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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Australia on 08/08/23. It is noted, however, that applicant has not filed a certified copy of the AU2023902502 application as required by 37 CFR 1.55.
Claim Objections
Claims 13-22 are objected to because of the following informalities:
With regard to claim 13: Line 1 of the claim, it appears the limitation “said first component” should be --said first resilient and intumescent component-- for consistency of the claim language.
With regard to claim 14: Line 3 of the claim, it appears the limitation “said first component” should be --said first resilient and intumescent component-- for consistency of the claim language. Line 4 of the claim, it appears the limitation “the first component” should be --said first resilient and intumescent component-- for consistency of the claim language.
With regard to claim 15: Line 1 of the claim, it appears the limitation “said first component” should be --said first resilient and intumescent component-- for consistency of the claim language.
With regard to claim 16: Lines 1-3 of the claim, it appears each instance of the limitation “said third component” should be –said third resilient and intumescent component-- for consistency of the claim language.
With regard to claim 17: Lines 1 and 3 of the claim, it appears the limitation “said second component” should be --said second resilient and intumescent component-- for consistency of the claim language. Line 4 of the claim, it appears the limitation “said third component” should be –said third resilient and intumescent component-- for consistency of the claim language.
With regard to claim 20: Line 1 of the claim, it appears the limitation “said first component” should be --said first resilient and intumescent component-- for consistency of the claim language.
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.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-6 and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pilz (US 2016/0130802 A1).
With regard to claim 1: Pilz disclose an apparatus (12, 20) for fitting as an installation between an internal wall (16) of a building and a façade (14) of said building in order to seal a gap between said internal wall (16) and said façade (14) (figs. 12-13; par. [0096]-[0097]), the apparatus (12, 20) including:
a building profile (track 12) having a first member (A, B, C, D) and a second member (right flange 24) integrally formed with said first member (A, B, C, D) (figs. 12-13); and
a first resilient and intumescent component (intumescent material 20 in a compressed state between rigid surfaces) fitted to said first member (A, B, C, D) and abutting against said façade (14) (figs. 12-13; par. [0072], [0078] and [0096]).
Pilz discloses that the apparatus (12, 20) as claimed and therefore would be capable of providing and maintaining an acoustic and intumescent seal between said internal wall and said façade.
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Fig. 12: Pilz (US 2016/0130802 A1).
With regard to claim 2: Pilz disclose that said first member (A, B, C, D) includes a first web portion (B) and a first flange (A) extending from said first web portion (B) (figs. 12-13).
With regard to claim 3: Pilz discloses that said second member (right flange 24) is a second flange enabling attachment of the apparatus (12, 20) to said internal wall (16 and 18) (figs. 12-13).
With regard to claim 4: Pilz discloses a second web portion (D) formed in said first member (A, B, C, D) and integrally formed with said first web portion (B) and separated by a common side wall (C) (figs. 12-13).
With regard to claim 5: Pilz discloses that the first web portion (B) and the second web portion (D) are offset from one another (figs. 12- 13).
With regard to claim 6: Pilz discloses that said second flange (right flange 24) extends from said second web portion (D) (figs 12-13).
With regard to claim 23: Pilz discloses a method of installing apparatus between an internal wall (16) of a building and a façade (14) of said building in order to seal a gap between said internal wall (16) and said façade (14), the apparatus (12, 20) including a building profile having a first member (A, B, C, D) and a second member (right flange 24) integrally formed with said first member (A, B, C, D); and a first resilient and intumescent component (intumescent material 20 in a compressed state between rigid surfaces) fitted to said first member (A, B, C, D); said method including the step of:
positioning the apparatus (12, 20) between the façade (14) and an outer end of the internal wall (16) such that the first resilient and intumescent component (intumescent material 20 in a compressed state between rigid surfaces) abuts against said façade (14) (figs. 12-13; par. [0072], [0078] and [0096]);
and securing the second member (right flange 24) to the internal wall (16) at various locations (slots 26 receiving fasteners) along the length of the second member (right flange 24) (figs. 12-13; par. [0019] and [0075]).
Pilz discloses that the apparatus (12, 20) as claimed and therefore would be capable of providing and maintaining an acoustic and intumescent seal between said internal wall and said façade.
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) 7-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pilz (US 2016/0130802 A1).
With regard to claim 7: Pilz discloses that said second flange (right flange 24) includes a side section (E), a connecting section (F) and an intermediate section (44) between the connecting section (F) and the side section (E) (fig. 12).
The apparatus of figs. 12-13 of Pilz does not disclose that the intermediate section is a ramp section.
However, Pilz discloses an alternative embodiment of the apparatus comprising a flange (right flange 24) include a side section (32 above an angled portion), a connection section (34 below the angled portion) and a ramp section (angled portion) between the connecting section (34 below the angled portion) and the side section (32 above the angled portion) (figs. 5, 6 and 6A).
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 apparatus of figs. 12-13 of Pilz to have the intermediate portion comprising a ramp section such as taught by the apparatus of the alternative embodiment shown in figs. 5, 6 and 6A of Pilz yielding the predicable result of creating a space for accommodating the heads of fasteners. No new or unpredictable would be obtained from substituting the intermediate portion of the apparatus of figs. 12-13 of Pilz to be a ramped portion such as taught by the apparatus of the alternative embodiment shown in figs. 5, 6 and 6A of Pilz. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
With regard to claim 8: Pilz discloses that the connecting section (F) has apertures (26) to enable fastening means (mechanical fasteners) to attach said apparatus (12, 20) to a part of said internal wall (16) (figs. 12-13).
With regard to claim 9: Pilz discloses that the side section (E) is located between the second web portion (D) and the intermediate section (40), the intermediate section (44) also formed with said connecting section (F) (figs. 12-13). As previously modified, Pilz discloses that the intermediate section is the ramp section.
With regard to claim 10: Pilz discloses that the intermediate section (44) provides an offset between the connecting section (F) and the side section (E) such that, when installed, the connecting section (F) is positioned against the internal wall (16). Examiner notes that the plaster is related to an intended use. Plaster is capable to being applied over said connecting section up to and including the ramp section.
As previously modified, Pilz discloses that the intermediate section is the ramp section.
With regard to claim 11: Pilz discloses a first receiving section (channel formed by A, B, C) formed by said first web portion (B), said first flange (A) and said common side wall (C) and further including a second receiving section (channel formed by C, D and right flange 24) formed by said second web portion (D), said common side wall (C) and said second flange (right flange 24) (figs. 12-13).
With regard to claim 12: Pilz discloses a second and a third resilient and intumescent component (additional intumescent stirps 20) (figs. 12-13).
With regard to claim 13: Pilz discloses that said first resilient and intumescent component (20) fits into said first receiving section (channel formed by A, B, C) and is adhesively attached to an inner face of said first web portion (B) (fig. 12-13; par. [0083] and [0090]).
With regard to claim 14: Pilz discloses that said first flange (A) and said common side wall (C) are directed inwardly towards one another with respect to said first web portion (B) and provide a tensioned frictional engagement with said first resilient and intumescent component (20) to assist in retaining the first resilient and intumescent component (20) in said first receiving section (channel formed by A, B, C) (figs. 1-2).
With regard to claim 15: Pilz discloses that said first resilient and intumescent component (20) is installed in a partially compressed state and capable of being compressed further in response to the façade undertaking a movement towards the internal wall and is adapted to expand in response to the façade undertaking a movement away from the internal wall, said movement being forced by external environmental conditions (figs. 12-13; par. [0072], [0078] and [0096]).
Allowable Subject Matter
Claims 16-22 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
The combination of all the elements of the claimed apparatus including a first receiving section formed by the first web portion, the first flange and the common side wall and further including a second receiving section formed by the second web portion, the common side wall and the second flange; in particular said first resilient and intumescent component fitting into the first receiving section and is adhesively attached to an inner face of the first web portion; and a third resilient and intumescent component located between an outer face of the first web portion and an outer end of the internal wall, and the third resilient and intumescent component adhesively attached to the outer face of the first web portion is not adequately taught or suggested in the cited prior art of record. While individual elements of the claimed apparatus are known, it would not have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the third resilient and intumescent component adhesively attached to the outer face of the first web portion without relying improper hindsight as the apparatus is spaced from the outer end of the internal wall.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited is directed to frame systems and/or fire blocking.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSIE T FONSECA whose telephone number is (571)272-7195. The examiner can normally be reached 7:00am - 3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSIE T FONSECA/Primary Examiner, Art Unit 3633