US 8813450 rejection - fire and water resistant expansion and seismic joint system #90013511

Office Action in Ex Parte Reexamination

Control No. 90/013,511

Examiner Russell Stormer

Patent Under Reexamination 8813450

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. D Responsive to the communication(s) filed on __ .

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

b. D This action is made FINAL.

c. [8J 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.

[8J Notice of References Cited by Examiner, PT0-892.

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

3.

4.

D Interview Summary, PT0-474.

D Part II SUMMARY OF ACTION

1 a. [8J Claims 1-17 are subject to reexamination.

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

2. D Claims __ have been canceled in the present reexamination proceeding.

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

4. [8J Claims 1-17 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. 20150923

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Application/Control Number: 90/013,511

Art Unit: 3993

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

provisions.

Brief Summary of the Prosecution History

Page 2

On June 2, 2015, a corrected Request for Reexamination was filed by a third

party requester for claims 1-17 of U.S. Patent No. 8,813,450 to Hensley et al ("the '450

patent").

On July 15, 2015 an Order was mailed, granting reexamination of claims 1-17 of

the '450 patent and setting a two-month period for Patent Owner to file a response.

The two-month period has expired without a reply from the Patent Owner, and an

Office action on the merits in the merged proceedings is appropriate at this time.

Scope of Reexamination

Reexamination was requested and ordered for claims 1-17 of the subject '450

patent.

Prior Art Documents Relied Upon in this Action

U.S. Patent No. 6,532,708 to Baerveldt ("Baerveldt '708'')

U.S. Patent No. 4,288,559 to lllger et al ("lllger")

Specified Technologies, Inc.; SpecSeal Series ES Elastomeric Sealant Data Sheet; 2004 ("SpecSeal")

GRUNAU ILLERTISSEN GMBH, Fir-A-Flex, Fire Protection for Linear Gaps in Walls and Ceilings, dated August 1996 pp. 1-4 ("Fir-A-Flex") (cited in the I OS filed by Patent Owner on September 18, 2015)


Art Unit: 3993

Page 3

Emseal Joint Systems, Lt., Preformed Sealants and Expansion Joint Systems, May 2002, pp. 1-4 ("Emseal Preformed") (cited in the IDS filed by Patent Owner on September 18, 2015)

Other references discussed in this action:

Underwriters Laboratories, Inc.; UL2079 Tests for Fire Resistance of Building Joint Systems; October 21, 2004 ("UL 2079") (filed as Exhibit Kin the Request)

Emseal Joint Systems, Ltd., Horizontal Colorseal, Tech Data Sheet, June 1997 ("Horizontal Colorseal") (submitted by Patent Owner with the IDS filed September 18, 2015)

Emseal Corp.; 20H System Tech Data Sheet; June 1997 ("20H") (submitted by Patent Owner with the IDS filed September 18, 2015)

Claim Construction

Claims 1 and 16 of the '450 patent recite the joint system as being "capable of

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

minutes." Claim 13 recites that the joint system is capable of withstanding exposure to

a temperature of about 1010 degrees C for about two hours; in claim 14 a temperature

of about 930 degrees C for about one hour; and in claim 15 a temperature of about

1260 degrees C for about eight hours.

The specification of the '450 patent does not provide clear support for these

limitations. Lines 32-33 of column merely state that the "resultant foam can pass the UL

2079 test program." The patent is silent as to which part of or to what degree the test is

passed, (i.e., if a fire rating earned by the foam). The claims as set forth in the '450

patent are not commensurate with the UL standard.


Art Unit: 3993

Page 4

UL 2079 describes the conditions for conducting tests of building joint systems,

such as for cycling and fire resistance. As shown on page 11 of UL 2079 and in the

Time-Temperature Curve shown in Appendix A, the temperatures listed are the

temperatures to be reached at the time listed. In other words, UL 2079 shows the

temperatures in the test chamber at a specified time into the test; not the amount of time

the joint can "withstand" that temperature. For example, 927 degrees C is the

temperature to be attained in the control area at the one hour mark, not a requirement

that a specimen "withstand" a temperature of 927 degrees C for a duration of one hour.

To pass the UL 2079 fire resistance test for a given rating (such as one, two, or

three hours), a joint system must not allow the transmission of heat through the joint

assembly to raise the unexposed side surface temperature more than 181 degrees C

above the ambient temperature at the hottest point (or an average of 139 degrees C of

all values for a joint greater than six inches in width). See Item 23 in UL 2079. The fire

barrier is then rated as having satisfied this criteria for a stated period of time (0.5 hours,

1 hour, 2 hours, etc.).

While the patent is also silent as to what is meant by the term "withstand" as

used in the claims, the definition 1 of the term "withstand" is commonly defined as "to

stand up against" or "to resist successfully." One of ordinary skill in the art would have

understood the term "withstanding" in the claims to limit the joint system as successfully

resisting the recited temperature for the recited time period.

1 http://www.merriam-webster.com/dictionary/withstand


Art Unit: 3993

Considering the language of the claims in light of UL 2079, a joint seal or

Page 5

assembly which has a fire rating of one hour would necessarily have to withstand or

survive a temperature of at least 540 degrees C for five minutes or greater (claims 1

and 16) because, as shown in Appendix A, a temperature of 538 degrees C is attained

five minutes into the test and the temperature continues to rise until it is 927 degrees C

at the one-hour mark. Likewise, a joint seal or assembly which has a fire rating of two

hours would necessarily have to withstand or survive a temperature of about 930

degrees C for about one hour (claim 14), and a joint seal or assembly which has a fire

rating of four hours would necessarily have to withstand or survive a temperature of

about 1010 degrees C for about two hours (claim 13).

With respect to claim 15, Appendix A stipulates that the temperature in the test

area is to be at 1260 degrees Cat the eight-hour mark. A joint system capable of

"withstanding a temperature of about 1260 degrees C for about eight hours" is not

contemplated in UL 2079.

Weighing all of the evidence in the disclosure of the '450 patent, namely the

assertion in the specification that "the foam can pass the UL 2079 test program" and the

recitations in the claims that the joint system is "capable of withstanding" exposure to a

given temperature for a given length of time, as it would have been understood by one

of ordinary skill in the art, the claims are interpreted as follows:

Claims 1 and 16 will be interpreted as limiting the joint system to being capable

of withstanding a temperature of about 540 degrees C or greater for about five minutes.


Art Unit: 3993

Page 6

Claim 13 will be will be interpreted as limiting the joint system to being capable of

withstanding a temperature of about 1010 degrees C for about two hours.

Claim 14 will be interpreted as limiting the joint system to being capable of

withstanding a temperature of about 930 degrees C for about one hour.

Claim 15 will be will be interpreted as limiting the joint system to being capable of

withstanding a temperature of about 1260 degrees C, and the limitation that the

exposure is for about eight hours will not be given any weight. UL 2079 does not

include a test or rating of exposure to 1260 degrees C for a duration of eight hours. The

foam core described and claimed in the '450 patent would not have suggested to one of

ordinary skill in the art a joint system capable of withstanding exposure to a temperature

of about 1260 degrees C for about eight hours.

None of the claims will be interpreted as including any of the UL 2079 standards.

Grounds of Rejection

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.


Art Unit: 3993

Ground 1

Page 7

Claims 1, 2, 3, 5, 7, 8, 9, 10, 11, 12, 13, 14, and 15 are rejected under pre-AIA 35

U.S.C. 103(a) as being unpatentable over Baerveldt '708 in view of SpecSeal.

Baerveldt '708 discloses a water resistant expansion and seismic joint system,

comprising a cover plate 4; a core 3 comprising a first core portion and a second core

portion: and a spline 2 attached to the cover plate along a first edge of the spline. The

first core portion is located on a first face of the spline and the second core portion is

located on a second face of the spline. The spline depends from the cover plate in a

one piece construction and extends into the core to a depth within the core and is

positioned in a gap between substantially coplanar substrates such that the cover plate

overlies the gap; and the first core portion is compressed between the first face of the

spline and one of the coplanar substrates and the second core portion is compressed

between the second face of the spline and the other of the coplanar substrates.

The first and second core portions do not have a fire retardant material infused

therein.

SpecSeal teaches that it is known to use fire resistant elastomeric seals or

sealants in construction joints. The SpecSeal sealant is water-resistant and provides

fire protection. As described on page 1 at "Performance," the sealant is described as

having been "successfully tested in one, two, three, and four hour joints when tested in

accordance with UL 2079 (ASTM E1966)." For example, figures 8 and 10 show

concrete floor joints using the described sealant and have an Assembly Rating of 3

hours. Based on the criteria of UL 2079, these joints would have to withstand a


Art Unit: 3993

Page 8

temperature of 538 degrees Cat 5 minutes; 927 degrees Cat one hour; 1010 degrees

C at two hours, and 1052 degrees C at three hours.

Therefore, it would have been obvious to those of ordinary skill in the art at the

time of the invention to infuse the first and second core portions of the joint system of

Baerveldt '708 with a fire retardant material in order to produce a joint system capable

of passing the criteria of UL 2079. For instance, the core (such as the first and second

core portions shown in figures 3-5) could be provided with a layer of sealant as set forth

in the SpecSeal data sheet and meet the limitation of "infused" as broadly recited in the

claims and as described in the '450 patent.2 In the modified core, the foam core and the

infused fire resistant layer would each perform the same function as they do does

separately, to yield the predictable result of enabling the joint system to earn a fire

resistance rating of one, two, or three hours, and therefore be considered for use in

structures in which the building code requires a UL rating for expansion joints.

With respect to claims 2 and 3, the core of Baerveldt '708 has a first surface and

a second surface, the spline extending from the first surface of the core vertically down

to the depth, which is between the first surface and the second surface.

With respect to claim 5, Baerveldt '708 teaches that the core portions may

comprise layers of foam material as shown in figures 8-10. It would have been obvious

to infuse all of the layers of the core with a fire retardant material such that there are no

non-fire resistant layers through which fire could burn though, and thus ensure that the

2 It is noted that the paragraph bridging columns 9 and 10 of the '450 patent define the term "infused with" as meant to be broadly interpreted to refer to "includes" or "including." Thus, for example, a "core infused with a fire retardant" covers a "core including a fire retardant" in any form and amount, such as a layer, and so forth. Accordingly, as used herein, the term "infused with" would also include, but not be limited to, more particular embodiments such as "permeated" or "filled with" and so forth.


Art Unit: 3993

Page 9

entire joint system meets the time and temperature requirements of UL 2079. In this

instance, the joint would include a layer comprising fire retardant material that is

sandwiched between the material of the core as broadly recited.

With respect to claim 7, the application of a layer of sealant taught by SpecSeal

to the first and second core portions would produce a fire barrier sealant layer.

With respect to claim 8, Baerveldt '708 further discloses a layer of elastomer 10

on at least one outer surface of the core.

With respect to claim 9, Baerveldt '708 further discloses that the core may be an

expandable foam sealant such as 20H System or Greyflex.3 Each of these comprises

an open cell polyurethane. The 20H System foam has an uncompressed density of

144-160 kg/m3, and the Greyflex foam has an uncompressed density of 135-145 kg/ m3

.

Therefore, it was known at the time of the invention to use a foam core having an

uncompressed density of about 50 kg/ m3 to about 250 kg/ m3, as taught by Baerveldt

'708.

With respect to claim 10, Baerveldt '708 further discloses that the first and

second core portions may each comprise a plurality of parallel laminations as shown in

figures 8-10. It would have been obvious to those of ordinary skill in the art that at least

one of the laminations would have to be infused with the fire retardant material in order

to produce a fire-resistant joint system capable of passing the UL 2079 test criteria.

With respect to claim 11, it would have been obvious that the infused lamination

is either an inner or outer lamination.

3 The specific teachings may be found in the 20H System and Horizontal Colorseal data sheets, cited with this Office action.


Art Unit: 3993

Page 1 O

With respect to claim 12, the laminations of Baerveldt '708 are oriented in at

least the parallel orientation.

With respect to claims 13 and 14, the SpecSeal sealant has been shown on

pages 7 and 8 above to meet the one, two, and three hour ratings in a floor joint, and

the joint system of Baerveldt '708 as modified by SpecSeal would meet the time and

temperature limitations recited in these claims.

With respect to claim 15, a joint system using the sealant of SpecSeal is capable

meeting the one, two, three, and four hour requirements of UL 2079 (ASTM E1966)."

As shown in Appendix A of UL 2079, the temperature of the test is 1093 degrees Cat

the four-hour mark. The temperature of 1093 degrees C is considered to be "about

1260 degrees C" as broadly recited in the claim. Therefore, SpecSeal teaches the

limitations of claim 15, and those of ordinary skill in the art would have found it obvious

to optimize the joint system of Baerveldt '708 to be capable of withstanding a

temperature of about 1260 degrees C in order to be resistant to higher temperatures as

necessary for the intended use of the joint system.

In the event that 1260 degrees C is not considered to be "about" 1093 degrees

C, it would have been within the level of ordinary skill in the art to modify the joint

system of Baerveldt '708 in view of SpecSeal to be capable of withstanding exposure to

a temperature of 1260 degrees C in order to increase its fire resistance as necessary or

desired. For example, increasing the thickness of the infused fire-retardant material,

and/or providing a greater proportion by weight of the fire-retardant material, to achieve


Art Unit: 3993

Page 11

a higher fire rating, would have been obvious to those of ordinary skill in the art as a

choice of design.

Ground 2

Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, and 17 are rejected

under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Baerveldt '708 in view of

lllger and SpecSeal.










between the second face of the spline and the other of the coplanar substrates. See

figures 3-8.


therein.

lllger teaches a process of infusing a flexible foam with a fire-retardant material.

lllger notes that any flexible foams are suitable for the process, but polyurethane foams


Art Unit: 3993

Page 12

are particularly suitable (paragraph bridging columns 4-5). The foams produced by the

process are suitable for all fields of application in which flame retardant flexible foams

are used (paragraph bridging columns 7-8) and the addition of the flame retardant

agents does not impair the mechanical properties of the foam (column 3, lines 38-41 ).

SpecSeal teaches the desirability of using fire resistant seals in expansion joints,

and in particular, as described on page 1 at "Performance," teaches a sealant which

meets the requirements of UL 2079 (ASTM E1966) ratings for one, two, three, and four

hour joints. Based on the criteria of UL 2079, the joint would have to withstand a

temperature of 538 degrees Cat 5 minutes; 927 degrees Cat one hour; 1010 degrees

C at two hours, and 1052 degrees C at three hours to meet these requirements.

From the teachings of lllger and SpecSeal, it would have been obvious to one of

ordinary skill in the art at the time of the invention to infuse the foam core portions of

Baerveldt '708 with a fire-retardant material to prevent the foam core portions from

igniting in a fire, and further to produce a joint system capable of passing the criteria of

UL 2079. Those of ordinary skill in the art would have found it obvious to infuse the

core of Baerveldt '708 using the known techniques taught by lllger, and the foam core of

Baerveldt '708 modified with the fire retardant material of lllger would perform the same

function (sealing the joint) as it did separately.

As further shown in SpecSeal, it is desirable for an expansion joint to earn a fire

resistance rating of one to four hours. Therefore infusing the core of Baerveldt '708 with

a fire-retardant material in sufficient amounts as taught by lllger would yield the


Art Unit: 3993

Page 13

predictable and desirable result of a joint system capable of withstanding exposure to a

temperature of about 540 degrees C for about five minutes.




With respect to claim 4, where the general conditions of a claim are disclosed in

the prior art, it is not inventive to discover the optimum or workable ranges by routine

experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).

The impregnated foam of lllger contains from 10% to 95% fire retardant material by

weight. It would have been well-within the level of ordinary skill in the art optimize the

amount of fire retardant material infused into the core of Baerveldt '708 in order to in

order to achieve the desired fire resistance, such as infusing the fire retardant material

at a ratio of 3.5:1 to 4:1 to suit the particular intended use of the joint seal.

With respect to claim 5, Baerveldt '708 discloses that the core may comprise

layers of compressible and non-compressible foam material. It would have been

obvious to infuse the all of layers of the core with a fire retardant material to eliminate

any portion of the core through which fire could travel, and thus yield the predictable

result of ensuring that the entire joint system meets the time and temperature

requirements of UL 2079. Further, this construction would comprise a (non-

compressible) layer comprising fire retardant material that is sandwiched between the

compressible layers of the material of the core as recited in the claim.


Art Unit: 3993

Page 14

With respect to claim 6, from the teachings of lllger, it would have been obvious

to those of ordinary skill in the art to select aluminum hydroxide as the fire retardant

material to be infused in the core of Baerveldt '708 as this is a well-known and effective

material for increasing the fire resistance of foam products.

With respect to claim 7, SpecSeal teaches the use of the fire retardant sealant

as a fire barrier sealant layer. From this teaching, it would have been obvious to

provide the joint system of Baerveldt '708 with a fire barrier sealant layer in order to

provide an additional layer of resistance.



With respect to claim 9, Baerveldt '708 further discloses that the core may be an


an open cell polyurethane foam. The 20H System foam has an uncompressed density

of 144-160 kg/m3, and the Greyflex foam has an uncompressed density of 135-145 kg/

m3. Therefore, Baerveldt '708 teaches that it was known at the time of the invention to

use a foam core having an uncompressed density of about 50 kg/ m3 to about 250 kg/

m3 in an expansion joint.




4 The specific teachings may be found in the 20H System and Horizontal Colorseal data sheets referred to on page 3 of this Office action.


Art Unit: 3993

Page 15

one of the laminations would have to be infused with the fire retardant material in order

to produce a joint system that could be considered to be fire-resistant.


is either an inner or outer lamination due to the fact that all of the laminations are either

inner or outer laminations.

With respect to claim 12, the laminations of Baerveldt '708 are oriented at least

in a parallel orientation.

With respect to claims 13 and 14, the SpecSeal sealant has been successfully

tested in one, two, three, and four hour joints when tested in accordance with UL 2079,

and thus teaches a desirability to construct an expansion joint capable of meeting UL

2079 requirements. From this teaching, it would have been obvious to modify or design

the joint system of Baerveldt '708 as modified by lllger and SpecSeal to meet the time

and temperature limitations recited in these claims in order to allow the joint system to

be used in joints required by building codes to meet the UL 2079 standards.

With respect to claim 15, it would have been obvious to those of ordinary skill in

the art to modify the joint system of Baerveldt '708 in view of lllger and SpecSeal to be

capable of withstanding exposure to a temperature of 1260 degrees C in order to

increase the fire-resistance of the joint system. For example, increasing the density or

thickness of the infused fire-retardant material, and/or providing a greater proportion by

weight of the fire-retardant material, to achieve a higher fire rating, would have been

within the level of ordinary skill in the art, and would have yielded results that were

predictable to those of ordinary skill.


Art Unit: 3993

Page 16

With respect to claim 16, Baerveldt '708, lllger, and SpecSeal are applied as set

forth above with respect to claim 1, and further in that Baerveldt '708 discloses that the

core may comprise layers of compressible and non-compressible foam material. It

would have been obvious to those of ordinary skill in the art to infuse the all of layers of

the layers of the core with a fire retardant material to ensure that the entire core (and

not just certain layers of the core) is fire resistant in order for the entire joint system

meets the time and temperature requirements of UL 2079. Such a construction would

meet the limitation of the fire retardant material (in a non-compressible layer) being

sandwiched between the material of the core (the compressible layers). Moreover, this

construction does not include any fire retardant material on any outer surface of the

core.

With respect to claim 17, the impregnated foam of lllger contains from 10% to

95% fire retardant material by weight. It would have been well-within the level of

ordinary skill in the art optimize the amount of fire retardant material infused into the

core of Baerveldt '708 in order to in order to achieve the desired fire resistance, such as

infusing the fire retardant material at a ratio of 3.5:1 to 4:1 to suit the particular intended

use of the joint seal. "Where the general conditions of a claim are disclosed in the prior

art, it is not inventive to discover the optimum or workable ranges by routine

experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955))


Art Unit: 3993

Ground 3

Page 17

Claims 1, 2, 3, 5, 8, 9, 10, 11, 12, 13, 14, 15, and 16 are rejected under pre-AIA

35 U.S.C. 103(a) as being unpatentable over Baerveldt '708 in view of Emseal

Preformed and Fir-A-Flex.










between the second face of the spline and the other of the coplanar substrates.


therein.

Emseal Preformed notes the benefits of using expanding foam sealants in

construction joints (p. 2) and summarizes the specifications of several products. On

page 4, the descriptions of "20H System" and "DSH System" each include the statement

"All EMSEAL deck and floor joint systems are ADA compliant and can be fire-rated."

Note that the foam core of Baerveldt '708 may comprise 20H System sealant. As such,


Art Unit: 3993

Page 18

Emseal Preformed teaches that it was known at the time of the invention to use fire

resistant elastomeric seals or sealants in construction joints.

Fir-A-Flex teaches a joint sealant which is fire-resistant and water-resistant. The

sealant comprises a "sandwich" of highly elastic foam and an intumescent material.

The sealant may be used in expansion joints, and is fire-resistant up to 4 hours (p. 2). A

table on page 4 shows joints using the Fir-A-Flex sealant to have F and T ratings of up

to 240 minutes. Fir-A-Flex teaches that it was known to use fire-retardant materials in

sealants such that the expansion joint can be given a desired or specified fire resistance

rating.

From the teachings of Emseal Preformed and Fir-A-Flex, it would have been

obvious to those of ordinary skill in the art at the time of the invention to infuse the first

and second core portions of the joint system of Baerveldt '708 with a fire retardant

material in order to produce a fire resistant joint system. For instance, the core (such as

the first and second core portions shown in figures 3-5) could be provided with a layer of

intumescent material as taught by Fir-A-Flex, and the modified core would meet the

limitation of "infused" as broadly recited in the claims and as described in the '450

patent.5 In the modified core, the foam core with the infused fire resistant layer would

yield the predictable result of rendering the foam sealant fire-resistant, thereby enabling

the joint system to earn a fire resistance rating for use in an expansion joint.

5 It is noted that the paragraph bridging columns 9 and 10 of the '450 patent define the term "infused with" as meant to be broadly interpreted to refer to "includes" or "including." Thus, for example, a "core infused with a fire retardant" covers a "core including a fire retardant" in any form and amount, such as a layer, and so forth. Accordingly, as used herein, the term "infused with" would also include, but not be limited to, more particular embodiments such as "permeated" or "filled with" and so forth.


Art Unit: 3993

Page 19

With further respect to claim 1, Emseal Preformed and Fir-A-Flex do not specify

the temperature that the sealant or joint system can withstand, and none of these

references, including Baerveldt '708, appear to mention UL 2079. However, inasmuch

as UL 2079 was the known the standard by which expansion joint sealants were rated

at the time of the invention, it would further have been obvious to those of ordinary skill

in the art to design the core (i.e., the foam and the fire resistant material) to be able to

pass the UL 2079 tests, such as to be able to withstand a temperature of about 540

degrees C or greater for about five minutes.




With respect to claim 5, Baerveldt '708 teaches that the core portions may

comprise layers of foam material as shown in figures 8-10. As noted above, the sealant

of Fir-A-Flex is a "sandwich" of foam and the intumescent material. From these

teachings, it would have been obvious to one of ordinary skill in the art for the sealant of

Baerveldt '708 to comprise a layer of the fire retardant material sandwiched between the

material of the core.




Art Unit: 3993

Page 20

With respect to claim 9, Baerveldt '708 discloses that the core may be an


an open cell polyurethane. The 20H System foam has an uncompressed density of

144-160 kg/m3, and the Greyflex foam has an uncompressed density of 135-145 kg/ m3

.

Therefore, it was known at the time of the invention to use a foam core having an

uncompressed density of about 50 kg/ m3 to about 250 kg/ m3, as taught by Baerveldt

'708.




one of the laminations could be infused with the fire retardant material in order to evenly

space the fire retardant thorough the core, or to eliminate any weakness to fire within

the core.


is either an inner or outer lamination.

With respect to claim 12, the laminations of Baerveldt '708 are oriented in at

least the parallel orientation.

With respect to claims 13, and 14, the last page of Fir-A-Flex shows the sealant

to have F-Ratings (Integrity) and T-Ratings (Insulation) for one, two, three, and four

hours. While Fir-A-Flex does not appear to expressly mention UL 2079, the results and

ratings for the fire-resistance tests set forth in UL 2079 standard are commonly referred

6 The specific teachings may be found in the 20H System and Horizontal Colorseal data sheets referred to on page 3 of this Office action.


Art Unit: 3993

Page 21

to as "F" and "T" ratings. 7 Moreover, on page 15 of UL 2079, the fire Integrity test is

described, and on pages 15-16, the fire Endurance test is described. Therefore, those

of ordinary skill in the art would have understood that the F-rating and T-rating times in

Fir-A-Flex refer to the one, two, three, and four-hour time and temperature ratings in UL

2079. Based on the Time-Temperature Curve on page 11, and the Table in Appendix A

of UL 2079, joints using the Fir-A-Flex sealant would be capable of withstanding a

temperature of about 1010 degrees C for about two hours and about 940 degrees C for

about one hour as set forth in claims 13 and 14.

In the event that the "F" and "T" ratings set forth in Fir-A-Flex are not considered

to correspond to the time and temperature ratings in UL 2079, then those of ordinary

skill in the art, knowing that Fir-A-Flex discloses a sealant capable of being rated fire-

resistant for up to four hours, would have found it obvious to modify the joint system of

Baerveldt '708 to be able to pass the UL 2079 standards for up to four hours in order to

allow the sealant to be used in expansion joints subject to local or national building

codes based on UL 2079.

With respect to claim 15, the temperature of the test is 1093 degrees Cat the

four-hour mark as shown in Appendix A of UL 2079. The temperature of 1093 degrees

C is considered to be "about 1260 degrees C" as broadly recited in the claim.

Therefore, those of ordinary skill in the art would have found it obvious to optimize the

joint system of Baerveldt '708 to be capable of withstanding a temperature of about

7 The Examiner hereby takes Official Notice that the hourly fire-resistance ratings provided for in UL 2079 are commonly referred to in the building and construction industry as "F" and "T" ratings.


Art Unit: 3993

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1260 degrees C in order to be resistant to higher temperatures as necessary for the

intended use of the joint system.

If for some reason a temperature of "about 1260 degrees C" is not considered to

be "about" 1093 degrees C, it would have been within the level of ordinary skill in the art

to modify the joint system of Baerveldt '708 in view of Emseal Preformed and Fir-A-Flex

to be capable of withstanding exposure to a temperature of 1260 degrees C in order to

increase its fire resistance as necessary or desired. For example, increasing the

thickness or amount of the infused fire-retardant material in order to achieve a higher

fire rating for an intended purpose, would have been obvious to those of ordinary skill in

the art as a choice of design.

Information Disclosure Statement

The information disclosure statements (IDS) submitted on September 18, 2015

have been considered and placed of record by the Examiner.

A considerable number of NPL references cited do not include pages showing a

date, as noted by the statement "publication date unknown from document" on the

PTO/SB/08. These documents do not comply with 37 CFR 1.98(b)(5), and have not

been considered.

The Google search documents and the Amazon.com search documents do not

appear to be pertinent and/or do not have publication dates by which they could be

considered to be prior art. The IDS does not explain how these documents are

pertinent.


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Page 23

The relevancy of the Emseal Quiet Joint data sheets and web pages is not

explained by Patent Owner. These documents do not appear to antedate the '450

patent and have not been considered.

The IBMB and IFT Rosenheim test reports have not been considered. The listing

of these documents on the PTO-SB-08 should include the Company or trade name of

the product (i.e., "lllbruck Firestop N") which was tested in addition to the other test

identification.

The 125-page copy of "The fire behavior of wooden ceilings box-girder" has not

been considered. Although this document includes an English translation, Patent

Owner must provide a concise explanation of the relevance of this document, including

the page or pages considered to be pertinent to the instant proceeding. Moreover, it

does not appear that the title of this document is recorded on the PTO-SB-08.

The "List of several Emseal applications and patents" is not a proper prior art

document. It has been noted, but cannot be made of record as "prior art."

Conclusion

The prior art made of record and not relied upon is considered pertinent to

applicant's disclosure.

Freeman, Tschudin-Mahrer, and Gohlke et al are cited to show additional fire-

resistant joint sealants. Fulmer et al, Stone et al, and Frost et al teach fire-resistant

foam materials and methods of making them.


Art Unit: 3993

Page 24

Submissions - Time Period for Response

There appears to be no litigation in the '450 patent according to the Notification

of Concurrent Proceedings filed by Patent Owner on September 18, 2015.

Accordingly, a 2-month shortened statutory period is set for response to this

Office action.

In order to ensure full consideration of any affidavits or declarations or other

documents as evidence of patentability, such documents must be submitted in response

to this first Office action on the merits (which does not result in a close of prosecution).

Submissions after the second Office action on the merits, which is intended to be a final

action, will be governed by the requirements of 37C.F.R. 1.116, after final rejection and

by 37 C.F.R. 41.33 after appeal, which will be strictly enforced.

Extensions of Time

Extensions of time under 37 CFR 1.136(a) will not be permitted in these

proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and

not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that

ex parte reexamination proceedings "will be conducted with special dispatch" (37 CFR

1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in

37 CFR 1.550(c).


Art Unit: 3993

Notice of Concurrent Proceedings or Litigation

Page 25

The patent owner is reminded of the continuing responsibility under 37 CFR

1.565(a), to apprise the Office of any litigation activity, or other prior or concurrent

proceeding, involving Patent No. 8,813,450 throughout the course of this reexamination

proceeding. The third party requestor is also reminded of the ability to apprise the

Office of any litigation activity, or other prior or concurrent proceeding, involving the '708

patent. See MPEP §§ 2207, 2282 and 2286.

Correspondence

All correspondence relating to this ex parte reexamination proceeding should be directed:

By EFS: Registered users may submit via the electronic filing system EFS-Web, at htt_gs://efs.us_gto.goviefile/m_y_gortal/efs-registered

By Mail to: Mail Stop Ex Parte Reexam Attn: Central Reexamination Unit Commissioner for Patents United States Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

By FAX to: (571) 273-9900 Central Reexamination Unit

By hand: Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1 )(i) (C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.


Art Unit: 3993

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Any inquiry concerning this communication or earlier communications from the

Examiner, or as to the status of this proceeding, should be directed to the Central

Reexamination Unit at telephone number (571) 272-7705.

/Russell D. Stormer/

Russell D. Stormer Primary Examiner Central Reexamination Unit Art Unit 3993 (571) 272-6687

Conferee: /JLG/

Conferee: /GAS/

US 8813450 rejection - fire and water resistant expansion and seismic joint system #90013511

Engineering