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 .
Acknowledgment is made of the amendment filed 1/21/26. Accordingly the application has been amended.
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) 1,3-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP0940615.
Claims 1,3. EP0940615 discloses a firestop device comprising two opposed faces (as seen in the embodiments of figures 1,3,4), and an intermediate passage defining an axis (L) for passage of elongate objects (such as pipe 7 or 207 and as noted throughout the disclosure), wherein the passage forms part of a hole through two sides of a structure (3), and a displaceable barrier (6 or 106) is located between the faces; wherein the barrier is rotated about the axis to change the diameter of the passage (as noted in the disclosure and seen in the figures); and wherein the barrier is located outside of the hole through the structure (as seen in figures where at least one or both of the ends of the barrier are located outside of the hole throughout the structure). EP0940615 does not expressly disclose wherein the barrier comprises fabric or wherein the fabric comprises Kevlar (RTM). Instead EP0940615 discloses foil or flexible material (paragraph 0014). Applicant has not disclosed that a fabric or Kevlar (RTM) solves any stated problem or is for any particular purpose. Moreover, it appears that the barrier of EP0940615, or applicant’s invention, would perform equally well with a variety of flexible materials.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to have modified EP0910615 such that the barrier comprises fabric or a Kevlar (RTM) because such a modification would have been considered a mere design consideration which fails to patentably distinguish over EP0940615. It would have been obvious to one having ordinary skill in the art at the time the invention was filed since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In the instant case it would have been obvious for at least the reason of for at least the reason of having a strong and lightweight barrier that resists puncture or tearing and ensuring secure seal.
Claim 4. A device according to claim 1, wherein the barrier comprises a cylindrical tube (as seen in the figures and noted in the disclosure).
Claim 5. A device according to claim 4 wherein one end of the tube is connected to a rotatable front housing (4 or 104), and a distal end (5 or 105) is connected to the structure (as seen in the figures and noted in the disclosure).
Claim 6. A device according to claim 1, further comprising a lock part (113) to engage a catch -means and prevent rotation (paragraph 0024).
Claim 7. A device according to claim 6 wherein the lock part disengages the catch means when moved axially (as noted at paragraph 0024).
Claim 8. A device according to claim 1- wherein both faces of the device are located to one side of a structure (as seen in at least figures 3-5 and/or where both faces are on the same vertical level and thus located to the same one side of a structure with respect to the vertical).
Claim 9. A device according to claim 3, wherein the barrier comprises a cylindrical tube (as seen in the figures at least in the unrotated condition).
Response to Arguments
Applicant's arguments filed 1/21/26 have been fully considered but they are not persuasive.
Applicant’s remarks that the examiner has misinterpreted the claimed invention or the prior art reference or both is not persuasive. Applicants remarks appear to be drawn to the newly amended claim limitation that the barrier is located outside the hole through the structure. This was not a feature previously claimed or considered. However, the reference does disclose this as noted in the rejection above. In response to applicant's arguments at page 4 of the remarks that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., , access to only one side of the structure, reduced hole size, and objects coated with an intumescent material intended to expand) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Accordingly, applicants arguments are not persuasive to overcome the rejection.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA LAUX whose telephone number is (571)272-8228. The examiner can normally be reached M-F 7:30-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at 571.270.3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JESSICA L. LAUX
Examiner
Art Unit 3635
/JESSICA L LAUX/ Primary Examiner, Art Unit 3635