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
No claims are withdrawn from further consideration pursuant to 37 CFR 1.145, as lacking unity of invention (MPEP § 1850, PCT Rule 13.1, and PCT Rule 13.2). Applicant has elected Species B (Fig. 18a-c). Election was made without traverse in the reply filed on 03/05/2026.
Status of Claims
Claims 2, 5, and 8-10 are original. Claims 1, 3-4, and 6-7 are amended. Therefore, claims 1-10 are currently pending and have been considered below.
Drawings
The drawings are objected to under PCT Rule 11.13 because Figures. 21a and 21b are not legible.
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 limitation(s) is/are as follows:
“A sensing part” in line 4 of claim 1. The limitation appears to include a generic placeholder “part” coupled with functional language “configured to detect at least one of a temperature, a voltage, or a smoke” and the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
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.
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.
A review of the specification appears have corresponding structure described in the specification for 35 U.S.C. 112(f) for the limitation “a sensing part” in line 4 of claim 1, because para. 0062 of the applicant’s specification states “As illustrated in FIG. 1, the sensing part 500 may include a first sensor 510 that detects fire within the battery module 30 and a second sensor 520 that detects generation of smoke during fire outside the battery module 30.” The examiner will interpret this limitation as a sensor, or equivalent thereof.
This application includes one or more claim limitations that contain a generic placeholder that is coupled with functional language, but the limitations recite sufficient structure to perform the recited function and therefore are NOT being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Such claim limitation(s) is/are as follows:
“A pipe fitting member” in line 9 of claim 1. The limitation appears to include a generic placeholder “member” coupled with functional language “to change a supply pressure” but the generic placeholder is modified by sufficient structure, material, or acts for performing the claimed function, namely a pipe fitting.
“A fire-extinguishing part” in line 6 of claim 1. The limitation appears to include a generic placeholder “part” coupled with functional language “to inject a fire-extinguishing chemical” but the generic placeholder is modified by sufficient structure, material, or acts for performing the claimed function, namely a pipe fitting member and thus a pipe fitting.
“A ring member” in lines 1-2 of claim 8. The limitation appears to include a generic placeholder “member,” but is NOT coupled with functional language.
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.
Claims 9-10 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 9 recites the limitation "the inner diameters of the pipe fitting member" in lines 1-2 of claim 9. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the smallest inner diameter" in line 2 of claim 9. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation “a pressure of the fire-extinguishing chemical passing through the pipe fitting member” in lines 1-2 of claim 10, but claim 1 recites the limitation “a supply pressure of the fire extinguishing chemical” in line 11 of claim 1. It is unclear if there are separate “pressures of the fire extinguishing chemicals” or if these are the same “pressure of the fire extinguishing chemicals”.
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.
(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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oki (JP2018055768).
Regarding claim 1, Oki discloses a fire-extinguishing system (Fig. 1, 1) of an energy storage device (Para. 0001 – “battery system”) including battery racks (Fig. 1, 25) configured to accommodate battery modules (Fig. 1, 27), the fire-extinguishing system comprising:
a sensing part (Para. 0035 – ”temperature sensor (not shown)”) configured to detect at least one of a temperature, a voltage, or a smoke of each of the battery modules (Battery modules are not positively recited and thus the sensing part needs only to be capable of detecting at least one of a temperature, a voltage, or a smoke of a battery module.; Para. 0035); and
a fire-extinguishing part (Fig. 1, {7, 9, 31, 33, & 39}) configured to inject a fire-extinguishing chemical (Para. 0034 – “coolant”) to a corresponding one of the battery modules (Battery modules are not positively recited and thus the fire extinguishing part needs only to be capable of injecting a fire-extinguishing chemical to a battery module.), if at least one of values detected by the sensing part is greater than a preset threshold value (Para. 0034),
wherein the fire-extinguishing part includes a pipe fitting member (Fig. 1, 39) on a path (Fig. 1, path between 31 discharge of piping (7).) through which the fire-extinguishing chemical is supplied with respect to the battery racks to change a supply pressure of the fire-extinguishing chemical (Para. 0043-0044 & 0108; A restriction constituted by an orifice, where the area of the restriction cross section of the orifice is constant inherently changes the supply pressure because the restriction accelerates the fluid, causing a pressure drop.; The fire extinguishing chemical is not positively recited and thus the pipe fitting member needs to be only capable of changing a supply pressure of a fire-extinguishing chemical.).
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(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oki in View of Mongaki (JPH1085562).
Regarding claim 2, Oki discloses the fire-extinguishing system as claimed in claim 1.
Oki does not explicitly teach wherein the pipe fitting member is configured to reduce an inner diameter of the path through which the fire-extinguishing chemical passes.
However, Mongaki teaches a pipe fitting member (Fig. 1-2, 3-8) configured to reduce an inner diameter (The inner diameter of 4a is reduced to the diameter of 6a as shown in Figs. 1-2) of a path (The path is from 4a to 3a.)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the pipe fitting member of Mongaki with the known function of restricting flow (Para. 0003 – “limiting orifice”), by performing a simple substitution with the pipe fitting member disclosed by Oki yielding the predictable result restricting flow. The resulting structure is the pipe fitting member configured to reduce an inner diameter of the path through which the fire-extinguishing chemical passes (The fire extinguishing chemical is not positively recited and thus the fire extinguishing chemical only needs to be capable of passing through the path.).
Regarding claim 3, Oki discloses the fire-extinguishing system as claimed in claim 1 but does not explicitly disclose wherein the pipe fitting member includes an orifice having an inner diameter less than that of an orifice connected to the fire-extinguishing part in a portion of the path through which the fire extinguishing chemical is supplied to the battery racks.
However, Mongaki teaches a pipe fitting member (Fig. 1-2, 3-8) including an orifice (Fig. 1-2, 6 & 6A) having an inner diameter (Fig. 1-2, 6A) less than that of an orifice (Fig. 1-2, inner diameter of 1) connected to a fire-extinguishing part (Fig. 1, 1).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the pipe fitting member of Mongaki with the known function of restricting flow (Para. 0003 – “limiting orifice”), by performing a simple substitution with the pipe fitting member disclosed by Oki yielding the predictable result restricting flow. The resulting structure is an orifice connected to the fire-extinguishing part in in a portion of the path (The portion of the path from 4a to 3a as shown in Fig. 1 of Mongaki which corresponds to item 39 as shown in Fig. 1 of Oki.) through which the fire extinguishing chemical is supplied to the battery racks (The fire extinguishing chemical is not positively recited and thus the orifice needs only to capable of supplying a fire extinguishing chemical, which it is.).
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oki in View of Mongaki, and Rennels (NPL titled “Pipe Flow”).
Regarding claim 9, Oki discloses the fire-extinguishing system as claimed in claim 1, but does not disclose wherein, in the inner diameters of the pipe fitting member, the smallest inner diameter is 1.5 [mm] to 2.5 [mm].
However, Mongaki teaches a pipe fitting member (Fig. 1-2, 3-8), having inner diameters (Fig. 1-2, inner diameter of items 3-8), and a smallest inner diameter (Fig. 1-2, 6a).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the pipe fitting member of Mongaki with the known function of restricting flow (Para. 0003 – “limiting orifice”), by performing a simple substitution with the pipe fitting member disclosed by Oki yielding the predictable result restricting flow.
Oki in View of Mongaki teaches the claimed invention except for the smallest inner diameter is 1.5 [mm] to 2.5 [mm]. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include for the smallest inner diameter is 1.5 [mm] to 2.5 [mm], since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. MPEP 2144.05-II-A.
Furthermore, the applicant has stated in Para. 0111 that “If the inner diameter dl of the third orifice 241c is 1.5 [mm] to 2.5 [mm], the injection pressure for the fire-extinguishing chemical having a pressure of 22 [bar] to 42 [bar], which is applied from the fire extinguishing container 110, may be reduced by 2 [bar] to 5 [bar], which has an advantage of increasing the injection time to 5 minutes or more,” which states an advantage but does not demonstrate criticality because there are no new or unexpected results because 6.4.1 of Rennels on page 67 demonstrates that the time to drain a vessel is directly proportional to the diameter to the orifice via the loss coefficient as demonstrated by Eq. 13.3 on page 141 of Rennels and therefore one having ordinary skill in the art before the effective filing date of the claimed invention would recognize that adjusting the diameter of the can increase the discharge time.
Regarding claim 10, Oki discloses the fire-extinguishing system as claimed in claim 1, but does not teach wherein a pressure of the fire-extinguishing chemical passing through the pipe fitting member is reduced by 2 [bar] to 5 [bar] (The fire extinguishing chemical is not positively recited and thus the pipe fitting member needs to be only capable of changing a supply pressure of a fire-extinguishing chemical by 2 [bar] to 5 [bar].).
However, Mongaki teaches a pipe fitting member (Fig. 1-2, 3-8) capable of reducing a pressure of a fire-extinguishing chemical (Mongaki shows a restriction constituted by an orifice {Fig. 1, 6a} which inherently changes the supply pressure because the restriction accelerates the fluid, causing a pressure drop).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the pipe fitting member of Mongaki with the known function of restricting flow (Para. 0003 – “limiting orifice”), by performing a simple substitution with the pipe fitting member disclosed by Oki yielding the predictable result restricting flow.
Oki in view of Mongaki teaches the claimed invention except for the pipe fitting member capable of reducing the pressure of a fire-extinguishing chemical by 2 [bar] to 5 [bar].
However, Rennels teaches a direct relationship between the office size and the pressure drop (Eq. 13.3 on page 141 & section 3.2.2-3.2.3 on pages 28-29), and therefore one having ordinary skill in the art before the effective filing date of the claimed invention would recognize that changing the diameter of item 6a of Mongaki (Fig. 1, 6a) can change the pressure.
Oki in view of Mongaki teaches the claimed invention except for the specific diameter for item 6a which could reduce the pressure of a fire-extinguishing chemical by 2 [bar] to 5 [bar]. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the diameter for item 6a which could reduce the pressure of a fire-extinguishing chemical by 2 [bar] to 5 [bar], since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum value involves only routine skill in the art. In re Aller, 105 USPQ 233. MPEP 2144.05-II-A.
Furthermore, the applicant has stated in Para. 0111 that “If the inner diameter dl of the third orifice 241c is 1.5 [mm] to 2.5 [mm], the injection pressure for the fire-extinguishing chemical having a pressure of 22 [bar] to 42 [bar], which is applied from the fire extinguishing container 110, may be reduced by 2 [bar] to 5 [bar], which has an advantage of increasing the injection time to 5 minutes or more,” which states an advantage but does not demonstrate criticality because there are no new or unexpected results because 6.4.1 of Rennels on page 67 demonstrates that the time to drain a vessel is directly proportional to the diameter to the orifice, via the loss coefficient and therefore one having ordinary skill in the art before the effective filing date of the claimed invention would recognize that decreasing the diameter of the orifice would increase the discharge time.
Claim(s) 4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oki in View of Mongaki, NPL titled “MSS SP-95-2018”, hereinafter ‘2018 and Rennels (NPL titled “Pipe Flow”).
Regarding claim 4, Oki in view of Mongaki teaches the fire-extinguishing system as claimed in claim,
Oki further discloses a chemical container (Fig. 1, 31) of the fire-extinguishing part.
Oki does not teach wherein the pipe fitting member includes a swaged nipple with a first orifice coupled to a chemical container of the fire-extinguishing part, and a second orifice having an inner diameter that gradually decreases from the first orifice.
However, ‘2018 teaches a swaged nipple (Annotated Fig. A; The claim limitation “swaged nipple” is a product-by-process claim limitation because “swaged” is defined by dictionary.com as “to bend or shape by means of a swage” or “to reduce or taper (an object), as by forging or squeezing”, which is a process of making the product, as long as the reference has a nipple it meets the structural limitations of this claim, see MPEP 2113.) with a first orifice (Annotated Fig. A) and a second orifice (Annotated Fig. A) having an inner diameter that gradually decreases from the first orifice.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the swaged nipple taught by ‘2018 by into the pipe fitting member (Incorporate the opening opposite the first orifice of ‘2018 as shown in Annotated Fig. A into item 4a of Mongaki shown in Fig. 1), taught by Oki in view of Mongaki by the known method of threading because in combination, each element merely performs the same function as it does separately, namely the pipe fitting member restricts flow and the swaged nipple changes the size of piping from one size to another, and the results of the combination were predictable namely fluid flowing from the chemical container through the pipe fitting member and to the fire-extinguishing part to suppress a fire.
Additionally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention would recognize that incorporating incorporate the swaged nipple taught by ‘2018 into the pipe fitting member taught by Oki in View of Mongaki (Incorporate the opening opposite the first orifice of ‘2018 as shown in Annotated Fig. A into item 4a of Mongaki shown in Figs. 1) because this would allow the adaption from one pipe size to another and provide the benefit of reducing the high radially inward velocity and substantially reduces the head loss as described on page 101 of Rennels (The swaged has the same geometry as shown in Figure 10.5 on page 104 of Rennels), with a reasonable expectation of success.
Annotated Figure(s)
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Regarding claim 5, Oki in View of Mongaki, ‘2018 and Rennels teaches the fire-extinguishing system as claimed in claim 4. ‘2018 further teaches wherein, based on a cross-section, an angle (Annotated Fig. B) of the second orifice is 30° to 120° (Annotated Figure 1A shows an angle at 90°).
Annotated Figure(s)
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392
522
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Regarding claim 6, Oki in view of Mongaki, ‘2018 and Rennels teaches the fire-extinguishing system as claimed in claim 4.
‘2018 further teaches wherein a third orifice (Annotated Fig. 1C) having an inner diameter (Annotated Fig. 1C) that has a same size as a final inner diameter (Annotated Fig. 1C) of the second orifice is further disposed at an end of the second orifice (Annotated Fig. 1C).
Annotated Figure(s)
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502
701
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Regarding claim 7, Oki in View of Mongaki, ‘2018 and Rennels teaches the fire-extinguishing system as claimed in claim 6.
Mongaki further teaches wherein the pipe fitting member further includes an adapter (Fig. 1, {3-7}) coupled to an end of the swaged nipple (The fire-extinguishing system taught by Oki in View of Mongaki, ‘2018 and Rennels includes the swaged nipple is incorporated into 4a of Mongaki as described in the rejection of claim 4.) and provided with an orifice (Annotated Fig. 1) therein to define an injection path (Annotated Fig. 1) for the fire-extinguishing chemical.
Annotated Figure(s)
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675
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Regarding claim 8, Oki in View of Mongaki, ‘2018 and Rennels teaches the fire-extinguishing system as claimed in claim 7.
Mongaki further teaches wherein a ring member (Fig. 1-2, 8) having an inner diameter (Fig. 1-2, inner diameter of 8) less than that of the orifice of the adapter is further provided inside the adapter (Fig. 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW DOMENIC ONDREJCAK whose telephone number is (571)270-5465. The examiner can normally be reached Mon - Fri 8:00-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur 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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/ANDREW DOMENIC ONDREJCAK/Examiner, Art Unit 3752 April 14, 2026
/ARTHUR O. HALL/Supervisory Patent Examiner, Art Unit 3752
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