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.
Claims 1-17 are 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 limitation “fastening portion” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. What is the structure of the element that performs the fastening function? Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 15 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 15 recites the limitation "the second fastening portion" in line 4. There is insufficient antecedent basis for this limitation in the claim.
The remaining claims are rejected due to dependency from claim 1.
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) 1-5 and 11-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Forg (WO2022043219).
Regarding claim 1, Forg discloses a continuous fire protection strip for a fire stop, having a sealing portion (inner sealing device 20) that has at least in part an intumescent material (54) and at least one first fastening portion (outer elastic sealing layer 48) (Paragraph 70, The sealing portions may include sealing devices; the elastic layer of the outer sealing device is laterally adjacent to the sealing portion) laterally adjacent to the sealing portion (Figure 3), wherein the continuous fire protection strip is configured to be fixed to a base strip (50, 52) of the fire stop at least by the at least one first fastening portion (The strip is capable of being attached by the fastening portion).
Regarding claim 2, Forg discloses the continuous fire protection strip according to claim 1, wherein the continuous fire protection strip has a second fastening portion (24) and that the at least one first fastening portion and the second fastening portion are adjacent to the sealing portion on opposite sides thereof (Figure 3).
Regarding claim 3, Forg discloses the continuous fire protection strip according to claim 1, wherein at least the at least one first fastening portion (48) has a first surface (top surface) and a second surface opposite the first surface (bottom surface), and in that at least one of the two surface is coated with a fastening means (Paragraph 53, the sealing layer is attached to the sealing device, which suggests the inclusion of a fastening means).
Regarding claim 4, Forg discloses the continuous fire protection strip according to claim 1, wherein the sealing portion further has at least in part an elastic sealing material into which the intumescent material is embedded (Paragraph 16, the material may be intumescent and sound-absorbing; Paragraph 58, the material may be an intumescent foam).
Regarding claim 5, Forg discloses the continuous fire protection strip according to claim 4, wherein the sealing material is fire retardant or non- combustible (Paragraph 16).
Regarding claim 12, Forg discloses the continuous fire protection strip according to claim 1 wherein the sealing portion (20) has at least one second kink edge (28) extending in the longitudinal extension direction of the continuous fire protection strip between opposite lateral ends of the sealing portion (Figure 3).
Regarding claim 13, Forg discloses the fire stop having a base strip, having at least in part a thermally insulating material and a continuous fire protection strip according to claim 1, wherein the base strip has an end face (Figure 3, lower end face), wherein the continuous fire protection strip is fixed to the base strip by means of the at least one first fastening portion such that the sealing portion is arranged flush relative to the end face of the base strip (Figure 3).
Regarding claim 14, Forg discloses the fire stop according to claim 13, wherein the sealing portion is arranged to be laterally spaced from and flush next to with the end face of the base strip (The sealing portion is laterally spaced from the portion of 52 of the lower end face, and flush with portion 50 of the lower end face).
Regarding claim 15, Forg discloses the fire stop according to claim 13, wherein the at least one first fastening portion (48) and the second fastening portion (48) are fixed on opposite side surfaces of the base strip (One is on the left side, bottom surface, and the other is on the right side bottom surface).
Regarding claim 16, Forg discloses the continuous fire protection strip according to claim 7, wherein the film has a rectangular lattice structure or a diamond lattice structure (Diamond Lattice structure).
Pertaining to Claims 1 and 11
Regarding claim 1, Forg discloses a continuous fire protection strip for a fire stop, having a sealing portion (28) that has at least in part an intumescent material (54) and at least one first fastening portion (outer elastic sealing layer 48) (Paragraph 70, The sealing portions may include sealing devices; the elastic layer of the outer sealing device is laterally adjacent to the sealing portion) laterally adjacent to the sealing portion (Figure 3), wherein the continuous fire protection strip is configured to be fixed to a base strip (50) of the fire stop at least by the at least one first fastening portion (The strip is capable of being attached by the fastening portion).
Regarding claim 11, Forg discloses the continuous fire protection strip according to claim 1 wherein a first kink edge (18) extending in the longitudinal extension direction of the continuous fire protection strip (Figure 3) is arranged between the sealing portion and the at least one first fastening portion (Figure 3).
Claim Rejections - 35 USC § 102/103
Claim(s) 6-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Forg or, in the alternative, under 35 U.S.C. 103 as obvious over Forg in view of Fritz (DE102007034112).
Regarding claim 6, Forg discloses the continuous fire protection strip according to claim 1, wherein outer surfaces of the sealing portion are laminated (The limitation laminated is a product-by-process limitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The claimed structure is the same as or obvious from the prior art structure, and is therefore rejected even though the product may be made by a different process) with a film at least along a longitudinal extension direction of the continuous fire protection strip (Paragraphs 70 and 61, the elastic strip may extend along the entire outside of the sealing device; The attachment material is the film).
Should it be found that the attachment material is not a film, Irbit discloses a device that includes an film (13) that may be used to attach materials to a sealing device.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Forg with the disclosures of Fritz, providing an adhesive to attach the elastic strip, as the configurations were known structures to provide for attachment of the constituent parts
Regarding claim 7, Forg alone or in combination with Fritz discloses the continuous fire protection strip according to claim 6, wherein the film has a lattice structure (Figure 7, the film has a dotted lattice structure).
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) 8-10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Forg.
Regarding claim 8, Forg discloses the continuous fire protection strip according to claim 1, wherein an underside of the sealing portion has a first outer face, in that an upper side opposite the underside and arranged in parallel has a second outer face opposite the first outer face (Figure 3), but fails to disclose that a height of the sealing portion between the underside and the upper side is between at least 4 mm and at most 50 mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Forg to provide that a height of the sealing portion between the underside and the upper side is between at least 4 mm and at most 50 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Forg would not operate differently with the claimed height and the device would function appropriately having the claimed height. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the height “can” be within the claimed range.
Regarding claim 9, Forg discloses the continuous fire protection strip according to claim 8, wherein a first width of the underside transverse to the longitudinal extension direction of the continuous fire protection strip is greater than a second width, of the upper side transverse to the longitudinal extension direction of the continuous fire protection strip (The width of the underside including 24 is longer than the upper side).
Regarding claim 10, Forg discloses the continuous fire protection strip according to claim 8, wherein transition portions (28, 28) that extend along the longitudinal extension direction of the continuous fire protection strip between the underside and the upper side of the sealing portion (Figure 3) are designed with bevels and/or rounded portions and/or chamfers (Figure 3, The transition portions extend and terminate in rounder portions).
Regarding claim 17, Forg discloses the continuous fire protection strip according to claim 8, wherein an underside of the sealing portion has a first outer face, in that an upper side opposite the underside and arranged in parallel has a second outer face opposite the first outer face (Figure 3), but fails to disclose that a height of the sealing portion between the underside and the upper side is of substantially 20 mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Forg to have a height of the sealing portion between the underside and the upper side of substantially 20 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Forg would not operate differently with the claimed height and the device would function appropriately having the claimed height. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the height is a preference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R. DANDRIDGE whose telephone number is (571)270-1505. The examiner can normally be reached M-T 9am-7pm.
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CHRISTOPHER R. DANDRIDGE
Primary Examiner
Art Unit 3752
/CHRISTOPHER R DANDRIDGE/Primary Examiner, Art Unit 3752
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