DETAILED ACTION
Representative Figure
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Continuity Data Map
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Pending Elected Claims
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Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 9,12,13,15-18,22,31 and 34-37 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claim(s) 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, at the time the application was filed, had possession of the claimed invention.
The language “without any regions of discrete constrictions” as was added to claims 34, 35 and 37, is not seen to enjoy clear positive antecedent basis, or comply with the written description requirement, within the originally filed disclosure. The recitation, “without” is a negative limitation. There is nothing inherently ambiguous or uncertain about a negative limitation. However, any negative limitation or exclusionary proviso must have basis in the original disclosure.
Additionally, the recitations “first terminal end” and “second terminal end” in claims 9 and 36 are not seen to be supported by the originally filed disclosure.
Furthermore, the recitation “parabolic” in at least claim 36, is not seen to be supported by the originally filed disclosure.
Claim Rejections - 35 USC § 112(b)
Claims 9,12,13,15-18,22,31 and 33-37 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
It is unclear what is intended by the relative and subjective recitation, “substantially,” as in “substantially convex”, as appears in independent claims 9, 33 and 36, and which is subject to numerous possible interpretations, and as such, vague and indefinite. Does “substantially convex”, intend that portions of the cross-sectional shape are not convex?
Independent claims 9 and 36 specify “a first end”, “a second end”, “a first terminal end” and “a second terminal end”. It is unclear how these four specified “ends” relate to each other? Are there two structural ends or four? Do the two “first” ends refer to the same structure? Do the two “second” ends refer to the same structure? It is unclear how the “terminal” ends differ from the “ends” not specified to be “terminal”, if at all.
It is unclear what is intended by the “second surface angle” as this language appears in independent claims 9, 33 and 36. Despite making a drawing objection in the Final Rejection (23 JULY 2025) to clearly depict this angle “80b” Applicant merely referred to the originally filed FIG. 7., and asserted that it “is depicted in the original drawings as filed” without clarifying change, and additionally referred to Specification paragraph [0046], which did not serve to clarify. It is unclear what the curved line touching the lead line associated with “80b” depicts. Angles are depicted by sides and a vertex, as Applicant has clearly depicted with respect to angles “80a” and “80c”.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed “second angle 80b” as recited in at least in independent claims 9,33 and 36, must be depicted in the drawings, or the feature(s) canceled from the claim(s). An angle is defined by sides and a vertex. No new matter will be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 24 November 2025, has been entered.
Claim Rejections - 35 USC § 102/103
Claims 9,12,13,15-18,22,31 and 33-37 are rejected under 35 U.S.C. 102(A1/A2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over LIPTAK (U.S. 9,637,928 – 2017).
Regarding independent claims 9, 33 and 36, see the unlabeled domes in Figures 10 & 11, while, the other claim limitations (i.e., “annular groove”, “throat”, “flange”, “convex” cross-sectional shape), which are seen to be disclosed by LIPTAK, have been identified by the Examiner with arrows and text annotations in Figure 2:
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Independent claim 9 specifies, “substantially convex along an entire axial length of the throat between the first end and the second end”. That curved structure defining the passage and the passage itself are both considered to be the “throat” commensurate with the plain meaning of the term, and as such, meet this limitation. There is an unlabeled line demarcating the throat structure from a cylindrical portion. The language of the claims does not preclude connection of the throat to other components. With respect to claim 36, the throat of LIPTAK is seen to be “parabolic”.
The CLAIMED ANGLES:
Independent Claim 9 specifies:
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Dependent Claim 22 additionally specifies an “intermediate” angle:
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Independent Claim 33 specifies:
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Independent Claim 36 specifies:
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These claimed angle limitations are not expressly disclosed by LIPTAK.
LIPTAK, like Applicant, ZURN Industries, LLC, discloses a roof drain with a “throat” having what Applicant has termed, a “convex” or “funnel” shape, or what Applicant refers to as “a frusto-conical datum surface generally defined as a frusto-conically shaped surface that is co-axial with the central axis and extends from the first end of the inner surface to the second end of the inner surface” in dependent claim 15.
LIPTAK discloses substantially the same “throat” structure as Applicant’s:
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Axiomatically, the throat of LIPTAK will have substantially the same range of “first” and “second” “surface angles” as claimed. Accordingly, the throat structure of LIPTAK is seen to anticipate claims.
Applicant does not appear to have disclosed or asserted any criticalities or unexpected results specifically attributable to the above excerpted recitations specifying the claimed angles. Mere differences in shape do not ordinarily serve to patentably distinguish claims over the prior art in utility patent applications. In the absence of any criticality or unexpected results specifically attributable to the claimed angles, any differences in the claimed ranges of “first” and “second” “surface angles” are seen to constitute mere and obvious differences in shape to one of ordinary skill in the art. The angles are a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular angular configurations of the claimed throat are significant.
The CLAIMED FLOW RATES:
Dependent Claims 17 and 18 specify:
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Dependent Claim 31 specifies:
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These claimed flow rate limitations are not expressly disclosed by LIPTAK.
It is important to appreciate the fact that the diameter of the downspout, is a more significant factor affecting or dictating gravity flow through the downspout than any specific structural features of the roof drain, as one skilled in the art would have readily appreciated. Given that the throat of the roof drain of LIPTAK is of the same funnel shape as that of Applicant, it will function in substantially the same way. Accordingly, the roof drain of LIPTAK is expected to be capable of achieving the functional flow rates specified in dependent claims 17, 18 and 31.
Flow rates through a roof drain can be affected by other factors, for example, the structural features or geometry of the dome. One skilled in the art would have readily appreciated the fact that flow rates through a roof drain, can be manipulated by changing the geometric or structural features (e.g., surface area of the dome, percentage of open area of dome, etc.) of the dome in order to influence flow rates therethrough. Accordingly, given the fact that the throat of the roof drain of LIPTAK is of the same funnel shape as that of Applicant, and it will therefore function in substantially the same way, one of ordinary skill in the art at the time the invention was made, would have routinely manipulated the geometry or structural features of the dome in order to vary the flow rates therethrough, commensurate with design needs (e.g., capacity of drain system during upset or peak design demands). Thus, even if it was established that the specific functional flow rates recited in dependent claims 17, 18 and 31, are not met by LIPTAK, it would have been obvious to one of ordinary skill in the art at the time the invention was made, to vary other factors (e.g., geometry or structural features of the dome) associated with a roof drainage system in order to attain the functional flow rates specified in dependent claims 17, 18 and 31, in order to, for example, accommodate upset or maximum flow challenges during peak rain falls.
Regarding dependent claim 13, the throat of LIPTAK “defines a second cross-sectional shape taken normal to the central axis, and wherein the second cross-sectional shape is circular”, as illustrated at least in Figures 2,6,8,10 and 11.
Regarding dependent claim 15, the roof drain throat of LIPTAK which is of the same funnel shape as that of Applicant, is seen to disclose, “inner surface of the throat defines a frusto-conical datum surface generally defined as a frusto-conically shaped surface that is co-axial with the central axis and extends from the first end of the inner surface to the second end of the inner surface, and wherein the entire inner surface is positioned inside the frusto- conically shaped datum surface.”, as illustrated at least in Figures 2,6,8,10 and 11.
Regarding dependent claim 16, the roof drain of LIPTAK depicts “an annular groove formed into the body at the first end of the throat adjacent the inner surface”, as illustrated and called-out by Examiner arrow annotation in Figure 2 above.
Regarding dependent claim 22, since the throat of LIPTAK discloses the same funnel shape as that of Applicant, it will likewise, have an “intermediate surface angle at each location between the first surface angle and the second surface angle, and wherein the intermediate surface angle transitions from the first surface angle to the second surface angle while always decreasing in value.”
Regarding dependent claims 34, 35 and 37, the throat of LIPTAK is seen to meet the limitation, “the inner surface continuously and smoothly decreases from the first end to the second end”, since LIPTAK discloses substantially the same convex funnel shape as that of Applicant.
Prior Art of Interest
It is noted that as recently as 1960, SCHOOP, France No. 1,226,049, which is now made of record, disclosed a drain employing a convex, funnel-shaped throat 2 as depicted in the figure below:
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Response to Amendment
The Replacement sheet submitted on 24 August 2025 is not approved because it does not depict “second surface angle 80b”.
Response to Arguments of 24 August 2025
Applicant has argued:
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This argument with respect to the claimed “second angle 80b” is not found persuasive. While Applicant has identified first surface angle 80a and third surface angle 80c with angle symbols, the claimed “second surface angle is between 0 and 5 degrees” as recited in independent claim 9, 33 and 36, s not depicted in the same manner. Applicant implausibly asserts, “As shown in annotated FIG. 7 below, ‘second surface angle 80b” is depicted in the original drawing as filed.” It is unclear what the curved line touching the lead-line associated with reference numeral 80b is intended to depict, but it is most certainly not depicting an angle “between 0 and 5 degrees”, as recited in independent claims 9, 33 and 36.
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Where is the vertex of second surface angle 80b? The sides?
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With respect to the art rejections, Applicant has argued:
Claim 9 recites that the inner surface of the throat between the first end and the second end defines a cross-sectional shape taken parallel to the central axis, wherein the cross-sectional shape is substantially convex along an entire axial length of the throat between the first end and the second end, and that the inner surface of the throat defines a first surface angle relative to the central axis at a first terminal end of the throat and a second surface angle relative to the central axis at a second terminal end of the throat, wherein the first surface angle is between 40 and 70 degrees, and wherein the second surface angle is between 0 and 5 degrees. Liptak fails to disclose at least the above-noted limitations.
The Office action asserts that Liptak discloses a "throat" having a portion with a "convex cross-sectional shape" as indicated by the annotations in FIG. 2 below from the Office action (see11 Office action at p. 6). However, the cross-sectional shape identified in Liptak is not substantially convex along an entire axial length of the throat between the first end and the second end as recited in claim 9. Instead, Liptak discloses that only a limited portion of the "throat" is convex, and a majority of the throat has straight or vertical walls without a convex curvature or any curvature in its cross-sectional shape at all (see drain stem 108 portion in FIG. 2 below). The small portion of Liptak identified in the Office action at the "convex cross-sectional shape" cannot reasonably be considered to represent an entire axial length of a throat between a first end and a second end. As such, Liptak does not disclose a cross-sectional shape that is substantially convex along an entire axial length of the throat between the first end and the second end. For at least this reason, Liptak fails to disclose, teach, or suggest each and every limitation of claim 9.
These arguments are not persuasive. The above 112 rejections, (e.g., “substantially”, “terminal ends” versus “ends”, “second surface angle”) negate Applicant’s arguments. The assertions made assume that claim 9 is definite. It is not. Moreover, claims cannot be defined to be patentable based on language that is seen to constitute prohibited new matter. Applicant chose to have independent claims 33 and 36 stand on the same arguments made with respect to claim 9, “for the sake of brevity”. They are not seen to be patentable for largely the same reasons that the arguments with respect to claim 9 have not been found persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT JAMES POPOVICS whose telephone number is (571) 272-1164. The examiner can normally be reached from 10:00 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JENNIFER DIETERLE can be reached at (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J POPOVICS/ Primary Examiner
Art Unit 1776