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 .
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 6 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 6 recites the limitation "the reinforcement layer" in line 1. There is insufficient antecedent basis for this limitation in the claim. There is no reference to “a reinforcement layer” in claim 1, the claim from which claim 6 currently depends. However, it is noted that claim 6 previously depended from claim 5, which does have proper antecedent basis. Therefore, the examiner suspects the intent of the applicant was to have claim 6 depend from claim 5, and will be examined on the merits as such. As an additional matter, to prevent a notice of a non-compliant amendment in a future Office action, the applicant is reminded to annotate amendments and provide proper status identifiers. See 37 CFR 1.121(c).
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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication No. US 2003/0079425 (hereinafter “Morgan”).Regarding claim 1 Morgan teaches a thermal barrier (fire barrier) 1 comprising a molding bag 30, where the molding bag 30 comprises a scrim enclosing a strip of flowable firestop material 32, where the flowable firestop material 32 includes an intumescent material (abstract; paragraphs [0029], [0032], [0039], [0040] and [0056]; and Figures 3-4). Morgan teaches the thermal barrier is used in gaps, holes, or joint assemblies between components within building structures (paragraph [0001]), which corresponds to a fire barrier for use in a movement joint of an internal component wall. Morgan teaches the molding bag (scrim) 30 includes a portion (gusset) 33 into which the flowable firestop material (intumescent material) 32 expands when installed in a joint between two structures and reacts to heat (paragraphs [0029], [0032] and [0043]; and Figures 3-4).Regarding claim 2 In addition, Morgan teaches when the flowable firestop material (intumescent material) 32 is exposed to fire, heat, or flames, it expands considerably (paragraph [0043]). Morgan also teaches the molding bag (scrim) 30 may contain holes so that leakage of the flowable firestop material (intumescent material) 32 is minimal (paragraph [0051]), which corresponds to at least a portion of the flowable firestop material may leak from the molding bag (scrim) 30 and meets the claimed feature requiring the scrim allows for at least partial expansion of the intumescent material through the scrim when the intumescent material reacts to heat.Regarding claim 3 In addition, Morgan teaches when the flowable firestop material (intumescent material) 32 is exposed to fire, heat, or flames, it expands considerably (paragraph [0043]). Morgan also teaches the portion (gusset) 33 has an enclosed shape or size which is considered to provide a degree of mechanical resistance to the expanding flowable firestop material (intumescent material) upon exposure to heat (Figures 3-4 and 9), which corresponds to the gusset is sized to force reverse expansion of the intumescent material after an initial forward expansion of the intumescent material into the gusset, when the intumescent material reacts to heat. Regarding claim 4 In addition, Morgan teaches the molding bag (scrim) 30 may be made from a variety of suitable materials, including fiberglass (glass cloth) (paragraph [0013]).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Morgan as applied to claim 1 above, and further in view of United States Patent Application Publication No. US 2016/0017599 (hereinafter “Klein-99”), and United States Patent Number 4,114,369 (hereinafter “Crowley”).Regarding claims 5 and 6 The limitations from claim 1 have been set forth above. In addition, Morgan teaches the molding bag (scrim) 30, which encloses the flowable firestop material or intumescent material 32, may be made from a variety of suitable materials, including fiberglass (glass cloth) (paragraph [0013]). Morgan does not explicitly teach the molding bag (scrim) 30 comprises a reinforcement layer, the reinforcement layer being aluminum. Klein-99 teaches a sealing element for sealing a gap or joint between a support structure and a track (abstract). Klein-99 teaches the use of intumescent material to fill gaps at the head-of-wall for thermal barrier materials (paragraphs [0005], [0008] and [0010]). Klein-99 teaches a cover layer which may be reinforced with a further layer of aluminum foil (paragraph [0027]). Crowley teaches a combination of intumescent layers, a glass cloth reinforcement layer, and aluminum foil provides an improved flexible protective coating which is resistant against flame and high temperatures (column 3, lines 26-33). Morgan and Klein-99 are analogous inventions in the field of thermal barrier materials for sealing head-of-wall gaps or joints. It would have been obvious to one skilled in the art at the time of the invention to modify the molding bag (scrim) 30 of Morgan with the aluminum reinforcement of Klein-99 to provide an improved flexible protective cover which is resistant against flame and high temperatures, as taught by Crowley.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Morgan as applied to claim 1 above, and further in view of United States Patent Application Publication No. US 2010/0170172 (hereinafter “Klein-72”).Regarding claim 7 The limitations from claim 1 have been set forth above. In addition, Morgan teaches the use of an adhesive to attach the molding bag (scrim) 30 to surrounding components, such as a track, wall, ceiling, floor, or other building or vessel structure (paragraphs [0054] and [0063]), which corresponds to a shape of the gusset is maintained by an adhesive. Morgan does not explicitly teach the adhesive has a melting temperature substantially the same as the reaction temperature of the intumescent material. Klein-72 teaches a fire retardant head-of-wall assembly comprising a sealing element for sealing a gap or joint therebetween when exposed to a heat source such as fire (abstract). Klein-72 teaches the assembly includes a strip of intumescent material which expands to fill the head-of-wall construction joint or gap when exposed to heat (Id). Klein-72 teaches in order to ensure that the intumescent strip stays in place when exposed to heat, it has been found that a fire-retardant adhesive is preferably used. In other words, a fire-retardant adhesive may be interposed between the intumescent strip and the outer sidewall surfaces of the pair of sidewalls (paragraph [0027]). Klein-72 does not explicitly teach the melting temperature of the fire-retardant adhesive is substantially the same as the reaction temperature of the intumescent material. However, it would have been obvious to one having ordinary skill in the art at the time of the invention to determine an appropriate melting temperature of the fire-retardant adhesive using nothing more than routine experimentation to prevent premature failure of the adhesive force of the fire-retardant adhesive when it is exposed to heat. It has been held where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art unless such a range is shown to be critical. Please see MPEP § 2144.05(II)(A). Morgan and Klein-72 are analogous inventions in the field of thermal barrier materials for sealing head-of-wall gaps or joints. It would have been obvious to one skilled in the art at the time of the invention to modify the adhesive of Morgan with the fire-retardant adhesive of Klein-72 to ensure that the molding bag (scrim) 30 stays in place when exposed to heat.
Response to Arguments
Applicant’s arguments, see page 3, filed 25 February 2026, with respect to the rejection of claims 1-7 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection of claims 1-7 under 35 U.S.C. 112(b) has been withdrawn.
Applicant's arguments filed 25 February 2026 have been fully considered but they are not persuasive.
The applicant argued Morgan teaches a flowable material which hardens within the molding bag, where the instant application does not claim a flowable material; but rather an intumescent strip (which should be interpreted as having a defined shape at room temperature), where the intumescent strip is not a flowable material and does not harden in a bag prior to reacting. The examiner respectfully submits this argument fails to establish a structural difference between the claimed strip of intumescent material and the intumescent material 32 from Morgan. The claim requires the intumescent material to have a structure of a strip. “Strip” is defined by merriam-webster.com as “a long narrow piece of material.” Morgan teaches the intumescent material 32 has a relatively narrow height and thickness when compared to the length required for the material 32 to extend along the area between the ceiling surface 10A, 10B and the wallboards 18. See Figures 3, 4 and 9, and paragraphs [0029] – [0031]. Therefore, the structure of the claimed fire barrier, including the constituent strip of intumescent material is considered to be appropriately anticipated by Morgan, as detailed in the rejection of record.
The applicant argued: an intumescent strip is not a flowable material and does not harden in a bag prior to reacting; the strip only becomes flowable to fill complex shape when exposed to fire; and the claimed invention is not a fire stop when installed, and only becomes a fire stop after it has reacted to a fire. The examiner respectfully submits these arguments fail to establish a structural difference between the claimed strip of intumescent material and the intumescent material 32 from Morgan. It appears the applicant is comparing differences between the manner in which the intumescent material 32 from Morgan and the claimed strip of intumescent material are applied. Specifically, it appears the applicant is highlighting variations of the process of making the thermal/fire barrier and how the thermal/fire barrier reacts in certain environments. However, these arguments fail to establish a structural difference between the claimed article and the prior art article.
The applicant argued Klein-99 relates to intumescent strips, and therefore cannot be combined with Morgan. Put another way, there is no motivation for one having ordinary skill in the art to combine a molding bag as in Morgan with an intumescent strip. The examiner respectfully submits this argument is not commensurate in scope with the rejection of record. The examiner did not contemplate combining the intumescent material 32 in the molding bag 30 from Morgan with the intumescent strip of Klein-99; but rather, the rejection of record contemplates modifying the molding bag (scrim) 30 of Morgan with the aluminum reinforcement of Klein-99 to provide a flexible protective cover which is resistant against flame and high temperatures. This modification essentially provides an additional reinforcing layer to Morgan’s molding bag 30 which results in additional protection against flame and high temperatures, which is also desired by Morgan.
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 BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
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