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 .
DETAILED CORRESPONDENCE
This communication is a first Office Action on the Merits. Claims 1-19, as originally filed 05 MAR. 2025, are pending and have been considered as follows:
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/17/2025 and 03/17/2026 was filed and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.83 or 1.84 because of the following informalities:
The drawings must show every feature of the invention specified in the claims, therefore the following must be shown or the feature(s) canceled from the claim(s):
Cl. 11: “top layer” has not been explicitly pointed out
Cl. 12: “fastening region” has not been explicitly pointed out
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
The objection to the drawings will not be held in abeyance.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1-6, 11-12 and 19 rejected under 35 U.S.C. 103 as being unpatentable over REHER REINALD DE 102014108549 B4 (Reher)(translation attached) in view of Ishido et al. US 4366284 A (Ishido).
As per claim 1 the primary reference of Reher teaches a joint-sealing element (“Fire-protected Cable / Pipe Penetration” title) for fireproof sealing of a movement joint on a building construction and/or on a building structure, optionally for fireproof sealing of a joint between a first building part and a second building part (see “wall or ceiling”), the joint-sealing element comprising:
a stiffening component (support part 8b, FIG. 1A-1B), and
a sealing material (half shell 2, FIG. 1A-1B) connected to the stiffening component (support part 8b, FIG. 1A-1B),
but fails to explicitly disclose:
the sealing material comprises:
an elastomeric material selected from the group consisting of
ethylene propylene diene monomer rubber,
styrene-butadiene rubber,
silicone rubber,
highly chlorinated polyvinyl chloride, and
polymers based on polysiloxane.
Ishido teaches a shell material of the claimed list, specifically styrene-butadiene rubber (“styrene-butadiene copolymer rubber” 4:31).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Reher by substituting the styrene-butadiene rubber as taught by Ishido in order to enable the addition of flame retardant additives while maintaining the mechanical properties.
As per claim 2 Reher in view of Ishido teaches the limitations according to claim 1, and Reher further discloses wherein the joint-sealing element has a hollow profile (cavity 10, FIG. 1A-1B).
As per claim 3 Reher in view of Ishido teaches the limitations according to claim 1, and Reher further discloses wherein the joint-sealing element has a form that corresponds to a “D”-shape (FIG. 1A-1B).
As per claim 4 Reher in view of Ishido teaches the limitations according to claim 1, and Reher further discloses wherein the joint-sealing element has a hollow “D”-profile shape (FIG. 1A-1B).
As per claim 5 Reher in view of Ishido teaches the limitations according to claim 1, and Reher further discloses the stiffening component (support part 8b, FIG. 1A-1B) is a rigid fabric material, foam material, woven material, nonwoven material, metal material (see “other support materials such as metallic fabrics”), film material, mesh material, composite material, pin, bolt or sheet material or mixture thereof.
As per claim 6 Reher in view of Ishido teaches the limitations according to claim 1, and Ishido further discloses the stiffening component is a rigid thin sheet metal material (see “elongated core member… metal” 2:55; compare FIG. 10). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Reher in view of Ishido by including the thin sheet metal member as taught by Ishido in order to provide a stronger element to resist deformation in the event of a fire.
As per claim 11 Reher in view of Ishido teaches the limitations according to claim 1, and Reher further discloses further comprising a top layer (FIG. 1A).
As per claim 12 Reher in view of Ishido teaches the limitations according to claim 1, and Reher further discloses a fastening region (adhesive layer 9b, FIG. 1A-1B).
As per claim 19 Reher in view of Ishido teaches the limitations according to claim 1, but fails to explicitly disclose:
high movement joint, comprising: the joint-sealing element according to claim 1, wherein the high movement joint complies with 1604 of the International Building Code (IBC) and passes the UL2079 test.
It has been held that: “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1395-97 (2007). “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82, USPQ2d at 1396.
Therefore a person of ordinary skill in the art would teach modifying the assembly to meet building codes, so it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the assembly of Reher in view of Ishido by substituting material and components in order to create a device to meet the needs of a particular installation.
Claim 7 rejected under 35 U.S.C. 103 as being unpatentable over Reher in view of Ishido as applied to claim 1 above, and further in view of OUIMETTE US 20260103887 A1 (Ouimette).
As per claim 7 Reher in view of Ishido teaches the limitations according to claim 1 but the combination fails to explicitly disclose:
the sealing material is silicone.
Ouimette uses a strip of silicon to seal a gap, specifically:
the sealing material is silicone (“Tubing 175 is formed from expandable or stretchable materials, for example such as neoprene rubber, silicone rubber” [0041]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Reher in view of Ishido substituting silicone rubber for the sealing material as taught by Ouimette in order to enable the sealing element to flex against a gap because doing so would enable a tighter fit when the assembly is installed.
Claim 8-10, 13-18 rejected under 35 U.S.C. 103 as being unpatentable over Reher in view of Ishido as applied to claim 1 above, and further in view of Morgan et al. US 6698146 B2 (Morgan).
As per claim 8 Reher in view of Ishido teaches the limitations according to claim 1, but the combination but fails to explicitly disclose:
wherein the stiffening component is oriented perpendicular in a direction of a longitudinal extent of the joint.
Morgan teaches such a building opening as claimed, specifically:
wherein the stiffening component (spacer strip 21, FIG. 9) is oriented perpendicular in a direction of a longitudinal extent of the joint.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Reher in view of Ishido by including the head of wall joint as taught by Morgan in order to allow the sealing element to protect a head of wall.
As per claim 9 Reher in view of Ishido and Morgan teaches the limitations according to claim 8 and Reher teaches the assembly is molded together perpendicular to in the direction of a longitudinal extent of the joint-sealing element (“integrally connected”). Ishido further discloses wherein the stiffening component is a thin metal sheet (“elongated core member … can be made of… metal” 2:55). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Reher in view of Ishido and Morgan by substituting the elongated member of metal as taught by Ishido in order to allow a firmer assembly to resist deformation in the event of a fire.
As per claim 10 Reher in view of Ishido and Morgan teaches the limitations according to claim 8 and Reher further discloses the stiffening component (support part 8b, FIG. 1A-1B) extends at least 50% across a width of the joint-sealing element (see support part 8b, FIG. 1A-1B).
In other words, the examiner's position is that Reher in view of Ishido and Morgan inherently has a support part stiffening component which extends at least 50% across a width of the joint-sealing element.
However, in the alternative, if Reher in view of Ishido and Morgan does not disclose that the stiffening component, then it certainly would have been obvious to a skilled artisan art at the time of filing to modify the assembly of Reher in view of Ishido and Morgan by making the support part extend a greater distance across the assembly —including at least 50% across a width— in order to provide increased resistance to dislocation in the event of a fire.
As per claim 13 Reher in view of Ishido teaches the limitations according to claim 1, but the combination fails to explicitly disclose:
a method for fireproof sealing of a movement joint between two juxtaposed building parts of a building construction and/or of a building structure with at least one first building part, one second building part, a structural framework and the joint-sealing element, the method comprising: positioning the joint-sealing element on the structural framework, and
fastening the joint-sealing element.
Morgan teaches such an implementation for a typical head of wall area, specifically:
a method for fireproof sealing of a movement joint between two juxtaposed building parts of a building construction (FIG. 9) and/or of a building structure with at least one first building part (wallboards 18 FIG. 9), one second building part (ceiling 10 FIG. 9), a structural framework (studs 14, FIG. 9) and the joint-sealing element (barrier 1, FIG. 9), the method comprising: positioning the joint-sealing element on the structural framework, and
fastening the joint-sealing element (see “The molding bag is positioned between the horizontal track 12 before the track 12 is fastened to the bottom surfaces 10B of the ceiling 10 (e.g., using screws or other fasteners). The metal studs 14 are then installed between the track 12 and floor (not shown), and one or more gypsum wallboards 18 are attached to one or both sides of the track/stud assembly (12/14/18). Preferably, a spacer strip 21 (e.g., mineral wool or foamed polystyrene or other compressible material) is inserted to protect the gap at the top of the wallboards 18” 11:24 and “fill the joint cavities between the top of the wall (12) and uppermost ceiling surface 10A as well as to fill the bag over the corner joints 20 above the wallboards 18” 11:41; this is recognized as teaching the bag is fastened to the structure at least somewhat by way of interference).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Reher in view of Ishido by including the structure as taught by Morgan in order to protect the structure during cyclic movements in the event of a fire.
As per claim 14 Reher in view of Ishido and Morgan teaches the limitations according to claim 13, and Reher further discloses the positioning comprises positioning by adhesives (“adhesive layer” abstract), nails, screws, clamps and dowels and the fastening comprises fastening and securing the first building part to the structural framework.
As per claim 15 Reher in view of Ishido teaches the limitations according to claim 1, but the combination fails to explicitly disclose:
a sealing arrangement for scaling a movement joint the sealing arrangement comprising: a movement joint between two juxtaposed building parts of a building construction and/or of a building structure with at least one first building part and one second building part, and the joint-sealing element according to claim 1, wherein that the joint-sealing element is positioned in the movement joint, and is configured to seal the joint from an outside.
Morgan teaches such an implementation for a typical head of wall area, specifically:
a sealing arrangement for scaling a movement joint (“head-of-wall joints… cyclic movements” 1:31) the sealing arrangement comprising: a movement joint between two juxtaposed building parts (wallboards 18, ceiling 10 FIG. 9) of a building construction and/or of a building structure with at least one first building part and one second building part, and the joint-sealing element according to claim 1, wherein that the joint-sealing element (bag 33, FIG. 9) is positioned in the movement joint, and is configured to seal the joint from an outside (see FIG. 9).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Reher in view of Ishido by including the structure as taught by Morgan in order to protect the structure during cyclic movements in the event of a fire.
As per claim 16-17 Reher in view of Ishido and Morgan teaches the limitations according to claim 15, and Morgan further discloses (Cl. 16) the first building part is a drywall (wallboards 18 FIG. 9) and the second building part is a wall, a ceiling (ceiling 10 FIG. 9) or a floor of a building construction and/or of a building structure, and wherein the sealing arrangement further comprises: a structural framework (studs 14, FIG. 9), and a header track (track 12, FIG. 9); and (Cl. 17) wherein the joint-sealing element is fastened to the header track (see “The molding bag is positioned between the horizontal track 12 before the track 12 is fastened to the bottom surfaces 10B of the ceiling 10 (e.g., using screws or other fasteners). The metal studs 14 are then installed between the track 12 and floor (not shown), and one or more gypsum wallboards 18 are attached to one or both sides of the track/stud assembly (12/14/18). Preferably, a spacer strip 21 (e.g., mineral wool or foamed polystyrene or other compressible material) is inserted to protect the gap at the top of the wallboards 18” 11:24 and “fill the joint cavities between the top of the wall (12) and uppermost ceiling surface 10A as well as to fill the bag over the corner joints 20 above the wallboards 18” 11:41; this is recognized as teaching the bag is fastened to the structure at least somewhat by way of interference). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Reher in view of Ishido and Morgan by including the structure as taught by Morgan in order to protect the structure during cyclic movements in the event of a fire.
As per claim 18 Reher in view of Ishido teaches the limitations according to claim 1, but the combination but fails to explicitly disclose:
a dry wall construction, comprising: a wall stud, a header track, a dry wall, a ceiling, and the joint-sealing element according to claim 1.
Morgan teaches such an implementation for a typical head of wall area, specifically:
a dry wall construction, comprising: a wall stud (studs 14, FIG. 9), a header track (track 12 FIG. 9), a dry wall (wallboards 18 FIG. 9), a ceiling (ceiling 10 FIG. 9), and the joint-sealing element (bag 33, FIG. 9) according to claim 1.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Reher in view of Ishido by including the structure as taught by Morgan in order to protect the structure during cyclic movements in the event of a fire.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mizia et al. US 5271878 A: “rigid, preformed foamed polystyrene core 11 surfaced with hardboard veneer 12, the resultant structure having flat face 13 and curved face 14… A 1/8" thick sheet of heat-treated hardboard veneer, having one side embossed with a rough-sawn cedar pattern and preferably treated with a fire retardant chemical, is then coated with the moisture-curing polyurethane adhesive, exposed to a water mist, and positioned over the curved surface of core 11.”
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH J SADLON whose telephone number is (571)270-5730. The examiner can normally be reached on M-F 8AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRIAN D MATTEI can be reached on (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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/JJS/
/ANNA M MOMPER/Supervisory Patent Examiner, Art Unit 3619
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