DETAILED ACTION
This is a first action reissue addressing of U.S. Patent 10,633,834 following a Request for Continued Examination dated 06 March 2025.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Status of the Claim Under Consideration
The following is the status of the claims under current consideration as provided:
Claims 1, 2, 4-10, 12-16, 18-22 and 25-30 are examined.
Claims 3, 11, 17, 23 and 24 are cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06 March 2025 (see further discussion immediately below), has been entered.
Disposition Of the Present Application
The following is a brief timeline of the present application presented for clarity of the record:
26 June 2024: a Final Office action was mailed closing prosecution.
23 December 2024: a Response After Final was received.
06 January 2024: an Advisory Action was mailed, which resulted in the 23 December 2024 submission not being entered.
03 March 2024: a Notice of Abandonment was mailed as the 23 December 2024 response did not provide proper final resolution to the application.
06 March 2025: a Petition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CR 1.137(a) along with a Request For Continued Examination (RCE) including a proper response were received.
23 April 2025: the 06 March 2025 petition was granted and the present reissue application was revived and now under review.
Maintenance Fees
Review of the file indicates the maintenance fees for the underlying patent (U.S. Patent 10,633,834) are current. The next window, which is for the 7.5-year fee, opens 28 April 2027.
Manner of Making Amendments/Support for Amendments Made
The amendment to the claims filed on 03 January 2024 is objected to as not complying with the requirements of 37 CFR 1.173(b)(2) and (d)(1)&(2) because each change relative to the ‘834 patent has not been properly marked. 37 CFR 1.173(b)(2), (c) and (d)(1)&(2) state:
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(1) Specification other than the claims, "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), or a "Sequence Listing XML" (§ 1.831(a) ).
(i) Changes to the specification, other than to the claims, "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), or a "Sequence Listing XML" (§ 1.831(a) ), must be made by submission of the entire text of an added or rewritten paragraph, including markings pursuant to paragraph (d) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The precise point in the specification where any added or rewritten paragraph is located must be identified.
(ii) Changes to "Large Tables," a "Computer Program Listing Appendix," a "Sequence Listing," or a "Sequence Listing XML" must be made in accordance with § 1.58(g) for "Large Tables," § 1.96(c)(5) for a "Computer Program Listing Appendix," § 1.825 for a "Sequence Listing," and § 1.835 for a "Sequence Listing XML."
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression "amended," "twice amended," etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
***
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
The claims presented in the amendment filed 06 March 2025, do not comply with subsection (b)(2) above in that the amendments made are with respect to the previously amended claims and not the patented claims. Further, the response does not comply with subsection (c) above in that no explanation of support in the disclosure of the patent for changes made to the claims is provided.
Below is an example of making proper amendments under Reissue:
Upon filing of the present Reissue application on 26 April 2022, Patented Claim 1 was provided as issued, and is reproduced below in the entirety:
Claim 1: (Issued) An apparatus comprising:
a base member having opposing retaining walls, the base member providing a support structure, the base member configured to store collected rainwater;
an elongated neck member linked to and extending perpendicularly from the base member;
petal members linked to a top of the elongated neck member, the elongated neck member being tubular in shape and running along a central longitudinal axis between the base member and the petal members; and
an upper surface member positioned above the petal members, the upper surface member running perpendicular to the central longitudinal axis and having central holes.
Upon the response dated 03 January 2024, Claim 1 was amended and is reproduced below in the entirety, with the amendments made in bold for ease of view:
Claim 1: (Twice Amended [examiner’s note – while noted as Twice Amended, this is actually the first amendment]) An apparatus comprising:
a base member having opposing retaining walls, the base member providing a support structure, the base member configured to store collected rainwater;
an elongated neck member linked to and extending perpendicularly from the base member;
petal-shaped members linked to a top of the elongated neck member, the elongated neck member being tubular in shape and running along a central longitudinal axis between the base member and the petal members; and
an upper surface member positioned above the petal members, the upper surface member running perpendicular to the central longitudinal axis and having central holes; and
rain chains hanging from the upper surface member, underneath the central holes, running downward parallel to the central longitudinal axis.
Examiner’s note: the above amendment is proper as it is made with respect to Claim 1 as issued.
Upon the response dated 23 December 2024, Claim 1 was amended a second time and is reproduced below in the entirety, with the amendments made in bold for ease of view:
Claim 1: (Currently Amended [by Applicant]) An apparatus comprising:
a base member having opposing retaining walls, the base member providing a support structure, the base member configured to store collected rainwater;
an elongated neck member linked to and extending perpendicularly from the base member;
petal-shaped members linked to a top of the elongated neck member, the elongated neck member being tubular in shape and running along a central longitudinal axis between the base member and the petal members; and
an upper surface member positioned above the petal members, the upper surface member running perpendicular to the central longitudinal axis and having central holes; and
rain chains hanging from the upper surface member, underneath the central holes, running downward [parallel to the central longitudinal axis].
Examiner’s note: this is not in accordance with the above citation from 37 CFR because this is a second amendment, and it is not made with the patented claim. Below is proper presentation of the claim with amendments properly made with respect to the patented claim.
Claim 1: (Currently Amended [as proper]) An apparatus comprising:
a base member having opposing retaining walls, the base member providing a support structure, the base member configured to store collected rainwater;
an elongated neck member linked to and extending perpendicularly from the base member;
petal-shaped members linked to a top of the elongated neck member, the elongated neck member being tubular in shape and running along a central longitudinal axis between the base member and the petal members; and
an upper surface member positioned above the petal members, the upper surface member running perpendicular to the central longitudinal axis and having central holes, and
rain chains hanging from the upper surface member, underneath the central holes, running downward.
Examiner’s Note: the above amendment is proper as it is made with the patented claim and not the previously submitted claim (compare the above amendments made by the Examiner with respect to the Claim submitted 03 January 2024).
Applicant’s response necessitates proper amendments with respect to the patented claims. Failure to do so may result in an improper amendment being recognized and potentially delay advancing prosecution. The examiner is available for an interview to explain/clarify how to make proper amendments should Applicant request one.
These corrections should be submitted with the next correspondence.
Power of Attorney
Applicant should respectfully note that the Power of Attorney dated 06 March 2024, is entered.
Reissue Oath/Declaration
The following is a quotation of 35 USC §251, which forms the basis for issues under this heading:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
***
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
The reissue Oath/Declaration filed 06 March 2025, is defective for the following (see 37 CFR §1.175 and MPEP §1414):
The error statement is not proper. The error statement are directed to the claim language of Claims 1 and 5 directed to “petal members”, which Applicant states is narrow than reasonably permitted and seeks to broaden. However, this language remains unchanged in Claims 1 and 5; further, Applicant does not identify the claim being broadened, and a single word, phrase, or expression in the specification of in an original claim, and how it renders the original patent wholly or partly inoperative or invalid.
Applicant must provide a new Oath/Declaration addressing the above noted issues. Further, applicant should respectfully note that if a specification will not be included in the subsequent Oath/Declaration, the box “is attached hereto” should not be checked, but rather applicant should check the box stating “was filed on _________”.
As a result of the defective Oath/Declaration, claims 1, 2, 4-10, 12-16, 18-22 and 25-30 stand rejected under 35 USC §251 as set forth above. See 37 CFR §1.175.
Original Patent
The following is a quotation of 35 USC §251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
****
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
MPEP § 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP § 1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
(A) The claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 USC §112, first paragraph is satisfied; and
(B) Nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application.
The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention.
Further, the Federal Circuit addressed the “original patent” requirement of 35 USC §251 in Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). In Antares the reissue claims covered embodiments of injection devices (not restricted to jet-injection devices) which the Applicant admitted was a different invention from what was originally claimed. Id. At 1356 The Federal Circuit adopted the Supreme Court’s explanation of the “same invention” requirement as “if the original patent specification fully describes the claimed invention, but not if the broader claims ‘are [] merely suggested or indicated in the original specification’”. Id. At 1359. The Federal Circuit further stated that although wording in 35 USC §251 was changed from “same invention” to “original patent” no change in substance was intended. Id. At 1360.
Based on Antares, a review of the specification is necessary to determine whether the original specification adequately discloses the invention of the reissue claims. Like in Antares, the specification is directed to members, petal-shaped members, and equivalent language directed to “petal” (see, e.g., Col. 3, lines 1-15).
However, as provided in new claim 26, the specification does not disclose language directed to “modified leaf-shaped members” (claim 26, line 5). Language directed to “leaf” and “modified leaf-shaped member[s]” is considered broader than language directed to “petal”. See, e.g., https://www.britannica.com/science/petal which states that a petal is a “modified leaf”. As a result, while a petal may be a modified leaf, a modified leaf can encompass more limitations than a “petal”.
Therefore, Independent Claim 26 and dependent claims 27-30, which are directed to leaf-shaped members, are rejected under 35 USC §251 for not claiming subject matter directed to the invention as disclosed in the original patent.
Claim Objections
Claims 5 and 16 are objected to because of the following informalities:
Claim 5: “each petal-shaped member” (e.g., line 5) lacks antecedent basis.
Claim 16: “rainwater-directing member” (line 5) lacks antecedent basis.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
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 and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 26 is 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 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 26: “modified leaf-shaped members” did not appear in the disclosure as patented. The disclosure, including the images, are directed to “petal-shaped members”, which is narrower than “modified leaf-shaped members”, and “modified leaf-shaped members” can encompass more features than a “petal”. As a result, this language is considered new matter.
35 USC §251 - New Matter
Claim 26 is rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows:
See rejection under 35 USC 112(a), above, which is applicable here and will not be repeated for brevity.
Claim Rejections - 35 USC §103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 10, 12, 13 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wenger (U.S. Publication 2012/0017996) in view of Catt Lyon (U.S. Publication 2013/0193047).
Below is a substantial reproduction of applicant’s claims addressing all limitations with the examiner’s comments in bold italics.
Claim 10: Wenger discloses An apparatus comprising:
a base member (1) having opposing retaining walls (top and bottom sides), the base member providing a support structure (as shown), the base member configured to store collected rainwater (claim 1);
an elongated neck member (as exemplified in Fig. 8: 30) linked to and extending perpendicularly from the base member (as shown);
plant petal-shaped rainwater-directing members (29; the examiner takes the position that members 29 are plant petal-shaped, as no limitations are provided to define the metes and bounds of what constitutes a “plant petal-shaped…members”) linked to a top of the elongated neck member (as shown in Fig. 8), the elongated neck member being tubular in shape and running along a central longitudinal axis between the base member and the rainwater-directing members (as shown generally); and
an upper surface member (filter 14) positioned above the rainwater-directing members (as shown, filter is on top of the petal members which meets the limitation “above”), the upper surface member running perpendicular to the central longitudinal axis (as shown)
While Wenger teaches the filter is used to separate debris from the water, it does not disclose the filter’s “having central holes”. Catt Lyon teaches a similar rainwater catch system that incorporates a base (58) and filter (Fig. 3: generally, in particular element 38) connected to the system that has “central holes” (see paragraph [0033] which teaches the filter is a mesh, which by definition has a plurality of holes which would include central holes). As a result, it would have been obvious at the time of filing to a person having ordinary skill in the art to incorporate a filter with holes, such as the filter in Catt Lyon, with the filter in Wenger, as a teaching that filters include holes for separating particulate from liquid.
Claim 12: the obvious modification of the prior art provides The apparatus of claim 10, wherein the rainwater-directing members each have an outer tip (outermost edge of 29 is a tip of member 29) and are angled to slope downward from the outer tip towards the central longitudinal axis (outermost portion is sloped downward to the axis as shown).
Claim 13: the obvious modification of the prior art provides The apparatus of claim 10 except wherein the upper surface member is angled slightly downward towards the central holes. Wenger does teach that the filter device can have a plurality shapes and sizes, meaning the shape is not limiting. See, Wenger Fig. 5, which shows the petal has a conical shape. It would have been obvious at the time of filing to a person having ordinary skill in the art to shape the filter to more conform to the shape of the inner surface of the petal. Having this shape would increase the size of the filter permitting a greater volume of liquid to pass without departing from the scope of operability of the prior art.
Claim 25: Wenger discloses An apparatus comprising:
a base (1) forming a rainwater storage container (claim 1) for containing rainwater (as per its purpose);
an elongated neck portion (30) being tubular in shape and running along a central longitudinal axis and capable of directing rainwater into the base (as shown in Fig. 8);
a plurality of plant petal members (29; using the broadest reasonable interpretation in light of applicant’s specification, members 29 are plant petal shape as applicant provided no limitations directed to what constitutes a shape of the claimed petal) each of the plurality of plant petal members comprising a channel (the conical shape of the petals is a channel using the broadest reasonable interpretation of applicant’s specification) for directing rainwater radially towards the central longitudinal axis and into the elongated neck (as shown); and
an upper surface member (14) running perpendicular to the central longitudinal axis (as shown generally).
While Wenger teaches the filter is used to separate debris from the water, it does not disclose the filter’s having central holes. Catt Lyon teaches a similar rainwater catch system that incorporates a base (58) and filter (Fig. 3: generally, in particular element 38) connected to the system that has “central holes” (see paragraph [0033] which teaches the filter is a mesh, which by definition has a plurality of holes which would include central holes). As a result, it would have been obvious at the time of filing to a person having ordinary skill in the art to incorporate a filter with holes, such as the filter in Catt Lyon, with the filter in Wenger, as a teaching that filters include holes for separating particulate from liquid.
Allowable Subject Matter
The examiner reserves comment on Claims 1, 2, 4-9, 14, 15, 16-22 and 26-30 pending resolution of the rejections above. The examiner has no art to cite against the claims at this time.
Response to Arguments
The following addresses applicant’s remarks/arguments dated 06 March 2025. Applicant’s courtesies are appreciated.
New Formal Documents (response: pages 11):
The matter involving the power of attorney and reissue oath/declaration are addressed above and will not be repeated here for brevity.
Claim objections (response: page 11):
Applicant’s amendments that addressed the objections previously raised are withdrawn; however, some objections remain are noted above.
Claim rejections – 35 USC 103 (response: page 12):
Applicant’s remarks are noted but respectfully not persuasive. Regarding the argument with respect to “plant” petal members being the amended language to distinguish from the Wenger reference, the examiner takes the position that no metes and bounds are provided in the claim language to define what constitutes a “plant petal member” shape. One having ordinary skill in the art understands that plants, both known and unknown, have virtually unlimited shapes and sizes to serve as the intended purpose, especially since, as disclosed, “plant petal member” can encompass both real and artificial plant shapes. As a result, the examiner maintains the interpretation of the art and corresponding rejection are proper
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,633,834 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
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, Eileen Lillis can be reached at 571.272.6928. 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.
/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
Conferees:
/MATTHEW J KASZTEJNA/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993