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 .
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 21-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,179,053. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘053 patent would read on / anticipate the claims of the present application.
Claim Objections
Claims 23-25 and 28-29 are objected to because of the following informalities: These claims depend from claim 1 which was previously cancelled. Presumably these claims were intended to depend from claim 21. 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 21-30, and 42 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 21 lines 9-10 recite “the at least one heat-resistant internal panel” which lacks proper antecedent basis. Claim 23 has the same issue. Presumably this was intended to reference “the at least one heat-resistant internal partition.” Appropriate correction is required.
Claim 42 depends from claim 40 which already recited the language of claim 42, therefore, it is unclear what claim 42 is intending to define. Appropriate correction is required.
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.
Claims 21-28, 31-35, and 38-42 are rejected under 35 U.S.C. 103 as being unpatentable over Schmid (US Patent No. 6,179,620 B1) in view of Reaney (US Patent No. 8,048,505 B1).
In Reference to Claims 21-28, and 41
Schmid teaches (Claim 21) A table-top fire training prop comprising: a heat-resistant enclosure having a top panel (item 120, fig’s 3 and 4), a closed [metal] bottom, [metal] sides (sides are items 116, fig’s 3 and 4, bottom panel not separately labeled, model is a closed building which inherently includes a bottom; column 3 lines 27-28, metal), []; at least one heat-resistant internal partition positioned within the heat-resistant enclosure and defining a plurality of internal volumes within the heat-resistant enclosure (items 118, fig’s 3 and 4); and at least one side aperture and a side aperture cover in at least one of the sides of the heat resistant enclosure (items 124, column 4 lines 51-54); and at least one panel aperture having an aperture cover in the at least one heat- resistant internal panel (items 126, fig’s 3 and 4); []; and wherein, when a source of live fire is introduced to the heat-resistant enclosure, a flow of the live fire in the heat-resistant enclosure can be monitored by a user through a heat-resistant, transparent side wall of the enclosure (note this is an intended use, the device is fully capable of performing this recited use with a transparent top and stamped metal construction);
(Claim 22) wherein the at least one heat-resistant internal partition positioned within the heat-resistant enclosure and defining the plurality of internal volumes within the heat-resistant enclosure comprises a partition assembly having a plurality of heat-resistant panels positioned within the heat-resistant enclosure and defining the plurality of internal volumes within the heat-resistant enclosure (items 118, fig’s 3 and 4);
(Claim 23) wherein the training prop further comprise at least one control rod operatively connected to the at least one panel aperture cover in the at least one heat-resistant internal panel (items 128 and rods connected thereto and to items 126, fig’s 3 and 4).
(Claim 24) wherein the source of live fire comprises one of an ignited flammable material and an ignited combustible material (there is no structure recited here, no source of live fire has been claimed, only that the device can be used with live fire);
(Claim 25) wherein the aperture cover of the at least one panel aperture is adapted to be manipulated by the user (via item 128, fig’s 3 and 4column 4 lines 51-54);
(Claim 26) wherein the aperture cover of the at least one panel aperture comprises a door (item 126, fig’s 3 and 4);
(Claim 27) wherein the aperture cover of the at least one panel aperture is adapted to be manipulated by the user with a control rod (item 128 and rod attached thereto, fig’s 3 and 4);
(Claim 28) wherein the training prop comprises a scale model of a floor plan of a structure and wherein the plurality of internal volumes within the heat-resistant enclosure comprises a plurality of horizontally adjacent internal volumes of the floor plan (fig’s 3 and 4 and abstract);
(Claim 41) wherein the training prop further comprises at least one side aperture and a side aperture cover in at least one of the sides of the heat-resistant enclosure (items 124, fig’s 3 and 4, and column 4 lines 51-54).
Schmidt fails to teach using aluminum specifically, support members, and floating panel construction.
Reaney teaches (Claim 21) support members (items 110 / 112 / and 148, fig. 1); wherein panels and support members comprise floating panel construction, wherein panels and support members are designed and dimensioned with sufficient clearances to allow for thermal expansion and contraction without thermal distortion of the enclosure (column 8 lines 3-10).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the fire demonstration system of Schmidt with the feature of support members and floating panel construction as taught by the fire demonstration system of Reaney for the purpose of both allowing for more sturdy and reliable assembly of the system, as well as to accommodate thermal expansion within the assembly as taught by Reaney (column 8 lines 3-10 and 35-47), making the system more reliable, more durable, and more attractive to the users.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used aluminum simply as a matter of engineering design choice, since, it has been held that the selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Since Schmidt teaches using a stamped metal sheet construction, and, since Reaney teaches using materials that are suitable for live fire environments at high temperatures, which include metals (column 6 line 61 – column 7 line 4; column 7 line 67 – column 8 line 3; column 8 lines 31-41 and 60-65), merely selecting aluminum is an obvious matter of engineering design choice and is not a patentable distinction.
In Reference to Claims 31-35
Schmid teaches (Claim 31) A training method comprising providing a training prop comprising: a heat-resistant enclosure having a top panel (item 120, fig’s 3 and 4), a closed [metal] bottom, [metal] sides, [] (sides are items 116, fig’s 3 and 4, bottom panel not separately labeled, model is a closed building which inherently includes a bottom; column 3 lines 27-28, metal); at least one heat-resistant internal partition positioned within the enclosure and defining a plurality of internal volumes within the enclosure (items 118, fig’s 3 and 4); and at least one wall aperture having an aperture cover in the at least one heat-resistant internal partition (item 126, fig’s 3 and 4); []; and allowing a trainee to monitor a flow of [smoke] in the enclosure through a heat-resistant transparent [] wall of the enclosure (abstract);
(Claim 32) wherein the method further comprises manipulating a position of the aperture cover of the at least one wall aperture (column 1 lines 47-64; and column 4 lines 51-54);
(Claim 33) wherein manipulating the position of the aperture cover of the at least one wall aperture comprises one of opening and closing the aperture cover (column 1 lines 47-64; and column 4 lines 51-54);
(Claim 34) wherein the training prop further comprises at least one control rod operatively connected to the aperture cover of at least one wall aperture, and wherein manipulating the position of the aperture cover of the at least one wall aperture comprises manipulating the at least one control rod (item 128 and control rod attached thereto, fig. 3);
(Claim 35) wherein the method further comprises introducing a flow of gas to the training prop (summary and column 4 lines 3-19 and 36-40).
Schmidt fails to teach using aluminum specifically, support members, floating panel construction, viewing through a sidewall, and introducing live fire.
Reaney teaches (Claim 21) support members (items 110 / 112 / and 148, fig. 1); wherein panels and support members comprise floating panel construction, wherein panels and support members are designed and dimensioned with sufficient clearances to allow for thermal expansion and contraction without thermal distortion of the enclosure (column 8 lines 3-10); and introducing a source of live fire to the heat-resistant enclosure (column 6 lines 8-15).
An alternate embodiment of Schmid teaches viewing through a sidewall (fig’s 1 and 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the fire demonstration system of Schmidt with the feature of support members and floating panel construction for live fire as taught by the fire demonstration system of Reaney for the purpose of both allowing for more sturdy and reliable assembly of the system, as well as to accommodate thermal expansion within the assembly as taught by Reaney (column 8 lines 3-10 and 35-47), and for using real life fire conditions, providing better training, and making the system more reliable, more durable, and more attractive to the users.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used aluminum simply as a matter of engineering design choice, since, it has been held that the selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Since Schmidt teaches using a stamped metal sheet construction, and, since Reaney teaches using materials that are suitable for live fire environments at high temperatures, which include metals (column 6 line 61 – column 7 line 4; column 7 line 67 – column 8 line 3; column 8 lines 31-41 and 60-65), merely selecting aluminum is an obvious matter of engineering design choice and is not a patentable distinction.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided viewing through a side wall instead of a top wall simply as a matter of engineering design choice, since, it has been held that rearrangement of parts is not a patentable advance where the operation of the device is not modified. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). There would be no operational distinction by providing viewing through the top, side, or any face desired, therefore, this minor distinction is not a patentable advance.
In Reference to Claims 38 and 39
The modified device of Schmid teaches all of claim 31 as discussed above.
Schmid further teaches (Claim 38) wherein the at least one heat-resistant internal partition positioned within the heat-resistant enclosure comprises a first partition assembly defining a first plurality of volumes (chambers of one item 110, fig’s 3 and 4), and wherein the method further comprises replacing the first partition assembly defining the first plurality of volumes with a second partition assembly defining a second plurality of volumes, different from the first plurality of volumes (column 4 lines 20-26; arrangement with several chambers on several floors, column 2 lines 1-19, noting that mixing of the two embodiments is contemplated, and several different arrangements of partitions are contemplated).
(Claim 39) wherein the method further comprises allowing the trainee to monitor a flow of the [smoke] in the heat-resistant enclosure with the second partition assembly and comparing the flow of [smoke] with the second partition assembly with the flow of [smoke] with the first partition assembly (summary and column 4 lines 3-19 and 36-40).
The examiner notes that, broadly interpreted, these claims appear to be met since the system of Schmid is intended to have multiple arrangements and multiple floors of multiple arrangements. However, in the alternate view that the internal partitions are not intended to be “replaceable” as claimed, an alternate rejection is set forth below:
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided replaceable arrangements of internal walls simply as a matter of engineering design choice, since, it has been held that where it is considered desirable to obtain access to the interior of a device, it would be obvious to make components separable. See In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961). And, that rearrangement of parts is an obvious matter of engineering design choice where the operation of the device is not modified. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Since Schmid specifically teaches multiple arrangements of interior walls as well as multiple embodiments useable together, simply claiming replaceable internal walls is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claims 40 and 42
Schmid teaches (Claim 40) A table-top fire training prop, the training prop comprising: a heat-resistant enclosure having a top panel (item 120, fig’s 3 and 4), a closed [metal] bottom, [metal] sides, [] (sides are items 116, fig’s 3 and 4, bottom panel not separately labeled, model is a closed building which inherently includes a bottom; column 3 lines 27-28, metal); a partition assembly positioned within the heat-resistant enclosure, the partition assembly having a plurality of partitions defining a plurality of internal volumes within the heat-resistant enclosure (items 118, fig’s 3 and 4); at least one side aperture and a side aperture cover in at least one of the sides of the heat resistant enclosure (items 124, fig’s 3 and 4, and column 4 lines 51-54); at least one door pivotally mounted to one of the partitions of the partition assembly (items 126, fig’s 3 and 4); and at least one control rod operatively connected to the at least one door and adapted to open and close the at least one door (items 128 and rods connected thereto, fig. 3); []; and wherein, when a source of live fire is introduced to the heat-resistant enclosure, a flow of the live fire in the heat-resistant enclosure can be monitored by a user through a heat-resistant, transparent [top] wall, and the flow of live fire can be manipulated by the user by opening or closing the at least one door with the at least one control rod (note this is an intended use, the device is fully capable of performing this recited use with a transparent top and stamped metal construction);
(Claim 42) wherein the training prop further comprises at least one side aperture and a side aperture cover in at least one of the sides of the heat-resistant enclosure (items 124, fig’s 3 and 4, and column 4 lines 51-54).
Schmid fails to teach using aluminum specifically, support members, floating panel construction, and viewing through a side wall.
Reaney teaches (Claim 40) support members (items 110 / 112 / and 148, fig. 1); wherein panels and support members comprise floating panel construction, wherein panels and support members are designed and dimensioned with sufficient clearances to allow for thermal expansion and contraction without thermal distortion of the enclosure (column 8 lines 3-10).
An alternate embodiment of Schmid teaches viewing through a sidewall (fig’s 1 and 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the fire demonstration system of Schmidt with the feature of support members and floating panel construction as taught by the fire demonstration system of Reaney for the purpose of both allowing for more sturdy and reliable assembly of the system, as well as to accommodate thermal expansion within the assembly as taught by Reaney (column 8 lines 3-10 and 35-47), making the system more reliable, more durable, and more attractive to the users.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used aluminum simply as a matter of engineering design choice, since, it has been held that the selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Since Schmidt teaches using a stamped metal sheet construction, and, since Reaney teaches using materials that are suitable for live fire environments at high temperatures, which include metals (column 6 line 61 – column 7 line 4; column 7 line 67 – column 8 line 3; column 8 lines 31-41 and 60-65), merely selecting aluminum is an obvious matter of engineering design choice and is not a patentable distinction.
Finally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided viewing through a side wall instead of a top wall simply as a matter of engineering design choice, since, it has been held that rearrangement of parts is not a patentable advance where the operation of the device is not modified. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). There would be no operational distinction by providing viewing through the top, side, or any face desired, therefore, this minor distinction is not a patentable advance.
Claims 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Schmid in view of Reaney, and further in view of Bloemker (US Patent No. 11,524,195 B2).
In Reference to Claims 29 and 30
The modified device of Schmid teaches all of claim 21 as discussed above.
Schmid fails to teach multiple training props.
Bloemker teaches (Claim 29) wherein the training prop comprises one of an assembly of training props (items 12, 14, and 18, fig’s 1 and 2);
(Claim 30) wherein the assembly of training props comprises one of a vertical assembly and a horizontal assembly (items 12, 14, and 18, fig’s 1 and 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the fire training model of Schmid with the feature of multiple training props as taught by the fire training model of Bloemker for the purpose of providing a larger and more complex model, as well as for allowing the model to be re-arranged into multiple configurations as taught by Bloemker (column 2 lines 48-63), making the model more comprehensive, more versatile, and more interesting and attractive to the users.
Claims 36 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Schmid in view of Reaney, and further in view of Feiock et al. (US Patent No. 5,226,818).
In Reference to Claims 36 and 37
The modified system of Schmid teaches all of claims 31 and 35 as discussed above.
Schmid further teaches (Claim 36) wherein at least one of the sides of the heat-resistant enclosure comprises a hole and a displaceable cover mounted over the hole (any of the items 124 and cover, fig’s 3 and 4, and column 4 lines 51-54).
Schmidt fails to teach the feature of introducing gas through a conduit through a hole of claims 36 and 37.
(Claim 36) wherein introducing the flow gas to the training prop comprises displacing a cover from a hole and introducing the flow gas through the hole and into the training prop (any of various supply pipes 40 through walls of model via items 28 with valves that open to allow gas to enter, fig. 1 and column 5 lines 22-55).
(Claim 37) wherein introducing the flow of gas to the training prop further comprises inserting a conduit through the hole and passing the flow of gas through the conduit (any of various supply pipes 40 through walls of model via items 28 with valves that open to allow gas to enter, fig. 1 and column 5 lines 22-55; pipes were inherently inserted through walls at some point).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the fire conditions model simulator system of Schmid with the feature of introducing gas through a conduit through a hole in the prop as taught by the fire conditions model simulator of Feiock for the purpose of better demonstrating a wider variety of firefighter conditions in a building as well as for being able to better control the flow of gas as taught by Feiock (abstract), making the device more versatile, more comprehensive, and more attractive to users.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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