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 in the reply filed on June 18, 2026 is acknowledged.
Claims 1-6 are pending. Claim 6 is withdrawn.
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 1-5 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. Claim 1 recites “An aerosol fire extinguishing agent composition characterized in that the amount of extinguishing agent (aerosol extinguishing concentration) required fore the fire extinguishing specified in a cup burner test is 10 to 1000 g/m3”; this renders the claim indefinite because the court has held that compositions are indefinite for being defined in terms of properties alone. Ex parte Spacht 165 USPQ 409 (PO BdPatApp 1969); Ex parte Slob 157 USPQ 172 00 bdPatApp 1967); Ex parte Pulvari 157 USPQ 169 (PO BdPatApp). Also, it is unclear of the limitations in the parentheses are part of the claim. Claims 2-5 are subsumed under the rejection.
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-7 of U.S. Patent No. 12,350,534. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons provided below.
US Patent No. 12,350,534 claims an extinguishant composition comprising a fuel, chlorate and potassium salt wherein the potassium salt includes tripotassium citrate, the fuel includes carboxymethyl cellulose sodium and ammonium salts and the chlorate is potassium chlorate, sodium chlorate, strontium chlorate, ammonium chlorate or magnesium chlorate, with an apparent density of greater than 1g/cm3. The difference between the instant claims and U.S. Patent No. 12,350,534 lies in the fact that the instant claims require the cap burner test properties. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the same cap burner test properties in U.S. Patent No. 12,350,534 as U.S. Patent No. 12,350,534 teaches the same composition as the instant claims.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/565,631 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons provided below.
US Application No. 18/565,631 claims an aerosol generating fire extinguishing agent composition comprising (a) an aerosol generating agent comprising an ammonium compound, fluoride, chloride, bromide, iodide, lithium compound, sodium compound, cesium compound, magnesium compound or calcium compound and (b) an oxidizing component comprising a nitrate, chlorate, perchlorate, peroxide and a metal oxide with an apparent density of greater than 1g/cm3. The difference between the instant claims and US Application No. 18/565,631 lies in the fact that the instant claims require the cap burner test properties. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the same cap burner test properties in US Application No. 18/565,631 as US Application No. 18/565,631 teaches the same composition as the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102/103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tomiyama et al (WO2017/209202).
Regarding claims 1-5, Tomiyama et al teaches a fire extinguishing agent composition comprising component A/fuel, component B and component C, wherein the component A/fuel is preferably carboxymethylcellulose sodium and can also be ammonium carboxymethyl cellulose, component B is preferably potassium chlorate and can also be ammonium chlorate and component C is tripotassium citrate (Paragraphs 32-40). Tomiyama et al further teaches changing the shape and amount of the fire extinguishing agent can easily be adjusted (Paragraph 51).
Tomiyama et al teaches the limitations of the instant claims; hence, Tomiyama et al anticipates the claims. Tomiyama et al inherently teaches the claimed amount of extinguishing agent required for a cup burner test is 10-1000g/m3 and the apparent density.
In the alternative, Tomiyama et al fails to specifically disclose the amount of extinguishing agent required for a cup burner test is 10-1000g/m3 and the apparent density.
With regard to the amount of extinguishing agent required for a cup burner test is 10-1000g/m3 and the apparent density, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the amount of extinguishing agent required for a cup burner test in the range of 10-1000g/m3 and the apparent density within the ranges instantly claimed as Tomiyama et al teaches the same composition as the instant invention. Furthermore, Tomiyama et al further teaches changing the shape and amount of the fire extinguishing agent; hence adjust amounts of the components in order to provide the claimed cap burner test and apparent density values would only be obvious to the ordinary artisan.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “Where the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also MPEP 2112.01 I.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tomiyama et al (2) (WO2017/134703).
Regarding claims 1-5, Tomiyama et al (2) teaches a fire extinguishing agent composition comprising component A/fuel, component B/chlorate and component C/potassium salt (Paragraphs 14-22). Tomiyama et al (2) further teaches a composition comprising carboxymethyl cellulose sodium salt, potassium chlorate and tripotassium citrate with an apparent density greater than 1g/cm3 (Examples 10-13).
Tomiyama et al teaches the limitations of the instant claims; hence, Tomiyama et al (2) anticipates the claims. Tomiyama et al (2) inherently teaches the claimed amount of extinguishing agent required for a cup burner test is 10-1000g/m3.
In the alternative, Tomiyama et al (2) fails to specifically disclose the amount of extinguishing agent required for a cup burner test is 10-1000g/m3.
With regard to the amount of extinguishing agent required for a cup burner test is 10-1000g/m3, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the amount of extinguishing agent required for a cup burner test in the range of 10-1000g/m3 within the ranges instantly claimed as Tomiyama et al (2) teaches the same composition as the instant invention.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “Where the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also MPEP 2112.01 I.
In the alternative, claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tomiyama et al (WO2017/209202) as applied to claims 1-5 above, and further in view of Tomiyama et al (2) (WO2017/134703).
Regarding claim 5, Tomiyama et al discloses the invention substantially as claimed. Tomiyama et al teaches the features above. However, Tomiyama et al fails to specifically disclose the apparent density.
In the same field of endeavor, Tomiyama et al (2) teaches a fire extinguishing agent composition component A/fuel, component B and component C, wherein the component A/fuel is preferably carboxymethylcellulose sodium includes ammonium carboxymethyl cellulose, component B includes potassium chlorate or ammonium chlorate and component C includes tripotassium citrate and has an apparent density of greater than 1g/cm3 (Paragraphs 14-26, Examples).
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 an apparent density greater than 1g/cm3 in Tomiyama et al in view of Tomiyama et al (2) in order to form a molded body extinguishant as Tomiyama et al (2) teaches similar compositions as Tomiyama et al and teaches having an apparent density
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 July 2, 2026
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