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 .
The amendment filed on 08 July 2026 in response to the non-final rejection mailed on 16 June 2026 has been considered. Claim(s) 13, 15-21, and 24-33 is/are pending. Claim(s) 1-12, 14, 22, and 23 has/have been canceled. Claim(s) 13, 15-21, and 24-33 has/have been examined in this action.
Drawings
It is noted that neither the drawings in the present application nor the parent application actually show the drywall in connection to the sealing device. It is also noted that one of ordinary skill in the art would know how the sealing device relates to the drywall as described. It is further noted that were Applicant to recite additional limitations which were not deemed inherent or obvious for the use of the drywall, that new matter rejections or drawings objections may be required. It is highly recommended that the relationship between the drywall and the sealing device beyond the absolute basic relationship be removed from the claims. The disclosure appears to be directed to the sealing device only, any further specific relationship between the sealing device, the drywall, the environment, etc. would be better suited in a continuation-in-part application which would enable the disclosure to be bolstered by figures specifically showing the system and the relationship between the structural elements. As limitations are added to the claims, the invention moves further into the idea of a combination/system claim and further from the disclosed sealing device.
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 “only a single sealing profile” per claims 13, 32, and 33 must be shown or the feature(s) canceled from the claim(s). 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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13, 15-21, and 24-33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 13, 32, and 33, the claims recite “only a single sealing profile” which is not described in the specification in such a way as to reasonably convey to one skilled in the art at the time the application was filed, had possession of the claim invention. As mentioned throughout prosecution history, the drawings as filed show an example of the sealing device sans any showing of the drywall or the joint formed between. Any mention of a recitation that is not specifically pointed out in the disclosure and which can be interpreted in more than one way will lead to issues under new matter since the invention is not entirely shown. The combination of elements involving the drywall can simply include a sheet of drywall installed on the device (which is actually not shown, but one of skill in the art can ascertain). Unfortunately, the drawings are very specific to the sealing device itself and do not expand upon use, environment, etc. and therefore unless fully pointed out within the disclosure to the extent that one reading can only interpret the limitations in a single way, the added limitations will lead to new matter situations.
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 13, 15-21, and 24-33 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 13, 32, and 33, the recitation “only a single sealing profile” renders the claim indefinite because it is unclear what this means exactly. Applicant is claiming a “Drywall” but since the figures and the disclosure lack a deeper description, the system cannot be limited to only a single profile since this is not taught, shown, and can lead to multiple interpretations as to what this entails. Does this mean there is only a single sealing profile on one side of the drywall? Does this mean that the entire system only has a single sealing profile? The disclosure does not provide a specific description to enable one to interpret this limitation.
Regarding claims 13, 32, and 33, the claim is directed to “Drywall” and line 3, the claim recites “and an adjacent cladding of the drywall”. Is the recitation of “an adjacent cladding of drywall” simply positively reciting the drywall or is it reciting an additional cladding the “Drywall” of line 1? Further the claims recite “the cladding”, “a first cladding”, and “a second cladding” which renders the claims indefinite because it is unclear what is being referenced. It appears one mention of cladding is referring to entire sheet of drywall, and other mentions of cladding are referring to a surface of a sheet of drywall.
Regarding 13, 15-21, and 24-33, the claims are directed to “Drywall” which is leading to more confusion as the prosecution advances for multiple reasons. First, the drawings show simply a sealing device without any interaction with drywall or other wall materials and a disclosure that is not in enough detail to provide specific interactions between the building materials and the sealing device. Second, the preamble directed to “Drywall” would lead one to think the claim is directed to a sheet of drywall, but the claims are claiming additional elements, and further at times read can be interpreted as including an entire wall system having multiple drywall sheets being called “a first cladding” and “a second cladding”. While interpreting the claim, the Office is going back and forth as to whether this claim is directed to a drywall system having multiple drywall sheets or simply a single sheet of drywall having a sealing device secured thereto. It seems as though the disclosure as original filed was intended to be directed to the sealing device specifically, but the claims are being expanded so to include a combination/system which is not effective taught or shown in the original filing.
Regarding 13, 32, and 33, is it necessary to claim that the sealing profile is constructed from polyethylene and further claim that the sealing profile “consists” of polyethylene foam?
Regarding claim 18, it is unclear how the sealing profile can “consist of compressible polyethylene foam” yet “consist of an intumescent foam material”. In order to be an intumescent foam material, the foam would have to include certain intumescent materials which would then mean that the profile does not “consist of” polyethylene foam.
Regarding claim 31, the claim appears to recite wherein “the sealing device consists of said sealing profile and said holding rail” but claim 1 seems to claim wherein the sealing device includes all elements recited including the cladding sheets. Does the sealing device only include the profile and holding rail, or is the cladding included?
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 13, 15, 16, 18, 20, 21, 24-300, 32, and 33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0030727 A1 to Klein et al.
Regarding claim 13, Klein et al. disclose drywall, comprising: a sealing device for at least one edge joint (Fig.1) formed between a floor, a wall, or a ceiling (20) and an adjacent cladding of the drywall (30), the sealing device comprising only a single sealing profile (3; a single sealing profile is used to secure to a single sheet of drywall) having a base body (3) for sealing the at least one edge joint on the cladding, a holding rail (10), a first cladding (outer surface of 30), which forms a first wall surface of the drywall, and a second cladding (inner surface of 30), which forms a second wall surface of the drywall opposite to the first wall surface, wherein the first cladding and the second cladding rest with a circumferential side in each case against a support of the base body (Fig.6), and wherein the sealing profile is constructed from compressible polyethylene foam (Paragraph [0016]), wherein the sealing profile does not have a sealing web extending away from the base body (3, Fig.1; the sealing profile itself is rectangular and does not have a sealing web formed therefrom), and wherein the sealing profile consists of the compressible polyethylene foam (Paragraph [0016], lines 15-19).
Regarding claim 15, wherein the sealing device is an extrusion profile (extrusion is deemed a product by process limitation; the polyethylene foam of Klein is capable of being extruded; the claims are examined based on the final product and not the process of forming the final product).
Regarding claim 16, wherein the edge joint is formed between a floor, a wall, or a ceiling and an adjusting cladding of drywall (Fig.6), sealed with the sealing device and wherein the sealing profile is formed in one piece (3).
Regarding claim 18, wherein the sealing profile consists of an intumescent foam material (Paragraph [0018]; claim 5).
Regarding claim 20, wherein the sealing profile is configured to compress in a vertical direction when installed between the holding rail and the drywall cladding (Figure 6 to Figure 8).
Regarding claim 21, wherein the compression of the sealing profile effects sealing in both vertical and lateral directions (compressing a foam compressible block will affect both vertical and horizontal directions).
Regarding claim 24, wherein the sealing profile is formed in one piece and is not constructed in layers (Paragraph [0016]).
Regarding claim 25, wherein the sealing profile is formed in one piece (3, Fig.2).
Regarding claim 26, wherein the sealing device is an extrusion profile (extrusion is deemed a product by process limitation; the polyethylene foam of Klein is capable of being extruded; the claims are examined based on the final product and not the process of forming the final product).
Regarding claim 27, wherein the sealing device is an extrusion profile (extrusion is deemed a product by process limitation; the polyethylene foam of Klein is capable of being extruded; the claims are examined based on the final product and not the process of forming the final product).
Regarding claim 28, wherein the sealing device provides the drywall with air, sound, smoke, temperature, moisture, and fire resistance (Abstract; further a foam is going to provide some resistance to air, temperature, and moisture due to permeability, etc.).
Regarding claim 29, wherein the sealing profile comprises at least partly open-cell foam (Paragraph [0016]).
Regarding claim 30, wherein the sealing device profile does not have a sealing or connecting web extending away from the base body (3, Fig.1; the sealing profile itself is rectangular and does not have a sealing web formed therefrom).
Regarding claim 32, Klein et al. disclose drywall, comprising: a sealing device (Fig.1) for at least one edge joint formed between a floor, a wall, or a ceiling and an adjacent cladding of the drywall (Fig.1), the sealing device comprising only a single sealing profile (3; a single sealing profile is used to secure to a single sheet of drywall) having a base body (3) for sealing the at least one edge joint on the cladding (30), a holding rail (10), a first cladding (outer surface of 30), which forms a first wall surface of the drywall, and a second cladding (inner surface of 30), which forms a second wall surface of the drywall opposite to the first wall surface, wherein the first cladding or the second cladding rest with a circumferential side against a support of the base body (Fig.6), wherein the sealing profile is constructed from compressible polyethylene foam (Paragraph [0016]), wherein the sealing profile does not have a sealing web extending away from the base body (3, Fig.1; the sealing profile itself is rectangular and does not have a sealing web formed therefrom), and wherein the sealing profile consists of the compressible polyethylene foam (Paragraph [0016], lines 15-19).
Regarding claim 33, Klein et al. disclose drywall, comprising: a sealing device (Fig.1) for at least one edge joint formed between a floor, a wall, or a ceiling and an adjacent cladding of the drywall (Fig.1), the sealing device comprising only a single sealing profile (3; a single sealing profile is used to secure to a single sheet of drywall) having a base body (3) for sealing the at least one edge joint on the cladding (30), a holding rail (10), a first cladding (outer surface of 30), which forms a first wall surface of the drywall, and optionally a second cladding (inner surface of 30), which forms a second wall surface of the drywall opposite to the first wall surface (Fig.6), wherein the first cladding or the second cladding if present rests with a circumferential side against a support of the base body (Fig.6), wherein the sealing profile is constructed from compressible polyethylene (Paragraph [0016]), wherein the sealing profile does not have a sealing web extending away from the base body (3, Fig.1; the sealing profile itself is rectangular and does not have a sealing web formed therefrom), and wherein the sealing profile consists of the compressible polyethylene foam (Paragraph [0016], lines 15-19).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0030727 A1 to Klein et al.
Regarding claim 31, Klein et al. disclose wherein the sealing profile is not sheathed (Paragraph [0016]) and does not have a slit (3).
Klein et al. do not specifically disclose a device consisting of a sealing profile and a holding rail.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have provided a sealing device formed from only a sealing profile and a holding rail when only sealing a single drywall cladding. One in ordinary skill in the art would have found it obvious to reduce the teachings of Klein to a sealing profile and holding rail only if used in an environment which did not need to seal the edge of a wall system having multiple drywall sheets.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0030727 A1 to Klein et al. in view of US 2009/0246498 A1 to Deiss.
Regarding claim 17, Klein et al. disclose wherein the sealing profile is made of polyethylene foam which is known to be either open-cell or closed-cell but does not disclose wherein the sealing profile comprises open-cell and closed-cell foam.
Deiss discloses forming a sealing profile from both open-cell and closed-cell foam (Paragraph [0023] and [0025]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have formed the sealing profile of Klein from an open-cell foam and a closed-cell foam as taught by Deiss so to provide the sealing profile with excellent recovery of an open-cell foam as well as increased moisture resistance, air resistance, and less porosity of a closed-cell foam.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0030727 A1 to Klein et al. in view of US 2017/0260741 A1 to Ackerman et al.
Regarding claim 19, Klein et al. do not disclose wherein the sealing device further comprising one or more intumescent strips.
Ackerman et al. disclose wherein the sealing device further comprising one or more intumescent strips (90, Paragraph [0035] and [0037]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have included the intumescent strips of Ackerman et al. into the sealing device of Klein et al. so to provide fire resistance to the drywall system, thereby preventing fire and smoke from quickly moving through the drywall.
Response to Arguments
Applicant’s arguments directed to the newly amended claims with respect to the rejection(s) of claim(s) 13, 32, and 33 have been fully considered and require a new grounds of rejection. However, upon further consideration, a new ground(s) of rejection is made in view of Klein.
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 RYAN D KWIECINSKI whose telephone number is (571)272-5160. The examiner can normally be reached Monday - Thursday from 8:30 am to 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at (571) 272-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RDK
/RYAN D KWIECINSKI/Primary Examiner, Art Unit 3635
Prosecution Insights