90013395 FIRE AND WATER RESISTANT EXPANSION JOINT SYSTEM

Office Action in Ex Parte Reexamination

Control No. 90/013,395

Examiner JEFFREY L. GELLNER

Patent Under Reexamination 8,739,495 81

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 22 June 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 1 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 1-52 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 1-52 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)0 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. 20150724

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Application/Control Number: 90/013,395

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

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 claims at issue 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 Langi, 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); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).

A timely filed terminal disclaimer in compliance with 37 CPR 1.32l(c) or 1.32l(d) may

be used to overcome an actual or provisional rejection based on a nonstatutory double patenting

ground provided the reference application or patent either is shown to be commonly owned with

this application, or claims an invention made as a result of activities undertaken within the scope

of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CPR

1.32l(b).

The USPTO internet Web site contains terminal disclaimer forms which may be used.

Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what


Art Unit: 3993

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form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-1.jsp.

Claims 1, 9, 10, 15, 20-24, 25-27, 38, 39, 40, 42, 43, 45, and 46 are rejected on the

ground of nonstatutory double patenting as being unpatentable over claiml-3, 7, 12-15 of U.S.

Patent No. 8,813,449 Bl. Although the claims at issue are not identical, they are not patentably

distinct from each other because both sets of claims go to a fire and water resistant expansion

system with a foam and fire retardant, aluminum tri-hydrate, infused in the foam with particular

compression and time/temperature resistance.

Claim Rejections - 35USC§112

The following is a quotation of 35 U.S.C. l 12(b ): (b) CONCLUSION.-The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the 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.

Claims 38-50 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 the applicant regards as the

invention.

As to claim 38, the language of "configured to maintain fire resistance upon exposure to a

temperature of about 540° C or greater" renders the claim indefinite because the specification


Art Unit: 3993

does not provide, nor is there an objective standard, for determining when a material is

Page 4

maintaining its fire resistance. (For example, a material maintaining fire resistance could be

when the material does not ignite or when a material bums slowly or when a material melts.)

Claims 39-44 are indefinite because of their dependence upon claim 38.

As to claim 45, the language of "and maintains fire resistance upon exposure" renders the

claim indefinite because the specification does not provide, nor is there an objective standard, for

determining when a material is maintaining its fire resistance. (For example, a material

maintaining fire resistance could be when the material does not ignite or when a material bums

slowly or when a material melts.)


As to claim 48, the language of "configured to maintain fire resistance upon exposure to a

temperature of about 540° C or greater" renders the claim indefinite because the specification

does not provide, nor is there an objective standard, for determining when a material is

maintaining its fire resistance. (For example, a material maintaining fire resistance could be

when the material does not ignite or when a material bums slowly or when a material melts.)


Broadening - Rejection under 35 USC 305

Claims 38-50 are rejected under 35 U.S.C. 305 as enlarging the scope of the claim(s) of

the patent being reexamined. In 35 U.S.C. 305, it is stated that "[n]o proposed amended or new

claim enlarging the scope of a claim of the patent will be permitted in a reexamination

proceeding .... " A claim presented in a reexamination "enlarges the scope" of the patent claim(s)


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where the claim is broader than any claim of the patent. A claim is broader in scope than the

original claims if it contains within its scope any conceivable product or process which would

not have infringed the original patent. A claim is broadened if it is broader in any one respect,

even though it may be narrower in other respects.

In claim 38, the language "configured to maintain fire resistance upon exposure" enlarges

the scope of this claim. Patented claim 1 had the language of "capable of withstanding

exposure." The new language is considered to be broader because it invokes the structure of the

foam, or system, and not its attributes.

Claims 39-44 is rejected because of its dependence upon claim 38.

In claim 45, the language "maintains fire resistance upon exposure" enlarges the scope of

this claim. Patented claim 1 had the language of "capable of withstanding exposure." The new

language is considered to be broader because it invokes the structure of the foam, or system, and

not its attributes.


In claim 48, the language "configured to maintain fire resistance upon exposure" enlarges

the scope of this claim. Patented claim 1 had the language of "capable of withstanding

exposure." The new language is considered to be broader because it invokes the structure of the

foam, or system, and not its attributes.



Art Unit: 3993

Claim Rejections - 35USC§103

Page 6

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, 2, 4, 8, 10-14, 16-19, 25, 27, 28, 30, 33, 34, 36, 38-41, 44, 45-47, 48, 51, 52 are

rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Baerveldt (EP 1118716 Al;

4th foreign patent document on an IDS of 6 February 2015) in view of Sealtite Standard (46th

NPL document of one IDS received 6 February 2015; "Sealtite") (with explanation from DIN

18542, 4102-1and4102-15 (4th 1st and 3rd document of one IDS received with 6 February

2015)).

As to claim 1, Baerveldt discloses a fire and water resistant expansion joint system (Fig.

1), comprising:

foam in a compressed state which is less than fully expanded (from "pre-compressed

impregnated expanding foam sealant" of para. [0006]; 2 of Fig. l); and

a water resistant layer ("UV curable silicone" of para. [0007]);

Not disclosed is a fire retardant material infused into the foam; wherein the fire and water

resistant expansion joint system is configured to define a profile to facilitate compression and

expansion of the system when installed between substrates, and the fire and water resistant

expansion joint system is capable of withstanding exposure to a temperature of about 540°C or

greater for about five minutes and able to accommodate movement of the substrates by

compressing and expanding while maintaining the compressed state.


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Sealtite, however, discloses a foam in a compressed state (from "installed in joint in a

pre-compressed state" of 2nd page) and configured to define a profile to facilitate compression

and expansion of the system when installed between substrates (from "Excellent compression

recovery" and "Permanently resilient: The material will expand and contract with the movement

of the joint under any weather condition" of page 1) and able to accommodate movement of the

substrates by compressing and expanding (from "Excellent compression recovery" and

"Permanently resilient: The material will expand and contract with the movement of the joint

under any weather condition" of page 1) while maintaining the compressed state ("Works under

its own constant internal pressure" of 1st page); and; having fire-retardant material infused

therein (from "polyurethane foam impregnated with a hydrophobic, flame retardant, modified

acrylic" of page 1) so that the foam is capable of withstanding exposure to a temperature of

about 540° C or greater for about five minutes (in that Sealtite meets DIN 18542 standard (at

page 2 of Sealtite); at pages 28-29 of Request DIN 18542 requires DIN 4102 class B standards

(from no. 7, Table 2 of page 3 of Exhibit L); at pages 26-27 of Request, DIN 4102 (section 6.1.3

of page 11 of Exhibit 0) invokes DIN 4102-15 standard of 540° C for ten minutes (page 6 of

Exhibit P)).

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

to modify the system of Baerveldt by using the foam of Sealtite capability of

compression/expansion and flame retardant so as to use a foam that is waterproof, chemically

resistant, fire resistant, and permanently resilient (see Sealtite at 1st page).

As to claim 2, Baerveldt and Sealtite further disclose the water resistant layer is disposed

on a surface of the foam (Fig. 1, para. [0007] of Baerveldt).


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As to claim 4, Baerveldt and Sealtite further disclose the water resistant layer comprises

silicone (Baerveldt at para. [0007]).

As to claim 8, Baerveldt and Sealtite further disclose further disclose at least one of a

sealant band (7 of Fig. 5) and a corner bead (region of 1 at corners of Fig. 1).

As to claim 10, Baerveldt as modified by Sealtite further disclose an infused foam density

of 160 kg/m3 (2nd page of Sealtite). It would have been obvious to one of ordinary skill in the art

at the time of the invention to further modify the system of Baerveldt and Sealtite by having the

compressed foam a density of 200 kg/m3 to 700 kg/m3 depending upon use of the system.

As to claim 11, Baerveldt as modified by Sealtite further disclose the foam uncompressed

has a density of about 130 kg/m3 to about 150 kg/m3 (160 kg/m3 of 2nd page of Sealtite).

As to claim 12, Baerveldt as modified by Sealtite further disclose the foam comprises

open celled polyurethane foam (Baerveldt at [0002]).

As to claim 13, Baerveldt as modified by Sealtite further disclose a plurality of

laminations (from Fig. 11 of Baerveldt) of the open celled polyurethane foam. It would have

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

Baerveldt and Sealtite by using infused laminations as disclosed by Baerveldt so as to assist in

compression recovery.

As to claim 14, As to claim 7, Baerveldt as modified by Sealtite further disclose an

infused foam density of 160 kg/m3 (2nd page of Sealtite). It would have been obvious to one of

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

Sealtite by having the compressed foam a density of 400 kg/m3 to 450 kg/m3 depending upon use

of the system.


Art Unit: 3993

As to claim 16, Baerveldt as modified by Sealtite further disclose wherein the foam

Page 9

comprises a plurality of laminations (from Fig. 11 of Baerveldt). It would have been obvious to

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

Sealtite by having at least one of the laminations infused with the fire retardant material so as to

have a more fire retardant system.

As to claim 17, it would have been obvious to one of ordinary skill in the art at the time

of the invention to further modify Baerveldt and Sealtite by having the infused lamination is an

inner lamination of the plurality of laminations so as to increase performance for fire retardation

and compression response.

As to claim 18, Baerveldt as modified by Sealtite further disclose wherein the laminations

are oriented, with respect to the direction in which the joint extends (from Fig. 11 of Baerveldt),

in at least one of a parallel orientation, a perpendicular orientation, and a combination thereof.


of the invention to further modify Baerveldt and Sealtite by having the fire retardant material

infused into the foam has a density which is substantially the same throughout the foam so as to

have optimum fire retardation.

As to claim 25, Baerveldt discloses a fire and water resistant architectural expansion joint

system (Fig. 1), comprising:

a first substrate (implied from para. [0013], [0014]);

a second substrate arranged at least substantially coplanar to the first substrate (implied

from para. [0013], [0014]); and


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an expansion joint (Fig. 1) located in compression between the first substrate and the

second substrate (implied from para. [0013], [0014]), the expansion joint comprising,



a water resistant layer (1 of Fig. 1, "UV curable silicone" of para. [0007]);



















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about 540° C or greater for about five minutes (in that Sealtite meets DIN 18542 standard (at

page 2 of Sealtite); at pages 28-29 of Request DIN 18542 requires DIN 4102 class B standards

(from no. 7, Table 2 of page 3 of Exhibit L); at pages 26-27 of Request, DIN 4102 (section 6.1.3

of page 11 of Exhibit 0) invokes DIN 4102-15 standard of 540° C for ten minutes (page 6 of

Exhibit P)).









As to claim 28, Baerveldt as modified by Sealtite further disclose the water resistant layer

is disposed on a surface of the foam (Fig. 1 of Baerveldt).

As to claim 30, Baerveldt as modified by Sealtite further disclose wherein the water

resistant layer comprises silicone (Fig. 1, para. [0007] of Baerveldt).

As to claim 33, Baerveldt discloses a method of installing an expansion joint (from para.

[0002] at lines 22-25), comprising:

locating a first substrate (implied from para. [0002] at lines 22-25);


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locating a second substrate arranged to be at least substantially coplanar with the first

substrate and being spaced therefrom by a gap (implied from para. [0002] at lines 22-25; para.

[0013], [0014]);

providing a compressed water resistant expansion joint system (from "pre-compressed

impregnated expanding foam sealant" of para. [0006]; 2 of Fig. 1) comprising a foam in a

compressed state which is less than fully expanded (from "pre-compressed impregnated

expanding foam sealant" of para. [0006]; 2 of Fig. 1), and having a water resistant layer thereon

(1 of Fig. 1, "UV curable silicone" of para. [0007]);

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

and the second substrate (implied from para. [0002] at lines 22-25); and

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

the first substrate and the second substrate (implied from para. [0002] at lines 22-25),

Not disclosed is a fire retardant infused in the foam and wherein the expansion joint

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

five minutes and able to accommodate movement of the substrates by compressing and

decompressing while maintaining the compressed state.


pre-compressed state" of 2nd page) and able to accommodate movement of the substrates by

compressing and decompressing while maintaining the compressed state (from "Excellent

compression recovery" and "Permanently resilient: The material will expand and contract with

the movement of the joint under any weather condition" of page 1 ); and; having fire-retardant

material infused therein (from "polyurethane foam impregnated with a hydrophobic, flame


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retardant, modified acrylic" of page 1) so that the foam is capable of withstanding exposure to a

temperature of about 540° C or greater for about five minutes (in that Sealtite meets DIN 18542

standard (at page 2 of Sealtite); at pages 28-29 of Request DIN 18542 requires DIN 4102 class B

standards (from no. 7, Table 2 of page 3 of Exhibit L); at pages 26-27 of Request, DIN 4102

(section 6.1.3 of page 11 of Exhibit 0) invokes DIN 4102-15 standard of 540° C for ten minutes

(page 6 of Exhibit P)).


to modify the method of Baerveldt by using the foam of Sealtite capability of



As to claim 34, Baerveldt and Sealtite further disclose applying an adhesive to an edge of

at least one of the first substrate and the second substrate to anchor the expansion joint system

(implied from "Pressure Sensitive Adhesive" of 1st page Sealtite).






1), comprising:


impregnated expanding foam sealant" of para. [0006]; 2 of Pig. l); and


Art Unit: 3993


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expansion of the system during use to accommodate movement of the substrate as the fire and

water resistant expansion joint system repeatedly cycles by expanding and contracting between

minimum and maximum sizes of the gap, and configured to maintain fire resistant upon exposure

to a temperature of about 540°C or greater for about five minutes and able to accommodate

movement of the substrates by compressing and expanding while maintaining the compressed

state.



and expansion of the system during use (from "Excellent compression recovery" and


under any weather condition" of page 1) to accommodate movement of the substrates by

compressing and expanding (from "Excellent compression recovery" and "Permanently resilient:

The material will expand and contract with the movement of the joint under any weather

condition" of page 1) between minimum and maximum sizes of the gap ((from "Excellent


the movement of the joint under any weather condition" and "Permanently elastic and

weatherOtight" of page 1) while maintaining the compressed state ("Works under its own

constant internal pressure" of 1st page); and; having fire-retardant material infused therein (from

"polyurethane foam impregnated with a hydrophobic, flame retardant, modified acrylic" of page


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1) so that the foam is capable of withstanding exposure to a temperature of about 540° C or

greater for about five minutes (in that Sealtite meets DIN 18542 standard (at page 2 of Sealtite);

at pages 28-29 of Request DIN 18542 requires DIN 4102 class B standards (from no. 7, Table 2

of page 3 of Exhibit L); at pages 26-27 of Request, DIN 4102 (section 6.1.3 of page 11 of

Exhibit 0) invokes DIN 4102-15 standard of 540° C for ten minutes (page 6 of Exhibit P)).





As to claims 39 and 41, Baerveldt as modified by Sealtite further disclose an infused

foam density of 160 kg/m3 (2nd page of Sealtite). It would have been obvious to one of ordinary

skill in the art at the time of the invention to further modify the system of Baerveldt and Sealtite

by having the compressed foam a density of 200 kg/m3 to 700 kg/m3 or 400 kg/m3 to 450 kg/m3

depending upon use of the system.





As to claim 44, it would be obvious to one of ordinary skill in the art at the time of the

invention to further modify the system of Baerveldt and Sealtite by having it meet the movement

cycling data points as given in this claim so as to meet any requirement of the system's use.


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[0013], [0014]);






inserting the compressed water resistant expansion joint system into the gap between the

first substrate and the second substrate (implied from para. [0002] at lines 22-25); and

allowing the compressed water resistant expansion joint system to decompress to fill the

gap between the first substrate and the second substrate (implied from para. [0002] at lines 22-

25),


maintains fire resistance upon exposure to a temperature of about 540°C or greater for about five

minutes and able to accommodate movement of the substrates by compressing and



pre-compressed state" of 2nd page) and able to accommodate cycling movement of the substrates


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by compressing and decompressing between minimum and maximum sizes while maintaining

the compressed state (from "Excellent compression recovery" and "Permanently resilient: The

material will expand and contract with the movement of the joint under any weather condition"

of page l); and; having fire-retardant material infused therein (from "polyurethane foam

impregnated with a hydrophobic, flame retardant, modified acrylic" of page 1) so that the foam

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

minutes (in that Sealtite meets DIN 18542 standard (at page 2 of Sealtite); at pages 28-29 of

Request DIN 18542 requires DIN 4102 class B standards (from no. 7, Table 2 of page 3 of

Exhibit L); at pages 26-27 of Request, DIN 4102 (section 6.1.3 of page 11 of Exhibit 0) invokes

DIN 4102-15 standard of 540° C for ten minutes (page 6 of Exhibit P)).


to modify the method of Baerveldt by using the foam of Sealtite capability of



As to claims 46 and 47, Baerveldt as modified by Sealtite further disclose an infused


skill in the art at the time of the invention to further modify the system of Baerveldt and Sealtite

by having the compressed foam a density of 200 kg/m3 to 700 kg/m3 or 400 kg/m3 to 450 kg/m3



1), comprising:


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pre-compressed state" of 2nd page) and configured to be installed in a gap between substrates

(from "Excellent compression recovery" and "Permanently resilient: The material will expand

and contract with the movement of the joint under any weather condition" of page 1) and

configured to accommodate movement of the substrates by repeatedly compressing and

expanding between minimum and maximum sizes of the gap (from "Excellent compression


of the joint under any weather condition" of page 1) while maintaining the compressed state

("Works under its own constant internal pressure" of 1st page); and; having fire-retardant






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(page 6 of Exhibit P)).






1), comprising:


impregnated expanding foam sealant" of para. [0006]; 2 of Fig. 1); and




expansion of the system when installed between substrates, and to pass UL2079 fire exposure at

a temperature of about 540°C or greater for about five minutes and cycling testing while

maintaining the compressed state.






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(page 6 of Exhibit P)). With the system capable of withstanding 540° C for ten minutes it would

pass UL2079 and cycling tests.





As to claim 52, it would obvious for the system of Baerveldt and Sealtite to meet the

claimed exposure and then movement cycling so as to meet requirements of a particular job.

Claims 3 and 29 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over

Baerveldt in view of Sealtite, as applied to claims 1 and 25, respectively, above, and further in

view of Hensley, Where's the Beef in Joint Sealants? (The Applicator, vol. 23, no. 2; Document

U of 1st page of PT0-892of12 December 2014; "Hensley").


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As to claim 3, the limitations of claim 1 are disclosed as described above. Not disclosed

is the profile being a bellows profile. Hensley, however, discloses a joint system with a water

resistant layer (Figs. 3, 4). It would have been obvious to one of ordinary skill in the art at the

time of the invention to further modify the system of Baerveldt and Sealtite by using bellows as

disclosed by Hensley so as to have the bellows fold and unfold as the joint changes (Fig. 3, 4 of

Hensley) so as to maintain waterproofing.

As to claim 29, the limitations of claim 25 are disclosed as described above. Not

disclosed is the profile being a bellows profile. Hensley, however, discloses a joint system with

a water resistant layer (Figs. 3, 4). It would have been obvious to one of ordinary skill in the art

at the time of the invention to further modify the system of Baerveldt and Sealtite by using

bellows as disclosed by Hensley so as to have the bellows fold and unfold as the joint changes

(Fig. 3, 4 of Hensley) so as to maintain waterproofing.

Claims 5, 6, 9, 26, 31, 32, 35, 37 are rejected under pre-AIA 35 U.S.C. 103(a) as being

unpatentable over Baerveldt in view of Sealtite, as applied to claims 1, 25, and 33 above, and

further in view of Hensley (WO 2007 /024246 Al; document N of foreign documents of PTO-

892of12 December 2014; "Hensley '246").

As to claims 5, 31, and 37, Baerveldt further disclose a sealant, adhesive layer (7 of Fig.

5; para. [0009]). Hensley '246 discloses a layer being intumesing foil (page 2). It would have

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

adhesive layer of Baerveldt and Sealtite by having the second layer a fire resistant layer a fire

resistant layer as disclosed by Hensley '246 so as to add further fire protection.


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As to claims 6 and 32, it would obvious to one of ordinary skill in the art at the time of

the invention to modify Baerveldt, Sealtite, and Hensley '246 by having the fire resistance layer

is disposed on a surface of the foam and the water resistant layer is disposed on a surface of the

foam opposing the fire resistance layer depending upon use and requirements of the system.

As to claims 9, 26, and 35, the limitations of claims 1, 25, and 33 are disclosed as

described above. Not disclosed is the ratio of fire retardant material infused into the first foam

and the second foam is in a range of about 3.5: 1 to about 4: 1. 3. Hensley '246, however,

discloses an infused foam with the ratio of material to foam about 3.5: 1 to 4: 1 (from 1: 1 to 5: 1 of

material to foam of page 5, lines 23-26). It would have been obvious to one of ordinary skill in

the art at the time of the invention to further modify the system of Baerveldt as modified by

Sealtite by using the ratio of Hensley '246 depending, in part, upon permeability of the foam

(Hensley '246 at page 5, lines 23-26).

Claim 7 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Baerveldt,

Sealtite, Hensley '246, as applied to claim 6 above, and further in view of Hensley.




time of the invention to further modify the system ofBaerveldt, Sealtite, and Hensley '246 by

using bellows as disclosed by Hensley so as to have the bellows fold and unfold as the joint

changes (Fig. 3, 4 of Hensley) so as to maintain waterproofing.


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Baerveldt in view of Sealtite, as applied to claim 1 above, and further in view of von Bonin et al.

(US 4,992,481; 2nd document listed on Request's IDS; "Bonin").

As to claims 15 and 20, the limitations of claim 1 are disclosed as described above. Not

disclosed is the fire retardant material being aluminum tri-hydrate. Bonin, however, discloses a

foam-infused, fire-retardant material of aluminum tri-hydrate ("aluminum hydroxide" of col. 8,

lines 48-58, of Bonin). It would have been obvious to one of ordinary skill in the art at the time

of the invention to further modify the system of Baerveldt as modified by Sealtite by using

aluminum tri-hydrate for the fire retardant as disclosed by Bonin depending upon availability and

cost of materials.

Claims 21-23, 42, 43, 49, and 50 are rejected under pre-AIA 35 U.S.C. 103(a) as being

unpatentable over Baerveldt in view of Sealtite, as applied to claims 1, 38, and 48 above, and

further in view of UL 2079 Tests for Fire Resistance of Building Joint Materials (Exhibit K of

Request; "UL2079").

As to claims 21-23, the limitations of claim 1 are disclosed as described above. Not

disclosed is the system capable of withstanding exposure to a temperature of about 930° C. for

about 1 hour, 1010° C. for about two hours or 1260° C for about eight hours. UL2079, however,

discloses material standards with specific points at these or higher temp/time combinations. It

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

modify the system of Baerveldt in view of Sealtite by having the material meet specific safety

standards as disclosed by UL2079 depending upon use of the system.


Art Unit: 3993

Page 24



about 1 hour, 1010° C. for about two hours. UL2079, however, discloses material standards with

specific points at these or higher temp/time combinations. It would have been obvious to one of

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

view of Sealtite by having the material meet specific safety standards as disclosed by UL2079




about 1 hour, 1010° C. for about two hours. UL2079, however, discloses material standards with

specific points at these or higher temp/time combinations. It would have been obvious to one of

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

view of Sealtite by having the material meet specific safety standards as disclosed by UL2079



Sealtite, and UL2079, as applied to claim 23 above, and further in view of Hensley '246.


disclosed is the ratio of fire retardant material infused into the first foam and the second foam is

in a range of about 3.5: 1 to about 4: 1. 3. Hensley '246, however, discloses an infused foam with

the ratio of material to foam about 3.5:1to4:1(from1:1to5:1 of material to foam of page 5,

lines 23-26). It would have been obvious to one of ordinary skill in the art at the time of the


Art Unit: 3993

Page 25

invention to further modify the system of Baerveldt, Sealtite, UL2079 by using the ratio of

Hensley depending, in part, upon permeability of the foam (Hensley at page 5, lines 23-26).

Claims 1, 2, 4, 8, 10-14, 16-19, 21-23, 25, 27, 28, 30, 33, 34, 36, 38-44, 45-47, 48-52 are rejected

under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Baerveldt in view of Sealtite and

UL2079.


1), comprising:
















Art Unit: 3993


Page 26






about 540° C or greater for about five minutes.

To the extent Sealtite does not disclose the foam capable of withstanding exposure to a

temperature of about 540° C or greater for about five minutes, UL2079 discloses foams having

specified fire resistance (538° C for 5 minutes from time-temperature curve of page 11).




resistant, fire resistant, and permanently resilient (see Sealtite at 1st page) and to have the foam,

or system, capable of withstanding temperatures of about 540° C as taught by UL2079 so as to

meet particular specifications if required.

As to claim 2, Baerveldt, Sealtite, and UL2079 further disclose the water resistant layer is

disposed on a surface of the foam (Fig. 1, para. [0007] of Baerveldt).

As to claim 4, Baerveldt, Sealtite, and UL2079 further disclose the water resistant layer

comprises silicone (Baerveldt at para. [0007]).

As to claim 8, Baerveldt, Sealtite, and UL2079 further disclose further disclose at least

one of a sealant band (7 of Fig. 5) and a comer bead (region of 1 at comers of Fig. 1).


Art Unit: 3993

Page 27

As to claim 10, Baerveldt, Sealtite, and UL2079 further disclose an infused foam density


at the time of the invention to further modify the system of Baerveldt, Sealtite, and UL2079 by

having the compressed foam a density of 200 kg/m3 to 700 kg/m3 depending upon use of the

system.

As to claim 11, Baerveldt, Sealtite, and UL2079 further disclose the foam uncompressed

has a density of about 130 kg/m3 to about 150 kg/m3 (160 kg/m3 of 2nd page of Sealtite).

As to claim 12, Baerveldt, Sealtite, and UL2079 further disclose the foam comprises open

celled polyurethane foam (Baerveldt at [0002]).

As to claim 13, Baerveldt, Sealtite, and UL2079 further disclose a plurality of

laminations (from Fig. 11 of Baerveldt) of the open celled polyurethane foam. It would have

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

Baerveldt, Sealtite, and UL2079 by using infused laminations as disclosed by Baerveldt so as to

assist in compression recovery.

As to claim 14, As to claim 7, Baerveldt, Sealtite, and UL2079 further disclose an infused


skill in the art at the time of the invention to further modify the system of Baerveldt, Sealtite, and

UL2079 by having the compressed foam a density of 400 kg/m3 to 450 kg/m3 depending upon

use of the system.

As to claim 16, Baerveldt, Sealtite, and UL2079 further disclose wherein the foam

comprises a plurality of laminations (from Fig. 11 of Baerveldt). It would have been obvious to

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


Art Unit: 3993

Page 28

and UL2079 by having at least one of the laminations infused with the fire retardant material so

as to have a more fire retardant system.


of the invention to further modify Baerveldt, Sealtite, and UL2079 by having the infused

lamination is an inner lamination of the plurality of laminations so as to increase performance for

fire retardation and compression response.

As to claim 18, Baerveldt, Sealtite, and UL2079 further disclose wherein the laminations

are oriented, with respect to the direction in which the joint extends (from Fig. 11 of Baerveldt),

in at least one of a parallel orientation, a perpendicular orientation, and a combination thereof.


of the invention to further modify Baerveldt, Sealtite, and UL2079 by having the fire retardant

material infused into the foam has a density which is substantially the same throughout the foam

so as to have optimum fire retardation.

As to claims 21-23, Baerveldt, Sealtite, and UL2079 further disclose the system capable

of withstanding exposure to a temperature of about 930° C. for about 1 hour, 1010° C. for about

two hours or 1260° C for about eight hours (section 11.1 of page 11 of UL2079).

As to claim 25, Baerveldt discloses a fire and water resistant architectural expansion joint

system (Fig. 1), comprising:

a first substrate (implied from para. [0013], [0014]);

a second substrate arranged at least substantially coplanar to the first substrate (implied

from para. [0013], [0014]); and


Art Unit: 3993

Page 29

an expansion joint (Fig. 1) located in compression between the first substrate and the

second substrate (implied from para. [0013], [0014]), the expansion joint comprising,



a water resistant layer (1 of Pig. 1, "UV curable silicone" of para. [0007]);


















Art Unit: 3993

Page 30


about 540° C or greater for about five minutes.














system.

As to claim 28, Baerveldt, Sealtite, and UL2079 further disclose the water resistant layer

is disposed on a surface of the foam (Fig. 1 of Baerveldt).

As to claim 30, Baerveldt, Sealtite, and UL2079 further disclose wherein the water

resistant layer comprises silicone (Fig. 1, para. [0007] of Baerveldt).


Art Unit: 3993

Page 31






[0013], [0014]);




expanding foam sealant" of para. [0006]; 2 of Pig. 1), and having a water resistant layer thereon

(1 of Pig. 1, "UV curable silicone" of para. [0007]);

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

and the second substrate (implied from para. [0002] at lines 22-25); and

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

the first substrate and the second substrate (implied from para. [0002] at lines 22-25),


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

five minutes and able to accommodate movement of the substrates by compressing and



pre-compressed state" of 2nd page) and able to accommodate movement of the substrates by

compressing and decompressing while maintaining the compressed state (from "Excellent


Art Unit: 3993

Page 32


the movement of the joint under any weather condition" of page 1 ); and; having fire-retardant



temperature of about 540° C or greater for about five minutes.










As to claim 34, Baerveldt, Sealtite, and UL2079 further disclose applying an adhesive to

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

system (implied from "Pressure Sensitive Adhesive" of 1st page Sealtite).





system.


Art Unit: 3993

Page 33


1), comprising:






expansion of the system during use to accommodate movement of the substrate as the fire and

water resistant expansion joint system repeatedly cycles by expanding and contracting between

minimum and maximum sizes of the gap, and configured to maintain fire resistant upon exposure

to a temperature of about 540°C or greater for about five minutes and able to accommodate

movement of the substrates by compressing and expanding while maintaining the compressed

state.



and expansion of the system during use (from "Excellent compression recovery" and


under any weather condition" of page 1) to accommodate movement of the substrates by

compressing and expanding (from "Excellent compression recovery" and "Permanently resilient:

The material will expand and contract with the movement of the joint under any weather

condition" of page 1) between minimum and maximum sizes of the gap ((from "Excellent



Art Unit: 3993

the movement of the joint under any weather condition" and "Permanently elastic and

weatherOtight" of page 1) while maintaining the compressed state ("Works under its own

Page 34

constant internal pressure" of 1st page); and; having fire-retardant material infused therein (from

"polyurethane foam impregnated with a hydrophobic, flame retardant, modified acrylic" of page

1) so that the foam is capable of withstanding exposure to a temperature of about 540° C or

greater for about five minutes.








or system, capable withstanding temperatures of about 540° C as taught by UL2079 so as to meet

particular specifications if required.

As to claims 39 and 41, Baerveldt, Sealtite, and UL2079 further disclose an infused foam

density of 160 kg/m3 (2nd page of Sealtite). It would have been obvious to one of ordinary skill

in the art at the time of the invention to further modify the system of Baerveldt, Sealtite, and

UL2079 by having the compressed foam a density of 200 kg/m3 to 700 kg/m3 or 400 kg/m3 to

450 kg/m3 depending upon use of the system.




Art Unit: 3993

Page 35



system.

As to claims 42 and 43, Baerveldt, Sealtite, and UL2079 further disclose the system

capable of withstanding exposure to a temperature of about 930° C. for about 1 hour, 1010° C.

for about two hours (section 11.1 of page 11 of UL2079).

As to claim 44, it would be obvious to one of ordinary skill in the art at the time of the

invention to further modify the system of Baerveldt, Sealtite, and UL2079 by having it meet the

movement cycling data points as given in this claim so as to meet any requirement of the

system's use.






[0013], [0014]);







Art Unit: 3993

Page 36

inserting the compressed water resistant expansion joint system into the gap between the

first substrate and the second substrate (implied from para. [0002] at lines 22-25); and

allowing the compressed water resistant expansion joint system to decompress to fill the

gap between the first substrate and the second substrate (implied from para. [0002] at lines 22-

25),


maintains fire resistance upon exposure to a temperature of about 540°C or greater for about five

minutes and able to accommodate movement of the substrates by compressing and



pre-compressed state" of 2nd page) and able to accommodate cycling movement of the substrates

by compressing and decompressing between minimum and maximum sizes while maintaining

the compressed state (from "Excellent compression recovery" and "Permanently resilient: The

material will expand and contract with the movement of the joint under any weather condition"

of page l); and; having fire-retardant material infused therein (from "polyurethane foam

impregnated with a hydrophobic, flame retardant, modified acrylic" of page 1) so that the foam

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

minutes.





Art Unit: 3993

Page 37







As to claims 46 and 47, Baerveldt, Sealtite, and UL2079 further disclose an infused foam

density of 160 kg/m3 (2nd page of Sealtite). It would have been obvious to one of ordinary skill

in the art at the time of the invention to further modify the system of Baerveldt, Sealtite, and

UL2079 by having the compressed foam a density of 200 kg/m3 to 700 kg/m3 or 400 kg/m3 to

450 kg/m3 depending upon use of the system.


1), comprising:









Art Unit: 3993



Page 38


pre-compressed state" of 2nd page) and configured to be installed in a gap between substrates

(from "Excellent compression recovery" and "Permanently resilient: The material will expand

and contract with the movement of the joint under any weather condition" of page 1) and

configured to accommodate movement of the substrates by repeatedly compressing and

expanding between minimum and maximum sizes of the gap (from "Excellent compression










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

modify the system of Baerveldt by using the foam of Sealtite capability of


resistant, fire resistant, and permanent! y resilient (see Sealtite at 1st page) and to have the foam,


Art Unit: 3993

Page 39



As to claims 49 and 50, Baerveldt, Sealtite, and UL2079 further disclose the system

capable of withstanding exposure to a temperature of about 930° C for about 1 hour, 1010° C for

about two hours (section 11.1 of page 11 of UL2079).


1), comprising:






expansion of the system when installed between substrates, and to pass UL2079 fire exposure at

a temperature of about 540°C or greater for about five minutes and cycling testing while

maintaining the compressed state.








Art Unit: 3993

Page 40










resistant, fire resistant, and permanent! y resilient (see Sealtite at 1st page) and to have the foam,



As to claim 52, it would obvious for the system of Baerveldt, Sealtite, and UL2079 to

meet the claimed exposure and then movement cycling so as to meet requirements of a particular

job.


Baerveldt, Sealtite, and UL2079, as applied to claims 1and25 above, and further in view of

Hensley.





Art Unit: 3993

Page 41

time of the invention to further modify the system of Baerveldt, Sealtite, and UL2079 by using

bellows as disclosed by Hensley so as to have the bellows fold and unfold as the joint changes

(Fig. 3, 4 of Hensley) so as to maintain waterproofing.


disclosed is the profile being a bellows profile. Hensley, however, discloses a joint system with

a water resistant layer (Figs. 3, 4). It would have been obvious to one of ordinary skill in the art


using bellows as disclosed by Hensley so as to have the bellows fold and unfold as the joint

changes (Fig. 3, 4 of Hensley) so as to maintain waterproofing.

Claims 5, 6, 9, 24, 26, 31, 32, 35, and 37 are rejected under pre-AIA 35 U.S.C. 103(a) as being

unpatentable over Baerveldt, Sealtite, and UL2079, as applied to claims 1, 25, and 33 above, and

further in view of Hensley '246.

As to claims 5, 31, and 37, Baerveldt further disclose a sealant, adhesive layer (7 of Fig.

5; para. [0009]). Hensley '246 discloses a layer being intumesing foil (page 2). It would have

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

adhesive layer of Baerveldt, Sealtite, and UL2079 by having the second layer a fire resistant

layer a fire resistant layer as disclosed by Hensley '246 so as to add further fire protection.

As to claims 6 and 32, it would obvious to one of ordinary skill in the art at the time of

the invention to further modify Baerveldt, Sealtite, and UL2079 by Hensley '246 by having the

fire resistance layer is disposed on a surface of the foam and the water resistant layer is disposed


Art Unit: 3993

Page 42

on a smface of the foam opposing the fire resistance layer depending upon use and requirements

of the system.

As to claims 9, 26, and 35, the limitations of claims 1, 25, and 33 are disclosed as

described above. Not disclosed is the ratio of fire retardant material infused into the first foam

and the second foam is in a range of about 3.5: 1 to about 4: 1. 3. Hensley '246, however,

discloses an infused foam with the ratio of material to foam about 3.5: 1 to 4: 1 (from 1: 1 to 5: 1 of

material to foam of page 5, lines 23-26). It would have been obvious to one of ordinary skill in

the art at the time of the invention to further modify the system of Baerveldt, Sealtite, and

UL2079 by using the ratio of Hensley '246 depending, in part, upon permeability of the foam

(Hensley '246 at page 5, lines 23-26).


disclosed is the ratio of fire retardant material infused into the first foam and the second foam is

in a range of about 3.5: 1 to about 4: 1. 3. Hensley '246, however, discloses an infused foam with

the ratio of material to foam about 3.5:1to4:1(from1:1to5:1 of material to foam of page 5,

lines 23-26). It would have been obvious to one of ordinary skill in the art at the time of the

invention to further modify the system of Baerveldt, Sealtite, UL2079 by using the ratio of

Hensley depending, in part, upon permeability of the foam (Hensley at page 5, lines 23-26).


Sealtite, UL2079, and Hensley '246, as applied to claim 6 above, and further in view of Hensley.




Art Unit: 3993

Page 43


time of the invention to further modify the system of Baerveldt, Sealtite, UL2079, and Hensley

'246 by using bellows as disclosed by Hensley so as to have the bellows fold and unfold as the

joint changes (Fig. 3, 4 of Hensley) so as to maintain waterproofing.


Baerveldt, Sealtite, and UL2079, as applied to claim 1 above, and further in view of Bonin.


disclosed is the fire retardant material being aluminum tri-hydrate. Bonin, however, discloses a

foam-infused, fire-retardant material of aluminum tri-hydrate ("aluminum hydroxide" of col. 8,

lines 48-58, of Bonin). It would have been obvious to one of ordinary skill in the art at the time

of the invention to further modify the system of Baerveldt, Sealtite, UL2079 by using aluminum

tri-hydrate for the fire retardant as disclosed by Bonin depending upon availability and cost of

materials.

SNQ with Sealtite Reference

The Sealtite reference, in combination with the above references, is found to have an

SNQ because of its temperature resistance characteristic.

Response to Arguments in the Amendment received 22 June 2015

In the amendment received 22 June 2015 Patent Owner argued the following:


Art Unit: 3993

1. For the rejections with Bonin as the base reference, Bonin does not disclose an

expansion joint. Amendment at pages 24-33.

Page 44

2. For the rejections with Kombi Fl20 and DIN 4102 T2, Kombi F120 is a sealing tape

and not an expansion joint system. Amendment at pages 33-40.

3. For the rejections with Hensley and Kombi F120, Hensley does not disclose an

infused fire retardant and Kombi F120 is a sealing tape. Amendment at pages 40-46.

4. For the rejections with Hensley '246 and UL2079, Hensley '246 does not disclose a

fire retardant and UL2079 is a standard and does not disclose how to create a product.

Amendment at pages 46-55.

5 Patent Owner has marketed a commercially successful line of products and asserts that

there is copying by others. Amendment at pages 51-52.

6. For rejections with Kombi F120, Bonin, and Al-Tabaqchall, neither Kombi F120 nor

Bonin disclose the claimed invention as explained above, and Al-Tabaqchall does not disclose

infusion of a fire retardant into a foam in a compressed state which is less than fully expanded.

Amendment at pages 55-57.

7. For rejections with Priest as a teaching reference, Priest, like Al-Tabaqchall, does not

disclose a fire and water resistant expansion joint system. Amendment at pages 57-59.

As to arguments (1)-(7), the rejections with these reference either alone or in combination

as argued are withdrawn. The evidence of secondary considerations is found unpersuasive

because objective evidence is not presented. See MPEP 716.0l(c).


Art Unit: 3993

Response Time set at 1 Month

Page 45

The time to respond to this office action is set at one ( 1) month because of the ongoing

litigation styled Emseal Joint Systems LTD v. Schul Int'l Co., LLC et al. which is stayed. See

MPEP 2263.

Remarks

Any inquiry concerning this communication should be directed to Jeffrey L. Gellner at

telephone number 571.272.6887. The Examiner can normally be reached on Monday through

Friday from 8:30 to 4:30. If attempts to reach the Examiner by telephone are unsuccessful, the

Examiner's supervisor, Gay Ann Spahn, can be reached at 571.272.7731.

Applicant is reminded of the continuing obligation under 37 CPR 1.178(b ), to timely

apprise the Office of any prior or concurrent proceeding in which in the instant patent is or was

involved. These proceedings would include interferences, reissues, reexaminations, and

litigation.

Applicant is further reminded of the continuing obligation under 37 CPR 1.56, to timely

apprise the Office of any information which is material to patentability of the claims under

consideration in this reissue application.


Art Unit: 3993

Page 46

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.

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

Conferees: /JGF/ and /GAS/

Documents

90013395 FIRE AND WATER RESISTANT EXPANSION JOINT SYSTEM