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 13-15 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.
Each of the claims recites ASTM or MSHA or AS1055 or TSO standards but does not specify the version of the standards. These standards are subject to periodic revision and change and thus the scope of the claims cannot be ascertained. Because the standards can change during the term of the issued patent, the description of the hose in terms of performance as dictated by a changeable standard is not considered to be distinct.
Claim Rejections - 35 USC § 102
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.
Claims 1-4, 11-12, 16 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication No. 2010/0266788 A1 to Niccolls et al. (Niccolls).
With regard to claim 1, Niccolls discloses a fireproof hose (Niccolls, title, abstract) comprising
a thermal insulating layer comprising an yttria-stabilized zirconia (YSZ) ceramic substrate layer (paragraph 0061) disposed between a first silicone rubber layer and a second silicone rubber layer (paragraphs 0067 –disclosing an embodiment in which the ceramic layer is sandwiched between a composite layer and another layer such as an intumescent coating, 0038 – disclosing the composite layer, 0041—disclosing silicone as the matrix material of the composite layer, 0096—disclosing silicone as the carrier material for the intumescent material to create the intumescent coating).
With regard to claim 2, Niccolls discloses the fireproof hose of claim 1 as set forth above, and further discloses comprising an inner tube layer prepared from a composition comprising a polytetrafluoroethylene (PTFE) (paragraph 0056 disclosing polytetrafluoroethylene as an inner liner layer on the composite layer).
With regard to claim 3, Niccolls discloses the fireproof hose of claim 2 as set forth above, and further discloses comprising a reinforcing layer (paragraph 0092 disclosing the use of a mesh to assist with the performance of the intumescent material).
With regard to claim 4, Niccolls discloses the fireproof hose of claim 3 as set forth above, and further discloses wherein the reinforcing layer is disposed between the inner tube layer and the thermal insulating layer (in the embodiment for the rejection of this claim, the reinforcing fibers disclosed in paragraph 0040 discloses a multilayer composite layer. Paragraph 0043 discloses reinforcing fibers that create a reinforcing layer).
With regard to claim 11, Niccolls discloses the fireproof hose of claim 3 as set forth above, and further discloses wherein the reinforcing layer comprises a metallic braid, optionally a stainless steel metallic braid (paragraph 0044).
With regard to claim 12, Niccolls discloses a fireproof hose (Niccolls, title, abstract) comprising a multiplicity of layers from an inner to an outer radial direction comprising:
i) an inner tube layer prepared from a composition comprising a PTFE (paragraph 0056 disclosing polytetrafluoroethylene as an inner liner layer on the composite layer);
ii) a first reinforcing layer comprising a metallic braid (paragraph 0044);
iii) a first silicone rubber layer (paragraphs 0067 –disclosing an embodiment in which the ceramic layer is sandwiched between a composite layer and another layer such as an intumescent coating, 0038 – disclosing the composite layer, 0041—disclosing silicone as the matrix material of the composite layer, 0096—disclosing silicone as the carrier material for the intumescent material to create the intumescent coating);
iv) a YSZ ceramic substrate layer (paragraph 0061); and
v) a second silicone rubber layer (paragraphs 0067 –disclosing an embodiment in which the ceramic layer is sandwiched between a composite layer and another layer such as an intumescent coating, 0038 – disclosing the composite layer, 0041—disclosing silicone as the matrix material of the composite layer, 0096—disclosing silicone as the carrier material for the intumescent material to create the intumescent coating).
With regard to claim 16, Niccolls discloses the hose of claim 1 as set forth above, and further discloses wherein the hose is rated for a continuous operating temperature range of -65 °F to +450 °F (-54 °C to +232 °C) (this statement of the field of intended use describes how the claimed apparatus is expected to perform. It does not further limit the device since the claim does not specify what type of rating is claimed. Presumably a device can be negatively or positively rated with regard to a specific performance standard. As such, the device of Niccolls is “rated” for the claimed temperature range).
With regard to claim 24, Niccolls discloses the fireproof hose of claim 11 as set forth above, and further discloses wherein the metallic braid is a stainless steel metallic braid (paragraph 0044.
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.
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 5-10, 13-15, 19 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 2010/0266788 A1 to Niccolls et al. (Niccolls).
With regard to claim 5, Niccolls discloses the fireproof hose of claim 1 as set forth above, but fails to disclose the specific chemical formula wherein the YSZ ceramic substrate layer comprises zirconia (ZrO2) and from about 3 mol% to about 8 mol% yttria (Y203).
Paragraph 0061 describes the use of phase stabilized zirconias such as yttria-stabilized zirconias. It appears that the material disclosed by Niccolls would not function any differently than the specifically claimed formulation of zirconia and 3 to 8 mol% yttria. It is submitted that the claimed formulation defines the functional range of the amount of yttria needed to stabilize the zirconia. Absent evidence of some distinctive characteristic provided to the apparatus due to the formulation process of the YSZ material the claimed apparatus is not distinct from that disclosed in Niccolls.
With regard to claim 6, Niccolls discloses the fireproof hose of claim 1, and further discloses wherein the YSZ ceramic substrate layer has a thickness of from about 20 micrometers to about 100 micrometers (paragraph 0055 disclosing .01 to 10 mm which overlaps the claimed range).
Even though Niccolls does not disclose the entire range claim, the portion of the range that does overlap is sufficient to establish the lack of obviousness of the claimed apparatus.
With regard to claim 7, Niccolls discloses the fireproof hose of claim 1 as set forth above, but fails to further discloses wherein the first and second silicone rubber layers are prepared from a silicone rubber composition comprising from about 40 -80 wt%, or about 50 -70 wt% of a silicone base rubber.
Niccolls fails to disclose 40-80 or 50-70 wt% of a silicone base rubber. Niccolls does disclose the presence of silicone in the first and second layers. Applicant has not disclosed the claimed range as being critical to the invention (as supported by the alternatively claimed smaller range and the lack of explanation of the criticality of the range in the specification).
As set forth in MPEP § 2144.05(II)(A), it has been held that where the difference between the prior art and a claimed invention involves only a change in form, proportion or degree, such a difference is unpatentable over the prior art, even though changes of the kind may produce better results than prior inventions [Smith v. Nichols, 88 U.S. 112, 118-19 (1874) & In re Williams, 36 F.2d 436, 438 (CCPA 1929)]. The specific formulation of Niccolls performs the same function as the claimed formulation.
With regard to claim 8, Niccolls discloses the fireproof hose of claim 7, and further discloses wherein the silicone rubber composition comprises an additive selected from the group consisting of curing agents, process aids, fire retardants (paragraph 0042), adhesion promoters, antioxidants, ultraviolet light stabilizers, fillers, thixotropic agents, additional silicones, dyes, and colorants.
With regard to claim 9, Niccolls discloses the fireproof hose of claim 8 as set forth above, wherein the silicone rubber composition comprises a ground silica filler (paragraph 0043) in an amount between from about 0-30 wt%, 1-20 wt%, 5-15 wt%, or about 10-12 wt% (not disclosed).
It appears the disclosed ground silica fiber of Niccolls performs the same function as the ground silica fiber claimed. Applicant has not indicated criticality of the claimed composition amounts.
As set forth in MPEP § 2144.05(II)(A), it has been held that where the difference between the prior art and a claimed invention involves only a change in form, proportion or degree, such a difference is unpatentable over the prior art, even though changes of the kind may produce better results than prior inventions [Smith v. Nichols, 88 U.S. 112, 118-19 (1874) & In re Williams, 36 F.2d 436, 438 (CCPA 1929)]. The specific formulation of Niccolls performs the same function as the claimed formulation and is thus a functional equivalent.
With regard to claim 10, Niccolls discloses the fireproof hose of claim 8 as set forth above, but fails to disclose wherein the silicone rubber composition comprises a fire retardant comprising a zinc borate.
As noted by applicant’s specification paragraph 0076, US Borax offers a zinc borate commercial fire retardant under the brand name FIREBRAKE. It would have been obvious to one having ordinary skill in the art at the time of filing to provide the device of Niccolls with a fire retardant such as FIREBRAKE in order to simplify manufacture of the hose (i.e. not requiring a separate process to create the fire retardant materials incorporated into the hose).
With regard to claims 13, 14 and 15, Niccolls discloses the fireproof hose of claim 1, but fails to disclose wherein the first and second silicone rubber layers exhibit i) hardness of 65 to 75 Shore A under ASTM 2240; ii) tensile strength of at least 750 psi under ASTM D412; iii) percent elongation of at least 150 % under ASTM D412; iv) tear resistance of at least 50 Die C under ASTM D624; v) 50% Modulus of from 250 to 350 psi under ASTM D412; and vi) 100% Modulus of from 300 to 450 psi under ASTM D412 (claim 13), wherein the thermal insulating layer cured silicone rubber composition passes flame resistance test when tested under MSHA ASTP5007; and exhibits high outer visual char formation when tested under MSHA ASTP5007 (claim 14), wherein the hose meets or exceeds 15 minute AS 1055 and TSO performance requirements under no flow conditions (claim 15). These limitations are considered to define the field of intended use of the hose as a description of how the hose will perform in a specific scenario. There does not appear to be any structure of the claimed apparatus that performs the claimed functions and thus the device claimed is not distinct from the device of Niccolls.
Furthermore, It would have been obvious to one having ordinary skill in the art at the time of filing to provide the hose set forth in the claims 13-15 as a process of testing the hose for suitability in various conditions of the field of intended use, where the motivation for a specific hardness of 65 to 75, a tensile strength 750 psi, a percent elongation at failure of at least 150%, a tear resistance of at least 50 Die C, a 50% Modulus of 250 to 350 psi, a 100% Modulus of 300 to 450 psi, a flame resistance, a char retention performance, and a minimum fire resistance period are dictated by the specific field of intended use of the claimed apparatus. A hose that performed as expected in the field of intended use and is able to pass the safety and performance testing conditions required by the claims would be eligible for sale to customers that require those performance standards and thus desirable to a person having ordinary skill in the art at the time of filing.
With regard to claim 19, Niccolls discloses the fireproof hose of claim 1 as set forth above, but does not fully disclose the range wherein the YSZ ceramic substrate layer has a thickness of from about 20 micrometers to about 100 micrometers. (paragraph 0055 disclosing .01 to 10 mm which overlaps the claimed range).
Even though Niccolls does not disclose the entire range claim, the portion of the range that does overlap is sufficient to establish the lack of obviousness of the claimed apparatus.
With regard to claims 25 and 26, Niccolls discloses the fireproof hose of claim 1 as set forth above, but does not further disclose wherein the first silicone rubber layer has a thickness in a range of 0.2" to 0.3" inches thick.
As set forth in MPEP § 2144.05(II)(A), it has been held that where the difference between the prior art and a claimed invention involves only a change in form, proportion or degree, such a difference is unpatentable over the prior art, even though changes of the kind may produce better results than prior inventions [Smith v. Nichols, 88 U.S. 112, 118-19 (1874) & In re Williams, 36 F.2d 436, 438 (CCPA 1929)]. Niccolls paragraph 0039 discloses the thickness of the hose is dictated by the diameter of the hose and the field of intended use. It would have been obvious to one having ordinary skill in the art at the time of filing to provide the device of Niccolls with a first silicone layer thickness of 0.2 to 0.3 inches and a second silicone layer thickness in a range of 0.1 to 0.2 inches when testing the device in various diameters for suitability for its field of intended.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPN 5799705 discloses a fire resistant pipe.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R DEAL whose telephone number is (469)295-9216. The examiner can normally be reached M-F generally 8-4 pm CST.
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 supervisors can be reached at: Craig M Schneider(571) 272-3607 and Ken Rinehart (571) 272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R DEAL/Primary Examiner
Art Unit 3753
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