8365495 FINAL REJECTION 90013565 4-8-2016

Office Action in Ex Parte Reexamination

Control No. 90/013,565

Examiner JEFFREY L. GELLNER

Patent Under Reexamination 8365495

Art Unit

3993

AlA (First Inventor to File) Status No

-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -

a.[8] Responsive to the communication(s) filed on 8 March 2016.

D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .

b. [8] This action is made FINAL.

c. D A statement under 37 CFR 1.530 has not been received from the patent owner.

A shortened statutory period for response to this action is set to expire g month(s) from the mailing date of this letter. Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c). If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days will be considered timely.

Part I THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:

1.

2.

D Notice of References Cited by Examiner, PT0-892.

[8] Information Disclosure Statement, PTO/SB/08.

3.

4.

D Interview Summary, PT0-474.

D Part II SUMMARY OF ACTION

1 a. [8] Claims 1-60 are subject to reexamination.

1 b. D Claims __ are not subject to reexamination.

2. D Claims __ have been canceled in the present reexamination proceeding.

3. D Claims __ are patentable and/or confirmed.

4. [8] Claims 1-60 are rejected.

5. D Claims __ are objected to.

6. D The drawings, filed on __ are acceptable.

7. D The proposed drawing correction, filed on __ has been (7a) D approved (7b) D disapproved.

8. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).

a) D All b) D Some* c) D None of the certified copies have

1 D been received.

2 D not been received.

3 D been filed in Application No. __ .

4 D been filed in reexamination Control No. __

5 D been received by the International Bureau in PCT application No. __ .

* See the attached detailed Office action for a list of the certified copies not received.

9. D Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for 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.

1 0. D Other: __

cc: Requester (if third party requester) U.S. Patent and Trademark Off1ce

PTOL-466 (Rev. 08·13) Office Action in Ex Parte Reexamination Part of Paper No. 20160329

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UNITED STATES pATENT AND TRADEMARK OFFICE

APPLICATION NO. FILING DATE

90/013,565 08/14/2015

128258 7590 04/08/2016

MKG,LLC 306 Industrial Park Road, Suite 206 Middletown, CT 06457

FIRST NAMED INVENTOR

8365495

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

ATTORNEY DOCKET NO. CONFIRMATION NO.

15-084-SR 1706

EXAMINER

GELLNER, JEFFREY L

ART UNIT PAPER NUMBER

3993

MAIL DATE DELIVERY MODE

04/08/2016 PAPER

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.

PTOL-90A (Rev. 04/07)

DO NOT USE IN PALM PRINTER

(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)

Lambert & Associates 92 State St., Suite 200 Boston, MA 021 09

Commissioner for Patents United States Patent and Trademark Office

P.O. Box 1450 Alexandria, VA 22313-·1450

W"aAA"I.IJ:.'=ptO.QOV

EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM

REEXAMINATION CONTROL NO. 901013,565.

PATENT NO. 8365495.

ART UN IT 3993.

Enclosed is a copy of the latest communication from the United States Patent and Trademark Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).

Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a reply has passed, no submission on behalf of the ex parte reexamination requester will be acknowledged or considered (37 CFR 1.550(g)).

PTOL-465 (Rev.0?-04)

Application/Control Number: 90/013,565

Art Unit: 3993

The present application is being examined under the pre-AlA first to invent

provisions.

Detailed Office Action

Page 2

A substantial new question (SNQ) of patentability affecting claims 1-39 of US

8,365,495 81 ("Witherspoon") is raised by the present request for ex parte

reexamination and claims 1-39 the subject of this office action. In the amendment

received 8 March 2016 claims 40-60 were added. Claims 1-60 are the subject of this

office action.

Claim Objections

Claims 42, 46 are objected to because of the following informality:

In claim 42, the language of "wherein the system is capable of withstanding ...

for about five minutes after exposure" is duplicative language in claim 5 from which this

claim depends.

In claim 46, the language of "wherein the system is capable of withstanding ...

for about five minutes after exposure" is duplicative language in claim 28 from which this

claim depends.

Appropriate correction is required.

Claim Rejections - 35 USC § 112

The following is a quotation of the first paragraph of 35 U.S. C. 112(a):


Art Unit: 3993

(a) IN GENERAL.-The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

Page 3

The following is a quotation of the first paragraph of pre-AlA 35 U.S.C. 112:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Claims 1-60 are rejected under 35 U.S. C. 112 (pre-AlA), first paragraph, as failing to

comply with the written description requirement. The claim(s) contains subject matter

which was not described in the specification in such a way as to reasonably convey to

one skilled in the relevant art that the inventor(s), at the time the application was filed,

had possession of the claimed invention.

As to claims 1, 5, 17, 28, 37, and 42, the limitation of "wherein the fire and water

resistant expansion joint system is capable of withstanding exposure to a temperature

of about 540oc or greater for about five minutes" is new matter. For claim 43 the

limitation of "and is capable of withstanding exposure to a temperature of about 540oc

or greater for about five minutes" is new matter.

The patent's original specification, drawings, and claims do not expressly state

this limitation. Patent Owner argues that support for this limitation is inherently found in

the specification at col. 2 and col. 6, lines 34-53, due to "the resultant composite can

pass the UL 2079 test program." Amendment received 8 March 2016 at 17. However,

UL2079 is cited to its standard for cycling (for example, most building expansion joint

systems are designed to accommodate some movement as a result of thermal effects .


Art Unit: 3993

Page 4

.. "at col. 2, lines 9-21; "[a]fter installation the laminate will cycle between densities ... "

col. 6, lines 44-51) and not fire resistance. The sentence "This density of 400-450

kg/m3 was determined through experimentation, as a reasonable minimum which still

affords adequate fire retardation capacity, such that the resultant composite can pass

the UL 2079 test program" (col. 6, lines 47-51) is construed as the composite having

adequate fire retardation capacity with a density that is still able of passing the UL 2079

cycling test program. Thus, the specification lacks sufficient inherent or implicit detail to

conclude that the patent owner had possession of the claimed invention. MPEP 2163(1),

(I)(B).

Claims 2-4, 6-16, 18-27, 29-36, 38-41, and 44-60, are rejected due to their

dependence upon a rejected independent claim.

In claim 40, the limitation of "wherein the system is capable of withstanding

exposure to a temperature of about 930oc or greater for about one hour" is new matter

as explained above for the similar limitation in claim 5. In addition, assuming, arguendo,

that support is found in the specification for the UL2079 fire resistance standard,

support is not found in UL2079 for "a temperature of about 930oc for about one hour"

since the standard is about 930 oc at one hour which means at one hour the

temperature has reached about 930 oc not that the temperature has been maintained for

one hour at about 930°C. See UL2079 standards at page 11 and its Fig. 11.1.

In claim 41, the limitation of "wherein the system is capable of withstanding

exposure to a temperature of about 1 01 ooc or greater for about two hour" is new matter

as explained above for the similar limitation in claim 5. In addition, assuming, arguendo,


Art Unit: 3993

that support is found in the specification for the UL2079 fire resistance standard,

Page 5

support is not found in UL2079 for "a temperature of about 101 ooc for about two hours"

since the standard is about 1010 oc at two hours which means at two hours the

temperature has reached about 1010 oc not that the temperature has been maintained

for two hours at about 101 ooc. See UL2079 standards at page 11 and its Fig. 11.1.

In claim 46, the limitation of "nominal, maximum, minimum and then nominal" is

new matter. The limitation is not explicitly disclosed in the specification and does not

appear to be disclosed in the UL2079 standard.

In claims 8, 20, 31, 47, and 58, the language "compounds capable of

suppressing combustion and smoke formation and combinations of the foregoing

materials" is new matter. In the specification of the patent the disclosure is

"combinations of the foregoing materials, and other compounds capable of suppressing

combustion and smoke formation" at col. 4, lines 63-65. From the specification, then,

the combination explicitly does not include "other compounds capable of suppressing

combustion and smoke formation." The claim's combination includes these

compounds. With no further disclosure, the specification lacks sufficient explicit,

inherent or implicit detail to conclude that the patent owner had possession of the

claimed combination, or invention. See MPEP 2163(1), (I)(B).

In claims 48, 50, 52, 54, 56, and 59, the language "a combination of i) a water-

based aluminum tri-hydrate, ii) an antimony oxide or an antimony hydroxide, and iii) a

nitrogen-based compound" is new matter. The specification of the patent explicitly

discloses the use of aluminum tri-hydrate as the fire retardant (for example, col. 4, lines


Art Unit: 3993

Page 6

55-57) along with a listing of other materials and combinations with these materials (col.

4, lines 59-63). This claim claims a specific combination of aluminum tri-hydrate with

antimony and nitrogen compounds. Although disclosed in the specification, support for

specific claimed groupings of species may not have support and be new matter. MPEP

2163.05(11) citing Fujikawa v. Watanasin, 39 USPQ2d 1895 (Fed. Cir. 1996). Here, the

subgenus of these specific three compounds is new matter because, absent disclosure

which singles out, or describes, this specific combination, a listing of several materials is

not sufficient detail to show that the patent owner has possession of this combination, or

invention. Fujikawa v. Watanasin, 39 USPQ2d at 1905.

In claims 49, 51, 53, 55, 57, and 60, the language "a combination of i) a water-

based aluminum tri-hydrate, ii) an antimony oxide or an antimony hydroxide, and iii) a

nitrogen-based compound, and iv) a material selected from ... " is new matter. The

specification of the patent explicitly discloses the use of aluminum tri-hydrate as the fire

retardant (for example, col. 4, lines 55-57) along with a listing of other materials and

combinations with these materials (col. 4, lines 59-63). This claim claims a specific

combination of aluminum tri-hydrate with antimony and nitrogen compounds and

another compound. Although disclosed in the specification, support for specific claimed

groupings of species may not have support and be new matter. MPEP 2163.05(11) citing

Fujikawa v. Watanasin, 39 USPQ2d 1895 (Fed. Cir. 1996). Here, the subgenus of

these specific three compounds along with another material is new matter because,

absent disclosure which singles out, or describes, this specific combination, a listing of


Art Unit: 3993

Page 7

several materials is not sufficient detail to show that the patent owner has possession of

this combination, or invention. Fujikawa v. Watanasin, 39 USPQ2d at 1905.

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.

Claims 1-60 are rejected under 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.

In claims 1, 5, 17, 28, 37, 42, and 43, the limitation "capable of withstanding

exposure to a temperature of about 540° ... " is indefinite because the term

"withstanding exposure" is ambiguous in that it is not clear if this means the system will

not flame and ignite the system will not lose structure, such as by not melting, or the

system will not scorch.

Claims 2-4, 6-16, 18-27, 29-36, 38-41, and 44-60, are rejected due to their

dependence upon a rejected independent claim.

Claim Rejections - 35 USC § 103

The following is a quotation of pre-AlA 35 U.S.C. 1 03(a) which forms the basis

for all obviousness rejections set forth in this Office action:


Art Unit: 3993

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 1 02 of this title, 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 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.

Page 8

Claims 1-4, 47-49, 43-45, and 58-60 are rejected under pre-AlA 35 U.S.C. 1 03(a) as

being unpatentable over Baerveldt '695 (US 5,935,695; 1st patent on Request's IDS) in

view of lllger et al. (US 4,288,559; 3rd patent listed on Request's IDS; "lllger") in further

view of Ward (GB 2,359,265; 91h foreign doc. on a IDS received 3 Dec. 2015).

As to claim 1, Baerveldt '695 discloses a method of installing an expansion joint

(col. 3, lines 13-33), comprising:

providing a first substrate (J of Figs. 1-4);

providing a second substrate arranged to be coplanar with the first substrate and

being spaced therefrom by a gap (J of Figs. 1-4);

compressing a water resistant expansion joint system comprising an open-celled

foam (col. 3, lines 21-33; col. 2, lines 41-46) in a compressed state which is less than

fully expanded (col. 3, lines 13-20) and having a water resistant layer (4 of Figs. 2-4)

disposed thereon;

inserting the compressed expansion joint system into the gap between the first

substrate and the second substrate (col. 3, lines 21-33); and

allowing the compressed expansion joint system to decompress to fill the gap

between the first substrate and the second substrate (col. 3, lines 21-33);

wherein the fire and water resistant expansion joint system is able to

accommodate movement of the first and second substrates by compressing and

expanding while maintaining the compressed state (col. 3, lines 29-33).


Art Unit: 3993

Page 9

Not disclosed is the foam infused with a fire retardant layer where the ratio of fire

retardant to foam is in the range of 3.5:1 to 4:1 by weight and the infused open-celled

foam having a density in a range of about 200 kg/m3 to 700 kg/m3 in the compressed

state, a fire resistant layer disposed on the foam; and, the fire and water resistant

expansion joint system is capable of withstanding exposure to a temperature of about

540°C or greater for about five minutes.

lllger, however, discloses infusing polyurethane foam (col. 2, lines 20-33; col. 4,

line 66 to col. 5, line 2) with a fire retardant, aluminium hydroxide, at a ratio

(retardant:foam) of 0.1:1 to 8:1 ("from 10 to 800%" of col. 2, lines 25-33) and lllger

further discloses an infused foam density of 10 to 100 kg/m 3 (lllger at col. 2, lines 25-

33); Ward discloses an expansion joint fire-retardant foam with an adhesive/sealant

layer and a fire-retardant layer (page2, 1[1[5-6). lllger's infused foam would meet the

claimed temperature requirement since the retardant is aluminium hydroxide (col. 2,

lines 25-33, considered AI(OH)3) the same as aluminum tri-hydrate that is used in the

claimed invention (col. 2, lines 25-33)).

It would have been obvious to one of ordinary skill in the art at the time of the

invention to modify the method of Baerveldt '695 by adding the fire retardant of lllger to

the foam so as to use a foam with excellent fire retardant properties (from abstract of

lllger) when required; or, in the alternative to substitute Baerveldt '695's foam with the

foam of lllger so as to use a foam with desirable mechanical and excellent fire retardant

properties (from abstract of lllger) when required; and, to add a fire retardant layer as

disclosed by Ward so as to increase fire retardation. The system of Baerveldt '695 and


Art Unit: 3993

Page 10

lllger would be capable of withstanding a temperature of 540°C or greater for about five

minutes. In other words, because the modified system of Baerveldt '695 in view of lllger

has the same foam and the same fire retardants, it would have the same properties and

be capable of the same performance. Finally, it would have been obvious to one of

ordinary skill in the art at the time of the invention to further modify the system of

Baerveldt '695 and lllger by having the compressed foam density of 200 kg/m3 to 700

kg/m3 depending upon use of the system.

As to claim 2, Baerveldt '695 as modified by lllger and Ward further disclose

applying an adhesive to an edge of at least one of the first substrate and the second

substrate to anchor the expansion joint system (primer coating of Ward is an

adhesive/sealant that can be applied to all surfaces at page 1, 1[6). It would have been

obvious to one of ordinary skill in the art at the time of the invention to further modify the

method of Baerveldt '695 as modified by lllger and Ward by having the sealant on all

edges/sides so as to increase sealing and adhesion.

As to claim 3, Baerveldt '695 as modified by lllger and Ward further disclose the

open celled foam has an infused uncompressed foam density of 100 kg/m3 (col. 2, lines

24-33, of lllger). It would have been obvious to one of ordinary skill in the art at the time

of the invention to further modify the method of Baerveldt '695 as modified by lllger and

Ward by having the compression above 400 kg/m3 depending upon use and

requirements of the system.

As to claim 4, Baerveldt '695 as modified by lllger and Ward further disclose an

infused uncompressed foam density of 100 kg/m3 (col. 2, lines 24-33, of lllger). lllger's


Art Unit: 3993

Page 11

infused foam would meet UL 2079 requirements since the retardant is aluminium

hydroxide (considered to be AI(OH)3) the same as aluminum tri-hydrate that is used in

the claimed invention. It would have been obvious to one of ordinary skill in the art at

the time of the invention to further modify the method of Baerveldt '695 as modified by

lllger and Ward by having the compression from 400 to 450 kg/m3 depending upon use

and requirements of the system and using all materials for the system that meet UL

2079 testing depending upon use/requirements of the system.

As to claim 47, Baerveldt '695 lllger and Ward further disclose the fire retardant

material infused into the open celled foam is water-based aluminum tri-hydrate or metal

hydroxide (aluminium hydroxide (considered to be AI(OH)3 of col. 2, lines 30-33, of

lllger).

As to claim 48, Baerveldt '695, lllger and Ward, further disclose the fire retardant

material infused into the open celled foam is water-based aluminum tri-hydrate

(aluminium hydroxide (considered to be AI(OH)3 of col. 2, lines 30-33, of lllger) in

combination with antimony oxides ("antimony trioxide" of col. 6, lines 8-19 of lllger) and

a nitrogen-based compound ("dicyandiamide" of col. 6, lines 8-19 of lllger).

As to claim 49, Baerveldt '695, lllger and Ward, further disclose the fire retardant



combination with antimony oxides ("antimony trioxide" of col. 6, lines 8-19) and a

nitrogen-based compound ("dicyandiamide" of col. 6, lines 8-19) and a compound


Art Unit: 3993

capable of suppressing combustion and smoke ("halogen-phosphorus and/or

phosphorus compounds" of col. 6, lines 8-19).

Page 12

As to claim 43, Baerveldt '695 discloses a method of installing an expansion joint

(col. 3, lines 13-33), comprising:

providing a first substrate (J of Figs. 1-4);

providing a second substrate arranged to be coplanar with the first substrate and

being spaced therefrom by a gap (J of Figs. 1-4);

compressing a water resistant expansion joint system comprising an open-celled

foam (col. 3, lines 21-33; col. 2, lines 41-46) in a compressed state which is less than

fully expanded (col. 3, lines 13-20) and having a water resistant layer (4 of Figs. 2-4)

disposed thereon;

inserting the compressed expansion joint system into the gap between the first

substrate and the second substrate (col. 3, lines 21-33); and

allowing the compressed expansion joint system to decompress to fill the gap

between the first substrate and the second substrate (col. 3, lines 21-33), and the water

resistant expansion joint system facilitates compression and expansion during use after

installation and accommodates movement of the substrates as the water resistant

expansion joint system repeatedly cycles by compressing and decompressing between

minimum and maximum sizes of the gap (col. 3, lines 13-33);

Not disclosed is the foam infused with a fire retardant layer where the ratio of fire

retardant to foam is in the range of 3.5:1 to 4:1 by weight and the infused open-celled


Art Unit: 3993

Page 13

foam having a density in a range of about 200 kg/m3 to 700 kg/m3 in the compressed

state, a fire resistant layer disposed on the foam; and, the fire and water resistant


540°C or greater for about five minutes.

lllger, however, discloses infusing polyurethane foam (col. 2, lines 20-33; col. 4,

line 66 to col. 5, line 2) with a fire retardant, aluminium hydroxide, at a ratio

(retardant:foam) of 0.1:1 to 8:1 ("from 10 to 800%" of col. 2, lines 25-33) and lllger

further discloses an infused foam density of 10 to 100 kg/m 3 (lllger at col. 2, lines 25-

33); Ward discloses an expansion joint fire-retardant foam with an adhesive/sealant

layer and a fire-retardant layer (page2, 1[1[5-6). lllger's infused foam would meet the

claimed temperature requirement since the retardant is aluminium hydroxide (col. 2,

lines 25-33, considered AI(OH)3) the same as aluminum tri-hydrate that is used in the

claimed invention (col. 2, lines 25-33)).


invention to modify the method of Baerveldt '695 by adding the fire retardant of lllger to




properties (from abstract of lllger) when required; and, to add a fire retardant layer as

disclosed by Ward so as to increase fire retardation. The system of Baerveldt '695 and

lllger would be capable of withstanding a temperature of 540°C or greater for about five

minutes. In other words, because the modified system of Baerveldt '695 in view of lllger


Art Unit: 3993

Page 14

has the same foam and the same fire retardants, it would have the same properties and

be capable of the same performance. Finally, it would have been obvious to one of











and requirements of the system.








and requirements of the system.


Art Unit: 3993

Page 15

As to claim 58, Baerveldt '695, lllger and Ward further disclose the fire retardant


(aluminium hydroxide (considered to be AI(OH)3 of col. 2, lines 30-33, of lllger).













Claims 5-16, 40-42, 50, 51, 17-27, 52, 53, 28-32, 34-36, 46, 54, and 55 are rejected

under pre-AlA 35 U.S.C. 1 03(a) as being unpatentable over Baerveldt '695 in view of

lllger, Ward and further in view of Fire Barrier CP 25WB+Caulk (Underwriters

Laboratories; 4th non-patent document listed on Request's IDS; "3M").

As to claim 5, Baerveldt '695 a fire and water resistant expansion joint system

(Figs. 1-4), comprising:


Art Unit: 3993

Page 16

open celled foam (2 of Figs. 1-4) in a compressed state which is less than fully

expanded (col. 3, lines 13-33) and an elastomer adhesively disposed on the surface of

the foam (4 of Figs. 2-4; col. 3, lines 34-64)).

Not disclosed is a fire retardant in the foam having a density in a range of about

200 kg/m3 to 700 kg/m3 in the compressed state, a layer of intumescent material

disposed on a foam surface opposite the elastomer layer; and, the fire and water

resistant expansion joint system is capable of withstanding exposure to a temperature

of about 540 oc or greater for about five minutes.

lllger, however, discloses infusing polyurethane foam with a fire retardant,

aluminium hydroxide, at a ratio (retardant:foam) of 0.1 :1 to 8:1 ("from 10 to 800%" of

col. 2, lines 25-33) and lllger further discloses an infused foam density of 10 to 100

kg/m3 (lllger at col. 2, lines 25-33); Ward discloses an expansion joint fire-retardant

foam with a fire-retardant layer on any surface of the foam (page 1, 1[6; page2, 1[1[5-6)

and 3M discloses a fire retardant layer that is intumescent.


invention to modify the system of Baerveldt '695 by adding the fire retardant of lllger to




properties (from abstract of lllger) when required; and, to add a fire retardant layer on

any surface, including opposite the elastomer layer, as disclosed by Ward with an

intumescent as disclosed by 3M so as to increase fire retardation and depending upon


Art Unit: 3993

Page 17

requirements. The system of Baerveldt '695, lllger, Ward, and 3M are configured to

define a bellows profile to facilitate the compression of the fire and water resistant

expansion joint system when installed between coplanar substrates since the system is

capable of compression and expansion. The system of Baerveldt '695 and lllger would

be capable of withstanding a temperature of 540°C or greater for about five minutes. In

other words, because the modified system of Baerveldt '695 in view of lllger has the

same foam and the same fire retardants, it would have the same properties and be

capable of the same performance. Finally, it would have been obvious to one of




As to claim 6, Baerveldt '695, lllger, Ward, and 3M further disclose wherein the

open celled foam comprises a plurality of laminations of open celled foam (Figs. 1-4).


open celled foam is polyurethane (col. 2, lines 41-51, of Baerveldt '695).

As to claim 8, Baerveldt '695, lllger, Ward, and 3M further disclose the fire

retardant material infused into the open celled foam is water-based aluminum tri-hydrate


combination with antimony oxides ("antimony trioxide" of col. 6, lines 8-19).


retardant material infused into the open celled foam is selected from the group

consisting of metal oxides, metal hydroxides, aluminum oxides, antimony oxides and


Art Unit: 3993

hydroxides, iron compounds, ferrocene, molybdenum trioxide, nitrogen-based

Page 18

compounds, water-based aluminum tri-hydrate and combinations of the foregoing

materials (a metal hydroxide or aluminum trihydrate, aluminium hydroxide (considered

to be AI(OH)3 of col. 2, lines 30-33, of lllger).

As to claim 10, Baerveldt '695, lllger, Ward, and 3M further disclose the

elastomer adhesively disposed on the surface of the open celled foam comprises a

silicone ("Silicone Sealant" of col. 3, lines 34-64 of Baerveldt '695).


elastomer adhesively disposed on the surface of the open celled foam is selected from

the group consisting of polysulfides, acrylics, polyurethanes, poly-epoxides, silyl-

terminated polyethers, and combinations of one or more of the foregoing (col. 3, lines

34-64 of Baerveldt '695).


intumescent material disposed on the surface of the open celled foam comprises a fire

barrier caulk (from 3M).

As to claim 13, Baerveldt '695, lllger, Ward, and 3M further disclose an

uncompressed fire retardant foam of 110 kg/m3 (lllger at col. 2, lines 24-33). It would

have been obvious to one of ordinary skill in the art at the time of the invention to further

modify the method of Baerveldt '695 as modified by lllger, Ward, and 3M by having the

uncompressed density being 130 kg/m3 to about 150 kg/m3 depending upon use or

requirement of the system.


Art Unit: 3993

Page 19

As to claim 14, it would have been obvious to modify the system of Baerveldt

'695, lllger, Ward, and 3M by having a second layer of elastomer disposed on the layer

of intumescent material depending upon use or requirement of the system.

As to claim 15, Baerveldt '695 as modified by lllger, Ward, and 3M further

disclose the open celled foam has an infused uncompressed foam density of 1 00 kg/m3

(col. 2, lines 24-33, of lllger). It would have been obvious to one of ordinary skill in the

art at the time of the invention to further modify the method of Baerveldt '695 as

modified by lllger, Ward, and 3M by having the compression above 400 kg/m3 to 700

kg/m3 depending upon use and requirements of the system.


disclose an infused uncompressed foam density of 100 kg/m3 (col. 2, lines 24-33, of

lllger). lllger's infused foam would meet UL 2079 requirements since the retardant is

aluminium hydroxide (considered to be AI(OH)3) the same as aluminum tri-hydrate that

is used in the claimed invention. It would have been obvious to one of ordinary skill in

the art at the time of the invention to further modify the method of Baerveldt '695 as

modified by lllger, Ward, and 3M by having the compression from 400 to 450 kg/m3

depending upon use and requirements of the system and using all materials for the

system that meet UL 2079 testing depending upon use/requirements of the system.


disclose wherein the system is capable of withstanding exposure to a temperature of

about 930°C for about one hour because the modified system of Baerveldt '695 in view


Art Unit: 3993

Page 20

of lllger has the same foam and the same fire retardants and would have the same

properties and be capable of the same performance ..



about 1010 oc for about two hour because the modified system of Baerveldt '695 in view

of lllger has the same foam and the same fire retardants and it would have the same

properties and be capable of the same performance.



about 540°C for about five minutes after exposure because the modified system of

Baerveldt '695 in view of lllger has the same foam and the same fire retardants and it

would have the same properties and be capable of the same performance, further, it

would be obvious to one or ordinary skill in the art to have the system that meet UL

2079 cycling testing depending upon use/requirements of the system.

As to claim 50, Baerveldt '695, lllger Ward, and 3M further disclose further

disclose the fire retardant material infused into the open celled foam is water-based

aluminum tri-hydrate (aluminium hydroxide (considered to be AI(OH)3 of col. 2, lines 30-

33, of lllger) in combination with antimony oxides ("antimony trioxide" of col. 6, lines 8-

19 of lllger) and a nitrogen-based compound ("dicyandiamide" of col. 6, lines 8-19 of

lllger).

As to claim 51, Baerveldt '695, lllger Ward, and 3M further disclose the fire



Art Unit: 3993

Page 21





phosphorus compounds" of col. 6, lines 8-19) ..

As to claim 17, Baerveldt '695 a fire and water resistant expansion joint system

(Figs. 1-4), comprising:

open celled foam (2 of Figs. 1-4) in a compressed state which is less than fully

expanded (col. 3, lines 13-33) and a first layer of elastomer adhesively disposed on the

surface of the foam (4 of Figs. 2-4; col. 3, lines 34-64)).


200 kg/m3 to 700 kg/m3 in the compressed state, and layers of intumescent material and

elastomer disposed on two surfaces of the foam; and, the fire and water resistant


540°C or greater for about five minutes ..





foam with a sealant layer and a fire-retardant layer disposed on the sealant on all


Art Unit: 3993

Page 22

surfaces of the foam (page 1, 1[6; page2, 1[1[5-6); and, 3M discloses a fire retardant

layer that is intumescent.


invention to modify the system of Baerveldt '695 by adding a fire retardant of lllger to the

foam so as to use a foam with excellent fire retardant properties (from abstract of lllger)

when required; or, in the alternative to substitute Baerveldt '695's foam with the foam of

lllger so as to use a foam with desirable mechanical and excellent fire retardant

properties (from abstract of lllger) when required; and, to add a second elastomer layer

and fire retardant layer on any surface as disclosed by Ward with the fire retardant

being an intumescent as disclosed by 3M so as to increase fire retardation and

depending upon requirements. The system of Baerveldt '695, lllger, Ward, and 3M are

configured to define a bellows profile to facilitate the compression of the fire and water

resistant expansion joint system when installed between coplanar substrates since the

system is capable of compression and expansion. Further, it would be obvious as

design choice to have the elastomer disposed on the intumescent layer depending upon

requirements for the system and with no difference in functioning of the system. The

system of Baerveldt '695 and lllger would be capable of withstanding a temperature of

540°C or greater for about five minutes. In other words, because the modified system

of Baerveldt '695 in view of lllger has the same foam and the same fire retardants, it

would have the same properties and be capable of the same performance. Finally, it

would have been obvious to one of ordinary skill in the art at the time of the invention to


Art Unit: 3993

Page 23

further modify the system of Baerveldt '695 and lllger by having the compressed foam

density of 200 kg/m3 to 700 kg/m3 depending upon use of the system.


open celled foam comprises a plurality of laminations of open celled foam (Figs. 1-4).


open celled foam is polyurethane (col. 2, lines 41-51, of Baerveldt '695).









compounds, water-based aluminum tri-hydrate and combinations of the foregoing

materials (a metal hydroxide, aluminium hydroxide (considered to be AI(OH)3 of col. 2,

lines 30-33, of lllger).


elastomer adhesively disposed on the surface of the open celled foam comprises a

silicone ("Silicone Sealant" of col. 3, lines 34-64 of Baerveldt '695).


intumescent material is a fire barrier caulk (3M).


Art Unit: 3993


Page 24





As to claim 25, Baerveldt '695, lllger, Ward, and 3M further disclose an

uncompressed fire retardant foam of 110 kg/m3 (lllger at col. 2, lines 24-33). It would

have been obvious to one of ordinary skill in the art at the time of the invention to further

modify the method of Baerveldt '695 as modified by lllger, Ward, and 3M by having the

uncompressed density being 130 kg/m3 to about 150 kg/m3 depending upon use or

requirement of the system.













Art Unit: 3993

Page 25

















As to claim 28, Baerveldt '695 a fire and water resistant architectural expansion

joint system (Figs. 1-4), comprising:

first and second coplanar substrates (S of Figs. 1-4) and an expansion joint

located in a compression between the first and second coplanar substrates (Figs. 1-4)

comprising,


Art Unit: 3993

open celled polyurethane foam (2 of Figs. 1-4; col. 2, lines 41-48) in a

Page 26

compressed state which is less than fully expanded (col. 3, lines 13-33) and at least one

layer of elastomer adhesively disposed on the surface of the foam (4 of Figs. 2-4; col. 3,

lines 34-64));

wherein the expansion joint is compressed between the first and second

substrates to accommodate movement therebetween (col. 3, lines 13-33).


200 kg/m3 to 700 kg/m3 in the compressed state, a layer of intumescent material on a

surface of the foam; and, the fire and water resistant expansion joint system is capable

of withstanding exposure to a temperature of about 540°C or greater for about five

minutes.





foam with a sealant layer and a fire-retardant layer disposed on all surfaces of the foam

(page 1, 1[6; page2, 1[1[5-6); and, 3M discloses a fire retardant layer that is

intumescent.






Art Unit: 3993

Page 27



any surface as disclosed by Ward with the fire retardant being an intumescent as

disclosed by 3M so as to increase fire retardation and depending upon requirements.

The system of Baerveldt '695 and lllger would be capable of withstanding a temperature

of 540°C or greater for about five minutes. In other words, because the modified

system of Baerveldt '695 in view of lllger has the same foam and the same fire

retardants, it would have the same properties and be capable of the same performance.

Finally, it would have been obvious to one of ordinary skill in the art at the time of the

invention to further modify the system of Baerveldt '695 and lllger by having the

compressed foam density of 200 kg/m3 to 700 kg/m3 depending upon use of the system.







intumescent material is a fire barrier caulk (3M).






Art Unit: 3993

Page 28





compounds, water-based aluminium tri-hydrate and combinations of the foregoing

materials (a metal hydroxide, aluminium hydroxide (considered to be AI(OH)3 of col. 2,

lines 30-33, of lllger).

As to claim 34, Baerveldt '695, lllger, Ward, and 3M further disclose the foam in a

plurality of laminations (Fig. 4 of Baerveldt '695).















Art Unit: 3993

Page 29





about 540°C for about five minutes after exposure because the modified system of

Baerveldt '695 in view of lllger has the same foam and the same fire retardants and it

would have the same properties and be capable of the same performance, further, it

would be obvious to one or ordinary skill in the art to have the system that meet UL

2079 cycling testing depending upon use/requirements of the system.












phosphorus compounds" of col. 6, lines 8-19) ..


Art Unit: 3993

Page 30

Claim 33, 37-39, 56, and 57 are rejected under pre-AlA 35 U.S.C. 1 03(a) as being

unpatentable over Baerveldt '695 in view of lllger, Ward, and 3M in further view of

Baerveldt '708 (US 6,532,708; 23ih patent on an IDS of 1 Dec. 2015).

As to claim 33, the limitations of claim 28 are disclosed as described above. Not

disclosed are beads of elastomer at the interface of the expansion joint and one of the

substrates. Baerveldt '708, however, discloses an expansion joint system with beads of

elastomer between the joint and substrate (Fig. 8). It would have been obvious to one

of ordinary skill in the art at the time of the invention to further modify the system of

Baerveldt '695 in view of lllger, Ward, and 3M by adding beads as disclosed by

Baerveldt '708 so as to further waterproof the system.

As to claim 37, Baerveldt '695 a fire and water resistant architectural expansion

joint system (Figs. 1-4), comprising:

first and second coplanar substrates (S of Figs. 1-4) and an expansion joint

located in a compression between the first and second coplanar substrates (Figs. 1-4)

comprising,

open celled polyurethane foam (2 of Figs. 1-4; col. 2, lines 41-48) in a

compressed state which is less than fully expanded (col. 3, lines 13-33) and at least one

layer of elastomer adhesively disposed on the surface of the foam (4 of Figs. 2-4; col. 3,

lines 34-64));

wherein the expansion joint is compressed between the first and second

substrates to accommodate movement therebetween (col. 3, lines 13-33).


Art Unit: 3993

Page 31


200 kg/m3 to 700 kg/m3 in the compressed state, a layer of intumescent material on a

surface of the foam, a bead; and, the fire and water resistant expansion joint system is

capable of withstanding exposure to a temperature of about 540°C or greater for about

five minutes.





foam with a sealant layer and a fire-retardant layer disposed on all surfaces of the foam

(page 1, 11 6; page2, 1111 5-6); 3M discloses a fire retardant layer that is intumescent;

and, Baerveldt '708 discloses a bead between the joint and substrate (Fig. 8).







any surface as disclosed by Ward with the fire retardant being an intumescent as

disclosed by 3M so as to increase fire retardation and depending upon requirements,

and add beads as disclosed by Baerveldt '708 so as to further waterproof the system ..

The system of Baerveldt '695 and lllger would be capable of withstanding a temperature


Art Unit: 3993

Page 32

of 540°C or greater for about five minutes. In other words, because the modified

system of Baerveldt '695 in view of lllger has the same foam and the same fire

retardants, it would have the same properties and be capable of the same performance.

Finally, it would have been obvious to one of ordinary skill in the art at the time of the

invention to further modify the system of Baerveldt '695 and lllger by having the

compressed foam density of 200 kg/m3 to 700 kg/m3 depending upon use of the system.

As to claim 38, Baerveldt '695 as modified by lllger, Ward, 3M, and Baerveldt

'708 further disclose the open celled foam has an infused uncompressed foam density

of 100 kg/m3 (col. 2, lines 24-33, of lllger). It would have been obvious to one of

ordinary skill in the art at the time of the invention to further modify the method of

Baerveldt '695 as modified by lllger, Ward, 3M, and Baerveldt '708 by having the

compression above 400 kg/m3 to 700 kg/m3 depending upon use and requirements of

the system.

As to claim 39, Baerveldt '695 as modified by lllger, Ward, 3M, and Baerveldt

'708 further disclose an infused uncompressed foam density of 100 kg/m3 (col. 2, lines

24-33, of lllger). lllger's infused foam would meet UL 2079 requirements since the

retardant is aluminium hydroxide (considered to be AI(OH)3) the same as aluminum tri-

hydrate that is used in the claimed invention. It would have been obvious to one of

ordinary skill in the art at the time of the invention to further modify the method of

Baerveldt '695 as modified by lllger, Ward, 3M, and Baerveldt '708 by having the

compression from 400 to 450 kg/m3 depending upon use and requirements of the


Art Unit: 3993

Page 33

system and using all materials for the system that meet UL 2079 testing depending

upon use/requirements of the system.

As to claim 56, Baerveldt '695, lllger Ward, 3M, and Baerveldt '708 further




19 of lllger) and a nitrogen-based compound ("dicyandiamide" of col. 6, lines 8-19 of

lllger) ..

As to claim 57, Baerveldt '695, lllger Ward, 3M, and Baerveldt '708 further




19) and a nitrogen-based compound ("dicyandiamide" of col. 6, lines 8-19) and a

compound capable of suppressing combustion and smoke ("halogen-phosphorus and/or


Patent Owner's Arguments received 8 March 2016

In the amendment received 8 March 2016 Patent Owner argued the following (as

evidenced by the Declaration of Hensley received 8 March 2016):

1. For claim 1 rejected by Baerveldt '695, lllger and Ward, Baerveldt '695 is a

compressible foam impregnated with adhesives to obtain watertight properties which

may make the product more flammable if a fire retardant is added (for example,


Art Unit: 3993

Page 34

chlorinated paraffin wax) so teaches away from dual functioning of fire and water

resistance. Amendment at 22-24.

2. For claim 1 rejected by Baerveldt '695, lllger, and Ward, it was not known or

understood prior to this invention to have both water and fire resistance in a

compressible foam sealant. Amendment at 24-25.

3. For claim 1 rejected by Baerveldt '695, lllger, and Ward, the references lllger,

AI-Tabaqchall, and von Bonin are foams in the uncompressed state with lllger and AI-

Tabaqchall disintegrating at high temperatures and von Bonin solidifying on drying and

so no predictable outcome for the proposed combination. Amendment at 25.

4. For claim 1 rejected by Baerveldt '695, lllger, and Ward, since compression

reduces R-value of a foam it would more difficult to pass a thermal conductivity test

such as ASTM E-119 and UL 2079 standards for a compressed foam. Amendment at

25-27.

5. For claim 1 rejected by Baerveldt '695, lllger, and Ward, the invention has a

unique quality and unexpected results of a compressed foam with water and fire

resistance. Amendment at 27, 32.

6. For claim 1 rejected by Baerveldt '695, lllger, and Ward, the reference lllger

discloses a foam in an uncompressed state and would disintegrate at high temperatures

as its means of fire resistance and the totality of lllger teaches away from the invention.

Amendment at 27-29.


Art Unit: 3993

Page 35

7. For claim 1 rejected by Baerveldt '695, lllger, and Ward, lllger is similar to AI-

Tabaqchall and von Bonin and does not concern a fire and water expansion joint

system. Amendment at 29-31.

8. For claim 1 rejected by Baerveldt '695, lllger, and Ward, the reference Ward

does not cure the deficiencies of the afore-cited references. Amendment at 30.

9. For claim 1 rejected by Baerveldt '695, lllger, and Ward, it would not be

obvious to "'pick"' aluminum hydroxide from lllger and arrive at the instant invention.

Amendment at 31 .

10. For claim 1 rejected by Baerveldt '695, lllger, and Ward, the present

invention provides a much needed solution to a problem encountered in the expansion

joint system art. Amendment at 32-33.

11. For claim 1 rejected by Baerveldt '695, lllger, and Ward, no motivation to

combine references. Amendment at 34-36.

12. For claims 5, 17, 28, and 37, the applied references do not disclose the

limitations of compression in the range of 200 to 700 kg/m 3 in a compressed state and

withstanding 540°C while expanding and compressing. Amendment at 36-38, 41-43.

13. For the dependent claims, the prior art does not disclose the limitations.

Amendment at 38-41 .

14. Newly added claims 40-60 are allowable for the same reasons. Amendment

at 43-46.


Art Unit: 3993

Page 36

Examiner's Response to Patent Owner's Arguments of 8 March 2016

As to argument (1 ), Baerveldt '695 does not teach away from the claimed

invention. A foam can have more than one infused fire retardant or other compound.

For example, lllger discloses infusion of aluminum trihydrate (aluminum hydroxide)

along with "other flame retarding compounds and /or other compounds which may

promote carbonization ... "along with "other additives, pigments or age resistors." lllger

at col. 6, lines 8-19. Thus, it would be obvious to one of ordinary skill in the art to add

aluminum trihydrate to a foam along with, for example, "'chlorinated paraffin wax"'

depending upon the requirements of, or use of, the foam.

As to argument (2), the reference Ward used in the rejections above, with a

publication date of 22 August 2001 (GB2359265 A), discloses the use of flexible,

expandable foams with an infused fire retardant at page 1, lines 1-15. Since Ward

discloses use of these foams, for example, as "movement joints between external and

internal walls of a building," the examiner considers it known to those of ordinary skill in

the art to infuse compressible/expandable foams, such as the claimed invention, with a

fire retardant.

As to argument (3), lllger is used in the rejections and not either AI-Tabaqchall or

von Bonin. lllger discloses an infused foam with a weight ratio of aluminum trihydrate to

foam of up to 8:1, or 10% to 95% (lllger at col. 2, lines 25-33). The patent at issue

discloses use of the same ratio of between 3.5:1 to 4:1. With the same basic

constituents (polyurethane and aluminum trihydrate) in similar ratios these infused

foams are considered to possess similar characteristics. See generally MPEP 2112.01.


Art Unit: 3993

Although AI-Tabaqchall's infused foam may deteriorate/disintegrate at higher

Page 37

temperatures, its ratio of aluminum trihydrate to foam is 1 :1 (from col. 8, lines 14-21, in

that claim 1 gives a high weight percentage of aluminum trihydrate of 50% which is

equivalent to a 1 :1 ratio) which is much lower than the higher ratio disclosed by lllger.

In fact, von Bonin discloses a similarly infused foam with mechanical stability up to

1 ooooc for 90 minutes (von Bonin at col. 3, lines 55-62) with a weight ratio of 5.7:1

(from von Bonin at col. 8, lines 43-58, in that 85% aluminum trihydrate would equate to

a ratio of aluminum trihydrate to foam of 5.7:1 ).

As to argument (4), R-value is not considered dispositive because it is not

claimed. The portion of the UL2079 standard referenced in the patent at issue relates

to cycling (see Witherspoon at col. 6, lines 53-55) and not R-value.

As to argument (5), the evidence of unexpected results is not persuasive

because of lack of objective data. See MPEP 716.02(a). Also, lllger discloses the

unexpected results for flame resistance when aluminum hydroxide is added

polyurethane foams at col. 2, lines 9-33.

As to argument (6), lllger with similar amounts of similar constituents as the

claimed invention (i.e., polyurethane and aluminum trihydrate) would function in a

similar fashion.

As to argument (7), Witherspoon, the patent at issue, discloses a weight ratio of

retardant:foam between 3.5:1 and 4:1 at col. 4, lines 51-53. The percentage fire

retardant is calculated to be between 78% and 80%. The constituents are aluminum

trihydrate and polyurethane. lllger discloses a percentage of fire retardant of from 10%


Art Unit: 3993

Page 38

to 95% of aluminum trihydrate with polyurethane at col. 2, lines 20-33. With the same

basic constituents at similar percentages the two infused foams would have the same

characteristics. This contention is strengthened by the disclosure of von Bonin which is

an aluminum trihydrate infused foam. With an apparent percentage of 15% to 85% for

the fire retardation the foam is mechanically stable at up to 1 ooooc for 90 minutes at

col. 3, lines 55-62, and col. 8, lines 43-58.

As to argument (8), the applied art is considered to disclose the claimed

limitations as shown in the rejections above.

As to argument (9), it would have been obvious to choose aluminum trihydrate as

a fire retardant in a polyurethane foam system in view of lllger's disclosure that

aluminum trihydrate imparts fire retardation in flexible polyurethane foams at col. 2, lines

9-33, and col. 6, lines 66-69, and von Bonin's disclosure that aluminum trihydrate can

achieve fire retardation at high temperatures at col. 3, lines 55-62, col. 8, lines 43-58.

As to argument (1 0), Ward disclosed the use of a fire retardant in a compression

polyurethane foam prior to the filing date of the patent at issue. lllger, AI-Tabaqchall,

and von Bonin disclose in the prior art the use of aluminum trihydrate in polyurethane

foam. Building standards and codes requiring fire retardation would provide a reason to

add the retardant to the foam.

Also, the evidence of a long felt need is unpersuasive because objective

evidence must be presented that shows the claimed invention satisfied a long felt need

that was recognized, persistent, and not solved by others. MPEP 716.04.


Art Unit: 3993

Page 39

As to argument (11 ), the applied references disclose the claimed limitations as

shown above and are combinable because they deal with polyurethane foam and either

an expansion joint system or infusion of a retardant into the foam.

As to argument (12), the applied art discloses these limitations as shown in the

rejections.

Further, for the compression limitation, lllger discloses an uncompressed foam of

10 to 100 kg/m3 at col. 2, lines 25-27. Baerveldt '695 discloses compressing the foam

before use from 1 0-25% of the uncompressed thickness at col. 3, lines 15-16. With

these disclosures it would be obvious to one of ordinary skill to have compression in the

claimed range. Further, Baerveldt '695, the base reference, discloses the use of

GREYFLEX as the foam at col. 3, lines 8-12. GREYFLEX has an uncompressed

density of 146 to 155 kg/m3 (from "Emseal GREYFLEX Expanding Foam Sealant for

Facades" on an IDS received 20 April 2015 in 90/013,428 where the density is given as

9.1-9.7 lb/ft3 in Table 2-1 ). Compression of at least 50% during use would give a

compressed density of over 300 kg/m3. The "Emseal" reference states that fac;ade

joints generally require compression to 25% of uncompressed dimension which would

be greater than 300 kg/m3. The combination of Baerveldt '695 and lllger would meet

this claim limitation.

Further, for the fire retardation limitation, Witherspoon, the patent at issue,

discloses a weight ratio of retardant:foam between 3.5:1 and 4:1 at col. 4, lines 51-53.

The percentage fire retardant is calculated to be between 78% and 80%. The

constituents are aluminum trihydrate and polyurethane. lllger discloses a percentage of


Art Unit: 3993

Page 40

fire retardant of from 10% to 95% of aluminum trihydrate with polyurethane at col. 2,

lines 20-33. With the same basic constituents at similar percentages the two foams

would have the same characteristics. This contention is strengthened by the disclosure

of von Bonin which is an aluminum trihydrate infused foam. With an apparent

percentage of 15% to 85% for the fire retardation the foam is mechanically stable at up

to 1 000 oc for 90 minutes at col. 3, lines 55-62, and col. 8, lines 43-58.

As to argument (13), the applied art discloses the limitations for the dependent

claims as shown above in the rejections.

As to argument (14), the newly added claims are not found allowable as shown in

the rejections given above.

Declaration of Hensley received 8 March 2016

The totality of the evidence has been considered and found unpersuasive.

In 1[ 4, Declarant argues that those of ordinary skill in the art at the time of the

invention understood that UL2079 testing, at a minimum, included a cycling test

immediately followed by a temperature test for fire endurance/heat resistance.

Examiner disagrees. Since in the specification the cycling portion was discussed with

the UL2079 standard, the specification is considered to support the cycling portion of

the UL 2079 standard. For the fire resistance portion of the UL2079 standard, the

specification does not have sufficient detail of this portion to conclude that the inventor

had possession of the claimed invention as amended. See MPEP 2163(1).


Art Unit: 3993

Page 41

In 1[ 5, Declarant argues that those of ordinary skill in the art at the time of the

invention would read lllger to function like AI-Tabaqchall for fire retardation and

disintegrate at higher temperatures since the two references are similar in several

aspects. This argument is found unpersuasive because lllger discloses in an open-

celled polyurethane foam (abstract; col. 6, lines 27-29) desirable mechanical properties

and fire retardation (col. 2, lines 14-15) at 10% to 95% aluminum hydroxide by weight

(col. 2, lines 30-33). The higher percentage of aluminum hydroxide is considered

comparable to that of the patent at issue. As Patent Owner points out in the table at

page 8, AI-Tabaqchall has a lower level of aluminum trihydrate. When the disclosure of

the use aluminum trihydrate as fire retardant in polyurethane is combined with the

disclosure of Baerveldt '695 of a waterproof expansion joint system the claimed

invention is met.

In 1[1[6 and 8, Declarant argues that those of ordinary skill in the art at the time of

the invention, such as Patent Owner, did not know or understand that fire retardant

material could be infused into a compressed foam and still maintain back pressure

necessary to accommodate movement. Further, they would be directed away from

adding fire retardant materials since they increase thermal flow in the foam. This

argument is found unpersuasive because Ward discloses use of a fire retardant in a

flexible expansion joint foam (polyurethane) at page 1, lines 1-15, as early as 2001

(publishing date of Ward GB2359265 A). lllger discloses an infused polyurethane foam

that is flexible or semi-rigid at col. 6, lines 66-68. Thus, one of ordinary skill would have

reason, given the expansion system of Baerveldt '695 with a compressed foam, to


Art Unit: 3993

infuse a fire retardant when desired. Thermal flow, or R-value, is not dispositive

because it is not claimed.

Page 42

In 1[7, Declarant argues that those of ordinary skill in the art at the time of

the invention would not have motivation to combine the applied references, and the

invention yielded unexpected results. This argument is found unpersuasive because

Ward discloses use of a fire retardant in an expansion joint foam, which is considered a

compressed foam, at page 1, lines 1-15, as early as 2001 (publishing date of Ward).

Thus, there would be a reason, or motivation, to combine fire retardation to the

expansion joint system of Baerveldt '695. A possible reason would be to pass standards

such as UL 2079 for both fire retardation and expansion cycling so as to meet local and

state building standards. In other words, in response to argument that there is no

teaching, suggestion, or motivation to combine the references, the examiner recognizes

that obviousness may be established by combining or modifying the teachings of the

prior art to produce the claimed invention where there is some teaching, suggestion, or

motivation to do so found either in the references themselves or in the knowledge

generally available to one of ordinary skill in the art. See In reFine, 837 F.2d 1071, 5

USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir.

1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385

(2007). In this case, Ward is evidence of the general knowledge within the art. In

addition, evidence of unexpected results is unpersuasive because of lack of objective

data. See MPEP 716.02(a), 716.01 (c). Also, lllger disclosed the unexpected result for


Art Unit: 3993

Page 43

flame resistance when aluminum hydroxide is added polyurethane foams at col. 2, lines

9-33.

In 1[9, Declarant argues that the claimed invention was arrived at not by routine

experimentation but surprisingly achieves two functions (water resistance and fire

retardation) in one system. This argument is unpersuasive because Ward discloses in

the prior art the combination of a polyurethane foam with both water resistance and fire

retardation. Examiner considers this argument to invoke unexpected results for which

objective data is lacking. See MPEP 716.02(b).

In 1[1 0, Declarant argues that the invention is not obvious and solved a

significant need in the industry and was not predictable. This argument is not

persuasive because the applied art discloses the claimed limitations or the limitations

were obvious to one of ordinary skill given the totality of the prior art; Ward showed in

the prior art an expansion joint with polyurethane foam with an infused fire retardant so

it was predictable to add aluminum trihydrate to the foam of Baerveldt '695; and, the

evidence of a solution to industry's need is unpersuasive because evidence is lacking

showing the need was recognized, persistent, and not solved by others.

After weighing the totality of the evidence of non-obviousness against the totality

of the prior art, the evidence of non-obviousness is found unpersuasive and the

rejections are maintained.


Art Unit: 3993

Remarks

THIS ACTION IS MADE FINAL.

Page 44

A shortened statutory period for response to this action is set to expire 2 months

from the mailing date of this action.

Extensions of time under 37 CFR 1.136(a) do not apply in reexamination

proceedings. The provisions of 37 CFR 1.136 apply only to "an applicant" and not to

parties in a reexamination proceeding. Further, in 35 U.S. C. 305 and in 37 CFR

1.550(a), it is required that reexamination proceedings "will be conducted with special

dispatch within the Office."

Extensions of time in reexamination proceedings are provided for in 37

CFR 1.550(c). A request for extension of time must specify the requested period of

extension and it must be accompanied by the petition fee set forth in 37 CFR 1.17(g).

Any request for an extension in a third party requested ex parte reexamination must be

filed on or before the day on which action by the patent owner is due, and the mere

filing of a request will not effect any extension of time. A request for an extension of time

in a third party requested ex parte reexamination will be granted only for sufficient

cause, and for a reasonable time specified. Any request for extension in a patent owner

requested ex parte reexamination (including reexamination ordered under 35 U.S.C.

257) for up to two months from the time period set in the Office action must be filed no

later than two months from the expiration of the time period set in the Office action. A

request for an extension in a patent owner requested ex parte reexamination for more

than two months from the time period set in the Office action must be filed on or before


Art Unit: 3993

Page 45

the day on which action by the patent owner is due, and the mere filing of a request for

an extension for more than two months will not effect the extension. The time for taking

action in a patent owner requested ex parte reexamination will not be extended for more

than two months from the time period set in the Office action in the absence of sufficient

cause or for more than a reasonable time.

The filing of a timely first response to this final rejection will be construed as

including a request to extend the shortened statutory period for an additional two

months. In no event, however, will the statutory period for response expire later than

SIX MONTHS from the mailing date of the final action. See MPEP § 2265.

Any proposed amendment filed in this reexamination proceeding must be made

in accordance with 37 CFR 1.530(d)-(j) and comply with the formal requirements of 37

CFR 1.52(a) and (b) (see MPEP 2250).

If the request was submitted by a third party requester, then any document filed

by either the patent owner or third party requester must be served on the other party

(or parties in a merged proceeding) in the reexamination proceeding in the manner

provided by 37 CFR 1.248 (see 37 CFR 1.550(f) and MPEP 2266.03).

The Patent Owner is reminded of the continuing responsibility under 37 CFR

1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent

proceeding, involving the patent throughout the course of this reexamination

proceeding. If applicable, the Third Party Requester is also reminded of its

responsibility to similarly apprise the Office of any such activity or proceeding


Art Unit: 3993

Page 46

throughout the course of this reexamination proceeding (see MPEP 2207, 2282 and

2286).

If the examiner cannot be contacted the examiner's supervisor, Gay Ann Spahn,

can be reached at 571.272.7731.

All correspondence relating to this ex parte reexamination proceeding should be directed

as follows:

By EFS:

By Mail:

By FAX:

By hand:

Registered users may submit via the electronic filing system, EFS-Web, at: https :/ /spo rtal. uspto .gov /authenticate/authenticate use rlocalepf. htm I.

Mail Stop Ex Parte Reexam ATTN: Central Reexamination Unit Commissioner for Patents U.S. Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

(571) 273-9900 Central Reexamination Unit

Customer Service Window Randolph Building 401 Dulany St. Alexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1) (i)(C) and (ii) state that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if: (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4); and, (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office Action.


Art Unit: 3993

Page 47

Any inquiry concerning this communication or earlier communications from the Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit (CRU) at telephone number: 571.272.7705. The CRU's fax number is: 571.273.9900.

I Jeffrey L. Gellner/ Jeffrey L. Gellner AU 3993, Central Reexamination Unit (571) 272-6887

Conferees: /rds/ and /GAS/

Office Action in Ex Parte Reexamination

Control No. 90/013,565

Examiner JEFFREY L. GELLNER

Patent Under Reexamination 8365495

Art Unit

3993

AlA (First Inventor to File) Status No

-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -

a.[8] Responsive to the communication(s) filed on 8 March 2016.

D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .

b. [8] This action is made FINAL.

c. D A statement under 37 CFR 1.530 has not been received from the patent owner.

A shortened statutory period for response to this action is set to expire g month(s) from the mailing date of this letter. Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c). If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days will be considered timely.

Part I THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:

1.

2.

D Notice of References Cited by Examiner, PT0-892.

[8] Information Disclosure Statement, PTO/SB/08.

3.

4.

D Interview Summary, PT0-474.

D Part II SUMMARY OF ACTION

1 a. [8] Claims 1-60 are subject to reexamination.

1 b. D Claims __ are not subject to reexamination.

2. D Claims __ have been canceled in the present reexamination proceeding.

3. D Claims __ are patentable and/or confirmed.

4. [8] Claims 1-60 are rejected.

5. D Claims __ are objected to.

6. D The drawings, filed on __ are acceptable.

7. D The proposed drawing correction, filed on __ has been (7a) D approved (7b) D disapproved.

8. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).

a) D All b) D Some* c) D None of the certified copies have

1 D been received.

2 D not been received.

3 D been filed in Application No. __ .

4 D been filed in reexamination Control No. __

5 D been received by the International Bureau in PCT application No. __ .

* See the attached detailed Office action for a list of the certified copies not received.

9. D Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for 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.

1 0. D Other: __

cc: Requester (if third party requester) U.S. Patent and Trademark Off1ce

PTOL-466 (Rev. 08·13) Office Action in Ex Parte Reexamination Part of Paper No. 20160329

Reexamination App./Control No. 90/013,565 Art Unit: 3993 Amendment and Response to Non-Final Office Action of January 8, 2016

AMENDMENTS TO THE CLAIMS:

Atty. Docket No.: 1269-0001-lRE

This listing of claims replaces all prior versions and listings of the claims in the

Patent:

1. (Amended) A method of installing an expansion joint, comprising:

providing a first substrate;

providing a second substrate arranged to be coplanar with the first substrate and being

spaced therefrom by a gap;

compressing a water and fire resistant expansion joint system comprising [a] an open

celled foam in a compressed state which is less than fully expanded and infused with a fire

retardant material and having a water resistant layer and a fire resistant layer disposed thereon,

where the ratio of fire retardant material infused into the open celled foam is in a range of about

3.5:1 to about 4:1 by weight, and the infused open celled foam has a density in a range of about

200 kg/m3 to about 700 kg/m3 in the compressed state;

inserting the compressed expansion joint system into the gap between the first substrate

and the second substrate; and

allowing the compressed expansion joint system to decompress to fill the gap between

the first substrate and the second substrate;

wherein the fire and water resistant expansion joint system is capable of withstanding

exposure to a temperature of about 540°C or greater for about five minutes and able to

accommodate movement of the first substrate and the second substrate by compressing and

expanding while maintaining the compressed state.

2. (As Issued) The method of claim 1, further comprising applying an adhesive to an

edge of at least one of the first substrate and the second substrate to anchor the expansion joint

system.

3. (Amended) The method of installing an expansion joint according to claim 1, wherein

the open celled foam has an infused foam density when compressed in a range of about [200]

400 kg/m3 to about 700 kg/m3.

3



4. (As Issued) The method of claim 3, wherein the open celled foam has an infused

foam density when compressed in a range of about 400 kg/m3 to about 450 kg/m3 such that the

fire and water resistant expansion joint system passes UL 2079 testing.

5. (Amended) A fire and water resistant expansion joint system, comprising:

open celled foam in a compressed state which is less than fully expanded;

a fire retardant material infused into the open celled foam, where the ratio of fire

retardant material infused into the open celled foam is in a range of about 3.5:1 to about 4:1 by

weight, and the infused open celled foam has a density in a range of about 200 kg/m3 to about

700 kg/m3 in the compressed state;

a layer of an elastomer adhesively disposed on a surface of the open celled foam; and

a layer of an intumescent material disposed on a surface of the open celled foam

opposing the layer of elastomer;

wherein the layer of elastomer and the layer of intumescent material are configured to

define a bellows profile to facilitate the compression and expansion of the fire and water resistant

expansion joint system when installed between coplanar substrates;



accommodate movement of the substrates by compressing and expanding while maintaining the

compressed state.

6. (As Issued) The fire and water resistant expansion joint system of claim 5, wherein

the open celled foam comprises a plurality of laminations of open celled foam.


the open celled foam is polyurethane.

8. (Amended) The fire and water resistant expansion joint system of claim 5, wherein the

fire retardant material infused into the open celled foam is a combination of water-based

aluminum tri-hydrate and a material selected from the group consisting of metal oxides, metal

hydroxides, aluminum oxides, antimony oxides and hydroxides, iron compounds, ferrocene,

4



molybdenum trioxide, nitrogen-based compounds, compounds capable of suppressing

combustion and smoke formation and combinations of the foregoing materials.

9. (Amended) The fire and water resistant expansion joint system of claim 5, wherein

the fire retardant material infused into the open celled foam is selected from the group consisting

of metal oxides, metal hydroxides, aluminum oxides, antimony oxides and hydroxides, iron

compounds, ferrocene, molybdenum trioxide, nitrogen-based compounds, water-based aluminum

tri-hydrate and combinations of the foregoing materials.


the elastomer adhesively disposed on the surface of the open celled foam comprises a silicone.


the elastomer adhesively disposed on the surface of the open celled foam is selected from the

group consisting of polysulfides, acrylics, polyurethanes, poly-epoxides, silyl-terminated

polyethers, and combinations of one or more of the foregoing.


the intumescent material disposed on the surface of the open celled foam comprises a fire barrier

caulk.

13. (As Issued). The fire and water resistant expansion joint system of claim 5, wherein

the open celled foam uncompressed has a density of about 130 kg/m3 to about 150 kg/m3.

14. (As Issued) The fire and water resistant expansion joint system of claim 5, further

comprising a second layer of elastomer disposed on the layer of intumescent material.




5

Reexamination App./Control No. 90/013,565 Art Unit: 3993


Amendment and Response to Non-Final Office Action of January 8, 2016


the open celled foam has an infused foam density when compressed in a range of about 400

kg/m3 to about 450 kg/m3 such that the fire and water resistant expansion joint system passes UL

2079 testing.

17. (Amended) A fire and water resistant expansion joint system, comprising:

open celled foam in a compressed state which is less than fully expanded;

a fire retardant material infused into the open celled foam, where the ratio of fire

retardant material infused into the open celled foam is in a range of about 3.5:1 to about 4:1 by

weight, and the infused open celled foam has a density in a range of about 200 kg/m3 to about

700 kg/m3 in the compressed state;

a first layer of an intumescent material disposed on a first surface of the open celled

foam;

a first layer of an elastomer disposed on the first layer of intumescent material;

a second layer of an intumescent material disposed on a second surface of the open celled

foam; and

a second layer of an elastomer disposed on the second layer of intumescent material;

wherein the first and second layers of elastomer and the first and second layers of

intumescent material are configured to define a bellows profile to facilitate the compression and

expansion of the fire and water resistant expansion joint system when installed between coplanar

substrates~



accommodate movement of the substrates by compressing and expanding while maintaining the

compressed state.


the open celled foam comprises a plurality of laminations of open celled foam.


the open celled foam is polyurethane.

6




the fire retardant material infused into the open celled foam is a combination of water-based






the fire retardant material infused into the open celled foam is selected from the group consisting

of metal oxides, metal hydroxides, aluminum oxides, antimony oxides and hydroxides, iron




the elastomer disposed on the intumescent material comprises a silicone.


the intumescent material disposed on the surface of the open celled foam comprises a fire barrier

caulk.


the elastomer disposed on the intumescent material is selected from the group consisting of

polysulfides, acrylics, polyurethanes, poly-epoxides, silyl-terminated polyethers, and

combinations of one or more of the foregoing.


the open celled foam has an uncompressed density in a range of about 130 kg/m3 to about 150

kg/m3.

7







the open celled foam has an infused foam density when compressed in a range of about 400

kg/m3 to about 450 kg/m3 such that the fire and water resistant expansion joint system passes UL

2079 testing.

28. (Amended) A fire and water resistant architectural expansion joint system,

compnsmg:

a first substrate;

a second substrate arranged coplanar to the first substrate; and

an expansion joint located in compression between the first substrate and the second

substrate, the expansion joint comprising,

open celled polyurethane foam in a compressed state which is less than fully

expanded and having a fire retardant material infused therein, where the ratio of fire

retardant material infused into the open celled foam is in a range of about 3 .5: 1 to about

4:1 by weight, and the infused open celled polyurethane foam has a density in a range of

about 200 kg/m3 to about 700 kg/m3 in the compressed state;

at least one layer of an intumescent material disposed on at least one surface of

the open celled polyurethane foam; and

at least one layer of elastomer disposed on at least one of a surface of the open

celled polyurethane foam and at least one layer of the intumescent material;

wherein the expansion joint is compressed between the first substrate and the second

substrate to accommodate movement therebetween; and

wherein the fire and water resistant architectural expansion joint system is capable of

withstanding exposure to a temperature of about 540°C or greater for about five minutes and able

to accommodate movement of the substrates by compressing and expanding while maintaining

the compressed state.

8



29. (As Issued) The architectural joint system of claim 28, wherein the elastomer is

selected from the group consisting of silicones, polysulfides, acrylics, polyurethanes, poly

epoxides, silyl-terminated polyethers, and combinations of one or more of the foregoing.

30. (As Issued) The architectural joint system of claim 28, wherein the intumescent

material comprises a fire barrier caulk.

31. (Amended) The architectural joint system of claim 28, wherein the fire retardant

material infused into the open celled polyurethane foam is a combination of water-based





32. (Amended) The architectural joint system of claim 28, wherein the fire retardant

material infused into the open celled polyurethane foam is selected from the group consisting of

metal oxides, metal hydroxides, aluminum oxides, antimony oxides and hydroxides, iron



33. (As Issued) The architectural joint system of claim 28, further comprising a bead of

elastomer located at an interface of the expansion joint and at least one of the first substrate and

the second substrate.

34. (As Issued) The architectural joint system of claim 28, wherein the open celled

polyurethane foam comprises a plurality of laminations of open celled polyurethane foam.

35. (Amended) The architectural joint system of claim 28, wherein the open celled foam

has an infused foam density when compressed in a range of about [200] 400 kg/m3 to about 700

kg/m3.

9



36. (As Issued) The architectural joint system of claim 35, wherein the open celled foam

has an infused foam density when compressed in a range of about 400 kg/m3 to about 450 kg/m3

such that the fire and water resistant expansion joint system passes UL 2079 testing.

37. (Amended) A fire and water resistant architectural expansion joint system,

compnsmg:

a first substrate;

a second substrate arranged coplanar to the first substrate; and

an expansion joint located in compression between the first substrate and the second

substrate, the expansion joint comprising,

open celled polyurethane foam in a compressed state which is less than fully

expanded and having a fire retardant material comprising water-based aluminum tri

hydrate infused therein, where the ratio of the fire retardant material comprising water

based aluminum tri-hydrate infused into the open celled foam is in a range of about 3.5:1

to about 4:1 by weight, and the infused open celled polyurethane foam has a density in a

range of about 200 kg/m3 to about 700 kg/m3 in the compressed state;

at least one layer of an intumescent material comprising a fire-resistant caulk

disposed on at least one surface of the open celled polyurethane foam;

at least one layer of a waterproofing elastomer comprising a silicone disposed on

at least one of a surface of the open celled polyurethane foam and at least one layer of the

intumescent material;

wherein the expansion joint is compressed between the first substrate and the second

substrate to accommodate movement therebetween;

wherein the expansion joint is capable of withstanding exposure to a temperature of about

540°C or greater for about five minutes and able to accommodate movement of the first substrate

and the second substrate by compressing and expanding while maintaining the compressed state;

and

at least one of a bead of the intumescent material and a bead of the elastomer is located at

an interface of the expansion joint and at least one of the first substrate and the second substrate.

10



38. (Amended) The fire and water resistant architectural expansion joint system of claim

37, wherein the open celled foam has an infused foam density when compressed in a range of

about [200] 400 kg/m3 to about 700 kg/m3.

39. (Amended) The fire and water resistant architectural expansion joint system of claim

38, wherein the open celled foam has an infused foam density when compressed in a range of

about 400 kg/m3 to about 450 kg/m3 such that the fire and water resistant architectural expansion

joint system passes UL 2079 testing.

40. (New) The fire and water resistant expansion joint system of claim 5, wherein the

system is capable of withstanding exposure to a temperature of about 930°C for about one hour.


system is capable of withstanding exposure to a temperature of about 101 ooc for about two

hours.


system is capable of withstanding exposure to a temperature of about 540°C or greater for about

five minutes after exposure to movement cycling selected from the group consisting of: at least

1 cycle per minute for at least 500 cycles, at least 10 cycles per minute for at least 500 cycles,

and at least 30 cycles per minute for at least 100 cycles, wherein a movement cycle of the

movement cycling is the system width being nominal, maximum, minimum and then nominal.

43. (New) A method of installing a fire and water resistant expansion joint system,

compnsmg:

providing a first substrate;

providing a second substrate arranged to be coplanar with the first substrate and being

spaced therefrom by a gap;

compressing a water and fire resistant expansion joint system comprising an open celled

foam in a compressed state which is less than fully expanded and infused with a fire retardant

material, and having a water resistant layer and a fire resistant layer disposed thereon, where the

11



ratio of fire retardant material infused into the open celled foam is in a range of about 3.5: 1 to

about 4:1 by weight, and the infused open celled foam has a density in a range of about 200

kg/m3 to about 700 kg/m3 in the compressed state;

inserting the compressed fire and water resistant expansion joint system into the gap

between the first substrate and the second substrate; and

allowing the compressed fire and water resistant expansion joint system to decompress to

fill the gap between the first substrate and the second substrate, and the fire and water resistant

expansion joint system facilitates compression and expansion during use after installation and

accommodates movement of the substrates as the fire and water resistant expansion joint system

repeatedly cycles by compressing and decompressing between minimum and maximum sizes of

the gap, and is capable of withstanding exposure to a temperature of about 540°C or greater for

about five minutes and able to accommodate movement of the first substrate and the second

substrate while maintaining the compressed state.

44. (New) The method according to claim 43, wherein the foam with the fire retardant

material compressed has a density in a range of about 400 kg/m3 to about 700 kg/m3.

45. (New) The method according to claim 44, wherein the foam with the fire retardant

material compressed has a density in a range of about 400 kg/m3 to about 450 kg/m3.

46. (New) The fire and water resistant architectural expansion joint system of claim 28,

wherein the system is configured to maintain fire resistance upon exposure to a temperature of

about 540°C or greater for about five minutes after exposure to movement cycling selected from

the group consisting of: at least 1 cycle per minute for at least 500 cycles, at least 10 cycles per

minute for at least 500 cycles, and at least 30 cycles per minute for at least 100 cycles, wherein a

movement cycle of the movement cycling is the system width being nominal, maximum,

minimum and then nominal.

47. (New) The method of claim 1, wherein the fire retardant material infused into the

open celled foam is selected from the group consisting of metal oxides, metal hydroxides,

aluminum oxides, antimony oxides and hydroxides, iron compounds, ferrocene, molybdenum

12



trioxide, nitrogen-based compounds, water-based aluminum tri-hydrate, compounds capable of

suppressing combustion and smoke formation, and combinations of the foregoing materials.


open celled foam comprises i) a water-based aluminum tri-hydrate, ii) an antimony oxide or an

antimony hydroxide, and iii) a nitrogen-based compound.


open celled foam is a combination of i) the water-based aluminum tri-hydrate, ii) the antimony

oxide or the antimony hydroxide, and iii) the nitrogen-based compound, and iv) a material

selected from the group consisting of metal oxides, metal hydroxides, iron compounds,

ferrocene, molybdenum trioxide, compounds capable of suppressing combustion and smoke

formation and combinations of the foregoing materials.


fire retardant material infused into the open celled foam comprises i) a water-based aluminum

tri-hydrate, ii) an antimony oxide or an antimony hydroxide, and iii) a nitrogen-based compound.


fire retardant material infused into the open celled foam is a combination of i) the water-based

aluminum tri-hydrate, ii) the antimony oxide or the antimony hydroxide, and iii) the nitrogen

based compound, and iv) a material selected from the group consisting of metal oxides, metal

hydroxides, iron compounds, ferrocene, molybdenum trioxide, compounds capable of

suppressing combustion and smoke formation and combinations of the foregoing materials.


fire retardant material infused into the open celled foam comprises i) a water-based aluminum

tri-hydrate, ii) an antimony oxide or an antimony hydroxide, and iii) a nitrogen-based compound.


fire retardant material infused into the open celled foam is a combination of i) the water-based

13



aluminum tri-hydrate, ii) the antimony oxide or the antimony hydroxide, and iii) the nitrogen

based compound, and iv) a material selected from the group consisting of metal oxides, metal

hydroxides, iron compounds, ferrocene, molybdenum trioxide, compounds capable of

suppressing combustion and smoke formation and combinations of the foregoing materials.


wherein the fire retardant material infused into the open celled polyurethane foam comprises i) a

water-based aluminum tri-hydrate, ii) an antimony oxide or an antimony hydroxide, and iii) a

nitrogen-based compound.


wherein the fire retardant material infused into the open celled polyurethane foam is a

combination of i) the water-based aluminum tri-hydrate, ii) the antimony oxide or the antimony

hydroxide, and iii) the nitrogen-based compound, and iv) a material selected from the group

consisting of metal oxides, metal hydroxides, iron compounds, ferrocene, molybdenum trioxide,

compounds capable of suppressing combustion and smoke formation and combinations of the

foregoing materials.


wherein the fire retardant material infused into the open celled polyurethane foam comprises i)

the water-based aluminum tri-hydrate, ii) an antimony oxide or an antimony hydroxide, and iii) a

nitrogen-based compound.


wherein the fire retardant material infused into the open celled polyurethane foam is a

combination of i) the water-based aluminum tri-hydrate, ii) the antimony oxide or the antimony

hydroxide, and iii) the nitrogen-based compound, and iv) a material selected from the group

consisting of metal oxides, metal hydroxides, iron compounds, ferrocene, molybdenum trioxide,

compounds capable of suppressing combustion and smoke formation and combinations of the

foregoing materials.

14




open celled foam is selected from the group consisting of metal oxides, metal hydroxides,

aluminum oxides, antimony oxides and hydroxides, iron compounds, ferrocene, molybdenum

trioxide, nitrogen-based compounds, water-based aluminum tri-hydrate, compounds capable of

suppressing combustion and smoke formation, and combinations of the foregoing materials.


open celled foam comprises i) a water-based aluminum tri-hydrate, ii) an antimony oxide or an

antimony hydroxide, and iii) a nitrogen-based compound.


open celled foam is a combination of i) the water-based aluminum tri-hydrate, ii) the antimony

oxide or the antimony hydroxide, and iii) the nitrogen-based compound, and iv) a material

selected from the group consisting of metal oxides, metal hydroxides, iron compounds,

ferrocene, molybdenum trioxide, compounds capable of suppressing combustion and smoke

formation and combinations of the foregoing materials.

15

8365495 FINAL REJECTION 90013565 4-8-2016

Engineering

Transcript of 8365495 FINAL REJECTION 90013565 4-8-2016