DETAILED ACTION
Applicant’s arguments, see Request for reconsideration, filed 7/22/2026, with respect to the rejection(s) of claim(s) 1-20 under Forg have been fully considered and are persuasive. Therefore, the rejection has been withdrawn, as Applicant has perfected priority. However, upon further consideration, a new ground(s) of rejection is made in view of Irrgeher.
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 1-20 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.
The term “substantially” in claim 17 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What height corresponds to substantially 20mm? 19.5 mm? 15 mm? What are the bounds of the limitation?
Claim 19 recites the limitation “the sealing section.” There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation “the gap.” 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) 1-3, 6-7, 11-16 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Irrgeher (DE102007034112).
Regarding claim 1, Irrgeher discloses a continuous fire protection strip for a fire stop, having
a sealing portion (4) that has at least in part an intumescent material (Paragraph 36) and at least one first fastening portion (as best understood, 10) laterally adjacent to the sealing portion (Figure 7), wherein the continuous fire protection strip is configured to be fixed to a base strip of the fire stop at least by the at least one first fastening portion (Figure 7 and Paragraph 50, The strip is configured to be fixed to a base strip of the fire stop (12) by the fastening portion being applied with adhesive).
Regarding claim 2, Irrgeher discloses the continuous fire protection strip according to claim 1, wherein the continuous fire protection strip has a second fastening portion (as best, understood, 9) 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 7).
Regarding claim 3, Irrgeher discloses the continuous fire protection strip according to claim 1, wherein at least the at least one first fastening portion (10) has a first surface and a second surface opposite the first surface (front surface and rear surface), and in that at least one of the two surfaces is coated with a fastening (Paragraph 50, the rear surface is coated with adhesive).
Regarding claim 6, Irrgeher discloses the continuous fire protection strip according to claim 1, wherein outer surfaces of the sealing portion are laminated with a film (5) at least along a longitudinal extension direction of the continuous fire protection strip (Figure 1).
Regarding claim 7, Irrgeher discloses the continuous fire protection strip according to claim 6, wherein the film has a lattice structure (Figure 1).
Regarding claim 11, Irrgeher discloses the continuous fire protection strip according to claim 1, wherein a first kink edge extending in the longitudinal extension direction of the continuous fire protection strip is arranged between the sealing portion and the at least one first fastening portion (Figures 1-2, the sealing portion and fastening portion are connected by a kink edge).
Regarding claim 12, Irrgeher discloses the continuous fire protection strip according to claim 1, wherein the sealing portion has at least one second kink edge extending in the longitudinal extension direction of the continuous fire protection strip between opposite lateral ends of the sealing portion (Figures 1-2, the second fastnening portion is connected by the second kink edge).
Regarding claim 13, Irrgeher 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 (rear end face facing portion 10), wherein the continuous fire protection strip is fixed to the base strip by the at least one first fastening portion (10) (Paragraph 50) such that the sealing portion is arranged flush relative to the end face of the base strip (Figure 7).
Regarding claim 14, Irrgeher 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 (Figure 7, the fastening portion (10) of the sealing portion is spaced from the face by an adhesive panel, and flush next to the end face of the base strip).
Regarding claim 15, Irrgeher discloses the fire stop according to claim 13, wherein the at least one first fastening portion (10) and a second fastening portion (9) are fixed on opposite side surfaces of the base strip (Figure 7; The first fastening portion is fixed on an upper rear portion of the base strip and the second fastening portion is fixed on a lower front portion of the base strip).
Regarding claim 16, Irrgeher discloses the continuous fire protection strip according to claim 7, wherein the film has a rectangular lattice structure or a diamond lattice structure ( Figure 1, rectangular lattice structure).
Regarding claim 18, Irrgeher discloses the continuous fire protection strip according to claim 1, wherein the base strip of the fire barrier is present and comprises a basic component comprising an insulating material (Figure 7, element 12 is an insulating material) which is arranged between a subsoil part of a building and fagade elements thereof (The material is arranged between the subsoil and the fascia of the building).
Regarding claim 19, Irrgeher discloses the continuous fire protection strip according to claim 18, wherein the base strip of the fire barrier spans a partial distance between the subsoil and the fagade elements in the direction perpendicular to the respective fasade element ( Figure 7, the strip is arranged perpendicular to a subsoil and fascia, expanding vertically relative to the subsoil), and wherein a further partial distance can be spanned by the sealing section adjoining the base strip of the fire barrier along the direction perpendicular to the respective fascade element (Figure 7, the fastening portion of the sealing section spans parallel to the base strip), and wherein there remains a residual part distance along the direction perpendicular to the fascade element, which corresponds to the gap intended for rear ventilation (Figure 7, the gap receives the sealing element).
Regarding claim 20, Irrgeher discloses the continuous fire protection strip according to claim 1, wherein the first fastening portion has an adhesive on a surface thereof (Paragraph 50).
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) 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Irrgeher in view of Foerg (US 2006/0006611), with disclosures of Thoben (EP 3047877).
Regarding claim 4, Irrgeher discloses the continuous fire protection strip according to claim 1, wherein the sealing portion further has at least in part a sealing material (7) into which the intumescent material is embedded (Figure 3), but is silent as to whether the material is elastic.
Foerg discloses a device wherein a sealing material (13) is made of an elastic material (Paragraph 24).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Irrgeher with the disclosures of Foerg, providing the sealing material to be made of an elastic material, in order to minimize pressure on the intumescent material, and thereby maintain the structure of the sealing material, as disclosed by Thoben (Paragraph 14).
Regarding claim 5, Irrgeher in view of Foerg discloses the continuous fire protection strip according to claim 4, wherein the sealing material is fire retardant or non-combustible (Paragraph 24, the material may be glass wool which is a non-combustible material).
Claim(s) 8-10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Irrgeher.
Regarding claim 8, Irrgeher discloses the continuous fire protection strip according to claim 1, wherein an underside of the sealing portion (4) 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 2), but fails to disclose in that a height, DAH, 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 Irrgeher to have a height, DAH, of the sealing portion between the underside and the upper side 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 Irrgeher would not operate differently with the claimed height and since the sealing portion is intended to have a height, 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 (specification pg. 5, line 34).
Regarding claim 9, Irrgeher discloses the continuous fire protection strip according to claim 8, but fails to disclose wherein a first width, USB, of the underside transverse to the longitudinal extension direction of the continuous fire protection strip is greater than a second width, OSB, of the upper side transverse to the longitudinal extension direction of the continuous fire protection strip.
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 Irrgeher to have a first width, USB, of the underside transverse to the longitudinal extension direction of the continuous fire protection strip is greater than a second width, OSB, of the upper side transverse to the longitudinal extension direction of the continuous fire protection strip 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 Irrgeher would not operate differently with the claimed width and since the sides are intended to have widths, 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 widths are “optional” (specification pg. 6, lines 8-10).
Regarding claim 10, Irrgeher discloses the continuous fire protection strip according to claim 8, wherein transition portions that extend along the longitudinal extension direction of the continuous fire protection strip between the underside and the upper side of the sealing portion are designed with bevels and/or rounded portions and/or chamfers (Figure 3, rounded portions).
Regarding claim 17, Irrgeher 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 2), but fails to disclose that a height, DAH, 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 Irrgeher to have a height, DAH, of the sealing portion between the underside and the upper side is 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 Irrgeher would not operate differently with the claimed height and since the sealing portion is intended to have a height, 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 (specification pg. 5, line 35-pg. 6, line 1).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-17 regarding Forg 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.
As to Applicant’s arguments regarding the 112(b) rejection, the specification does not include disclosure of the structure that performs the fastening function. The specification states that there is a fastening element (adhesive) on the fastening portion. As such, the 112(b) rejection is not withdrawn.
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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