DETAILED ACTION
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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any and/or all references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In specific regards to the rejections of instant dependent claim 4, Applicant agrees that people’s fingers can differ in size, and alleges, for example, an infant’s finger is too small to seal the inner tube, the infant would not use the Applicant’s device. The Examiner respectfully disagrees. The fact that people’s fingers are variable and can vary in size is the basis of the rejection under 35 U.S.C. 112(b), and the inner diameter of the inner tube is “small enough that engaging a person’s finger to the inner tube seals the inner tube.” The physical diameter of the inner tube cannot be defined on based on a variable and undefined size of a person’s finger, since there are no set or defined sizes of people’s fingers, thus indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989). In specific regards to instant independent claim 5, Applicant argues that the claim has been amended to add “viewing whether the inner tube contains water.” However, instant independent claim 5 has actually been amended by adding “and removing the inner tube from the outer tube,” which does not overcome the previous grounds of rejection under 35 U.S.C. 112(b).
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.
Claims 4 and 5 are 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.
Regarding claim 4, the phrase: “wherein the inside diameter of the inner tube is small enough that engaging a person’s finger to the inner tube seals the inner tube” is indefinite, since the inside diameter of the inner tube’s size is being defined in relationship to a “person’s finger,” and a “person’s finger” can vary wildly in size, such as, from a small child, to a large-handed adult, and thus there is no clear fixed relationship between the recited elements, rendering the claim indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989).
Instant independent claim 5 recites in the preamble: “A method for determining the amount of water in a container for plants,” but fails to include or conclude with the process/method step wherein the “amount of water” is determined, based on the existing/process steps, thus rendering the claim indefinite. Independent process/method claims must include/conclude with the step set forth in their preambles, and without the recited step set forth in the preamble, renders the claim incomplete for omitting an essential step. See MPEP 2172.01.
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.
Claim(s) 1, 3, 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 3,613,310 to Rynberk and U.S. 4,821,587 to Rogers. Rynberk discloses a device/apparatus (14) for the intended use/for determining the water level of a container for a plant in which the container has a first space at the bottom of the container capable of holding water, a second space above and separated from the first space above and separated from the first space capable of holding a growing medium (Note: the limitations regarding a container and associated aspects does not limit the device/apparatus structural limitations) (see entire reference) comprising: an outer tube (16) having a top, a bottom and inside diameter capable of extending through the second space (i.e. above line 36 in Fig. 1); and the first space (i.e. below line 35 in Fig. 1); an inner tube (18) having a top, a bottom, and an outside diameter of the less than the inside diameter of the outer tube, the inner tube extending through the top of the outer tube and capable of extending into the first space (i.e. below the line 35 in Fig. 1) (as recited in instant dependent claim 1); wherein the inner tube is insertable and removeable from the outer tube (as recited in instant dependent claim 3); wherein the inside diameter of the inner tube is small enough that that engaging a person’s finger to the inner tube seals the inner tube (opening 30) (as recited in instant dependent claim 4). Rynberk does not explicitly disclose the outer tube and the inner tube allow light to pass into the tubes (as recited in instant independent claim 1) or the inner tube has indicia that can extend into the water in the container (as recited in instant dependent claim 6). Rogers discloses a device (20) for measuring depth and taking samples (see entire reference) wherein an inner tube (30) has an outside diameter less than an inside diameter of an outer tube (28), wherein both the inner and outer tubes allow light to pass into the tubes (see col. 4, lines 59-60) as well as indicia/scales/markings (42) on both tubes (see Fig. 1). It would have been obvious to one of ordinary skill as of the effective filing date to modify the device disclosed by Rynberk, to employ clear engineering plastic for the inner and outer tubes thus allowing light to pass into the tubes, as well as indicia/scales/markings on the tubes, as taught by Rogers, thus allowing the level within the tubes to be readily ascertained as well as to be visually inspected for contaminants (see col. 4, lines 59-63), meeting the remaining limitations of instant independent claim 1 and all the limitations of instant dependent claim 6.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 3,613,310 to Rynberk and U.S. 2005/0211333 to Atkinson et al. Rynberk discloses a method for determining the amount of water for a plant (10), the method comprising mounting an outer tube (16) having a top and a bottom and the outer tube’s bottom being positioned near the bottom/below the plant in soil, mounting an inner tube (18) inside the outer tube, the inner tube having a top and bottom, the bottom of the inner tube extending adjacent the bottom of the outer tube; sealing the top of the inner tube with a plug (32), and removing the inner tube from the outer tube (meeting the majority of the limitations recited in instant dependent claim 5). Rynberk does not explicitly disclose the employment of the tubes with a container for plants, wherein the container has a bottom, and, wherein determining the amount of water in the container, the outer tube’s bottom is positioned adjacent the bottom of the container, as recited in instant independent claim 5. The device/apparatus and tubular members to determine an amount of water disclosed by Rynberk is structurally capable to be employed in a container for a plant, wherein the bottom of the container contains a water reservoir, and the plant within soil is above the reservoir. Such containers are well known to those of ordinary skill in the art as of the effective filing date of the instant invention. Atkinson et al. discloses such a container (10) with a bottom (23)(see entire reference) having an outer tube (95) and an inner tube (110) wherein the outer tube is inserted through the soil (9), through an upper portion (11, 15) which holds the soil and the plant, the outer and inner tubes extending into a lower portion (21,25) which holds water to be maintained a desired level. As such, it would have been obvious to one having ordinary skill in the art as of the effective filing date to employ the Rynberk device/apparatus in a container having a bottom for plants, as disclosed by Atkinson et al., to determine the level/amount of the water at the bottom of the container, thus meeting all remaining limitations recited in instant independent claim 5.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 3,613,310 to Rynberk and U.S. 4,821,587 to Rogers as applied to claims 1 and 3 above, and further in view of U.S. 3,303,800 to Young. Rynberk and Rogers disclose a device/apparatus having all of the elements stated previously. Rynberk further discloses that the bottom of the outer tube has at least one opening for allowing water to flow into the bottom of the outer tube. Rynberk and Rogers do not explicitly disclose a cap at the bottom of the outer tube in combination with the opening. Young discloses a soil watering/conditioning device/apparatus having an outer tube (14) and an end cap (20) with openings (30). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify the device/apparatus disclosed by Rynberk and Rogers, employing the soil device/apparatus taught by Young, wherein the pointed end (26) of the cap facilitates penetration into the growing medium/soil/ground when the device is pushed thereinto (see col. 2, lines 16-19 of Young), thus meeting all the limitations recited in instant dependent claim 2.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner John Fitzgerald whose telephone number is (571) 272-2843. The examiner can normally be reached on Monday-Friday from 7:00 AM to 3:30 PM E.S.T. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor John Breene, can be reached at telephone number (571) 272-4107. 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. The central 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.
/JOHN FITZGERALD/Primary Examiner, Art Unit 2855