DETAILED ACTION
Claims 1-5 and 15-17 are pending for consideration following applicant’s amendment filed 9/10/2025.
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 § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 5, and 15-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Teoh (US Patent 8,517,047).
Regarding Claim 1, Teoh discloses a downspout diverter (abstract) comprising: a main body portion 100 including: an inlet portion 210; a bottom portion (lower portion as best shown in Figure 3B) defining a flow capacity zone (the zone below the “water line” as shown in Figure 3B); a harvesting outlet portion 330; and an overflow outlet portion 220; wherein when downspout rainwater is received via the inlet portion 210, the downspout rainwater is collected in the flow capacity zone (below the water line shown in Figure 3B; shown at 300 in Figure 4B) whereby when a level of water is within the flow capacity zone, the water is directed towards the harvesting outlet portion 330 and when the level of water is above the flow capacity zone (i.e. when the level of water is above the hole 510), the downspout rainwater is directed at the overflow outlet portion 220 (as shown in Figure 4B); wherein an opening of the harvesting outlet portion 330 and an opening of the overflow outlet portion 220 are parallel with each other with respect to the main body portion 100 (as best shown in Figure 4B, both of these openings are oriented downwardly and therefore are parallel with each other with respect to the main body portion as claimed).
Regarding Claim 2, Teoh is seen as further disclosing a flap 400 covering the overflow outlet portion 220 (at least in the position shown in Figure 4B, the flap 400 “covers” the overflow outlet portion 220 from the inlet 210 and is in axial alignment with the overflow outlet portion 220; this limitation does not require the flap to seat directly against a surface defining the overflow outlet portion).
Regarding Claim 5, Teoh further discloses the main body portion 100 further comprises a housing (100 forms a housing as shown in e.g. Figure 1) defining the inlet portion 210, the harvesting outlet portion 330 and the overflow outlet portion 220 (as shown in Figure 4B, the housing defines all of these portions).
Regarding Claim 15, Teoh further discloses the inlet portion 210 is connected to a downspout (as shown in Figure 1).
Regarding Claim 16, Teoh further discloses the harvesting outlet portion 330 is connected to a pipe (flexible pipe 610 as shown in Figure 5A).
Regarding Claim 17, Teoh further discloses the bottom portion further comprises: a residual zone (the upper surface of screen 310, which is seen to be located within the bottom portion as claimed, is seen to define a residual zone because at least some water will adhere to the upper surface of screen 310 during normal use of the device, thereby creating a zone of residual water).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Teoh (US Patent 8,517,047) in view of Forrest (US Patent 8,496,810).
Regarding Claim 3, Teoh does not specifically disclose the flap comprises a sealing edge.
Forrest teaches a rainwater handling system and further teaches a flap 166 is in sealable engagement with a base 168 (as shown in Figure 7B; the flap includes a sealing edge at the upper end thereof).
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Teoh such that the flap comprises a sealing edge as taught by Forrest for the purpose of closing flow to the overflow preventing flow until desired by the user.
Regarding Claim 4, Teoh in view of Forrest further discloses the main body portion comprises a seat for receiving the sealing edge (best shown by Forrest, seat surrounding passage 170 for receiving the sealing edge of the flap as shown in Figure 7B; Teoh includes a seat for the deflector at the inner surface of the main body as shown in Figures 4A and 4B).
Response to Arguments
Applicant’s arguments filed 9/10/2025 with respect to the rejections over Teoh have been fully considered but they are not persuasive. Specifically, applicant argues that Teoh fails to teach “an opening of the harvesting outlet portion and an opening of the overflow outlet portion are parallel with each other with respect to the main body portion” as recited in claim 1. Applicant argues that the openings 330 and 510 are not parallel. These arguments are not persuasive because instead the openings 330 and 220 are relied upon as readable on the recited opening of the harvesting outlet portion and opening of the overflow outlet portion as described above. These 330 and 220 openings are parallel with each other as best shown in Figure 4B. Applicant argues that the main body portion of Teoh is the reservoir component 300. These arguments are not persuasive because instead element 100, which includes integrally formed portions 300 and 200, is relied upon as readable on the recited main body portion.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 KEVIN MURPHY whose telephone number is (571)270-5243. The examiner can normally be reached Monday - Friday 8am-4pm.
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/KEVIN F MURPHY/ Primary Examiner, Art Unit 3753