90013473 expansion and seismic joint covers
TRANSCRIPT
i
Office Action in Ex Parle Reexamination
Control No. 90/013,473 and 90/013,472, merQed Examiner Russell Stormer
Patent Under Reexamination 6532708
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. [8] Responsive to the communication(s) filed on 9!14i2015.
D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
b. [8J 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 one 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.
Part II
1a.
1b.
2.
3.
4.
5.
6.
7.
8.
[8J Notice of References Cited by Examiner, PT0-892.
[8J Information Disclosure Statement, PTO/SB/08.
SUMMARY OF ACTION
[8J. Claims 1-30 are subject to reexamination.
D Claims __ are not subject to reexamination.
3. D Interview Summary, PT0-474.
4. D
D Claims __ have been canceled in the present reexamination proceeding.
[8J Claims 1-3, 7 and 8 are patentable and/or confirmed.
[8J Claims 4-6 9-30 are rejected.
D Claims __ are objected to.
D The drawings, filed on __ are acceptable.
D The proposed drawing correction, filed on has been (7a) D approved (7b) D disapproved.
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 proc~eding 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.
10. D Other: __
cc: Requester (if third party reouester) U.S. Patent and Trademark Office
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
The present application is being examined under the pre-AIA first to invent
provisions. 1
Brief Summary of the Prosecution History
Page 2
On March 26, 2015, a first reexamination was requested by a third party requester
for claims 1-8 of U.S. Patent No. 6,532,708 to Baerveldt ("the '708 patent"), and assigned
Control Number 90/013,473 ("the '473 proceeding").
On April 3, 2015, a second reexamination was requested by a third party requester
for claims 1-8 of the '708 patent, and assigned Control Number 90/013,472 ("the '472
proceeding").
On May 19, 2015 an Order was mailed in the '473 proceeding, granting
reexamination of claims 1-8 of the '708 patent and setting a two-month period for Patent
Owner to file a Statement under 35 U.S.C. 304.
On May 29, 2015 an Order was mailed in the '472 proceeding, granting
reexamination of claims 1-8 of the '708 patent and setting a two-month period for Patent
Owner to file a Statement under 35 U.S.C. 304.
On July 31, 2015, a Decision merging the proceedings of the '472 and '473
reexaminations was mailed in each of the proceedings.
A non-final Office action ("NF action") was mailed August 10, 2015.
A telephone interview was held September 9, 2015.
1 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Page 3
Patent Owner filed a first Response to the non-final Office action on September 10,
2015, and a corrected Response ("Response") on September 14, 2015.
This Office action addresses the corrected Response.
Scope of Reexamination
Reexamination was requested and ordered for claims 1-8 in each of the '4 72 and
'473 proceedings. In the Response filed September 14, 2015, patent claims 4 and 6 are
amended, and new claim~ 9-30 are added. Therefore claims 1-30 are within the scope of
this merged proceeding.
Prior Art Documents Relied Upon in this Action
U.S. Patent 3,606,826 to Bowman ("Bowman")
Canadian Patent 1,280,007 to Baerveldt ("Canadian '007")
Migua (admitted prior art figure 1 in the subject Baerveldt '708 patent)
Grounds of Rejection
The numbering of the grounds of rejection is preserved from the previous action,
and new grounds are assigned new numbers accordingly.
Claim Rejections • 35 USC § 112
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make
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Page4
and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Ground 6 (new)
Claims 4-6, and 9-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-
AIA), first paragraph, as failing to comply with the written description requirement. The )
claims contains subject matter which was not described in the specification in such a way
as to reasonably convey to one skilled in the relevant art that the inventor or a joint
inventor, or for pre-AIA the inventor(s), at the time the application was filed, had
possession of the claimed invention.
35 U.S.C. 305 provides for examination under 35 U.S.C. 132, which states that no
amendment shall introduce new matter into the disclosure of the invention. Thus, the
question of new matter should be considered in a reexamination proceeding.
Claims 4 and 6 are amended to recite "said first layer and said second layer of said
resilient compressible foam sealant are configured to maintainsaid central spine in a
vertical position in said joinf' (emphasis added). Claims 19 and 30 further limit this
limitation.
The disclosure of the '708 patent does not show or describe support for this
limitation.
Patent Owner asserts that the disclosure of the '708 patent provides support for this
amendment (Response, p. 10), but fails to point out any specific description of the layers of
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foam maintaining the spine in a vertical position. Instead, the statement asserts support
for all of the amendments to claims 4 and 6 can be found in Column 2, lines 25 to 35;
Column 3, lines 6 to 29, and lines 30 to 40, Column 5, lines 12 to 23, Figures 3 to 1 O; and
Claims 1 to 8 as issued.
Column 2, lines 25 to 35, describe a recovery or return force for the cover plate.
There is no mention of maintaining the central spine in a vertical position.
Column 3, lines 6 to 29, and lines 30 to 40, describe the expansion forces of the
foam sealants on either side of the T-piece as being in equilibrium to enable the cover
plate to remain centered over the joint. There is no mention of maintaining the T-piece in a
vertical position.
Column 5, lines 12 to 23 do not mention centering of the central spine or
maintaining it in a vertical position.
In the '708 patent, any description of the expansion forces of the foam sealant on
the central spine refers to the horizontal or lateral positioning of the cover plate over the
joint and/or the central spine within the joint. The foam portions act to return the cover
plate and the central spine to a correct, neutral, resting, or centered position.
However, column 3, lines 40-67 to column 4, lines 1-5 suggest that the brackets or
angulated portions 7 along with the screws 6 and bolts 9 may be used to adjust the height
or position of the cover plate with respect to the central spine and the surface of the joint
itself, in order to accommodate irregularities in.the joint occurring during the construction
process. Therefore, it would appear that the vertical position of the central spine is
dictated by the connection of the cover plate to the central spine, even though this is not
specified in the '708 patent.
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Therefore, the disclosure of the '708 patent lacks any support for the foam sealants
being capable of maintaining the central spine in a vertical position. In fact, the disclosure
does not even suggest that the central spine can ever be moved out of a vertical position
due to expansion and contraction or seismic movements of the joint or for other reasons.
New claims 10 and 21 set forth that the "compressible and non-compressible layers
of foam sealant are configured of differing densities such that a recovery force of said
compressible and non-compressible laye.rs of foar.n sealant compressing and expanding in
relation to said movement of said substrates." However, the disclosure of the '708 patent
is silent as to the non-compressible layers providing a recovery force or compressing or
expanding in relation to the movement of the substrates as claimed.
New claims 19 and 30 recite the first and second layers of the compressible foam
sealant are configured to maintain said central spine in the vertical position without
additional support below the central spine.
The specification of the '708 patent does not.describe the joint seal, the cover, or
the central spine as being supported or unsupported below the central spine.
While figures 3-10 do not show the central spine being supported from below, there
is no positive description of a support element, or the lack of a support element.
Therefore, the negative or exclusionary limitation of "without additional support below the
central spine" is not supported in the disclosure of the '708 patent and is considered to
introduce new matter into the patent. As set forth in MPEP 2173.05(i), any negative
limitation or exclusionary proviso must have basis in the original disclosure. If alternative
elements are positively recited in the specification, they may be explicitly excluded in the
claims.
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Therefore, amended claims 4-6 and new claims 10, 18, 19, 21, 29, and 30 (and all
of the claims which depend therefrom) introduce new matter into the disclosure of the '708
patent.
This is a New Matter rejection.
Ground 7 (new)
Claims 10, 19, 21, and 30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112
(pre-AIA), second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA t~e
applicant regards as the invention.
Claims 1 O and 21 are indefinite because it is not clear how the non-compressible
layers can provide a recovery force, nor is it clear how they can compress or expand in
relation to the movement of the substrates as claimed.
Claims 19 and 30 recite the first and second layers of the compressible foam
sealant are configured to maintain said central spine in the vertical position "without
additional support below the central spine." The phrase "without additional support" does
not preclude some other support for the central spine. The claims depend from claims 4
and 6, respectively, which set forth that the first and second layers maintain the central
spine in a vertical position, but do not recite that the layers support the central spine, or
that the central spine is supported from below by another mea,ns. None of claims 4, 6, 19,
or 30 distinguish between the terms "maintain" and "support."
Therefore, the metes and bounds of claims 19 and 30 cannot be determined, and
the claims are indefinite because it is not clear what is meant by the term "support," i.e., do
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Page 8
the first and second layers as recited actually support the central spine in the joint, or do
they only "maintain" its position? The claims are further indefinite because the term
"withoµt additional support below said central spine" infers that a first means of support
may be present (although not claimed), and also that the precluded "additional support"
would normally ~ct to maintain the central spine in a vertical position.
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.
Ground 1
The rejections previously set forth in this ground are not maintained.
Ground 2
Claims 4, 6, 9-11, 13-18, 20-22, and 24-29 are rejected under pre-AIA 35 U.S.C.
103(a) as being unpatentable over Bowman in view of Canadian '007.
Bowman discloses an expansion joint seal and cover assembly comprising a cover
plate 194; a central spine 180 extending downwardly from the cover plate and positioned
in a joint between substrates such that the cover plate overlies the joint; and the cover
plate detachably connected to the central spine by screws 200. First and second resilient
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compressible tubular seal members 26 are disposed on first and second sides of the spine
as shown in figure 2. The central spine and the first and second seal members are
configured to accommodate movement of the substrates by the compressing and
expanding of the seal members in relation to such movement (column 1, lines 38-44).
Bowman does not explicitly state that the central spine remains centered in the joint,
but the internal truss structure of the first and second seal members 26 exerts a
substantially uniform outward pressure to the sidewalls 60, 62 (column 3, lines 20-26)
which press against the substrate and the central spine; and the cover 194 provides a
continuous, uninterrupted tread surface during expansion and contraction of the substrates
(column 4, lines 67-71). Therefore, because the cover 194 is secured to the central spine
180, and the first and second seal members shown in figure 2 exert substantially uniform
outward pressure against the substrate and the central spine, and the cover continuously
covers the joint, it is inherent that the seal members 26 accommodate movement of the
substrates by compressing and expanding in response to movement of the substrates
such that the central spine would remain substantially centered in the joint as the cover
plate remains substantially centered over the joint during expansion and contraction.
Likewise, the first and second seal members are configured to maintain the central spine in
a substantially vertical position in the joint due to their identical design and the substantially
equal outward pressure exerted by their sidewalls against the central spine.
The seal members of Bowman do not comprise at least one first and second layer
of a resilient compressible foam sealant; and the assembly does not include a low modulus
elastomeric sealant applied to the top surface of the sealants.
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Canadian '007 teaches an expansion joint seal assembly comprising a sealant strip
1 including at least one layer of a resilient compressible foam sealant 2, and a low
modulus elastomeric sealant 4 applied to the top surface thereof. Canadian '007 further
teaches that the compressible foam joint seal assembly can be used in place of
elastomeric tubular joint seals. As described on page 1:
Generally, joint fillers are divided, by the American Society for Testing and Materials (ASTM) into two types. ASTM Type A are, in general, flexible closed cell plastic or sponge rubber. They are used to control the depth of sealant used at the top of a joint.
ASTM Type B fillers, on the other hand, are relatively more rigid materials such as elastomeric tubing of neoprene, butyl or EPDM. They can be used as temporary joint seals and provide some weather-proofing in the event of sealant failure.
The joint filler of the present invention is constructed as a modified hybrid form of Type A filler, but exhibits the desirable characteristics of Type B fillers.
In the paragraph bridging pages 3 and 4, Canadian '007 asserts that the invention
provides a joint filler which has the desirable properties for a joint filler together with some
inherent properties of a sealant; and when used as a joint filler together with a sealant, has
the ability to reduce the quantity of sealant necessary to seal the joint by altering the
sealant configuration normally considered ideal. (emphasis original)
Therefore, Canadian '007 teaches that it is known that compressible members in an
expansion joint may comprise a compressible foam material or an elastomeric tubular
structure. Further taught is the inventive joint filler, which comprises a compressible foam
member which has the desirable properties for a joint filler together with some of the
inherent properties of a sealant.
In light of the teachings of Canadian '007, one of ordinary skill in the art, at the time
of the invention, would have found it obvious to modify the expansion joint assembly of
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Bowman and substitute first and second compressible foam sealant members for the first
and second integrally formed seal members 26 in order to provide a seal member which
has the desirable properties of a joint filler with some inherent properties of a sealant. The
compressible foam sealant strip of Canadian '007 has been shown to be an obvious
substitute for tubular elastomeric seal members such as those used in Bowman, being
expandable without losing its hold on the side walls of joint, as well as being compressible
(Canadian '007, pp. 7-8). The substitution of first and second layers of compressible foam
sealant for the tubular seal members of Bowman would therefore yield the predictable
result of improved sealing of the joint.
The substitution of the layers of compressible foam sealant for the tubular seal
members would accommodate movement of the substrates by compressing and
expanding in response to movement of the substrates, and would exert an outward
pressure against the substrate and the central spine such that the central spine would
remain substantially centered in the joint. Due to the expansive force of the compressible
layers of foam, the central spine would be maintained in a substantially vertical position in
the joint.
It would further have been obvious to those of ordinary skill in the art to apply a low
modulus elastomeric sealant applied to the top surface of the compressible foam
members, as taught by the use of sealant 4 in Canadian '007, in order to better seal the
joint seal assembly and yield the predictable result of keeping water and debris from
contacting the foam members.
With respect to claims 9 and 20, Canadian '007 further teaches the use of at least
one substantially non-compressible foam sealant layer 3, which is inexpensive ·(p. 5) and
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Page 12
translates movement in the joint into a series of small movements (p. 10). From this
teaching, it would have been obvious for the first and second layers of compressible foam
sealant to include at least one non-compressible foam sealant layer at least to reduce the
overall cost of the compressible seal members.
With respect to claims 10 and 21, Canadian '007 appears to be silent as the density
of the non-compressible layers of foam. However, those of ordinary skill in the art would
have found it an obvious design expedient to adjust the densities of either or both of the
compressible and non-compressible foam layers in order to reduce the weight of the seal,
reduce its cost by using less material, or to increase the water-impermeability of the
compressible layer. As such, for the compressible and non-compressible layers to have
different densities would have been an obvious choice of design. Further, it is inherent
that a recovery force of the compressible and non-compressible layers of foam sealant
compressing and expanding in relation to the movement of the substrates would depend
on a width of the joint and performance characteristics of the joint seal and cover, including
an ability of the recovery force to accommodate seismic and thermal movement of the
substrates.
With respect to claims 11 and 22, a length of the I-beam or central spine of Bowman
would inherently depend at least in-part on dimensions of the joint. Additionally, in
designing such a joint assembly, a length of the I-beam would or could depend on a size of
the seal members, or, a size of the seal members would or could depend on a length of
the I-beam. Therefore, in the joint assembly of Bowman as modified by Canadian '007, it
would have been an obvious mechanical expedient for those of ordinary skill in the art to
design a length of the I-beam based _on dimensions of the joint and on a size of the first
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Page 13 .
and second layers of resilient compressible foam sealant. This would yield the predictable
result of the compressible foam sealants properly fitting in the joint with the central spine.
With respect to claims 13 and 24, the first and second layers of compressible foam
sealant are pressed against the central spine of Bowman as modified by Canadian '007,
and the central spine is therefore configured to bound an end of the first layer of
compressible foam sealant opposite the first substrate against the first side of the central
spine, and to bound an end of the second layer of compressible foam sealant opposite the
second substrate against the second side of the central spine.
With respect to claims 14 and 25, Canadian '007 further teaches that the
compressible foam sealant is impregnated with adhesive (p. 6) and that the low modulus
elastomeric sealant is water impermeable (p. 9). Therefore, it would have been obvious to
impregnate the first and second layers of compressible foam sealant of Bowman as
modified by Canadian '007 with an adhesive so that they adhere to the central spine and
the substrate; and further that the low modulus elastomeric sealant applied thereto would
provide a double seal of water resistance of the joint directly below the cover plate.
With respect to claims 15 and 26, inasmuch as the joint assembly of Bowman is
used in highways, bridges, and sidewalks, the cover plate would inherently be configured
of material that has impact resistance and rigidity in load transfer to undergo at least one of
vehicular and pedestrian traffic.
With respect to claims 16, 17, 27, and 28, the silicone sealant and other materials
described on page 8 of Canadian '007 provide a watertight barrier and a "closed cell finish"
to the top surface of the open-cell compressible foam sealant.
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With respect to claims 18 and 29, the central spine is recited as including a lower
base surface and an upper base surface, and that the first and second layers of
compressible foam sealants are "supported by the lower base surface." Lines 34-47 of
column 3 of the '708 patent describe "upper and lower base flanges 5" which may be
provided "to position the foam sealant 5 more accurately," but there is no description of
either base flange supporting the foam sealant. However, figures 4, 5, and 7-10 appear to
show the lower surfaces of the seal members contacting an upper surface of the lower
base flange, and therefore the lower flanges arguably appear to support the foam
members. While the disclosure of the '708 patent lacks support for the terms "lower base
surface" and "upper base surface," claims 18 and 29 are understood to limit the first and
second layers of compressible foam sealants to being supported on or by surfaces of the
lower base flanges.
The central spine of Bowman further includes a lower base surface (formed by
flanges 190, 192), an upper base surface (formed by flanges 182, 184) to which the cover
plate is detachably connected, and a web 180 extending between the lower base surface
and the upper base surface. Bowman describes stop shoulders 168, 170 are secured to
the channel members to support the bottoms of the seal members 26. The flanges 190,
192 on the central spine are similar to the shoulders 168, 170, and would support the
bottoms of the seal rf!embers in the same manner when the first and second seal
members are positioned against the web and supported by the lower base surface of the
flanges 190, 192. In the substitution of first and second layers of compressible foam
sealant in the joint assembly of Bowman as modified by Canadian '007, it would further
have been obvious to use the lower base surfaces of the central spine to support the
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layers of foam sealant in order to provide additional support for the bottoms of
compressible foam sealants.
Ground 3
Page 15
Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
Bowman in view of Canadian '007 as applied to claim 4 above, and further in view of
Migua.
The expansion joint seal assembly of Bowman as modified by Canadian '007 does
not include a bead of sealant is applied between the spine and the cover.
Migua teaches an expansion joint seal and cover assembly comprising a cover
plate removably secured to a pair of central members, and a pair of elastomeric extrusions
arranged on either side of the central members. Figure 1 shows an element disposed
between the central members and the cover plate in the area of the threaded fasteners.
Figure 1 has no reference characters, but in column 1 of the '708 patent, lines 27-49
describe waterproofing at the "upper surfaces of the joint immediately below the cover
plate." Therefore, those of ordinary skill in the art would readily understand that the
unlabelled material or elements between the cover plate and the joint (near the center and
also at the side edges of the cover plate) would be the "waterproofing" described in
column 1.
From this teaching, it would have been obvious to those of ordinary skill in the art at
the time of the invention to provide waterproofing in the form of a sealant between the
spine and the cover of Bowman as modified by Canadian '007 to prevent the entry of water
through the cover and into the bore 202 in the central spine 180. This would yield the
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Page 16
predictable result of waterproofing the assembly at the screw opening in the cover, and
preventing the screw from becoming corroded in the bore 202.
While the "waterproofing" taught by Migua is not described as a "bead of sealant,"
those of ordinary skill in the art would have further found it obvious to apply the sealant as
a bead to facilitate the application of the sealant in the intended area. Moreover, it is noted
that the '708 patent does not attribute any special meaning to the term "bead" of sealant.
Claims 19 and 30 have not been examined on the merits due to the new matter and
indefinite language recited therein. See the rejections under 35 USC§ 112, first and
second paragraphs, set forth above in this Office action.
Patentable Subject Matter
Claims 1-3, 7, and 8 are found to be patentable over the prior art of record.
Claims 12 and 23 appear to contain allowable subject matter, but depend from
claims 4 and 6, respectively, which have been rejected under 35 U.S.C. 112(a) or
35 U.S.C. 112 (pre-AIA), 1st paragraph.
STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
The prior prt of record does not teach or fairly suggest an expansion joint seal and
cover as set forth in original patent claims 1, 7, and 8, or new claims 12 and 23.
With respect to claims 1, 7, and 8, and Bowman, Migua, Mariya, Watson-Bowman,
Henderson, and Houghton, the Examiner's Statement of Reasons for Patentability
provided on pages 10-16 of the previous Office action are incorporated herein.
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With respect to amended claims 4 and 6, it would not have been obvious to modify
Bowman in view of the teachings of Warson and Baerveldt '176.
Warson teaches an expansion joint seal 10 comprising a first member 24 having a
central wall 40, and first and second expansible and compressible members 26 arranged
on either side of the central wall. The members may comprise a polyurethane foam
material or an integral, collapsible web structure. While Worson teaches that the
compressible member in an expansion joint seal may comprise a foam material or an
integral collapsible web structure, there is no teaching that it is the compressible members
themselves which provide the seal in the joint. The compressible members of Warson are
not entirely analogous to the seal members 26 of Bowman, which in fact do provide the
seal in the joint. Therefore, Warson does not teach or fairly suggest that it would have
been obvious to substitute first and 'second compressible foam sealant (or seal members)
for integrally formed tubular web seal members such as the seal members 26 of Bowman.
Newly cited U.S. Patent 6,598,364 to Pelles ("Pelles") discloses an adjustable
expansion joint forming device. The device includes a middle rib 14 and sidewalls 16
having flanges 18 extending therefrom. The device is mounted on threaded studs 24
which are secured to or set in a platform 32. Nuts 28 and springs 30 allow the flanges 18
to be positioned along the threaded portion of the studs, to hold the top of the rib 14 at a
selected height which corresponds to the top surface of a layer of concrete poured over
the platform. Reference is made to figures 1a-1d, but the other figures show similar
structure.
With respect to claims 1 , 7, and 8, the sidewalls 16 of Pelles arguably form a central
rib of the device, but they are not C-shaped and do not include upper and lower base
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Page 18
flanges as claimed. Instead, each sidewall is integrally formed with a single flange 18, and
therefore the flanges are not affixable to the sidewalls at selected heights, as also claimed.
Further, the device does not include a cover, and there is no provision by which a cover
could be screwed to the flange as claimed.
Claims 12 and 23 depend from amended claims 4 and 6, respectively, and further
recite "an angular portion that is affixable to said central spine and said cover plate at
selected heights." As noted above, the flanges 18 in Pelles are integrally formed with the
sidewalls and therefore not affixable thereto at selected heights, and the flanges are not
affixable to a cover plate.
It would not have been obvious to modify Bowman in view of the teachings of Pelles
for the following reasons.
The central element or I-beam of Bowman is supported by edge members
permanently set in the pavement. A cover plate is fastened to the I-beam in a fixed
position, and angular portions (upper flanges 182) are integrally formed with the I-beam to
form a support surface for the cover plate. Further, it appears that the top surface of the I-
beam should always be flush with the top surfaces of the legs 142, 144 of the channel
members in order to support the cover plate. Those of ordinary skill in the art would not
have found it obvious to modify Bowman in view of any tea.chings from Pelles because
there is no reason for the angular portions to be selectively affixable to the I-beam.
Moreover, while Pelles teaches an adjustable height of the top surface of the rib 14, there
appears to be no reason for the top surface of the I-beam of Bowman to be adjustable in
height.
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Page 19
Any comments considered necessary by PATENT OWNER regarding the above
s~atement must be submitted promptly to avoid processing delays. Such submission by
the patent owner should be labeled: "Comments on Statement of Reasons for Patentability
and/or Confirmation" and will be placed in the reexamination file.
Response to Arguments
Applicant's arguments filed September 15, 2015 have been fully considered but
they are not persuasive.
The arguments directed to Ground 1 are moot with respect to the instant Office
action.
With respect to Ground 2:
On page 30, PO summarizes the arguments by concluding that "one skilled in the
art would not seek to combine and modify the sealing member of Bowman with the sealing
element of Canadian '007," and asserts that the previous Office action contains no stated
reason why one skilled in the art would propose substituting the interleaved layers of
compressible open cell foam and substantially non-compressible closed cell foam of the
hybrid Type A filler of Canadian '007, for only2 a unitary tubular construction having an
internal truss structure of a Type B filler as in the seal 26 of Bowman.
A "simple substitution of one known element for another to obtain predictable
results" is one of a number of rationales to support a conclusion of obviousness identified
in KSR Int'/ Co. v: Teleflex Inc., 550 U.S. 398, 41.5-421, 82 USPQ2d 1385, 1395-97 (2007).
2 The reason for the use of the term "only" is not readily apparent from the arguments.
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Using the framework of this rationale as s'et forth in MPEP 2143:
Page 20
Bowman discloses an expansion joint seal and cover assembly comprising a cover
plate, a central spine extending downwardly and positioned between substrates in a joint,
and first and second resilient compressible tubular seal members disposed on either side
of the central spine. The seal members compress and expand to accommodate
movement due to expansion and contraction of the substrates.
Canadian '007 teaches that a compressible member in an expansion joint may
comprise a compressible foam material or an elastomeric tubular seal member.
Canadian '007 also teaches a sealant strip comprising a resilient compressible foam
sealant for use in an expansion joint. The sealant strip is a "modified hybrid" type of foam
sealant member which exhibits some of the characteristics of a tubular elastomeric seal
member. The sealant strip is used between the substrates in an expansion joint and can
compress and expand to accommodate movement of the substrates, and therefore
performs the same functions as the tubular elastomeric seal members and compressible
foam seal members.
The resilient compressible tubular seal members of Bowman and the resilient
compressible foam sealant of Canadian '007 and their functions were well-known to those
of ordinary skill in the art. In fact, Canadian '007 teaches that tubular elastomeric seal
members and compressible foam seal members were each well-known for use in
expansion joints.
Each of Bowman, Canadian '007, and the claimed invention are directed to the use
of a resilient compressible seal member in an expansion joint.
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Page 21
The problem to be. solved, namely sealing of the joint during expansion and
contraction of the substrates, is the same in Bowman, Canadian '007, and the claimed
invention. The solution to the problem, namely the use of a resilient compressible sealing
member, is also the same in Bowman, Canadian '007, and the claimed invention.
Those of ordinary skill in the art, faced with the problem to be solved and provided
with the teachings of Bowman and Canadian '007, would have found it obvious to
substitute the compressible foam sealant member of Canadian '007 for the tubular
elastomeric seal members of Bowman as a substitution of one known compressible seal
member for another in order to obtain a predictable result. Because the "modified hybrid"
foam sealant of Canadian '007 combines the characteristics of a tubular elastomeric seal
member with foam sealant member, the predictable results would include providing a
better seal between the substrate and the seal members due to the ability of the foam
sealant to conform to the shape of the substrate and the adhesive impregnated therein,
simplified installation (tubular elastomeric seals are more difficult to compress and install,
while resilient foam sealants are supplied pre-compressed), and the ability to fit a large
variety of widths.
All of these benefits were well-known to those of ordinary skill in the art at the time
of the invention. See for instance Vertical Expanding Foam - Compression Seal
Comparison, Emseal Joint Systems, Ltd., 1994, cited as Exhibit P with the Request in the
'473 proceeding).
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
With respect to the specific arguments presented in the Response:
Page 22
Regarding Bowman, Patent Owner ("PO") discusses the "significant feature" of the
locking lugs and clamping members described from column 3, lines 27-65 of Bowman and
emphasizes that the seals 26 are supported and locked in a vertical position in the joint
(Response, p. 25). While the locking feature is discussed, Bowman teaches many other
features, especially the internal structure which provides an expansive force on the
sidewalls of the seal members.
PO asserts that the seals 26 must be supported vertically in order to function as
intended, but never states exactly what is meant by "function as intended." Bowman does
teach that the seal members 26 are supported by the stop shoulders 168, 170, and this
which would allow them to function as intended, i.e., seal the joint and expand and
compress as required. But the arguments on pages 25-26 which infer that the combination
of Bowman and Canadian '007 would not include any support of the seal members do not
address the rejection as set forth and will not be addressed.
PO continues this argument in noting that the I-beam (the central spine) 180 is
supported by beams 154 (pp. 26 and 27), but is unclear as to how this support of the I-
beam makes a difference as to the function of the seals 26, or the substitution of foam
seals for the tubular ones of Bowman. A foam seal used in place of the tubular seal
members 26 would function just the same and the beams 154 would not appear to have
any effect on the sealing properties. On p. 27, argues that to "discard" the structural
support of the elastomeric seals of Bowman "would cause the member (seals) to not
operate as intended." PO does not elaborate as to why, and this appears to address
Bowman singly, and not as modified in Ground 2. The rejection set forth in Ground 2
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Page 23
never states that any of the structural supporting elements of Bowman are "discarded,"
and in fact, the action clearly states that the limitation of the central spine is found in
Bowman in the I-beam 180 extending downwardly from the cover plate.
Regarding Canadian '007, PO devotes particular attention to the statement in the
previous Office action asserting that this reference teaches that a compressible foam joint
seal is an "equivalent substitution" for an elastomeric tubular joint seal (NF action, p. 5).
PO, however, overlooks the main teaching in Canadian '007 of the inventive joint filler
which is a modified form of a "Type A" closed-cell or sponge rubber filler which exhibits the
desirable characteristics of a "Type B" elastomeric tubular filler. All of the joint fillers
described in Canadian '007 are used to fill and seal joints in structural elements such as
buildings, and in plazas and pavements for vehicular or pedestrian use. Therefore,
Canadian '007 clearly teaches a joint filler which can be used in the same environment and
in the same manner as the prior art Type A and Type B joint fillers. In other words,
Canadian '007 teaches a layered foam seal or joint filler which can be used in place of, i.e.,
substituted for, an elastomeric tubular seal or joint filler (such as that taught by Bowman).
The assertion on page 23 that "the Examiner appears to be taking statements of the
prior art wholly out of context and giving them meanings they would not have had to a
person of ordinary skill in the art" is not well-taken. PO fails to identify a statement from
Canadian '007 that is allegedly taken out of context, and also fails to identify a term or
statement that has allegedly been given a new meaning by the Examiner. This assertion
appears to be a lead-in to cite In re Wright and make a "pick and choose" argument. This
argument is not persuasive because PO fails to show how it applies to the rejection, i.e.,
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Page 24
PO does not state which portions of the seals and joint fillers of Canadian '007 are
asserted to have been picked and which portions are asserted to have been not chosen.
Next, PO alleges that the Examiner suggested that the disclosure of Canadian '007
teaches "substituting individual components from one type of system to another," and
further that the components (of the sealants and joint fillers) themselves may be
interchangeable (Response, p. 24). In any response to this Office action, PO is invited to
point out exactly where in the previous action it is suggested that Canadian '007 teaches
that the individual components of the various systems disclosed therein may be
interchangeable.
With respect to the argument on page 25 (and again on page 28) that Canadian
'007 is silent as to how the interleaved layers may function in the presence of another
component, PO is reminded that Canadian '007 is not the base reference in the rejection.
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).
With respect to the combination of Bowman in view of Canadian '007 as set forth in
Ground 2, PO again points to the "significant feature" of the flanges and lugs which secure
the seal member 26 in position in the joint, and that the I-beam 180 is supported by beams
154, and then argues that without the additional support the assembly would collapse in
the joint (Response, pp. 25-27) This may or may not be true, but is not seen to be
pertinent to the rejection set forth in Ground 2.
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Page 25
PO goes on to assert that there is no motivation or teaching to "discard" the
structural support as this would cause the seal member to not operate as intended
(Response p. 27). This argument is not understood as it fails to address the rejection as
actually set forth in Ground 2. The rejection set forth in Ground 2 never implies or
suggests that any structural members in Bowman are discarded in the combination with
Canadian '007, and instead clearly states that the joint assembly of Bowman is modified by ·
the substitution of "a pair of compressible foam members for the integrally formed web
members 26" (NF action, pp. 5-6).
With respect to the hindsight arguments presented on pages 28-30, it must be
recognized that any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning. But so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the claimed invention was made, and
·does not include knowledge glea.ned only from the applicant's disclosure, such a
reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA
1971 ).
On page 28, PO argues there is no motivation in either Bowman or Canadian '007
to "pick and choose" the joint filler or sealant strip of Canadian '007 as a substitute for the
elastomeric seals of Bowman, and on page 29 asserts that "neither reference suggests
such· a substitution" of one known resilient seal for another. 3 It is well-settled that the
motivation or suggestion need not come from the references themselves:
3 PO appears to rely on the outdated notion that motivation must come from the references themselves. However, obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Page 26
The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988)
However, in this instance the suggestion actually does come from one of the
references. Canadian '007 clearly describes three types of joint fillers: the Type A closed-
cell or sponge rubber joint filler, the Type 8 elastomeric tubular joint filler, and the inventive
joint filler which comprises a compressible foam sealant which also includes some of the
desirable characteristics of the Type B elastomeric tubular filler. Canadian '007 further
teaches that all three of these sealant/fillers are used in the same types of joints in
buildings, plazas, and pavements. Therefore, Canadian '007 has already in effect
substituted the inventive compressible layered foam joint filler for an elastomeric tubular
joint filler.
This teaching of Canadian '007 squarely addresses PO's statements on page 30
about "what the reference fairly suggests to a person or ordinary skill in the art," and why
said person would substitute one known joint filler for another. The joint filler taught by
Canadian '007, as a "modified hybrid from of Type A filler" (Canadian '007, p. 1) has the
functions and properties of a Type A joint filler combined with additional beneficial
properties of a sealant (Canadian, p. 3). This would suggest to a person of ordinary skill in
the art that the inventive joint filler would be an improvement over either a Type A or Type
B joint filler, but would especially be an improvement over the elastomeric tubular seals of
Bowman because it would provide additional sealing properties.
re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Page 27
Returning to Bowman, PO has repeatedly noted the lugs, the locking tabs, and the
internal truss structure of Bowman, arguing that they are critical to the operation of
~owman. Presumably, this means the operation of the seal, and statements such as
"functions as intended" and "operate as intended" appear to suggest that PO has taken the
position that a substitution of a resiliently compressible foam seal for the resiliently
compressible elastomeric seal of Bowman would destroy the intended use and function of
the seal in the joint of Bowman. The fact that the seal members of Bowman are supported
in the joint is not a reason that they can't be modified, improved, or replaced by other
known seals.
The function of the seal members 26 in Bowman is to provide a seal between the I-
beam and the channel members, and the seal members expand and compress in
accordance with the expansion and contraction of the substrates. The internal truss
structure in the seal members applies equal outward pressure against the I-beam and
would inherently maintain it in a central position.
Because the joint filler of Canadian '007 has the desi_rable properties of a flexible
closed-cell joint filler and an elastomeric tubing-type joint filler, those of ordinary skill in the
art would reasonably expect the Canadian '007 joint filler to perform those same functions,
i.e., the functions of the seal members in Bowman, when used in an expansion joint such
as that of Bowman. PO has not provided any evidence to the contrary. Rather than
destroying any function or operation of Bowman, such a substitution would be an
improvement.
As to the continuing argument that there is no motivation and it would not have
been obvious to substitute the known compressible resilient seal members of Canadian
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Page 28
'007 for the compressible resilient seal members of Bowman, such a substitution would
yield the predictable result of reducing the cost of the seal members. It is well-known that
tubular elastomeric seals such as used in Bowman are formed by extruding and are
therefore more expensive than foam sealants, and they are more difficult to install.
Moreover, polyurethane foam seals are compatible with most sealants while rubber or
neoprene tubular seals are not. See for instance, Tables 1-3 in Guide to Sealing Joints in
Concrete Structures, (ACI 504R-90), cited with this Office action.
Substituting foam sealant members would simplify installation because there would
be no lugs to align and fit within the locking tabs, and the foam members such as those
taught by Canadian '007 would readily adhere and conform to the shape of the I-beam and
the channel members.
Finally, reference is made to Sealing Joints in the Building Envelope, Emseal USA
Inc., 1999, cited as Exhibit Q with the Request filed in the '473 proceeding. On page 24,
integral tubular resilient compression seals are shown, and the document states that this
type of seals "cannot follow joint variations without compromising movement capability,"
and the "market has evolved beyond this technology." Alternatives to these tubular seals,
comprising impregnated expanding foam sealants, are shown on pages 20, 27-29, and 32.
This evidence clearly shows that those of ordinary skill in the art would have been aware of
the shortcomings of integral tubular seal members such as those used in Bowman, and
would have had good reason to look for more modern alternatives such as the foam
sealants taught by Canadian '007.
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Page 29
With respect to claims 4 and 6 as amended, PO argues that the combination of
Bowman and Canadian '007 does not suggest or make obvious at least the first layer and
the second layer of resilient compressible foam sealant configured to maintain the central
spine in a vertical position in a joint, as is now recited.
For the reasons set forth in Ground 2, Bowman would maintain the central spine in
a vertical position, to the same extent of the claimed invention. Upon the substitution of
the layers of compressible foam seal members for tubular seal members, one of ordinary
skill in the art would expect that the foam members would perform the same functions as
the tubular seal members.
The weather-resistance of the foam material used in Canadian '007 is based on its
density and the amount it is compressed in the joint. The compression creates an amount
of back-pressure of the foam against the substrate. This back-pressure, which is well-
known in the art as necessary to maintain the seal between the foam and the substrate,
would exert pressure against the sidewalls of the substrate and the central spine of
Bowman, and would therefore maintain the central spine in a vertical position in a joint.
Therefore, in view of PO's newly submitted arguments, the Examiner has
reconsidered the patentability of the claimed invention. Based on the record as a whole,
and weighing PO's arguments against the evidence supporting the prima facie case of
obviousness, PO's rebuttal is not sufficient to overcome the rejections set forth above.
With respect to Ground 3:
PO merely asserts that Migua does not cure the alleged deficiencies of Bowman
and Canadian '007.
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
With respect to Ground 4:
Page 30
The arguments presented with respect to Bowman in view of Warson and Baerveldt
'176 are moot because the rejections set forth in this ground are no longer maintained.
However, the arguments mischaracterize the teachings of Warson and are therefore
addressed below in order to clarify the record to why claims 4 and 6 are found to define
over Bowman in view of Worson and Baerveldt '176.
The arguments presented on pages 36-40 of the Response generally treat Warson
as if it had been applied as the base reference in the previous Office action, and more or
less ignore its teaching that the resilient compressible members within the seal may be
made of a foam material or an integral, collapsible web structure.
PO's assertion that figures 4 and 9 show an "expanded state" of the seal of Warson
do not mention that these figures show that a sealant 38 may be omitted ·to allow a greater
expansion of the seal during "extraordinary contraction" of the substrates, and that this is
"not desirable" according to Warson.
PO does argue on pages 37 and 38 that the adhesive 20 provides the seal between
the sealing means of Warson and the substrate, and therefore the pressure provided by
the compressible foam members 26 (or the integral web members), and the material used
for the members, is not relied upon to provide the seal for the sealing means and the joint.
However, this appears to fall short of recognizing that the seal members of Bowman
(along with any adhesive applied thereto) contact the substrate and provide the actual
seal, while the compressible members 26 of Warson do not contact the substrate and
instead urge the sidewalls 28 of the seal member against the substrate. For this reason,
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Page 31
the compressible members 26 of Worson are not entirely analogous to the seal members
26 of Bowman.
With respect to Ground 5:
The arguments presented with respect Migua are moot because the rejection set
forth in this ground is no longer maintained.
Patent Owner has not presented arguments as to how new claims 9-30 define over
the prior art of record.
Information Disclosure Statement
Patent Owner has filed information disclosure statements (IDS) on August 20,
September 10, and November 2, 2015.
The IDS filed November 2, 2015 has been considered and placed of record.
A cursory review of the IDS forms (PTO/SB/08) and the documents cited in the
submissions of August 20 and September 10, 2015 reveals that a considerable number of
entries and documents are duplicates of those submitted in the IDSs filed July 23 and July
28, 2015. Inasmuch as PO has submitted hundreds of documents, including U.S. patents,
foreign references, and non-patent literature documents, it would be an extreme burden on
the Office to review the IDSs filed August 20 and September 10, 2015 and distinguish
between the newly-cited references and those already of record (cited by PO or in the
Request), and then line through those found to be duplicates.·
Application/Control Number: 90/013,473 & 90/013,472
·Art Unit: 3993
Page 32
Therefore, the IDSs filed August 20 and September 10, 2015 have not been
considered by the Examiner, and will not be placed of record. For any IDS filed in these
merged proceedings or thereafter, PO must cite only prior art which has not been
previously made of record.
It is also noted that a considerable number: of references cited in the August 20 and
September 10 IDSs do not have a date and therefore do not comply with 37 CFR
1.98(b)(5). These references cannot be considered. Further, several of the IDS forms
include boxes which are blank and have been lined through by Patent Owner. It is
presumed that these boxes were intended to remain empty.
Summary
Grounds 1, 4, and 5 are not maintained in this Office action.
Grounds 2 and 3 address claims 4 and 6 as amended, original claim 5, and new
claims 9-30.
New Grounds 6 and 7 address claims 9-30.
Conclusion
The prior art made of record and not relied upon is considered pertinent to
applicant's disclosure.
Pelles is cited to show an expansion joint comprising a rib which may be adjusted in
height. See the more detailed explanation in the Examiner's Statement of Reasons for
Patentability above.
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Page 33
Guide to Sealing Joints in Concrete Structures, (ACI 504R-90), is cited to show
different' seals and sealing materials used in various types of structural joints.
Submissions - Time Period for Response
Patent litigation (Docket No. 1-14-cv-14 706-RWZ) involving the subject 6,532, 708
patent is stayed pending reexamination. See p. 2 of the combined Notification of
Concurrent Proceedings and Notification of Current Assignment of the Patent filed by
Patent Owner on July 23, 2015. Accordingly, Office actions in these reexamination
proceedings will set a 1-month shortened statutory period for response. See MPEP
2263.
As noted on page 2 of this Office action, the proceedings of Reexam.inations
90/013,472 and 90/013,473 are merged in accordance with 37 CFR 1.565(c). See page 3
of the Decision mailed July 31, 2015, and MPEP 2283 for conduct of merged proceedings.
Patent Owner is reminded that 37 CFR 1.550(f) requires that "After filing of a
request for ex parte reexamination by a third party requester, any document filed by either
the patent owner or the third party requester must be served on the other party in the
reexamination proceeding in the manner provided by§ 1.248."
In order to ensure full consideration of any affidavits or declarations or other
documents as evidence of patentability, such documents must be submitted in response to
this first Office action on the merits (which does not result in a close of prosecution).
Submissions after the second Office action on the merits, which is intended to be a final
action, will be governed by the requirements of 37C.F.R. 1.116, after final rejection and by
37 C.F.R. 41.33 after appeal, which will be strictly enforced.
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
Extensions of Time
Page 34
Extensions of time under 37 CFR 1.136(a) will not be permitted in these
proceedings because the provisions of 37 CFR 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 CFR
1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in 37
CFR 1.550(c).
Notice of Concurrent Proceedings or Litigation
The patent owner is reminded of the continuing responsibility under 37 CFR
1.565(a), to apprise the Office of any litigation activity, or other prior or concurrent
proceeding, involving Patent No. 6,532, 708 throughout the course of this reexamination
proceeding. The Third Party Requesters are also reminded of the ability to apprise the
Office of any litigation activity, or other prior or concurrent proceeding, involving the '708
patent. See MPEP §§ 2207, 2282 and 2286 ..
Correspondence
All correspondence relating to this ex parte reexamination proceeding should be directed:
By EFS: Registered users may submit via the electronic filing system EFS-Web, at https ://efs. us pto. gov I efi le/my po rta I/ efs-reg istered
By Mail to: Mail Stop Ex Parle Reexam Attn: Central Reexamination Unit Commissioner for Patents United States Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
Application/Control Number: 90/013,473 & 90/013,472
Art Unit: 3993
By FAX to: (571) 273-9900 Central Reexamination Unit
By hand: Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314
Page 35
For EFS-Web transmissions, 37 CFR 1.8(a)(1 )(i) (C) and (ii) states 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 CFR 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.
Any inquiry concerning this communication or earlier communications from the Examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
/Russell D. Stormer/
Russell D. Stormer Primary Examiner Central Reexamination Unit Art Unit 3993 (571) 272-6687
Conferee: /SC/
Conferee: /GAS/