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 .
Status of Claims
Claims 1-19 as filed on 1/17/2025 are pending and herewith considered as indicated below.
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 1-19 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.
In regards to Claims 1 and 10, “the insert” as recited in line 5 lacks proper
antecedent basis. It appears “the insert” is intended to recite “concrete joint insert”.
In regards to Claim 4, “the groove” as recited in line 1 lacks proper
antecedent basis. It appears Claim 4 is intended to be dependent on Claim 3 and not Claim 2. Claim 3 introduces “a groove” (recited in line 2) properly.
In regards to Claims 9 and 19, “ the selected shape” as recited in line 2 lacks proper antecedent basis. It appears “the selected shape” is intended to recite “a selected shape”.
In regards to Claim 10, “the location of an expansion joint” as recited in lines 5-6 lacks proper antecedent basis. It appears “the location of an expansion joint” is intended to recite “a location of an expansion joint”.
In regards to Claim 18, “the one of the longitudinal edges” as recited in line 2 lacks proper antecedent basis. It appears “the one of the longitudinal edges” is intended to recite “one of longitudinal edges”.
In regards to Claims 2-3, 5-8, and 11-18 rejected due to dependency on rejected independent claims.
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.
Claims 1-7, 9-16, 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Danna et al. (US-20180163393-A1)(Herein Danna) in view of Hagen (US-6491468-B1) and Dietlein et al. (US-5007765-A)(Herein Dietlein)
In regards to Claim 1, Danna discloses
A concrete joint insert (20) [Fig 1] comprising
a body [0023] having two end surfaces (34) [Fig 2], two side surfaces (36) [Fig 2], and an upper portion (30) [Fig 2], and
a sealant (28) [Figs 2-6] secured to the upper portion (30) [Fig 2] of the body [0023] so that the insert (20) [Fig 1] and the sealant (28) [Figs 2-6] can be simultaneously installed in a concrete joint [Abstract “the insert and the sealant can be simultaneously installed at the location of a concrete joint”].
However, Danna fails to disclose
wherein the upper portion of the body includes a securement feature in the upper portion;
a sealant applied to the securement feature;
wherein the sealant expands;
Furthermore, Hagen discloses
wherein the upper portion (30, Danna) [Fig 2] of the body [0023, Danna] includes a securement feature (124) [Figs 4 and 5] [Col 3, Lines 51-53] in the upper portion (30, Danna) [Fig 2]; and
a sealant (28, Danna) [Figs 2-6] applied to the securement feature (124) [Figs 4 and 5] [Col 3, Lines 51-53]
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the concrete joint insert by Danna to further include wherein the upper portion of the body includes a securement feature in the upper portion and a sealant applied to the securement feature as disclosed by Hagen. When modified, the securement feature with all limitations allow for an ease of securement between the sealant and insert [see Hagen, Col 3; Lines 55-61]
Furthermore, Dietlein discloses
wherein the sealant (28, Danna) [Figs 2-6] expands [Col 5, Lines 63-68]
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the concrete joint insert by Danna to further include wherein the sealant expands as disclosed by Dietlein. When modified, the expanding sealant allows for the sealant to expand and contract without failure when the joint faces move due to expansion and contraction, additionally, allowing for the sealant to further cover all space to allow for better placement and useability.
In regards to Claim 2, Danna as modified discloses
The concrete joint insert (20) [Fig 1] as recited in claim 1 wherein the sealant (28) [Figs
2-6] self levels [Abstract, “Self-leveling sealant”, Dietlein].
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the concrete joint insert by Danna to further include wherein the sealant self levels as disclosed by Dietlein. When modified, the self-levelling sealant allows for creating a smooth, uniform and watertight seal furthering increasing useability.
In regards to Claim 3, Danna as modified discloses
The concrete joint insert (20) [Fig 1] as recited in claim 1 wherein the upper portion (30) [Fig 2] of the body [0023] includes an upper surface (30) [Fig 2], and the securement feature (124, Hagen) [Figs 4 and 5] [Col 3, Lines 51-53] is a groove [As shown in Fig 4, Groove, claim 4 “Centrally Located Groove”, Hagen] on the upper surface (30) [Fig 2].
In regards to Claim 4, Danna as modified discloses
The concrete joint insert (20) [Fig 1] as recited in claim 2
However, Danna fails to disclose
The concrete joint insert as recited in claim 2 wherein the groove is tear dropped shaped
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 groove of Hagen to have tear dropped shape in shape in order to facilitate attachment between the sealant to the insert. When modified, the tear-dropped shape allows for secure attachment between the sealant and insert. In general, 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.
In regards to Claim 5, Danna as modified discloses
The concrete joint insert (20) [Fig 1] as recited in claim 1
Hagen discloses
wherein the securement feature (124) [Figs 4 and 5] [Col 3, Lines 51-53] is a reduced width portion [As shown, reduced width Fig 4] on the upper portion (30, Danna) [Fig 2] of the two side surfaces (36, Danna) [Fig 2].
In regards to Claim 6, Danna as modified discloses
The concrete joint insert (20) [Fig 1] as recited in claim 1 wherein the securement feature (124, Hagen) [Figs 4 and 5] [Col 3, Lines 51-53] is a passage [As shown, Fig 4, Hagen] that passes through the upper portion (30) [Fig 2] of the body [0023] between the two side surfaces (36) [Fig 2].
In regards to Claim 7, Danna as modified discloses
The concrete joint insert (20) [Fig 1] as recited in claim 1 wherein the body [0023] comprises rubber [0027, “the insert comprises recycled rubber”].
In regards to Claim 9, Danna as modified discloses
The concrete joint insert (20) [Fig 1] of claim 1, wherein the sealant (28) [Figs 2-6] has a melting temperature at which the sealant (28) [Figs 2-6] will at least partially melt and change from the selected shape to another configuration, and the melting temperature is above 160° F. [Claims 3 and 4, “wherein the sealant has a melting temperature at which the sealant will at least partially melt and change from the selected shape to another configuration” and “wherein the melting temperature is above 160° F.”]
In regards to Claim 10, Danna as modified discloses
A method [0011] of making a concrete expansion joint insert (20) [Fig 1], the method [0011] comprising:
establishing [Figs 1-2, Showing Body Established] a body [0023] having two end surfaces (34) [Fig 2], two side surfaces (36) [Fig 2], and an upper portion (30) [Fig 2]
securing [Showing Secured in Fig 8] a sealant (28) [Figs 2-6] secured [Showing Secured in Fig 8] to the upper portion (30) [Fig 2] of the body [0023] so that the insert (20) [Fig 1] and the sealant (28) [Figs 2-6] can be simultaneously [Abstract] installed at the location of an expansion joint (22) [Fig 1]
However, Danna fails to disclose
wherein the upper portion of the body includes a securement feature in the upper portion;
securing a sealant applied to the securement feature
expanding the sealant.
Furthermore, Hagen discloses
wherein the upper portion of the body [0023, Danna] includes a securement feature (124) [Figs 4 and 5] [Col 3, Lines 51-53] in the upper portion (30, Danna) [Fig 2];
securing [Showing Secured in Fig 8, Danna] a sealant (28, Danna) [Figs 2-6] applied to the securement feature (124) [Figs 4 and 5] [Col 3, Lines 51-53]
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the concrete joint insert by Danna to further include wherein the upper portion of the body includes a securement feature in the upper portion and a sealant applied to the securement feature as disclosed by Hagen. When modified, the securement feature with all limitations allow for an ease of securement between the sealant and insert [see Hagen, Col 3; Lines 55-61]
Furthermore, Dietlein discloses
expanding [Col 5, Lines 63-68, disclosing the sealant expands/expanding] the sealant (28, Danna) [Figs 2-6].
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of making a concrete expansion joint insert by Danna to further include expanding the sealant as disclosed by Dietlein. When modified, the expanding sealant allows for the sealant to expand and contract without failure when the joint faces move due to expansion and contraction, additionally, allowing for the sealant to further cover all space to allow for better placement and useability.
In regards to Claim 11, Danna as modified discloses
The method [0011] as recited in claim 10 wherein the sealant (28) [Figs 2-6] self levels [Abstract, “Self-leveling sealant”, Dietlein].
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of making a concrete expansion joint insert by Danna to further include wherein the sealant self levels as disclosed by Dietlein. When modified, the self-levelling sealant allows for creating a smooth, uniform and watertight seal furthering increasing useability.
In regards to Claim 12, Danna as modified discloses
The method [0011] as recited in claim 10 wherein the upper portion (30) [Fig 2] of the body [0023] includes an upper surface (30) [Fig 2]
Hagen discloses
and the securement feature (124) [Figs 4 and 5] [Col 3, Lines 51-53] is a passage [Fig 4, Showing Passage] on the upper surface (30) [Fig 2, Hagen].
In regards to Claim 13, Danna as modified discloses
The method [0011] as recited in claim 12
However, Danna fails to disclose
wherein the passage is tear dropped shaped
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 passage of Hagen to have tear dropped shape in shape in order to facilitate attachment between the sealant to the insert. When modified, the tear-dropped shape allows for secure attachment between the sealant and insert. In general, 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.
In regards to Claim 14, Danna as modified discloses
The method [0011] as recited in claim 10
Hagen discloses
wherein the securement feature (124) [Figs 4 and 5] [Col 3, Lines 51-53] is a reduced width portion [As shown in Fig 4, Reduced Width] on the upper portion (30, Danna) [Fig 2] of the two side surfaces (36, Danna) [Fig 2].
In regards to Claim 15, Danna as modified discloses
The method [0011] as recited in claim 10
Hagen discloses
wherein the securement feature (124) [Figs 4 and 5] [Col 3, Lines 51-53] is a passage [Fig 4, Showing Passage] that passes through the upper portion (30, Danna) [Fig 2] of the body [0023, Danna] between the two side surfaces (36, Danna) [Fig 2].
In regards to Claim 16, Danna as modified discloses
The method [0011] as recited in claim 10 wherein the body [0023] comprises rubber [0027, “the insert comprises recycled rubber”].
In regards to Claim 18, Danna as modified discloses
The method [0011] as recited in claim 10, comprising establishing the body [0023] before [Fig 8, Showing the body established before securing the sealant] [0011, 0039] securing the sealant (28) [Figs 2-6] to the one of the longitudinal edges (30) [Fig 2] .
In regards to Claim 19, Danna as modified discloses
The method [0011] as recited in claim 10, wherein the sealant (28) [Figs 2-6] has a melting temperature at which the sealant (28) [Figs 2-6] will at least partially melt and change from the selected shape to another configuration, and the melting temperature is above 160° F. [Claims 3 and 4, “wherein the sealant has a melting temperature at which the sealant will at least partially melt and change from the selected shape to another configuration” and “wherein the melting temperature is above 160° F.”]
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Danna et al. (US-20180163393-A1)(Herein Danna) in view of Hagen (US-6491468-B1), Dietlein et al. (US-5007765-A)(Herein Dietlein) and Baerveldt (US-6532708-B1)
In regards to Claim 8, Danna as modified discloses
The concrete joint insert (20) [Fig 1] as recited in claim 1
However, Danna fails to disclose
wherein the sealant comprises an expanding foam.
Furthermore, Baerveldt discloses
wherein the sealant (28, Danna) [Figs 2-6] comprises an expanding foam [Col 3, Lines 13-14].
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the concrete joint insert by Danna to further include wherein the sealant comprises an expanding foam as disclosed by Baerveldt. When modified, the sealant comprising an expanding foam allows for the expanding foam sealant will have to fill a greater void or distance between the faces of the joint. Due to its expanding nature, it will do so in relation to the movement experienced and thus come to a new "rest" position. [See Baerveldt, Col 3; lines 23-27]
In regards to Claim 17, Danna as modified discloses
The method [0011] as recited in claim 10
wherein the sealant comprises an expanding foam.
Furthermore, Baerveldt discloses
wherein the sealant (28, Danna) [Figs 2-6] comprises an expanding foam [Col 3, Lines 13-14].
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the concrete joint insert by Danna to further include wherein the sealant comprises an expanding foam as disclosed by Baerveldt. When modified, the sealant comprising an expanding foam allows for the expanding foam sealant will have to fill a greater void or distance between the faces of the joint. Due to its expanding nature, it will do so in relation to the movement experienced and thus come to a new "rest" position. [See Baerveldt, Col 3; lines 23-27]
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 ZAKARIA K. AL-ASWAR whose telephone number is (571)272-6335. The examiner can normally be reached M through F 7:30 to 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at 571-270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z.K.A./Examiner, Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
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