Application No. 13/731,327

Applicant(s) HENSLEY ET AL.

Office Action Summary Examiner ELIZABETH A. QUAST

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 RCE 01 September 2015.

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

2a)O 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 G.D. 11, 453 O.G. 213.

Disposition of Claims* 5)~ Claim(s) 1-30 and 32-38 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5a) Of the above claim(s) __ is/are withdrawn from consideration. 6)0 Claim(s) __ is/are allowed. 7)~ Claim(s) 1-30 and 32-38 is/are rejected. 8)0 Claim(s) __ is/are objected to. 9)0 Claim(s) __ are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

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Application Papers 10)0 The specification is objected to by the Examiner. 11 )0 The drawing(s) filed on __ is/are: a)O accepted or b)O 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) 0 Notice of References Cited (PT0-892)

2) ~ 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 20160314

UNITED STA TES p A TENT AND TRADEMARK OFFICE

APPLICATION NO. FILING DATE

13/731,327 12/31/2012

128258 7590 03/18/2016

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

FIRST NAMED INVENTOR

Lester Hensley

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.

1269-0002-1 CIP 7668

EXAMINER

QUAST, ELIZABETH A

ART UNIT PAPER NUMBER

3635

NOTIFICATION DATE DELIVERY MODE

03/18/2016 ELECTRONIC

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.

Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es):

docketing@mkgip.com

PTOL-90A (Rev. 04/07)

Application/Control Number: 13/731,327 Page 2

Art Unit: 3635

DETAILED ACTION

It is noted that on 01 September 2015 the applicant filed a Request for Continued

Examination. On 03 September 2015 a Notice of Withdraw! from issue was mailed, as

the Notice of Withdrawal and the RCE crossed in the mail. As a result of said crossing,

the Notice of Withdrawal is moot.

Continued Examination Under 37 CFR 1.114

1. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this

application is eligible for continued examination under 37 CFR 1.114, and the fee set

forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action

has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01

September 2015 has been entered.

Claim Rejections - 35 USC § 103

2. 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.

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3. Claims 1-8, 10-18, 25-30 and 35-38 rejected under pre-AIA 35 U.S.C. 103(a)

as being unpatentable over COLORSEAL in view of llger et al. (US Patent

4,288,559), or alternatively in view of Series ES Elastomeric Sealant ("SpecSeal"),

or alternatively in view of llger et al. (US Patent 4,288,559) and Series ES

Elastomeric Sealant ("SpecSeal").

a. Regarding claims 1 and 25, COLORSEAL discloses a water resistant

expansion joint system comprising: a core (the open celled foam, see page 1,

second bullet under Product Description); a layer of an elastomer (page 1, first

and third bullets under Product Description; Fig. 1) disposed on the core; wherein

the layer of the elastomer and core are tooled to define a profile to facilitate the

compression of the expansion joint system when installed between coplanar

substrates (Fig. 1 ), and wherein the expansion joint system is angled around a

corner (via the miter joint, page 2, fourth bullet under Installation). COLORSEAL

does not disclose the expansion joint system is also a fire resistant expansion

joint system with a fire retardant infused into the core, the system capable of

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

minutes. lllger et al., however, discloses infusing polyurethane foam with a fire

retardant, aluminium hydroxide, at a ratio (retardant:foam) of 0.1 :1 to 8:1 ("from

10 to 800%" of col. 2, lines 25-33). lllger's infused foam would meet the claimed

temperature requirement since the retardant is aluminium hydroxide (col. 2, lines

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25-33, considered Al(OH)3) the same as aluminum tri-hydrate that is used in the

claimed invention (col. 2, lines 25-33)). It would have been obvious to one of

ordinary skill in the art at the time of the invention to modify the system of

COLORSEAL by adding the fire retardant of lllger et al. to the foam so as to use

a foam with excellent fire retardant properties (from abstract of lllger) when

required; or, in the alternative to substitute COLORSEAL's foam with the foam of

lllger et al. so as to use a foam with desirable mechanical and excellent fire

retardant properties (from abstract of lllger) when required. The system of

COLORSEAL and lllger et al. would be capable of withstanding a temperature of

540°C or greater for about five minutes. In other words, because the modified

system of COLORSEAL in view of lllger et al. has the same foam and the same

fire retardants, it would have the same properties and be capable of same

performance. Alternatively, 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 10 and 11 show concrete 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 temperature of 538

degrees Cat 5 minutes; 927 degrees Cat one hour; 1010 degrees Cat two

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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 core the joint system of COLORSEAL with a fire retardant material in order

to produce a joint system capable of passing the criteria of UL 2079, 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. A third

alternative, lllger et al. teaches a process of infusing a flexible foam with a fire­

retardant material. lllger et al. notes that any flexible foams are suitable for the

process, but polyurethane foams 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 et al. and SpecSeal, it would have

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

infuse the foam core portions of COLORSEAL 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 COLORSEAL using the

known techniques taught by lllger et al., and the foam core of COLORSEAL

modified with the fire retardant material of lllger et al. 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 COLORSEAL with a fire-retardant material

in sufficient amounts as taught by lllger et al. would yield the predictable and

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

temperature of about 540 degrees C for about five minutes.

b. Regarding claim 2, wherein the core comprises a plurality of individual

laminations assembled to construct a laminate (Fig. 1 of COLORSEAL), one or

more of the laminations being infused with the water-based acrylic chemistry

(Fig. 1 of COLORSEAL), and as modified at least one of the laminations is

infused with the fire retardant.

c. Regarding claim 3, wherein vertically oriented surfaces of core are

retained between edges of the coplanar substrates (Fig. 1 ).

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d. Regarding claim 4, COLORSEAL further teaches wherein the core

comprises a foam (see page 1, second bullet under Product Description).

Page 7

e. Regarding claim 5, COLORSEAL further teaches the elastomer disposed

on the core comprises a silicone (Fig. 1; page 1, first and third bullets under

Product Description).

f. Regarding claim 6, COLORSEAL in view of lllger et al. and/or SpecSeal

discloses the invention as claimed except for the elastomer being a polysulfides,

acrylics, polyurethanes, poly-eposides, sily-terminated polyethers, or

combinations thereof. However, it would have been a matter of obvious design

choice to form the elastomer out of a polysulfides, acrylics, polyurethanes, poly­

eposides, sily-terminated polyethers, or combinations thereof, since it has been

held to be within the general skill of a worker in the art to select a known material

on the basis of its suitability for the intended use as a matter of obvious design

choice. In re Leshin, 125 USPQ 416. Here, the material could be chosen for its

water impermeability.

g. Regarding claim 7, the elastomer is tooled to define a bellow profile (Fig.

1; page 1, bullet labeled Seismic & High Movement Joints).

h. Regarding claim 8, COLORSEAL further teaches the expansion joint

system is angled around the corner to extend from a horizontal plane to a vertical

plane (page 1, first bullet under Uses).

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i. Regarding claims 10 and 11, COLORSEAL further teaches the expansion

joint system is angled around the corner and extends in a horizontal plane, and

the angle around the corner comprises a miter joint between two sections of

open celled foam extending in the horizontal plane (page 2, fourth bullet under

Installation).

j. Regarding claim 12, COLOR further teaches the two sections of core

extending in the horizontal plane are adhesively joined (page 2, Installation).

k. Regarding claims 13 and 30, lllger et al. further discloses the fire retardant

material infused in a range of about 3.5:1 to about 4:1 by weight ("from 10 to

800%" of col. 2, lines 25-33 of lllger). In addition, 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). 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 COLORSEAL 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.

I. Regarding claim 14, as modified, a layer comprising the fire retardant is

sandwiched between the material of the core (in the different laminations).

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g. Regarding claim 15, lllger et al. further discloses the infused fire retardant

material being aluminum tri-hydrate (lllger at col. 2, lines 25-33, in that aluminium

hydroxide (considered Al(OH)3) is the same as aluminum tri-hydrate that is used

in the claimed invention (col. 2, lines 25-33)). Furthermore, it would have been a

matter of obvious design choice to form fire retardant of aluminum tri-hydrate,

since it has been held to be within the general skill of a worker in the art to select

a known material on the basis of its suitability for the intended use as a matter of

obvious design choice. In re Leshin, 125 USPQ 416. Here, the material could

be chosen for its physical properties or cost.

h. Regarding claim 16, lllger et al. further discloses an infused foam density

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

one of ordinary skill in the art at the time of the invention to further modify the

system by having the uncompressed foam a density of 100 kg/m3 to 180 kg/m3

uncompressed depending upon use of the system. In addition, it would have

been obvious to one of ordinary skill in the art at the time the invention was made

to provide a structure within the claimed range of a core with an uncompressed

density of about 100 kg/m/\3 to about 180 kg/mA3, as it has been held that where

the general conditions of a claim are disclosed in the prior art, discovering the

optimum or working ranges involves only routine skill in the art. In re Aller, 105

USPQ 233. Here, no criticality has been given to the range. In addition, the

range could be selected based the desired end seal.

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i. Regarding claim 17, COLORSEAL further teaches further comprising a

second layer (corner bead) disposed on the elastomer (see Fig. 1 ), wherein the

second layer is another elastomer (of silicone, see Fig. 1 ).

j. Regarding claim 18, COLORSEAL further teaches a first coating (on left

side, a first coating located on a surface of the core and a second coating

located on a surface of the core opposing the first coating, wherein the coatings

can be different or the same (see page 2 and installation, the system is packaged

in shrink wrap, hardboard and release paper, which functions as coatings on the

core until removed).

k. Regarding claim 26, wherein the core comprises a first outer surface and

a second outer surface, and no coatings are located on either the first outer

surface or the second outer surface (Fig. 1, once the packaging has been

removed).

I. Regarding claims 27-29, lllger et al. further disclose the system capable of

withstanding exposure to a temperature of about 930 °C for about one hour,

capable of withstanding exposure to a temperature of about 1010 °C for about

two hours, and capable of withstanding exposure to a temperature of about

1260 °C for about eight hours (lllger's or COLORSEAL's infused foam would meet

the claimed temperature requirement since the retardant is aluminium hydroxide

(considered Al(OH)3) the same as aluminum tri-hydrate that is used in the

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claimed invention). Alternatively, considering the language of the claims in light

of UL 2079, a joint seal or 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 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 27), 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 28). With respect to claim 29, Appendix A

stipulates that the temperature in the test area is to be at 1260 degrees C at 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, 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, claim 29 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

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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. Furthermore, 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 29, and those of ordinary skill in the art would have found it

obvious to optimize the joint system of COLORSEAL 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 COLO RV I EW 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 a higher fire rating, would have been

obvious to those of ordinary skill in the art as a choice of design.

m. Regarding claim 35, lllger et al. further disclose the system capable of

withstanding exposure to a temperature of about 930 °C for about one hour,

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capable of withstanding exposure to a temperature of about 1010 °C for about

two hours, and capable of withstanding exposure to a temperature of about

1260 °C for about eight hours (lllger's or COLORSEAL's infused foam would meet

the claimed temperature requirement since the retardant is aluminium hydroxide

(considered Al(OH)3) the same as aluminum tri-hydrate that is used in the

claimed invention). Alternatively, considering the language of the claims in light

of UL 2079, a joint seal or 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 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 27), 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 28). With respect to claim 29, Appendix A

stipulates that the temperature in the test area is to be at 1260 degrees C at 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, namely the assertion in the

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

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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, claim 29 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. Furthermore, 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 29, and those of ordinary skill in the art would have found it

obvious to optimize the joint system of COLORSEAL 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 COLO RV I EW 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

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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

obvious to those of ordinary skill in the art as a choice of design. In addition,

regarding the weight, lllger et al. further discloses the fire retardant material

infused in a range of about 3.5:1 to about 4:1 by weight ("from 10 to 800%" of col.

2, lines 25-33 of lllger). In addition, 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). 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 COLORSEAL 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.

n. Regarding claim 36, wherein the core comprises a block of foam

(Fig. 1 ).

m. Regarding claims 37 and 38, while COLORSEAL does not specify that the

expansion joint system is a tunnel expansion joint system, it would have a matter

of obvious design choice to use the expansion joint in a tunnel. None of the

structure of COLOR would have to be further modified.

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4. Claim 9 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable

over COLORSEAL in view of llger et al. (US Patent 4,288,559), or alternatively in

view of Series ES Elastomeric Sealant ("SpecSeal"), or alternatively in view of

llger et al. (US Patent 4,288,559) and Series ES Elastomeric Sealant ("SpecSeal"),

as applied to claim 8 above, and further in view of Schmid (US Patent 5,327,693).

Regarding claim 9, COLORSEAL in view of lllger et al. and/or SpecSeal

discloses the invention as claimed except for the angle around the corner made

continuous via the insertion of an insert piece located between a section of the

core extending in the horizontal plane and a section of the core extending in the

vertical plane. However, it is notoriously well known in the art that an alternative

way to angle around corners can comprise having an insert piece located

between a section of the core extending in the horizontal plane and a section of

the core extending in the vertical plane. For example, Schmid teaches an

expansion joint system comprising sticks of foam (102) that be used to angle

around corners having using insert pieces (114,115,116), and inset piece (116) is

for insertion between a section of foam extending in a horizontal plane and a

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section of foam extending in a vertical plane (column 15, lines 21-54). It would

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

made to modify Baerveldt in view of COLORSEAL and lllger et al. and/or

SpecSeal to use an insertion piece, such as taught by Schmid, in order to

simplify construction around a corner.

5. Claims 19-24, 32-34 are rejected under pre-AIA 35 U.S.C. 103(a) as being

unpatentable over COLORSEAL in view of llger et al. (US Patent 4,288,559) and

Schmid (US Patent 5,327,693), OR alternatively in view of Series ES Elastomeric

Sealant ("SpecSeal") and Schmid (US Patent 5,327,693), OR alternatively in view

of llger et al. (US Patent 4,288,559) and Series ES Elastomeric Sealant

("SpecSeal"),and Schmid (US Patent 5,327,693).

a. Regarding claim 19, COLORSEAL discloses a water resistant expansion

joint system comprising: a first section of core (the open celled foam, see page 1,

second bullet under Product Description) and a second section of core (the open

celled foam, see page 1, second bullet under Product Description), a layer of an

elastomer disposed on the core, the elastomer imparting a substantially

waterproof property to the core (page 1, first and third bullets under Product

Description; Fig. 1 ), the cores being configured to transition around a corner,

wherein the expansion joint system is installable between horizontal coplanar

substrates and vertical coplanar substrates. COLORSEAL does not disclose

that the transition around the corner is made continuous via the insertion of an

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insert piece located between a section of the core extending in a horizontal plane

and a section of core extending in the vertical plane. However, it is notoriously

well known in the art that an alternative way to angle around corners can

comprise having an insert piece located between a section of the core in the

horizontal plane and a section of core extending in the vertical plane. For

example, Schmid teaches an expansion joint system comprising sticks of foam

(102) that be used to angle around corners having using insert pieces

(114,115,116), and inset piece (116) is for insertion between a section of foam

extending in a horizontal plane and a section of foam extending in a vertical

plane (column 15, lines 21-54). It would have been obvious to one of ordinary

skill in the art at the time the invention was made to modify COLORSEAL to use

an insertion piece and cores in the horizontal and vertical plane, such as taught

by Schmid, in order to simplify construction around a corner. In addition,

COLORSEAL does not disclose the expansion joint system is also a fire resistant

expansion joint system with a fire retardant infused into the core, the system

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

about five minutes. lllger et al., however, discloses infusing polyurethane foam

with a fire retardant, aluminium hydroxide, at a ratio (retardant:foam) of 0.1 :1 to

8:1 ("from 10 to 800%" of col. 2, lines 25-33). lllger's infused foam would meet

the claimed temperature requirement since the retardant is aluminium hydroxide

(col. 2, lines 25-33, considered Al(OH)3) the same as aluminum tri-hydrate that is

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Page 19

used in the claimed invention (col. 2, lines 25-33)). It would have been obvious

to one of ordinary skill in the art at the time of the invention to modify the system

of COLORSEAL by adding the fire retardant of lllger et al. to the foam so as to

use a foam with excellent fire retardant properties (from abstract of lllger) when

required; or, in the alternative to substitute COLORSEAL's foam with the foam of

lllger et al. so as to use a foam with desirable mechanical and excellent fire

retardant properties (from abstract of lllger) when required. The system of

COLORSEAL and lllger et al. would be capable of withstanding a temperature of

540°C or greater for about five minutes. In other words, because the modified

system of COLORSEAL in view of lllger et al. has the same foam and the same

fire retardants, it would have the same properties and be capable of same

performance. Alternatively, 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 10 and 11 show concrete 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 temperature of 538

degrees Cat 5 minutes; 927 degrees Cat one hour; 1010 degrees Cat two

hours, and 1052 degrees C at three hours. Therefore, it would have been

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Page 20

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

the core the joint system of COLORSEAL with a fire retardant material in order

to produce a joint system capable of passing the criteria of UL 2079, 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. A third

alternative, lllger et al. teaches a process of infusing a flexible foam with a fire­

retardant material. lllger et al. notes that any flexible foams are suitable for the

process, but polyurethane foams 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 et al. and SpecSeal, it would have

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

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Page 21

infuse the foam core portions of COLORSEAL 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 COLORSEAL using the

known techniques taught by lllger et al., and the foam core of COLORSEAL

modified with the fire retardant material of lllger et al. 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 COLORSEAL with a fire-retardant material

in sufficient amounts as taught by lllger et al. would yield the predictable and

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

temperature of about 540 degrees C for about five minutes.

b. Regarding claim 20, wherein the core comprises a plurality of individual

laminations assembled to construct a laminate (Fig. 1 ).

c. Regarding claim 21, wherein the core comprises open celled polyurethane

foam (page 1, second bullet under Product Description).

d. Regarding claim 22, further comprising an acrylic infused into the core

(Fig. 1 ).

e. Regarding claims 23 and 34, lllger et al. further discloses the fire retardant

material infused in a range of about 3.5:1 to about 4:1 by weight ("from 10 to

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Page 22

800%" of col. 2, lines 25-33 of lllger). In addition, 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). 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 COLORSEAL 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.

f. Regarding claim 24, as modified, a layer comprising the fire retardant is

sandwiched between the material of the core (in the different laminations).

g. Regarding claims 32-33, lllger et al. further disclose the system capable of

withstanding exposure to a temperature of about 930 °C for about one hour,

capable of withstanding exposure to a temperature of about 1010°C for about

two hours, and capable of withstanding exposure to a temperature of about

1260°C for about eight hours (lllger's or COLORSEAL's infused foam would meet

the claimed temperature requirement since the retardant is aluminium hydroxide

(considered Al(OH)3) the same as aluminum tri-hydrate that is used in the

claimed invention). Alternatively, considering the language of the claims in light

of UL 2079, a joint seal or 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 because, as shown in Appendix A, a temperature of

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Page 23

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 27), 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 28). With respect to claim 29, Appendix A

stipulates that the temperature in the test area is to be at 1260 degrees C at 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, 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, claim 29 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. Furthermore, 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

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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 29, and those of ordinary skill in the art would have found it

obvious to optimize the joint system of COLORSEAL 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 COLO RV I EW 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 a higher fire rating, would have been

obvious to those of ordinary skill in the art as a choice of design.

Application/Control Number: 13/731,327

Art Unit: 3635

Response to Arguments

Page 25

Applicant's arguments with respect to the claims have been considered but are

moot because the arguments do not apply to any of the references being used in the

current rejection.

Conclusion

Any inquiry concerning this communication or earlier communications from the

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

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

9:30-6:00.

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: 13/731,327

Art Unit: 3635

Page 26

Information regarding the status of an application may be obtained from the

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published applications may be obtained from either Private PAIR or Public PAIR.

Status information for unpublished applications is available through Private PAIR only.

For more information about the PAIR system, see http://pair-direct.uspto.gov. Should

you have questions on access to the Private PAIR system, contact the Electronic

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/ELIZABETH A QUAST/

Primary Examiner, Art Unit 3635