DETAILED ACTION
Claim(s) 1-20 as filed 5/28/2024 are pending for consideration.
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 .
Drawings
The drawings are objected to because the sectional views do not include hatching as required by 37 CFR 1.84(h)(3). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: “an upstream portion of downspout” (lines 4-5) should be “an upstream portion of the downspout”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “upwardly away from a terminal edge” (line 22) should be “upwardly away from the terminal edge”. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: “the housing body” (line 3) should be “the housing body.” (the claim must end in a period). Appropriate correction is required.
Claim 12 is objected to because of the following informalities: “an upstream portion of downspout” (lines 4-5) should be “an upstream portion of the downspout”. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: “an upstream portion of downspout” (line 5) should be “an upstream portion of the downspout”. Appropriate correction is required.
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 2, 5, 7, and 20 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.
Claim 2 recites the limitation "the upstream end" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the filter element" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the upstream end" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 20 recites the limitation "the upstream edge" in line 5. There is insufficient antecedent basis for this limitation in the claim.
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) 17, 19, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harvey (US Patent 5,533,303).
Regarding Claim 17, Harvey discloses a rainwater diverter apparatus for use on a downspout (abstract), the rainwater diverter apparatus comprising a housing body 38 that includes: an inlet (inlet at the upper end of 38 as shown in Figure 2, coupled to the outlet of 34) that is formed on a top end of the housing body 38 (as shown in Figure 2) and that is shaped to interface with an upstream portion of downspout 34, 42 (the top end interfaces with the upstream portion of the downspout at 34 as shown in Figure 2) for fluidly connecting an interior of the housing body 38 and the downspout; a primary outlet (primary outlet as shown in the annotated Figure 2 below) that is formed in a first bottom section of the housing body (as shown in the annotated Figure 2 below) and that is shaped to interface with a downstream portion of the downspout (via adapter 46, the adapter is seen to be readable as part of the downspout); a water-receiving reservoir (chamber 82) that is formed within a second bottom section of the housing body (as shown in the annotated Figure 2 below) that is separate from the first bottom section (these sections are separated by the deflector 94); and a plurality of secondary outlets (including 60, 68, and 70) that are positioned on the second bottom section 82 of the housing body and that are fluidly connectable to at least one external collection reservoir (the second bottom section 82 is at least capable of being connected to at least one external collection reservoir via hose 64); and a water deflector 94 that includes an upstream end (the right side is seen as an upstream end because the baffle panel 58 directs water to the right side of the deflector 94 as shown in Figure 2), a downstream end (the left side of 94 is seen as a downstream end because water can flow from right to left on the deflector after it is deflected to the right side by panel 58), and a deflecting surface extending between the upstream and downstream ends (the upwardly facing surface of 94 is a deflecting surface), the water deflector 94 being removably mountable within the interior of the housing body 38 (as shown in Figure 2 by the dashed lines, at least a portion is removed from the interior of the housing body), at least partly below the inlet (as shown in Figure 2), in a first deflection position (when the deflector is partially removed from the housing body it is placed in a first deflection position in which water is deflected toward the lower downspout 42) for deflecting rainwater towards the primary outlet (i.e. because water flows past the deflector 94) or a second deflection position (with the deflector fully inserted) for deflecting rainwater towards the water-receiving reservoir (the space above 94).
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Regarding Claim 19, Harvey further discloses the housing body 38 includes a support lip (ribs 84 and 86 define a support lip) formed along at least one interior surface of the housing body (the lip extends inwardly from interior surfaces of the housing body as shown in Figures 2 and 3); and wherein the water deflector 94 includes an abutting edge (outer perimeter edge) that is sized to be received and supported on the support lip 84, 86 of the at least one interior surface of the housing body for removably mounting the water deflector in each of the first or second deflection positions (the abutting edge of 94 is supported on the lip of surfaces 52 and 54 in each of the first and second deflection positions).
Regarding Claim 20, Harvey further discloses the water deflector 94 includes a pair of sidewalls (walls of 94 facing sides 52 and 54 as shown in Figure 3) that are disposed on opposing lateral sides of the deflecting surface (as described above; the deflecting surface facing upwardly toward the inlet of the housing body); and wherein the abutting edge of the water deflector is formed along each of the pair of sidewalls (as described above, the abutting edge is formed along the perimeter of 94 including along each of the pair of sidewalls) and the upstream edge of the water deflector (the upstream edge of 94 also includes an edge capable of abutting another element).
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.
Claim 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harvey (US Patent 5,533,303) in view of Sherwood (US Patent Application 2023/0302385).
Regarding Claim 18, Harvey does not disclose the top end of the housing body includes at least one cut-line that is structured to be cut for removing at least one section of the top end of the housing body; and wherein the cut-line is formed on the top end of the housing body such that removing the at least one section of the top end increased the size of the inlet.
Sherwood teaches a downspout system (abstract) and further teaches a top end 138 of a housing body includes at least one cut-line 165 that is structured to be cut for removing at least one section of the top end of the housing body (para. 0046); and wherein the cut-line is formed on the top end of the housing body such that removing the at least one section of the top end increased the size of the inlet (by removing the smaller portion at the upper end of the top end 138 at the location of line 165 as shown in Figure 14).
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Harvey to include a stepped top end and a cut-line as taught by Sherwood for the purpose of providing a structure which is capable of being assembled with different sized downspouts.
As described above, Sherwood teaches a cut-line 165 shown as the dashed line in Figure 14. However, in the event that the “cut-line” taught by Sherwood is not present on the physical device, it would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Harvey in view of Sherwood to including a cut-line on the device for the purpose of informing a user of how to use the stepped top end in the manner taught by Sherwood.
Allowable Subject Matter
Claims 1, 3, 4, 6, and 8-16 are allowed.
Claims 2, 5, and 7 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach the combination of limitations set forth in claim 1, including “wherein the water deflector is shaped such that when the water deflector is in the first deflecting position, the entirety of the deflecting lip is disposed over the first bottom section for deflecting the rainwater into only the first bottom section, and when the water deflector is in the second deflecting position, the entirety of the deflecting lip is disposed over the second bottom section for deflecting the rainwater into only the second bottom section” in combination with the remaining limitations set forth in the claim. Teoh (US Patent 8,517,047) teaches a rainwater diverter including a water deflector 400 having a deflecting lip 421, however Teoh fails to reasonably teach “wherein the water deflector is shaped such that when the water deflector is in the first deflecting position, the entirety of the deflecting lip is disposed over the first bottom section for deflecting the rainwater into only the first bottom section, and when the water deflector is in the second deflecting position, the entirety of the deflecting lip is disposed over the second bottom section for deflecting the rainwater into only the second bottom section” as required by claim 1. Furthermore, there is not sufficient evidence that it would have been obvious to one of ordinary skill in the art before the application was effectively filed to have modified Teoh to include these features.
The prior art fails to teach the combination of limitations set forth in claim 12, including “the cross-sectional area of the inlet is substantially equivalent to a combined cross-sectional area of the plurality of secondary outlets such that the bottlenecking of rainwater flowing through the plurality of secondary outlets is substantially inhibited”. Block (US Patent 8,033,058) teaches a rainwater diverter including a deflector 80 within a body 20 and further teaches a flow area of a first passage 58 is substantially the same as the cross sectional flow area of top and bottom portions 30 and 40 (col. 4, lines 1-4). However, Block fails to teach “the cross-sectional area of the inlet is substantially equivalent to a combined cross-sectional area of the plurality of secondary outlets such that the bottlenecking of rainwater flowing through the plurality of secondary outlets is substantially inhibited” as required by claim 12. Furthermore, there is not sufficient evidence that it would have been obvious to one of ordinary skill in the art before the application was effectively filed to have modified Block to include these features.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Middleton (US Patent 10,472,830) teaches a water diverter with an adjustable deflector 320. Johnson (US Patent 9,988,817) teaches a rainwater diverter with a removable deflector 8 (abstract).
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