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 .
Double Patenting
The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-23 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-37 of U.S. Patent No. 12,071,736. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully encompassed by those of U.S. Patent No. 12,071,736.
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) 1-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tyler (US 2008/016759) in view of Kim (US 2005/0120692).
As to claim 1, Tyler discloses a method for controlling water flow along an earth surface, comprising: providing an environmental control device comprising a mesh container 1040 having at least one interior, an exterior surface, and openings of a predetermined approximate size, filling the at least one interior of the mesh container with a filler material; and placing the environmental control device on the earth surface and in a perceived path of the water flow, such that the environmental control device intersects with the perceived path of the water flow in a manner to prevent or slow the water flow.
Tyler does not disclose wherein the mesh comprises biodegradable viscose fibers and wherein the mesh container has a tensile strength of at least about 100 pounds per square inch.
Kim discloses (see para [0030]) a mesh 20 which may be made from biodegradable fiber materials such as wood fibers (i.e. viscose). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make a mesh from biodegradable viscose fibers as disclosed by Kim, since doing so provides the expected benefit of allowing a mesh to degrade thus providing an environmentally safe product.
Tyler does disclose the mesh material can be of any diameter or thickness (see para [0041]) as such providing different degrees of tensile strength. Furthermore, Kim discloses the biodegradable fiber material such as viscose. As such, the biodegradable fiber material (i.e. viscose) is capable of being made to have a desired tensile strength. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to provide a tensile strength of at least about 100 pounds per square inch. because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art.
As to claim 2, Tyler discloses (see para [0044]) including the step of sealing a distal end of the at least one interior prior to filling.
As to claim 3, Tyler discloses (see para [0044]) including the step of sealing a proximal end of the at least one interior after filling.
As to claim 4, Tyler discloses (see para [0044]) wherein the step of sealing the distal or proximal end comprises knitting, sewing, folding, welding, stapling, clipping, clamping, tying, knotting, or fastening the end shut.
As to claim 5, Tyler discloses (see para [0014]) wherein the water flow is runoff or storm water.
As to claim 6, Tyler discloses (see para [0014]) wherein the runoff carries substances which are not desired to spread in an environment.
As to claim 7, Tyler is silent to wherein the mesh container has a tensile strength is measured using ASTM standard testing method D4595. Tyler does not disclose measuring tensile strength using ASTM standard testing method D4595; however, one of ordinary skill in the art before the effective filing date of the claim invention is capable of testing using ASTM standard testing method D4595, since it is a “standard” testing method.
As to claim 8, Tyler discloses (see para [0038]) wherein the mesh container comprises interlaced yarns.
As to claim 9, Tyler discloses (see para [0038]) wherein the yarns are interlaced by knitting or weaving.
As to claim 10, Tyler discloses (see para [0039]) wherein at least some of the yarns comprise two or more different fibrous components.
As to claim 11, Tyler discloses (see para [0039]-[0040]) wherein the fibrous components are selected from the group consisting of viscose, hemp, flax, and cotton fibers.
As to claim 12, Kim discloses wherein the viscose fibers are fabricated from wood, such wood may be considered soft.
As to claim 13, Kim does not disclose wherein the wood is spruce or poplar. 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 use spruce or poplar, since doing so is within the routine skill in the art.
As to claim 14, Tyler in view of Kim are silent to wherein the mesh container has a yarn count of at least 800 deniers. Tyler does disclose the mesh material can be of any diameter or thickness (see para [0041]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to provide a yarn count of at least 800 deniers because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art.
As to claim 15, Tyler discloses (see para [0021]) wherein the filler material is selected from the group consisting of compost, composted organic materials, organic feedstocks, composted products, mulch, wood shavings, alum, lime, clay, pea gravel, gravel, sand, soil, wood chips, bark, peat, soil blends, straw, hay, leaves, sawdust, paper mill residuals, wood wastes, wood pellets, hemp, bamboo, biosolids, coconut fibers, coir, wheat straw, rice straw, rice hulls, oat straw, soybean hulls, palm wastes, palm leaves, agricultural waste products, manure, wool, hair, sugar cane bagasse, seed hulls, jute, flax, hulls, organic waste, cat litter, plant seeds, plugs, sprigs, spores, fertilizers, flocculants, chemical binders, water absorbers and combinations thereof.
As to claim 16, Tyler discloses (see figure 7, para [0117]-[0123]) wherein an interior of a plurality of environmental control devices are filled, and further including the step of placing a plurality of filled environmental control devices on the earth surface and in the perceived path of the water flow, such that the filled environmental control devices intersect with the perceived path of the water flow in a manner to prevent or slow the water flow.
As to claim 17, Tyler discloses (see para [0014]) further including the step of filtering water from the water flow with the environmental control device.
As to claim 18, Tyler discloses (see para [0018]) further including the step of placing an anchoring tool 1048 (i.e. stake/anchor) through an additional mesh interior of the environmental control device, and securing the environmental control device onto the earth surface.
As to claim 19, Tyler discloses (see para [0014]) wherein the step of placing comprises positioning the environmental control device such that the water flow obstructed by the environmental control system is diverted to a different area to create a runoff diversion.
As to claim 20, Tyler discloses (see para [0014]) wherein the earth surface is a coastal surface.
As to claim 21, Tyler discloses (see para [0014]) wherein the environmental control device is utilized to prevent erosion of an earth surface.
As to claim 22, Tyler discloses (see para [0014]) wherein the environmental control device is used in an application selected from the group consisting of erosion control, sediment control, perimeter control, sediment trap, sediment barrier, slope interruption, check dam, inlet protection, runoff diversion, concrete washout, biofiltration, bioswale, passive filtration, stormwater filtration, wastewater filtration, riser pipe filtration, stormwater pretreatment, wastewater pretreatment, bank stabilization, channel restoration, stream restoration, riparian restoration, wetland restoration, living shoreline restoration, oyster bag restoration, and combinations thereof.
As to claim 23, Tyler discloses (see para [0039]) wherein the mesh container degrades within thirty-six months of placement on the earth surface.
Response to Arguments
Applicant's arguments filed 2/12/ 26 have been fully considered but they are not persuasive. Applicant argues that it would not have been obvious to provide the mesh container has a tensile strength of at least about 100 pounds per square inch. As stated above, Tyler discloses the mesh container and Kim discloses a mesh container made form biodegradable fibers such as viscose. As such, the viscose material is capable of being made to have any desired tensile strength. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to provide a tensile strength of at least about 100 pounds per square inch. because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art.
Terminal Disclaimer
The terminal disclaimer does not comply with 37 CFR 1.321 because:
This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b).
Please submit a Power of Attorney that gives power to the attorney who is signing the Terminal Disclaimer, along with another copy of the TD, or file a TD that is signed by the applicant. Please resubmit the TD. No fee required.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FREDERICK L LAGMAN whose telephone number is (571)272-7043. The examiner can normally be reached Tuesday-Friday 8am-6:00pm.
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/FREDERICK L LAGMAN/Primary Examiner, Art Unit 3678
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