`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`14/387,434
`
`
`
`
` FILING DATE
`
`09/23/2014
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`Satoru Itani
`
`WASHB-53321
`
`1676
`
`PEARNE & GORDON LLP
`Dae
`PEA paneraPEXAMINERORI
`
`
`1801 EAST 9TH STREET
`LIEUWEN,CODY J
`SUITE 1200
`CLEVELAND, OH 44114-3108
`
`PAPER NUMBER
`
`3752
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/29/2016
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`patdocket@ peame.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Status
`1)X] Responsive to communication(s)filed on 9/23/2014.
`LJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon__
`2a)L] This action is FINAL.
`2b) This action is non-final.
`3)L] Anelection was made bythe applicant in responsetoarestriction requirementset forth during the interview on
`
`
`; the restriction requirement and election have been incorporatedinto this action.
`4)[] Since this application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)KX] Claim(s) 1-8 is/are pending in the application.
`
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)L] Claim(s)
`is/are allowed.
`7) Claim(s) 1-8 is/are rejected.
`8)L] Claim(s)____is/are objectedto.
`
`9)L] Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`or send an inquiry to PPHieedback@uspto.qoy.
`
`Application Papers
`10)L] The specification is objected to by the Examiner.
`11)] The drawing(s)filed on 9/23/14 is/are: a)X] accepted or b)[_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)X] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)X] All
`)[_] Some** c)] None ofthe:
`1..] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`““ See the attached detailed Office action for a list of the certified copies not received.
`
`
`
`Applicant(s)
`Application No.
` 14/387 ,434 ITANI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`CODY LIEUWEN Na 3752
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Anyreply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply betimely filed
`
`Attachment(s)
`3) CT] Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`:
`.
`4 Ol Other:
`2) X Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20160919
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application is being examined underthe pre-AlA first to invent
`
`provisions.
`
`Claim Rejections - 35 USC § 112
`
`2.
`
`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-AlA), 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.
`
`3.
`
`Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 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 pre-AlA the applicant regards
`
`as the invention.
`
`Claim 2 recites the limitation "the device"in line 21. Thereis insufficient
`
`antecedentbasis for this limitation in the claim.
`
`It is noted that the recitation of “a
`
`device”in claim 1 occurs within the functional limitation of the fire extinguishing section.
`
`Claim 1 doesnot positively recite "a device", it only requires a "fire extinguishing
`
`section" whose operation depends on the temperature of "a device".
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 3
`
`Also, the term "ECU"in claim 2 appears to be an acronym whichrenders the
`
`claim indefinite. The term "ECU"is not otherwise defined by the claim leaving it unclear
`
`as to the structure being recited in the claim.
`
`Finally regarding claim 2, the limitation to the device being “a motor,...not an
`
`engine” renders the claim indefinite because “motor” is a synonym of “engine” and the
`
`definition of "motor" according to the American Heritage dictionary is “engine”.
`
`Therefore, it is not clear how the device can be "a motor" without also being an
`
`“engine”.
`
`Claim Rejections - 35 USC § 102
`
`4.
`
`The following is a quotation of the appropriate paragraphs of pre-AlIA 35 U.S.C.
`
`102 that form the basis for the rejections under this section madein this Office action:
`
`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one yearprior to the date of application
`for patent in the United States.
`
`5.
`
`Claims 1 and 2 are rejected underpre-AlA 35 U.S.C. 102(b) as being
`
`anticipated by Wertenbachet al. (US 5,515,691).
`
`Regarding claim 1, Wertenbach teaches anin-vehicle fire extinguishing
`
`apparatus configured to perform fire extinguishing by utilizing an air conditioning
`
`apparatus that heats or cools a vehicle interior (col. 1, In. 57-62; fig. 1), the in-vehicle
`
`fire extinguishing apparatus comprising,
`
`an incombustible or flame-retardantrefrigerant (3);
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 4
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`a compressor that compressesthe refrigerant in such a manneras to
`
`increase a temperature and a pressureof the refrigerant (4);
`
`a condenserthat causes a high-temperature and high-pressurerefrigerant
`
`compressed by the compressor to release heat (5);
`
`an expansion valve that expandsthe refrigerant that is caused to release heat
`
`by the condenserin such a mannerasto reduce the temperature and the pressureof
`
`the refrigerant (7);
`
`an evaporator that causes a low-temperature and low-pressurerefrigerant
`
`expanded by the expansion valve to absorb heat (6);
`
`a circulation path that causesthe refrigerant output from the compressor to
`
`enter the compressor through the condenser, the expansion valve, and the evaporator
`
`(fig. 1 — element8);
`
`and, a fire extinguishing section (9) provided in the circulation path between
`
`the expansion valve and the compressor (fig. 1), the fire extinguishing section allowing
`
`the refrigerant entered from the circulation path to be output to the circulation path
`
`under an environmentof a temperature below a predetermined temperature equalto or
`
`greater than a guaranteed temperature of a device mountedin a vehicle, and emitting
`
`the refrigerant entered from the circulation path to an exterior so as to perform fire
`
`extinguishing by being melted under an environmentof a temperature equalto or
`
`greater than the predetermined temperature.
`
`Regarding thelimitation in lines 17-23 of claim 1 describing the mannerof
`
`operation of the fire extinguishing section, it is noted that this is a functionallimitation
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 5
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`and any structure capable of performing this function teachesthis limitation. Thefire
`
`extinguishing section of Wertenbachallowsthe refrigerant to return to the circulation
`
`path when the temperature of a device in the vehicle is normal, and will emit the
`
`refrigerant when the temperatureof the fire extinguishing section exceeds the melting
`
`point of the material of the section. The "predetermined temperature" is a temperature
`
`just below the melting point of the fire extinguishing section; and, this "predetermined
`
`temperature"will be greater than the "guaranteed temperature of a device mounted in a
`
`vehicle” becauseifit isn’t then the fire extinguishing section would melt during normal
`
`operation of the vehicle.
`
`Regarding claim 2, Wertenbach teachesthe in-vehicle fire extinguishing
`
`apparatus of claim 1. Wertenbach further teachesthat the “predetermined temperature”
`
`is equal to or greater than a guaranteed temperature of a motor, a battery, or an ECU
`
`(col. 2, In. 42-43 — the fire extinguishing section, 9, “ends...in the engine compartment”;
`
`vehicles inherently have a motor, battery, and an ECU located within the engine
`
`compartment, and, again, the designer would desire that the fire extinguishing system
`
`not melt during normal operation of these devices).
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousnessrejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102, if the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would have been obviousat the
`time the invention was made to a person having ordinary skill in the art to which said subject
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 6
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`matter pertains. Patentability shall not be negatived by the manner in which the invention was
`made.
`
`7.
`
`Claims 1-3 and 7 are rejected under pre-AlA 35 U.S.C. 103(a) as being
`
`unpatentable over Wertenbachin view ofPrilutsky et al. (US 2010/0136391).
`
`Regarding claims 1-3, Wertenbachdiscloses the in-vehicle fire extinguishing
`
`apparatus configured to perform fire extinguishing by utilizing an air conditioning
`
`apparatus that heats or cools a vehicle interior, as described regarding claim 1.
`
`Wertenbachfurther discloses that the refrigerant is emitted from the fire extinguishing
`
`section at closure sections (10), which are controlled by solenoid valves (11), wherein
`
`the solenoid valve is opened to allow flow of refrigerant out of the nozzles when a
`
`sensordetects the presenceor risk of a fire (col. 3, In. 1-10). Wertenbach does not
`
`disclosethat the refrigerant is emitted from the closure sections whenthe closure
`
`section melts at a temperature equal to or greater than the predetermined temperature.
`
`Prilutsky teaches an in-vehicle fire extinguishing apparatus configured to
`
`extinguish a fire in a battery pack (par. 1, 30) comprising a fire extinguishing system
`
`(200) having a plurality of closure sections (1101) that melt under the environment of a
`
`temperature equal to or greater than the predetermined temperature, which
`
`correspondsto a temperatureindicating a thermal runaway eventofa lithium battery, to
`
`connectthe interior of the fire extinguishing section with the exterior and to emit the fire
`
`extinguishant (par. 47).
`
`It would have been obvious for one of ordinary skill in the art at the time the
`
`invention was madeto have modified the in-vehicle fire extinguishing apparatus of
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 7
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`Wertenbachto include a fire extinguishing section having closure sections that melt at a
`
`predetermined temperature, which is equal to or greater than the guaranteed
`
`temperature of a battery pack, and create breachpointsin the fire extinguishing section
`
`from whichthe extinguishant is emitted. Replacing the closure sections of Wertenbach,
`
`which comprise nozzles, valves, and sensors, with closure sections that melt, as taught
`
`by Prilutsky, simplifies the in-vehicle fire extinguishing apparatus and increases
`
`reliability and decreasescost.
`
`Regarding claim 7, Wertenbachin view of Prilutsky discloses the in-vehicle fire
`
`extinguishing apparatus described regarding claim 3. Prilutsky further teaches that the
`
`closure section is provided in a wall section that separates the exterior from the interior
`
`of the fire extinguishing section, the closure section having a form tapering from the
`
`exterior toward the interior of the fire extinguishing section as viewed in a thickness
`
`cross-section of wall section (fig. 11).
`
`8.
`
`Claim 4 is rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over
`
`Wertenbachin view of Prilutsky and further in view of Schmidt (US 6,079,501).
`
`Wertenbachin view of Prilutsky discloses the in-vehicle fire extinguishing
`
`apparatus described regarding claim 7 having a closure section having a form tapering
`
`from the exterior toward theinterior of the fire extinguishing section as viewed in a
`
`thickness cross-section of wall section.
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 8
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`Schmidt teachesa fire extinguishing apparatus (10) comprising a closure section
`
`(26) that is provided in a wall section that separates the exterior from the interior of the
`
`fire extinguishing section, the closure section having a square form or a rectangular
`
`form as viewed in a thickness cross-section of wall section (fig. 1A).
`
`Therefore, because these two closure section forms were art-recognized
`
`equivalents at the time the invention was made, oneof ordinary skill in the art would
`
`have found it obvious to substitute the square or rectangular form for the form tapering
`
`from the exterior toward theinterior of the fire extinguishing section.
`
`9.
`
`Claim 5 is rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over
`
`Wertenbachin view of Prilutsky and further in view of Michalik et al. (US 4,964,471).
`
`Wertenbachin view of Prilutsky discloses the in-vehicle fire extinguishing
`
`apparatus described regarding claim 7 having a closure section having a form tapering
`
`from the exterior toward theinterior of the fire extinguishing section as viewed in a
`
`thickness cross-section of wall section.
`
`Michalik teachesa fire extinguishing apparatus (10) comprising a closure section
`
`(108) that is engagedbyirregularity (col. 5, In. 21-26; fig. 2 — the irregularity is the
`
`portion of the closure section protruding from the closure section, 108, to engage the
`
`shoulder, 106) with a wall section that separates the exterior from the interior of the fire
`
`extinguishing section (fig. 2).
`
`Therefore, because these two closure sections were art-recognized equivalents
`
`at the time the invention was made,one of ordinary skill in the art would have foundit
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 9
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`obvious to substitute closure section that is engaged byirregularity for the closure
`
`section having a form tapering from the exterior toward the interior of the fire
`
`extinguishing section.
`
`10.
`
`Claim 6 is rejected underpre-AlA 35 U.S.C. 103(a) as being unpatentable over
`
`Wertenbachin view of Prilutsky and further in view of Nakamura (JP 2004-236944).
`
`Wertenbachin view of Prilutsky discloses the in-vehicle fire extinguishing
`
`apparatus described regarding claim 7 having a closure section having a form tapering
`
`from the exterior toward theinterior of the fire extinguishing section as viewed in a
`
`thickness cross-section of wall section.
`
`Nakamura teachesa fire protection apparatus (32) comprising a closure section
`
`(39) that is threadedly engaged (fig. 6) with a wall section (fig. 8) that melts when
`
`exposedto the heatof a fire and shuts a valve to contain the fire from spreading (par. 25).
`
`Therefore, because these two closure sections were art-recognized equivalents
`
`for providing an automatic fire protection response at the time the invention was made,
`
`one of ordinary skill in the art would have foundit obvious to substitute a closure section
`
`that is engaged by threadsfor the closure section having a form tapering from the
`
`exterior toward the interior of the fire extinguishing section.
`
`11.
`
`Claim 8 is rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over
`
`Wertenbachin view of Prilutsky and further in view of Wertenbachetal.
`
`(DE 10 2008 059 968, hereafter Wertenbach ‘968).
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 10
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`Wertenbachin view of Prilutsky discloses the in-vehicle fire extinguishing
`
`apparatus described regarding claim 7 having a closure section having a form tapering
`
`from the exterior toward theinterior of the fire extinguishing section as viewed in a
`
`thickness cross-section of wall section.
`
`Wertenbach ‘968 teachesa fire extinguishing apparatus comprising a closure
`
`section (13) that is provided in a wall section that separates the exterior from the interior
`
`of the fire extinguishing section, the closure section having a form tapering from the
`
`interior toward the exterior of the fire extinguishing section as viewedin a thickness
`
`cross-section of wall section (fig. 3).
`
`Therefore, because these two closure section forms were art-recognized
`
`equivalents at the time the invention was made, oneof ordinary skill in the art would
`
`have found it obvious to substitute the form tapering from the interior toward the exterior
`
`of the fire extinguishing section for the form tapering from the exterior toward the interior
`
`of the fire extinguishing section.
`
`Conclusion
`
`12.
`
`+The prior art made of record and notrelied upon is considered pertinent to
`
`applicant's disclosure.
`
`Ostlyngenet al. (US 5,934,379) and Yabu (US 8,006,505) both teachfire
`
`extinguishing apparatus configured to perform fire extinguishing by utilizing an air
`
`conditioning apparatus, the fire extinguishing apparatus comprising an incombustible
`
`refrigerant; a compressor; a condenser; an expansion valve; an evaporator; a
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 11
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`refrigerant circulation path; and a fire extinguishing section connected to the circulation
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`path that releases the refrigerant and directs it at potential fire hazards.
`
`13.|=Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CODY LIEUWEN whosetelephone numberis (571)272-
`
`4477. The examiner can normally be reached on Monday to Thursday 0700-1630 EST,
`
`Friday varies.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Arthur Hall can be reached on (571)270-1814. The fax phone numberfor
`
`the organization wherethis application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on accessto the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automatedinformation
`
`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/CODY LIEUWEN/
`Examiner, Art Unit 3752
`
`/Arthur O. Hall/
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Supervisory Patent Examiner, Art Unit 3752
`
`Page 12
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`