Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(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.
Claim 17 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 recites “the cylindrical body can withstand a water pressure equivalent to the height of the cylindrical body”. Claim 17 is deemed indefinite because a claimed feature is based upon an undefined feature. The water pressure that the cylindrical body can withstand is based upon the unknown height of the cylindrical body. (see MPEP 2173.05(b)(II) (“A claim may be rendered indefinite when a limitation of the claim is defined by reference to an object and the relationship between the limitation and the object is not sufficiently defined. That is, where the elements of a claim have two or more plausible constructions such that the examiner cannot readily ascertain positional relationship of the elements, the claim may be rendered indefinite. See, e.g., Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989).). As stated in the originally filed specification, the “rigidity can be defined as a range of water pressure the cylindrical body can withstand. Preferably, the hollow center of the cylindrical body can withstand being fully filled with water, with no water at the circumference of the filter. Preferably, the cylindrical body can withstand pressures of up to 0.1 atm, more preferably up to 0.5 atm. In such an embodiment, the water pressure is equivalent to the height of the cylindrical body. The filter according to the present invention comprises man-made vitreous fibres bonded with a binder. The binder is present in the range of 2 to 5 wt%, preferably 3 to 4 wt%. This ensures that the filter according to the present invention is rigid and self-supporting in the sense that it can remain upright when positioned in use” (see Applicant’s specification pages 6-7).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020006592 (hereinafter WO 592) in view of WO 2014/029872 A1 (hereinafter WO 872).
Regarding claim 1, WO 592 discloses a filter for a storm water drain pit (WO 592 abstract and figures 1-2; and paragraphs 0002,0046).
Statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
WO 592 discloses a cylindrical body comprising a filter assembly of a first filter, second filter and a third filter (see WO 592 figure 2 and paragraphs 0032-0036).
WO 592 does not disclose coherent man-made vitreous fibres (MMVF) bonded with a cured binder composition.
WO 872 discloses a storm water delay device comprising a filtering component comprising a coherent manmade vitreous fibre substrate (MMVF substrate) wherein the man-made vitreous fibres is bonded with a cured binder composition (see WO 872 abstract, page 3 lines 4-12; page 4 lines 7-14 & 18-20, page 6 lines 15-27). WO 872 discloses that the “MMVF substrate used as storm water delay device in the present invention preferably has a density in the range of 60 to 200 kg/m3 , preferably in the range of 75 to 150 kg/m3 , such as around 80 kg/m3” (see WO 872 page 7 lines 3-5). WO 872 discloses that the “Binder levels are preferably in the range 0.5 to 5 wt%, preferably 2 to 4 wt%, based on the weight of the MMVF substrate” (see WO 872 page 6 lines 23-24).
WO 872 is considered to be analogous to the claimed invention because it is in the same field of endeavor, i.e. storm water delay device, manmade vitreous fibre and/or water treatment.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify and/or substitute the first, second and/or third filter of the filter assembly, as disclosed in WO 592, with the coherent man-made vitreous fibres (MMVF) bonded with a cured binder composition, as disclosed in WO 872, and reasonably expect the resulting apparatus to work as the prior art intended, i.e. filter a fluid, such as wastewater.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify and/or substitute the first, second and/or third filter of the filter assembly, as disclosed in WO 592, with the coherent man-made vitreous fibres (MMVF) bonded with a cured binder composition, as disclosed in WO 872, because it would assist with forming the filter assembly as disclosed in WO 592 and/or because it would assist with the treatment of the wastewater.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify and/or substitute the first, second and/or third filter of the filter assembly, as disclosed in WO 592, with the coherent man-made vitreous fibres (MMVF) bonded with a cured binder composition, as disclosed in WO 872, because the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). This substitution would yield the predictable result of treating the wastewater.
Hence, WO 592 in view of WO 872 is deemed to disclose a filter for a storm water drain pit, comprising: a cylindrical body comprising coherent man-made vitreous fibres (MMVF) bonded with a cured binder composition.
WO 592 in view of WO 872 discloses the cylindrical body has an upper circular face, a lower circular face and an outer wall which joins the upper circular face to the lower circular face, and a hollow centre wherein a hollow section extends from the upper circular face to the lower circular face (see WO 592 figures 1-2 and paragraphs 0022, 0032, 0037, 0040; see annotated figure below).
PNG
media_image1.png
592
424
media_image1.png
Greyscale
Under the broadest reasonable interpretation, the claimed “an outer wall which joins the upper circular face to the lower circular face” limitation may be the outermost filter layer of the filter assembly of WO 592 in view of WO 872, which extends from the upper face to the lower face of the filter assembly, or may be the main body (110), which extends from the upper portion (112) to the lower portion (114) of the main chamber of WO 592 in view of WO 872.
WO 592 in view of WO 872 discloses the cylindrical body has a density in the range of 50 to 200 kg/m3 (see WO 872 page 7 lines 3-5).
WO 592 in view of WO 872 discloses a binder content in the range of 2 to 5 wt% (see WO 872 page 6 lines 23-24).
WO 592 in view of WO 872 does not disclose the outer wall has a circumferential thickness in the range of 2 cm to 20 cm
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the circumferential thickness of the outer casing of WO 592 in view of WO 872 to be between 2 cm to 20 cm because if the thickness is too thin, the casing may not provide sufficient support for the inner filter element, and if the thickness is too thick, it may be a waste of materials, may not allow sufficient or efficient movement of fluid through the system and/or may interfere with the treatment of the wastewater.
Without showing unexpected results, the claimed circumferential thickness cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the claimed circumferential thickness of the outer casing in WO 592 in view of WO 872. It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the circumferential thickness of the outer casing of WO 592 in view of WO 872 and, in the course of routine experimentation, arrive at the claimed invention.
WO 592 in view of WO 872 discloses the filter is rigid and self-supporting (see WO 592 paragraphs 0032-0036; see also WO 872 abstract, page 3 lines 4-12; page 4 lines 7-14 & 18-20, page 6 lines 15-27; page 7 lines 3-5 and page 6 lines 23-24). The filter of WO 592 in view of WO 872 will necessarily be rigid and self-supporting. The filter of WO 592 in view of WO 872 appears to be substantially identical to the claimed material and thus inherently would possess the claimed functional properties—unless these properties arise from features not yet claimed.
WO 592 in view of WO 872 does not disclose the cylindrical body can withstand a water pressure equivalent to the height of the cylindrical body. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the height of the cylindrical body of WO 592 in view of WO 872 to be a height that can withstand water pressure because it would assist with the filter being able to filter or treat the store water. That is, if the filter of WO 592 in view of WO 872 is unable to withstand the water pressure then the cylindrical body may be damaged.
It is noted that the as-originally filed specification discloses “The filter according to the present invention comprises man-made vitreous fibres bonded with a binder. The binder is present in the range of 2 to 5 wt%, preferably 3 to 4 wt%. This ensures that the filter according to the present invention is rigid and self-supporting in the sense that it can remain upright when positioned in use” (see Applicant’s specification page 7) and that “rigidity can be defined as a range of water pressure the cylindrical body can withstand. Preferably, the hollow centre of the cylindrical body can withstand being fully filled with water, with no water at the circumference of the filter. Preferably, the cyclindrical body can withstand pressures of up to 0.1 atm, more preferably up to 0.5 atm” (see Applicant’s specification page 6). One of ordinary skill in the art would understand that since the filter of WO 592 in view of WO 872 share similar features with regards to the MMVF and the binder composition and is rigid and self-supporting, as recited in claim 17 of the present application, then the filter of WO 592 in view of WO 872 would necessarily achieve the cylindrical body can withstand a water pressure equivalent to the height of the cylindrical body.
Related Prior Art
Prior art made of record and not relied upon is considered pertinent to applicants’ disclosure:
US 20090045128 A1 (hereinafter US 128) discloses an elongated filtratable element used for removing sediment from stormwater and cartridges composed of said elongated filtratable element(s) (see US 128 abstract and figures 1A-1B, 4A-5B, 9A-9B). US 128 discloses that each elongated filtratable element comprises a filter mat (102), an outer casing (103), and a support member (101) (see US 128 paragraphs 0040, 0046, 0055). US 128 discloses that each cartridge is composed of several elongated filtratable elements (see US 128 figures 4A-4B, paragraphs 0060-0063, 0070, 0074-0075).
Response to Arguments
Applicant's arguments filed November 10, 2025 have been fully considered. Applicant’s amendments and remarks with respect to the obviousness rejection(s) have been considered.
In the response, it was argued that the prior art does not render obvious the claimed filter that is “a single, self-supporting, hollow cylinder of MMVF can be used without any framework required (see Response page 8). This argument is deemed unpersuasive. This argument is not consistent with the claim language of independent claim 17. Claim 17 recites “comprising” claim language and therefore additional elements, such as a framework, are not excluded.
In the response, it was argued that it would not be obvious to combine WO 592 with WO 872 because the device of WO 872 is related to a storm water delay device and MMVF in the WO 872 is directed towards the delay rather than filtering of the storm water (see Response page 8). This argument is deemed unpersuasive
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments” (see MPEP 2123, I). WO 872 discloses that MMVF is capable of filtering fluid matter. WO 872 discloses “WO01/23681 discloses the use of MMVF substrate as a sewage filter” and “the MMVF substrate acts like a filter itself” (see WO 872 page 4 lines 4-6 & page 14 lines 3-6).
In the response, it was argued that “Even if the skilled person did consider modifying one of the filters of WO 592 to be MMVF, there is no reason that the skilled person would consider making the MMVF rigid and self-supporting” (see Response page 8) and argued that the “MMVF in WO 872 is also not rigid or self-supporting” (see Response page 9). This argument is deemed unpersuasive.
This argument is not consistent with the claim language of independent claim 17. Claim 17 recites a filter comprising a cylindrical body comprising MMVF and recites the filter is rigid and self-supporting. Claim 17 does not recite that the MMVF is rigid and self-supporting.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BERNADETTE K MCGANN whose telephone number is (571)272-5367. The examiner can normally be reached M-F 7:00 am -3:30 pm (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ben Lebron can be reached on 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BERNADETTE KAREN MCGANN/Examiner, Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773