DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-18 are pending.
Specification
The disclosure is objected to because of the following informalities: The specification refers to “4” as both the fastening region and the stiffening element.
Appropriate correction is required.
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 14-16 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.
Re claim 14, claim 14 recites, “the joint” in line 8. There is insufficient antecedent basis for this limitation in the claim. It appears this language is intended to recite, “the movement joint” and will be interpreted as such.
Claims 15-16 are rejected as being dependent on a rejected claim.
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) 1-4, 6-7, 11-17 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Pilz (US 2020/0284030).
Re claim 1, Pilz discloses a joint-sealing element (Fig. 7-9A; 200) for fireproof sealing (Fig. 9) of a movement joint (360) on a building construction (Fig. 9A) and/or on a building structure (320/340), optionally for fireproof sealing of a joint between a first building part and a second building part (this language being optional),
the joint-sealing element (200) comprising:
a carrier element (216),
a sealing material (234) disposed on (at 231) the carrier element (216), and
a stiffening element (215),
wherein the stiffening element (215) comprises a rigid material ([0068] disclosing a steel plate).
Re claim 2, Pilz discloses the joint-sealing element according to claim 1, wherein the sealing material (234) comprises an intumescent material ([0073] disclosing expansion during heat/fire).
Re claim 3, Pilz discloses the joint-sealing element according to claim 2, wherein the intumescent material (234) is an intumescent foam, an intumescent coating (Fig. 9A), an intumescent layer (Fig. 9A) or an intumescent strip (Fig. 9A).
Re claim 4, Pilz discloses the joint-sealing element according to claim 1, wherein the carrier element (216) is a fabric material, foam material, woven material, nonwoven material ([0072] disclosing vinyl), metal material, film material, mesh material, composite material or mixture thereof.
Re claim 6, Pilz discloses the joint-sealing element according to claim 2, wherein the intumescent material (234) is extruded (“extruded” being product by process) onto (Fig. 9A) the carrier element (216).
It should further be noted that the language “extruded onto” is considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).
Re claim 7, Pilz discloses the joint-sealing element according to claim 1, wherein the stiffening element (215) is oriented perpendicular (Fig. 9, being a plate) in a direction of a longitudinal extent (vertically) of a joint (360).
Re claim 11, Pilz discloses the joint-sealing element according to claim 1, further comprising a top layer (224).
Re claim 12, Pilz discloses a method for fireproof sealing (Fig. 9A) of a movement joint (360) between two juxtaposed building parts (320/240) of a building construction and/or of a building structure (Fig. 9A) with at least one first building part (340), one second building part (320), a structural framework (330) and the joint-sealing element (200) according to claim 1 (see above), the method comprising:
Positioning (Fig. 9A showing 200 positioned) the joint-sealing element (200) on the structural framework (330),
fastening (372) the joint-sealing element (200).
Re claim 13, Pilz discloses the method according to claim 12, wherein the positioning (Fig. 9A) comprises positioning by adhesives, nails, screws (372/374 via 334a per [0072], for alignment, pre-fastening), clamps and dowels and the fastening (372/274) comprises fastening (372/374) and securing (Fig. 9A showing securement) the first building part (340) to the structural framework (330).
Re claim 14, Pilz discloses a sealing arrangement (Fig. 9A at 200) for sealing a movement joint (360), the sealing arrangement (200) comprising:
a movement joint (360) between two juxtaposed building parts (340/350) of a building construction and/or of a building structure (Fig. 9A) with at least one first building part (350) and one second building part (320), and
the joint-sealing element (200) according to claim 1 (see above),
wherein the joint-sealing element (200) is positioned in the movement joint (360), and is configured to seal (Fig. 9A) the joint from an outside (outside of 340).
Re claim 15, Pilz discloses the sealing arrangement according to claim 14, wherein the first building part (350) is a drywall ([0073]) and the second building part (320) is a wall, a ceiling (Fig. 9A) or a floor of a building construction and/or of a building structure (Fig. 9A), and
wherein the sealing arrangement (at 200) further comprises:
a structural framework (340) and
a header track (330).
Re claim 16, Pilz discloses the sealing arrangement according to claim 14, wherein the joint-sealing element (200) is fastened (372/374) to the header track (330).
Re claim 17, Pilz discloses a dry wall construction (Fig. 9A, 350): comprising:
a wall stud (340),
a header track (330),
a dry wall (350; [0073]),
a ceiling (350), and
the joint-sealing element (200) according to claim 1 (see above).
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) 5, 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pilz (US 2020/0284030).
Re claim 5, Pilz discloses the joint-sealing element according to claim 1, but fails to disclose wherein the stiffening element is in a form of a pin or a bolt.
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the joint-sealing element of Pilz wherein the stiffening element is in a form of a pin or a bolt in order to in order to reduce material used and thus material costs, as a pin or bolt is less material than a plate, and Pilz may still function as a thinner plate which would satisfy the definition of a pin. In addition, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
Re claim 8, Pilz discloses the joint-sealing element according to claim 7, wherein the stiffening element (215) is a metal element ([0068]) and is placed onto the joint-sealing element(200) perpendicular to (being a plate, and having a thickness and a width) in a direction of a longitudinal extent (vertically) of the joint-sealing element (200), but fails to disclose the metal element as a pin.
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the joint-sealing element of Pilz wherein the metal element is a pin in order to in order to reduce material used and thus material costs, as a pin or bolt is less material than a plate, and Pilz may still function as a thinner plate which would satisfy the definition of a pin. In addition, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
Re claim 9, Pilz discloses the joint-sealing element according to claim 7, but fails to disclose wherein the stiffening element extends at least 50% across a width of the joint-sealing element.
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the joint-sealing element of Pilz wherein the stiffening element extends at least 50% across a width of the joint-sealing element, such as by increasing the size of the stiffening element, in order to increase strength and rigidity, or provide a greater surface for intumescent material thereon. In general, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pilz (US 2020/0284030) in view of Pilz (“Pilz 2”) (US 2024/0209623).
At the outset, it is noted that the phrase, “high movement” is not being interpreted as relative term due to the specification as originally filed stating, “…the term "high movement" means that, the joint sealing element must compensate high movement of at least more than +/- ¾ inch, preferably of more than +/- 1 inch, most preferably of more than +/- 1.5 inch or higher of the joint.” The term, “high movement” is being interpreted according to this definition.
Re claim 18, Pilz discloses a movement joint (Fig. 9A 360), comprising:
the joint-sealing element (200) according to claim 1 (see above),
wherein the movement joint (360) passes the UL2079 test ([0044]-[0045]),
but fails to disclose the movement joint as a high movement joint, and the movement joint complies with 1604 of the International Building Code (IBC).
However, Pilz 2 discloses the movement joint (160) as a high movement joint ([0033] disclosing 4 inches).
It would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the joint-sealing element of Pilz with the movement joint as a high movement joint as in Pilz 2 in order to allow for less precision during installation, saving installation time.
In addition, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the joint-sealing element of Pilz such that the movement joint complies with 1604 of the International Building Code (IBC) in order to ensure sufficient structural strength, serviceability, deflection limits, and stability, all well-known requirements satisfied by IBC Section 1604. IBC Section 1604 is a well-known standard in the art, and is will within the level of ordinary skill to design and manufacture to meet the standard.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
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