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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the one or more intermediate layers of claim 4, and these layers having a staggered length from claim 6 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
The following claims are objected to because of the following informalities:
Claim 13 recites “the inner and outer curtain layers are sewn together before being connected to the roller curtain”. This is interpreted as requiring the curtains to be sewn together at a position that is below the position of the curtain roller. This is not interpreted as requiring the stitching to take place at a time before being connected to the curtain roller.
Claim 17 recites “the inner and outer curtain layers are sewn together before being connected to the bottom bar”. This is interpreted as requiring the curtains to be sewn together at a position that is above the position of the bottom bar. This is not interpreted as requiring the stitching to take place at a time before being connected to the bottom bar.
Appropriate correction is required.
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 1-2, and 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12697515. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending and patented claims recite the same subject matter in different terms. The pending claims recite “retracted position”, “connected”, and “second end”, while the patented claim recites “open position”, “fixed”, and “free end”.
Claim 3 and claim 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12697515 in view of claim 6 of U.S. Patent No. 12697515. Although claim 7 fails to disclose the second width of the outer curtain layer being outside the guide channels, this is disclosed in claim 6. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take these teachings in order to provide the claimed limitations.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12697515 in view of claim 2 of U.S. Patent No. 12697515. Although claim 7 fails to disclose one or more intermediate layers, this is disclosed in claim 2. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take these teachings in order to provide the claimed limitations.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12697515 in view of claim 5 of U.S. Patent No. 12697515. Although claim 7 fails to the disclose one or more intermediate layers being made of fire retardant materials, this is disclosed in claim 5. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take these teachings in order to provide the claimed limitations.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12697515. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending and patented claims recite the same subject matter in different terms. The pending claims recite “retracted position”, “connected”, and “second end”, while the patented claim recites “open position”, “fixed”, and “free end”.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12697515. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending and patented claims recite the same subject matter in different terms. The pending claims recite “retracted position”, “connected”, and “second end”, while the patented claim recites “open position”, “fixed”, and “free end”.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12697515 in view of claim 11 of U.S. Patent No. 12697515. Although claim 7 fails to disclose the lateral edges of the outer curtain layer not extending into the guide channels, this is disclosed in claim 11. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take these teachings in order to provide the claimed limitations.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12697515 in view of claim 12 of U.S. Patent No. 12697515. Although claim 7 fails to disclose a motor, this is disclosed in claim 12. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take these teachings in order to provide the claimed limitations.
Claims 1, and 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12048856. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending and patented claims recite the same subject matter in different terms. The pending claims recite “retracted position”, “connected”, and “second end”, while the patented claim recites “open position”, “fixed”, and “free end”.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12048856 in view of claim 3 of U.S. Patent No. 12048856. Although claim 7 fails to disclose the curtain being flexible and the layers made of a fire resistant textile material, this is disclosed in claim 3. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take these teachings in order to provide the claimed limitations.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12048856 in view of claim 12 of U.S. Patent No. 12048856. Although claim 7 fails to disclose the second width of the outer curtain layer being outside the first and second guide channels, this is disclosed in claim 12. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take these teachings in order to provide the claimed limitations.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12048856 in view of claim 5 of U.S. Patent No. 12048856. Although claim 7 fails to disclose one or more intermediate layers, this is disclosed in claim 4. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take these teachings in order to provide the claimed limitations.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12048856 in view of claim 10 of U.S. Patent No. 12048856. Although claim 7 fails to disclose one or more intermediate layers being made of fire retardant materials, this is disclosed in claim 10. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take these teachings in order to provide the claimed limitations.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12048856 in view of claim 6 of U.S. Patent No. 12048856. Although claim 7 fails to disclose the second width of the outer curtain layer being outside the guide channels, this is disclosed in claim 6. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take these teachings in order to provide the claimed limitations.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12048856. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending and patented claims recite the same subject matter in different terms. The pending claims recite “retracted position”, “connected”, and “second end”, while the patented claim recites “open position”, “fixed”, and “free end”.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12048856. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending and patented claims recite the same subject matter in different terms. The pending claims recite “retracted position”, “connected”, and “second end”, while the patented claim recites “open position”, “fixed”, and “free end”.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12048856 in view of claim 12 of U.S. Patent No. 12048856. Although claim 7 fails to disclose the lateral edges of the outer curtain at the second width do not extend into the guide channels, this is disclosed in claim 12. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take these teachings in order to provide the claimed limitations.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12048856 in view of claim 4 of U.S. Patent No. 12048856. Although claim 7 fails to disclose a motor, this is disclosed in claim 15. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take these teachings in order to provide the claimed limitations.
Claim Rejections - 35 USC § 103
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 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) 1-2, 4-5, 9-13, and 15-17 rejected under 35 U.S.C. 103 as being unpatentable over Ashelin (US 8839842) in view of Jawor (EP 3546026) and Cahill (US 878341).
Regarding claim 1, Ashelin teaches a multi-layer rolling fire curtain assembly positionable about an opening (fig. 2), comprising:
a rotatable curtain roller (32) positionable about the opening;
first and second guide channels (the 36s) arranged along a right-side edge and a left-side edge of the opening, respectively,
a flexible multi-layer fire curtain (see fig. 3) comprising material and being configured to be wrapped about the curtain roller and to be deployable from the curtain roller between a retracted position and an extended position, the multi- layer fire curtain having a first end (top end) connected to the curtain roller, and a second end (bottom end), the multi-layer fire curtain having:
an inner curtain layer arranged in contact with the curtain roller and having a first width W1 between first and second lateral edges, and an outer curtain layer arranged opposite the inner curtain layer, wherein the outer curtain layer has a second width W2 (fig. 3 shows both the inner and the outer layer, and it is shown in fig. 2 that both layers have a width and a length); and
wherein the curtain is configured and arranged so as to be received in and guided along a respective one of the first and second guide channels.
Ashelin does not teach the material being fire resistant, nor the second end connected to a bottom bar, nor the second width being less that the first width, with the outer curtain being longer than the inner curtain to form a baggy area therebetween.
Jawor discloses a bottom bar (Fig 7) connected to a leading edge of the free end of a multi-layer fire curtain. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ashelin so that there is a bottom bar connected to the second end, and that the curtain is made of fire resistant material. This alteration provides the predictable and expected results of better sealing and fire protection for a room.
Providing an outer curtain layer that is longer than the inner curtain layer is known, as
taught by Cahill (Figs 1 and 2). Cahill teaches that the differences in length allow for air chambers to be formed to obviate buckling. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Ashelin in view of Cahill and provide a longer outer curtain layer in order to form air chambers and improve the curtain by preventing buckling. Such modification would not lead to any new or unpredictable results since the technique is known, as taught by Cahill. One would be motivated to look to improve Jawor with the teachings of Cahill in order to provide free circulation of air when the curtain is exposed to heat, thereby reducing buckling and distortion in fire curtains. This modification results in there being a baggy area formed therebetween the curtains.
Modifying the widths of the inner and outer curtain layers such that the width of the outer curtain layer is less than the width of the inner curtain layer would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success. Such modification involves a mere change in size with no new or unexpected result. Further, one would be motivated to provide venting at horizontally outer ends as taught by Cahill. Cahill teaches that it is known for a fire curtain to have free outer ends to allow for venting and free circulation of air when exposed to heat. It would have been obvious to one having ordinary skill
in the art before the effective filing date of the claimed invention with a reasonable expectation
of success that the outer ends of the inner and outer curtain layers provide venting, as taught by
Cahill. One would be motivated to incorporate the known technique taught by Cahill into Ashelin
to improve the fire curtain in order to form air chambers and prevent buckling. Such
modification would not lead to any new or unpredictable results since the technique is known, as
taught by Cahill. One would be motivated to incorporate the known technique taught by Cahill into Ashelin to improve the fire curtain in order to form air chambers to prevent buckling when
the fire curtain is exposed to fired and heat and such modification would not lead to any new or
unpredictable results since the technique is known, as taught by Cahill.
Regarding claim 2, modified Ashelin teaches that the multi-layer fire curtain is flexible, establishes a fire barrier across the opening in the extended position, and the inner and outer layers are each made of a fire resistant textile material (after the modification above).
Regarding claim 4, modified Ashelin teaches one or more intermediate layers arranged so as to be sandwiched between the inner and outer fire resistant textile layers (see fig. 3).
Regarding claim 5, modified Ashelin does not teach that the one or more intermediate layers are made from a fire retardant composite material or a fire retardant metallic material.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the one or more intermediate layers are made from a fire retardant composite material or a fire retardant metallic material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. This alteration protects the device from fires.
Regarding claim 9, modified Ashelin teaches that in a case in which the multi-layer fire curtain is in an extended position, the bottom bar is parallel with and in contact with the ground (rail contacts ground surface when curtain is extended and forms a barrier). Examiner takes official notice that it would have been obvious to one having ordinary skill in the art before the effective filing date with a reasonable expectation of success that the bottom bar contact the ground in order to form a full barrier against fire.
Regarding claim 10, modified Ashelin teaches that the bottom bar is connected to the second end of the multi-layer fire curtain by clamping (after the modification to claim 1 above, see elements 72 and 73 of Jawor).
Regarding claim 11, modified Ashelin teaches that wherein the flexible multi-layer fire curtain is connected to the roller directly or indirectly.
Regarding claim 12, modified Ashelin teaches that the flexible multi-layer fire curtain is connected to the bottom bar directly or indirectly.
Regarding claim 13, modified Ashelin does not explicitly teach that the inner and outer curtain layers are sewn together before being connected to the curtain roller, but it does teach sewing components together (column 4 lines 1-5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Ashelin so that the inner and outer curtain layers are sewn together before being connected to the curtain roller. This alteration provides the predictable and expected results of a quick and strong connection between the components.
Regarding claim 15, modified Ashelin teaches a motor configured to drive the rotatable curtain roller to wind the multi-layer fire curtain onto the rotatable curtain roller (column 2 lines 20-25).
Regarding claim 16, modified Ashelin does not explicitly teach that the curtain roller is connected to the first end of the multi-layer fire curtain by clamping.
Jawor teaches a connection between a curtain and a component via clamping (see elements 72 and 73 of Jawor). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Ashelin so that the curtain roller is connected to the first end of the multi-layer fire curtain by clamping. This alteration provides the predictable and expected results of a strong connection between the components.
Regarding claim 17, modified Ashelin does not explicitly teach that the inner and outer curtain layers are sewn together before being connected to the bottom bar, but it does teach sewing components together (column 4 lines 1-5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Ashelin so that the inner and outer curtain layers are sewn together before being connected to the bottom bar. This alteration provides the predictable and expected results of a quick and strong connection between the components.
Allowable Subject Matter
Claims 3, 6-8, and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R SHEPHERD whose telephone number is (571)272-5657. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Cahn can be reached at (571) 270-5616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.S./Examiner, Art Unit 3634
/DANIEL P CAHN/Supervisory Patent Examiner, Art Unit 3634
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