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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
The information disclosure statement filed 4/22/24 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because document number US 2015292210 is not a valid U.S. Pre-Grant Publication number. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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 2-3, 5-7 and 11 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.
With regard to claims 2-3: The phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention.
With regard to claim 11: Line 2 of the claim, it’s unclear if the limitation “at least one connector” is referencing the previously recited at least one connector. For the purpose of examination, the limitation is considered to be directed to --the at least one connector--. Line 3 of the claim, it’s unclear if the limitation “a first roofing element” is referencing the previously recited at least one roofing element. For the purpose of examination, the limitation is considered to be directed to --the at least one roofing element--. Lines 3-4 of the claim, it’s unclear if the limitation “a connector of the container of a second roofing element” is referencing the previously recited at least one connector of a separate container of a separate roof element. For the purpose of examination, the limitation is considered to be directed to --the at least one connector of the separate container of the separate roofing element--.
Claims 2-3, 5-7 and 11 are examined as best understood.
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.
Claim(s) 1-4, 6-7 and 9-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cronk et al. (US 2011/0289839 A1).
With regard to claim 1: Cronk et al. discloses roofing element (module green roof unit 20) (figs. 1-14) comprising:
a container (28) into which water can be introduced (figs. 1 and 4; par. [0035]), the container (28) comprising a receptacle (24) adapted to be able to receive and hold said container (28) in place and to be able to be fixed to the framework of a building (figs. 1, 5, 8-9, 11 and 13A-14).
Cronk et al. discloses that said receptacle (24) having a base (bottom wall 38) and peripheral side walls (40) making it possible to hold said container (figs. 1-2 and 4; par. [0033]),
wherein the container (28) comprises at least one connector (irrigation mat 26) adapted to be able to be connected (via physical contact) to at least one connector (irrigation mat 26) of a separate container (adjacent wall 28) of a separate roofing element so as to enable a flow of the water between said containers (par. [0040]).
With regard to claim 2: Cronk et al. discloses that said container (28) is generally a polyhedron in shape (figs. 5 and 8-9).
With regard to claim 3: Cronk et al. discloses said container (28) has at least one water inlet orifice (occupied by irrigation mat 26) (fig. 1)
With regard to claim 4: Cronk et al. discloses that wherein said container (28) has an upper face (at the periphery) adapted to extend principally in parallel with a slope of said roof (figs. 8-9 and 13A-14).
With regard to claim 6: Cronk et al. discloses that the roofing element further comprises a covering device (vegetation) adapted to be able to cover said container (28), said covering device (vegetation) comprising at least one opening adapted to permit the water to pass toward at least one water inlet orifice (occupied by irrigation mat 26) of said container (28) (figs. 8-9 and 13A-14).
With regard to claim 7: Cronk et al. discloses that said covering device (vegetation) has the appearance of tiles (quadrilateral elements) (figs. 13a-13c).
With regard to claim 9: Cronk et al. discloses a roof of a building (abstract), wherein the roof comprises at least one roofing element (module green roof unit 20) comprising a container (28) into which water can be introduced (figs. 1 and 4; par. [0035]), the container (28) comprising:
a receptacle (24) adapted to be able to receive and hold said container (28) in place and to be able to be fixed to the framework of a building (figs. 1, 5, 8-9, 11 and 13A-14).
Cronk et al. discloses that said receptacle (24) having a base (bottom wall 38) and peripheral side walls (40) making it possible to hold said container (28) (figs. 1-2 and 4; par. [0033]),
wherein the container (28) comprises at least one connector (irrigation mat 26) adapted to be able to be connected (via physical contact) to at least one connector (irrigation mat 26) of a separate container (adjacent wall 28) of a separate roofing element so as to enable a flow of the water between said containers (par. [0040]).
With regard to claim 10: Cronk et al. discloses a method for installation of a roof comprising at least one roofing element (module green roof unit 20) comprising a container (28) into which water can be introduced (figs. 1 and 4; par. [0035]), the container (28) comprising:
a receptacle (24) adapted to be able to receive and hold said container (28) in place and to be able to be fixed to the framework of a building (figs. 1, 5, 8-9, 11 and 13A-14).
Cronk et al. discloses that said receptacle (24) having a base (bottom wall 38) and peripheral side walls (40) making it possible to hold said container (figs. 1-2 and 4; par. [0033]),
wherein the container (28) comprises at least one connector (irrigation mat 26) adapted to be able to be connected (via physical contact) to at least one connector (adjacent irrigation mat 26) of a separate container (adjacent wall 28) of a separate roofing element (adjacent module green roof unit 20) so as to enable a flow of the water between said containers (par. [0040]),
wherein:
said receptacle (24) is fixed (at least via friction and loading/weight to resist lateral and vertical movement) to said roof of a building (figs. 5, 8-9 and 13A-14),
said container (28) is disposed inside said receptacle (24) (figs. 1, 3 and 5),
after having put said receptacle (24) and said container (28) in place on said roof, said covering device (vegetation) is fixed above said container (28) (figs. 3, 5, 8-9 and 13A-14).
With regard to claim 11: Cronk et al. discloses the at least one connector (irrigation mat 26) of the container (28) of the at least one roofing element (module green roof unit 20) is connected to the at least one connector (adjacent irrigation mat 26) of the separate container (adjacent wall 28) of the separate roofing element (adjacent module green roof unit 20) separate from said at least roofing element (module green roof unit 20) (fig. 14; par. [0040]).
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(s) 5 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cronk et al. (US 2011/0289839 A1).
With regard to claim 5: Cronk et al. discloses that each water inlet orifice (occupied by irrigation mat 26) of said container (28) is provided with an irrigation line or hose (64), but does not disclose a non-return valve so as to permit water to be introduced into the inside of said container and to prevent the water exiting to the outside of said container.
However, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing element of Cronk et al. to have each water inlet orifice comprising the irrigation line or hose include a non-return valve in order to provide a means of controlling the amount and duration of water being introduced into the container. No new or unpredictable results would be obtained from modifying the roofing element to include a non-return valve to control the amount and duration of water being introduced into the container. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
With regard to claim 8: Cronk et al. discloses the roofing element (20) comprises rails (32 and 70), said receptacle (24) being adapted to be able to be fixed to the framework of a building by means of said rails (figs. 1).
Cronk et al. does not disclose that the rails are formed from at least one material selected from the group formed from metals, metal alloys and composites thereof.
It would have been a matter of obvious design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to form the rails out of from metals, metal alloys or composites since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 233. Metals, metal alloys and composites are a well-known materials for use in rails and would have been an obvious material choice before the effective filing date of the claimed invention for its inherent material properties such as strength and durability.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art are directed to elements/tiles capable of water retention or drainage.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSIE T FONSECA whose telephone number is (571)272-7195. The examiner can normally be reached 7:00am - 3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSIE T FONSECA/Primary Examiner, Art Unit 3633