`
`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 paneontPEXAMINERORI
`
`
`1801 EAST 9TH STREET
`LIEUWEN,CODY J
`SUITE 1200
`CLEVELAND, OH 44114-3108
`
`PAPER NUMBER
`
`3752
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/08/2017
`
`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)
`
`

`

`
`Application No.
`Applicant(s)
`
` 14/387 ,434 ITANI ET AL.
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`3752CODY LIEUWEN No
`
`-- 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 under the 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).
`Any reply 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 be timely filed
`
`-
`-
`
`Status
`1) Responsive to communication(s) filed on 12/28/2016.
`L] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filedon___
`2a)X] This action is FINAL.
`2b)L] This action is non-final.
`3)L] An election was made bythe applicant in responseto a restriction requirementset forth during the interview on
`
`; the restriction requirement and election have been incorporated into this action.
`4)L] Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordancewith the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)K] Claim(s) 7 and 3-8 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) 7and3-8 is/are rejected.
`8)L] Claim(s)___ is/are objectedto.
`
`9)L] Claim(s)
`are subjectto 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
`
`nite://www.usoto.dov/patenis/init events/pph/index.isp or send an inquiry to PPHieedback@uspte.dov.
`
`Application Papers
`10) The specification is objected to by the Examiner.
`
`11)KX] 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) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)X] All
`b)[-] Some** c)L] 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.
`
`
`
`Attachment(s)
`3) TC Interview Summary (PTO-413)
`1) C Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`;
`;
`Oo Other:
`2) CT] 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 20170202
`
`

`

`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.
`
`Response to Amendment
`
`2.
`
`The Amendment filed 28 December 2016 has been entered. Claims 1 and 3-8
`
`remain pending in the application. Claim 2 has been canceled.
`
`Claim Rejections - 35 USC § 112
`
`3.
`
`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.
`
`4.
`
`Claims 1 and 3-8 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 pre-AlA
`
`the applicant regards asthe invention.
`
`Regarding claim 1, the limitation to the device being “a motor...not an engine”
`
`rendersthe claim indefinite because “motor” is a synonym of “engine” and the definition
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 3
`
`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”.
`
`Claims 3-8 are rejected for depending from indefinite claim 1.
`
`Claim Rejections - 35 USC § 102
`
`5.
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C.
`
`102 that form the basis for the rejections underthis section madein this Office action:
`
`A personshall 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.
`
`6.
`
`Claim 1 is rejected under pre-AlA 35 U.S.C. 102(b) as being anticipated by
`
`Wertenbachet al. (US 5,515,691).
`
`Wertenbachteachesan in-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-retardant refrigerant (3);
`
`a compressor that compressesthe refrigerant in such a mannerasto
`
`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);
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 4
`
`an expansion valve that expandstherefrigerant 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 only
`
`between the expansion valve and the compressor (fig. 1 — since the circulation path
`
`forms a loopall of the fired extinguishing sections, 9, are considered to be between the
`
`expansion valve and the compressor), the fire extinguishing section allowing the
`
`refrigerant entered from the circulation path to be outputto the circulation path under an
`
`environmentof a temperature below a predetermined temperature equal to or greater
`
`than a guaranteed temperature of a motor, a battery, or an electronic control unit (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) mounted in 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 equal to or greater than the predetermined
`
`temperature without using a sensor.
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 5
`
`Regarding the limitation in lines 17-23 of claim 1 describing the mannerof
`
`operation of the fire extinguishing section, it is noted that this is a functionallimitation
`
`and any structure capable of performing this function teachesthis limitation.
`
`Specifically, the fire extinguishing section of Wertenbach is capable of performing this
`
`function sinceit allows the 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” becauseif it
`
`isn’t then the fire extinguishing section would melt during normal operation of the vehicle.
`
`Claim Rejections - 35 USC § 103
`
`7.
`
`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
`andthe prior art are such that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in the art to which said subject
`matter pertains. Patentability shall not be negatived by the manner in which the invention was
`made,
`
`8.
`
`Claims 1, 3, and 7 are rejected underpre-AlA 35 U.S.C. 103(a) as being
`
`unpatentable over Wertenbachin view ofPrilutsky et al. (US 2010/0136391).
`
`Regarding claims 1 and 3, Wertenbachdiscloses the in-vehicle fire
`
`extinguishing apparatus configured to perform fire extinguishing by utilizing an air
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 6
`
`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 openedto allow flow of refrigerant out of the nozzles
`
`when a sensor detects the presenceor risk of a fire (col. 3, In. 1-10). Wertenbach does
`
`not disclose that the refrigerant is emitted from the closure sections when the 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 environmentof a
`
`temperature equal to or greater than the predetermined temperature, which
`
`correspondsto a temperature indicating a thermal runaway eventof a 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
`
`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 breachpoints in the fire extinguishing section
`
`from which the extinguishant is emitted. Replacing the closure sections of Wertenbach,
`
`which comprise nozzles, valves, and sensors, with closure sections that melt, as taught
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 7
`
`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 viewedin a thickness
`
`cross-section of wall section (fig. 11).
`
`9.
`
`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.
`
`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, one ofordinary skill in the art would
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 8
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`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.
`
`10.
`
`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 ofordinaryskill in the art would have foundit
`
`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.
`
`11.
`
`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).
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 9
`
`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 atthe 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 threads for the closure section having a form tapering from the
`
`exterior toward the interior of the fire extinguishing section.
`
`12.
`
`Claim 8 is rejected underpre-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).
`
`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 the interior 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
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 10
`
`of the fire extinguishing section, the closure section having a form tapering from the
`
`interior toward the exterior of the fire extinguishing section as viewed in a thickness
`
`cross-section of wall section (fig. 3).
`
`Therefore, because these two closure section forms wereart-recognized
`
`equivalents at the time the invention was made, one ofordinary 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.
`
`Responseto Arguments
`
`13.
`
`Applicant's arguments filed 28 December 2017 have been fully considered but
`
`they are not persuasive.
`
`Regarding the rejection of claim 2 for being indefinite, which has been
`
`maintained with regard to claim 1, Applicant argues that the ordinary meaning of
`
`“engine” is an “internal combustion engine” and the ordinary meaning of “motor” is an
`
`“electric motor’.
`
`In response, it is maintained that the words “motor” and “engine” are
`
`often used as synonyms. For example, oil used in internal combustion enginesis often
`
`referred to as “motor oil”, automobiles are called motorcars even though most are
`
`poweredbyinternal combustion engines, motorcycles have internal combustion
`
`engines, and many automobile manufacturers include "motor" in their name(e.g.,
`
`General Motors, Ford Motor Company, Toyota Motor Corporation) despite the majority
`
`of their vehicles having internal combustion engines. Examiner suggests amending
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 11
`
`claim 1 to specifically recite “an electric motor...not an internal combustion engine”to
`
`overcome this rejection.
`
`Regarding the rejection of claim 1 as being anticipated by Wertenbach, Applicant
`
`arguesthat the fire extinguishing sections of Wertenbach are also provided between the
`
`condenser and the expansion valve.
`
`In response, it is reiterated that since the
`
`refrigeration circuit forms a closed loop all the fire extinguishing sections are interpreted
`
`to be between the expansion valve and the compressor.
`
`Further regarding the rejection of claim 1 as being anticipated by Wertenbach,
`
`Applicant argues thatthe fire extinguishing lines of Wertenbach are not capable of being
`
`melted at a temperature equal to or greater than the predetermined temperature without
`
`using asensor.
`
`In response, it is noted that the claim does not specify a specific
`
`temperature or range of temperatures at whichthefire extinguishing lines must melt, but
`
`only that they must melt “at a temperature equal to or greater than the predetermined
`
`temperature” (emphasis added). Therefore,this limitation fails to establish a maximum
`
`temperature below whichthefire extinguishing section must melt, and since every
`
`material inherently has a melting temperature, the fire extinguishing lines of Wertenbach
`
`are interpreted as being capable of melting without using a sensor.
`
`In responseto applicant's arguments against the referencesindividually
`
`regarding the rejection of claim 1 over Wertenbachin view of Prilutsky, one cannot
`
`show nonobviousnessby attacking references individually where the rejections are
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 12
`
`based on combinations of references. See /n re Keller, 642 F.2d 413, 208 USPQ 871
`
`(CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
`
`In
`
`this case, the fire extinguishing apparatus of Wertenbach is modified to use the release
`
`mechanism of Prilutsky comprised of plugs that melt at a given temperature, as
`
`describedin the rejection above. Therefore, Applicant's argumentsthat the object,
`
`target for extinguishing a fire, and fluid of Prilutsky differ from the claimed invention are
`
`moot since Prilutsky is not relied upon to disclose these elements.
`
`Further in response to applicant's argument regarding the rejection of claim 1
`
`over Wertenbachin view of Prilutsky that the object of Prilutsky is different, a recitation
`
`of the intended use of the claimed invention must result in a structural difference
`
`between the claimed invention and the prior art in order to patentably distinguish the
`
`claimed invention from the prior art.
`
`If the prior art structure is capable of performing the
`
`intended use, then it meets the claim.
`
`Finally, in responseto applicant's argument regarding the rejection of claim 1
`
`over Wertenbachin view of Prilutsky that the references fail to show certain features of
`
`applicant’s invention, it is noted that the features upon which applicant relies (i.e., way
`
`to set a predetermined temperature) are not recited in the rejected claim(s). Although
`
`the claims are interpreted in light of the specification, limitations from the specification
`
`are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057
`
`(Fed. Cir. 1993).
`
`

`

`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 13
`
`Conclusion
`
`14.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the eventa first reply is filed within
`
`TWO MONTHS of the mailing date ofthis final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTHshortenedstatutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuantto 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however,will the statutory period for reply expire later
`
`than SIX MONTHS from the mailing date of this final action.
`
`15.=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.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`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.
`
`

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`Application/Control Number: 14/387 ,434
`Art Unit: 3752
`
`Page 14
`
`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
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