90013428 AA rejections After filing for an appeal on 8813449
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Transcript of 90013428 AA rejections After filing for an appeal on 8813449
Ex Parte Reexamination Advisory Action
Before the Filing of an Appeal Brief
Control No.
90/013,428
Examiner
Russell D. Stormer
Patent Under Reexamination
8813449
Art Unit
3993
AIA (First Inventor to File) Status No
--The MAILING DATE of this communication appears on the cover sheet with the correspondence address--
THE PROPOSED RESPONSE FILED 08 August 2016 FAILS TO OVERCOME ALL OF THE REJECTIONS IN THE FINAL REJECTION MAILED 06 Mav 2016.
1. ~ Unless a timely appeal is filed, or other appropriate action by the patent owner is taken to overcome all of the outstanding rejection(s), this prosecution of the present ex parte reexamination proceeding WILL BE TERMINATED and a Notice of Intent to Issue Ex Parte Reexamination Certificate will be mailed in due course. Any finally rejected claims, or claims objected to, will be CANCELLED. THE PERIOD FOR RESPONSE IS EXTENDED TO RUN§. MONTHS FROM THE MAILING DATE OF THE FINAL REJECTION. Extensions of time are governed by 37 CFR 1.550(c).
NOTICE OF APPEAL
2. ~ An Appeal Brief is due two months from the date of the Notice of Appeal filed on 06 September 2016 to avoid dismissal of the appeal. See 37 CFR 41.37(a). Extensions of time are governed by 37 CFR 1.550(c). See 37 CFR 41.37(e).
AMENDMENTS
3. ~ The proposed amendment(s) filed after a final action, but prior to the date of filing a brief, will not be entered because:
(a) ~ They raise new issues that would require further consideration and/or search (see NOTE below); (b) ~ They raise the issue of new matter (see NOTE below); (c) ~ They are not deemed to place the proceeding in better form for appeal by materially reducing or simplifying the
issues for appeal; and/or (d) D They present additional claims without canceling a corresponding number of finally rejected claims.
NOTE: See attached explanation (See 37 CFR 1.116 and 41.33(a)).
4. D Patent owner's proposed response filed __ has overcome the following rejection(s): __
5. D The proposed new or amended claim(s) __ would be allowable if submitted in a separate, timely filed amendment canceling the non-allowable claim(s).
6. ~ For purposes of appeal, the proposed amendment(s) a)~ will not be entered, or b)D will be entered and an explanation of how the new or amended claim(s) would be rejected is provided below or appended. The status of the claim(s) is (or will be) as follows: Claim(s) patentable and/or confirmed: None Claim(s) objected to: None Claim(s) rejected: 1-6,8-18,20-24. 21. 29, and 31-34 Claim(s) not subject to reexamination: None
AFFIDAVIT OR OTHER EVIDENCE
7. DA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
8. D The affidavit or other evidence filed after a final action, but before or on the date of filing a Notice of Appeal will not be entered because patent owner failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. See 37 CFR 1 .116( e ).
9. D The affidavit or other evidence filed after the date of filing a Notice of Appeal, but prior to the date of filing a brief, will not be entered because the affidavit or other evidence fails to overcome all rejections under appeal and/or appellant failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. See 37 CFR 41.33(d)(1 ).
10. ~ The affidavit or other evidence is entered. An explanation of the status of the claims after entry is below or attached.
REQUEST FOR RECONSIDERATION/OTHER
11. D The request for reconsideration has been considered but does NOT place the application in condition for allowance because: __
12. ~ Note the attached Information Disclosure Statement(s), PTO/SB/08, Paper No(s) 516/2016, 8/19/2016, 8/2212016.
13. D Other: __ .•
/Russell D. Stormer/ I Conferees: /RMF/ and /GAS/ I cc: Requester (if third party requester) U.S. Patent and Trademark Office PTOL-467 (Rev. 08-13) Ex Parte Reexamination Advisory Action Before the Filing of an Appeal Brief Part of Paper No. 20160826
Application/Control Number: 90/013,428
Art Unit: 3993
Attachment to Advisory Action
Interview Summary
Page 2
PO's written statement of the June 14, 2016 interview is noted. Inasmuch as the
written statement must be filed either as a separate paper or as a separate part of a
response to an outstanding Office action limited to a "complete written statement of the
reasons presented at the interview as warranting favorable action," the arguments
presented on pages 15-17 have not been considered. See MPEP 2281.
Response to Amendment
The Response does not overcome all of the rejections set forth in the Final
action, and the proposed amendments to the claims will not be entered because:
The Response raises new issues which would require further search and/or
consideration
The proposed amendments to claims 1, 18, and 24 recite that the foam and the
system are "capable of withstanding exposure to a temperature of about 540°C [or
greater for] .§1_about five minutes to pass testing mandated by UL 2079 Section 9.6
Movement Cycling and Section 11 Fire Endurance." Dependent claims 12-14 and 21-
23 have similar amendments.
The change from "for" to "at" raises a concern of indefiniteness because the
claims are not clear what is meant by "at," i.e., at 5 minutes of what?
Application/Control Number: 90/013,428
Art Unit: 3993
Page 3
The change from "for" to "at" and the positive recitation of UL 2079 raises a new
issue because it defines the capability of the foam and the system in a different scope
which would require re-consideration of the outstanding rejections.
Moreover, the change from "for" to "at" does not unequivocally narrow the claims,
and thus raises the new issue of claim scope enlargement. See 37 CFR 1.530(j).
The positive recitation of specific portions of the UL 2079 standard raises new
issues because section 9.6 merely sets forth the conditions of the test specimen cycling,
and section 11 defines the time-temperature curve of the fire endurance test. Sections
14-18 set forth conditions which must be met by a test specimen, and section 23
describes the fire endurance rating. Thus, it would appear that a recitation to only
certain portions of UL 2079 would: 1) not have support in the disclosure of the '449
patent; and 2) render the claims indefinite because it is unclear which standard(s) the
foam and system can actually pass.
The Response raises the issue of New Matter
The '449 patent states that the "resultant foam can pass the UL 2079 test
program." See column 8, lines 51-52.
The proposed amendments to claims 1, 18, and 24 recite that the first and
second foam and the system "are capable of withstanding exposure to a temperature of
about 540 degrees C [or greater for] at about five minutes to pass testing mandated by
UL 2079 Section 9.6 Movement Cycling and Section 11 Fire Endurance."
Application/Control Number: 90/013,428
Art Unit: 3993
UL 2079 does not appear to define a rating for a joint system which can
withstand any temperature for only 5 minutes. While some readings are taken at
Page 4
intervals as short as five minutes during testing (see Section 14, for example), tested
joint systems are given a Tor F rating of 1, 2, or 3 hours, depending on the mark which
they pass. There appears to be no UL rating for 5 minutes, or for a temperature of 540
degrees C.
Therefore, regardless of whether the claims recite a temperature of about 540
degrees C "for about five minutes" or "at about five minutes," the recitation of this
temperature and duration of time combined with passing any part of UL 2079 defines a
standard not defined in the disclosure and would appear to introduce new matter into
the '449 patent.
The limitation of "at about five minutes" further raises the issue of new matter
because it appears to imply a method, i.e., at the five-minute mark of some process
which is not recited.
Further, the positive recitation of specific portions of the UL 2079 standard raises
the issue of new matter because the disclosure of the original '449 patent does not
specify which portions of UL 2079 are passed or not passed by the foam.
The Response does not place the proceeding in better form for appeal
In addition to raising issues of new matter, indefiniteness, and enlarging the
scope of the claims, the proposed amendments do not appear to define over the
rejections set forth in the previous Office action.
Application/Control Number: 90/013,428
Art Unit: 3993
Page 5
The rejection of claims 1-6, 8-18, 20-24, and 26-34, set forth on pages 2-11, sets
forth that it would have been obvious to add a fire retardant material to the foam of
Baerveldt '708 in sufficient amounts as taught by lllger to enable the foam to withstand a
temperature of 540 degrees C for about five minutes. The proposed change from "for"
to "at" does not distinguish claims 1, 18, and 24 over this rejection.
Further, the proposed recitation of specific sections of UL 2079 does not
distinguish over the rejection because the foam of Baerveldt '708, being the same as
that recited in the claims, would inherently have the same properties (i.e., cycling
capabilities) as the claimed foam.
Response to Arguments
Patent Owner's arguments filed August 8, 2016 have been fully considered but
they are not persuasive.
The piecemeal arguments against lllger (is not water resistant, does not concern
an expansion joint system) do not address the reference as actually applied in the Final
Rejection, and are not given any weight. One cannot show nonobviousness by
attacking references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981 ); In re Merck &
Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The arguments about agents such as acrylic and wax on pages 18-19 are not
understood. If PO is arguing that the foam of Baerveldt '708 includes such agents to
Application/Control Number: 90/013,428
Art Unit: 3993
Page 6
provide water resistance, the point to made is moot at least because none of the claims
recite the absence of such agents.
The discussion on pages 19-20 of the DIN 4102 testing of the foam of lllger, and
the Declaration of Dr. lllger are noted. PO argues that under the DIN 4102 test the
foam of lllger achieves only a rating of B2 (normally flammable) and therefore teaches
away from the claimed invention.
The Examiner disagrees because the tests clearly show that the impregnation of
fire retardant materials such as aluminum hydroxide (ATH) into a resilient polyurethane
foam increase the flame resistance over an identical but non-infused foam. Moreover,
the infusion of the fire retardant materials produced surprising, excellent, and
unexpected results. See column 2, lines 9-19 of lllger, and the Remarks filed October
30, 1980 by lllger along with the Dr. lllger Declaration. It is submitted that lllger is
analogous art and would teach one of ordinary skill in the art that the fire or flame
resistance of a resilient polyurethane foam can be increased with the infusion of a fire
retardant material.
The argument on page 21, asserting there is no reason to "pick and choose" the
fire retardant material of lllger and "substitute for a water resistant agent" of Baerveldt
'708 is not well-taken and not understood because the rejections set forth in the
previous Office action do not substitute one material for the other.
PO argues that lllger merely teaches the resistance to flame spread (not fire or
heat resistance), and is seen to burn at high temperatures. lllger is further argued to be
silent as to the claimed temperature limitation (the "missing claim element").
Application/Control Number: 90/013,428
Art Unit: 3993
Page 7
While "high temperatures" does not appear to be defined, it should be noted that
in the subject '449 patent, column 3, lines 22-23, state "the term 'fire resistant' means
that the spread of fire is inhibited." It should further be noted that the temperature of a
flame, such as from a candle, can typically be about 1400 degrees C, 1 which is
considerably higher than 540 degrees C.
The Examiner asserts the Dr. lllger tests show that the impregnated polyurethane
foam of lllger was subjected to flames or high temperatures and found to inhibit the
spread of fire.
With respect to the "heavy loading" argument on page 24, it is noted that the '449
patent discloses and claims a ratio of fire retardant material infused into the foam is
about 3.5:1 to 4:1. This correlates to about 78-80%. The impregnated foam of lllger
may contain about 10-95% by weight of ATH. While the so-called "heavy loading"
taught by lllger has been discussed during this proceeding, the record is still silent as to
how the claimed foam can be loaded at 78-80% (similar to lllger) and somehow perform
differently than PO has alleged the foam of lllger would perform with respect to
compressibility and resilience.
Finally, with respect to the arguments concerning the dual functioning of fire and
water resistance foam, the foam disclosed in the '449 patent appears to be water
resistant only when its surfaces are coated with a waterproof elastomer.
1 See for instance https://en.wikipedia.org/wiki/Flame and http://www.doctorfire.com/flametmp.html. While it is acknowledged that information in Wikipedia is not necessarily reliable, the temperature of a flame can be obtained from a multitude of other sources.
Application/Control Number: 90/013,428
Art Unit: 3993
Declarations
Commercial Success
Page 8
The Declaration and Exhibits have been considered and appear to show that the
products related to the Emshield systems have enjoyed considerable commercial
success since their introduction. Exhibits B, C, D, and N, especially, appear to show
increasing use and acceptance of the products.
However, the showing of commercial success does not overcome the
obviousness rejections.
Inventor Declaration
The Inventor Declaration under 37 CFR 1.132 filed August 8, 2016 has been
considered but is ineffective to overcome the rejections in the Final Rejection.
On page 5, the declaration states that many expansion joint systems which pass
ASTM E-119 without the cycling regimen do not pass UL 2079 ('499 patent, column 2,
lines 15-27), but the Response does not appear to provide any examples of such
systems.
On pages 5-6, the declaration asserts that, from the totality of the subject '449
patent, one of ordinary skill in the art would have understood that the inventors
possessed the claimed fire and water resistant expansion joint system, wherein the fire
and water resistant expansion joint system and the foam infused with fire retardant
material are configured to pass both the cycling and fire and heat endurance portions of
the UL 2079 standard. However, it is noted that the invention as claimed and disclosed
Application/Control Number: 90/013,428
Art Unit: 3993
Page 9
does not specify how the system is able to withstand the fire and heat portions of the
test, as least because the '449 patent does not specify which fire retardant material(s)
or combinations thereof, and the amounts that are used, to enable the (polyurethane)
foam to withstand the claimed temperatures.
The discussion of lllger on pages 8-14 is noted. Where lllger is used as a
teaching reference to add a fire retardant material to the foam of Baerveldt '708 (final
rejection, p. 4), the asserted characteristics of lllger's foam are not as pertinent because
the types and amounts of fire retardants are not recited in any of the independent
claims. However, where the final rejection substitutes the foam of lllger for that of
Baerveldt '708 (p. 4), the declaration does not explain how the claimed foam can pass
the fire and heat portion of UL 2079 while at the same time asserting that the foam of
lllger cannot. The composition of lllger's foam are disclosed, but the declaration does
not address how the claimed foam is different.
The comparisons of lllger to AI-Tabaqchall and van Bonin are noted, but are not
especially relevant because AI-Tabaqchall and van Bonin are not used in a rejection
and the declaration does not provide evidence that the foam of lllger would have the
same or similar properties.
With respect to the discussion of the foam of van Bonin solidifying such that it is
no longer reversible, lllger describes his foam as flexible (column 4, lines66-67) and the
process as suitable for all fields of application were a flame retardant flexible foam is
used (column 6, line 66 to column 7, line 4).
Application/Control Number: 90/013,428
Art Unit: 3993
With respect to the discussion of density, aluminum oxide and thermal
Page 1 O
conductivity, and compression on pages 15-17 and 22, there does not appear to be an
explanation of how or why the claimed foam overcomes these apparent obstacles while
the foam of Baerveldt '708 when modified in view of lllger would not. Moreover, thermal
conductivity and insulative properties do not appear to be addressed in the subject '449
patent.
The declaration asserts that those of ordinary skill in the art did not know and did
not understand that a compressible foam seal such as that of Baerveldt '708 could be
infused with fire retardant material and maintain its ability to perform its functions in an
expansion joint, would have expected different results, and would have been directed
away from the claimed invention. While this may be true, it is not evidence that the
modification of Baerveldt '708 in view of lllger would not have been obvious.
With respect to page 21, the lllger states that the inventive foams have a
hydrophilic and hydrophobic character, and also that these properties can be adjusted
(column 3, lines 34-37).
The assertion on page 23 that one of ordinary skill in the art would expect that
impregnating the foam of Baerveldt '708 with fire retardant material would make the
foam "solidify on drying," is noted. However, the declaration offers no factual evidence
that this would happen, and it is understood that "hardened" as described in column 6,
lines 26-43 is analogous to "curing" and does not imply that the foam is no longer
reversibly compressible. lllger describes only flexible or semi-rigid foams.
Application/Control Number: 90/013,428
Art Unit: 3993
Page 11
The discussion of the Dr. lllger Declaration is noted, and while the example in
Experiment 1 achieves only a B2 rating under the DIN testing, this level of fire
resistance is an improvement over the examples in Experiments 2-4.
/Russell D. Stormer/
Russell D. Stormer Primary Examiner Central Reexamination Unit Art Unit 3993 (571) 272-6687
Conferee: /RMF/
Conferee: /GAS/
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re
Ex Parte Reexamination of: Patent of Hensley and Witherspoon
For FIREANDWATERRESISTANT EXPANSION AND SEISMIC JOINT SYSTEM
Patent No. 8,813,449
Issued: August 26, 2014
Reexam Appln. No.: 90/013,428
) Examiner: STORMER, Russell D. ) ) ) ) ) Group Art Unit: 3993 ) ) ) ) Confirmation No.: 4204 ) ) (Atty. Docket No: 1269-0003-lCON-RE) ) )
Middletown, Connecticut, September 6, 2016
Via Electronic Filing Mail Stop Ex Parte Reexam ATTN: Central Reexamination Unit Commissioner for Patents U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
Sir:
NOTICE OF APPEAL
Pursuant to 35 U.S.C. §134(b) and 37 C.F.R. §41.31, Patent Owner hereby appeals to the
Patent Trial and Appeal Board ("Board") from the decision of the Examiner in the Final Office
Action dated May 6, 2016, rejecting Claims 1-6, 8-18, 20-24 and 26-34. The due date for filing
the Notice of Appeal is September 6, 2016 and thus this filing is timely.
The Appeal Fee of $400 (small entity) is submitted herewith pursuant to 37 C.F.R.
§41.20(b)(l). Please charge any deficiencies in fees to Deposit Account No. 503342.
It is respectfully noted that Patent Owner has filed an Amendment and Response to Final
Office Action on August 8, 2016 to address the outstanding issues raised in the Final Office
1
Reexamination Appln. 90/013,428 Notice of Appeal
Atty. Docket No.: 1269-0003-lCON-RE
Action dated May 6, 2016. However, in an abundance of caution and to preserve its rights,
Patent Owner hereby appeals to the Board so that this matter remains pending until a favorable
Reexamination Certificate may be issued.
MKG, LLC formerly Michaud-Kinney Group LLP
306 Industrial Park Road, Suite 206 Middletown, CT 06457-1532 Tel: (860) 632-7200 Fax: (860) 632-8269
2
Respectfully submitted,
/Michael K. Kinney/ Michael K. Kinney Registration No. 42,740 Attorney for Patent Owner
UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/013,428 01/16/2015
128258 7590 09/08/2016
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
STORMER, RUSSELL D
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/08/2016 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 Boston, 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)).
Russell D. Stormer Primary Examiner Art Unit: 3993
PTOL-465 (Rev.07-04)