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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/20/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “non-combustible adhesive material” (See Claims 6-7) and the “fixing means” (See Claims 16-18) must be shown or the features canceled from the claims. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 2-19 are objected to because of the following informalities:
In Claims 2-19, each instance of “A fire barrier product” should be revised to “The fire barrier product” to ensure clarity in the claim.
In Claims 2-3, each instance of “man made” should be revised to “man-made” to ensure proper spelling.
In Claim 4 Lines 1-2, “claim 1 claim wherein” should be revised to “claim 1 wherein” to correct an apparent scrivener’s error.
In Claim 5 Line 2, “wherein intumescent composition” should be revised to “wherein the intumescent composition” to ensure proper grammar.
In Claim 9 Line 2, “provide in the form of a film” should be revised to “provided in film form” to ensure clarity in the claim.
In Claim 11 Line 2, “provide in the form of a film” should be revised to “provided in film form” to ensure clarity in the claim.
In Claim 15 Lines 1-3, “wherein the intumescent composition is arranged on a different portion of the support on the opposite side of the cavity to the compressed expandable non-combustible material” should be revised to “wherein the intumescent composition is arranged on a different portion of the support on an opposite side of the cavity relative to the compressed expandable non-combustible material” to ensure clarity in the claim.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitations:
The “fixing means” in Claims 16-17 corresponds to the disclosure in Page 13 of the Specification which states, “Fixing means may be provided within the fire barrier product of the first aspect or separately as part of the kit of the second aspect. Any suitable means by which the fire barrier product can be attached to a wall or other structure can be used as a fixing means. Such means include adhesives, cup head pins, spikes, angles, shelves, brackets, channels, adhesives, screws, bolts or other fixings.”. Furthermore, Claim 18 states “wherein the fixing means is selected from spikes, angles, shelves, brackets, channels, adhesives, screws, bolts, or other fixings”. Therefore, based on the disclosure and the claims as a whole the examiner interprets the “fixing means” in Claims 16-17 to be adhesives, cup head pins, spikes, angles, shelves, brackets, channels, adhesives, screws, bolts or other fixings.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 6, 8-12, and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US PGPUB 2015/0059260 A1 to Kallweit et al. (“Kallweit”).
As to Claim 1, Kallweit discloses a fire barrier product (See #4, #8, and #10 in Fig. 1 which combine to make up a fire barrier. See the embodiment of #10 shown in Fig. 3.) for a cavity (#7) comprising a compressed expandable non-combustible material (See #24 in Fig. 3, which per Paragraph 0045 is made of bent mineral fiber which is compressed to some extent by #28 per Paragraph 0047), an intumescent composition (See Paragraph 0046 disclosing an intumescent material in #27 and See Annotated Fig. 3), an expandable covering (See #26 in Fig. 3, which per Paragraph 0047 can be an expandable coating covered by aluminum film) and a heat-frangible covering (See #28 in Fig. 3, which per Paragraph 0054 can be polyethylene film and per Paragraph 0047 burns or melts under action of fire, thus #28 is heat-frangible).
As to Claim 2, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit further discloses wherein the compressed expandable non-combustible material is selected from man made mineral fibres and man made vitreous fibres (See Paragraph 0045 disclosing mineral fiber board, which is man-made).
As to Claim 3, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit further discloses wherein the compressed expandable non-combustible material is selected from one or more of mineral wool, mineral fibres, mineral cotton, vitreous fibres, stone wool, slag wool, glass wool, ceramic fibre, ceramic wool and other man made fibres (See Paragraph 0045 disclosing that that #24 is made of mineral fiber).
As to Claim 4, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit further discloses wherein the intumescent composition is coated on at least a portion of a surface of the compressed expandable non-combustible material (See Paragraph 0046 disclosing that intumescent material is applied in #27, thus the intumescent composition is coated on at least an inner portion of an inner surface of #24 when #24 is bent as shown in Annotated Fig. 3).
As to Claim 6, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit further discloses wherein the fire barrier product further comprises a non-combustible adhesive material (See #11 in Fig. 1, which per Paragraph 0037 is an adhesive mortar. Adhesive mortar used in fire barrier applications is non-combustible).
As to Claim 8, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit further discloses wherein the expandable covering is arranged between the compressed expandable non-combustible material and the heat-frangible covering (See Annotated Fig. 3 and Paragraphs 0045-0047. One leg #23 of the compressed expandable non-combustible material has expandable covering #26 applied to it, and then #24 is wrapped with heat-frangible covering #28. Thus #26 is between #24 and #28).
As to Claim 9, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit further discloses wherein the expandable covering is provided in the form of a film (See Fig. 3 and Paragraph 0045. #26 is a coating that includes a lining of aluminum, thus the expandable covering is in film form).
As to Claim 10, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit further discloses wherein the expandable covering comprises a metal (See Paragraph 0045 disclosing #26 having a cover of aluminum foil).
As to Claim 11, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit further discloses wherein the heat-frangible covering is provided in the form of a film (See Paragraph 0054 disclosing that #28 is a polyethylene film).
As to Claim 12, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit further discloses wherein the heat-frangible covering comprises a polymeric material (See Paragraph 0054 disclosing that #28 is a polyethylene film. Polyethylene is a polymeric material).
As to Claim 14, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit further discloses wherein the fire barrier product further comprises a support (See #4 in Fig. 1 which helps support the fire barrier product against #2).
As to Claim 15, in reference to the fire barrier product of Kallweit as applied to Claim 14 above, Kallweit further discloses wherein the intumescent composition is arranged on a different portion of the support on the opposite side of the cavity to the compressed expandable non-combustible material (See Annotated Fig. 3, the intumescent composition in #27 is located on a top side of the cavity adjacent to an upper section of #4 while #24 is partially located below #27 on a bottom side of the cavity adjacent to a lower section of #4).
As to Claim 16, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit further discloses wherein the fire barrier product further comprises fixing means (See #8 in Fig. 1, which per Paragraph 0036 includes screws and adhesive).
As to Claim 17, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit further discloses a kit (See Fig. 1) comprising the fire barrier product as claimed in claim 1 (See #10, #4, and #8 in Fig. 1) and fixing means (See Paragraph 0036 disclosing screws being used with #8).
As to Claim 18, in reference to the fire barrier product of Kallweit as applied to Claim 16 above, Kallweit further discloses wherein the fixing means is selected from spikes, angles, shelves, brackets, channels, adhesives, screws, bolts or other fixings (See Paragraph 0036 disclosing screws and adhesives).
As to Claim 19, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit discloses a method of forming a closure across a cavity (See Fig. 1), the method comprising fixing a fire barrier product according to claim 1 within the cavity (See Paragraph 0036 and Paragraphs 0045-0047) and heating the fire barrier product (See Paragraph 0047 disclosing a fire occurring, which will heat the fire barrier product).
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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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kallweit in view of US PGPUB 2017/0030609 A1 to Kjetil et al. (“Kjetil”).
Regarding Claim 5, in reference to the fire barrier product according of Kallweit as applied to Claim 1 above, Kallweit does not specifically disclose wherein intumescent composition comprises an intumescent material comprising phosphorus, sulfur, a halogen, a melamine compound, boron, a polyol or a mixture thereof (See Paragraph 0046 disclosing an intumescent material being provided in #27, but a specific intumescent composition is not disclosed).
However, Kjetil discloses, in the same field of endeavor of fire protection (See Paragraph 0001), a fire barrier product (See Fig. 1A) comprising an intumescent composition that comprises an intumescent material comprising phosphorus, sulfur, a halogen, a melamine compound, boron, a polyol or a mixture thereof (See Paragraph 0053).
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 barrier product of Kallweit as applied to Claim 1 above such that the intumescent composition of Kallweit comprises an intumescent material comprising phosphorus, sulfur, a halogen, a melamine compound, boron, a polyol or a mixture thereof as taught by Kjetil, since doing so would utilize a known intumescent material suitable for fire protection (Kjetil Paragraph 0058).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kallweit in view of GB-2411200-A to Ward (“Ward”).
Regarding Claim 7, in reference to the fire barrier product according of Kallweit as applied to Claim 6 above, Kallweit does not specifically disclose wherein the non-combustible adhesive material is arranged between the compressed expandable non-combustible material and the intumescent composition (See Paragraph 0046 disclosing that an intumescent material is provided in #27, but the adhesive mortar #11 is shown in Fig. 1 as being on an exterior of #10).
However, Kjetil discloses, in the same field of endeavor of fire protection (See Page 1 Paragraph 1), a fire barrier product (See Fig. 1) comprising an adhesive material (See Page 3 Paragraph 2 disclosing intumescent containing adhesive) that is arranged between an expandable non-combustible material (#4, which per Page 3 Paragraph 2 can be glass wool) and an intumescent composition (See Page 3 Paragraph 2 disclosing that intumescent sheets #2 and #3 are secured to #4 with an adhesive).
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 barrier product of Kallweit as applied to Claim 6 above such that an additional amount of the non-combustible adhesive material of Kallweit is arranged between the compressed expandable non-combustible material and the intumescent composition, since doing so would yield the predictable result of helping secure the intumescent composition to the compressed expandable non-combustible material (See Kjetil Page 3 Paragraph 2).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kallweit in view of US PGPUB 2021/0379430 A1 to Ahn (“Ahn”).
Regarding Claim 13, in reference to the fire barrier product of Kallweit as applied to Claim 1 above, Kallweit does not specifically disclose the heat-frangible covering is made from a material having a melting point of 70°C to 150°C (See Paragraph 0054 disclosing polyethylene material, but a specific melting point is not disclosed).
However, Ahn discloses, in the same field of endeavor of fire protection (See Paragraph 0002) a fire barrier product (See Fig. 1) comprising a heat-frangible covering (#14) that is made from a polyethylene material that has a melting point of 105°C to 125°C (See Paragraph 0060 disclosing LDPE or LLDPE with melting points from 105°C to 125°C).
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 barrier product of Kallweit as applied to Claim 1 above such that the heat-frangible covering made from the polyethylene material of Ahn, since doing so would yield the predicable result of activating the fire barrier product as a desired temperature when a fire is occurring (See Ahn Paragraphs 0060-0061). Making such a modification would result in the melting point of material of the heat-frangible being within the claimed range of 70°C to 150°C
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Notice of References Cited Form PTO-892.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur O Hall can be reached at (571)-270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN EDWARD SCHWARTZ/Examiner, Art Unit 3752 December 5, 2025