DETAILED ACTION
This Office action is a reply to the amendment filed on 11/6/2025. Currently, claims 1, 10-11 and 21-37 are pending. Claims 2-9 and 12-20 have been cancelled. No claims have been withdrawn. New claims 21-37 have been added.
Response to Amendment
Applicant’s amended claims filed on 11/6/2025 do not comply with 37 CFR 1.121(c) based on the following informalities:
Claim 11 has not been provided with proper text markings. New text has been added to claim 11 without underlining the newly added text (see “defining an outer surface” in line 2). The text of any added subject matter must be shown by underlining the added text. 37 CFR 1.121(c)(2). In order to advance prosecution, the examiner treated the unmarked text as if it were underlined. Applicant is requested to check the remainder of the claims for any additional claim limitations that were added and not underlined.
Drawings
The Replacement Drawing filed on 11/6/2025 is acceptable for examination.
Claim Rejections - 35 USC § 112
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-AIA ), 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, 10-11 and 21-37 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, “a first calcium silicate” (line 7) and “a second calcium silicate” (line 9) are indefinite because it is unclear what the limitations require. Calcium silicate is understood to be a material, in light of applicant’s specification and the plain meaning. Does applicant intend for the first calcium silicate to be a different material composition than the second calcium silicate? See also claims 11 and 31.
Claim 11, “an elongate shelf member spaced from the elongate shelf member” is indefinite because it is unclear what the claim requires. Does applicant intend for the elongate shelf member to somehow have two components that are spaced apart from each other? Applicant is requested to clarify.
The remainder of claims in this section are rejected by virtue of dependency on a rejected base claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 10-11, 24-26 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over How To Build a Craftsman-Style Fireplace Mantel, by Gary Striegler, Fine Homebuilding, (https://www.finehomebuilding.com/project-guides/finish-trim-carpentry/build-a-craftsman-style-mantel) (‘Striegler’) in view of CN 215442856 U (‘CN ‘856’).
Claim 1, Striegler teaches a mantel for a fireplace, comprising:
(a) a mantel body (“mantel body”; see annotated figure of Striegler shown below in Examiner’s Notes) including:
(i) a frame (note that several components could be considered the frame, including but not limited to “frame” in annotated drawing of Striegler shown below in Examiner’s Notes) formed of a first heat resistant material (note that the wood material in Striegler, under the broadest reasonable interpretation is nonetheless heat resistant to some degree, as exceedingly broadly claimed), and
(ii) an overlay housing (note that several components could be considered the “overlay housing” in annotated drawing of Striegler) secured to the frame (annotated drawing of Striegler; see also photographs in Striegler) and formed of a second heat resistant material (note that the wood material in Striegler, under the broadest reasonable interpretation is nonetheless heat resistant to some degree, as exceedingly broadly claimed),
wherein the mantel body defines an outer surface (note that the “mantel body” comprises several portions at an outer area thereof that could be considered the outer surface, as shown in annotated drawing of Striegler),
Striegler does not teach wherein the first heat resistant material includes at least a first calcium silicate, wherein the second heat resistant material includes at least a second calcium silicate, wherein the mantel body does not include wood, concrete, stone, or metal; and (b) a mineral paint coating applied to the outer surface of the mantel body, wherein the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit.
However, CN ‘856 teaches a fireproof board, wherein the fireproof board comprises a calcium silicate board (CN ‘856 “calcium silicate board” English translation). CN ‘856 teaches that calcium silicate board is known in the art to be used in structural building applications as a durable and reliable building panel (CN ‘856 “durable and reliable building panel” CN ‘856 English translation; note that wood and calcium silicate were thus treated as structural equivalents). CN ‘856 further teaches coating the board with a coating (CN ‘856 “mineral coating” English translation), wherein the mineral coating comprises a mineral paint (CN ‘856 “mineral paint” comprising “silicone-grade aqueous mineral coating” English translation) that is known in the art to be fireproof and heat resistant (under the broadest reasonable interpretation and under the basic properties of materials, the mineral paint of CN ‘856 is heat resistant at least to some degree, as exceedingly broadly claimed), wherein the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit (under the basic properties of materials, silicone itself has a high auto-ignition temperature of around 842 degrees Fahrenheit, which is significantly higher than the required 300 degrees Fahrenheit, and thus the “silicone-grade aqueous mineral coating” of CN ‘856 was treated as meeting the limitation). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the mantel body from a material that does not include wood, concrete, stone, or metal, such that the first heat resistant material includes at least a first calcium silicate, and the second heat resistant material includes at least a second calcium silicate, such that the mantel further includes a mineral paint coating applied to the outer surface of the mantel body, wherein the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit, with the reasonable expectation of success of utilizing known, readily available materials to form the mantel, to increase various performance aspects of the mantel, including but not limited to durability, since wood and calcium silicate board were treated as structural equivalents, and since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
In the event that applicant disagrees that CN ‘856’s silicone-grade aqueous mineral coating would be configured to be non-combustible up to at least 300 degrees Fahrenheit, the examiner takes the position that modifying the composition of the mineral paint to be capable of meeting the claimed intended use would have been well within the level of ordinary skill, since CN ‘856 teaches the mineral coating being a silicone-grade aqueous mineral coating, and since silicone is known to have a high ignition temperature well beyond the claimed intended use. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the composition of the mineral paint coating material such that the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit, with the reasonable expectation of success of increasing heat resistance and reducing or preventing spread of flame, since silicone does not melt, and does not burn or provide fuel for a fire, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA).
Claim 10, Striegler further teaches wherein the mantel body at least partially defines a hollow (see spaces between blocking in annotated drawing of Striegler).
Claim 11, Striegler teaches a mantel for a fireplace, comprising: (a) a mantel body (“mantel body”; see annotated figure of Striegler shown below in Examiner’s Notes), comprising an outer surface (nota that several portions of the “mantel body” could be considered the outer surface at outer portions of the manel body as shown in annotated figure of Striegler), the mantel body including: (i) a frame (note that several components could be considered the frame, including but not limited to “frame” in annotated drawing of Striegler shown below in Examiner’s Notes), formed of a first heat resistant material (under the broadest reasonable interpretation and under the basic properties of materials, the wood material of Striegler’s frame is nonetheless heat resistant to some degree, as exceedingly broadly claimed), (ii) an overlay housing (note that several components could be considered the “overlay housing”, as shown in annotated drawing of Striegler) secured to the frame (annotated drawing of Striegler; see also drawings in the printout attachment of Striegler), formed of a second heat resistant material (under the broadest reasonable interpretation and under the basic properties of materials, the wood material of Striegler’s overlay housing is nonetheless heat resistant to some degree, as exceedingly broadly claimed), the overlay housing including: (A) an elongate base member defining a first planar portion of the outer surface (see “mantel body” in annotated drawing of Striegler that defines at least one elongate base member defining a first planar portion of the outer surface), (B) an elongate shelf member spaced from the elongate shelf member and at least partially defining a hollow therebetween (see “mantel body” in annotated drawing of Striegler that defines an elongate shelf member), wherein the elongate shelf member defines a second planar portion of the outer surface (see “mantel body” in annotated drawing of Striegler that defines a second planar portion of the outer surface).
Striegler does not teach wherein the first heat resistant material includes at least a first calcium silicate, wherein the second heat resistant material includes at least a second calcium silicate; and (b) a mineral paint coating applied to the outer surface of the mantel body such that the mineral paint coating is applied to each of the first and second planar portions of the outer surface, wherein the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit.
However, CN ‘856 teaches a fireproof board, wherein the fireproof board comprises a calcium silicate board (CN ‘856 “calcium silicate board” English translation). CN ‘856 teaches that calcium silicate board is known in the art to be used in structural building applications as a durable and reliable building panel (CN ‘856 “durable and reliable building panel” CN ‘856 English translation; note that wood and calcium silicate were thus treated as structural equivalents). CN ‘856 further teaches coating the board with a coating (CN ‘856 “mineral coating” English translation), wherein the mineral coating comprises a mineral paint (CN ‘856 “mineral paint” comprising “silicone-grade aqueous mineral coating” English translation) that is known in the art to be fireproof and heat resistant (under the broadest reasonable interpretation and under the basic properties of materials, the mineral paint of CN ‘856 is heat resistant at least to some degree, as exceedingly broadly claimed), wherein the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit (under the basic properties of materials, silicone itself has a high auto-ignition temperature of around 842 degrees Fahrenheit, which is significantly higher than the required 300 degrees Fahrenheit, and thus the “silicone-grade aqueous mineral coating” of CN ‘856 was treated as meeting the limitation). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the mantel body from a material that does not include wood, concrete, stone, or metal, such that the first heat resistant material includes at least a first calcium silicate, and the second heat resistant material includes at least a second calcium silicate, such that the mantel further includes (b) a mineral paint coating applied to the outer surface of the mantel body such that the mineral paint coating is applied to each of the first and second planar portions of the outer surface, wherein the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit, with the reasonable expectation of success of utilizing known, readily available materials to form the mantel, to increase various performance aspects of the mantel, including but not limited to durability, since wood and calcium silicate board were treated as structural equivalents, and since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
In the event that applicant disagrees that CN ‘856’s silicone-grade aqueous mineral coating would be configured to be non-combustible up to at least 300 degrees Fahrenheit, the examiner takes the position that modifying the composition of the mineral paint to be capable of meeting the claimed intended use would have been well within the level of ordinary skill, since CN ‘856 teaches the mineral coating being a silicone-grade aqueous mineral coating, and since silicone is known to have a high ignition temperature well beyond the claimed intended use. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the composition of the mineral paint coating material such that the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit, with the reasonable expectation of success of increasing heat resistance and reducing or preventing spread of flame, since silicone does not melt, and does not burn or provide fuel for a fire, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA).
Claim 24, Striegler and CN ‘856 teach all the limitations of claim 1 as above. All the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, using known methods, such that the mineral paint coating is applied to all of the outer surface of the mantel body, with no change in their respective functions, with the reasonable expectation of success of preventing heat or fire from damaging or deteriorating the outer surface of the mantel body. Such a combination or would have yielded predictable results to one of ordinary skill in the art at the time the invention was made, since the elements perform as expected and thus the results would be expected.
Claim 25, Striegler further teaches wherein the overlay housing includes an elongate base member (member of the overlay housing, such as “midshelf” or “undershelf” or “Frieze” or “plywood top” in the drawing of Striegler) and an elongate shelf member of the overlay housing, such as “plywood top” or “midshelf” or “undershelf” or “Frieze” in the drawing of Striegler), wherein the elongate base member is spaced from the elongate shelf member at least partially defining a hollow therebetween (the selected elongate base member from above is spaced from the selected elongate shelf member from above to at least partially define a hollow therebetween; see photo “Add blocking and shelf” which depicts a hollow therebetween).
Claim 26, Striegler and CN ‘856 teach all the limitations of claim 25 as above. Striegler further teaches wherein the elongate base member defines a first portion of the outer surface, wherein the elongate shelf member defines a second portion of the outer surface, and wherein each of the first and second portions of the outer surface are planar (planar portions of first and second portions of the elongate base member of the “overlay housing” shown in annotated drawing of Striegler). All the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, using known methods, such that the mineral paint coating of CN ‘856 is applied to the planar first and second portions of the outer surface, with no change in their respective functions, with the reasonable expectation of success of preventing heat or fire from damaging or deteriorating the outer surface of the mantel body. Such a combination or would have yielded predictable results to one of ordinary skill in the art at the time the invention was made, since the elements perform as expected and thus the results would be expected.
Claim 30, Striegler and CN ‘856 teach all the limitations of claim 11 as above. All the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, using known methods, such that the mineral paint coating is applied to all of the outer surface of the mantel body, with no change in their respective functions, with the reasonable expectation of success of preventing heat or fire from damaging or deteriorating the outer surface of the mantel body. Such a combination or would have yielded predictable results to one of ordinary skill in the art at the time the invention was made, since the elements perform as expected and thus the results would be expected.
Claim(s) 21-23 and 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Striegler in view of CN ‘856 as above and further in view of Wei et al. (NPL reference, “Preparation of a Composite Calcium Silicate Board with Carbide Slag and Coal-Based Solid Waste Activated by Different Alkali Activators”) (‘Wei’).
Claims 21-23, Striegler and CN ‘856 teach all the limitations of claim 1 as above. Striegler does not teach [claim 21] wherein the at least the first calcium silicate includes a first synthetic hydrated calcium silicate, [claims 22-23] wherein the first heat resistant material further includes a first sodium silicate. However, calcium silicate comprising a synthetic hydrated calcium silicate that includes sodium silicate is a known material used in the manufacture of calcium silicate boards. Wei teaches calcium silicate boards comprising a first synthetic hydrated calcium silicate including a first sodium silicate (“sodium silicate”), where the sodium silicate is added to the calcium silicate board material to improve strength, such as flexural strength (see sodium silicate activator in Fig. 1). It would have been obvious to one of ordinary skill in the art, to modify the material of the first calcium silicate to include a first synthetic hydrated calcium silicate comprising a first sodium silicate, with the reasonable expectation of success of improving mechanical properties, such as flexural strength of the material that forms the mantel body, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claims 27-29, Striegler and CN ‘856 teach all the limitations of claim 1 as above. Striegler does not teach [claim 27] wherein the at least the first calcium silicate includes a first synthetic hydrated calcium silicate, [claims 28-29] wherein the first heat resistant material further includes a first sodium silicate. However, calcium silicate comprising a synthetic hydrated calcium silicate that includes sodium silicate is a known material used in the manufacture of calcium silicate boards. Wei teaches calcium silicate boards comprising a first synthetic hydrated calcium silicate including a first sodium silicate (“sodium silicate”), where the sodium silicate is added to the calcium silicate board material to improve strength, such as flexural strength (see sodium silicate activator in Fig. 1). It would have been obvious to one of ordinary skill in the art, to modify the material of the first calcium silicate to include a first synthetic hydrated calcium silicate comprising a first sodium silicate, with the reasonable expectation of success of improving mechanical properties, such as flexural strength of the material that forms the mantel body, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim(s) 31-33 and 36-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over How To Build a Craftsman-Style Fireplace Mantel, by Gary Striegler, Fine Homebuilding, (https://www.finehomebuilding.com/project-guides/finish-trim-carpentry/build-a-craftsman-style-mantel) (‘Striegler’) in view of CN 215442856 U (‘CN ‘856’) and further in view of Flick et al. (US 6003507) (‘Flick’).
Claim 31, Striegler teaches a fireplace, comprising (a) a fire box (first photograph of Striegler showing a fireplace comprising a fire box); and (b) a mantel positioned above the fire box (see first photograph; see also annotated drawing of Striegler shown below in Examiner’s Notes), the mantel including: (a) a mantel body (“mantel body”; see annotated figure of Striegler shown below in Examiner’s Notes) including: (i) a frame (note that several components could be considered the frame, including but not limited to “frame” in annotated drawing of Striegler shown below in Examiner’s Notes) formed of a first heat resistant material (note that the wood material in Striegler, under the broadest reasonable interpretation is nonetheless heat resistant to some degree, as exceedingly broadly claimed), and (ii) an overlay housing (note that several components could be considered the “overlay housing” in annotated drawing of Striegler) secured to the frame (annotated drawing of Striegler; see also photographs in Striegler) and formed of a second heat resistant material (note that the wood material in Striegler, under the broadest reasonable interpretation is nonetheless heat resistant to some degree, as exceedingly broadly claimed), wherein the mantel body defines an outer surface (note that the “mantel body” comprises several portions at an outer area thereof that could be considered the outer surface, as shown in annotated drawing of Striegler),
Striegler does not teach the fire box being vent-free, and wherein the first heat resistant material includes at least a first calcium silicate, wherein the second heat resistant material includes at least a second calcium silicate, wherein the mantel body does not include wood, concrete, stone, or metal; and (b) a mineral paint coating applied to the outer surface of the mantel body, wherein the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit.
However, CN ‘856 teaches a fireproof board, wherein the fireproof board comprises a calcium silicate board (CN ‘856 “calcium silicate board” English translation). CN ‘856 teaches that calcium silicate board is known in the art to be used in structural building applications as a durable and reliable building panel (CN ‘856 “durable and reliable building panel” CN ‘856 English translation; note that wood and calcium silicate were thus treated as structural equivalents). CN ‘856 further teaches coating the board with a coating (CN ‘856 “mineral coating” English translation), wherein the mineral coating comprises a mineral paint (CN ‘856 “mineral paint” comprising “silicone-grade aqueous mineral coating” English translation) that is known in the art to be fireproof and heat resistant (under the broadest reasonable interpretation and under the basic properties of materials, the mineral paint of CN ‘856 is heat resistant at least to some degree, as exceedingly broadly claimed), wherein the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit (under the basic properties of materials, silicone itself has a high auto-ignition temperature of around 842 degrees Fahrenheit, which is significantly higher than the required 300 degrees Fahrenheit, and thus the “silicone-grade aqueous mineral coating” of CN ‘856 was treated as meeting the limitation). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the mantel body from a material that does not include wood, concrete, stone, or metal, such that the first heat resistant material includes at least a first calcium silicate, and the second heat resistant material includes at least a second calcium silicate, such that the mantel further includes a mineral paint coating applied to the outer surface of the mantel body, wherein the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit, with the reasonable expectation of success of utilizing known, readily available materials to form the mantel, to increase various performance aspects of the mantel, including but not limited to durability, since wood and calcium silicate board were treated as structural equivalents, and since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
In the event that applicant disagrees that CN ‘856’s silicone-grade aqueous mineral coating would be configured to be non-combustible up to at least 300 degrees Fahrenheit, the examiner takes the position that modifying the composition of the mineral paint to be capable of meeting the claimed intended use would have been well within the level of ordinary skill, since CN ‘856 teaches the mineral coating being a silicone-grade aqueous mineral coating, and since silicone is known to have a high ignition temperature well beyond the claimed intended use. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the composition of the mineral paint coating material such that the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit, with the reasonable expectation of success of increasing heat resistance and reducing or preventing spread of flame, since silicone does not melt, and does not burn or provide fuel for a fire, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA).
Further, Flick teaches a fireplace comprising a vent-free fire box (col. 1, lines 5-11; col. 3, lines 20-25). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the fire box of the fireplace of Striegler to be a vent-free fire box, with the reasonable expectation of success of utilizing a known type of fire box to obtain exceptional energy efficiency.
Claim 32, as modified above, the combination of Striegler, CN ‘856 and Flick teaches all the limitations of claim 31, and further teaches wherein the mantel is positioned directly above and adjacent to the vent-free fire box (Striegler first photograph; Flick col. 4, lines 40-43).
Claim 33, as modified above, the combination of Striegler, CN ‘856 and Flick teaches all the limitations of claim 31, and further teaches wherein the vent-free fire box contains a vent-free gas burner (Flick col. 1, lines 5-11; col. 3, lines 20-25).
Claim 36, Striegler and CN ‘856 teach all the limitations of claim 31 as above. All the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, using known methods, such that the mineral paint coating is applied to all of the outer surface of the mantel body, with no change in their respective functions, with the reasonable expectation of success of preventing heat or fire from damaging or deteriorating the outer surface of the mantel body. Such a combination or would have yielded predictable results to one of ordinary skill in the art at the time the invention was made, since the elements perform as expected and thus the results would be expected.
Claim 37, Striegler further teaches wherein the overlay housing includes an elongate base member (member of the overlay housing, such as “midshelf” or “undershelf” or “Frieze” or “plywood top” in the drawing of Striegler) and an elongate shelf member of the overlay housing, such as “plywood top” or “midshelf” or “undershelf” or “Frieze” in the drawing of Striegler), wherein the elongate base member is spaced from the elongate shelf member at least partially defining a hollow therebetween (the selected elongate base member from above is spaced from the selected elongate shelf member from above to at least partially define a hollow therebetween; see photo “Add blocking and shelf” which depicts a hollow therebetween), wherein the elongate base member defines a first portion of the outer surface, wherein the elongate shelf member defines a second portion of the outer surface, and wherein each of the first and second portions of the outer surface are planar (planar portions of first and second portions of the elongate base member of the “overlay housing” shown in annotated drawing of Striegler). All the claimed elements were known in the prior art of Striegler, CN ‘856 and Flick as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, using known methods, such that the mineral paint coating of CN ‘856 is applied to the planar first and second portions of the outer surface, with no change in their respective functions, with the reasonable expectation of success of preventing heat or fire from damaging or deteriorating the outer surface of the mantel body. Such a combination or would have yielded predictable results to one of ordinary skill in the art at the time the invention was made, since the elements perform as expected and thus the results would be expected.
Claim(s) 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Striegler in view of CN ‘856 and Flick as above, and further in view of Wei et al. (NPL reference, “Preparation of a Composite Calcium Silicate Board with Carbide Slag and Coal-Based Solid Waste Activated by Different Alkali Activators”) (‘Wei’).
Claims 34-35, Striegler, CN ‘856 and Flick teach all the limitations of claim 31 as above. Striegler does not teach [claim 34] wherein the at least the first calcium silicate includes a first synthetic hydrated calcium silicate, [claim 35] wherein the first heat resistant material further includes a first sodium silicate. However, calcium silicate including a synthetic hydrated calcium silicate that includes sodium silicate is a known material used in the manufacture of calcium silicate boards. Wei teaches calcium silicate boards comprising a first synthetic hydrated calcium silicate including a first sodium silicate (“sodium silicate”), where the sodium silicate is added to the calcium silicate board material to improve strength, such as flexural strength (see sodium silicate activator in Fig. 1). It would have been obvious to one of ordinary skill in the art, to modify the material of the first calcium silicate to include a first synthetic hydrated calcium silicate comprising a first sodium silicate, with the reasonable expectation of success of improving mechanical properties, such as flexural strength of the material that forms the mantel body, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Examiner’s Notes
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Annotated drawing of How To Build a Craftsman-Style Fireplace Mantel, by Gary Striegler, Fine Homebuilding, (https://www.finehomebuilding.com/project-guides/finish-trim-carpentry/build-a-craftsman-style-mantel) (‘Striegler’)
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 10-11 and 21-37 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Rejection of claim(s) 1, 10-11, 24-26 and 30 under 35 U.S.C. 103 as being unpatentable over How To Build a Craftsman-Style Fireplace Mantel, by Gary Striegler, Fine Homebuilding, (https://www.finehomebuilding.com/project-guides/finish-trim-carpentry/build-a-craftsman-style-mantel) (‘Striegler’) in view of CN 215442856 U (‘CN ‘856’).
Re claim 1, applicant argues that the prior art does not teach a mineral paint coating applied to the outer surface of the mantel body, wherein the mineral paint coating is configured to be non-combustible up to at least 300 degrees Fahrenheit. As addressed in the rejection above, CN ‘856 teaches a mineral coating comprising a silicone-grade aqueous mineral coating. Under the basic properties of materials, silicone itself has a high auto-ignition temperature of around 842 degrees Fahrenheit, which is significantly higher than the required 300 degrees Fahrenheit as claimed, and thus the “silicone-grade aqueous mineral coating” of CN ‘856 was treated as being capable of performing the intended use of being configured to be non-combustible up to at least 300 degrees Fahrenheit. Thus, the combination of Striegler and CN ‘856 meets the claim.
Re claim 11, a similar argument is presented with respect to claim 1, and the response is not repeated here for brevity.
The remainder of claims in this section stand or fall with claim 1 as above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M FERENCE whose telephone number is (571)270-7861. The examiner can normally be reached M-F 7-4pm.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635