Ex Parte Reexamination Advisory Action

Before the Filing of an Appeal Brief

Control No.

90/013,395

Examiner

Russell D. Stormer

Patent Under Reexamination

8,739,495 B1 E

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 07 April 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 three months from the date of the Notice of Appeal filed on 07 Julv 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)D will not be entered, orb)~ 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: 1-9. 11-26,28-35,37,38.40-43.45 and 47-51 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) 11110114: 8119116: and (2/ 8122116.

13. D Other: __ .•

/Russell D. Stormer/ I conferee: /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. 20160903

Application/Control Number: 90/013,395

Art Unit: 3993

Page 9

The discussion of the "decomposition temperature" of ATH on page 31 does not

appear to be pertinent, and in fact, is considered to be disingenuous. It appears PO is

insinuating that ATH, when used as a fire retardant additive for foams, would cause the

foam to decompose at a temperature of 220 degrees C. This is evidenced by PO's use

of this discussion as a lead-in to yet another assertion that the foam of lllger would

disintegrate at high temperatures:

"Thus, consistent with Patent Owner's prior assertion, the skilled artisan would

understand lllger to teach disintegration at high temperatures, as evidenced from the

low decomposition temperature of aluminum hydroxide." (Emphasis in original).

Although not mentioned by PO, it is the very decomposition of ATH (and

many other fire retardant materials) at an elevated temperature (220 degrees C, for

instance) which causes the ATH to act as a fire retardant in the foam which it has

been added to.

As such, the discussion and assertions in lines 3-21 of page 31 are seen to be

misleading.

Rather than discouraging one of ordinary skill in the art from considering ATH as

a fire retardant material for foam, the Examiner sees PO's discussion and the

attachments (especially attachments 1 and 4) as clearly teaching that ATH (or perhaps

only the forms of ATH expressly discussed in the attachments) is best suited for use as

a fire retardant in polymers and foams which have a processing temperature that is

below the endothermic decomposition temperature of the ATH.

Application/Control Number: 90/013,395

Art Unit: 3993

Attachment to Advisory Action

Interview Summary

Page 2

On July 14, 2016, Patent Owner ("PO") filed a Written Statement of the personal

interview conducted on June 14, 2016, and the instant Response includes another

Statement of that interview on pages 21-22. Inasmuch as the written statement must be

limited to a "complete written statement of the reasons presented at the interview as

warranting favorable action," the arguments presented each of these Statements 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. Upon appeal, the proposed amendments will be entered-in-part:

The proposed amendments to claims 151 and 52-58 will be entered to overcome

the rejections under 35 U.S.C. 112 set forth in the Final Rejection; and the proposed

amendments to the remainder of 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, 25, 33, 38, 45, 48, and 51 recite that the

foam and the system are "capable of withstanding exposure to a temperature of about

1 Because claim 15 has been returned to its original form (as it appears in the '495 patent), its status identified should be changed to "original."

Application/Control Number: 90/013,395

Art Unit: 3993

540°C [or greater for] fil_about five minutes to pass testing mandated by UL 2079

Page 3

Section 9.6 Movement Cycling and Section 11 Fire Endurance." Dependent claims 21-

23, 42, 43, 49, and 50 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? Moreover, the

amended claims appear to be indefinite as to how withstanding a temperature at 5

minutes of something enables the foam to pass a portion of UL 2079.

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. Neither

section is actually "passed" by a test specimen. Sections 14-18 set forth conditions

which must be met by a test specimen, and section 23 describes the fire endurance

rating. Therefore, it appears that a recitation to only a portion of UL 2079 would render

the claims indefinite.

Application/Control Number: 90/013,395

Art Unit: 3993

The Response raises the issue of New Matter

The '495 patent states that the "resultant foam can pass the UL 2079 test

program." See column 6, lines 52-53.

Page 4

The proposed amendments to claims 1, 25, 33, 38, 45, 48, and 51 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."

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

intervals as short as five minutes during testing (see Section 14, for example), tested

joint systems are given an F and/or a T rating of 1, 2, or 3 hours, depending on they

prevent the passage of flames therethrough and how long it takes for the temperature of

the non-fire side to rise approximately 181 degrees Cover the ambient temperature,

respectively.

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 implies a

standard not defined in the disclosure and would appear to introduce new matter into

the '495 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.

Application/Control Number: 90/013,395

Art Unit: 3993

Page 5

Further, the positive recitation of specific portions of the UL 2079 standard raises

the issue of new matter because the disclosure of the original '495 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 enlargement of the

claim scope, the proposed amendments do not appear to define over the rejections set

forth in the previous Office action.

The rejection of claims 1, 2, 4, 9, 11-26, 28, 30, 33, 35, 38, 40-43, 45, 47-51, and

53-58, on pages 3-20 of the final rejection, sets forth that it would have been obvious to

add a fire retardant material to the foam of Baerveldt '695 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 '695, 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.

Application/Control Number: 90/013,395

Art Unit: 3993

Page 6

The arguments on pages 25-26 about the acrylic and wax agents used in the

foam of Baerveldt '695 are noted, but not entirely understood. The rejections set forth in

the Final Rejection do not assert that water-proofing agents added to a foam would

provide any resistance to fire. Moreover, none of the claims of the '495 patent recite the

absence of such agents.

With respect to the "dual functionality" asserted on page 26, the claims recite a

water resistant layer disposed on the foam, so the foam itself does not have a

resistance to water and fire as it appears that PO is arguing to distinguish over

Baerveldt '695.

The discussion on pages 26-27 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.

Application/Control Number: 90/013,395

Art Unit: 3993

Page 7

Noting that Baerveldt '695 concerns a joint filler and waterproofing technology (p.

25), and lllger "is not concerned with any fire and water resistant expansion joint

system" (page 27), amounts to a piecemeal argument that does not address the

references as they are actually applied in the Final Rejection, and thus is 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 argument on page 28, asserting there is no reason to "pick and choose" the

fire retardant material of lllger and "substitute for a water resistant agent" of Baerveldt

'695 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. As noted earlier, the

claims do not preclude the presence of water-proofing materials in the foam.

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").

While "high temperatures" does not appear to be defined, it should be noted that

column 3, lines 17-18 of the subject '495 patent state "the term 'fire resistant' means

that the spread of fire is inhibited." It should further be noted that the temperature of

Application/Control Number: 90/013,395

Art Unit: 3993

Page 8

the outer part of a flame, such as from a candle, can typically be about 1400 degrees

C,2 which is considerably higher than 540 degrees C.

The Examiner asserts, at a minimum, the Dr. lllger tests show that the

impregnated polyurethane foam of lllger was subjected to flames or high temperatures

and still found to inhibit the spread of fire, and is superior to the other test specimens in

that regard.

The arguments directed at Ward (pages 28-29) are not entirely understood.

Ward is not used in the rejection of the independent claims, and thus cannot render the

combination of Baerveldt '695 and lllger unobvious. Ward is used as a teaching of

providing a fire resistance layer on a preformed flexible fire-retardant foam sealant used

in an expansion joint.

While Ward "is seen" by PO as teaching that fire retardant impregnated foam

loss integrity when subjected to temperatures of 300-400 degrees C, Ward does not

state that all such foams would behave this in this manner. And PO does not explain

how or why the claimed foam does not disintegrate at the same temperatures.

With respect to the arguments on pages 29-30, it is true that lllger does not

expressly teach that the foam meets the claimed temperature requirements. However,

the arguments fail to mention that the term "high temperature" is not defined in the '495

patent, and lllger's foam clearly meets the '495 patent's definition of "fire resistant" at

least because it inhibits the spread of fire.

2 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: 90/013,395

Art Unit: 3993

Page 9

The discussion of the "decomposition temperature" of ATH on page 31 does not

appear to be pertinent, and in fact, is considered to be disingenuous. It appears PO is

insinuating that ATH, when used as a fire retardant additive for foams, would cause the

foam to decompose at a temperature of 220 degrees C. This is evidenced by PO's use

of this discussion as a lead-in to yet another assertion that the foam of lllger would

disintegrate at high temperatures:

"Thus, consistent with Patent Owner's prior assertion, the skilled artisan would

understand lllger to teach disintegration at high temperatures, as evidenced from the

low decomposition temperature of aluminum hydroxide." (Emphasis in original).

Although not mentioned by PO, it is the very decomposition of ATH (and

many other fire retardant materials) at an elevated temperature (220 degrees C, for

instance) which causes the ATH to act as a fire retardant in the foam which it has

been added to.

As such, the discussion and assertions in lines 3-21 of page 31 are seen to be

misleading.

Rather than discouraging one of ordinary skill in the art from considering ATH as

a fire retardant material for foam, the Examiner sees PO's discussion and the

attachments (especially attachments 1 and 4) as clearly teaching that ATH (or perhaps

only the forms of ATH expressly discussed in the attachments) is best suited for use as

a fire retardant in polymers and foams which have a processing temperature that is

below the endothermic decomposition temperature of the ATH.

Application/Control Number: 90/013,395

Art Unit: 3993

Page 1 O

However, assuming arguendo that lllger's fire-retardant polyurethane foam, or

the foam of Baerveldt '695 as modified to include a fire retardant material, would

disintegrate at high temperatures as alleged by PO. One skilled in the art would then

understand that PO's claimed open cell polyurethane foam infused with a fire retardant

material to disintegrate at similar temperatures. PO does not appear to argue or assert

that the claimed infused foam does not disintegrate when exposed to high

temperatures.

With respect to the "heavy loading" argument on pages 31-32, it is noted that the

'495 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.

With respect to the physical structure, unique quality, and unexpected result

argued on pages 33-34, it is noted that the compressed density of the infused foam is

the only structural limitation found in any of the independent claims. None of these

claims recites any physical structure or composition to distinguish over the foam of

Baerveldt '695 as modified to include a fire retardant material. The ability to withstand a

temperature at or for a certain amount of time is a function or a result, not a structural

property.

Application/Control Number: 90/013,395

Art Unit: 3993

On pages 35-36, PO sees the modified foam of Baerveldt '695 as

"deteriorating/disintegrating" at "high temperature," but does not explain how the

claimed foam is different or why it can withstand such high temperatures without

deteriorating or disintegrating.

Page 11

Finally, with respect to the arguments concerning the dual functioning of fire and

water resistance foam, the foam disclosed in the '495 patent appears to be water

resistant only when its surfaces are coated with a waterproof elastomer.

Declarations

Commercial Success

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 evidence is not sufficient

to 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 ('495 patent, column 2,

Application/Control Number: 90/013,395

Art Unit: 3993

Page 12

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 '495

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

does not specify how the system is able to withstand the fire and heat portions of the

test, as least because the '495 patent does not specify which fire retardant material(s)

or combinations thereof, and the amounts that are used, which 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 '695 (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. Where the final rejection substitutes the foam of lllger for that of Baerveldt '695

(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 assert that the foam of lllger cannot. The

composition of lllger's foam is disclosed, but the declaration does not address how the

claimed foam is different, and does not mention whether or not the claimed foam avoids

the disintegration that lllger is asserted to undergo.

Application/Control Number: 90/013,395

Art Unit: 3993

Page 13

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, lines 66-67) 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).

With respect to the discussion of density, aluminum oxide and thermal

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 '695 when modified in view of lllger would not. Moreover, thermal

conductivity and insulative properties do not appear to be addressed in the subject '495

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 '695 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. Whether or not this is true, it is not evidence that the

modification of Baerveldt '695 in view of lllger would not have been obvious.

Moreover, despite all of the arguments that lllger's foam, or the foam of Baerveldt

'695 as modified to include a fire retardant material, would be understood to

Application/Control Number: 90/013,395

Art Unit: 3993

Page 14

disintegrate, the declaration does not appear to assert that the claimed foam does not

decompose or disintegrate at high temperatures. Further, these is no explanation as to

why the claimed foam does or would perform differently from what is asserted to have

been expected by those of ordinary skill in the art.

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 '695 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 throughout this proceeding it has been understood that

"hardened" as described in column 6, lines 26-43 of lllger is analogous to "curing" and

does not imply that the foam is no longer reversibly compressible. Besides, lllger

describes only flexible or semi-rigid foams.

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, and is attributed to

the impregnation of ATH into the foam.

/Russell D. Stormer/

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

Conferee: /RMF/

Conferee: /GAS/

Ex Parte Reexamination Advisory Action

Before the Filing of an Appeal Brief

Control No.

90/013,395

Examiner

Russell D. Stormer

Patent Under Reexamination

8,739,495 B1 E

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 07 April 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 three months from the date of the Notice of Appeal filed on 07 Julv 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)D will not be entered, orb)~ 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: 1-9. 11-26,28-35,37,38.40-43.45 and 47-51 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) 11110114: 8119116: and (2/ 8122116.

13. D Other: __ .•

/Russell D. Stormer/ I conferee: /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. 20160903

Doc Code: IDS 90013395 - GAU: 3993 Receipt date: 11/10/2014 Document Description: Information Disclosure Statement filed

PTO/SB/42 (07-09) Approved for use through 07/31/2012. 0MB 0651-0031

U.S Patent and Trademark Office; U. S DEPARTMENT OF COMMERCE Under the Paoerwork Reduction Act of 1995, no oersons are reauired to resoond to a collection of information unless it disolavs a valid 0MB control number.

Docket Number (Optional) I Patent Number 14-165-SR 8,739,495

37 CFR 1.501 Applicant INFORMATION DISCLOSURE CITATION Emseal Joint Systems, Ltd.,

IN A PATENT Issue Date I Art Unit (Sheet 1 0~ 1 ) Jun. 3,2014 3635

U.S. PATENT DOCUMENTS

EXAMINER DOCUMENT NUMBER DATE NAME CLASS SUBCLASS FILING DATE INITIAL IF APPROPRIATE

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EXAMINER iRusseil D. Stormer/ I DATE CONSIDERED

09/08/2016

This collection of information is required by 37 CFR 1.501. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 2 hours to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

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Receipt date: 08/19/2016 90013395 - GAU: 3993 Doc code: IDS Doc description: Information Disclosure Statement (iDS) Fiied

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Application Number 90013395

Filing Date 2014-11-1 o INFORMATION DISCLOSURE STATEMENT BY APPLICANT

-Fi~~t~-N~~~d--1 ~~~~;t-~-r---· [ wth~r~-;;~~-h------------------------------------------------------------------------------------------------------

Art Unit 3993 ( Not for submission under 37 CFR 1.99)

Examiner Name I Jeffrey L. Gellner

--------------------------------------------------------------------------------------------------------------- -~~!-~:~-~x--~-~-~~~-!---~-~-'.::~~-~------J __ :_~-~~-~~~-~-:-~_:_~~~~~_: _____________________________________________________________________ _

U.S.PATENTS

Examinerl Cite Initial* No

Patent Number Kind Code1 Issue Date

Pages,Columns,Lines where Name of Patentee or Applicant of cited Document Relevant Passages or Relevant

Figures Appear

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U.S.PATENT APPLICATION PUBLICATIONS

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FOREIGN PATENT DOCUMENTS

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D

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NON-PATENT LITERATURE DOCUMENTS

Ex_ a_ mi~i_er!: Cite I (lib1clukde name _of t~e auu11or (ir: c

1 AP ITAL _LETTEtRs

1 ). titl

1e )oidthte article (w( h) en a

1 ppropriate). titleboi ,th)e item 1

1

TS , 1 i oo , magazine, Jouma, sena, symposium, ca a og, e c. a e. pages s , vo ume-1ssue num erts .

lrntials : No : bl. h ·t d/ t h bl. h d i ! ! pu 1s er, c1 y an or coun ry w ere pu 1s e . i ______________________ ) ____________ ) _______________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________ J, __________ _

E.Fs Web 2 ·1 ·17 ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH. ir.d.s.i

Application Number

Filin~1 Date

90013395

2014-11-10

INFORMATION DISCLOSURE STATEMENT BY APPLICANT

First Named Inventor Witherspoon

Art Unit 3993 ( Not for submission under 37 CFR 1.99)

2

3

4

Examiner Name Jeffrey L. Gellner

Attorney Docket Number 1269-0001-1 CON-RE

Schul International Co., LLC, Firejoint 2 FR-H, Fire Rated Expansion Joint 2 Hour Fire Rated, Exhibit B3a, Document 32-5, Filed 11 /25/14, pp. 1-2.

Schul International Co., LLC, Firejoint 2 FR-H, Fire Rated Expansion Joint 2 Hour Fire Rated, Exhibit B3a, Document 32-6, Filed 11/25/14, pp. 1-3.

Schul International Co., LLC, Firejoint 2 FR-H, Fire Rated Expansion Joint 2 Hour Fire Rated, Exhibit B3b, Document 32-7, Filed 11/25/14, pp. 1-2.

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15 , ~~t~~~1~~;;~~i~,n;/l:do1, 1~;~;

1:i,r~i_i~~;. FR-H & 2 FR-V, Fire Rated Expansion Joint 2 Hour Fire Rated, Exhibit B3c, D

_____________________ __i ____________ _l_ ______________________________________________________________________ · _______________________________________________________________________________________________________________________________________________________________________________ .J.-----------

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Wil!seal LLC, Product Data Sheet, \1\/i!lseal FR-2V, Exhibit C1, Document 32-10, Filed 11/25/14, pp. 1-7.

\1\/il!seal LLC, Product Data Sheet, \/Vi!lseal FR-2H, Exhibit C2, Document 32-11, Filed 11 /25/14, pp. 1-7.

VVillseal LLC, Product Data S~1eet, V\/illseal FR-V, 2 & 3 Hour Fire Rated, Exhibit C3, Document 32-12, Filed 11/25/14, pp. 1-7.

V\/illseal LLC, Product Data Sheet, V\/illseal FR-H, 2 & 3 Hour Fire Rated, Exhibit C4, Document 32-13, Filed 11/25/14, pp. 1-7.

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10

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V\/illseal LLC, Installation Instructions, V\/illseal FR-2H & FR-2V, Exhibit CS, Document 32-14, Filed 11 /25/14, pp. 1-5.

Willsea! LLC, Installation Instructions, Willsea! FR-H / FRV 2 & 3 Hour Fire Rated, Exhibit C6, Document 32-15, Filed 11 /25/14, pp. 1-4.

E.Fs Web 2·1 ·17 ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH. ir.d.s.i

D

D

INFORMATION DISCLOSURE STATEMENT BY APPLICANT ( Not for submission under 37 CFR 1.99)

I 12 I Plaintiffs Consolidated Complaint,

Application Number

Filin~1 Date

90013395

2014-11-10

First Named Inventor Witherspoon

Art Unit 3993

Examiner Name Jeffrey L. Gellner

Attorney Docket Number 1269-0001-1 CON-RE

U 4-cv-00358SM, Document 32, Filed 11/25i14, pp. 1-10.

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I I _______________________ 1 ____________ 1 ______________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________ _1 ____________

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EXAMINER SIGNATURE

Examiner Signature I /Russell D. Stormer/ I Date Considered I 09/0B/2016

*EXAMINER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through a citation if not in conformance and not considered. Include copy of this form witt1 next communication to applicant.

1 See Kind Codes of USPTO Patent Documents at \•Ntw.USPTO.GGV or MPEP 901.04. 2 Enter office tt1at issued the document, t;y the two-letter code (WIPO Standard ST.3). 3 For Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document 4 Kind of document by the appropriate symbols as indicated on the document under WIPO Standard ST 16 if possible. 5 Applicant is to place a check mark here if English language translation is allached.

E.Fs Web 2·1 ·17 ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH. ir.d.s.i

I

Receipt elate: 08/22/2016 90013395 ·· GAU: 3993 Doc code: IDS Doc description: Information Disclosure Statement (iDS) Fiied

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Application Number 90013395

Filing Date 2014-11-1 o INFORMATION DISCLOSURE STATEMENT BY APPLICANT

-Fi~~t~-N~~~d--1 ~~~~;t-~_r ____ [ wth~r~-;;~~-h------------------------------------------------------------------------------------------------------

Art Unit 3993 ( Not for submission under 37 CFR 1.99)

Examiner Name I Jeffrey L. Gellner

--------------------------------------------------------------------------------------------------------------- -~~!-~:~-~x--~-~-~~~-!---~-~-'.::~~-~------J __ :_~-~~-~~~-~-:-~_:_~~~~~_: _____________________________________________________________________ _

U.S.PATENTS

Examinerl Cite Initial* No

Patent Number Kind Code1 Issue Date

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FOREIGN PATENT DOCUMENTS

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D

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NON-PATENT LITERATURE DOCUMENTS

Ex_ a_ mi~i_er!: Cite I (lib1clukde name _of t~e auu11or (ir: c

1 AP ITAL _LETTEtRs

1 ). titl

1e )oidthte article (w( h) en a

1 ppropriate). titleboi ,th)e item 1

1

TS , 1 i oo , magazine, Jouma, sena, symposium, ca a og, e c. a e. pages s , vo ume-1ssue num erts .

lrntials : No : bl. h ·t d/ t h bl. h d i ! ! pu 1s er, c1 y an or coun ry w ere pu 1s e . i ______________________ ) ____________ ) _______________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________ J, __________ _

E.FS Web 2.1.17 ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH. ir.cLs.i

INFORMATION DISCLOSURE STATEMENT BY APPLICANT ( Not for submission under 37 CFR 1.99)

Application Number

Filin~1 Date

90013395

2014-11-10

First Named Inventor Witherspoon

Art Unit 3993

Examiner Name Jeffrey L. Gellner

Attorney Docket Number 1269-0001-1 CON-RE

2 Snapshot of Office Action for 14/950,923 (1269-0002-1 CON); May 6, 2016, 13 pages.

3 Snapshot of Office Action for 14/730,896 (1269-0006-1 CON); May 9, 2016, 18 pages.

4 Snapshot of Office Action for 14/229,463 (1269-0011-1); May 12, 2016, 14 pages.

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5 i Snapshot of Advisory Action for 90/013,511 (1269-0003-1 CiP-RE); May 9, 2016, 12 pages. D _____________________ __i ____________ _l_ ______________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________ .J.-----------

6

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Snapsllot of Ex Parte Reexamination Certificate No. US 6,532,708C2 for 90/013,683 (1269-0014RE-3); June 7, 2016, 2 pages.

Snapsllot of Office Action for 14/278,210 (1269-0001-1 CON-1 ); May 19, 2016, 12 pages.

Snapsllot of Office Action for 14/511,394 (1269-0004-1 DIV); May 13, 2016, 6 pages.

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EXAMINER SIGNATURE

D

D

D

--~~~-~'.~_:_~_~!-~-~-~!~_~_:J ______________ Lf:l_~_§§_gJLQ~ __ §tgr_QJ_grL _______________________________________________________________________ ___l_~-~-'.~--~~~:_'.~_:_~~~---j ___ 9_~{9-_~'.~9_J_~-------------------------------------*EXAM IN ER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through a citation if not in conformance and not considered. Include copy of this form with next communication to applicant.

1 See Kind Codes of USPTO Patent Documents at ~·t,•Nr1J_:;;fI_Qj~QY or MPEP 90i .04. 2 Enter office ttiat issued lhe document, by lhe lwo-letter code (WIPO Standard ST.3). 3 For Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document 4 Kind of document by the appropriate symbols as indicated on the document under WIPO Standard ST ·16 if possible. 5 Applicant is to place a check mark here if English language translation is attached.

E.FS Web 2.1.17 ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH. ir.cLsJ

Receipt date: 08/22/2016 90013395 - GAU: 3993 Doc code: IDS Doc description: Information Disclosure Statement (iDS) Fiied

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Application Number 90013395

Filing Date 2014-11-1 o INFORMATION DISCLOSURE STATEMENT BY APPLICANT

-Fi~~t~-N~~~d--1 ~~~~;t-~-r---· [ wth~r~-;;~~-h------------------------------------------------------------------------------------------------------

Art Unit 3993 ( Not for submission under 37 CFR 1.99)

Examiner Name I Jeffrey L. Gellner

--------------------------------------------------------------------------------------------------------------- -~~!-~:~-~x--~-~-~~~-!---~-~-'.::~~-~------J __ :_~-~~-~~~-~-:-~_:_~~~~~_: _____________________________________________________________________ _

U.S.PATENTS

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D

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NON-PATENT LITERATURE DOCUMENTS

Ex_ a_ mi~i_er!: Cite I (lib1clukde name _of t~e auu11or (ir: c

1 AP ITAL _LETTEtRs

1 ). titl

1e )oidthte article (w( h) en a

1 ppropriate). titleboi ,th)e item 1

1

TS , 1 i oo , magazine, Jouma, sena, symposium, ca a og, e c. a e. pages s , vo ume-1ssue num erts .

lrntials : No : bl. h ·t d/ t h bl. h d i ! ! pu 1s er, c1 y an or coun ry w ere pu 1s e . i ______________________ ) ____________ ) _______________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________ J, __________ _

E.FS Web 2.1.17 ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH. /r.d.s./

Application Number

Filin~1 Date

90013395

2014-11-10

INFORMATION DISCLOSURE STATEMENT BY APPLICANT

First Named Inventor Witherspoon

Art Unit 3993 ( Not for submission under 37 CFR 1.99)

2

3

4

5

Examiner Name Jeffrey L. Gellner

Attorney Docket Number 1269-0001-1 CON-RE

Mercury et aL, "On the Decomposition of Synthetic Gibbsite Studied by Neutron Thermodiffractometry", J. Am. Ceram, Soc. 89, (2006), pgs. 3728-3733.

Brydon et al., "The Nature of Aluminum Hydroxide-Montmorillonite Complexes", The American Mineralogist, Vol. 51, May-June, 1966, pgs. 875-889.

Huber, Alumina Trihydrate (ATH), A Versatile Pigment for Coatings, inks, Adhesives, Caulks and Sealants Applications, December 2005, 5 pgs.

3.3.3.8 Thermal Stability/Loss on lgnition/Endotheric Heat, Figure 3.9, 1 pg.

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EXAMINER SIGNATURE

Examiner Signature I /Russell D. Stormer/ I Date Considered I 09/08/2016

*EXAMINER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through a citation if not in conformance and not considered. Include copy ofU1is form with next communication to applicant

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1 See Kind Codes of USPTO Patent Documents at www.USPTO.GOV or MPEP 901.04. 2 Enter office that issued the document, by tt1e two-letter code {WIPO Standard ST.3). 3 For Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document 4 Kind of document by the appropriate symbols as indicated on lhe document under WIPO Standard ST.16 if possible. 5 Applicant is lo place a check mark t1ere if Englist1 language trnnslalion is attached.

E.FS Web 2.1.17 ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH. /r.d.s./

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Ex Parte Reexamination of Patent of Witherspoon

For "Fire and Water Resistant Expansion Joint System"

Patent No.: 8,739,495

) ) Art Unit: 3993 )

) Examiner: Jeffrey L. Gellner ) ) ) Confirmation No.: 9773 ) ) )

PATENTS

Issue Date: June 3, 2014

Reexam Appln. No. 90/013,395 ) Atty. Docket No.: 1269-0001-lCON-RE

Middletown, Connecticut, August 19, 2016

Via Electronic Filing System (EFS) Mail Stop Ex Parte Reexam Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450

INFORMATION DISCLOSURE STATEMENT

Dear Sir:

Pursuant to Section 2202 of the MPEP and 37 CFR § 1.502, attached are several pages of

form PT0-1449 (EFS Web 2.1.17) making of record in the present Reexamination Proceedings

documents from a patent litigation involving Patent Owner's U.S. Patent No. 8,739,495 (Docket

No. 1:14-cv-358-SM, filed on August 13, 2014, U.S. District Court of New Hampshire). The patent

litigation was made of record in this Reexamination Proceeding in Patent Owner's

NOTIFICATION OF CONCURRENT PROCEEDINGS filed March 25, 2015.

The documents submitted in this Information Disclosure Statement include a Consolidated

Complaint, filed November 24, 2014 in the litigation, and relevant exhibits which identify products

of alleged copiers of Patent Owner's claimed invention, Schul International Co., LLC and Willseal,

LLC, see paragraph numbers 15 to 17 at pages 4 and 5 of the Consolidated Compliant, and Exhibits

B 1 to C6 inclusive.

Page 1 of 3

Reexam Appln. No.: 90/013,395 Art Unit: 3993

No fees are believed due with the filing of this Information Disclosure Statement.

However, if a further fee is due, Patent Owner authorizes the payment of any additional charges

that may be necessary to maintain the pendency of the present application to Deposit Account

No. 503342 maintained by Patent Owner's attorneys.

MKGLLC formerly Michaud-Kinney Group LLP 306 Industrial Park Road, Suite 206 Middletown, CT 06457-1532 Tel: (860) 632-7200 Fax: (860) 632-8269

Respectfully submitted,

By /Michael K. Kinney/ Michael K. Kinney Registration No. 42,740

Page 2 of 3

Reexam Appln. No.: 90/013,395 Art Unit: 3993

CERTIFICATE OF SERVICE

The undersigned certifies that service of this filing (Information Disclosure Statement

and referenced documents) was made to the Third Party Requester as detailed below:

Type: First Class Mail

Documents Served:

Information Disclosure Statement in 90/013,395; and

Cited documents filed concurrently herewith.

Person Served:

David Connaughton, Jr., Esq. Registered Patent Attorney Lambert & Associates 92 State Street, Suite 200 Boston, MA 02109

Date: August 19, 2016

MKG,LLC 306 Industrial Park Road, Suite 206 Middletown, CT 06457-1532 Telephone: 860-632-7200 Fax: 860-632-8269

Respectfully submitted,

By /Michael K. Kinney/ Michael K. Kinney Registration No. 42,740

Page 3 of 3

UNITED STA TES PA TENT AND TRADEMARK OFFICE

APPLICATION NO. FILING DATE

90/013,395 11/10/2014

128258 7 590 09/14/2016

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

FIRST NAMED INVENTOR

8,739,495 Bl

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.

14-165-SR 9773

EXAMINER

STORMER, RUSSELL D

ART UNIT PAPER NUMBER

3993

MAIL DATE DELIVERY MODE

09/14/2016 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)

UNITED STATES PATENT AND TEADElillA.F.K OFF'ICE

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"iAl."IJ.1:.::pto.gov

EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM

REEXAMINATION CONTROL NO. 90/013.395.

PATENT NO. 8.739.495 81 E.

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)