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 .
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.
Claim Objections
Claim 6 is objected to because of the following informalities:
Regarding Claim 6: Subsections a & b recite the same limitations and have the same wording in the same order. Both subsections appear to be duplicates of the other. Appropriate correction is required.
Double Patenting
The non-statutory 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 non-statutory double patenting rejection is appropriate where the conflicting claims 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 Longi, 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); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 11,555,279, herein referred to as Cuellar-279. This is a non-statutory double patenting rejection.
Regarding Claim 1: Claim 1 of Cuellar-279 also recites in Figs. 1, 2, 4 & 6 and Column 3=>Lines 54-67 & Column 4=>Lines 1-26, a four-sided rectangular pavement drain, with a drain aperture in the center that is orthogonal to the four side walls, one or more drain surfaces extending from the four sidewalls at a second height, the second height different from the first height, defined by a second plane, to the drain aperture, a first circular protrusion extending from the one or more drain surfaces, in a direction away from the second plane, terminating at a third plane, the third plane being parallel to the first plane and the second plane, the first circular protrusion being concentric to the drain aperture, and the first circular protrusion having a diameter greater than a diameter on the drain aperture, wherein the third plane is located within the height of the pavement drain such that the first circular protrusion does not extend beyond a bottom of the pavement drain, a lip formed by the four sidewalls extending from the second plane to a fourth plane, the fourth plane being parallel to the second plane, wherein four threaded apertures to receive fasteners for a drain plate are provided on the lip, the four threaded apertures extending from the fourth plane towards the second plane, and wherein one threaded aperture is provided at each corner of the rectangular perimeter, wherein the lip extends one quarter of an inch from the second plane to the fourth plane, one quarter of an inch in from an exterior surface of the four sidewalls, and one-half inch in from the corners to the perimeter, a second circular protrusion extending from the one or more drain surfaces to the third plane and the second circular protrusion being concentric to the drain aperture, and the second circular protrusion having a larger diameter than the diameter of the first circular protrusion.
The language of claim 1 in the instant application is identical to the language of claim 1 in Cuellar-279 as is the subject matter recited, with exception to the instant application referring to the drain device as a “sewer cleanout,” whereas Cuellar-279 refers to the drainage device as a pavement drain.
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 6 recites the limitation "the perimeter" and “the four sidewalls” in the first line of the claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, these terms will be read as providing antecedent basis, however, correction is required
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jose Luis Cuellar, US 2019/0330809 herein referred to as Cuellar-809.
Regarding Claim 1: Cuellar-809 teaches in Figs. 1, 2, 4 & 6 & Paragraph 0015 a pavement drain with one or more sidewalls having a height and forming a perimeter.
In paragraph 0015 Cuellar-809 recites a drain aperture at the center of the drain within the perimeter, the aperture located on a first plane, the first plane being orthogonal to the four sidewalls (paragraph). Further in paragraph 0015 Cuellar-809 teaches one or more drain surfaces extending from the four sidewalls at a second height, the second height different from the first height, defined by a second plane and to the drain aperture. Cuellar further teaches in claim 1 the second plane being parallel to the first plane.
Cuellar-809 teaches in paragraph 0016, a first circular protrusion extending from the one or more drain surfaces, in a direction away from the second plane, terminating at a third plane, the third plane being parallel to the first plane and the second plane, the first circular protrusion being concentric to the drain aperture, and the first circular protrusion having a diameter greater than a diameter of the drain aperture, wherein the third plane is located within the height of the one or more sidewalls such that the first circular protrusion does not extend beyond the height of the one or more sidewalls.
Cuellar-809 further teaches in paragraph 0015, “the sidewalls (105) protrude above the drain surfaces (120) and create a lip (110) which provides a planar face for a drain plate (200 as shown in FIG. 6) to be attached to the drain via screws (300 as shown in FIG. 6) engaging into screw holes (115).”
In paragraph 0019 Cuellar-809 further recites, “the lip (110) protrudes approximately a quarter inch (0.25″) above where the sidewall meats the drain surface. In a further embodiment, the lip (110) is offset a quarter inch (0.25″) from the exterior surface of the sidewall.”
Cuellar-809 teaches in paragraph 0016, “the bottom of the pavement drain (100) is provided with a first circular protrusion (140) adapted to retain a drain pipe (600 as shown in FIG. 7) and a second circular protrusion (150) adapted to retain a drain pipe of a larger diameter.” Further in claim 5, Cuellar-809 teaches, “further comprising a second circular protrusion from the one or more drain surfaces terminating at the third plane, the second circular protrusion being concentric to the drain aperture, and the second circular protrusion having a larger diameter than the diameter of the first circular protrusion.”
The language of claim 1 in the instant application is identical to the language of claim 1 in Cuellar-279 as is the subject matter recited, with exception to the instant application referring to the drain device as a “sewer cleanout,” whereas Cuellar-279 refers to the drainage device as a pavement drain.
The examiner also notes that the earliest publication (US 2019/0330809 published on 10/31/2019 and filed on 04/25/2018) qualifies as prior art under U.S.C. 102(a)(1).
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 non-obviousness.
Claims 2 through 4 are rejected under 35 U.S.C. 103 as being unpatentable over Jose Luis Cuellar, US 2019/0330809 herein referred to as Cuellar-809, in view of Doug Allard, U.S. 5,360,284 herein referred to as Allard.
Regarding Claim 2: Cuellar-809 discloses the pavement sewer cleanout as discussed in Claim 1. Additionally, Cuellar-809 discloses that the sidewalls and drain may form a square surface with lengths and widths between 6 and 8 inches (Paragraphs 0018-0019). While Cuellar-809 does not disclose a height of 3.5 inches for the sidewalls and drain, it also discloses that the drain system may be dimensioned to be the same size or based on the size of individual pavers in an interlocking system (Paragraph 0003). However, it has been held that prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness (MPEP 2144.05, Subsection l)
Allard teaches a drain inlet structure, wherein the drain includes a riser (Column 2=>Lines 28-30, wherein the size of the riser (drain pipe that the drain is connected and drains into)) typically ranges from 4”-8” in diameter, but is not limited to these dimensions.
It would be obvious to an ordinary person trained in the art to realize that the dimensions of the drain walls are determined in part on the size of drain pipe that it is to be connected to. Other factors determining drain wall length and height include the height of the finished paver median where the drain will be installed and more acutely important, the volume of water that the drain is calculated to handle. Furthermore, the chart below shows common PVC Schedule 40 pipe sizes per A.S.T.M. International (American Society for Testing and Materials International) accepted standards. The pipe diameter sizes range from ½” to 12” in interior diameter size. Pipes sized 5” or larger would not be able to be used with a drain size conforming to the sidewall length and height dimensions provided in claim 2. Therefore, it has been held that selecting a dimension for a drain element as such would merely constitute routine optimization of a results effective variable which has been held to be an obvious design choice (MPEP 2144.05, Subsection II, A).
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Regarding Claim 3: Cuellar-279 in view of Allard teaches the limitations of Claim 2 as detailed above. Additionally, Cuellar-279 discloses a pavement drain, wherein the first protrusion (140) has an inner diameter of 3.25”. Cuellar-279 does not teach a pavement drain, wherein the first protrusion (140) has an inner diameter of 3.34”. However, such a small increase in pipe diameter (9/100”) from the pipe diameter of Cuellar-279 will not affect the water evacuation capacity in a measurable amount. Furthermore, critical factors such as the inner diameter of the drain pipe which will receive the protrusion, grading of the surrounding flood area to the drain, drain pipe size/capacity downstream and correct routing/connection design of the pavement drain system will have much more of a substantial impact on the water draining capacity of the proposed drain.
Examiner notes that the specification does not appear to illustrate any criticality for the recited dimensions as they relate to producing an unexpected result. As such, it would appear that the use of such specific dimensions would likely be an obvious design choice so as to produce a desired draining characteristic for the device as discussed above.
Regarding Claim 4: Cuellar-279 in view of Allard teaches the limitations of Claim 2 as detailed above. Additionally, Cuellar-279 teaches a pavement drain, wherein the second protrusion (150) has an inner diameter of 4.25”. Cuellar-279 does not teach a pavement drain, wherein the second protrusion (150) has an inner diameter of 4.40”. However, such a small increase in pipe diameter (15/100”) from pipe diameter of Cuellar-279 will not affect the water evacuation capacity in a measurable amount. Furthermore, critical factors such as the inner diameter of the drain pipe which will receive the protrusion, grading of the surrounding flood area to the drain, drain pipe size/capacity downstream and correct routing/connection design of the pavement drain system will have much more of a substantial impact on the water draining capacity of the proposed drain device.
Examiner notes that the specification does not appear to illustrate any criticality for the recited dimensions as they relate to producing an unexpected result. As such, it would appear that the use of such specific dimensions would likely be an obvious design choice so as to produce a desired draining characteristic for the device as discussed above.
Claims 6 & 7 are rejected under 35 U.S.C. 103 as being unpatentable over Jose Luis Cuellar, U.S. 11,555,279 herein referred to as Cuellar-279.
Regarding Claim 6: Cuellar-279 discloses a centered drain aperture (Column 1=>Lines 25-28) that is located on a first plane and is orthogonal to the four sidewalls (Column 3=>Lines 57-59). Cuellar-279 further discloses, the one or more drain surfaces extending from the four sidewalls at a second height, the second height different from the first height, defined by a second plane, the second plane being parallel to the first plane, and funneling into the drain aperture (Column 4=>Lines 48-52), first & second circular protrusions extending from the one or more drain surfaces, in a direction away from the second plane, to a third plane, the third plane being parallel to the first plane and the second plane, with both circular protrusions being concentric to the drain aperture, and both circular protrusions having a diameter greater than a diameter of the drain aperture, and having inner walls with diameters of 3.25 & 4.25 inches respectively, which do not extend beyond a bottom of the pavement drain (Column 4=>Lines 52-59 & 60-67), a lip formed by the four sidewalls extending from the second plane to a fourth plane with four threaded apertures at each corner to receive four screws that allow attachment of a drain plate with corresponding screw apertures, wherein a lip extends one quarter of an inch from the second plate to the fourth plane, one quarter of an inch in from an exterior surface of the four sidewalls, and one half inch in from the corners of the square perimeter (Column 5=>Lines 1-16).
Cuellar-279 does not explicitly teach first and second circular protrusions with inner diameters of 3.34 or 4.45 inches respectively. However, it would be obvious to an ordinary person trained in the art to realize that the inner diameter of the circular protrusion has no importance to correctly slip fitting them into the downstream drain pipe mouth since correct connection of a drain body to the downstream drain pipe requires insertion of the drain body protrusion into drain pipe mouth and not over the drain pipe mouth.
Regarding Claim 7: Cuellar-279 further discloses that the drain plate and may be approximately 1/8” thick between 5.5 and 8 inches in width/length (Paragraphs 0018/0019/0022, Examiner notes that Cuellar-279 discloses that the width and length may include the narrower range of 6-8 inches).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Jose Luis Cuellar, U.S. 11,555,279 herein referred to as Cuellar-279.
Regarding Claim 5: Cuellar-279 teaches a pavement drain, wherein the first protrusion (140) has an inner diameter of 3.25” and the second protrusion (150) has an inner diameter of 4.25”. Cuellar-279 does not teach a pavement drain, wherein the first protrusion has an inner diameter of 3.34” or a second protrusion with an inner diameter of 4.40”. However, such a small increase in pipe diameter (9/100” or 15/100”) from that of Cuellar-279 will not affect the water evacuation capacity in a measurable amount. Furthermore, other factors such as the inner diameter of the drain pipe which will receive the protrusion, grading of the surrounding flood area to the drain, drain pipe size/capacity downstream and correct routing/connection design of the pavement drain system will have much more of a substantial impact on the water draining capacity of the proposed drain device.
Examiner notes that the specification does not appear to illustrate any criticality for the recited dimensions as they relate to producing an unexpected result. As such, it would appear that the use of such specific dimensions would likely be an obvious design choice so as to produce a desired draining characteristic for the device as discussed above.
Conclusion
The prior art made of record and relied upon is considered pertinent to applicant’s disclosure. U.S. 7,897,907 Smith relates to a drainage device having four walls with rounded/arcuate corners (Fig. 1 (112)), that extend in the form of channels (Fig. 1 (118)), which connect to, to form the outlet aperture (Fig. 1 (108)). Upon testing the channels (118) increased water flow by 26% from that of a prior art outlet that had a larger outlet aperture.
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/KALPIT C. PATEL/Examiner, Art Unit 3671 /CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671