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 I in the reply filed on May 18, 2026 is acknowledged. The traversal is on the ground(s) that claim 8 has been amended to recite the same controller configuration as claim 1 and non burdensome search and examination. This is not found persuasive because the combination of Group I (claims 1-7) does not require the memory of Group II (claim 8). The subcombination has separate utility such as a fire suppression system in a non duct system. The assertion of non burdensome search and examination is unsupported by evidence. Search and examination of multiple invention with mutually exclusive feature constitutes a burdensome search and examination.
The requirement is still deemed proper and is therefore made FINAL.
Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 18, 2026.
Applicant’s election without traverse of Species B (figure 2B) in the reply filed on May 18, 2026 is acknowledged.
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 1-8 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 the limitation "the location" in line 17. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the information" in lines 17-18. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the fire" in line 19. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation “a fire suppression system” in line 26. It appears to be a double inclusion of the “fire suppression system” recited in line 1.
Claim 1 recites the limitation “normal” in line 27. The interpretation of “normal” constitutes a subjective determination. What may be considered “normal” to one of ordinary skill in the art may not be considered “normal” to another of ordinary skill in the art.
Claim 1 recites the limitation “lithium ion fire gas emissions” in line 27. It appears to be a double inclusion of the “lithium ion fire gas emissions” recited in lines 23-24.
Claim 2 recites the limitation "the fire suppression agent" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "the fire suppression agent" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the data" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation “a lithium ion battery fire” in line 2. It appears to be a double inclusion of the “lithium ion battery fire” recited in claim 1.
Rejection of withdrawn claim 8 is solely for Applicant’s benefit for rejoinder purposes because claim 8 has been withdrawn.
Claim 8 recites the limitation "the location" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation “a fire suppression system” in line 12. It appears to be a double inclusion of the “fire suppression system” recited in line 1.
Claim 8 recites the limitation “normal” in line 13. The interpretation of “normal” constitutes a subjective determination. What may be considered “normal” to one of ordinary skill in the art may not be considered “normal” to another of ordinary skill in the art.
Claim 8 recites the limitation “lithium ion fire gas emissions” in line 13. It appears to be a double inclusion of the “lithium ion fire gas emissions” recited in lines 9-10.
Claim 8 recites the limitation “a lithium ion battery fire operation mode when the lithium ion fire gas emissions are present not present” in lines 15-16. The recitation “are present not present” is nonsensical.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,998,782. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 11,998,782 fully disclose the currently claimed invention. Note, rejection of claim is solely for Applicant’s benefit for rejoinder purposes because claim 8 has been withdrawn. Current claims are different from the withdrawn claims in the parent application. Therefore, Obviousness Double Patenting Rejection is proper.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KIM whose telephone number is (571)272-4905. The examiner can normally be reached M-F 7:30-3:30.
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/CHRISTOPHER S KIM/Primary Examiner, Art Unit 3752 CHRISTOPHER S. KIM
Examiner
Art Unit 3752
CK
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