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 Objections
Claim 1 is objected to because of the following informalities: Claim 1 is narrative in form and appears to be taken directly from the specification. It is not written in one continuous paragraph since in line 4, the sentence ends in a period and begins a new sentence, “of the module(1). In addition,”. The Claim needs to be rewritten in proper claim formatting. Appropriate correction is required.
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 1-5 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 1, lines 1 and 2, the sentence “A fire extinguishing device (FED) with an aerosol-forming or gas-forming composition (module) placed inside the module comprising the FED housing” is indefinite and confusing, since it is not clear how the module comprises the FED housing. Also, in line 2, the phrase “the module” lacks antecedent basis and the phrase “the FED housing” lacks antecedent basis. It is suggested that language such as the following is used to clearly define the invention, --A fire extinguishing device (FED) comprising a FED housing and a module with an aerosol-forming or gas-forming composition placed inside the module--.
In claim1, line 4, the phrase “In addition, it comprises”, is indefinite since it is not clear what the term “it” is referring to. Language such as the following should be used, --; wherein the module comprises--.
In claim 1, line 4, the phrase “the electric igniter” lacks antecedent basis. It is suggested that the language --, an electric igniter-- is inserted after the phrase “a triggering sensor (11)” to provide proper antecedent basis.
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5 and 6 of copending Application No. 18/871,031. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a fire extinguishing device (FED) with an aerosol-forming or gas-forming composition (module) placed inside the module comprising the FED housing, characterized in that the module (1) protrudes beyond the FED housing and comprises a self-igniting thermal igniter (22) having a triggering temperature lower than the triggering temperature of the module (1). In addition, it comprises a triggering sensor (11) and a manual start button (18) of the electric igniter (7) of the module, a contact group (10) for triggering through conductors by an external signal of the electric igniter (7) of the module. Claim 1 of the instant application is broader in scope than claims 1 and 3 of copending Application No. 18/871,031 and are encompassed in claims 1 and 3 of copending Application No. 18/871,031.
As to claim 2, see claims 1 and 3 of copending Application No. 18/871,031.
As to claim 3, see claim 5 of copending Application No. 18/871,031.
As to claim 4, see claim 6 of copending Application No. 18/871,031.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5 and 6 of copending Application No. 18/871,031 in view of US 2025/0372329 A1. Copending Application No. 18/871,031 claims all the featured elements of claims 1-4 of the instant application, except for additional housing holes for the output of an aerosol-forming or gas-forming composition. Note in US 2025/0372329 A1, where it discloses housing holes/output holes 7 in the housing 3 for discharge of the aerosol-forming or gas-forming composition. See Figures 1 and 2 and paragraphs [0027, 0035]. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide for additional housing holes for the output of an aerosol-forming or gas-forming composition in the housing of claims 1-4 of the instant application, as taught by US 2025/0372329 A1, since with such a modification the aerosol-forming or gas-forming composition is discharged to fill the protected scope of the electrical control panel and suppress the burnings of the electrical control panel components.
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dedina et al ‘148, Wagner et al ‘325 and Botter et al ‘233 disclose fire detection and fire extinguishing devices for electrical devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN J GANEY whose telephone number is (571)272-4899. The examiner can normally be reached M-F 9am-5:30pm.
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STEVEN J. GANEY
Primary Examiner
Art Unit 3752
/STEVEN J GANEY/ Primary Examiner, Art Unit 3752
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