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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a fire suppression composition, classified in A62D 1/0092.
II. Claims 11-18, drawn to a method for suppressing a fire, classified in A62C 99/0018.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product as claimed can be used in a materially different process of using that product, such as a propellant for consumer products (e.g. shaving cream etc.).
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required and because applicant has no statement on the record that for patentability purposes the inventions stand and fall together.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Alan M. Koenck on 06/22/26 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-18 are thus withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
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.
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.
EXAMINATION NOTE
Nitrogen gas (N2) at 1 atmospheric pressure and at a temperature of 20oC or 68oF has a known density of about 1.165 Kg/M3. Carbon dioxide gas (CO2) at 1 atmospheric pressure and at a temperature of 20oC or 68oF has a known density of about 1.830 Kg/M3. Helium gas (He) at 1 atmospheric pressure and at a temperature of 20oC or 68oF has a known density of about 0.1664 Kg/M3.
Claim(s) 1-3, 5 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RU 2259856 C2.
RU 2259856 C2 discloses a method for producing a multicomponent gas composition for volumetric fire extinguishing of smoldering fires consisting in obtaining a mixture of carbon dioxide, nitrogen and/or helium gases and the ratio of the components of the fire extinguishing multicomponent composition is chosen taking into account the maximum possible value of the Lewis criterion of the extinguishing agent. The mixture is designed to have its specific weight equal to or approximately equal to air density under normal conditions, see paragraphs [0011], [0026], [0029], [0034] and [0043].
Please note that dry air at 1 atmospheric pressure and at a temperature of 20oC or 68oF has a density of 1.2041 Kg/M3.
Applicant’s claims are deemed to be directly anticipated over RU 2259856 C2’s fire extinguishing composition consisting of: 94 mol % nitrogen gas and 6 mol % of carbon dioxide, as set forth in paragraphs [0024] and [0042]. The examiner calculated density of said fire extinguishing composition at 1 atmospheric pressure and at a temperature of 20oC or 68oF is 1.2049 Kg/M3.
Claim(s) 4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over RU 2259856 C2.
RU 2259856 C2 has been described and above and differs from Applicant’s claimed invention in that there is not a direct teaching (i.e. by way of a specific example) to where a fire extinguishing composition comprises an admixture of nitrogen, carbon dioxide and helium gases within Applicant’s claimed mol concentration ranges as set forth in independent claim 1.
It would have been very obvious to one having ordinary skill in the art to use
RU 2259856 C2’s direct suggestion to the advantageous addition of helium gas to a fire extinguishing mixture comprising nitrogen gas and carbon dioxide gas, as strong motivation to actually incorporate some helium gas into the fire extinguishing composition for the benefits it would impart (e.g. to offset the high density of carbon dioxide when higher concentrations of carbon dioxide are used).
Claim(s) 1-3, 5 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 20080027704 A.
KR 20080027704 A discloses gas system chemical for extinguish fire composition of the total flooding used for fireproof or the fire extinguishing of the fire area, and the gas system chemical for extinguish fire composition in which particularly it above anything else can do not have the ozone destroy potential, and it use in the place where man lives as well as the place where furthermore the medicine design concentration of the fire extinguishing agent is lower than that of NOAEL and where man does not live as the fire extinguishing agent of the total flooding, and the specific gravity of the fire extinguishing agent is similar to the specific gravity of the air and the fire extinguishing agent is easily mixed with the air and it can shorten the fire fighting time and moreover, the cost is inexpensive, see paragraph [0019].
The fire extinguishing compositions comprise: 1) 0.1-10.0 mol% carbon dioxide and the rest being nitrogen gas, or 2) 0.1-10.0 mol% carbon dioxide, 0.1-10.0 mol% trifluoromethane and the rest being nitrogen gas, see paragraphs [0020]-[0021].
Applicant’s claims are deemed to be directly anticipated over KR 20080027704 A’s fire extinguishing composition consisting of: 92 mol % nitrogen gas and 8 mol % of carbon dioxide, as set forth in paragraph [0039]. The examiner calculated density of said fire extinguishing composition at 1 atmospheric pressure and at a temperature of 20oC or 68oF is 1.2182 Kg/M3.
Allowable Subject Matter
Claims 8-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 8-9 are deemed to be both novel and unobvious over the closest prior-art reference which is RU 2259856 C2, because RU 2259856 C2 lacks sufficient guidance to make a fire-extinguishing composition comprising and admixture of nitrogen, carbon dioxide and helium within Applicant’s claimed concentration ranges. More specifically, it is held that RU 2259856 C2 lacks sufficient guidance to actually employ Applicant’s claimed helium gas concentration range of 2 to 8 mol % as set forth in these claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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