DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The response filed on July 18th, 2025 is acknowledged. Three pages of amended claims were received on 7/18/2025. Claims 1-2 and 5-10 have been amended. The claims have been amended to overcome previous claim objections, previous rejections under 35 U.S.C. 112(b), previous rejections under 35 U.S.C. 102(a)(1), and previous rejections under 35 U.S.C. 103 in the non-final rejection mailed 4/21/2025. Claims 1, 5, and 7 are now objected to and Claims 1-12 are now rejected under 35 U.S.C. 103 as noted below.
Claim Objections
Claims 1, 5, and 7 are objected to because of the following informalities:
In Claim 1 Lines 5-9, “the secondary seal encloses the fire protection material and the spacer in the intermediate space, wherein the secondary seal has a cooling fire protection property and is free of any intumescent fire protection property” should be revised to “wherein the secondary seal encloses the fire protection material and the spacer in the intermediate space, and wherein the secondary seal has a cooling fire protection property and is free of any intumescent fire protection property” to ensure proper grammar.
In Claim 5 Lines 2-3, “the spacer having a spacer attachment for attaching the spacer to the two adjacent glass panes” should be revised to “the spacer, which has a spacer attachment for attaching the spacer to the two adjacent glass panes” to ensure proper grammar.
In Claim 7 Lines 2-3, “releases gas event of a fire” should be revised to “releases gas in event of a fire” to ensure proper grammar.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 2020/0040570 A1 to Cook et al. (“Cook”) in view of US Patent 6,818,267 B1 to Gelderie et al. (“Gelderie”).
As to Claim 1, Cook discloses a fire protection glazing (See Fig. 1) comprising two adjacent glass panes (See two panes #1 in Fig. 1, which per Paragraph 0336 are glass), a spacer (#2, which per Paragraph 0357 includes an adhesive), a fire protection material (See a “fire-resistant interlayer” disclosed in Paragraph 0357, which per Paragraph 0336 can be potassium silicate gel), and a secondary seal (#3), the fire protection material and the spacer being arranged in an intermediate space between the two adjacent glass panes (See #4 in Fig. 1 and See Paragraph 0357), the secondary seal encloses the fire protection material and the spacer in the intermediate space (See Fig. 1 and Paragraph 0357).
Regarding Claim 1, Cook does not specifically disclose wherein the secondary seal has a cooling fire protection property and is free of any intumescent fire protection property (See Paragraph 0336 disclosing that #3 is made up of a polysulphide polymer, however a specific material and whether it has a cooling fire protection property and is free of any intumescent fire protection property is not specifically disclosed).
However, Gelderie discloses, in the same field of endeavor of fire extinguishing (See Col. 1 Lines 8-15), a fire protection glazing comprising a seal (See Col. 4 Lines 15-27 disclosing sealing sheets of glass with a butyl polymer, with inclusion of polysulphide being optional) that has a cooling fire protection property (See Col. 2 Lines 50-55 disclosing that filler of the butyl polymer has a cooling fire protection property) and is free of any intumescent fire protection property (See Col. 4 Lines 63-65 disclosing a butyl polymer that is made up of 55% polyisobutylene, 15% carbon black, and 30% magnesium oxide filler, which are materials that are free of intumescent fire protection properties).
Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice per In re Leshin, 125 USPQ 416.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the fire protection glazing of Cook as applied to Claim 1 above such that the secondary seal #3 of Cook is the butyl polymer material of Gelderie made up of 55% polyisobutylene, 15% carbon black, and 30% magnesium oxide filler such that the secondary seal has a cooling fire protection property and is free of any intumescent fire protection property, since doing so would utilize a known sealing material suitable for fire protection to yield the predictable result of helping meet regulatory fire protection requirements (See Gelderie Col. 5 Lines 45-50) while having a suitable consistency, strength, and capacity for deformation (See Gelderie Col. 3 Lines 23-35).
As to Claim 2, in reference to the fire protection glazing of Cook in view of Gelderie as applied to Claim 1 above, Cook and Gelderie further disclose wherein the secondary seal serves to immovably attach the two adjacent glass panes to each other (See Cook Paragraph 0215 disclosing sealing material bonding elements to each other and See Gelderie Col. 4 Lines 25-27 disclosing sealing sheets of glass and Gelderie Col. 6 Lines 1-5 disclosing that panes are bonded together by the butyl polymer).
As to Claim 3, in reference to the fire protection glazing of Cook in view of Gelderie as applied to Claim 1 above, Cook further discloses wherein the secondary seal is different from the spacer (See Fig. 1 showing #2 and #3 as being separate components).
As to Claim 4, in reference to the fire protection glazing of Cook in view of Gelderie as applied to Claim 1 above, Cook further discloses wherein the secondary seal is designed as a single element (See #3 in Fig. 1).
As to Claim 5, in reference to the fire protection glazing of Cook in view of Gelderie as applied to Claim 1 above, Cook further discloses wherein exclusively the fire protection material, the spacer having a spacer attachment for attaching the spacer to the two adjacent glass panes, and the secondary seal are arranged in the intermediate space between the two adjacent glass panes (See Fig. 1 showing only #2, #3, and #4 between glass panes #1, and See Paragraph 0357 disclosing that spacer #2 has adhesive attached, which is equivalent to a spacer attachment).
As to Claim 6, in reference to the fire protection glazing of Cook in view of Gelderie as applied to Claim 1 above, Cook further discloses wherein the secondary seal is arranged in a region of the intermediate space adjacent to end faces of the two adjacent glass panes (See Annotated Fig. 1).
As to Claim 7, in reference to the fire protection glazing of Cook in view of Gelderie as applied to Claim 1 above, Gelderie further discloses wherein the secondary seal comprises a material which releases gas event of fire and to achieve at least part of the cooling fire protection property of the secondary seal (See Col. 2 Lines 48-55 disclosing a cooling property from the filler, and that water is released due to endothermic reaction at 180°C. At such a temperature, water turns into vapor, which is a gas.).
As to Claim 8, in reference to the fire protection glazing of Cook in view of Gelderie as applied to Claim 7 above, Gelderie further discloses wherein the secondary seal releases gas in event of a fire due to decomposition of the material of the secondary seal (See Col. 2 Lines 48-55 disclosing a cooling property from the filler, and that water is released due to endothermic reaction at 180°C, which will cause decomposition. At such a temperature, water turns into vapor, which is a gas.).
As to Claim 9, in reference to the fire protection glazing of Cook in view of Gelderie as applied to Claim 7 above, Gelderie further discloses wherein the secondary seal releases gas in event of a fire due to decomposition of two or more materials of the secondary seal which have different gas release temperatures (See Col. 2 Lines 23-31 and Col. 4 Lines 25-27. The secondary seal is made up of filler, carbon black, and polyisobutylene. At least the filler and carbon black have different gas release temperatures. Thus as a fire increases in temperature, the filler and carbon black will begin to release gases at different points in time.).
As to Claim 10, in reference to the fire protection glazing of Cook in view of Gelderie as applied to Claim 1 above, Gelderie further discloses wherein the secondary seal comprises a material having endothermic properties which, in event of a fire, absorbs thermal energy to achieve at least part of the cooling fire protection property of the secondary seal (See Col. 2 Lines 48-62 disclosing the filler of the secondary seal undergoing endothermic reactions that result in cooling. Endothermic reactions result in absorption of thermal energy).
As to Claim 11, in reference to the fire protection glazing of Cook in view of Gelderie as applied to Claim 1 above, Gelderie further discloses wherein the secondary seal comprises a synergistic material (See Col. 2 Lines 23-31 disclosing that a combination of the filler, carbon black, and polyisobutylene result in a shear modulus of elasticity of 1.2 MPa to 2.2 MPa and See Col. 3 Lines 23-35 disclosing advantages of such a combination. Thus the combined materials of the secondary seal make up a synergistic material because when combined the materials result in improved performance in fire protection glazing applications compared to when the individual materials are utilized alone).
As to Claim 12, in reference to the fire protection glazing of Cook in view of Gelderie as applied to Claim 1 above, Gelderie further discloses wherein the secondary seal comprises a fire-suppressing material for reducing a portion of further material in the secondary seal (See Col. 2 Lines 48-56 disclosing filler exerting a cooling effect and releasing water, thus the filler is a fire-suppressing material. Based on Col. 2 Lines 23-31, an increased amount of filler results in a decreased portion of polyisobutylene and/or carbon black).
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Response to Arguments
Applicant's arguments filed 7/18/2025 have been fully considered.
Regarding Claim 1, applicant argues that Gelderie fails to teach or suggest that the secondary seal is free of any intumescent fire protection property, as claimed, because Gelderie is silent on any intumescent property of either the spacer or the optional conventional material spacer, or the lack thereof, citing to Col. 2, Lines 25-27 of Gelderie disclosing that the composition comprises "from 40 to 65% by weight polyisobutylene, from 10 to 25% by weight of carbon black and from 10 to 40% by weight of a filler", thus the list of ingredients is open-ended and depending on choice of limit values, there remains a delta to 100% by weight that can be filled by one or more additional ingredients.
This argument is not found persuasive. Col. 4 Lines 63-65 of Gelderie states “The butyl polymer used in this case is composed of 55% by weight of polyisobutylene, of 15% by weight of carbon black and of 30% by weight of magnesium oxide”. The percentages of these ingredients does add up to 100% thus the butyl polymer of Gelderie that is made up of 55% by weight of polyisobutylene, 15% by weight of carbon black, and 30% by weight of magnesium oxide filler is free of intumescent property since the listed materials of polyisobutylene, carbon black, and magnesium oxide filler that make up the sealing material of Gelderie are all materials that are free of intumescent property.
Applicant’s additional arguments with respect to Claims 1-2 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, because Claims 1-2 are now rejected under 35 U.S.C. 103 as being unpatentable over Cook in view of Gelderie, with the secondary seal of Cook is being modified to use the sealing material of Gelderie as noted above. The examiner notes that the claimed invention need not be expressly suggested in any one or all of the references. Rather, the test for obviousness is what the combined teachings of the applied references, taken as a whole, would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) and In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). A prima facie case of obviousness is established by presenting evidence indicating that the reference teachings would appear to be sufficient for one of ordinary skill in the relevant art having those teachings before him to make the proposed combination or other modification. See In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972). The motivation for modifying a primary reference need not come from the primary reference itself, but may come from a secondary reference. In re Laskowski, 10 USPQ2d 1397 (Fed. Cir. 1989). As to the desirability of the modification, the proper inquiry is “whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination,’ not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” In re Fulton, 391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004). Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice per In re Leshin, 125 USPQ 416. Therefore, the above rejections of Claims 1-12 under 35 U.S.C. 103 as being unpatentable over Cook in view of Gelderie are proper.
Conclusion
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 KEVIN E SCHWARTZ whose telephone number is (571)272-1770. The examiner can normally be reached Monday - Friday 9:00AM - 5:00PM MST.
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/KEVIN EDWARD SCHWARTZ/Examiner, Art Unit 3752 October 19, 2025