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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a triggering heat-sensitive device” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Such corresponding structure(s) is/are: no corresponding structure appears to be described.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim limitation “a triggering heat-sensitive device” has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the limitation recites the generic placeholder “device” and does not recite any further structure, but it does not recite a function. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claim 1 further recites the limitations "the triggering unit" in line 3, “the power wire” in line 7, and “the contacts” in line 7. There are insufficient antecedent bases for these limitations in the claim.
Claim 1 is further rejected as being indefinite because it is unclear what recited elements comprise the “triggering unit”. As currently written, it appears that just the “heat-chemical igniter” comprises the triggering unit, and the heat-chemical igniter comprises a “heat-sensitive element” and “an electric igniter” and “at least one thermal fuse”. The construction of claim 1 should be reviewed to ensure this is accurate, and the formatting and punctuation revised as necessary to ensure the claimed structure is consistent with that described in the Specification and Drawings.
Finally, regarding claim 1, the limitation of “an electric igniter” in line 8 renders the claim indefinite because an “electric igniter” was already positively recited in line 4. As a result, it is unclear if line 8 requires a second “electric igniter”, or if it is referring to the “electric igniter” that was already recited. For the purposes of examination, the latter interpretation will be assumed; this appears to be consistent with the Specification and Drawings.
Claims 2-5 are rejected for depending from indefinite claim 1.
Regarding claim 2, the limitation of “an autonomous fire-extinguishing device” in lines 2-3 renders the claim indefinite because an “autonomous fire-extinguishing device” was already positively recited in line 1 of claim 1, from which claim 2 depends. As a result, it is unclear if claim 2 requires a second “autonomous fire-extinguishing device”, or if it is referring to the “autonomous fire-extinguishing device” that was already recited. For the purposes of examination, the latter interpretation will be assumed; this appears to be consistent with the Specification and Drawings.
Regarding claim 3, the limitation of “a heat sensitive device” in line 3 renders the claim indefinite because a “heat sensitive device” was already positively recited in line 8 of claim 1, from which claim 3 depends. As a result, it is unclear if claim 3 requires a second “heat sensitive device”, or if it is referring to the “heat sensitive device” that was already recited. For the purposes of examination, the latter interpretation will be assumed; this appears to be consistent with the Specification and Drawings.
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 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pak et al. (EP 0569025).
Regarding claim 1, Pak teaches an autonomous fire-extinguishing device (AFED) with an aerosol-forming or gas-forming composition placed inside (p. 7, par. 7), comprising a housing (1) and an aerosol-forming or gas-forming composition module (6), characterized by the triggering unit which is made in the form of a heat-chemical igniter (interpreted to be element 8 and the “coarse-grained smoke powder initiator”, see p. 8, ln. 9-10), comprising a heat-sensitive element (“coarse-grained smoke powder initiator”, see p. 8, ln. 9-10) and an electric igniter (8) of the aerosol-forming or gas-forming composition which is made with the possibility of triggering by an external signal, and also additionally comprising at least one thermal fuse (33) installed in the power wire (p. 13, ln. 34-36), and one of the contacts of the said thermal fuse is connected to a triggering heat-sensitive device (p. 13, ln. 33-34 – “directly connected to the solid charge), which is connected to an electric igniter (fig. 13 – thermal fuse 33 and electric igniter are both connected to the AFED, 2) of aerosol-forming or a gas-forming composition.
Regarding claim 2, Pak teaches an autonomous fire-extinguishing device according to claim 1, characterized by an additional triggering sensor (multiple triggering sensors 28 can be used, see fig. 13) that generates a signal about the operation of an autonomous fire-extinguishing device installed inside the housing (p. 13, ln. 17-23), with terminals extending beyond the housing (fig. 13).
Regarding claim 3, Pak teaches an autonomous fire-extinguishing device according to claim 1, characterized by additional holes (5) in the housing (figs. 1, 2) for the exit of an aerosol-forming or gas-forming composition, and also contains holes for triggering a heat-sensitive device (fig. 1 – the holes in the housing for the wires for igniter 8).
Regarding claim 4, Pak teaches an autonomous fire-extinguishing device according to claim 1, characterized by a low-temperature solid fuel aerosol-forming or gas-forming composition (p. 7, ln. 33-34).
Regarding claim 5, Pak teaches an autonomous fire-extinguishing device according to claim 1, characterized by lower triggering temperature of the heat-sensitive element in comparison with the triggering temperature of the heat-chemical igniter (p. 8, ln. 8-11 – the igniter 8 requires 10-40 V DC, but the “smoke powder initiator” requires only 3-12 V DC).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Koelewijn et al. (US 8,496,067), Guo et al. (US 2012/0186838), and Johnson et al. (US 2012/0212312) all teach devices having elements of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CODY J LIEUWEN whose telephone number is (571)272-4477. The examiner can normally be reached Monday - Thursday 8-5, Friday varies.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur 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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/CODY J LIEUWEN/Primary Examiner, Art Unit 3752
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