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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-4, 6, 7, 13-15 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robinson (US 10480654).
Regarding claim 1, Robinson discloses a joint-sealing strip 100 Fig. 9 comprising a foam material 120, 128, having two longitudinal sides as well as a top side that borders on a one joint flank 102 in the installed state of the joint-sealing strip, and an underside that borders on the opposite joint flank 104 in the installed state of the joint-sealing strip, wherein the foam material has an outer fire-protection layer 902 over a predetermined region, wherein the outer fire-protection layer has an intumescent material, wherein the outer fire-protection layer 134 is applied to at least a portion of at least one side of the joint sealing strip while the joint sealing strip is in a compressed state, and wherein, during expansion of the joint sealing strip in the joint the outer fire protection layer is capable of breaking up. However, Robinson fails to explicitly disclose the arrangement of the outer fire-protection layer 134 is applied. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the arrangement of the fire protection layer based on the desired location of protection and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japiske, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claim 2, Robinson discloses wherein the outer fire-protection layer 902 is arranged on the longitudinal side of the foam material 120, 128 that faces the exterior in the installed state of the joint-sealing strip 100 and/or on the longitudinal side of the foam material that faces the interior in the installed state of the joint-sealing strip.
Regarding claim 3, Robinson discloses wherein at least one inner fire-protection layer 134 extends parallel to the longitudinal sides within the foam material 120, 128 and/or wherein at least one inner fire-protection layer 134 extends parallel to the top side and underside within the foam material and/or wherein at least one inner fire-protection layer extends at a slant between the top side and underside within the foam material and/or wherein at least one inner fire-protection layer extends at a slant between the longitudinal sides within the foam material.
Regarding claim 4, Robinson discloses wherein at least one inner fire-protection layer 134 is arranged centrally within the foam material 120, 128 and/or wherein at least one inner fire-protection layer is arranged de-centrally within the foam material.
Regarding claim 6, Robinson discloses wherein the inner fire-protection layer (28) is a film into which the intumescent material is integrated, wherein the film is equipped to be adhesive on both sides.
Regarding claim 7, Robinson discloses wherein the outer fire-protection layer 902 having the intumescent material contains a binder (Col. 9, Ln. 6-10). Regarding claim 13, Robinson discloses wherein the outer fire-protection layer 134 Fig. 4 is connected to the inner fire-protection layer.
Regarding claim 15, Robinson discloses wherein the joint-sealing strip 100 is wound into a roll, in the compressed state prior to applying the outer fire-protection layer.
Regarding claim 17, Robinson discloses wherein the foam material 120, 128 has, over a predetermined region, at least one moisture-variable outer membrane layer 902 and/or, over a predetermined region, at least one moisture-variable inner membrane layer 134, wherein at least one of the outer membrane layer and the inner membrane layer (36) is arranged, at least in part, transverse to a water vapor diffusion direction. Regarding claim 18, Robinson discloses wherein the foam material 120, 128 is impregnated with an impregnation compound (abstract).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 8-12 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robinson.
Regarding claim 5, Robinson discloses the invention as claimed above but fails to explicitly disclose wherein at least one inner fire-protection layer extends on a curve configuration. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that the configuration of the claimed element was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed element was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)
Regarding claims 8-12, Robinson discloses the invention as claimed above but fails to explicitly disclose wherein expandable graphite can be used as the intumescent material. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention 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 used as a matter of obvious design choice. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)
Regarding claim 16, Robinson discloses the invention as claimed above but fails to explicitly disclose wherein the proportion of gaps 504 Fig. 5 in the surface provided with an outer fire-protection layer 134 in total, after partial or complete expansion of the joint-sealing strip 100, is 10 to 90%. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the proportion of gaps to any number of ranges (i.e. 10 to 90%) disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Allowable Subject Matter
Claim 19 is allowed.
The following is an examiner’s statement of reasons for allowance: In view of the Applicants amendments and a review of the prior art by the Examiner; the prior art of record neither teaches nor suggests all of the claimed subject matter of claim 19 including where the outer fire-protection layer that has an intumescent material, wherein a paste that contains a binder and the intumescent material is applied, at least in certain regions, to the one and/or the other longitudinal side of the compressed foam material that has been wound up into a roll, and subsequently dried, wherein the resulting continuous layer breaks up during expansion of the joint-sealing strip in the joint, so that gaps are formed in the outer fire-protection layer. There is no motivation to modify the prior art references, absent the applicant’s own disclosure, in the manner required by the claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissionsshould be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 1/20/26 have been fully considered but they are not persuasive. Applicant argues that the Robinson reference does not teach or suggest a gap-forming mechanism. This is not persuasive with respect to claim 1, since the Robinson reference disclose the all the structural limitations of the claim, with the exception of the arrangement of the fire protection layer. However, as stated above rearranging parts of an invention involves only routine skill in the art. Moreover, [A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Furthermore, Examiner notes that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. Applicant is advised that recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In other words, even if the prior art does not explicitly disclose the intended use or the function of the apparatus as written in the claims of the instant invention, the prior art may not be patentably distinguishable from the instant invention. Please see MPEP 2106 and 2114.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENE G BYRD whose telephone number is (571)270-1824. The examiner can normally be reached Monday-Friday 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina Fulton can be reached at 5712727376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EUGENE G BYRD/Primary Examiner, Art Unit 3675