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 .
Priority
The examiner acknowledges the certified translation of foreign priority document JP2021-077953 filed 4/8/2026. As the document appears to provide support for the claimed subject matter, the foreign priority claim is considered perfected, and the rejections based on intervening references Shoda et al. (‘346) and Tode et al. (‘942) are withdrawn.
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.
Claim 23 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 23 recites “the protective layer sealing and covering an entire surface of the fire-extinguishing-agent-containing layer”. The original disclosure makes no mention of “sealing”, and in fact the protective layer is disclosed as being permeable to a degree (e.g. paragraphs 11, 46).
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.
Claims 2, 14, and 17-23 are rejected under 35 U.S.C. 103 as being unpatentable over 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).
The protective layer (plate 13 or 15) 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 protective layer is also a thin, sheet-shaped object made by molding, it would have been obvious to have used a the known wet coating technique to the known protective layer for the predictable result of forming the thin sheet-shaped resin plate (MPEP 2143 I. C. and/or D.).
Claim 14: The fire-extinguishing member 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).
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 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.
Claim 21: The fire-extinguishing agent is 70% to 97% by mass of the fire-extinguishing-agent-containing layer (paragraph 48).
Claim 22: The fire-extinguishing-agent-containing 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 23: 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 (e.g. 15 - paragraph 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 (15) sealing and covering an entire surface (surface 113) of 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). Regarding the above, it is noted that while a blowout aperture may be provided in plate 15, other passages (e.g. paragraphs 6, 38), as well as the figures, suggest that this is optional and not necessarily present. Thus, the surface 113 is presumed entirely covered and sealed by plate 15.
The protective layer (15) may be made of a material such as resin (paragraph 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 protective layer is also a thin, sheet-shaped object made by molding, it would have been obvious to have used a the known wet coating technique to the known protective layer for the predictable result of forming the thin sheet-shaped resin plate (MPEP 2143 I. C. and/or D.).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tomiyama et al. as applied to claim 2 above and further in view of Dimanshteyn (U.S. PGPub 4,612,239, cited in IDS) or alternatively Murray (U.S. PGPub 2022/0288435).
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. as applied to claim 2 above and further in view of Zeliff et al. (U.S. PGPub 2012/0034482).
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.).
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, 16, and 22 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 and 23 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.
Claim 23: The claims of ‘031 essentially “anticipate” claim 23 except for the protective layer sealing and covering an entire surface of the fire-extinguishing-agent-containing layer. However, Tomiyama teaches a protective layer (15) sealing and covering an entire surface (surface 113) of the fire-extinguishing-agent-containing layer. Regarding the above, it is noted that while a blowout aperture may be provided in plate 15, other passages (e.g. paragraphs 6, 38), as well as the figures, suggest that this is optional and not necessarily present. Thus, the surface 113 is presumed entirely covered and sealed by plate 15. It would have been obvious to have modified the claims of ‘031 to have sealed and covered an entire surface of the fire-extinguishing-agent-containing layer in order to have protected it and helped direct the aerosol when formed.
Response to Arguments
Applicant's arguments filed 4/8/2026 have been fully considered but they are not persuasive.
On page 7, Applicant describes alleged benefits of the disclosed invention. However, these benefits are not necessarily pertinent to the discussion of anticipation or obviousness by the prior art.
Applicant then argues the following (italicized):
The Office Action includes the assumption that the Tomiyama fire-extinguishing layer is also applied by a wet-coating method, simply because the resins in Paragraph [0067] are liquid. In fact, Tomiyama disclosed that its agent-binder mixtures are "spread to a desired thickness, for example, with rollers and cut to a desired size" or applied to a support member such as paper" ([0066]. This sheet structure is confirmed by an earlier disclosure in Tomiyama ([0044]).
Applicant's argument doesn't demonstrate that the Tomiyama method isn't wet coating. If the resins are liquid, then they are wet. If they are coated onto something (i.e. applied to a substrate), then they are wet-coated.
Regarding claim 23, no sealing is disclosed in the instant application, and in fact the layer is disclosed as being permeable to a degree [0011, 0046]. Claim 23 has been rejected as discussed above, noting that at least layer 15 does not necessarily have holes and entirely covers a surface 113 of the fire-extinguishing-agent-containing layer.
The double-patenting rejection has been updated to reflect Applicant’s amendments but otherwise maintained, there being no further arguments against it.
The prior art rejections over Shoda and Tode have been withdrawn in view of Applicant’s perfecting of the foreign priority claim.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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
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