DETAILED ACTION
This non-final Office action is in response to the claims filed on February 26, 2026.
Status of claims: claims 1-20, 30 and 40 are cancelled; claims 21-29, 31-39 and 41 are hereby examined below.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 26, 2026 has been entered.
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21, 26, 29-31, 36, 39 and 41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11873679 in view of GB 2148993A to Ward et al. (hereinafter “Ward1”).
Although the claims at issue are not identical, they are not patentably distinct from each other because US Patent No. 11873679 claims an assembly for rectifying excessive door clearances, the assembly comprising: a first component installed on a first side of a fire door, wherein the first component comprises: a vertical portion for mounting the first component onto an outer surface of the first side of the fire door, and a horizontal portion joined with the vertical portion and inserted into a gap between a top edge of the fire door and a door frame above the fire door, wherein a distance between a top side of the horizontal portion and the door frame is maintained in accordance with a selected distance; a plurality of fasteners for mounting the first component to the fire door; and at least one intumescent strip seal fitted on the horizontal portion of the first component, wherein the least one intumescent strip seal expands, when exposed to heat of a fire, to fill at least a portion of the gap without causing movement of the first component, wherein the vertical portion is configured to receive the plurality of fasteners for mounting the first component along the top edge of the fire door in accordance with the selected distance, as recited in claim 21 and similarly recited in claim 31.
U.S. Patent No. 11873679 fails to claim wherein a height of the vertical portion is less than a height of the fire door, wherein the entire horizontal portion has a continuous planar surface that is free of through-holes.
Ward1 teaches of a height of a vertical portion 14 is less than a height of the fire door 10, (see FIG. 1 and, wherein the entire horizontal portion has a continuous planar surface that is free of through-holes. (see annotated FIG. 1 below)
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Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for U.S. Patent No. 11873679 to claim the height of the vertical portion to be less than a height of the fire door, as taught by Ward1, with a reasonable expectation of success for aesthetic reason, to save on material costs and to protect the first side of the door without excessively covering the first side with the vertical portion.
Also, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for U.S. Patent No. 11873679 to claim wherein the entire horizontal portion has a continuous planar surface that is free of through-holes, as taught by Ward1, with a reasonable expectation of success for aesthetic reasons and to save on manufacturing costs.
Claims 21, 23-26, 29-31, 33-36, 39 and 41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11261653 in view of Ward1.
Although the claims at issue are not identical, they are not patentably distinct from each other because US Patent No. 11261653 claims an assembly for rectifying excessive door clearances, the assembly comprising: a first component installed on a first side of a fire door, wherein the first component comprises: a vertical portion for mounting the first component onto an outer surface of the first side of the fire door, and a horizontal portion joined with the vertical portion and inserted into a gap between a top edge of the fire door and a door frame above the fire door, wherein a distance between a top side of the horizontal portion and the door frame is maintained in accordance with a selected distance; a plurality of fasteners for mounting the first component to the fire door; and at least one intumescent strip seal fitted on the horizontal portion of the first component, wherein the least one intumescent strip seal expands, when exposed to heat of a fire, to fill at least a portion of the gap without causing movement of the first component, wherein the vertical portion is configured to receive the plurality of fasteners for mounting the first component along the top edge of the fire door in accordance with the selected distance, as recited in claim 21 and similarly recited in claim 31.
U.S. Patent No. 11261653 fails to claim wherein a height of the vertical portion is less than a height of the fire door.
Ward1 teaches of a height of a vertical portion 14 is less than a height of the fire door 10. (see FIG. 1) and wherein the entire horizontal portion has a continuous planar surface that is free of through-holes. (see annotated FIG. 1 above)
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for U.S. Patent No. 11261653 to claim the height of the vertical portion to be less than a height of the fire door, as taught by Ward1, with a reasonable expectation of success for aesthetic reason, to save on material costs and to protect the first side of the door without excessively covering the first side with the vertical portion.
Also, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for U.S. Patent No. 11873679 to claim wherein the horizontal portion has a continuous planar surface that is free of through-holes, as taught by Ward1, with a reasonable expectation of success for aesthetic reasons and to save on manufacturing costs.
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 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 21, 26, 31, 36 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over US 8726575 to Vulpitta et al. (hereinafter “Vulpitta”) in view of GB 2287740A to Ward.
Vulpitta discloses an assembly for rectifying excessive door clearances (see FIG. 2), the assembly comprising:
a fire door 12 and a door frame 14.
Vulpitta fails to disclose a first component installed on a first side of the first door.
Ward teaches of a first component (see FIGS. 1-3) installed on a first side of a fire door 7, wherein the first component comprises:
a vertical portion 2 for mounting the first component onto an outer surface of the first side of the fire door, and
a horizontal portion 1,3 joined with the vertical portion; (see FIGS. 2 and 3)
a plurality of fasteners for mounting the first component to the fire door; (see second paragraph of page 3) and
at least one intumescent strip seal 6 (see FIG. 3) fitted on the horizontal portion of the first component,
wherein the entire horizontal portion has a continuous planar surface that is free of through-holes, (see annotated figure below) and the at least one intumescent strip seal expands, when exposed to heat of a fire, to fill at least a portion of the gap without causing movement of the first component, and
wherein the vertical portion is configured to receive the plurality of fasteners for mounting the first component along the top edge of the fire door in accordance with the selected distance, wherein a height of the vertical portion is less than a height of the first door.
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Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a first component with the Vulpitta door, as taught by Ward, with a reasonable expectation of success in order to minimize dirt, debris, and smoke from passing around the door when a fire occurs near the door.
Furthermore, the combination of Vulpitta with Ward discloses the horizontal portion inserted into a gap between a top edge of the fire door and a door frame above the fire door, wherein a distance between a top side of the horizontal portion and the door frame is maintained in accordance with a selected distance. (claim 21)
Vulpitta, as applied above, further discloses wherein the at least one intumescent strip seal is fitted on a top side of the horizontal portion of the first component. (claim 26)
The apparatus disclosed in Vulpitta discloses a method for rectifying excessive door clearances (FIG. 2), the method comprising:
installing a fire door 12 with door frame 14.
Vulpitta fails to disclose installing a first component on a first side of the fire door.
The apparatus of Ward teaches of installing a first component (see FIGS. 1-3) installed on a first side of a fire door 7, comprises:
mounting a vertical portion 2 for mounting the first component onto an outer surface of the first side of the fire door, and
inserting a horizontal portion 1,3 which joins with the vertical portion;
providing a plurality of fasteners for mounting the first component to the fire door; (see second paragraph of page 3)
fitting at least one intumescent strip seal 6 (see FIG. 3) on the horizontal portion of the first component,
wherein the entire horizontal portion has a continuous planar surface that is free of through-holes, and the at least one intumescent strip seal expands, when exposed to heat of a fire, to fill at least a portion of the gap without causing movement of the first component,
wherein the vertical portion is configured to receive the plurality of fasteners for mounting the first component along the top edge of the fire door in accordance with the selected distance, wherein a height of the vertical portion is less than a height of the first door.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a first component with the Vulpitta door, as taught by Ward, with a reasonable expectation of success in order to minimize dirt, debris, and smoke from passing around the door when a fire occurs near the door.
Furthermore, the combination of Vulpitta with Ward discloses the horizontal portion inserted into a gap between a top edge of the fire door and a door frame above the fire door, such that a distance between a top side of the horizontal portion and the door frame is maintained in accordance with a selected distance. (claim 31)
Vulpitta, as applied above, further discloses wherein the at least one intumescent strip seal is fitted on a top side of the horizontal portion of the first component. (claim 36)
Vulpitta, as applied above, further discloses wherein the horizontal portion is configured to maintain the distance to be consistent across the continuous planar surface between the top side of the horizontal portion and the door frame in accordance with the selected distance. (see annotated figure above for what constitutes the “continuous planar surface”) (claim 41)
Claims 24, 25, 34 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Vulpitta in view of Ward, as applied to claims 21 and 31 above, in further view of US 5943824 to Tatara.
Vulpitta, as applied above, fails to disclose at least one end cap installed on a selected narrow end of the fire door.
Tatara teaches of at least one end cap 31 installed on a selected narrow end of the fire door, (see Fig. 4) wherein a height of the at least one end cap is configured to cover space between the top edge of the fire door and the horizontal portion of the first component on the selected narrow end of the fire door.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the assembly disclosed in Vulpitta with the end cap taught in Tatara with a reasonable expectation of success in order to reduce the spacing between the door and an adjacent member as well as strengthen the ends of the first door. (see abstract of Tatara) (claims 24, 34)
Vulpiltta, as applied above, further discloses wherein the at least one end cap is made of stainless steel or steel. (claims 25,35)
Claims 21, 27, 31 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over US 8726575 to Vulpitta et al. (hereinafter “Vulpitta”) in view of Ward1.
Vulpitta discloses an assembly for rectifying excessive door clearances (see FIG. 2), the assembly comprising:
a fire door 12 and a door frame 14.
Vulpitta fails to disclose a first component installed on a first side of the first door.
Ward1 teaches of a first component 12 (see FIG. 1; the first component is positioned on the left of the door 10 in FIG. 1) installed on a first side of a fire door 1, wherein the first component comprises:
a vertical portion 14 for mounting the first component onto an outer surface of the first side of the fire door, and
a horizontal portion (see annotated FIG. 1 below) joined with the vertical portion;
a plurality of fasteners for mounting the first component to the fire door; (see lines 84-85 of page 1) and
at least one intumescent strip seal 24 fitted on the horizontal portion of the first component,
wherein the entire horizontal portion has a continuous planar surface that is free of through-holes, and the at least one intumescent strip seal expands, when exposed to heat of a fire, to fill at least a portion of the gap without causing movement of the first component, and
wherein the vertical portion is configured to receive the plurality of fasteners for mounting the first component along the top edge of the fire door in accordance with the selected distance, wherein a height of the vertical portion is less than a height of the first door.
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Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a first component with the Vulpitta door, as taught by Ward1, with a reasonable expectation of success in order to minimize dirt, debris, and smoke from passing around the door when a fire occurs near the door.
Furthermore, the combination of Vulpitta with Ward1 discloses the horizontal portion inserted into a gap between a top edge of the fire door and a door frame above the fire door, wherein a distance between a top side of the horizontal portion and the door frame is maintained in accordance with a selected distance. (claim 21)
Vulpitta, as applied above, further discloses wherein the at least one intumescent strip seal is fitted on a bottom side of the horizontal portion of the first component. (see annotated FIG. 1 above) (claim 27)
The apparatus disclosed in Vulpitta discloses a method for rectifying excessive door clearances (FIG. 2), the method comprising:
installing a fire door 12 with door frame 14.
Vulpitta fails to disclose installing a first component on a first side of the fire door.
The apparatus of Ward1 teaches of installing a first component (see FIG. 1) installed on a first side of a fire door 10, comprises:
mounting a vertical portion 14 for mounting the first component onto an outer surface of the first side of the fire door, and
inserting a horizontal portion (see annotated figure above) which joins with the vertical portion;
providing a plurality of fasteners for mounting the first component to the fire door; (see page 1)
fitting at least one intumescent strip seal 24 (see FIG. 1) on the horizontal portion of the first component,
wherein the entire horizontal portion has a continuous planar surface that is free of through-holes, and the at least one intumescent strip seal expands, when exposed to heat of a fire, to fill at least a portion of the gap without causing movement of the first component,
wherein the vertical portion is configured to receive the plurality of fasteners for mounting the first component along the top edge of the fire door in accordance with the selected distance, wherein a height of the vertical portion is less than a height of the first door.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a first component with the Vulpitta door, as taught by Ward1, with a reasonable expectation of success in order to minimize dirt, debris, and smoke from passing around the door when a fire occurs near the door.
Furthermore, the combination of Vulpitta with Ward1 discloses the horizontal portion inserted into a gap between a top edge of the fire door and a door frame above the fire door, such that a distance between a top side of the horizontal portion and the door frame is maintained in accordance with a selected distance. (claim 31)
Vulpitta, as applied above, further discloses wherein the at least one intumescent strip seal is fitted on a bottom side of the horizontal portion of the first component. (see annotated FIG. 1 above) (claim 37)
Claims 22, 23, 32 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Vulpitta in view of Ward1, as applied to claims 21 and 31 above.
Vulpitta, as applied above, fails to disclose a second component installed on a second side of the fire door, wherein the second side is opposite the first side of the fire door.
Ward1 teaches of a second component 12 (see FIG. 1 – the second component is installed on the right side of the door 10 in Fig. 1) installed on a second side of the fire door, wherein the second side is opposite the first side of the fire door.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the assembly disclosed in Vulpitta with the second component taught in Ward1 with a reasonable expectation of success in order to provide further success in order to minimize dirt, debris, and smoke from passing around the door when a fire occurs near the door. (claims 22 and 32)
Vulpitta, as applied above, further discloses wherein the second component is made of stainless steel or steel. (see abstract of Ward1) (claims 23 and 33)
Claims 28, 29, 38 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Vulpitta in view of Ward1, as applied to claims 21 and 31 above, in further view of Ward.
Vulpitta, as applied above, discloses wherein the at least one intumescent strip seal includes a first intumescent strip seal fitted on a bottom side of the horizontal portion of the first component (see annotated FIG. 1 under the rejection of claim 21 above) but fails to disclose wherein the at least one intumescent strip seal includes a second intumescent strip seal fitted on a top side of the horizontal portion of the first component.
Ward teaches of an intumescent strip seal 6 fitted on a top side of a horizontal portion of a first component. (see FIG. 3 of Ward.)
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the horizontal portion disclosed in Vulpitta in view of Ward1 with the intumescent strip seal on top of the horizontal portion as taught in Ward with a reasonable expectation of success in order to further cover and seal off the gap between a top edge of the fire door and the door frame; thus further preventing dirt, debris, and smoke from passing around the door when a fire occurs near the door. (claims 28 and 38)
Vulpitta, as applied above, further discloses wherein the first intumescent strip seal expands, when exposed to the heat of the fire, to fill at least a portion of space between the top side of the horizontal portion of the first component and the door frame above the fire door without causing movement of the first component. (claims 29 and 39)
Response to Arguments
Applicant's arguments filed February 26, 2026 have been fully considered but they are, in part, not persuasive.
Applicant’s remarks regarding the prior rejections citing Langenhorst in view of Fridlyand are persuasive.
On page 10 of the applicant’s response filed February 26, 2026, the applicant contends:
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The examiner respectfully disagrees. Claims 21 and 31 recite “the entire horizontal portion has a continuous planar surface that is free of through-holes.” The claims do not recite “the entire horizontal portion” constitutes “a continuous planar surface” or something along the lines of the horizontal portion entirely constitutes a continuous planar surface. Furthermore, “portion” can be broadly interpreted.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCUS MENEZES whose telephone number is (571)272-5225. The examiner can normally be reached on M - F 7:30 -4 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Daniel Cahn can be reached on 571-270-5616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Marcus Menezes/
Primary Examiner, Art Unit 3634
Prosecution Insights