Application No. 14/084,930

Applicant(s) HENSLEY ET AL.

Office Action Summary Examiner ELIZABETH A. PLUMMER

Art Unit 3635

AIA (First Inventor to File) Status No

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

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;J. MONTHS FROM THE MAILING DATE OF THIS COMMUNICATION.

Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing date of this communication. If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133). Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term adjustment. See 37 CFR 1.704(b).

Status 1 )~ Responsive to communication(s) filed on 22 Julv 2015.

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

2a)0 This action is FINAL. 2b)~ This action is non-final. 3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on

__ ;the restriction requirement and election have been incorporated into this action. 4)0 Since this application is in condition for allowance 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.

Disposition of Claims* 5)~ Claim(s) 1-6 is/are pending in the application.

5a) Of the above claim(s) §.is/are withdrawn from consideration. 6)0 Claim(s) __ is/are allowed. 7)~ Claim(s) 1-5 is/are rejected. 8)0 Claim(s) __ is/are objected to. 9)0 Claim(s) __ are subject to restriction and/or election requirement.

* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a

participating intellectual property office for the corresponding application. For more information, please see

http:ilwww.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPHfeedback(wuspto.aov.

Application Papers 1 O)~ The specification is objected to by the Examiner. 11 )~The drawing(s) filed on 20 November 2013 is/are: a)O accepted orb)~ objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).

Priority under 35 U.S.C. § 119 12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f). Certified copies:

a)O All b)O Some** c)O None of the:

1.0 2.0 3.0

Certified copies of the priority documents have been received. Certified copies of the priority documents have been received in Application No. __ . Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)). ** See the attached detailed Office action for a list of the certified copies not received.

Attachment{s)

1) ~ Notice of References Cited (PT0-892)

2) 0 Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b) Paper No(s)/Mail Date __ .

U.S. Patent and Trademark Office PTOL-326 (Rev. 11-13) Office Action Summary

3) 0 Interview Summary (PT0-413)

Paper No(s)/Mail Date. __ .

4) 0 Other: __ .

Part of Paper No./Mail Date 20151213

Application/Control Number: 14/084,930

Art Unit: 3635

DETAILED ACTION

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This is a first Office action on the merits for application serial number 14/084,930

filed 20 November 2013. Applicant's Response to the Election/Restriction requirement

received 22 July 2015 has been entered. In view of Applicant's election of Group I,

claims 1-5 have been examined.

Election/Restrictions

1. Applicant's election with traverse of Group I in the reply filed on 22 July 2015 is

acknowledged. The traversal is on the ground(s) that there is no serious burden. This

is not found persuasive because the scope of the claims is different enough that

different art is likely to apply under 35 USC 102/103.

The requirement is still deemed proper and is therefore made FINAL.

Information Disclosure Statement

2. The listing of references in the specification is not a proper information disclosure

statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other

information submitted for consideration by the Office, and MPEP § 609.04(a) states,

"the list may not be incorporated into the specification but must be submitted in a

separate paper." Therefore, unless the references have been cited by the examiner on

form PT0-892, they have not been considered.

Drawings

3. The drawings are objected to because some of the figure names are hard to

read/appear to contain extraneous text. Corrected drawing sheets in compliance with

37 CFR 1.121 (d) are required in reply to the Office action to avoid abandonment of the

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Art Unit: 3635

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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.

Specification

4. Applicant is reminded of the proper language and format for an abstract of the disclosure.

The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.

The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.

Application/Control Number: 14/084,930

Art Unit: 3635

5. The abstract of the disclosure is objected to because the abstract contains

implied phrases. Correction is required. See MPEP § 608.01 (b).

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6. The use of the trademark DYNFLEX has been noted in this application. It should

be capitalized wherever it appears and be accompanied by the generic terminology.

Although the use of trademarks is permissible in patent applications, the

proprietary nature of the marks should be respected and every effort made to prevent

their use in any manner which might adversely affect their validity as trademarks.

Claim Rejections - 35 USC § 112

7. 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.

8. Claims 1-5 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

pre-AIA the applicant regards as the invention.

9. Regarding claim 1, there is a lack of antecedent basis for "the direction of

compression", "the foam", "the compressed foam", and "transverse elastomer arch" and

"the desired compression". It is assumed that applicant meant to include that the core

material comprises a foam, and that the foam has a direction of compression, and that

the compressed foam is still referring to the foam or the core, and the transverse

Application/Control Number: 14/084,930

Art Unit: 3635

elastomer arch is the same as the arched or bullet profile, and that the desired

compression is meant to be read as a desired compression.

10. Regarding claim 2, there is a lack of antecedent basis for the phrase "the

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transverse arched or bullet shape", which is assumed to be the same as -- the arched or

bullet profile--.

11. Regarding claim 4, there is a lack of antecedent basis for the phrase "the core

composition". It is assumed the applicant meant the core.

12. Regarding claim 5, the phrase "and/or" creates an improper Markush group.

13. Claims 2-5 also depend from a rejected base claim.

Claim Rejections - 35 USC § 103

14. 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.

15. Claims 1-5 are rejected under pre-AIA 35 U.S.C. 103(a) as being

unpatentable over BEJS System in view of Tschudin-Mahrer (US Patent

4,401,716).

a. Regarding claim 1, as best understood, BEJS System discloses a water

resistant precompressed joint system (see page 1) comprising: a pre-ompressed,

coated core material (foam), a top coat (silicone) on said core of an elastomeric

water proofing material formed into an arched, or a bullet profile transverse to the

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direction of compression of the foam (see pages 2-5); and a liner (shrink wrap)

configured to hold the compressed foam, and transverse elastomer arch in place,

and at the desired compression. BEJS system does not disclose that the product

is wound onto a spool; however, BEJS system discloses different says the

product could be packaged, including straight sticks and angled pieces. One

other known way in the art to package joist systems includes being wound on a

spool. For example, Tschudin-Mahrer teaches foam strip wound onto a spool

(see title; abstract; Fig. 1 ). It would have been obvious to one of ordinary skill in

the art at the time the invention was made to modify BEJS System to use the

alternative packaging of being wound on a spool, such as taught by Tschudin-

Mahrer in order to make the make the product more easily fit and adapted to seal

joints.

b. Regarding claim 2, claim 2 is a product by process claim. The

patentability of a product does not depend on its method of production. If the

product in the product-by-process claim is the same as or obvious from a product

of the prior art, the claim is unpatentable even though the prior product was

made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964,

966 (Fed. Cir. 1985). Here, BEJS System teaches the same final product, as it

discloses a top coat in an arched or bullet profile (see Page 2-5).

c. Regarding claim 3,claim 3 is a product by process claim. The patentability

of a product does not depend on its method of production. If the product in the

product-by-process claim is the same as or obvious from a product of the prior

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art, the claim is unpatentable even though the prior product was made by a

different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed.

Cir. 1985). Here, BEJS system also has a bottom coat is formed mechanically or

manually into a transverse arched or bullet shape thereby creating a substantially

symmetrical shape (see the figures of page 4 and 5).

d. Regarding claim 4, further comprising impregnation of a fire retardant

material into the core composition thereby forming a water and fire resistant

expansion joint system (see page 2, and the acrylic impregnated foam).

e. Regarding claim 5, wherein the top coat and/or the bottom coat is a fire

barrier sealant (see page 2).

Conclusion

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

applicant's disclosure.

Contact Information

Any inquiry concerning this communication or earlier communications from the

examiner should be directed to ELIZABETH A. PLUMMER whose telephone number is

(571 )272-2246. The examiner can normally be reached on Monday through Friday,

8:30-5:00.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Joshua Michener can be reached on (571) 272-1467. The fax phone

number for the organization where this application or proceeding is assigned is 571-

273-8300.

Application/Control Number: 14/084,930

Art Unit: 3635

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/ELIZABETH A PLUMMER/

Primary Examiner, Art Unit 3635