DETAILED ACTION
Status of Claims:
Claims 1-15 are pending.
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 (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 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, 3-6, 8-10 and 12-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grieve et al (USPN 5,607,107).
Regarding Claim 1:
Grieve teaches the water flow device consisting of: a tubing (tube 2), the tubing comprising an inlet end (inlet end 6) (see col. 4 lines 46-47), and an outlet end (distal end 12) (see col. 4 lines 61-63); an attachment means (clamp or band 10) on the inlet end, the attachment means configured to attach (see col. 4 lines 56-57) the inlet end to the outer surface of a downspout of a gutter (see col. 3 lines 54-55).
Regarding Claim 3:
Grieve teaches the water flow device of claim 1, further comprising: a filter (holes 18) located on or in the tubing, the filter configured to filter the liquid exiting the tubing (water exits and debris and leaves are retained, therefore liquid if filtered) (see col.5 lines 6-20).
Regarding Claim 4:
Grieve teaches the water flow device of claim 3, wherein the filter is located at or near the outlet end (holes are along the length therefore the filter is near the outlet end) (see col. 5 lines 6-20, fig. 4). It is noted that the term “near” is not limited to any specific range of locations, therefore any point along the tube is considered “near” the outlet end.
Regarding Claim 5:
Grieve teaches the water flow device of claim 1, wherein the tubing is configured to be rolled up, and when water flows out of the downspout, the tubing is configured to unroll due to the water entering the tubing (elongate when a force is applied) (see col. 2 lines 18-28) such that the outlet end reaches a designated area (see figs. 1 and 2).
Regarding Claim 6:
Grieve teaches the water flow device of claim 3, where the filter is located at or near the inlet end (holes are along the length therefore the filter is near the inlet end) (see col. 5 lines 6-20, fig. 4). It is noted that the term “near” is not limited to any specific range of locations, therefore any point along the tube is considered “near” the inlet end.
Regarding Claim 8:
Grieve teaches the water flow device comprising: a tubing, (tube 2), the tubing comprising an inlet end (inlet end 6) (see col. 4 lines 46-47), and an outlet end (distal end 12) (see col. 4 lines 61-63); an attachment means (clamp or band 10) on the inlet end, the attachment means configured to attach (see col. 4 lines 56-57) the inlet end to the outer surface of a downspout of a gutter (see col. 3 lines 54-55); a filter (holes 18) located on or in the tubing, the filter configured to filter the liquid exiting the tubing (water exits and debris and leaves are retained, therefore liquid if filtered) (see col.5 lines 6-20).
Regarding Claim 9:
Grieve teaches the water flow device of claim 8, wherein the tubing is made from a material that has a thickness of about 4 mils to about 20 mils (100 µm to 150µm is about 4 to about 5 mils) (see col. 5 lines 56-59).
Regarding Claim 10:
water flow device of claim 8, wherein the tubing is made from a material that has a thickness of about 4 mils to about 10 mils (100 µm to 150µm is about 4 to about 5 mils) (see col. 5 lines 56-59).
Regarding Claim 12:
Grieve teaches the water flow device of claim 8, wherein the filter is located at or near the outlet end (holes are along the length therefore the filter is near the outlet end) (see col. 5 lines 6-20, fig. 4). It is noted that the term “near” is not limited to any specific range of locations, therefore any point along the tube is considered “near” the outlet end.
Regarding Claim 13:
Grieve teaches the water flow device of claim 8, wherein the tubing is configured to be rolled up, and when water flows out of the downspout, the tubing is configured to unroll due to the water entering the tubing (elongate when a force is applied) (see col. 2 lines 18-28) such that the outlet end reaches a designated area (see figs. 1 and 2).
Regarding Claim 14:
Grieve teaches the water flow device of claim 8, where the filter is located at or near the inlet end (holes are along the length therefore the filter is near the inlet end) (see col. 5 lines 6-20, fig. 4). It is noted that the term “near” is not limited to any specific range of locations, therefore any point along the tube is considered “near” the inlet end.
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.
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.
Claim(s) 2 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grieve et al (USPN 5,607,107) as applied to claims 1 and 8 above, and further in view of Mackintosh et al (US 2023/0034568).
Regarding Claim 2:
Grieve teaches the water flow device of claim 1.
Grieve does not explicitly teach wherein the attachment means is a rubber band, pull tie, wire tie, or hook and loop fastener.
Mackintosh teaches a rubber band (elastic band) attachment means for a water flow device attached to a downspout (see para. 0006).
Grieve and Mackintosh are analogous inventions in the art of downspout attachments. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to replace the unspecified band material of Grieve with the rubber (elastic) of Mackintosh because it is the simple substitution of one band material with another band material, obviously resulting in attachment of the tube to the downspout, with an expectation of success. 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. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 11:
Grieve teaches the water flow device of claim 8.
Grieve does not explicitly teach wherein the attachment means is a rubber band.
Mackintosh teaches a rubber band (elastic band) attachment means for a water flow device attached to a downspout (see para. 0006).
Grieve and Mackintosh are analogous inventions in the art of downspout attachments. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to replace the unspecified band material of Grieve with the rubber (elastic) of Mackintosh because it is the simple substitution of one band material with another band material, obviously resulting in attachment of the tube to the downspout, with an expectation of success. 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. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Claim(s) 7 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grieve et al (USPN 5,607,107) as applied to claim 1 above, and further in view of Weck et al (USPN 6,910,505).
Regarding Claim 7:
Grieve teaches the water flow device of claim 1.
Grieve does not teach the tubing is made from polyvinyl.
Weck teaches a self-coiling water flow device made from polyvinyl (see col. 1 lines 31-35).
Grieve and Weck are analogous inventions in the art of self-coiling tubes. It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the tube material of Grieve with the material of Weck because polyvinyl has improved flexibility (see Weck col. 1 lines 31-35) and because it is the simple substitution of one know tube material with another known tube material, obviously resulting in an self-coiling tube for a downspout, with an expectation of success. 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. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 15:
Grieve teaches the water flow device of claim 8.
Grieve does not teach the tubing is made from polyvinyl.
Weck teaches a self-coiling water flow device made from polyvinyl (see col. 1 lines 31-35).
Grieve and Weck are analogous inventions in the art of self-coiling tubes. It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the tube material of Grieve with the material of Weck because polyvinyl has improved flexibility (see Weck col. 1 lines 31-35) and because it is the simple substitution of one know tube material with another known tube material, obviously resulting in an self-coiling tube for a downspout, with an expectation of success. 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. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 9/29/2025