Patent Application 18621835 - CONSTRUCTION TAPE AND RELATED FRAMING MEMBERS - Rejection
Patent Application 18621835 - CONSTRUCTION TAPE AND RELATED FRAMING MEMBERS
Title: CONSTRUCTION TAPE AND RELATED FRAMING MEMBERS
Application Information
- Invention Title: CONSTRUCTION TAPE AND RELATED FRAMING MEMBERS
- Application Number: 18621835
- Submission Date: 2025-04-09T00:00:00.000Z
- Effective Filing Date: 2024-03-29T00:00:00.000Z
- Filing Date: 2024-03-29T00:00:00.000Z
- National Class: 428
- National Sub-Class: 314400
- Examiner Employee Number: 71017
- Art Unit: 3991
- Tech Center: 3900
Rejection Summary
- 102 Rejections: 1
- 103 Rejections: 3
Cited Patents
The following patents were cited in the rejection:
Office Action Text
Reissue
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Status of Claims
Amended patent claims 1-7 and original patent claim 8 are pending.
Claim 9 has been canceled.
Reissue Declaration
The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
The error relied upon in the Declaration states that the “application seeks to broaden claim 1.” For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, it is required to specifically identify the error as stated by 37 CFR 1.175(a). In doing so, it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. See MPEP 1414.
Claims 1-8 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Application Data Sheet/Priority
The Application Data Sheet (ADS) filed 29 March 2024 claims priority only to 16/853,281, filed 20 April 2020. Applicant has not claimed priority to 16/020,647, 17/100,735, 15/675,332, or provisional applications 62/602,687, 62/602,685, or 62/601,747. Accordingly, the effective date of the domestic priority claim is 20 April 2020.
Note that, in order to receive benefit of priority, 37 CFR 1.78 requires that a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365(c) must be in the application data sheet (37 CFR 1.76 ).
37 CFR 1.76(c) provides the procedure for correcting and updating not only an application data sheet (ADS), but also information otherwise of record (e.g., information provided on the most recent filing receipt). Any ADS filed after the filing date of the application or the submission of a first ADS is considered a corrected (or updated) ADS even if an ADS was not previously submitted. Such a corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed, except that identification of information being changed is not required for an ADS included with an initial submission under 35 U.S.C. 371. In general, the identification of the information being changed should be made relative to the most recent filing receipt. See MPEP 601.05 I.
If the reference required by 35 U.S.C. 120 and 37 CFR 1.78 is not submitted within the required time period, a petition for an unintentionally delayed claim may be filed. The petition must be accompanied by: (A) the reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional.
Improper Amendment
The amendment filed 29 March 2024 proposes amendments to the specification and claim 1 that do not comply with 37 CFR 1.173(b), which sets forth the manner of making amendments in reissue applications.
The matter to be omitted by reissue must be enclosed in brackets. Underlining is not permitted. See MPEP 1453.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by US 2018/0283000 to Klein (hereinafter Klein ‘000).
As set forth above, the effective filing date of this application is 20 April 2020.
Claims 1-3 and 5-7 are clearly anticipated by Figures 1A,1B, 3 and the accompanying discussion of these figures in paras [0025-0030].
With respect to claim 4, polypropylene foam is inherently semi-crystalline.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 7,681,365 to Klein (hereinafter Klein ‘365) in view of US 2019/0177970 to Ackerman et al. (hereinafter Ackerman).
With respect to claims 1-4 and 8, Klein ‘365 teaches a sheet metal framing member 16 in combination with a fire safety tape 34 configured for use in a fire rated wall assembly, the fire safety tape 34 comprising a flexible intumescent material layer, wherein the intumescent material layer is composed of expandable graphite (col.5, lines 1-11; Figure 2). The intumescent strip is commercially available from 3MTM (col.5, lines 1-4) and includes an adhesive “that allows it to be readily affixed.” 3MTM Expantrol strips have been commercially available since at least 2011 and are flexible, supplied in
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a roll, and have a removable coextensive releasable layer over an adhesive.1 Klein ‘365 is silent to a flexible thermal barrier layer attached to the intumescent layer.
Ackerman discloses a fire-blocking article including alternating layers of an intumescent material 90 and polypropylene foam 82. Ackerman suggests use of a commercially available polypropylene foam, such as that made by Nomaco Engineering Foam Solutions. See para [0033]. Although “Mormflex” is named, this appears to be a typographical error, as no such product has been made by Nomaco. The polypropylene foam fabricated by Nomaco is “Nomaflex,” a closed-cell, semi-rigid foam and has been available since at least 20162. As to the foam being semi-crystalline, polypropylene foam is inherently semi-crystalline. The intumescent suggested by Ackerman is commercially available BlazeSeal (para [0035]), which is a graphite intumescent.
Ackerman teaches the “fire-blocker is substantially surrounded by the associated filler to protect the fire-blocker from at least substantial direct exposure to sunlight,
moisture and ambient air” (para [0008]).
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As shown in Figure 4, the bottom layer of foam 82 (thermal barrier layer) would be on a surface of a sheet metal framing member, as shown in Figure 1, and fire-blocker (intumescent layer) 90 is on the foam layer 82 such that the intumescent layer is positioned away from the sheet metal framing member.
The sheets are adhered together using an adhesive (para [0036]). The width of the intumescent layer 90 is less than that of the foam layer 82, such that the foam layer may be bent over the edges of the intumescent layer. See para [0043].
Ackerman further teaches that “[a]ny desired number of layers or other configuration of fire-blockers 90 and fillers 78 may be used. There may be one, two…layers of fire-blocker 90 and/or filler 70” and “fire-blocker 90 may be positioned external to, or outside of, the filler 78.” See para [0043].
It would have been obvious to one of ordinary skill in the art at the time of the invention to encase the intumescent layer 34 of Klein ‘365 within top and bottom layers of polypropylene foam, as taught by Ackerman, in order to “shield or insulate the fire-blocker 90 from direct contact with UV light, moisture and/or ambient air…which may degrade the fire-blocker 90 and reduce its fire-retarding capabilities.” See para [0038].
As to claim 5, Ackerman teaches any “desired number of layers or other configuration of fire-blockers 90 and fillers 78 may be used” (para [0043]). Although Ackerman discloses an example using a 1.587 mm (1/16”) thick fire-blocker layer and a 12.7 mm (1/2”) thick foam layer (para [0054]), Ackerman does not limit the invention to these thicknesses. One of ordinary skill in the art would have found it obvious to optimize the thickness of both layers for the desired properties and installation location dimensions.
Claim(s) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klein ‘365 and Ackerman as applied to claim 5 above, and further in view of US 4,522,955 to Fukushima et al. (hereinafter Fukushima).
With respect to claim 6, the combination of Klein ‘365 with Ackerman is silent to the diameter of the closed cells within the polypropylene foam.
Fukushima discloses a polypropylene foam having a cell diameter range of 0.35-0.6 mm (350-600 µm). See Table 1. Fukushima teaches that polypropylene is “superior to polyethylene in heat resistance and useful in the field requiring a heat resistance of 100 °C or higher” (col.1, lines 17-20) and the inventive polypropylene foam “has a high expansion ratio and fine cells and is excellent in heat-insulating property and heat resistance” (col.3, lines 54-58). Since the fire safety tape of Klein ‘365 with Ackerman must be able to function in high heat, it would have been obvious to use a foamed polypropylene having the properties disclosed by Fukushima.
As to claim 7, Ackerman discloses an example using a 1.587 mm (1/16”) thick fire-blocker layer.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klein ‘000 in view of Ackerman.
The effective filing date of this application is 20 April 2020.
Klein ‘000 teaches a framing member 26 in combination with a multi-layer building construction tape 10 configured for use in a building construction wall, ceiling, or floor assembly, wherein the multi-layer building construction tape comprises at least the following layers: a flexible thermal barrier layer 14; a peel away protective layer 12 adhered to one side of the flexible thermal barrier layer, wherein the width of the peel away protective layer and the flexible thermal barrier layer are substantially the same and coextensive with each other along the one side (see Figures 1A and 4); a first adhesive layer 16 interposed between the peel away protective layer and the flexible thermal barrier layer; and an intumescent material layer 18 adhered 20 to the other side of the flexible thermal barrier layer, wherein the intumescent material layer is composed of expandable graphite (para [0030]), and wherein the thickness of the thermal barrier layer and the thickness of the intumescent material layer are about the same (paras [0029-0030]; claim 8). Klein ‘000 does not teach that the width of the intumescent material layer is less than the width of the flexible thermal barrier layer such that the lengthwise edges of the flexible thermal barrier layer may be bent over the lengthwise edges of the intumescent material layer.
Ackerman discloses the use of polypropylene foam as a protective layer of a fire-blocker layer wherein the foam may “at least partially collapse around the side edges of the fire-blocker sheets 94 to completely or at least substantially surround them. See para [0043] and Figure 4. In order to fully protect the intumescent layer of Klein ‘000 as taught by Ackerman, it would have been obvious to fabricate the tape such that the intumescent material layer is less than the width of the flexible thermal barrier layer such that the lengthwise edges of the flexible thermal barrier layer may be bent over the lengthwise edges of the intumescent material layer.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 10,626,598 (hereinafter the ‘598 patent) in view of Klein ‘365.
With respect to instant claim 1, claim 1 of the ‘598 patent recites the same claim limitations except that the intumescent material isn’t limited to expandible graphite. Klein ‘365 teaches a sheet metal framing member 16 in combination with a fire safety tape 34 configured for use in a fire rated wall assembly, the fire safety tape 34 comprising a flexible intumescent material layer, wherein the intumescent material layer is composed of expandable graphite (col.5, lines 1-11). As expandable graphite is an intumescent material known for use in fire safety tape, it would have been obvious to use in the tape of the instant claims.
The limitations of instant claims 2-7 are recited in claims 1-6 of the ‘598 patent.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 10,626,598 (hereinafter the ‘598 patent) in view of Klein ‘365 and Ackerman.
The ‘598 patent and Klein ‘365 are relied upon as set forth above.
Furthermore, the intumescent strip disclosed by Klein ‘365 is commercially available from 3MTM (col.5, lines 1-4) and includes an adhesive “that allows it to be readily affixed.” 3MTM Expantrol strips have been commercially available since at least 2011 and are flexible, supplied in a roll, and have a removable coextensive releasable layer over an adhesive.3
Claims 1-6 of the ‘598 patent and Klein ‘365 are silent as to the width of the intumescent layer being less than the width of the thermal barrier such that the lengthwise edges of the thermal barrier may be bent over the intumescent layer.
Ackerman discloses the use of polypropylene foam as a protective layer of a fire-blocker layer wherein the foam may “at least partially collapse around the side edges of the fire-blocker sheets 94 to completely or at least substantially surround them. See para [0043] and Figure 4. In order to fully protect the intumescent layer of the ‘598 patent claims, it would have been obvious to fabricate the tape such that the intumescent material layer is less than the width of the flexible thermal barrier layer such that the lengthwise edges of the flexible thermal barrier layer may be bent over the lengthwise edges of the intumescent material layer.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,512,464 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to ELIZABETH MCKANE whose telephone number is
(571) 272-1275. The examiner can normally be reached on Mon-Thurs; 6:30 am -
4:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisors, Tim Speer can be reached on 313-446-4825 or Jean Witz can be reached on 571-272-0927. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of any application may be obtained from the Patent Center at https://patentcenter.uspto.gov.
Should you have questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ELIZABETH L MCKANE/
Specialist, Art Unit 3991
Conferees:
/LEONARDO ANDUJAR/Primary Examiner, Art Unit 3991
/T.M.S/Supervisory Patent Examiner, Art Unit 3991
1 US 8,069,623 to Colwell et al. evidences the known use of Expantrol in 2011 (col.10, lines 21-27).
2 The NOMACO News article evidences the use of Nomaflex in 2016.
3 US 8,069,623 to Colwell et al. evidences the known use of Expantrol in 2011 (col.10, lines 21-27).
