creates a gas barrier adjacent the outer surface which tends to further insulate the user from the heat (column 5, lines 40-43). The examiner submits that a woven, permeable substrate would be “uneven” by virtue the woven structure, i.e. individual strands of fibers woven together, over and under one another, with gaps therebetween.
Alternatively, Murray teaches a fire-extinguishing coating applied in various uneven, i.e. non-planar, shapes (e.g. paragraphs 8, 61). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the Shoda layer to uneven shapes in order to have treated a broader range of objects as desired.
Finally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the surface to be treated as an uneven shape since it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, e.g. paragraph 20, Applicant has not disclosed any criticality for the shape of the surface. It is noted that unevenness of the surface per se is not a feature of the invention, i.e. the invention does not benefit by an uneven shape, but rather works in spite of unevenness. It would appear that the method of Tomiyama would work equally well on an uneven surface for lack of evidence to the contrary.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Shoda et al. in view of Zeliff et al. (U.S. PGPub 2012/0034482).
Shoda discloses a method substantially as claimed except for wherein the wet coating method is spray coating. However, Zeliff et al. teaches a similar method wherein the coating may be by dipping (immersing) or spraying (paragraph 19). Since both references teach methods of wet coating a fire-extinguishing agent, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have to have substituted one method for the other to achieve the predictable result of applying the coating to the surface (MPEP 2143 I. B.).
Claims 14 is rejected under 35 U.S.C. 103 as being unpatentable over Shoda et al. in view of Tomiyama et al.
The fire-extinguishing member of Shoda comprises, in the following order, the adherend (1), the fire-extinguishing-agent-containing layer (3) and the protective layer (4/5), and the protective layer is in direct contact with a surface of the fire-extinguishing agent-containing layer (as cited above). The protective layer is not explicitly formed by a wet coating method. However, Tomiyama teaches that a sheet-shaped object may be molded via a wet coating such as spreading as for the layer 11 (paragraph 66). Since the layer 4/5 is also a thin, sheet-shaped object, it would have been obvious to have used a similar technique for the predictable result of forming the thin sheet-shaped plate.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Shoda et al.
Shoda et al. discloses a method substantially as claimed except for wherein a material of the protective layer is at least one selected from the group as claimed. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used one of the listed materials since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Please note that in the instant application, paragraphs 44-45, Applicant has not disclosed any criticality for the material.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Tode et al. in view of Zeliff et al.
Tode discloses a method substantially as claimed except for wherein the wet coating method is spray coating. However, Zeliff et al. teaches a similar method wherein the coating may be by dipping (immersing) or spraying (paragraph 19). Since both references teach methods of wet coating a fire-extinguishing agent, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have to have substituted one method for the other to achieve the predictable result of applying the coating to the surface (MPEP 2143 I. B.).
Claims 14 is rejected under 35 U.S.C. 103 as being unpatentable over Tode et al. in view of Tomiyama et al.
The fire-extinguishing member of Tode comprises, in the following order, the adherend (1), the fire-extinguishing-agent-containing layer (3) and the protective layer (4/5), and the protective layer is in direct contact with a surface of the fire-extinguishing agent-containing layer (as cited above). The protective layer is not explicitly formed by a wet coating method. However, Tomiyama teaches that a sheet-shaped object may be molded via a wet coating such as spreading as for the layer 11 (paragraph 66). Since the layer 4/5 is also a thin, sheet-shaped object, it would have been obvious to have used a similar technique for the predictable result of forming the thin sheet-shaped plate.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tomiyama et al. in view of Dimanshteyn or alternatively Murray.
Tomiyama discloses paper as the substrate surface in an example, but it is unclear whether it has an “uneven shape”. However, Dimanshteyn teaches a similar method wherein gas permeable substrates such as woven fiberglass, graphite fiber, ceramic fibers or silica textile may be used (column 4, lines 61-64). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used such an alternative substrate since when the substrate is gas permeable, the thus generated gas creates a gas barrier adjacent the outer surface which tends to further insulate the user from the heat (column 5, lines 40-43). The examiner submits that a woven, permeable substrate would be “uneven” by virtue the woven structure, i.e. individual strands of fibers woven together, over and under one another, with gaps therebetween.
Alternatively, Murray teaches a fire-extinguishing coating applied in various uneven, i.e. non-planar, shapes (e.g. paragraphs 8, 61). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the Tomiyama et al. layer to uneven shapes in order to have treated a broader range of objects as desired.
Finally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the surface to be treated as an uneven shape since it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, e.g. paragraph 20, Applicant has not disclosed any criticality for the shape of the surface. It is noted that unevenness of the surface per se is not a feature of the invention, i.e. the invention does not benefit by an uneven shape, but rather works in spite of unevenness. It would appear that the method of Tomiyama would work equally well on an uneven surface for lack of evidence to the contrary.
Claims 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Tomiyama et al. in view of Zeliff et al.
Tomiyama discloses a method substantially as claimed except for wherein the wet coating method is spray coating or dip coating. However, Zeliff et al. teaches a similar method wherein the coating may be by dipping (immersing) or spraying as an alternative to spreading (paragraph 19). Since both references teach methods of wet coating a fire-extinguishing agent, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have to have substituted one method for the other to achieve the predictable result of applying the coating to the surface (MPEP 2143 I. B.).
Claims 14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tomiyama et al.
Claim 14: The fire-extinguishing member of Tomiyama comprises, in the following order, the adherend (e.g. paper), the fire-extinguishing-agent-containing layer (11 as applied to the paper) and the protective layer (13 or 15, applied atop the layer 11), and the protective layer is in direct contact with a surface of the fire-extinguishing agent-containing layer (paragraphs 33, 35; Fig. 4). The plate may be made of a material such as resin (paragraphs 33 and 35), implicitly by molding (paragraph 39) but is not explicitly formed by a wet coating method. However, Tomiyama teaches that a sheet-shaped object may be molded via a wet coating such as spreading as for the layer 11 (paragraph 66). Since the plates are also thin, sheet-shaped objects made by molding, it would have been obvious to have used a similar technique for the predictable result of forming the thin sheet-shaped plate.
Claim 20: The thickness of the fire-extinguishing-agent-containing layer is not necessarily 120 to 500 μm. Tomiyama discloses the fire-extinguishing-agent-containing layer as having a thickness of about 2mm (2000 μm) in an example (paragraph 30), but also acknowledges that the dimensions of the fire extinguisher may be designed in accordance with the installation space and the required fire extinguishing performance (Id.), suggesting it is a result-effective variable, and generally prefers a relatively small thickness (paragraph 44). Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Tomiyama to have a thickness within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art at before the effective filing date of the claimed invention to have modified the thickness to be 120 to 500 μm as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Please also note that in paragraphs 22 and 25, for example, Applicant has not disclosed any criticality for the claimed range.
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 2, 12-14, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9-12 of copending Application No. 18/420,031. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘031 essentially “anticipate” those of the instant application. It is noted that claim 9 of ‘031 incorporates the limitations of claim 1 by reference.
Claims 17-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over ‘031 in view of Tomiyama et al.
Claim 17: A material of the protective layer is not necessarily at least one selected from the group consisting of polyolefin, polyester, fluororesin, polyvinyl chloride, polyvinyl alcohol, acrylic resin, epoxy resin, polyamide, polyimide, a metal, an oxide, a nitride, and an oxynitride. However, Tomiyama et al. teaches some of these materials for the protective layer (paragraphs 33, 35). It would have been obvious to have modified the claims of ‘031 to have used one of these materials since it is adequate from the viewpoint of processing, handling, price and heat resistance (Id.).
Claim 18: The fire-extinguishing-agent does not necessarily include an inorganic oxidizing agent and a radical-generating agent. However, Tomiyama et al. teaches a similar method wherein the fire-extinguishing-agent includes an inorganic oxidizing agent (chlorates) and a radical-generating agent (e.g. potassium salt - paragraphs 48 and 52). It would have been obvious to have modified the claims of ‘031 to have included the inorganic oxidizing agent and a radical-generating agent as taught by Tomiyama et al. since it allows the extinguisher to automatically be ignited and burned to generate an aerosol and then the fire can be extinguished (paragraph 64).
Claim 19: The binder resin is not necessarily an epoxy. However, Tomiyama et al. teaches that a binder may be an epoxy (paragraph 67). It would have been obvious to have modified the claims of ‘031 to have used epoxy as the binder since it would result in an acceptable consistency for spreading, for example.
Claim 20: The thickness of the fire-extinguishing-agent-containing layer is not necessarily 120 to 500 μm. However, Tomiyama teaches the fire-extinguishing-agent-containing layer as having a thickness of about 2mm (2000 μm) in an example (paragraph 30), and also acknowledges that the dimensions of the fire extinguisher may be designed in accordance with the installation space and the required fire extinguishing performance (Id.), suggesting it is a result-effective variable, and generally prefers a relatively small thickness (paragraph 44). Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Tomiyama to have a thickness within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art at before the effective filing date of the claimed invention to have modified the thickness to be 120 to 500 μm as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 21: The fire-extinguishing agent is not necessarily 70% to 97% by mass of the fire-extinguishing-agent-containing layer. However, Tomiyama et al. teaches that the fire-extinguishing agent is 70% to 97% by mass of the fire-extinguishing-agent-containing layer (paragraph 48). It would have been obvious to have modified the claims of ‘031 to have used this ratio since it results in the proper ignition performance of the extinguisher.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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/Matthew P Travers/Primary Examiner, Art Unit 3726