DETAILED ACTION
This Office action is a reply to the amendment filed on 1/7/2026. Currently, claims 1-16 and 19-22 are pending. Claims 17-18 have been cancelled. Claims 12-16 and 19-20 have been withdrawn. New claims 21-22 have been added.
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, 7, 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021173020 A (as provided by applicant including English translation) (‘JP ‘020’) in view of Counihan (US 6115981) and further in view of Meyer et al. (US 5366022) (‘Meyer’).
Claim 1, JP ‘020 teaches a composite flooring system comprising:
a cross-laminated timber (CLT) subfloor 12 including a plurality of drop holes (holes in 12 through which the sprinkler main pass; Fig. 3);
a sprinkler main 30 of a sprinkler system (Fig. 3);
a plurality of sprinkler drops (under the broadest reasonable interpretation, element 34 constitutes a location in which a sprinkler drop “sprinkler” is located, as exceedingly broadly claimed; Fig. 3) attached to said sprinkler main which extend through said drop holes of said CLT subfloor (through the drop holes and through 32; Fig. 3; “to install a sprinkler” English translation);
an upper flooring 14 attached to a top surface (Fig. 3).
JP ‘020 does not teach a plurality of isolators disposed on top of and attached to said CLT subfloor, the sprinkler main being disposed between the plurality of isolators, wherein a sprinkler head of said sprinkler drop is disposed below said CLT flooring, a plurality of metal inverted tracks attached to a top surface of the plurality of isolators, and the upper flooring attached to a top surface of the metal inverted tracks.
However, Counihan teaches a flooring system comprising a plurality of isolators 28 disposed on top of and attached to a subfloor 16, a plurality of metal inverted tracks (44; col. 3, lines 46-48) attached to a top surface of the plurality of isolators (Figs. 1-2), and an upper flooring attached to a top surface of the metal inverted tracks (upper flooring members 12 and 14 are attached to a top surface of 44; Figs. 1-2). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the composite flooring system of JP ‘020 to comprise a plurality of isolators disposed on top of and attached to said CLT subfloor, the sprinkler main being disposed between the plurality of isolators, a plurality of metal inverted tracks attached to a top surface of the plurality of isolators, and the upper flooring attached to a top surface of the metal inverted tracks, with the reasonable expectation of success of attaching the upper floor to the subfloor using known means.
Regarding the sprinkler head of said sprinkler drop being disposed below said CLT subfloor, it is known in the art for sprinkler heads to be positioned below the subfloor. Meyer teaches an extended coverage ceiling sprinkler system, comprising a sprinkler head (10; Fig. 1) of a sprinkler drop (“supply pipe or stem extended from a conduit” col. 8, lines 45-47; Figs. 5-6) being disposed below the lower deck or ceiling (Figs. 1, 5 and 6). Such a ceiling would be expected to be installed below the subfloor of an upper story, and thus meets the claim limitation requiring the sprinkler head to be disposed below the subfloor. Meyer teaches the sprinkler heads being installed below the lower deck or ceiling (col. 13, lines 33-38) such that deflectors 40 are permitted to spray water to obtain extended coverage while requiring fewer sprinkler heads, which results in a reduction of installation time and costs (col. 14, lines 23-41). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the composite flooring system such that the sprinkler head of said sprinkler drop is disposed below said CLT subfloor, with the reasonable expectation of success of obtaining extended coverage of water sprayed from the sprinkler head, which would be expected to reduce installation time and costs, since fewer branches and fewer sprinkler heads would be needed to provide protection in any given area (Meyer col. 14, lines 23-41).
Claim 7, as modified above, the combination of JP ‘020, Counihan and Meyer teaches all the limitations of claim 1, and further teaches the isolators having a height (Counihan Figs. 1-6), and further teaches that although preferred embodiments of the invention are described in specific terms, such description is for illustrative purposes, and that changes and variations may be made without departing from the spirit or scope of the invention (Counihan col. 4, lines 16-20), but does not specify the isolators being at least 4 inches tall. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the size of the isolators to be at least 4 inches tall, with the reasonable expectation of success of increasing the resiliency of the flooring system (Counihan col. 1, lines 37-40), since such a modification would have involved a mere change in size of the component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.).
Claim 10, as modified above, the combination of JP ‘020, Counihan and Meyer teaches all the limitations of claim 1, and further teaches the acoustic isolators being spaced apart across the floor (col. 3, lines 62-64; Fig. 1), but does not specifically teach such spacing being 24 inches. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to space the acoustic isolators 24 inches apart, with the reasonable expectation of success of providing sufficient support for the floor, 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 11, as modified above, the combination of JP ‘020, Counihan and Meyer teaches all the limitations of claim 1 as above, and further teaches wherein: said sprinkler head of said sprinkler drop is an only portion of said sprinkler system which extends beyond a bottom of said CLT subfloor (Meyer Fig. 1).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over
JP 2021173020 A (as provided by applicant including English translation) (‘JP ‘020’) in view of Counihan (US 6115981) and Meyer et al. (US 5366022) (‘Meyer’) and further in view of Burton (US 8927085).
Claim 2, JP ‘020, Counihan and Meyer teaches all the limitations of claim 1 as above. Although JP ‘020 further teaches the CLT subfloor further comprising a plurality of layers of CLT panels (Fig. 3), JP ‘020 does not teach [claim 2] the CLT subfloor comprising five layers of CLT panels, such that successive layers of the five layers of the CLT panels are stacked in a perpendicular orientation relative to one another. However, Burton teaches a wood product for use as flooring comprising five layers of CLT panels (col. 4, lines 32-40), such that successive layers of the five layers of the CLT panels are stacked in a perpendicular orientation relative to one another (Fig. 2). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the CLT subfloor of JP ‘020 by forming the CLT subfloor comprising five layers of CLT panels, such that successive layers of the five layers of the CLT panels are stacked in a perpendicular orientation relative to one another, with the reasonable expectation of success of using known materials in a known combination and quantity to form the subfloor that is strong length-wise and cross-wise (Burton col. 7, lines 40-54).
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over
JP 2021173020 A (as provided by applicant including English translation) (‘JP ‘020’) in view of Counihan (US 6115981) and Meyer et al. (US 5366022) (‘Meyer’) and further in view of Niese (US 4890434).
Claim 3, JP ‘020, Counihan and Meyer teaches all the limitations of claim 1 as above. JP ‘020 does not teach wherein said upper flooring comprises two layers of structural panels stacked in a perpendicular orientation or in a parallel orientation with staggered joints between said layers of structural panels. However, Niese teaches a flooring system, wherein an upper flooring comprises two layers of structural panels stacked in a perpendicular orientation (not required by the claim due to recitation of “or”) or in a parallel orientation with staggered joints between said layers of structural panels (col. 3, lines 50-65; Fig. 1). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the upper flooring to have two layers of structural panels in a parallel orientation with staggered joints between said layers of structural panels, with the reasonable expectation of utilizing a known arrangement of flooring layers to provide a strong and durable floor.
Claim 4, as modified above, the combination of JP ‘020, Counihan, Meyer and Niese teaches all the limitations of claim 3, and further teaches wherein said two layers of structural panels are attached with an adhesive (Niese col. 3, lines 50-65) or a combination of the adhesive and fasteners (not required by the claim due to recitation of “or”; however note that Niese teaches a combination of adhesive and fasteners may be used col. 3, lines 50-65).
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over
JP 2021173020 A (as provided by applicant including English translation) (‘JP ‘020’) in view of Counihan (US 6115981) and Meyer et al. (US 5366022) (‘Meyer’) and further in view of Socha (US 10370860).
Claims 5-6, as modified above, the combination of JP ‘020, Counihan and Meyer teaches all the limitations of claim 1, and further teaches wherein said upper flooring comprises a layer of structural panels (Counihan 12), but does not teach [claim 5] a poured underlayment above said layer of structural panels, and [claim 6] wherein said upper flooring comprises a sound mat disposed between said layer of structural panels and said poured underlayment. However, Socha teaches a flooring system comprising a poured underlayment (14; col. 3, lines 21-40) above a structural flooring layer 12, wherein said upper flooring comprises a sound mat 20 disposed between said structural flooring layer and said poured underlayment (between 12 and 14; Fig. 1). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the flooring system of JP ‘020 such that the upper flooring comprises a layer of structural panels with a poured underlayment above said layer of structural panels, wherein said upper flooring comprises a sound mat disposed between said layer of structural panels and said poured underlayment, with the reasonable expectation of success of using known flooring materials to improve sound reduction (Socha col. 2, lines 55-63).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over
JP 2021173020 A (as provided by applicant including English translation) (‘JP ‘020’) in view of Counihan (US 6115981) and Meyer et al. (US 5366022) (‘Meyer’) and further in view of Morgan et al. (US 20030079425) (‘Morgan’).
Claims 8, JP ‘020, Counihan and Meyer teaches all the limitations of claim 1 as above. JP ‘020 does not teach wherein a space between an outer edge of said drop holes in said CLT subfloor and said sprinkler drops is filled with a layer of intumescent caulk and a gypsum filler. However, Morgan teaches a firestop assembly used in floors to prevent fire and smoke from passing through the gaps or openings required for pipes or other conduits ([0002], [0033]), wherein a space for sprinkler drops is filled with a layer of intumescent caulk (“intumescent caulk material” [0007]; “intumescent material outside of the bag but surrounding the conduit” [0064]) and a gypsum filler (“plaster” or “gypsum” [0040]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the composite flooring system of JP ‘020 such that a space between an outer edge of said drop holes in said CLT subfloor and said sprinkler drops is filled with a layer of intumescent caulk and a gypsum filler, with the reasonable expectation of success of using a known means to seal a hole in a floor to prevent fire and smoke from spreading through the hole.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 21-22 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record, specifically JP 2021173020 A (as provided by applicant including English translation) (‘JP ‘020’), Counihan (US 6115981) and Morgan et al. (US 20030079425) (‘Morgan’) do not teach or disclose, alone or in combination all the elements and features of the claimed invention as a whole. Referring to claims 9 and 21, the combination of JP ‘020, Counihan and Morgan teaches applying intumescent material around a conduit (Counihan [0064] “it is preferable to use an intumescent material in the molding bag or outside of the bag but surrounding the conduit”), and a gypsum filler (Counihan [0039] “flowable firestop material…such as a…gypsum slurry”). However, the combination does not specifically teach the intumescent caulk filling a bottom inch of said space, and said gypsum filler filling the remainder of said space, as recited in claim 9. It would have been beyond the level of ordinary skill in the art to combine or modify any of the cited prior art references of record to arrive at the claimed invention. Claim 22 depends from claim 21.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8 and 10-11 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at 571-270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635