90013565 FIRE AND WATER RESISTANT EXPANSION JOINT SYSTEM

Office Action in Ex Parte Reexamination

Control No. 90/013,565

Examiner JEFFREY L. GELLNER

Patent Under Reexamination 8365495

Art Unit

3993

AIA (First Inventor to File) Status No

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

a. [8J Responsive to the communication(s) filed on 14 Aug. 2015.

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

b. D This action is made FINAL.

c. D A statement under 37 CFR 1.530 has not been received from the patent owner.

A shortened statutory period for response to this action is set to expire g month(s) from the mailing date of this letter. Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c). If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days will be considered timely.

Part I THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:

1.

2.

D Notice of References Cited by Examiner, PT0-892.

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

3.

4.

D Interview Summary, PT0-474.

D Part II SUMMARY OF ACTION

1 a. [8J Claims 1-39 are subject to reexamination.

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

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

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

4. [8J Claims 1-39 are rejected.

5. D Claims __ are objected to.

6. D The drawings, filed on __ are acceptable.

7. D The proposed drawing correction, filed on __ has been (7a) D approved (7b) D disapproved.

8. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).

a) D All b) D Some* c) D None of the certified copies have

1 D been received.

2 D not been received.

3 D been filed in Application No. __ .

4 D been filed in reexamination Control No. __

5 D been received by the International Bureau in PCT application No. __ .

* See the attached detailed Office action for a list of the certified copies not received.

9. D Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C. D. 11, 453 O.G. 213.

1 0. D Other: __

cc: Requester (if third party requester) U.S. Patent and Trademark Office

PTOL-466 (Rev. 08·13) Office Action in Ex Parte Reexamination Part of Paper No. 20151211

srobinson

Highlight

srobinson

Highlight

srobinson

Highlight

srobinson

Highlight

Application/Control Number: 90/013,565

Art Unit: 3993

Page 2

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

Detailed Office Action

A substantial new question (SNQ) of patentability affecting claims 1-39 of US 8,365,495

B 1 ("Witherspoon") is raised by the present request for ex parte reexamination and claims 1-39

the subject of this office action.

Claim Rejections - 35 USC § 103

The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all

obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Claims 1-4 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Baerveldt

'695 (US 5,935,695; 1st patent on Request's IDS) in view of Illger et al. (US 4,288,559; 3rd

patent listed on Request's IDS; "Illger") in further view of Ward (GB 2,359,265; 9th foreign doc.

on a IDS received 3 Dec. 2015).

As to claim 1, Baerveldt '695 discloses a method of installing an expansion joint (col. 3,

lines 13-33), comprising:

providing a first substrate (J of Figs. 1-4);

providing a second substrate arranged to be coplanar with the first substrate and being

spaced therefrom by a gap (J of Figs. 1-4);


Art Unit: 3993

Page 3

compressing a water resistant expansion joint system comprising a foam (col. 3, lines 21-

33) and having a water resistant layer (4 of Figs. 2-4) disposed thereon;

inserting the compressed expansion joint system into the gap between the first substrate

and the second substrate (col. 3, lines 21-33); and

allowing the compressed expansion joint system to decompress to fill the gap between

the first substrate and the second substrate (col. 3, lines 21-33).

Not disclosed is the foam infused with a fire retardant layer where the ratio of fire

retardant to foam is in the range of 3.5: 1 to 4: 1 by weight; and, a fire resistant layer disposed on

the foam.

Illger, however, discloses infusing polyurethane foam (col. 2, lines 20-33; col. 4, line 66

to col. 5, line 2) 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); Ward discloses an expansion joint fire-retardant

foam with an adhesive/sealant layer and a fire-retardant layer (page2, <JI<JI 5-6).

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

to modify the method of Baerveldt '695 by adding the fire retardant of Illger to the foam so as to

use a foam with excellent fire retardant properties (from abstract of Illger) when required; or, in

the alternative to substitute Baerveldt '695's foam with the foam of Illger so as to use a foam

with desirable mechanical and excellent fire retardant properties (from abstract of Illger) when

required; and, to add a fire retardant layer as disclosed by Ward so as to increase fire

retardation.

As to claim 2, Baerveldt '695 as modified by Illger and Ward further disclose applying an

adhesive to an edge of at least one of the first substrate and the second substrate to anchor the


Art Unit: 3993

Page 4

expansion joint system (primer coating of Ward is an adhesive/sealant that can be applied to all

surfaces at page 1, <JI 6). It would have been obvious to one of ordinary skill in the art at the time

of the invention to further modify the method ofBaerveldt '695 as modified by Illger and Ward

by having the sealant on all edges/sides so as to increase sealing and adhesion.

As to claim 3, Baerveldt '695 as modified by Illger and Ward further disclose the open

celled foam has an infused uncompressed foam density of 100 kg/m3 (col. 2, lines 24-33, of

Illger). It would have been obvious to one of ordinary skill in the art at the time of the invention

to further modify the method ofBaerveldt '695 as modified by Illger and Ward by having the

compression above 200 kg/m3 depending upon use and requirements of the system.

As to claim 4, Baerveldt '695 as modified by Illger and Ward further disclose an infused

uncompressed foam density of 100 kg/m3 (col. 2, lines 24-33, of Illger). Illger's infused foam

would meet UL 2079 requirements since the retardant is aluminium hydroxide (considered to be

Al(OH)3) the same as aluminum tri-hydrate that is used in the claimed invention. It would have

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

method ofBaerveldt '695 as modified by Illger and Ward by having the compression from 400

to 450 kg/m3 depending upon use and requirements of the system and using all materials for the

system that meet UL 2079 testing depending upon use/requirements of the system.

Claims 5-32 and 34-36 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over

Baerveldt '695 in view oflllger, Ward and further in view of Fire Barrier CP 25WB+Caulk

(Underwriters Laboratories; 4th non-patent document listed on Request's IDS; "3M").


Art Unit: 3993

Page 5

As to claim 5, Baerveldt '695 a fire and water resistant expansion joint system (Figs. 1-

4), comprising:

open celled foam (2 of Figs. 1-4) and an elastomer adhesively disposed on the surface of

the foam (4 of Figs. 2-4; col. 3, lines 34-64)).

Not disclosed is a fire retardant in the foam, and a layer of in tumescent material disposed

on a foam surface opposite the elastomer layer.

Illger, however, discloses infusing polyurethane foam with a fire retardant, aluminium

hydroxide, at a ratio (retardant:foam) of0.1:1to8:1("from10 to 800%" of col. 2, lines 25-33);

Ward discloses an expansion joint fire-retardant foam with a fire-retardant layer on any surface

of the foam (page 1, <JI 6; page2, <JI<JI 5-6) and 3M discloses a fire retardant layer that is

in tumescent.


to modify the system of Baerveldt '695 by adding the fire retardant of Illger to the foam so as to


the alternative to substitute Baerveldt '695's foam with the foam oflllger so as to use a foam


required; and, to add a fire retardant layer on any surface, including opposite the elastomer

layer, as disclosed by Ward with an intumescent as disclosed by 3M so as to increase fire

retardation and depending upon requirements. The system ofBaerveldt '695, Illger, Ward, and

3M are configured to define a bellows profile to facilitate the compression of the fire and water

resistant expansion joint system when installed between coplanar substrates since the system is

capable of compression and expansion.


Art Unit: 3993

Page 6

As to claim 6, Baerveldt '695, Illger, Ward, and 3M further disclose wherein the open

celled foam comprises a plurality of laminations of open celled foam (Figs. 1-4 ).


celled foam is polyurethane (col. 2, lines 41-51, ofBaerveldt '695).

As to claim 8, Baerveldt '695, Illger, Ward, and 3M further disclose the fire retardant

material infused into the open celled foam is water-based aluminum tri-hydrate (aluminium

hydroxide (considered to be Al(OHh of col. 2, lines 30-33, of Illger).


material infused into the open celled foam is selected from the group consisting of metal oxides,

metal hydroxides, aluminum oxides, antimony oxides and hydroxides, iron compounds,

ferrocene, molybdenum trioxide, nitrogen-based compounds, and combinations of the foregoing

materials (a metal hydroxide, aluminium hydroxide (considered to be Al(OH)3 of col. 2, lines

30-33, of Illger).

As to claim 10, Baerveldt '695, Illger, Ward, and 3M further disclose the elastomer

adhesively disposed on the surface of the open celled foam comprises a silicone ("Silicone

Sealant" of col. 3, lines 34-64 of Baerveldt '695).


adhesively disposed on the surface of the open celled foam is selected from the group consisting

of polysulfides, acrylics, polyurethanes, poly-epoxides, silyl-terminated polyethers, and

combinations of one or more of the foregoing (col. 3, lines 34-64 ofBaerveldt '695).


Art Unit: 3993

Page 7

As to claim 12, Baerveldt '695, Illger, Ward, and 3M further disclose the intumescent

material disposed on the surface of the open celled foam comprises a fire barrier caulk (from

3M).

As to claim 13, Baerveldt '695, Illger, Ward, and 3M further disclose an uncompressed

fire retardant foam of 110 kg/m3 (Illger at col. 2, lines 24-33). It would have been obvious to one

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

'695 as modified by Illger, Ward, and 3M by having the uncompressed density being 130 kg/m3

to about 150 kg/m3 depending upon use or requirement of the system.

As to claim 14, it would have been obvious to modify the system ofBaerveldt '695,

Illger, Ward, and 3M by having a second layer of elastomer disposed on the layer of intumescent

material depending upon use or requirement of the system.

As to claim 15, Baerveldt '695 as modified by Illger, Ward, and 3M further disclose the

open celled foam has an infused uncompressed foam density of 100 kg/m3 (col. 2, lines 24-33, of


to further modify the method ofBaerveldt '695 as modified by Illger, Ward, and 3M by having

the compression above 200 kg/m3 to 700 kg/m3 depending upon use and requirements of the

system.

As to claim 16, Baerveldt '695 as modified by Illger, Ward, and 3M further disclose an

infused uncompressed foam density of 100 kg/m3 (col. 2, lines 24-33, oflllger). Illger's infused

foam would meet UL 2079 requirements since the retardant is aluminium hydroxide (considered

to be Al(OH)3) the same as aluminum tri-hydrate that is used in the claimed invention. It would

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


Art Unit: 3993

Page 8

the method ofBaerveldt '695 as modified by Illger, Ward, and 3M by having the compression

from 400 to 450 kg/m3 depending upon use and requirements of the system and using all

materials for the system that meet UL 2079 testing depending upon use/requirements of the

system.

As to claim 17, Baerveldt '695 a fire and water resistant expansion joint system (Figs. 1-

4), comprising:

open celled foam (2 of Figs. 1-4) and a first layer of elastomer adhesively disposed on the

surface of the foam (4 of Figs. 2-4; col. 3, lines 34-64)).

Not disclosed is a fire retardant in the foam and layers of in tumescent material and

elastomer disposed on two surfaces of the foam.



Ward discloses an expansion joint fire-retardant foam with a sealant layer and a fire-retardant

layer disposed on the sealant on all surfaces of the foam (page 1, <JI 6; page2, <JI<JI 5-6); and, 3M

discloses a fire retardant layer that is intumescent.


to modify the system of Baerveldt '695 by adding a fire retardant of Illger to the foam so as to


the alternative to substitute Baerveldt '695's foam with the foam of Illger so as to use a foam


required; and, to add a second elastomer layer and fire retardant layer on any surface as disclosed


Art Unit: 3993

Page 9

by Ward with the fire retardant being an intumescent as disclosed by 3M so as to increase fire

retardation and depending upon requirements. The system ofBaerveldt '695, Illger, Ward, and

3M are configured to define a bellows profile to facilitate the compression of the fire and water

resistant expansion joint system when installed between coplanar substrates since the system is

capable of compression and expansion. Further, it would be obvious as design choice to have the

elastomer disposed on the intumescent layer depending upon requirements for the system and

with no difference in functioning of the system.


celled foam comprises a plurality of laminations of open celled foam (Figs. 1-4 ).


celled foam is polyurethane (col. 2, lines 41-51, ofBaerveldt '695).









30-33, of Illger).


Art Unit: 3993

Page 10


adhesively disposed on the surface of the open celled foam comprises a silicone ("Silicone

Sealant" of col. 3, lines 34-64 of Baerveldt '695).


material is a fire barrier caulk (3M).





As to claim 25, Baerveldt '695, Illger, Ward, and 3M further disclose an uncompressed

fire retardant foam of 110 kg/m3 (Illger at col. 2, lines 24-33). It would have been obvious to one

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

'695 as modified by Illger, Ward, and 3M by having the uncompressed density being 130 kg/m3

to about 150 kg/m3 depending upon use or requirement of the system.






system.




Art Unit: 3993

Page 11







system.

As to claim 28, Baerveldt '695 a fire and water resistant architectural expansion joint

system (Figs. 1-4 ), comprising:

first and second coplanar substrates (S of Figs. 1-4) and an expansion joint located in a

compression between the first and second coplanar substrates (Figs. 1-4) comprising,

open celled polyurethane foam (2 of Figs. 1-4; col. 2, lines 41-48) and at least one layer

of elastomer adhesively disposed on the surface of the foam ( 4 of Figs. 2-4; col. 3, lines 34-64) );

wherein the expansion joint is compressed between the first and second substrates to

accommodate movement therebetween (col. 3, lines 13-33).

Not disclosed is a fire retardant in the foam and a layer of intumescent material on a

surface of the foam.





Art Unit: 3993

Page 12

layer disposed on all surfaces of the foam (page 1, <JI 6; page2, <JI<JI 5-6); and, 3M discloses a fire

retardant layer that is intumescent.






required; and, to add a fire retardant layer on any surface as disclosed by Ward with the fire

retardant being an intumescent as disclosed by 3M so as to increase fire retardation and

depending upon requirements.






material is a fire barrier caulk (3M).








Art Unit: 3993

Page 13



30-33, of Illger).

As to claim 34, Baerveldt '695, Illger, Ward, and 3M further disclose the foam in a

plurality oflaminations (Fig. 4 of Baerveldt '695).






system.









system.


Art Unit: 3993

Page 14

Claim 33 and 37-39 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over

Baerveldt '695 in view of Illger, Ward, and 3M in further view ofBaerveldt '708 (US 6,532,708;

237th patent on an IDS of 1 Dec. 2015).

As to claim 33, the limitations of claim 28 are disclosed as described above. Not

disclosed are beads of elastomer at the interface of the expansion joint and one of the substrates.

Baerveldt '708, however, discloses an expansion joint system with beads of elastomer between

the joint and substrate (Fig. 8). It would have been obvious to one of ordinary skill in the art at

the time of the invention to further modify the system ofBaerveldt '695 in view oflllger, Ward,

and 3M by adding beads as disclosed by Baerveldt '708 so as to further waterproof the system.

As to claim 37, Baerveldt '695 a fire and water resistant architectural expansion joint

system (Figs. 1-4 ), comprising:

first and second coplanar substrates (S of Figs. 1-4) and an expansion joint located in a

compression between the first and second coplanar substrates (Figs. 1-4) comprising,

open celled polyurethane foam (2 of Figs. 1-4; col. 2, lines 41-48) and at least one layer

of elastomer adhesively disposed on the surface of the foam ( 4 of Figs. 2-4; col. 3, lines 34-64) );

wherein the expansion joint is compressed between the first and second substrates to

accommodate movement therebetween (col. 3, lines 13-33).

Not disclosed is a fire retardant in the foam, a layer of in tumescent material on a surface

of the foam, and a bead.




Art Unit: 3993

Page 15


layer disposed on all surfaces of the foam (page 1, <JI 6; page2, <JI<JI 5-6); 3M discloses a fire

retardant layer that is intumescent; and, Baerveldt '708 discloses a bead between the joint and

substrate (Fig. 8).






required; and, to add a fire retardant layer on any surface as disclosed by Ward with the fire

retardant being an intumescent as disclosed by 3M so as to increase fire retardation and

depending upon requirements, and add beads as disclosed by Baerveldt '708 so as to further

waterproof the system ..

As to claim 38, Baerveldt '695 as modified by Illger, Ward, 3M, and Baerveldt '708

further disclose the open celled foam has an infused uncompressed foam density of 100 kg/m3

(col. 2, lines 24-33, of Illger). It would have been obvious to one of ordinary skill in the art at

the time of the invention to further modify the method ofBaerveldt '695 as modified by Illger,

Ward, 3M, and Baerveldt '708 by having the compression above 200 kg/m3 to 700 kg/m3

depending upon use and requirements of the system.

As to claim 39, Baerveldt '695 as modified by Illger, Ward, 3M, and Baerveldt '708

further disclose an infused uncompressed foam density of 100 kg/m3 (col. 2, lines 24-33, of

Illger). Illger's infused foam would meet UL 2079 requirements since the retardant is aluminium


Art Unit: 3993

Page 16

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

claimed invention. It would have been obvious to one of ordinary skill in the art at the time of

the invention to further modify the method of Baerveldt '695 as modified by Illger, Ward, 3M,

and Baerveldt '708 by having the compression from 400 to 450 kg/m3 depending upon use and

requirements of the system and using all materials for the system that meet UL 2079 testing

depending upon use/requirements of the system.

Remarks

Extensions of time under 37 CPR l .136(a) will not be permitted in these proceedings

because the provisions of 37 CPR 1.136 apply only to "an applicant" and not to parties in a

reexamination proceeding. Additionally, 35 U.S.C. 305 requires that ex parte reexamination

proceedings "will be conducted with special dispatch" (37 CPR l.550(a)). Extensions of time in

ex parte reexamination proceedings are provided for in 37 CPR 1.550( c ).

Any proposed amendment filed in this reexamination proceeding must be made in

accordance with 37 CPR l.530(d)-U) and comply with the formal requirements of 37 CPR

l.52(a) and (b) (see MPEP 2250).

If the request was submitted by a third party requester, then any document filed by either

the patent owner or third party requester must be served on the other party (or parties in a

merged proceeding) in the reexamination proceeding in the manner provided by 37 CPR 1.248

(see 37 CPR l.550(f) and MPEP 2266.03).


Art Unit: 3993

Page 17

The Patent Owner is reminded of the continuing responsibility under 37 CPR 1.565( a) to

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

patent throughout the course of this reexamination proceeding. If applicable, the Third Party

Requester is also reminded of its responsibility to similarly apprise the Office of any such

activity or proceeding throughout the course of this reexamination proceeding (see MPEP 2207,

2282 and 2286).

If the examiner cannot be contacted the examiner's supervisor, Gay Ann Spahn, can be

reached at 571.272.7731.

follows:

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

ByEFS:

By Mail:

By FAX:

By hand:

Registered users may submit via the electronic filing system, EFS-Web, at: https://sportal.uspto.gov/authenticate/authenticateuserlocalepf.html.

Mail Stop Ex Parte Reexam ATTN: Central Reexamination Unit Commissioner for Patents U.S. Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

(571) 273-9900 Central Reexamination Unit

Customer Service Window Randolph Building 401 Dulany St. Alexandria, VA 22314

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


Art Unit: 3993

Page 18

Any inquiry concerning this communication or earlier communications from the Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit (CRU) at telephone number: 571.272.7705. The CRU's fax number is: 571.273.9900.

/Jeffrey L. Gellner/ Jeffrey L. Gellner AU 3993, Central Reexamination Unit (571) 272-6887

Conferees: /rds/ and /GAS/

Documents

90013565 FIRE AND WATER RESISTANT EXPANSION JOINT SYSTEM