emseal patent 8,813,449 final office action rejection

Office Action in Ex Parte Reexamination

Control No. 90/013,428

Examiner JEFFREY L. GELLNER

Patent Under Reexamination 8813449

Art Unit

3993

AIA (First Inventor to File) Status No

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -

a. [8] Responsive to the communication(s) filed on 7 March 2016.

D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .

b. [8J This action is made FINAL.

c. D A statement under 37 CFR 1.530 has not been received from the patent owner.

A shortened statutory period for response to this action is set to expire g month(s) from the mailing date of this letter. Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c). If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days will be considered timely.

Part I THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:

1.

2.

D Notice of References Cited by Examiner, PT0-892.

[8J Information Disclosure Statement, PTO/SB/08.

3.

4.

D Interview Summary, PT0-474.

Part II SUMMARY OF ACTION

1 a. [8J Claims 1-6,8-18,20-24 and 26-34 are subject to reexamination.

1 b. D Claims __ are not subject to reexamination.

D

2. [8J Claims 7, 19 and 25 have been canceled in the present reexamination proceeding.

3. D Claims __ are patentable and/or confirmed.

4. [8J Claims 1-6,8-18,20-24 and 26-34 are rejected.

5. D Claims __ are objected to.

6. D The drawings, filed on __ are acceptable.

7. D The proposed drawing correction, filed on __ has been (7a) D approved (7b) D disapproved.

8. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).

a) D All b) D Some* c) D None of the certified copies have

1 D been received.

2 D not been received.

3 D been filed in Application No. __ .

4 D been filed in reexamination Control No. __

5 D been received by the International Bureau in PCT application No. __ .

* See the attached detailed Office action for a list of the certified copies not received.

9. D Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C. D. 11,453 O.G. 213.

1 0. D Other: __

cc: Requester (if third party requester) U.S. Patent and Trademark Office

PTOL-466 (Rev. 08-13) Office Action in Ex Parte Reexamination Part of Paper No. 20160426

stevenrobinson

Highlight

stevenrobinson

Highlight

stevenrobinson

Highlight

stevenrobinson

Highlight

stevenrobinson

Highlight

stevenrobinson

Highlight

UNITED STA TES p A TENT AND TRADEMARK OFFICE

APPLICATION NO. FILING DATE

90/013,428 01/16/2015

128258 7590 05/06/2016

MKG,LLC 306 Industrial Park Road, Suite 206 Middletown, CT 06457

FIRST NAMED INVENTOR

8813449

UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS

P.O. Box 1450 Alexandria., Virginia 22313-1450 www .uspto.gov

ATTORNEY DOCKET NO. CONFIRMATION NO.

14-189-SR 4204

EXAMINER

GELLNER, JEFFREY L

ART UNIT PAPER NUMBER

3993

MAIL DATE DELIVERY MODE

05/06/2016 PAPER

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

PTOL-90A (Rev. 04/07)

DO NOT USE IN PALM PRINTER

(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)

Lambert & Associates 92 State St., Suite 200 9Boston, MA 02109

Commissioner for Patents United States Patent and Trademark Office

P.O. Box 1450 Alexandria, VA 22313-·1450

W"W."I.IJ:.'=ptO.QOV

EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM

REEXAMINATION CONTROL NO. 90/013.428.

PATENT NO. 8813449.

ART UN IT 3993.

Enclosed is a copy of the latest communication from the United States Patent and Trademark Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).

Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a reply has passed, no submission on behalf of the ex parte reexamination requester will be acknowledged or considered (37 CFR 1.550(g)).

PTOL-465 (Rev.07-04)





Art Unit

3993









1.

2.



3.

4.





D









1 D been received.







1 0. D Other: __



Application/Control Number: 90/013,428

Art Unit: 3993

Page 2

The present application is being examined under the pre-AIA first to invent provisions.

DETAILED ACTION

A substantial new question (SNQ) of patentability affecting claims 1-17 pf US 8,813,449

Bl ("Hensley") is raised by the present request for ex parte reexamination. Claims 18-25 were

added in the amendment received 1 July 2015; claims 26-34 were added in the amendment

received 7 March 2016. The non-cancelled claims of claims 1-34 are the subject of this office

action.

Claim Rejections - 35 USC § 103

The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all

obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Claims 1-6, 8-18, 20-24, and 26-34 are rejected under pre-AIA 35 U.S.C. 103(a) as being

unpatentable over Baerveldt (US 6,532,708 B 1; 1st patent on Request's IDS; Baerveldt '708) in

view of Illger et al. (US 4,288,559; 3rd patent on IDS of 8/27/2015; "Illger").

As to claim 1, Baerveldt '708 discloses

a cover plate ( 4 of Figs. 3 and 4 );

a spline (2 of Figs. 3 and 4) attached to the cover plate along a first edge of the spline;


Art Unit: 3993

Page 3

a first foam (3 of Figs. 3 and 4) in a compressed state which is less than fully expanded

("pre-compressed" of col. 3, lines 10-15) having a material infused ( from "impregnated

expanding foam" of col. 3, lines 9-15) therein located on a first face of the spline;

a second foam (3 of Figs. 3 and 4) in the compressed state ("pre-compressed" of col. 3,

lines 10-15) having a material infused ( from "impregnated expanding foam" of col. 3, lines 9-15)

therein located on a second face of the spline;

wherein the spline depends from the cover plate and is positioned in a gap between

substantially coplanar substrates such that the cover plate overlies the gap (shown in Figs. 3 and

4); and

wherein the first foam is compressed between the first face of the spline and one of the

coplanar substrates and the second foam is compressed between the second face of the spline

and the other of the coplanar substrates (shown in Figs. 3 and 4). The cover plate and spline

capable of withstanding exposure of a temperature 540° C or greater for about five minutes

(from col. 5, lines 25-60) in that these metals are considered capable of withstanding exposure of

a temperature 540° C or greater for about five minutes). The system able to accommodate

movement of the substrates by compressing and expanding while maintaining the compressed

state (from col. 3, lines 16-29; from col. 2, lines 25-35).

Not disclosed is the infused material being a fire retardant that allows the foam to be

capable of withstanding exposure to a temperature of about 540° C or greater for about five

minutes, and the infused foam having a density in a range of 200 kg/m3 to 700 kg/m3 in the

compressed state.


Art Unit: 3993

Illger, however, discloses a polyurethane foam with a fire retardant, aluminium

Page 4

hydroxide, infused in the foam (col. 2, lines 25-33; col. 4, line 66 to col. 5, line 2), and Illger

further discloses an infused foam density of 100 kg/m3 (col. 2, lines 24-33, of Illger). Illger's

infused foam would meet the claimed temperature requirement since the retardant is aluminium

hydroxide (considered to be Al(OHh) the same as aluminum tri-hydrate that is used in the

claimed invention.

It would have been obvious to one of ordinary skill in the art at the time of the invention

to modify the system of Baerveldt '708 by adding the fire retardant of Illger to the foam so as to

use a foam with excellent fire retardant properties (from abstract of Illger) when required; or, in

the alternative to substitute Baerveldt '708's foam with the foam oflllger so as to use a foam

with desirable mechanical and excellent fire retardant properties (from abstract of Illger) when

required. Finally, it would have been obvious to one of ordinary skill in the art at the time of the

invention to further modify the system ofBaerveldt '708 and Illger by having the compression

foam a density of 200 kg/m3 to 700 kg/m3 depending upon use and requirements of the system.

As to claim 2, Baerveldt '708 and Illger further disclose ratio of fire retardant material

infused into the first foam and the second foam is in a range of about 3.5: 1 to about 4: 1 (from

"10 to 800%" that corresponds to 0.1:1 to 8:1 oflllger).

As to claim 3, Baerveldt '708 and Illger further disclose the fire retardant being

aluminum tri-hydrate (Illger at col. 2, lines 25-33).

As to claim 4, Baerveldt '708 and Illger further disclose wherein the first foam and the

second foam each comprise open celled foam (Baerveldt '708 at col. 3, lines 7-28, in that


Art Unit: 3993

"GREYFLEX " is open-celled) comprising a plurality of laminations into which the fire-

retardant material is infused (implied).

Page 5

As to claim 5, Baerveldt '708 and Illger further disclose wherein each of the first foam

and the second foam comprises a block of foam (shown in Baerveldt '708).

As to claim 6, Baerveldt '708 and Illger further disclose wherein the spline is of

monolithic construction (2 of Fig. 3 of Baerveldt '708).

As to claim 8, Baerveldt '708 as modified by Illger further disclose a layer of elastomer

(10 of Fig. 7 of Baerveldt) on a surface of at least one of the first foam and the second foam.

As to claims 9 and 10, Baerveldt '708 as modified by Illger further disclose wherein the

first foam and the second foam each comprise open celled foam comprising a plurality of

laminations into which the fire- retardant material is infused (Figs. 8-10 of Baerveldt '708). It

would have been obvious to one of ordinary skill in the art at the time of the invention to further

modify Baerveldt and Sealtite by using infused laminations as disclosed by Baerveldt so as to

assist in compression recovery (from Baerveldt at col. 4, lines 61-66).

As to claim 11, Baerveldt '708 as modified by Illger further disclose wherein the

laminations are oriented, with respect to the direction in which the joint extends, in at least one

of a parallel orientation, a perpendicular orientation, and a combination thereof (Baerveldt '709

shows parallel).

As to claim 12, Baerveldt '708 as modified by Illger further disclose the fire and water

resistance expansion joint capable of withstanding exposure to a temperature of about 930°C for

about one hour (Illger' s infused foam would meet the claimed temperature requirement since the


Art Unit: 3993

Page 6

retardant is aluminium hydroxide (considered to be Al(OHh) the same as aluminum tri-hydrate

that is used in the claimed invention).


resistance expansion joint capable of withstanding exposure to a temperature of about 1010°C

for about two hours (Illger's infused foam would meet the claimed temperature requirement

since the retardant is aluminium hydroxide (considered to be Al(OH)3) the same as aluminum tri-

hydrate that is used in the claimed invention).



for about eight hours (Illger' s infused foam would meet the claimed temperature requirement



As to claim 15, Baerveldt '708 and Illger further disclose ratio of fire retardant material

infused into the first foam and the second foam is in a range of about 3.5: 1 to about 4: 1 (from

"10 to 800%" that corresponds to 0.1:1 to 8:1 oflllger).

As to claim 16, Baerveldt '708 as modified by Illger further disclose wherein the spline

comprises a non-conductive material ("plastics" of Baerveldt '708 at col. 5, lines 47-58).

As to claim 17, Baerveldt '708 as modified by Illger further disclose wherein the spline

includes a first member and a second member joined edge-to-edge with the first member, the

first member being attached to the cover plate along an edge opposite the second member (Fig. 5

of Baerveldt '708).


Art Unit: 3993

Page 7

As to claim 26, Baerveldt '708 as modified by Illger further disclose an infused density of

10 to 100 kg/m3 (Illger at col. 2, lines 25-33). It would have been obvious to one of ordinary

skill in the art at the time of the invention to further modify the system ofBaerveldt '708 and

Illger by having a compressed density of 400 kg/m3 to 700 kg/m3 depending upon use and

requirements of the system.




Illger by having a compressed density of 400 kg/m3 to 450 kg/m3 and to pass UL2079 testing

standards depending upon use and requirements of the system.

As to claim 32, Baerveldt '708 as modified by Illger further disclose a water resistant

layer on the surface of the first and second foams (10 of Fig. 7 ofBaerveldt '708).

As to claims 18, 20, and 24, Baerveldt '708 discloses

a cover plate ( 4 of Figs. 3 and 4 );

a spline (2 of Figs. 3 and 4) attached to the cover plate along a first edge of the spline;

a first foam (3 of Figs. 3 and 4) in a compressed state which is less than fully expanded

("pre-compressed" of col. 3, lines 10-15) having a material infused ( from "impregnated

expanding foam" of col. 3, lines 9-15) therein, the first foam located on a first face of the spline;

a second foam (3 of Figs. 3 and 4) in the compressed state ("pre-compressed" of col. 3,

lines 10-15) having a material infused ( from "impregnated expanding foam" of col. 3, lines 9-15)

therein, the second foam located on a second face of the spline;


Art Unit: 3993

Page 8

a layer of elastomer on a surface of at least one of the first or second foams (Fig. 5);

wherein the spline depends from the cover plate and is positioned in a gap between

substantially coplanar substrates such that the cover plate overlies the gap (shown in Figs. 3 and

4); and

wherein the first foam is compressed between the first face of the spline and one of the

coplanar substrates and the second foam is compressed between the second face of the spline

and the other of the coplanar substrates (shown in Figs. 3 and 4). The cover plate and spline

capable of withstanding exposure of a temperature 540° C or greater for about five minutes

(from col. 5, lines 25-60) in that these metals are considered capable of withstanding exposure of

a temperature 540° C or greater for about five minutes). The system able to accommodate

movement of the substrates by compressing and expanding while maintaining the compressed

state (from col. 3, lines 16-29; from col. 2, lines 25-35).

Not disclosed is the infused material being a fire retardant that allows the foam to be

capable of withstanding exposure to a temperature of about 540° C or greater for about five

minutes, and the infused foam having a density in a range of 200 kg/m3 to 700 kg/m3 in the

compressed state ..

Illger, however, discloses a polyurethane foam with a fire retardant, aluminium

hydroxide, infused in the foam (col. 2, lines 25-33; col. 4, line 66 to col. 5, line 2), and Illger

further discloses an infused foam density of 100 kg/m3 (col. 2, lines 24-33, of Illger). Illger's

infused foam would meet the claimed temperature requirement since the retardant is aluminium

hydroxide (considered to be Al(OHh) the same as aluminum tri-hydrate that is used in the

claimed invention.


Art Unit: 3993

Page 9

It would have been obvious to one of ordinary skill in the art at the time of the invention

to modify the system of Baerveldt '708 by adding the fire retardant of Illger to the foam so as to

use a foam with excellent fire retardant properties (from abstract of Illger) when required; or, in

the alternative to substitute Baerveldt '708's foam with the foam of Illger so as to use a foam

with desirable mechanical and excellent fire retardant properties (from abstract of Illger) when

required. Finally, it would have been obvious to one of ordinary skill in the art at the time of the

invention to further modify the system ofBaerveldt '708 and Illger by having the compression

foam a density of 200 kg/m3 to 700 kg/m3 depending upon use and requirements of the system.


resistance expansion joint capable of withstanding exposure to a temperature of about 930°C for

about one hour (Illger' s infused foam would meet the claimed temperature requirement since the

retardant is aluminium hydroxide (considered to be Al(OHh) the same as aluminum tri-hydrate

that is used in the claimed invention).



for about two hours (Illger's infused foam would meet the claimed temperature requirement





for about eight hours (Illger' s infused foam would meet the claimed temperature requirement


Art Unit: 3993

Page 10
























Art Unit: 3993

Page 11


layer on the surface of the first and second foams (10 of Fig. 7 of Baerveldt '708).


layer on the surface of the first and second foams (10 of Fig. 7 ofBaerveldt '708).

Response to Arguments received 7 March 2016

In the amendment received 7 March 2016, Patent Owner argued:

1. Baerveldt '708 is concerned with water proofing and not the dual purpose of fire and

water resistance, and, in fact, the water proofing materials teach away from the claimed

invention because they do not provide high temperature resistance. Amendment at 13-16, 27.

2. Not known or understood to those of ordinary skill at time of invention to add a fire

retardant to a compressible water resistant foam sealant as disclosed by Baerveldt '708 since fire

resistant foams like Illger and Al-Tabaqchall deteriorate/disintegrate at high temperatures and

compression of a foam increases density which would increase thermal flow. Amendment at 17-

18.

3. The claimed invention has a unique quality that has yielded unexpected result of a fire

and water resistant compressed foam. Amendment at 19, 23-24, 27.

4. Illger does not disclose or suggest any expansion joint system and as such is non-

analogous art and teaches away for this functioning and use. Amendment at 20-21.

5. For obviousness rejection all claims need to be disclosed or suggested in prior art and

it is not inherent that Illger discloses the claimed temperature requirements because von Bonin


Art Unit: 3993

Page 12

and Al-Tabaqchall disclose unpredictability with use of aluminum hydroxide. Amendment at 21-

22, 27.

6. Impermissible hindsight for reason to combine Baerveldt '708 and Illger. Amendment

at 24.

7. The combination ofBaerveldt '708 and Illger do not disclose the limitations of the

independent claims, no reason to combine, and would fail for intended use since would

deteriorate at high temperatures. Amendment at 26-27.

8. Dependent claims are allowable over the art since the art does not disclose or suggest

these limitations. Amendment at 28-30.

9. Newly added claims are allowable. Amendment at 30.

As to argument (1), it was known for expansion joints to have more than one function as

disclosed by Ward (GB 2359265 A at abstract) which was concerned with both water proofing

and fire retardation in an expansion joint ( at page 1). Further, Baerveldt '708 does not teach

away from the claimed invention. For example, Illger discloses infusion of aluminum trihydrate

( aluminum hydroxide) along with "other flame retarding compounds and /or other compounds

which may promote carbonization ... " along with "other additives, pigments or age resistors."

Illger at col. 6, lines 8-19. Thus, it would be obvious to one of ordinary skill in the art to add

aluminum trihydrate to a foam along with, for example, "'chlorinated paraffin wax"' depending

upon the requirements of, or use of, the foam.

As to argument (2), the reference Ward with a publication date of 22 August 2001

(GB2359265 A), discloses the use of flexible, expandable foams with an infused fire retardant at


Art Unit: 3993

Page 13

page 1, lines 1-15. Since Ward discloses use of these foams, for example, as "movement joints

between external and internal walls of a building," the examiner considers it known to those of

ordinary skill in the art to infuse compressible/expandable foams, such as the claimed invention,

with a fire retardant (i.e., Ward is part of the knowledge generally available to one of ordinary

skill in the art).

Further, Illger is used in the rejections and neither Al-Tabaqchall nor von Bonin is

applied in the rejections. Illger discloses an infused foam with a weight ratio of aluminum

trihydrate to polyurethane foam of up to 8:1, or 10% to 95% (Illger at col. 2, lines 25-33). The

patent at issue discloses use of the same ratio of between 3.5: 1 to 4: 1 (78% to 80% ). With the

same basic constituents (polyurethane and aluminum trihydrate) in similar ratios, or percentages,

these infused foams are considered to possess similar characteristics. See generally MPEP

2112.01. Although Al-Tabaqchall's infused foam may deteriorate/disintegrate at higher

temperatures, its ratio of aluminum trihydrate to foam is 1: 1 (from col. 8, lines 14-21, in that

claim 1 gives a high weight percentage of aluminum trihydrate of 50% which is equivalent to a

1: 1 ratio) which is much lower than the higher ratio disclosed by Illger. In fact, von Bonin

discloses a similarly infused foam with mechanical stability up to 1000°C for 90 minutes (von

Bonin at col. 3, lines 55-62) with a weight ratio of 5.7: 1 (from von Bonin at col. 8, lines 43-58, in

that 85% aluminum trihydrate would equate to a ratio of aluminum trihydrate to foam of 5.7:1).

Finally, R-value is not claimed and, thus, not dispositive.

As to argument (3), unexpected results is not persuasive because objective data is

lacking. See MPEP 716.02(a). Also, Illger discloses the unexpected results for flame resistance

when aluminum hydroxide is added polyurethane foams at col. 2, lines 9-33.


Art Unit: 3993

Page 14

As to argument (4), the base reference, Baerveldt '708, discloses an expansion joint using

a foam. Ward (GB2359265 A) is evidence that it was known to have expansion joints with an

infused fire retardant (3rd paragraph of page 1). Illger discloses use of aluminum trihydrate as

fire retardant in polyurethane foams and is used only for this disclosure. Illger is analogous art in

that it is concerned with fire retardation in polyurethane foams.

As to argument (5), Hensley, the patent at issue, discloses a weight ratio of

retardant:foam between 3.5:1 and 4:1 at col. 5, lines 54-56. The percentage fire retardant is

calculated to be between 78% and 80%. The constituents are aluminum trihydrate and

polyurethane. Illger discloses a percentage of fire retardant of from 10% to 95% of aluminum

trihydrate with polyurethane at col. 2, lines 20-33. With the same basic constituents at similar

percentages (Illger' s higher percentage) the two foams would have the same characteristics. This

contention is strengthened by the disclosure of von Bonin which is an aluminum trihydrate

infused foam. With an apparent percentage of 15% to 85% for the fire retardation the foam is

mechanically stable at up to 1000°C for 90 minutes at col. 3, lines 55-62, and col. 8, lines 43-58.

As to argument ( 6), Ward discloses the concept of infusing a compressible foam with a

fire retardant as early as 2001 (date of publication of GB2359265 A). Ward at page 1, lines 1-13.

Illger, Al-Tabaqchall, and von Bonin disclose the concept of use of aluminum trihydrate as a fire

retardant in foams. It would be obvious to one of ordinary skill to use aluminum trihydrate as a

fire retardant in a compressible foam.

As to argument (7), the limitations are disclosed in the prior art as explained in the

rejections above. The references are properly combinable because they deal with polyurethane

foams use in static structures. The combination would function as claimed as explained above.


Art Unit: 3993

Page 15

As to argument (8), the limitations of the dependent claims are disclosed in the prior art

as explained in the rejections above.

As to argument (9), the limitations of the newly added claims are disclosed in the prior

art as explained in the rejections above.

Declaration of Hensley received 7 March 2016

The totality of the evidence has been considered and found unpersuasive.

In <JI 5, Declarant argues that one of ordinary skill in the art would understand that Illger

discloses an uncompressed flame resistant foam that would perform at higher temperatures as the

uncompressed foam of Al-Tabaqchall since they are similar in several aspects. This argument is

found unpersuasive because Illger discloses in an open-celled polyurethane foam (abstract; col.

6, lines 27-29) desirable mechanical properties and fire retardation (col. 2, lines 14-15) at 10% to

95% aluminum hydroxide by weight (col. 2, lines 30-33). The higher percentage of aluminum

hydroxide is considered comparable to that of the patent at issue. Al-Tabaqchall is not

dispositive because if its lower level of aluminum trihydrate (see Table A at page 8). When the

disclosure of the use aluminum trihydrate as fire retardant in polyurethane is combined with the

disclosure of Baerveldt '708 of a waterproof expansion joint system, the claimed invention is

met.

In <JI 6, Declarant argues that it was not known nor understood by those of ordinary skill

in the art at the time of the invention to have a compressed foam infused with a fire retardant

material, especially with knowledge that compressed materials increase heat flow as evidenced


Art Unit: 3993

by Exhibit C. This argument is found unpersuasive because Ward discloses use of a fire

Page 16

retardant in a flexible expansion joint foam (polyurethane) at page 1, lines 1-15, as early as 2001

(publication date of Ward GB2359265 A) and is evidence of the knowledge generally available

to one of ordinary skill in the art. Al-Tabaqchall and von Bonin are not dispositive because

Illger' s disclosure of use of aluminum trihydrate in polyurethane foam is combined with

Baerveldt 708's disclosure of a compressible foam expansion joint to reject the claims.

In ,i 7, Declarant argues that there is no reason to combine Baerveldt '708 and Illger

because Baerveldt '708 is concerned with water proofing and is a compressed foam and Illger,

Al-Tabaqchall, and von Bonin are uncompressed. With fire retardant materials being

hydrophilic there would be no motivation to design an expansion joint that could pass UL2079

testing and have an infused fire retardant. The claimed invention yields unexpected results.

This argument is found unpersuasive because Ward discloses use of a fire retardant in an

expansion joint foam, which is considered a compressed foam, at page 1, lines 1-15, as early as

2001. Thus, there is would be a reason, or motivation, to combine fire retardation to the

expansion joint system of Baerveldt '708. A possible reason would be to pass standards such as

UL 2079 for both fire retardation and expansion cycling so as to meet local and state building

standards. In response to applicant's argument that there is no teaching, suggestion, or

motivation to combine the references, the examiner recognizes that obviousness may be

established by combining or modifying the teachings of the prior art to produce the claimed

invention where there is some teaching, suggestion, or motivation to do so found either in the

references themselves or in the knowledge generally available to one of ordinary skill in the art.

See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21


Art Unit: 3993

Page 17

USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82

USPQ2d 1385 (2007). In this case, Ward is evidence of knowledge generally available to one of

ordinary skill in the art that a foam in a construction joint is known to include a fire-retardant

material. In addition, evidence of unexpected results is unpersuasive due to lack of objective

evidence.

In <JI 8, Declarant argues that those of ordinary skill in the art would expect that modifying

the foam of Baerveldt '708 with a fire retardant would deteriorate at higher temperatures. The

argument is found unpersuasive because von Bonin, although a solid foam as a finished product,

is polyurethane foam with infused aluminum trihydrate (col. 8, lines 43-58) and is disclosed as

achieving a fire retardation of 1000°C for 90 minutes (col. 3, lines 55-62). Thus, it was known

to one of ordinary skill in the art that aluminum trihydrate when infused into polyurethane would

impart the claimed temperature retardation. More probative evidence (for example, data from

comparison studies; see MPEP 716.0l(c), (d)) has not been presented that solid polyurethane

foam and compressible polyurethane foam when infused with aluminum trihydrate would behave

differently for fire retardation at higher temperatures.

In <JI 9, Declarant argues that through innovation and testing, not routine experimentation,

as evidenced at least by the specification of the patent at issue the claimed invention was

developed. This evidence is found unpersuasive because more probative evidence (i.e., data) is

lacking that shows testing and experimentation in the development of the claimed invention. See

MPEP 716.02(b). With the combined disclosures of Illger, Al-Tabaqchall, and Ward one of

ordinary skill would have reason to add aluminum trihydrate to the expansion joint system of

Baerveldt '708.


Art Unit: 3993

Page 18

After weighing the totality of the evidence of non-obviousness against the totality of the

prior art, the evidence of non-obviousness is found unpersuasive and the rejections are

maintained.

Remarks

THIS ACTION IS MADE FINAL.

A shortened statutory period for response to this action is set to expire 2 months from the

mailing date of this action.

Extensions of time under 37 CFR 1.136(a) do not apply in reexamination

proceedings. The provisions of 3 7 CFR 1.136 apply only to "an applicant" and not to parties in a

reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR l.550(a), it is required that

reexamination proceedings "will be conducted with special dispatch within the Office."

Extensions of time in reexamination proceedings are provided for in 37 CFR

l.SSO(c). A request for extension of time must specify the requested period of extension and it

must be accompanied by the petition fee set forth in 37 CFR l.l 7(g). Any request for an

extension in a third party requested ex parte reexamination must be filed on or before the day on

which action by the patent owner is due, and the mere filing of a request will not effect any

extension of time. A request for an extension of time in a third party requested ex parte

reexamination will be granted only for sufficient cause, and for a reasonable time specified. Any

request for extension in a patent owner requested ex parte reexamination (including


Art Unit: 3993

Page 19

reexamination ordered under 35 U.S.C. 257) for up to two months from the time period set in the

Office action must be filed no later than two months from the expiration of the time period set in

the Office action. A request for an extension in a patent owner requested ex parte reexamination

for more than two months from the time period set in the Office action must be filed on or before

the day on which action by the patent owner is due, and the mere filing of a request for an

extension for more than two months will not effect the extension. The time for taking action in a

patent owner requested ex parte reexamination will not be extended for more than two months

from the time period set in the Office action in the absence of sufficient cause or for more than a

reasonable time.

The filing of a timely first response to this final rejection will be construed as including a

request to extend the shortened statutory period for an additional two months. In no event,

however, will the statutory period for response expire later than SIX MONTHS from the mailing

date of the final action. See MPEP § 2265.

Any inquiry concerning this communication should be directed to Jeffrey L. Gellner at

telephone number 571.272.6887. The Examiner can normally be reached on Monday through

Friday from 8:30 to 4:30. If attempts to reach the Examiner by telephone are unsuccessful, the

Examiner's supervisor, Gay Ann Spahn, can be reached at 571.272.7731.

Applicant is reminded of the continuing obligation under 37 CPR 1.178(b ), to timely

apprise the Office of any prior or concurrent proceeding in which in the instant patent is or was

involved. These proceedings would include interferences, reissues, reexaminations, and

litigation.


Art Unit: 3993

Page 20

These obligations rest with each individual associated with the filing and prosecution of

this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.

/Jeffrey L. Gellner/ Jeffrey L. Gellner AU 3993, Central Reexamination Unit (571) 272-6887

Conferees: /rds/ and /GAS/





Art Unit

3993









1.

2.



3.

4.





D









1 D been received.







1 0. D Other: __



emseal patent 8,813,449 final office action rejection

Engineering