DETAILED ACTION
This is a non-final Office Action on the merits for U.S. App. 18/913,455.
Claims 1-20 are pending.
Claims 13-15 are withdrawn from consideration.
Claims 1-12 and 16-20 are examined.
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 filed 10/11/2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because it fails to include the publication date, including at least the year, of the NPL documents therein. It has been placed in the application file, but the information referred to therein, where noted, has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12 and 16-20, drawn to a backer rod product, classified in E04B1/6812.
II. Claims 13-15, drawn to a method of reducing oil canning on sheet metal panels, classified in E04D12/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product of group I can be used in a materially different process, such as between two concrete slabs, and the method of group II can use a materially different product, such as one where the backer rod has a lager height than a width.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the invention have acquired separate status in the art in view of their different classifications and thus would be a serious search burden.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Bradley Smith on 06/01/2026 a provisional election was made without traverse to prosecute the invention of group I, claims 1-12 and 16-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-9 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haddock (U.S. Publication 2007/0289233).
Regarding claim 1, Haddock discloses a backer rod (#60) for sheet metal panels installed over a substrate (see figure 3, where the backer rod #60 is so configured), the backer rod comprising a length of compressible material (paragraph 49 discloses the backer rod #60 is formed from a compressible material, such as foam) having a noncircular profile (see figures 5A-5C, where the backer rod comprises of different, non-circular profiles), said profile having a width that is greater than or equal to a height measured between a substrate engagement surface (#64/#64”) and a metal engagement surface (#62/62”, see figures 5A and 5C where the width of such a backer rod is greater than the height thereof).
Regarding claim 2, Haddock discloses the metal engagement surface is flat (see figures 5A and 5C).
Regarding claim 3, Haddock discloses the substrate engagement surface is flat (see figures 5A and 5C).
Regarding claim 4, Haddock discloses the profile is a polygon (see figure 5A).
Regarding claim 5, Haddock discloses the profile is a rectangle (see figure 5A).
Regarding claim 6, Haddock discloses the profile further comprises a side surface having a convex surface (see figure 5C at #63”).
Regarding claim 7, Haddock discloses the profile approximates a polygon and with one or more rounded transition corners between the metal engagement surface and the side surface (see figure 5C).
Regarding claim 8, Haddock discloses the metal engagement surface comprises a metal engagement convex curve, said metal engagement convex curve having an approximate imputed radius of at least the height (for rejection purposes of claim 8 and its dependencies, the embodiment of figure 5B can be used, where the metal engagement surface #64’ is a convex curve with a radius that is equal to the vertical height of the rod, where the substrate engagement surface #62’ is flat and where the width of the rod is greater than the height).
Regarding claim 9, Haddock discloses the substrate engagement surface is flat (see figure 5B at #62’).
Regarding claim 12, Haddock discloses the backer rod comprises an adhesive applied to a portion of the metal engagement surface (see paragraph 51).
Claim(s) 1-6, 8, 10, 11, and 16-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Marschinke (U.S. Publication 2025/0269212, using the provisional application 63/557947 as the filing date since it supports figures 3A-3D of the publication).
Regarding claim 1, Marschinke discloses a backer rod (#30) for sheet metal panels installed over a substrate (the backer rod #30 is configured to be installed between a sheet metal panel and a substrate and thus meets such limitations as broadly defined, where such a positioning is not positively defined), the backer rod comprising a length of compressible material (figure 3B depicts the backer rod #30 is formed from a compressible material #40, such as foam) having a noncircular profile (see figure 3D, where the backer rod comprises of different, non-circular profiles), said profile having a width that is greater than or equal to a height (figure 3D depicts the rectangular and oval shapes for the backer rod can comprise of widths greater than heights) measured between a substrate engagement surface (the bottom flat surface of the rectangular cross section or the bottom curved surface of the oval of figure 3D) and a metal engagement surface (the top flat surface of the rectangular cross section or the top curved surface of the oval of figure 3D).
Regarding claim 2, Marschinke discloses the metal engagement surface is flat (see figure 3D, where the rectangular profile has a metal engagement surface that is flat).
Regarding claim 3, Marschinke discloses the substrate engagement surface is flat (see figure 3D, where the rectangular profile has a substrate engagement surface that is flat).
Regarding claim 4, Marschinke discloses the profile is a polygon (see figure 3D, where the rectangular cross section is polygonal).
Regarding claim 5, Marschinke discloses the profile is a rectangle (see figure 3D, where the profile can be rectangular).
Regarding claim 6, Marschinke discloses the profile further comprises a side surface having a convex surface (see figure 3D, where the ends of the profile comprise of rounded side surfaces).
Regarding claim 8, Marschinke discloses the metal engagement surface comprises a metal engagement convex curve, said metal engagement convex curve having an approximate imputed radius of at least the height (see figure 3D, where the oval profile for the backer rod provides a metal engagement convex curve which comprises of a radius larger than the height and thus meets such limitations as defined).
Regarding claim 10, Marschinke discloses the substrate engagement surface comprises a substrate engagement convex curve (see figure 3D, where the bottom substrate engagement surface is curved for the oval profile).
Regarding claim 11, Marschinke discloses the profile is oblate (see figure 3D, where the oval profile is oblate).
Regarding claim 16, Haddock discloses a backer rod (#30) for sheet metal sections installed over a substrate (the backer rod #30 is configured to be installed between a sheet metal section and a substrate and thus meets such limitations as broadly defined, where such a positioning is not positively defined), the backer rod comprising a uniform length of compressible closed cell foam (paragraph 79 discloses the backer rod #30 is formed from a closed cell foam) having a noncircular profile (see figure 3D, where the backer rod comprises of different, non-circular profiles), a width (the horizontal dimension of figure 3D), a height (the vertical dimension of figure 3D) measured between a substrate engagement surface (the bottom surface of the profiles of figure 3D) and a metal engagement surface (the top surface of the profiles of figure 3D), wherein the width is at least as wide as the height (see figure 3D, where the width of such a backer rod is greater than the height thereof).
Regarding claim 17, Marschinke discloses the metal engagement surface is flat (see figure 3D, where the rectangular profile has metal engagement surface that is flat).
Regarding claim 18, Marschinke discloses the metal engagement surface comprises a metal engagement convex curve, said metal engagement convex curve having an approximate imputed radius of at least the height (see figure 3D, where the oval profile for the backer rod provides a metal engagement convex curve which comprises of a radius larger than the height and thus meets such limitations as defined).
Regarding claim 19, Marschinke discloses the width is between approximately ¼ and 5/8 inch, inclusive (paragraph 8 of Marschinke disclose such backer rods are to fill a gap of about ½ inch and the diameter of the backer rod is 125% of the joint width so as to thus comprise of a width of 5/8 and thus fall within the range as defined).
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) 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Haddock in view of Hohmann (U.S. Patent 6,997,640).
Regarding claim 16, Haddock discloses a backer rod (#60) for sheet metal sections installed over a substrate (see figure 3, where the backer rod #60 is so configured), the backer rod comprising a uniform length of compressible material (paragraph 49 discloses the backer rod #60 is formed from a compressible material, such as foam) having a noncircular profile (see figures 5A and 5C, where the backer rod comprises of different, non-circular profiles), a width (the horizontal dimension of figures 5A and 5C), a height (the vertical dimension of figures 5A and 5C) measured between a substrate engagement surface (#64/#64”) and a metal engagement surface (#62/62”), wherein the width is at least as wide as the height (see figures 5A and 5C where the width of such a backer rod is greater than the height thereof).
However, Haddock does not specifically disclose the backer rod is formed from closed cell foam. It is highly well known in the art, as evidenced by Hohmann, that such backer rods can be constructed from a polymeric foam of closed-cell construction. See col. 3, ll. 49-59. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the material of the backer rod of Haddock out of closed cell foam, as taught in Hohmann, in order to provide the appropriate compression to the backer rod while providing a seal as needed and also since 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. In re Leshin, 125 USPQ 416 (CCPA 1960).
Regarding claim 17, Haddock in view of Hohmann render obvious the metal engagement surface is generally flat (see figure 5A/5C of Haddock).
Regarding claim 18, Haddock in view of Hohmann render obvious the metal engagement surface comprises a metal engagement convex curve, said metal engagement convex curve having an approximate imputed radius of at least the height (for rejection purposes of claim 18 and its dependencies, the embodiment of figure 5B can be used, where the metal engagement surface #64’ is a convex curve with a radius that is equal to the vertical height of the rod, where the substrate engagement surface #62’ is flat and where the width of the rod is greater than the height).
Regarding claim 19, Haddock in view of Hohmann render obvious the width is between approximately one quarter inch to 5/8 inch, inclusive (paragraph 10 of Haddock discloses the metal panel can be of any appropriate size, shape, and configuration and paragraph 16 discloses the first structure/backer rod #60 can be of any appropriate size, shape, configuration, and/or type and therefore it would have been obvious before the effective filing date of the claimed invention to have constructed the width of the backer rod of Haddock to be within the range as defined in order to engage metal panels of appropriate sizes and also since where the only difference between the prior art and the claims is 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 is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).).
Regarding claim 20, Haddock in view of Hohmann render obvious an adhesive applied to a portion of the metal engagement surface (see paragraph 51 of Haddock).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE V ADAMOS whose telephone number is (571)270-1166. The examiner can normally be reached Monday - Friday 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian D Mattei can be reached at (571) 270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THEODORE V ADAMOS/Primary Examiner, Art Unit 3635
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