A "WIN" for Emseal on the 6,532,708 Patent? Look at the narrowing of claims for 4&6 and decide.
Emseal patent 8,813,449 FINAL office action rejection
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Transcript of Emseal patent 8,813,449 FINAL office action rejection
Office Action in Ex Parte Reexamination
Control No. 90/013,428
Examiner JEFFREY L. GELLNER
Patent Under Reexamination 8813449
Art Unit
3993
AIA (First Inventor to File) Status No
-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -
a. [8] Responsive to the communication(s) filed on 7 March 2016.
D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
b. [8J 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.
[8J Information Disclosure Statement, PTO/SB/08.
3.
4.
D Interview Summary, PT0-474.
Part II SUMMARY OF ACTION
1 a. [8J Claims 1-6,8-18,20-24 and 26-34 are subject to reexamination.
1 b. D Claims __ are not subject to reexamination.
D
2. [8J Claims 7, 19 and 25 have been canceled in the present reexamination proceeding.
3. D Claims __ are patentable and/or confirmed.
4. [8J Claims 1-6,8-18,20-24 and 26-34 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 Office
PTOL-466 (Rev. 08-13) Office Action in Ex Parte Reexamination Part of Paper No. 20160426
UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/013,428 01/16/2015
128258 7590 05/06/2016
MKG,LLC 306 Industrial Park Road, Suite 206 Middletown, CT 06457
FIRST NAMED INVENTOR
8813449
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.
14-189-SR 4204
EXAMINER
GELLNER, JEFFREY L
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/06/2016 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 9Boston, MA 02109
Commissioner for Patents United States Patent and Trademark Office
P.O. Box 1450 Alexandria, VA 22313-·1450
W"W."I.IJ:.'=ptO.QOV
EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
REEXAMINATION CONTROL NO. 90/013.428.
PATENT NO. 8813449.
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.07-04)
Office Action in Ex Parte Reexamination
Control No. 90/013,428
Examiner JEFFREY L. GELLNER
Patent Under Reexamination 8813449
Art Unit
3993
AIA (First Inventor to File) Status No
-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -
a. [8] Responsive to the communication(s) filed on 7 March 2016.
D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
b. [8J 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.
[8J Information Disclosure Statement, PTO/SB/08.
3.
4.
D Interview Summary, PT0-474.
Part II SUMMARY OF ACTION
1 a. [8J Claims 1-6,8-18,20-24 and 26-34 are subject to reexamination.
1 b. D Claims __ are not subject to reexamination.
D
2. [8J Claims 7, 19 and 25 have been canceled in the present reexamination proceeding.
3. D Claims __ are patentable and/or confirmed.
4. [8J Claims 1-6,8-18,20-24 and 26-34 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 Office
PTOL-466 (Rev. 08-13) Office Action in Ex Parte Reexamination Part of Paper No. 20160426
Application/Control Number: 90/013,428
Art Unit: 3993
Page 2
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
A substantial new question (SNQ) of patentability affecting claims 1-17 pf US 8,813,449
Bl ("Hensley") is raised by the present request for ex parte reexamination. Claims 18-25 were
added in the amendment received 1 July 2015; claims 26-34 were added in the amendment
received 7 March 2016. The non-cancelled claims of claims 1-34 are the subject of this office
action.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections 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 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.
Claims 1-6, 8-18, 20-24, and 26-34 are rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Baerveldt (US 6,532,708 B 1; 1st patent on Request's IDS; Baerveldt '708) in
view of Illger et al. (US 4,288,559; 3rd patent on IDS of 8/27/2015; "Illger").
As to claim 1, Baerveldt '708 discloses
a cover plate ( 4 of Figs. 3 and 4 );
a spline (2 of Figs. 3 and 4) attached to the cover plate along a first edge of the spline;
Application/Control Number: 90/013,428
Art Unit: 3993
Page 3
a first foam (3 of Figs. 3 and 4) in a compressed state which is less than fully expanded
("pre-compressed" of col. 3, lines 10-15) having a material infused ( from "impregnated
expanding foam" of col. 3, lines 9-15) therein located on a first face of the spline;
a second foam (3 of Figs. 3 and 4) in the compressed state ("pre-compressed" of col. 3,
lines 10-15) having a material infused ( from "impregnated expanding foam" of col. 3, lines 9-15)
therein located on a second face of the spline;
wherein the spline depends from the cover plate and is positioned in a gap between
substantially coplanar substrates such that the cover plate overlies the gap (shown in Figs. 3 and
4); and
wherein the first foam is compressed between the first face of the spline and one of the
coplanar substrates and the second foam is compressed between the second face of the spline
and the other of the coplanar substrates (shown in Figs. 3 and 4). The cover plate and spline
capable of withstanding exposure of a temperature 540° C or greater for about five minutes
(from col. 5, lines 25-60) in that these metals are considered capable of withstanding exposure of
a temperature 540° C or greater for about five minutes). The system able to accommodate
movement of the substrates by compressing and expanding while maintaining the compressed
state (from col. 3, lines 16-29; from col. 2, lines 25-35).
Not disclosed is the infused material being a fire retardant that allows the foam to be
capable of withstanding exposure to a temperature of about 540° C or greater for about five
minutes, and the infused foam having a density in a range of 200 kg/m3 to 700 kg/m3 in the
compressed state.
Application/Control Number: 90/013,428
Art Unit: 3993
Illger, however, discloses a polyurethane foam with a fire retardant, aluminium
Page 4
hydroxide, infused in the foam (col. 2, lines 25-33; col. 4, line 66 to col. 5, line 2), and Illger
further discloses an infused foam density of 100 kg/m3 (col. 2, lines 24-33, of Illger). Illger's
infused foam would meet the claimed temperature requirement since the retardant is aluminium
hydroxide (considered to be Al(OHh) 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 modify the system of Baerveldt '708 by adding the fire retardant of Illger to the foam so as to
use a foam with excellent fire retardant properties (from abstract of Illger) when required; or, in
the alternative to substitute Baerveldt '708's foam with the foam oflllger so as to use a foam
with desirable mechanical and excellent fire retardant properties (from abstract of Illger) when
required. 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 ofBaerveldt '708 and Illger by having the compression
foam a density of 200 kg/m3 to 700 kg/m3 depending upon use and requirements of the system.
As to claim 2, Baerveldt '708 and Illger further disclose ratio of fire retardant material
infused into the first foam and the second foam is in a range of about 3.5: 1 to about 4: 1 (from
"10 to 800%" that corresponds to 0.1:1 to 8:1 oflllger).
As to claim 3, Baerveldt '708 and Illger further disclose the fire retardant being
aluminum tri-hydrate (Illger at col. 2, lines 25-33).
As to claim 4, Baerveldt '708 and Illger further disclose wherein the first foam and the
second foam each comprise open celled foam (Baerveldt '708 at col. 3, lines 7-28, in that
Application/Control Number: 90/013,428
Art Unit: 3993
"GREYFLEX " is open-celled) comprising a plurality of laminations into which the fire-
retardant material is infused (implied).
Page 5
As to claim 5, Baerveldt '708 and Illger further disclose wherein each of the first foam
and the second foam comprises a block of foam (shown in Baerveldt '708).
As to claim 6, Baerveldt '708 and Illger further disclose wherein the spline is of
monolithic construction (2 of Fig. 3 of Baerveldt '708).
As to claim 8, Baerveldt '708 as modified by Illger further disclose a layer of elastomer
(10 of Fig. 7 of Baerveldt) on a surface of at least one of the first foam and the second foam.
As to claims 9 and 10, Baerveldt '708 as modified by Illger further disclose wherein the
first foam and the second foam each comprise open celled foam comprising a plurality of
laminations into which the fire- retardant material is infused (Figs. 8-10 of Baerveldt '708). It
would have been obvious to one of ordinary skill in the art at the time of the invention to further
modify Baerveldt and Sealtite by using infused laminations as disclosed by Baerveldt so as to
assist in compression recovery (from Baerveldt at col. 4, lines 61-66).
As to claim 11, Baerveldt '708 as modified by Illger further disclose wherein the
laminations are oriented, with respect to the direction in which the joint extends, in at least one
of a parallel orientation, a perpendicular orientation, and a combination thereof (Baerveldt '709
shows parallel).
As to claim 12, Baerveldt '708 as modified by Illger further disclose the fire and water
resistance expansion joint capable of withstanding exposure to a temperature of about 930°C for
about one hour (Illger' s infused foam would meet the claimed temperature requirement since the
Application/Control Number: 90/013,428
Art Unit: 3993
Page 6
retardant is aluminium hydroxide (considered to be Al(OHh) the same as aluminum tri-hydrate
that is used in the claimed invention).
As to claim 13, Baerveldt '708 as modified by Illger further disclose the fire and water
resistance expansion joint capable of withstanding exposure to a temperature of about 1010°C
for about two hours (Illger's infused foam would meet the claimed temperature requirement
since the retardant is aluminium hydroxide (considered to be Al(OH)3) the same as aluminum tri-
hydrate that is used in the claimed invention).
As to claim 14, Baerveldt '708 as modified by Illger further disclose the fire and water
resistance expansion joint capable of withstanding exposure to a temperature of about 1260°C
for about eight hours (Illger' s infused foam would meet the claimed temperature requirement
since the retardant is aluminium hydroxide (considered to be Al(OH)3) the same as aluminum tri-
hydrate that is used in the claimed invention).
As to claim 15, Baerveldt '708 and Illger further disclose ratio of fire retardant material
infused into the first foam and the second foam is in a range of about 3.5: 1 to about 4: 1 (from
"10 to 800%" that corresponds to 0.1:1 to 8:1 oflllger).
As to claim 16, Baerveldt '708 as modified by Illger further disclose wherein the spline
comprises a non-conductive material ("plastics" of Baerveldt '708 at col. 5, lines 47-58).
As to claim 17, Baerveldt '708 as modified by Illger further disclose wherein the spline
includes a first member and a second member joined edge-to-edge with the first member, the
first member being attached to the cover plate along an edge opposite the second member (Fig. 5
of Baerveldt '708).
Application/Control Number: 90/013,428
Art Unit: 3993
Page 7
As to claim 26, Baerveldt '708 as modified by Illger further disclose an infused density of
10 to 100 kg/m3 (Illger at 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 further modify the system ofBaerveldt '708 and
Illger by having a compressed density of 400 kg/m3 to 700 kg/m3 depending upon use and
requirements of the system.
As to claim 27, Baerveldt '708 as modified by Illger further disclose an infused density of
10 to 100 kg/m3 (Illger at 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 further modify the system ofBaerveldt '708 and
Illger by having a compressed density of 400 kg/m3 to 450 kg/m3 and to pass UL2079 testing
standards depending upon use and requirements of the system.
As to claim 32, Baerveldt '708 as modified by Illger further disclose a water resistant
layer on the surface of the first and second foams (10 of Fig. 7 ofBaerveldt '708).
As to claims 18, 20, and 24, Baerveldt '708 discloses
a cover plate ( 4 of Figs. 3 and 4 );
a spline (2 of Figs. 3 and 4) attached to the cover plate along a first edge of the spline;
a first foam (3 of Figs. 3 and 4) in a compressed state which is less than fully expanded
("pre-compressed" of col. 3, lines 10-15) having a material infused ( from "impregnated
expanding foam" of col. 3, lines 9-15) therein, the first foam located on a first face of the spline;
a second foam (3 of Figs. 3 and 4) in the compressed state ("pre-compressed" of col. 3,
lines 10-15) having a material infused ( from "impregnated expanding foam" of col. 3, lines 9-15)
therein, the second foam located on a second face of the spline;
Application/Control Number: 90/013,428
Art Unit: 3993
Page 8
a layer of elastomer on a surface of at least one of the first or second foams (Fig. 5);
wherein the spline depends from the cover plate and is positioned in a gap between
substantially coplanar substrates such that the cover plate overlies the gap (shown in Figs. 3 and
4); and
wherein the first foam is compressed between the first face of the spline and one of the
coplanar substrates and the second foam is compressed between the second face of the spline
and the other of the coplanar substrates (shown in Figs. 3 and 4). The cover plate and spline
capable of withstanding exposure of a temperature 540° C or greater for about five minutes
(from col. 5, lines 25-60) in that these metals are considered capable of withstanding exposure of
a temperature 540° C or greater for about five minutes). The system able to accommodate
movement of the substrates by compressing and expanding while maintaining the compressed
state (from col. 3, lines 16-29; from col. 2, lines 25-35).
Not disclosed is the infused material being a fire retardant that allows the foam to be
capable of withstanding exposure to a temperature of about 540° C or greater for about five
minutes, and the infused foam having a density in a range of 200 kg/m3 to 700 kg/m3 in the
compressed state ..
Illger, however, discloses a polyurethane foam with a fire retardant, aluminium
hydroxide, infused in the foam (col. 2, lines 25-33; col. 4, line 66 to col. 5, line 2), and Illger
further discloses an infused foam density of 100 kg/m3 (col. 2, lines 24-33, of Illger). Illger's
infused foam would meet the claimed temperature requirement since the retardant is aluminium
hydroxide (considered to be Al(OHh) the same as aluminum tri-hydrate that is used in the
claimed invention.
Application/Control Number: 90/013,428
Art Unit: 3993
Page 9
It would have been obvious to one of ordinary skill in the art at the time of the invention
to modify the system of Baerveldt '708 by adding the fire retardant of Illger to the foam so as to
use a foam with excellent fire retardant properties (from abstract of Illger) when required; or, in
the alternative to substitute Baerveldt '708's foam with the foam of Illger so as to use a foam
with desirable mechanical and excellent fire retardant properties (from abstract of Illger) when
required. 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 ofBaerveldt '708 and Illger by having the compression
foam a density of 200 kg/m3 to 700 kg/m3 depending upon use and requirements of the system.
As to claim 21, Baerveldt '708 as modified by Illger further disclose the fire and water
resistance expansion joint capable of withstanding exposure to a temperature of about 930°C for
about one hour (Illger' s infused foam would meet the claimed temperature requirement since the
retardant is aluminium hydroxide (considered to be Al(OHh) the same as aluminum tri-hydrate
that is used in the claimed invention).
As to claim 22, Baerveldt '708 as modified by Illger further disclose the fire and water
resistance expansion joint capable of withstanding exposure to a temperature of about 1010°C
for about two hours (Illger's infused foam would meet the claimed temperature requirement
since the retardant is aluminium hydroxide (considered to be Al(OH)3) the same as aluminum tri-
hydrate that is used in the claimed invention).
As to claim 23, Baerveldt '708 as modified by Illger further disclose the fire and water
resistance expansion joint capable of withstanding exposure to a temperature of about 1260°C
for about eight hours (Illger' s infused foam would meet the claimed temperature requirement
Application/Control Number: 90/013,428
Art Unit: 3993
Page 10
since the retardant is aluminium hydroxide (considered to be Al(OH)3) the same as aluminum tri-
hydrate that is used in the claimed invention).
As to claim 28, Baerveldt '708 as modified by Illger further disclose an infused density of
10 to 100 kg/m3 (Illger at 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 further modify the system ofBaerveldt '708 and
Illger by having a compressed density of 400 kg/m3 to 700 kg/m3 depending upon use and
requirements of the system.
As to claim 29, Baerveldt '708 as modified by Illger further disclose an infused density of
10 to 100 kg/m3 (Illger at 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 further modify the system ofBaerveldt '708 and
Illger by having a compressed density of 400 kg/m3 to 450 kg/m3 and to pass UL2079 testing
standards depending upon use and requirements of the system.
As to claim 30, Baerveldt '708 as modified by Illger further disclose an infused density of
10 to 100 kg/m3 (Illger at 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 further modify the system ofBaerveldt '708 and
Illger by having a compressed density of 400 kg/m3 to 700 kg/m3 depending upon use and
requirements of the system.
As to claim 31, Baerveldt '708 as modified by Illger further disclose an infused density of
10 to 100 kg/m3 (Illger at 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 further modify the system ofBaerveldt '708 and
Illger by having a compressed density of 400 kg/m3 to 450 kg/m3 and to pass UL2079 testing
standards depending upon use and requirements of the system.
Application/Control Number: 90/013,428
Art Unit: 3993
Page 11
As to claim 33, Baerveldt '708 as modified by Illger further disclose a water resistant
layer on the surface of the first and second foams (10 of Fig. 7 of Baerveldt '708).
As to claim 34, Baerveldt '708 as modified by Illger further disclose a water resistant
layer on the surface of the first and second foams (10 of Fig. 7 ofBaerveldt '708).
Response to Arguments received 7 March 2016
In the amendment received 7 March 2016, Patent Owner argued:
1. Baerveldt '708 is concerned with water proofing and not the dual purpose of fire and
water resistance, and, in fact, the water proofing materials teach away from the claimed
invention because they do not provide high temperature resistance. Amendment at 13-16, 27.
2. Not known or understood to those of ordinary skill at time of invention to add a fire
retardant to a compressible water resistant foam sealant as disclosed by Baerveldt '708 since fire
resistant foams like Illger and Al-Tabaqchall deteriorate/disintegrate at high temperatures and
compression of a foam increases density which would increase thermal flow. Amendment at 17-
18.
3. The claimed invention has a unique quality that has yielded unexpected result of a fire
and water resistant compressed foam. Amendment at 19, 23-24, 27.
4. Illger does not disclose or suggest any expansion joint system and as such is non-
analogous art and teaches away for this functioning and use. Amendment at 20-21.
5. For obviousness rejection all claims need to be disclosed or suggested in prior art and
it is not inherent that Illger discloses the claimed temperature requirements because von Bonin
Application/Control Number: 90/013,428
Art Unit: 3993
Page 12
and Al-Tabaqchall disclose unpredictability with use of aluminum hydroxide. Amendment at 21-
22, 27.
6. Impermissible hindsight for reason to combine Baerveldt '708 and Illger. Amendment
at 24.
7. The combination ofBaerveldt '708 and Illger do not disclose the limitations of the
independent claims, no reason to combine, and would fail for intended use since would
deteriorate at high temperatures. Amendment at 26-27.
8. Dependent claims are allowable over the art since the art does not disclose or suggest
these limitations. Amendment at 28-30.
9. Newly added claims are allowable. Amendment at 30.
As to argument (1), it was known for expansion joints to have more than one function as
disclosed by Ward (GB 2359265 A at abstract) which was concerned with both water proofing
and fire retardation in an expansion joint ( at page 1). Further, Baerveldt '708 does not teach
away from the claimed invention. For example, Illger 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."
Illger 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 with a publication date of 22 August 2001
(GB2359265 A), discloses the use of flexible, expandable foams with an infused fire retardant at
Application/Control Number: 90/013,428
Art Unit: 3993
Page 13
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 (i.e., Ward is part of the knowledge generally available to one of ordinary
skill in the art).
Further, Illger is used in the rejections and neither Al-Tabaqchall nor von Bonin is
applied in the rejections. Illger discloses an infused foam with a weight ratio of aluminum
trihydrate to polyurethane foam of up to 8:1, or 10% to 95% (Illger at col. 2, lines 25-33). The
patent at issue discloses use of the same ratio of between 3.5: 1 to 4: 1 (78% to 80% ). With the
same basic constituents (polyurethane and aluminum trihydrate) in similar ratios, or percentages,
these infused foams are considered to possess similar characteristics. See generally MPEP
2112.01. Although Al-Tabaqchall's infused foam may deteriorate/disintegrate at higher
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 Illger. In fact, von Bonin
discloses a similarly infused foam with mechanical stability up to 1000°C 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).
Finally, R-value is not claimed and, thus, not dispositive.
As to argument (3), unexpected results is not persuasive because objective data is
lacking. See MPEP 716.02(a). Also, Illger discloses the unexpected results for flame resistance
when aluminum hydroxide is added polyurethane foams at col. 2, lines 9-33.
Application/Control Number: 90/013,428
Art Unit: 3993
Page 14
As to argument (4), the base reference, Baerveldt '708, discloses an expansion joint using
a foam. Ward (GB2359265 A) is evidence that it was known to have expansion joints with an
infused fire retardant (3rd paragraph of page 1). Illger discloses use of aluminum trihydrate as
fire retardant in polyurethane foams and is used only for this disclosure. Illger is analogous art in
that it is concerned with fire retardation in polyurethane foams.
As to argument (5), Hensley, the patent at issue, discloses a weight ratio of
retardant:foam between 3.5:1 and 4:1 at col. 5, lines 54-56. The percentage fire retardant is
calculated to be between 78% and 80%. The constituents are aluminum trihydrate and
polyurethane. Illger discloses a percentage of 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 (Illger' s higher percentage) 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 1000°C for 90 minutes at col. 3, lines 55-62, and col. 8, lines 43-58.
As to argument ( 6), Ward discloses the concept of infusing a compressible foam with a
fire retardant as early as 2001 (date of publication of GB2359265 A). Ward at page 1, lines 1-13.
Illger, Al-Tabaqchall, and von Bonin disclose the concept of use of aluminum trihydrate as a fire
retardant in foams. It would be obvious to one of ordinary skill to use aluminum trihydrate as a
fire retardant in a compressible foam.
As to argument (7), the limitations are disclosed in the prior art as explained in the
rejections above. The references are properly combinable because they deal with polyurethane
foams use in static structures. The combination would function as claimed as explained above.
Application/Control Number: 90/013,428
Art Unit: 3993
Page 15
As to argument (8), the limitations of the dependent claims are disclosed in the prior art
as explained in the rejections above.
As to argument (9), the limitations of the newly added claims are disclosed in the prior
art as explained in the rejections above.
Declaration of Hensley received 7 March 2016
The totality of the evidence has been considered and found unpersuasive.
In <JI 5, Declarant argues that one of ordinary skill in the art would understand that Illger
discloses an uncompressed flame resistant foam that would perform at higher temperatures as the
uncompressed foam of Al-Tabaqchall since they are similar in several aspects. This argument is
found unpersuasive because Illger 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. Al-Tabaqchall is not
dispositive because if its lower level of aluminum trihydrate (see Table A at page 8). When the
disclosure of the use aluminum trihydrate as fire retardant in polyurethane is combined with the
disclosure of Baerveldt '708 of a waterproof expansion joint system, the claimed invention is
met.
In <JI 6, Declarant argues that it was not known nor understood by those of ordinary skill
in the art at the time of the invention to have a compressed foam infused with a fire retardant
material, especially with knowledge that compressed materials increase heat flow as evidenced
Application/Control Number: 90/013,428
Art Unit: 3993
by Exhibit C. This argument is found unpersuasive because Ward discloses use of a fire
Page 16
retardant in a flexible expansion joint foam (polyurethane) at page 1, lines 1-15, as early as 2001
(publication date of Ward GB2359265 A) and is evidence of the knowledge generally available
to one of ordinary skill in the art. Al-Tabaqchall and von Bonin are not dispositive because
Illger' s disclosure of use of aluminum trihydrate in polyurethane foam is combined with
Baerveldt 708's disclosure of a compressible foam expansion joint to reject the claims.
In ,i 7, Declarant argues that there is no reason to combine Baerveldt '708 and Illger
because Baerveldt '708 is concerned with water proofing and is a compressed foam and Illger,
Al-Tabaqchall, and von Bonin are uncompressed. With fire retardant materials being
hydrophilic there would be no motivation to design an expansion joint that could pass UL2079
testing and have an infused fire retardant. The claimed invention yields 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. Thus, there is would be a reason, or motivation, to combine fire retardation to the
expansion joint system of Baerveldt '708. 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 response to applicant's 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 re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21
Application/Control Number: 90/013,428
Art Unit: 3993
Page 17
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 knowledge generally available to one of
ordinary skill in the art that a foam in a construction joint is known to include a fire-retardant
material. In addition, evidence of unexpected results is unpersuasive due to lack of objective
evidence.
In <JI 8, Declarant argues that those of ordinary skill in the art would expect that modifying
the foam of Baerveldt '708 with a fire retardant would deteriorate at higher temperatures. The
argument is found unpersuasive because von Bonin, although a solid foam as a finished product,
is polyurethane foam with infused aluminum trihydrate (col. 8, lines 43-58) and is disclosed as
achieving a fire retardation of 1000°C for 90 minutes (col. 3, lines 55-62). Thus, it was known
to one of ordinary skill in the art that aluminum trihydrate when infused into polyurethane would
impart the claimed temperature retardation. More probative evidence (for example, data from
comparison studies; see MPEP 716.0l(c), (d)) has not been presented that solid polyurethane
foam and compressible polyurethane foam when infused with aluminum trihydrate would behave
differently for fire retardation at higher temperatures.
In <JI 9, Declarant argues that through innovation and testing, not routine experimentation,
as evidenced at least by the specification of the patent at issue the claimed invention was
developed. This evidence is found unpersuasive because more probative evidence (i.e., data) is
lacking that shows testing and experimentation in the development of the claimed invention. See
MPEP 716.02(b). With the combined disclosures of Illger, Al-Tabaqchall, and Ward one of
ordinary skill would have reason to add aluminum trihydrate to the expansion joint system of
Baerveldt '708.
Application/Control Number: 90/013,428
Art Unit: 3993
Page 18
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.
Remarks
THIS ACTION IS MADE FINAL.
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 3 7 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 l.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
l.SSO(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 l.l 7(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
Application/Control Number: 90/013,428
Art Unit: 3993
Page 19
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
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 inquiry concerning this communication should be directed to Jeffrey L. Gellner at
telephone number 571.272.6887. The Examiner can normally be reached on Monday through
Friday from 8:30 to 4:30. If attempts to reach the Examiner by telephone are unsuccessful, the
Examiner's supervisor, Gay Ann Spahn, can be reached at 571.272.7731.
Applicant is reminded of the continuing obligation under 37 CPR 1.178(b ), to timely
apprise the Office of any prior or concurrent proceeding in which in the instant patent is or was
involved. These proceedings would include interferences, reissues, reexaminations, and
litigation.
Application/Control Number: 90/013,428
Art Unit: 3993
Page 20
These obligations rest with each individual associated with the filing and prosecution of
this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
/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. 90/013,428
Examiner JEFFREY L. GELLNER
Patent Under Reexamination 8813449
Art Unit
3993
AIA (First Inventor to File) Status No
-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -
a. [8] Responsive to the communication(s) filed on 7 March 2016.
D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
b. [8J 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.
[8J Information Disclosure Statement, PTO/SB/08.
3.
4.
D Interview Summary, PT0-474.
Part II SUMMARY OF ACTION
1 a. [8J Claims 1-6,8-18,20-24 and 26-34 are subject to reexamination.
1 b. D Claims __ are not subject to reexamination.
D
2. [8J Claims 7, 19 and 25 have been canceled in the present reexamination proceeding.
3. D Claims __ are patentable and/or confirmed.
4. [8J Claims 1-6,8-18,20-24 and 26-34 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 Office
PTOL-466 (Rev. 08-13) Office Action in Ex Parte Reexamination Part of Paper No. 20160426