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 .
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 15 and 18 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.
In claim 15, the limitation “can be” is unclear, as it is not clear whether the recitations that follow are intended to be limitations or preferences.
In claim 18, the limitation “such as” is unclear, as it is not clear whether the recitations that follow are intended to be limitations or preferences.
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) 1-5 and 8-22are rejected under 35 U.S.C. 103 as being unpatentable over Capasso (US 4,830,118) in view of Auguste (US 2,555,461).
Regarding claim 1, Capasso discloses a fire sprinkler shut off tool comprising:
a body (22) comprising a collar (Examiner’s Annotated Figure), a casing (Examiner’s Annotated Figure 1) and a shut off tool hydraulic seal or part thereof (26) to block fluid (Column 5, lines 37-42), the collar for surrounding a sprinkler or an adaptor (21) (Figure 4), the casing comprising a wall and defining a conduit (Examiner’s Annotated Figure 1), the casing also comprising one or more fluid outlet (Column 5, lines 11-19); and one or more fastener (32, 33) to connect to the sprinkler or adaptor (Column 5, lines 44-47), but fails to disclose the shut off tool hydraulic seal or part including a valve movable between an open position to allow fluid to exit from the one or more fluid outlet and a closed position in which fluid is blocked from exiting the one or more fluid outlet.
Auguste discloses a shut off tool wherein a tool hydraulic seal or part includes a valve (52, 51, 45) movable between an open position to allow fluid to exit from the one or more fluid outlet and a closed position in which fluid is blocked from exiting (Column 4, lines 47-51, The valve moves from a position that allows flow of water to a position where the exit is blocked; The device is capable of being screwed in the opposite direction to open the exit).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Capasso with the disclosures of Auguste, replacing the hydraulic tool of Capasso with that of Auguste, providing a shut off wherein tool wherein a tool hydraulic seal or part includes a valve (Auguste, 52, 51, 45) movable between an open position to allow fluid to exit from the one or more fluid outlet and a closed position in which fluid is blocked from exiting (Auguste, Column 4, lines 47-51, The valve moves from a position that allows flow of water to a position where the exit is blocked; The device is capable of being screwed in the opposite direction to open the exit) the one or more fluid outlet (of Capasso, Column 5, lines 11-19), as the configurations of sealing were known alternative structures before the effective filing date of the claimed invention, and the modification would have yielded predictable results, as the configuration would provide for sealing and unsealing of the outlet.
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Examiner’s Annotated Figure 1
Regarding claim 2, Capasso in view of August discloses a method of shutting off a fire sprinkler, the method comprising installing the fire sprinkler shut off tool of claim 1 over a fire sprinkler in need of being shut off (Column 5, lines 44-47).
Regarding claim 3, Capasso discloses a method of shutting off a fire sprinkler, the method comprising:
installing a fire sprinkler shut off tool over a sprinkler in need of shutting off or an adaptor (Column 5, lines 44-47), the fire sprinkler shut off tool comprising:
a body (22) comprising a collar (Examiner’s Annotated Figure), a casing (Examiner’s Annotated Figure 1) and a shut off tool hydraulic seal or part thereof (26) to block fluid (Column 5, lines 37-42), the collar for surrounding a sprinkler or an adaptor (21) (Figure 4), the casing comprising a wall and defining a conduit (Examiner’s Annotated Figure 1), the casing also comprising one or more fluid outlet (Column 5, lines 11-19); and one or more fastener (32, 33) to connect to the sprinkler or adaptor (Column 5, lines 44-47), but fails to disclose the shut off tool hydraulic seal or part including a valve movable between an open position to allow fluid to exit from the one or more fluid outlet and a closed position in which fluid is blocked from exiting the one or more fluid outlet.
Auguste discloses a shut off tool wherein a tool hydraulic seal or part includes a valve (52, 51, 45) movable between an open position to allow fluid to exit from the one or more fluid outlet and a closed position in which fluid is blocked from exiting (Column 4, lines 47-51, The valve moves from a position that allows flow of water to a position where the exit is blocked; The device is capable of being screwed in the opposite direction to open the exit).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Capasso with the disclosures of Auguste, replacing the hydraulic tool of Capasso with that of Auguste, providing a shut off wherein tool wherein a tool hydraulic seal or part includes a valve (Auguste, 52, 51, 45) movable between an open position to allow fluid to exit from the one or more fluid outlet and a closed position in which fluid is blocked from exiting (Auguste, Column 4, lines 47-51, The valve moves from a position that allows flow of water to a position where the exit is blocked; The device is capable of being screwed in the opposite direction to open the exit) the one or more fluid outlet (of Capasso, Column 5, lines 11-19), as the configurations of sealing were known alternative structures before the effective filing date of the claimed invention, and the modification would have yielded predictable results, as the configuration would provide for sealing and unsealing of the outlet.
Regarding claim 4, Capasso discloses a method of manufacturing a fire sprinkler shut off tool comprising:
providing a body (22) (Column 4, lines 49-50) comprising a collar (Examiner’s Annotated Figure), a casing (Examiner’s Annotated Figure 1) (Column 4, lines 50-59) and a shut off tool hydraulic seal or part thereof (26) (Column 4, lines 60-64) to block fluid (Column 5, lines 37-42), the collar for surrounding a sprinkler or an adaptor (21) (Figure 4) (Column 4, lines 50-55), the casing comprising a wall and defining a conduit (Examiner’s Annotated Figure 1), the casing also comprising one or more fluid outlet (Column 5, lines 11-19); and providing one or more fastener (32, 33) to connect to the sprinkler or adaptor (Column 5, lines 44-47), but fails to disclose providing a valve movable between an open position to allow fluid to exit from the one or more fluid outlet and a closed position in which fluid is blocked from exiting the one or more fluid outlet.
Auguste discloses the method including providing a shut off tool wherein a tool hydraulic seal or part includes a valve (52, 51, 45) movable between an open position to allow fluid to exit from the one or more fluid outlet and a closed position in which fluid is blocked from exiting (Column 4, lines 47-51, The valve moves from a position that allows flow of water to a position where the exit is blocked; The device is capable of being screwed in the opposite direction to open the exit).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Capasso with the disclosures of Auguste, replacing in the method the hydraulic tool of Capasso with that of Auguste, providing a shut off wherein tool wherein a tool hydraulic seal or part includes a valve (Auguste, 52, 51, 45) movable between an open position to allow fluid to exit from the one or more fluid outlet and a closed position in which fluid is blocked from exiting (Auguste, Column 4, lines 47-51, The valve moves from a position that allows flow of water to a position where the exit is blocked; The device is capable of being screwed in the opposite direction to open the exit) the one or more fluid outlet (of Capasso, Column 5, lines 11-19), as the methods of sealing were known alternative methods of sealing before the effective filing date of the claimed invention, and the modification would have yielded predictable results, as the method would provide for sealing and unsealing of the outlet.
Regarding claim 5, Capasso in view of Auguste discloses the tool according to claim 1 wherein the collar is integral with the casing (Examiner’s Annotated Figure 1).
Regarding claim 8, Capasso in view of Auguste discloses the tool according to claim 1, but fails to disclose wherein the one or more fluid outlet comprises a size at least as large as the conduit.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Capasso in view of Auguste, providing the one or more fluid outlet comprising a size at least as large as the conduit since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Capasso in view of Auguste would not operate differently with the claimed diameter and since the apertures are intended to have a size, the device would function appropriately having the claimed diameter. Further, it appears that applicant places no criticality on the range claimed (specification, paragraph 22).
Regarding claim 9, Capasso in view of Auguste discloses the tool according to claim 8 wherein the size of the one or more fluid outlet is the combined size at the one or more exit port (Capasso, Figure 1).
Regarding claim 10, Capasso in view of Auguste discloses the tool according to claim 9, wherein the shut off tool hydraulic seal or part thereof comprises an O-ring (Auguste, 52).
Regarding claim 11, Capasso in view of Auguste discloses the tool according to claim 1, wherein the shut off tool hydraulic seal or part thereof engages with a correspondingly shaped element on the sprinkler or adaptor (Auguste, Figure 3).
Regarding claim 12, Capasso in view of Auguste discloses the tool according to claim 11 wherein the correspondingly shaped element on the sprinkler or adaptor is retrofitted or retro-designed for the sprinkler or adaptor (Auguste, Figure 3, Retro-fitted).
Regarding claim 13, Capasso in view of Auguste discloses the tool of claim 1 wherein one or more inter-fitting retaining elements (20, 21) hold the casing in the closed position (Column 5, lines 44-47).
Regarding claim 14, Capasso in view of Auguste discloses the tool according to claim 1 wherein the one or more fastener comprises a mechanical fastener dimensioned to fasten to a mechanical element (20, 21) on the one or more sprinkler or adaptor (Column 5, lines 44-47).
Regarding claim 15, Capasso in view of Auguste discloses the tool according claim 14 wherein the mechanical element on the one or more sprinkler or adaptor may be a complementary fastener or a native sprinkler or adaptor mechanical element (Column 5, lines 44-47, complementary).
Regarding claim 16, Capasso in view of Auguste discloses the tool according claim 1 wherein the body comprises a valve seat (29).
Regarding claim 17, Capasso in view of Auguste discloses the tool according to claim 1 wherein an actuator (Auguste, 46) is comprised and applying force to the actuator moves the valve from the open position to the closed position (Column 4, lines 48-51).
Regarding claim 18, Capasso in view of Auguste discloses the tool according to claim 1 wherein the sprinkler or adaptor is a connectable sprinkler or connectable adaptor comprising one or more sprinkler or adaptor fastener for attachment to a tool such as, a drain tool or the shut off tool (A connectable sprinkler comprising one or more sprinkler fastener (20, 21) for attachment to a tool, such as the shut off tool (Column 5, lines 44-47)).
Regarding claim 19, Capasso in view of Auguste discloses the tool according to claim 1 wherein the sprinkler or adaptor may comprise a traditional or non-connectable sprinkler or adaptor (Figure 1, traditional sprinkler).
Regarding claim 20, Capasso in view of Auguste discloses the tool according to claim 1 wherein the adaptor comprises a sprinkler adaptor; a sprinkler pipe adaptor; or a sprinkler system adaptor (Figure 1, sprinkler adapter).
Regarding claim 21, Capasso in view of Auguste discloses the tool according to claim 1 wherein the fire sprinkler shut off device comprises an intentional supervisory leak (The fluid intentionally leaks through the collar, conduit and apertures in the shut off device, prior to closing of the device).
Regarding claim 22, Capasso in view of Auguste discloses the tool according to claim 1 wherein the tool comprises a diverter or an umbrella (Element 52 of the valve is a diverter that diverts fluid toward the apertures when the valve is in the lowered position.
Claim(s) 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Capasso in view of Auguste and Liebert (US 6,799,596).
Regarding claim 6, Capasso in view of Auguste discloses the tool according to claim 1, but fails to disclose wherein the casing is movable relative to the collar from an open position in which fluid can escape from the one or more fluid outlet to a closed position in which the one or more fluid outlet is closed so that no fluid can escape.
Liebert discloses a shut-off wherein as an alternative to an integral structure (Column 6, lines 45-47), a casing (14) is movable relative to a collar (12) (Column 6, lines 40-43, The casing is screwed to the collar).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Capasso in view of Auguste with the disclosures of threading the casing to the collar, and thereby making the casing movable relative to the collar, as the structures were known alternatives to connection of the casing and the collar, and would have provided known alternative structures for sealing of the device for flow of fluid, as disclosed by Liebert (Column 6, lines 36-47).
Capasso in view of Auguste and Liebert discloses a tool movable relative to the collar from an open position in which fluid can escape from the one or more fluid outlet to a closed position in which the one or more fluid outlet is closed so that no fluid can escape (The device is movable from a not fully screwed connection between the collar and casing with the valve member in a lowered position, which allows fluid to escape through the outlets, to a closed position where the casing is fully screwed and the valve member is lifted into a raised position. No fluid can escape in the closed position).
Regarding claim 7, Capasso in view of Auguste and Liebert discloses the tool or method according to claim 6 wherein the movement closes the valve (Auguste, Column 4, lines 47-51).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R. DANDRIDGE whose telephone number is (571)270-1505. The examiner can normally be reached M-T 9am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur O. 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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CHRISTOPHER R. DANDRIDGE
Primary Examiner
Art Unit 3752
/CHRISTOPHER R DANDRIDGE/Primary Examiner, Art Unit 3752