DETAILED ACTION
This is a first Office action on the merits, responsive to applicant’s original disclosure field on 1/17/2025, including the preliminary amendment filed on 7/11/2025. Claims 2-21 are pending. Claim 1 has been cancelled. No claims have been withdrawn. New claims 2-21 have been added.
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 IDS filed on 9/8/2025 is being considered.
Drawings
The drawings are objected to because of the following informalities:
Figures 1-19, the poor line quality renders part or all of the drawing illegible when reproduced. 37 CFR 1.84(l) (m) and (p)(1). 37 CFR 1.84(l) recites, “[a]ll drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.” Applicant is requested to submit replacement drawings that have darker lines.
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.
The drawings are objected to under 37 CFR 1.83(a). 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):
an elongate body of a fire-rated component comprising a non-metal material layer, a metal sheet layer attached to the non-metal material layer, a heat-expandable fire-resistant material layer attached to the metal sheet layer, a foam layer comprising an adhesive configured to secure the elongate body to the flange of the header track, and a release layer that covers the adhesive of the foam layer, as recited in claim 2. Note that the drawings do not depict an embodiment comprising each of the above elements.
No new matter should be entered.
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 Objections
Claim 6 is objected to because of the following informalities:
Claim 6, the claim is missing a transitional phrase between “Claim 2,” and “the non-metal”. This objection can be overcome by inserting “wherein”, such that the claim recites, “The fire-rated component of Claim 2, wherein the non-metal material layer extends over the heat-expandable fire-resistant material layer” or equivalent.
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.
Claim 4 is 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 4, “each edge of the heat-expandable fire-resistant material layer” is indefinite because the limitation lacks antecedent basis. Note that the claims do not require the heat-expandable fire-resistant material layer to have any edges. This rejection can be overcome by previously in the claims specifying that the heat-expandable fire-resistant material layer has a plurality of edges.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,312,802 (‘reference patent’) in view of Klein (US 20180283000). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent and the claims of the instant application are drawn to substantially the same invention, with minor differences in wording/phraseology, and the claims of the reference patent encompassing the scope of the claims of the instant application, but the reference patent does not recite a release layer (claim 2). However, such a release layer is known in the art. Klein teaches a fire safety tape 10 comprising a release layer 12. Klein’s release layer may be easily separated from a foam layer 14 prior to installation or application in either the field or at a manufacturing factory [0028]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the foam layer of the fire-rated component of the reference patent by incorporating a release layer, with the reasonable expectation of success of preventing premature adhesion prior to installation.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,421,417 (‘reference patent’) in view of Klein (US 20180283000). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent and the claims of the instant application are drawn to substantially the same invention, with minor differences in wording/phraseology, and the claims of the reference patent encompassing the scope of the claims of the instant application, but the reference patent does not recite a release layer (claim 2). However, such a release layer is known in the art. Klein teaches a fire safety tape 10 comprising a release layer 12. Klein’s release layer may be easily separated from a foam layer 14 prior to installation or application in either the field or at a manufacturing factory [0028]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the foam layer of the fire-rated component of the reference patent by incorporating a release layer, with the reasonable expectation of success of preventing premature adhesion prior to installation.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 10,753,084 (‘reference patent’) in view of Klein (US 20180283000). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent and the claims of the instant application are drawn to substantially the same invention, with minor differences in wording/phraseology, and the claims of the reference patent encompassing the scope of the claims of the instant application, but the reference patent does not recite a release layer (claim 2). However, such a release layer is known in the art. Klein teaches a fire safety tape 10 comprising a release layer 12. Klein’s release layer may be easily separated from a foam layer 14 prior to installation or application in either the field or at a manufacturing factory [0028]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the foam layer of the fire-rated component of the reference patent by incorporating a release layer, with the reasonable expectation of success of preventing premature adhesion prior to installation.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 11,866,932 (‘reference patent’) in view of Klein (US 20180283000) (‘Klein ‘000’) and further in view of Klein et al. (US 20160017599) (‘Klein ‘599’). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent and the claims of the instant application are drawn to substantially the same invention, with minor differences in wording/phraseology, and the claims of the reference patent encompassing the scope of the claims of the instant application, but the reference patent does not recite a release layer (claim 2), and a metal sheet layer (claims 2 and 15). However, such a release layer is known in the art. Klein ‘000 teaches a fire safety tape 10 comprising a release layer 12. Klein’s release layer may be easily separated from a foam layer 14 prior to installation or application in either the field or at a manufacturing factory [0028]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the foam layer of the fire-rated component of the reference patent by incorporating a release layer, with the reasonable expectation of success of preventing premature adhesion prior to installation. Further it is known in the art to use a metal sheet layer. Klein ‘599 teaches an insulating sealing element for head-of-wall joints, comprising a non-metal layer [0029] and a metal sheet layer [0026] attached to the non-metal material layer. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the elongate body of the fire-rated component to comprise a metal sheet layer attached to the non-metal material layer, with the reasonable expectation of success of using readily available, known materials to form the elongate body such that the elongate body has superior dimensional stability and increase fire resistance.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12,607,009 (‘reference patent’) in view of Klein (US 20180283000) (‘Klein ‘000’) and further in view of Klein et al. (US 20160017599) (‘Klein ‘599’). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent and the claims of the instant application are drawn to substantially the same invention, with minor differences in wording/phraseology, and the claims of the reference patent encompassing the scope of the claims of the instant application, but the reference patent does not recite a release layer (claim 2), and a metal sheet layer (claims 2 and 15). However, such a release layer is known in the art. Klein ‘000 teaches a fire safety tape 10 comprising a release layer 12. Klein’s release layer may be easily separated from a foam layer 14 prior to installation or application in either the field or at a manufacturing factory [0028]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the foam layer of the fire-rated component of the reference patent by incorporating a release layer, with the reasonable expectation of success of preventing premature adhesion prior to installation. Further it is known in the art to use a metal sheet layer. Klein ‘599 teaches an insulating sealing element for head-of-wall joints, comprising a non-metal layer [0029] and a metal sheet layer [0026] attached to the non-metal material layer. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the elongate body of the fire-rated component to comprise a metal sheet layer attached to the non-metal material layer, with the reasonable expectation of success of using readily available, known materials to form the elongate body such that the elongate body has superior dimensional stability and increase fire resistance.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 10,689,842 (‘reference patent’) in view of Klein (US 20180283000) (‘Klein ‘000’) and further in view of Klein et al. (US 20160017599) (‘Klein ‘599’). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent and the claims of the instant application are drawn to substantially the same invention, with minor differences in wording/phraseology, and the claims of the reference patent encompassing the scope of the claims of the instant application, but the reference patent does not recite a release layer (claim 2), a metal sheet layer (claims 2 and 15), and a foam layer comprising an adhesive (claim 2). However, such a release layer applied over foam and adhesive is known in the art. Klein ‘000 teaches a multilayer fire safety tape and related fire retardant building construction framing members, comprising a fire safety tape 10 comprising a foam 14 comprising an adhesive 16 and a release layer 12, the foam layer comprising, the release layer covers the adhesive of the foam layer. Klein’s release layer may be easily separated from a foam layer 14 prior to installation or application in either the field or at a manufacturing factory [0028]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the fire-rated component of the reference patent by incorporating a foam material, adhesive layer and release layer as claimed, with the reasonable expectation of success of using readily available, known materials to form the fire-rated component to secure the fire-rated component in place and to prevent premature adhesion prior to installation. Further it is known in the art to use a metal sheet layer. Klein ‘599 teaches an insulating sealing element for head-of-wall joints, comprising a non-metal layer [0029] and a metal sheet layer [0026] attached to the non-metal material layer. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the elongate body of the fire-rated component to comprise a metal sheet layer attached to the non-metal material layer, with the reasonable expectation of success of using readily available, known materials to form the elongate body such that the elongate body has superior dimensional stability and increase fire resistance.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,954,670 (‘reference patent’) in view of Klein (US 20180283000) (‘Klein ‘000’) and further in view of Klein et al. (US 20160017599) (‘Klein ‘599’). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent and the claims of the instant application are drawn to substantially the same invention, with minor differences in wording/phraseology, and the claims of the reference patent encompassing the scope of the claims of the instant application, but the reference patent does not recite a release layer (claim 2), a metal sheet layer (claims 2 and 15), and a foam layer comprising an adhesive (claim 2). However, such a release layer applied over foam and adhesive is known in the art. Klein ‘000 teaches a multilayer fire safety tape and related fire retardant building construction framing members, comprising a fire safety tape 10 comprising a foam 14 comprising an adhesive 16 and a release layer 12, the foam layer comprising, the release layer covers the adhesive of the foam layer. Klein’s release layer may be easily separated from a foam layer 14 prior to installation or application in either the field or at a manufacturing factory [0028]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the fire-rated component of the reference patent by incorporating a foam material, adhesive layer and release layer as claimed, with the reasonable expectation of success of using readily available, known materials to form the fire-rated component to secure the fire-rated component in place and to prevent premature adhesion prior to installation. Further it is known in the art to use a metal sheet layer. Klein ‘599 teaches an insulating sealing element for head-of-wall joints, comprising a non-metal layer [0029] and a metal sheet layer [0026] attached to the non-metal material layer. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the elongate body of the fire-rated component to comprise a metal sheet layer attached to the non-metal material layer, with the reasonable expectation of success of using readily available, known materials to form the elongate body such that the elongate body has superior dimensional stability and increase fire resistance.
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) 15 and 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klein et al. (US 20160017599) (‘Klein ‘599’).
Claim 15, Klein ‘599 provides a fire-rated head-of-wall assembly that allows dynamic movement, comprising:
a header track 20 coupled to an overhead structure 10, the header track having a web 21 and first and second flanges (each 22) extending from the web in a same direction away from the overhead structure (Fig. 7), wherein the web and the first and second flanges define an interior space (space defined by 21 and 22; Fig. 7);
a stud coupled to the header track (“wall studs (not shown) are received in the header track”; [0063]), an upper end of the stud located in the interior space between the first and second flanges (it is understood that an upper end of the stud is located in the interior space; [0063]);
a wall board 23 coupled to the stud (“wallboard 23 is attached to the studs” [0063]; Fig. 7);
a deflection gap formed between an upper end of the wall board and the overhead structure (Fig. 7), the deflection gap being variable between a closed position and an open position relative to one another (it is understood that the gap is variable between a closed position and an open position relative to one another; [0023]-[0024]; “cover layer 2 supports movement of the wallboard 23” [0066]; Fig. 7);
a fire-rated component 1 for sealing the deflection gap (“sealing strip” [0063]), the fire-rated component comprising:
a non-metal layer (cover layer may comprise one or more of inorganic fibers such as glass fibers and inorganic film; [0029]);
a metal layer (the cover layer may additionally comprise a foil such as an aluminum foil [0029]);
a foam layer (element 6 or element 7 each constitutes an additional insulating element or layer that may comprise “foam” [0046]-[0048]); and
a heat-expandable fire-resistant material layer (the other of element 6 and element 7 may comprise a heat-expandable fire-resistant material; “when the temperature rises the intumescent material will expand” [0046] and “additional fire protection” [0046]);
wherein the fire-rated component is positioned between the wall board and one of the first and second flanges of the header track within the deflection gap (Fig. 7), wherein the wall board at least partially overlaps the fire-rated component in the open position and the closed position of the deflection gap (“the sealing strip will stay in place and will not follow the movement of the wallboard 23” [0066]; Fig. 7).
Claim 18, Klein ‘599 further provides wherein the fire-rated component contacts the overhead structure (Fig. 7).
Claim 19, Klein ‘599 further provides wherein the wall board at least partially overlaps the metal layer in the open position (Fig. 7).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-9 and 13-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klein et al. (US 20160017598) (‘Klein ‘598’) in view of Pilz et al. (US 20130118102) (‘Pilz’).
Claim 2, Klein ‘598 teaches a fire-rated component 1 for sealing a head of wall gap, the fire-rated component comprising:
an elongate body (body of 1) comprising a lower planar portion (lower planar portion of 1, as shown in Figs. 2-4) and an upper planar portion (upper planar portion of 1, as shown in Figs. 2-4), the elongate body configured to be secured to a flange of a header track of a wall assembly between a wall board and a flange of the header track within the head of wall gap such that the wall board at least partially overlaps the lower planar portion of the elongate body in an open position and a closed position of the head of wall gap (note that the elongate body is not required to be secured to anything, as exceedingly broadly claimed, but that the elongate body is suitable to be secured to a flange 22 of a header track 20 of a wall assembly between a wall board 23 and a flange 22 of the header track; Figs. 2-4), the elongate body further comprising:
a non-metal material layer (layer of cover layer 3 comprising inorganic material, such as glass fibers [0034]);
a metal sheet layer attached to the non-metal material layer (layer of cover layer 3 comprising a metallic film such as aluminum foil [0034] or alternatively metal wires [0037] attached to the non-metal material layer [0034]);
a heat-expandable fire-resistant material layer (at least one of 5, 6 and 7; “when the temperature rises the intumescent material will expand” [0030]) attached to the metal sheet layer (Figs. 1-2);
a layer (at least another one of 5, 6 and 7) comprising an adhesive (“self-adhesive material” [0029] and [0038]; or alternatively “adhesive layer” [0046]) configured to secure the elongate body to the flange of the header track; and
a release layer (“detachable release layer” [0038]) that covers the adhesive of the layer [0038].
Klein ‘598 does not teach the layer comprising the adhesive as being a foam layer.
However, Pilz teaches a wall gap fire block device comprising a sealing strip comprising a foam layer 14 comprising an adhesive layer 24 applied thereto for connection to a header track (30; Fig. 2). The sealing strip also includes a release layer 16. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the material of the layer comprising the adhesive to be a foam layer, with the reasonable expectation of success of using a known material that is fire-resistant, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim 3, Klein ‘598 and Pilz teach all the limitations of claim 2 as above. Although Klein ‘598 teaches the metal layer being located on the non-metal layer [0029], Klein ‘598 does not explicitly specify that the heat-expandable fire-resistant material layer covers an entirety of the metal sheet layer in a height direction of the elongate body. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the proportions of the heat-expandable fire-resistant material layer and the metal sheet layer such that the heat-expandable fire-resistant material layer covers an entirety of the metal sheet layer in a height direction of the elongate body, with the reasonable expectation of success of permitting the metal sheet layer to support the heat-expandable fire-resistant material layer during elevated temperatures, since such a modification would have involved a mere change in proportion. A change in proportion is generally recognized as being within the level of ordinary skill in the art. 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), the Federal Circuit 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.
Claim 4, Klein ‘598 further teaches wherein the non-metal material layer extends beyond each edge of the heat-expandable fire-resistant material layer in the height direction of the elongate body (it is understood that the non-metal material layer of layer 3 extends beyond each edge of the heat-expandable fire-resistant material layer 6 or 7 in the height direction of the elongate body; Figs. 1-2).
Claim 5, Klein ‘598 further teaches wherein a thickness of the heat-expandable fire-resistant material layer is greater than a thickness of the metal sheet layer (Figs. 1-2). In the event that applicant disagrees, it would have been obvious of ordinary skill in the art, before the effective filing date of the invention, to modify the proportions of thicknesses such that a thickness of the heat-expandable fire-resistant material layer is greater than a thickness of the metal sheet layer, with the reasonable expectation of success of providing an amount of the heat-expandable fire-resistant material layer that is sufficient to be fire resistant depending on various requirements of installations, since such a modification would have involved a mere change in proportion. A change in proportion is generally recognized as being within the level of ordinary skill in the art. 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), the Federal Circuit 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.
Claim 6, Klein ‘598 further teaches [wherein] the non-metal material layer extends over the heat-expandable fire-resistant material layer (Figs. 1-2).
Claim 7, Klein ‘598 further teaches wherein the non-metal material layer comprises vinyl, polyethylene, or polyvinyl chloride [0033].
Claim 8, Klein ‘598 and Pilz teach all the limitations of claim 2 as above. Klein ‘598 does not teach the non-metal material layer being a foam layer. However, Klein ‘598 teaches that the non-metal material layer can be any suitable material ([0033]-[0034]). Pilz teaches that it is known to use a foam layer in a fire-rated component [0029]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify that material of the non-metal material layer to be a foam layer, with the reasonable expectation of success of using a known, readily available material to form the non-metal material layer, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim 9, Klein ‘598 further teaches wherein the heat-expandable fire-resistant material layer comprises an intumescent material ([0030]; [0032]; claims 5-6).
Claim 13, Klein ‘598 further teaches wherein the heat-expandable fire-resistant material layer is attached to the metal sheet layer with an adhesive (it is understood that the heat-expandable fire-resistant material layer can be self-adhesive [0029], [0032] or alternatively an adhesive layer 9 can be used [0062]).
Claim 14, Klein ‘598 further teaches wherein the heat-expandable fire-resistant material layer is an adhesive tape (“tape” [0027]).
Claim 15, Klein ‘598 teaches a fire-rated head-of-wall assembly that allows dynamic movement, comprising:
a header track 20 coupled to an overhead structure 10, the header track having a web 21 and first and second flanges (each 22) extending from the web in a same direction away from the overhead structure (Figs. 2-4), wherein the web and the first and second flanges define an interior space (space defined by 21 and 22; Figs. 2-4);
a stud coupled to the header track (“wall studs (not shown) are received in the header track”; [0063]), an upper end of the stud located in the interior space between the first and second flanges (it is understood that an upper end of the stud is located in the interior space; [0063]);
a wall board 23 coupled to the stud (“wallboard 23 is attached to the studs” [0063]; Figs. 2-4);
a deflection gap formed between an upper end of the wall board and the overhead structure (Figs. 2-4), the deflection gap being variable between a closed position and an open position relative to one another (it is understood that the gap is variable between a closed position and an open position relative to one another; [0023]-[0024]; “cover layer 2 supports movement of the wallboard 23” [0066]; Figs. 2-4);
a fire-rated component 1 for sealing the deflection gap (“sealing strip” [0063]), the fire-rated component comprising:
a non-metal layer (cover layer may comprise one or more of inorganic fibers such as glass fibers and inorganic film; [0034]);
a metal layer (the cover layer may additionally comprise a foil such as an aluminum foil [0034]);
a layer (element 6 or element 7 each constitutes an additional insulating element or layer); and
a heat-expandable fire-resistant material layer (the other of element 6 and element 7 may comprise a heat-expandable fire-resistant material; “when the temperature rises the intumescent material will expand” [0046] and “additional fire protection” [0046]);
wherein the fire-rated component is positioned between the wall board and one of the first and second flanges of the header track within the deflection gap (Fig. 4), wherein the wall board at least partially overlaps the fire-rated component in the open position and the closed position of the deflection gap (“the sealing strip will stay in place and will not follow the movement of the wallboard 23” [0066]; Fig. 4).
Klein ‘598 does not teach the layer being a foam layer.
However, Pilz teaches a wall gap fire block device comprising a sealing strip comprising a foam layer 14 comprising an adhesive layer 24 applied thereto for connection to a header track (30; Fig. 2). The sealing strip also includes a release layer 16. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the material of the layer comprising the adhesive to be a foam layer, with the reasonable expectation of success of using a known material that is fire-resistant, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim 16, Klein ‘598 and Pilz teach all the limitations of claim 15 as above. Although Klein ‘598 teaches the metal layer being located on the non-metal layer [0029], and appears to further teach the heat-expandable fire-resistant material layer being located between the metal layer and the one of the first and second flanges (Klein ‘598 element 6 is located on element 2 that contains the metal layer, and element 2 abuts against the flange, as shown in Fig. 7), Klein ‘598 does not explicitly specify that the heat-expandable fire-resistant material layer is located between the metal layer and the one of the first and second flanges. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to locate the heat-expandable fire-resistant material layer between the metal layer and the one of the one of the first and second flanges, with the reasonable expectation of success of permitting the metal layer to support the heat-expandable fire-resistant material layer during elevated temperatures, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim 17, Klein ‘598 and Pilz teach all the limitations of claim 15 as above. Although Klein ‘598 teaches the metal layer being located on the non-metal layer [0029], and appears to further teach the non-metal layer being located between the wall board and the metal layer (Fig. 7), Klein ‘598 does not explicitly specify that the non-metal layer is located between the wall board and the metal layer. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to locate the non-metal layer between the wall board and the metal layer, with the reasonable expectation of success of permitting expansion of the material to seal the gap in the event of a fire, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim 18, Klein ‘598 further teaches wherein the fire-rated component contacts the overhead structure (Fig. 4).
Claim 19, Klein ‘598 further teaches wherein the wall board at least partially overlaps the metal layer in the open position (Fig. 4).
Claim 20, Klein ‘598 further teaches the fire-rated component having a height (height of 1; [0027]; Fig. 1). Klein ‘598 does not specify the height being between one to four inches. Klein ‘598 teaches the height being variable based on a width [0027]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to form the fire-rated component having a height of between one to four inches, with the reasonable expectation of being sized appropriately to serve as a firestop means to sufficiently seal the joint between the header track and the sealing ([0027]-[0028]; Fig. 7), 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.
Claim 21, Klein ‘598 and Pilz teach all the limitations of claim 15 as above. Klein ‘598 does not specify that the non-metal layer is a foam layer. Klein ‘598 teaches the non-metal layer being a material that is non-combustible (i.e. fire resistant), and can comprise fabric, glass, stone, ceramic or an other suitable material. Pilz, however teaches a sealing strip comprising a non-metal layer comprising a foam layer (foam strip 14). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the material of the non-metal layer by using a foam material to form a foam layer, with the reasonable expectation of success of using a known, readily available fire-resistant material to form the non-metal layer, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klein et al. (US 20160017598) (‘Klein ‘598’) in view of Pilz et al. (US 20130118102) (‘Pilz’) and further in view of Stahl, Jr. et al. (US 20150354210) (‘Stahl’).
Claim 10, Klein ‘598 and Pilz teach all the limitations of claim 2 as above. Klein ‘598 does not teach an air gap between a portion of the non-metal material layer and the heat-expandable fire-resistant material layer. However, Stahl teaches a fire-rated component comprising an air gap between a portion of a non-metal material layer 54 and a heat-expandable fire-resistant material layer 64 (Figs. 2-4). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the installed configuration of the fire-rated component such that there is an air gap between a portion of the non-metal material layer and the heat-expandable fire-resistant material layer, with the reasonable expectation of success of further suppressing undesired sound waves, smoke, fire or the like (Stahl [0021]), and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klein et al. (US 20160017598) (‘Klein ‘598’) in view of Pilz et al. (US 20130118102) (‘Pilz’) and further in view of Foerg (US 10220226).
Claims 11-12, Klein ‘598 and Pilz teach all the limitations of claim 2 as above. Although Klein ‘598 teaches the metal sheet layer being attached to the non-metal material layer, Klein ‘598 does not specify that such attachment comprises an adhesive, wherein the adhesive is an adhesive tape. However, Foerg teaches a fire-protection tape placed into gaps in walls or ceilings of buildings having two layers that are attached with an adhesive comprising an adhesive tape (col. 3, lines 45-50; claim 13). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to use a known attachment means of an adhesive tape to attach the metal sheet layer to the non-metal material layer with the reasonable expectation of success of obtaining a secure attachment.
Claim(s) 16-17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klein et al. (US 20160017599) (‘Klein ‘599’).
Claim 16, Klein ‘599 teaches all the limitations of claim 15 as above. Although Klein ‘599 teaches the metal layer being located on the non-metal layer [0029], and appears to further teach the heat-expandable fire-resistant material layer being located between the metal layer and the one of the first and second flanges (Klein ‘599 element 6 is located on element 2 that contains the metal layer, and element 2 abuts against the flange, as shown in Fig. 7), Klein ‘599does not explicitly specify that the heat-expandable fire-resistant material layer is located between the metal layer and the one of the first and second flanges. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to locate the heat-expandable fire-resistant material layer between the metal layer and the one of the one of the first and second flanges, with the reasonable expectation of success of permitting the metal layer to support the heat-expandable fire-resistant material layer during elevated temperatures, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim 17, Klein ‘599 teaches all the limitations of claim 15 as above. Although Klein teaches the metal layer being located on the non-metal layer [0029], and appears to further teach the non-metal layer being located between the wall board and the metal layer (Fig. 7), Klein does not explicitly specify that the non-metal layer is located between the wall board and the metal layer. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to locate the non-metal layer between the wall board and the metal layer, with the reasonable expectation of success of permitting expansion of the material to seal the gap in the event of a fire, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim 20, Klein ‘599 teaches all the limitations of claim 15 as above. Klein further teaches the fire-rated component having a height (height of 1; [0027]; Fig. 1). Klein does not specify the height being between one to four inches. Klein ‘599 teaches the height being variable based on a width [0027]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to form the fire-rated component having a height of between one to four inches, with the reasonable expectation of being sized appropriately to serve as a firestop means to sufficiently seal the joint between the header track and the sealing ([0027]-[0028]; Fig. 7), 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.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klein et al. (US 20160017599) (‘Klein ‘599’) in view of Pilz et al. (US 20110113709) (‘Pilz’).
Claim 21, Klein ‘599 teaches all the limitations of claim 15 as above, but does not specify that the non-metal layer is a foam layer. Klein ‘599 teaches the non-metal layer being a material that is non-combustible (i.e. fire resistant), and can comprise fabric, glass, stone, ceramic or an other suitable material. Pilz, however teaches a sealing strip comprising a non-metal layer comprising a foam layer (foam strip 14). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the material of the non-metal layer by using a foam material to form a foam layer, with the reasonable expectation of success of using a known, readily available fire-resistant material to form the non-metal layer, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635
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