DETAILED ACTION
This Office action is a reply to the RCE filed on 11/20/2025. Claims 1-8, 10-11, 13-19 and 21-22 are pending. Claims 9, 12 and 20 have been cancelled. No claims have been withdrawn. New claim 22 has been added.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/20/2025 has been entered.
Drawings
The replacement drawing filed on 11/20/2025 is acceptable for examination.
Claim Objections
Claims 1, 15, 19 and 21 are objected to because of the following informalities:
Claim 1, “flame” is objected to because the limitation does not include an introductory article and thus lacks antecedent basis. This objection can be overcome by reciting, “a flame” or equivalent. See also claims 15, 19 and 21.
Appropriate correction is required.
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.
Claim 16 is 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 16, “an insulation layer disposed between the exterior panel and a WRB layer” is indefinite because the claims previously recite an insulation layer in claim 1. It is unclear whether the limitation is referring to the previously recited insulation layer, or a different/additional insulation layer. As written, the limitation appears to be drawn to a double inclusion. Applicant is requested to clarify the claim language by specifying in the claim whether the insulation layer is referring to the previously recited insulation layer or a different/additional insulation layer.
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) 1-2, 4-5, 7-8, 10-11, 16-19 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US 20170210098) (‘Moore’) in view of Grant et al. (US 20150361653) (‘Grant’) and further in view of Mabey (US 20180282218).
Claim 1, Moore teaches a fire-resistant wall assembly, comprising:
a multi-component fire-resistant wall assembly (Fig. 7) with an inner side and an outer side (inner side and outer side of the assembly shown in Fig. 7, respectively) and comprising[:]
an interior panel (“type x gypsum” board; Fig. 7) with an inner face and an outer face (inner face and outer face of gypsum board; Fig. 7), said interior panel disposed on the inner side of the wall assembly (Fig. 7);
an exterior panel (10, 20) with an inner face and an outer face (inner face and outer face of 10, 20), wherein the exterior panel comprises a fire-retardant-treated panel with multiple layers of oriented wood strands (the exterior panel comprises a coating 20 that comprises a fire-retardant material [0027]; under the broadest reasonable interpretation, the exterior panel is OSB, which by definition comprises layers of oriented wood strands, as exceedingly broadly claimed [0026]);
a plurality of studs (“studs” Fig. 7) located between the interior panel and the exterior panel (Fig. 7), and affixed to the outer face of the interior panel and the inner face of the exterior panel (Fig. 7);
an outer panel (“exterior cladding” Fig. 7) disposed on the outer side of the fire-resistant wall assembly (Fig. 7);
wherein the fire-resistant wall assembly attains at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame (“Fire Resistant rating for use in a one or two hour rated assemblies, measured from the inside or the outside” [0010]).
Moore teaches all the structure of claim 1 as above, but does not teach an insulation layer located between the exterior panel and the outer panel, and does not explicitly state that the 1-hour fire resistance rating is in accordance with ASTM E119.
However, Grant teaches a fire-resistant wall assembly (wall assembly shown in Fig. 2; note that under the broadest reasonable interpretation and under the basic properties of materials, the wall assembly of Grant provides at least some fire resistance, thus constitutes a fire-resistant wall assembly, as exceedingly broadly claimed), comprising an insulation layer 224 located between an exterior panel 18 and the outer panel 22. 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-resistant wall assembly of Moore such that an insulation layer is located between the exterior panel and the outer panel, with the reasonable expectation of success of further insulating the building to increase energy efficiency using known means (Grant [0012]-[0013]) with a breathable layer that remains substantially impervious to air and water such that wind and rain does not pass through (Grant [0045]).
Further, ASTM E119 is a known standard. It is known in the art to design such fire-resistant wall assemblies to be in accordance with ASTM E119. Mabey teaches a fire-resistant wall assembly, wherein the fire-resistant wall assembly attains at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119 (“a wall or floor assembly provides more than two hours of fire resistance when tested according to the ASTM-E119 or equivalent”; [0029]). Therefore, 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 fire-resistant wall assembly attaining at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119, with the reasonable expectation of success of meeting a known standard to ensure quality, reliability and safety.
Claim 2, as modified above, the combination of Moore, Grant and Mabey teaches all the limitations of claim 1, and further teaches wherein the outer panel comprises exterior cladding or siding (Moore under the broadest reasonable interpretation, the exterior cladding constitutes exterior cladding or siding; Fig. 7; or alternatively Grant 22).
Claim 4, as modified above, the combination of Moore, Grant and Mabey teaches all the limitations of claim 1, and further teaches a WRB layer affixed to the outer face of the exterior panel (Moore “the panel is coated with a weather or water resistive barrier WRB 30 of some kind” [0010]; or alternatively Grant 222).
Claim 5, as modified above, the combination of Moore, Grant and Mabey teaches all the limitations of claim 4, and further teaches wherein the WRB layer comprises a polymer-based sheet (Moore the WRB layer nonetheless constitutes a sheet comprising and based on a polymer [0031]; or alternatively Grant 222 [0055]).
Claim 7, as modified above, the combination of Moore, Grant and Mabey teaches all the limitations of claim 1, and further teaches a plurality of cavities between the plurality of studs (Moore cavities shown in Fig. 7; or alternatively Grant Fig. 2).
Claim 8, as modified above, the combination of Moore, Grant and Mabey teaches all the limitations of claim 7, and further teaches wherein one or more of the plurality of cavities contain insulation material (Moore “insulation” Fig. 7; or alternatively Grant 16).
Claim 10, as modified above, the combination of Moore, Grant and Mabey teaches all the limitations of claim 1, and further teaches wherein the insulation layer comprises mineral board, mineral wool board, mineral fiber board, or mineral bonded wood wool board (Grant [0045]).
Claim 11, as modified above, the combination of Moore, Grant and Mabey teaches all the limitations of claim 1, and further teaches wherein the interior panel comprises gypsum board (Moore “type x gypsum” Fig. 7; or alternatively Grant 12).
Claim 16, as modified above, the combination of Moore, Grant and Mabey teaches all the limitations of claim 1, and further teaches an insulation layer (Grant 224) disposed between the exterior panel and a WRB layer (Grant 224 is disposed between exterior panel 22 and WRB layer 222 located on the inside of 224; [0044]; Figs. 3-4).
Claim 17, as modified above, the combination of Moore, Grant and Mabey teaches all the limitations of claim 4, and further teaches wherein the insulation layer is disposed on an exterior face of the WRB layer, and disposed between the WRB layer and the outer panel, with the WRB layer disposed between the insulation layer and the exterior panel (Grant insulation layer 224 is disposed on an exterior face of WRB layer 222, as the WRB layer can be disposed on one or both sides of 224, and is disposed between WRB layer 222 and exterior panel 18; [0044]; Figs. 2-4).
Claim 18, as modified above, the combination of Moore, Grant and Mabey teaches all the limitations of claim 1, and further teaches wherein the insulation layer is affixed to the outer face of the exterior panel (Grant insulation layer 224 is affixed to outer face of exterior panel 18; Fig. 2), and said insulation layer is in contact with an interior face of the outer panel (Grant insulation layer 224 is in contact with an interior face of the outer panel 22; Fig. 2).
Claim 19, as modified above, the combination of Moore, Grant and Mabey teaches all the limitations of claim 1, and further teaches wherein the fire-resistant wall assembly attains at least a 2-hour fire resistance rating from the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119 (Moore “Fire Resistant rating for use in a one or two hour rated assemblies, measured from the inside or the outside” [0010]; Mabey [0029]).
Claim 22, as modified above, the combination of Moore, Grant and Mabey teaches all the limitations of claim 1, and further teaches wherein the insulation layer is affixed to the outer face of the exterior panel (Grant insulation layer 224 is affixed to the outer face of exterior panel 18; [0045] Fig. 2), and a WRB layer disposed between the insulation layer and the outer panel (Grant WRB layer 222 disposed between insulation layer 224 and outer panel 22; Fig. 2).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US 20170210098) (‘Moore’) in view of Grant et al. (US 20150361653) (‘Grant’) and further in view of Mabey (US 20180282218) and further in view of Jackson et al. (US 20100086726) (‘Jackson’).
Claim 3, Moore, Grant and Mabey teach all the limitations of claim 1 as above. Moore does not teach the outer panel comprises mineral board, mineral wool board, mineral fiber board, or mineral bonded wood wool board. However, Jackson teaches a fire-resistant wall assembly comprising an outer panel comprising mineral board, mineral wool board, mineral fiber board, or mineral bonded wood wool board (mineral board usable as cladding for buildings; [0008]-[0010]; claim 23). Therefore, 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 outer panel comprising mineral board, mineral wool board, mineral fiber board, or mineral bonded wood wool board, with the reasonable expectation of success of using a known, readily available material to form the outer panel to form the fire-resistant wall assembly, 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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US 20170210098) (‘Moore’) in view of Grant et al. (US 20150361653) (‘Grant’) and further in view of Mabey (US 20180282218) and further in view of Bennett et al. (US 20050229504) (‘Bennett’).
Claim 6, Moore, Grant and Mabey teach all the limitations of claim 1 as above. Moore does not teach the WRB layer comprising a resin-impregnated paper overlay. However, McDonald teaches a wall assembly comprising a WRB layer affixed to an outer face of an exterior panel, the WRB layer comprising a resin-impregnated paper overlay (32; [0037)). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try using a resin-impregnated paper overlay for the WRB layer affixed to the outer face of the exterior panel, with the reasonable expectation of success of using a known, readily available, structurally equivalent product that is easy to install and control the quality of installation having a consistent thickness, 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.).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US 20170210098) (‘Moore’) in view of Grant et al. (US 20150361653) (‘Grant’) and further in view of Mabey (US 20180282218) as above and further in view of Taraba et al. (US 5701708) (‘Taraba’).
Claims 13-14, Moore, Grant and Mabey teach all the limitations of claim 1 as above. Moore does not teach [claim 13] wherein the interior panel comprises an engineered-wood panel, and [claim 14] wherein the interior panel comprises an OSB panel. However, Taraba teaches a wall assembly, wherein an interior panel comprises an engineered-wood panel or an OSB panel (the inner and outer skins 28 and 30 may be formed of building grade plywood or OSB; col. 3, lines 3-5). Therefore, 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 interior panel comprising an engineered-wood panel or an OSB panel, with the reasonable expectation of success of utilizing known, readily available materials to form the wall assembly, 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.).
Claim(s) 15 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US 20170210098) (‘Moore’) in view of Fox et al. (US 20170368785) (‘Fox’) and further in view of Mabey (US 20180282218).
Claim 15, Moore teaches a fire-resistant wall assembly, comprising:
a multi-component fire-resistant wall assembly (Fig. 7) with an inner side and an outer side (inner side and outer side of the assembly shown in Fig. 7, respectively) and comprising[:]
an interior panel (“type x gypsum” board; Fig. 7) with an inner face and an outer face (inner face and outer face of gypsum board; Fig. 7);
an exterior panel (10, 20) with an inner face and an outer face (inner face and outer face of 10, 20);
a plurality of studs (“studs” Fig. 7) located between the interior panel and the exterior panel (Fig. 7), and affixed to the outer face of the interior panel and the inner face of the exterior panel (Fig. 7);
wherein the fire-resistant wall assembly attains at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame (“Fire Resistant rating for use in a one or two hour rated assemblies, measured from the inside or the outside” [0010]).
Moore does not teach wherein the exterior panel comprises mineral board, mineral wool board, mineral fiber board, or mineral bonded wood wool board, and does not explicitly state that the 1-hour fire resistance rating is in accordance with ASTM E119.
However, Fox teaches a fire-resistant wall assembly comprising an exterior panel (56; Fig. 3) comprising mineral board, mineral wool board, mineral fiber board, or mineral bonded wood wool board (mineral board [0073]). Therefore, 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 exterior panel comprising mineral board, mineral wool board, mineral fiber board, or mineral bonded wood wool board, with the reasonable expectation of success of using a known, readily available material to form the outer panel to form the fire-resistant wall assembly, 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.).
Further, ASTM E119 is a known standard. It is known in the art to design such fire-resistant wall assemblies to be in accordance with ASTM E119. Mabey teaches a fire-resistant wall assembly, wherein the fire-resistant wall assembly attains at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119 (“a wall or floor assembly provides more than two hours of fire resistance when tested according to the ASTM-E119 or equivalent”; [0029]). Therefore, 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 fire-resistant wall assembly attaining at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119, with the reasonable expectation of success of meeting a known standard to ensure quality, reliability and safety.
Claim 21, as modified above, the combination of Moore, Fox and Mabey teaches all the limitations of claim 15, and further teaches wherein the fire-resistant wall assembly attains at least a 2-hour fire resistance rating from the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119 (Moore “Fire Resistant rating for use in a one or two hour rated assemblies, measured from the inside or the outside” [0010]; Mabey [0029]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8, 10-11, 13-19 and 21-22 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.
In response to applicant’s argument that amended claim 15, in the claims filed on 11/20/2025 has been amended in a similar manner as claim 1 to recite a limitation requiring an insulation layer located between the exterior panel and the outer panel, no such limitation is found in amended claim 15. Therefore, applicant’s argument is not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635