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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it includes implied phraseology (“the invention relates to”), and is not written in narrative form (this is a single, incredibly run-on, sentence, which is confusing, given all the semi-colons, and sub lists, particularly in which elements are part of what other elements – for example, from this sentence alone, it is unclear how the inlet relates to the invention. Overall, the abstract fails to clearly assist the reader in determining the invention). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(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.
Claim 17 is 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 17 recites “when present, the second void space comprises”. “when present” in this limitation makes the scope of the claim unclear. Particularly it casts doubt on whether the applicant is attempting to broaden the scope of claim 1 in claim 17, because claim 1 requires a second void space, and it is unclear, given ‘when present’, whether the second void space is required in claim 17.
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.
Claims 1-2, 4-16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Filippi (FR 3064285 A1, as cited on previous 892) in view of Hempenius (US 2015/0216132, as cited on previous 892) and Douwenga (WO 2022101357, as cited on previous 892), hereinafter referred to as Filippi, Hempenius and Douwenga, respectively.
Regarding claim 1:
Filippi discloses a plant growth system (Abstract) comprising:
a container (second element 3) having a base and side walls formed from water impermeable material (see annotated Fig 1 below; Pg 4, 4th bullet up from bottom) wherein the container comprises within:
a layer of buffer material (first element 2, Fig 1) for absorbing storm water (intended use: capable of absorbing storm water; Pg 4, 5th bullet up from bottom);
a first void space (see annotated Fig 1 below); and
a second void space (see annotated Fig 1 below);
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wherein the layer of buffer material has a first side surface, a second side surface and a bottom surface (see annotated Fig 1 below), wherein the bottom surface of the layer of buffer material is in direct contact with the base of the container (see Fig 1); and
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wherein the first void space is in fluid communication with the first side surface of the layer of buffer material (see Fig 1);
an inlet for water to enter the first void space of the container (fitting 5, Fig 1; Pg 4, 2nd to last ¶);
a plant growth substrate layer (substrate 6, Fig 1), positioned above the layer of buffer material and in fluid communication with the layer of buffer material (see Fig 1; Pg 3: “this water is used to feed the plants on the one hand by capillarity of the main water reserve located under the substrate”); and
an outlet for excess water to leave the layer of buffer material (overflow 7, Fig 1),; wherein the second void space is in fluid communication with the second side surface of the layer of buffer material and the outlet (see Fig 1), wherein the first void space and second void space are configured so that water entering the first void space through the inlet passes through the layer of buffer material before it is able to enter the second void space (see Fig 1 – buffer material between inlet/first void space and outlet/second void space).
Filippi fails to specifically disclose that the buffer material comprises man-made vitreous fibres (MMVF) bonded with a cured binder composition, and fails to explicitly disclose that water entering the first void space through the inlet must pass through the layer of buffer material before it is able to enter the second void space, as it is not specified, that the layer of buffer material extends along the entire width of the container (water can’t go around the buffer layer).
Hempenius discloses a similar multi-layer planter system, with a plant growth substrate layer (block 2, Fig 4), and a porous water retaining/distributing buffer layer (slab 1, Fig 4; ¶0012; ¶0019; ¶0166) below the plant growth substrate layer, the buffer layer being formed of a material comprising man-made vitreous fibres (MMVF) bonded with a cured binder composition (¶0094-0096)
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have replaced the porous buffer material of Douwenga of that of Hempenius, including MMVFs bonded with a cured binder composition, the result having a reasonable expectation of success. One would have been motivated to make this modification in order to optimize water retention of the buffer material, and uniform water redistribution to the plant in the above substrate for optimized growth (¶0009-0011; ¶0019; ¶0026; ¶0028). Further, 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 416.
Douwenga discloses a similar multilayer planter with a container (tray 33, Fig 4), with a buffer material layer (porous member 35, Fig 4), and a plant growth substrate layer above the buffer material layer (Pg 4, ¶2; Pg 4, last ¶); wherein the buffer material extends along the entire width of the plant growth substrate layer and container width (see Fig 3).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have specifically provided the buffer material layer of Filippi such that it extends along the entire width of the container (into/out of screen in Fig 1), as in Douwenga, the result having a reasonable expectation of success. One would have been motivated to make such a modification in order to optimize water storage volume in relation to the size of the planter, and to ensure a more even capillary distribution of water from the buffer material layer to the plant growth substrate layer. Further, it has been held that there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Regarding claim 4:
Filippi as modified discloses the limitations of claim 1 above, and further discloses wherein the layer of buffer material occupies at least 50% of the volume in the container under the plant growth substrate layer (see Fig 1 of Filippi where more than 50% of cross-sectional area is occupied by the buffer material, and rejection of claim 1 above; ensuring the width extended the length of the container, as in Douwenga, would result in the buffer layer occupying at least 50% of the volume in the container under the plant growth substrate layer.).
Regarding claim 5:
Filippi as modified discloses the limitations of claim 1 above, and further discloses wherein at least 50% of the area of a bottom surface of the plant growth substrate layer is in fluid communication with the layer of buffer material (see Figs 1-2).
Regarding claim 6:
Filippi as modified discloses the limitations of claim 1 above, and further discloses wherein the first void space is in fluid communication with at least 25% of the surface area of the first side surface of the layer of buffer material (see Fig 1; border of void space determined by first side surface; 100% of surface area in fluid communication with void space).
Regarding claim 7:
The modified reference discloses the limitations of claim 1 above, and Hempenius further discloses wherein the layer of buffer material has a density in the range of 70 to 200 kg/m^3 (¶0040).
Regarding claim 8:
The modified reference discloses the limitations of claim 1 above, and Hempenius further discloses wherein the layer of buffer material is hydrophilic (¶0042).
Regarding claim 9:
The modified reference discloses the limitations of claim 8 above, and Hempenius further discloses wherein the layer of buffer material has a contact angle with water of less than 90deg (hydrophilic per ¶0042) and/or a hydraulic conductivity of 5m/day to 300 m/day.
Regarding claim 10:
The modified reference discloses the limitations of claim 1 above, and Hempenius further discloses wherein the layer of buffer material comprises MMVF having a geometric fibre diameter of 1.5 to 10 microns (¶0124).
Regarding claim 11:
The modified reference discloses the limitations of claim 1 above, and Hempenius further discloses wherein the layer of buffer material comprises coherent MMVF bonded with a cured binder composition (¶0094-0096; ¶0002).
Regarding claim 12:
The modified reference discloses the limitations of claim 1 above, and Hempenius further discloses wherein the predominant fibre orientation of the layer of buffer material is vertical or horizontal with respect to the base of the container (¶0049).
Regarding claim 13:
Filippi as modified discloses the limitations of claim 1 above, and further discloses wherein the layer of buffer material has a height in the range of 5cm to 50cm (Pg 5, ¶2: .5m = 50cm; see also Hempenius ¶0076).
Regarding claim 14:
Filippi as modified discloses the limitations of claim 1 above, and further discloses a storm water overflow (overflow 7, Fig 1) positioned above the inlet (taller than inlet, as seen in Fig 1) and in fluid communication with the first void space (see Fig 1).
Regarding claim 15:
Filippi as modified discloses the limitations of claim 1 above, and further discloses a water impermeable overflow wall (left side of overflow 7, Fig 1) positioned very close to the second side surface (see Fig 1 ); wherein the water impermeable overflow wall extends from the base of the container up along the second side surface (see Fig 1).
Filippi as modified discloses the claimed invention except that the water impermeable overflow wall is positioned in direct contact with the second side surface. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the overflow 7 in direct contact with the second side surface, the result having a reasonable expectation of success, to provide additional support to help retain the buffer material in its present position, since it has been held that rearranging parts of an invention involves only routine skill in the art. See MPEP § 2144.04(VI)(C); In re Japikse, 86 USPQ 70 (CCPA 1950); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
Regarding claim 16:
Filippi as modified discloses the limitations of claim 1 above, and further discloses a water-permeable layer between the layer of buffer material and the plant growth substrate layer (porous geotextile 6b, Fig 1).
Regarding claim 18:
Filippi as modified discloses the limitations of claim 1 above, and further discloses wherein the container is formed of foil, plastic, corrugated plastic, or a combination thereof (Pg 4, fourth bullet from the bottom).
Regarding claim 19:
Filippi as modified discloses the limitations of claim 1 above.
Filippi as modified fails to specify wherein the plant growth substrate layer comprises soil, man-made vitreous fibres, peat, wood chip, vermiculite, perlite, sand, coco fibres or a combination thereof.
However, Hempenius further discloses that the top, plant growth substrate layer comprises man-made vitreous fibres (¶0086; Abstract).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have provided Filippi with a plant substrate layer of man-made vitreous fibres, as in Hempenius, the result having a reasonable expectation of success. One would have been motivated to make such a modification in order to provide a medium with suitable water retention and distribution properties to ensure optimal plant growth. Further, 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 416.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Filippi, Hempenius and Douwenga, as applied to claim 1 above in view of Surre (FR 3083538 A1, as cited on previous 892), hereinafter referred to as Surre.
Regarding claim 3:
Filippi as modified discloses the limitations of claim 1 above.
Filippi as modified fails to specifically disclose:
a removable MMVF filter that forms the first side surface of the layer of buffer material; and/or
a removable MMVF filter in the inlet.
Surre discloses a rainwater collection and filtration device that is contemplated to be used for watering plants (Pg 5, ¶ starting with “the outlet body 50”) comprising an outlet (outlet 102, Fig 1) for supplying the rainwater to its subsequent use, and a removable MMVF filter in the outlet (inspection pad 52, Fig 1; 52 includes second filter membrane made of glass fibers per Pg 5, last 5 lines; material capable of being removed by being cut out, etc.).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the inlet of Filippi (which is the outlet of the rain collecting downspout from the roof into the container per Pg 4, 2nd to last ¶) to have included a filtration device therein, as in Surre, the result having a reasonable expectation of success. One would have been motivated to make such a modification because, as disclosed in Surre, a glass fiber filter helps filter certain microorganisms, in particular organisms such as e-coli, thereby clarifying the rainwater (Pg 6, lines 1-3), such microorganisms may be harmful to plants or contaminate edible crops, making them harmful to eat.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Filippi, Hempenius and Douwenga, as applied to claim 1 above in view of Li (CN 112391997 A, as cited on previous 892), hereinafter referred to as Li, as best understood in light of the 112(b) rejections addressed above.
Regarding claim 17:
Filippi as modified discloses the limitations of claim 1 above.
Filippi fails to disclose wherein the layer of buffer material and/or, when present, the second void space comprises an air vent configured to allow air to pass out of the layer of buffer material as water enters the layer of buffer material.
Li discloses a rainwater collection and storage system with plant growth elements, wherein the water storage chamber (water storage chamber 16, Fig 1) comprises an air vent (ventilating pipe 17, Fig 1) configured to allow air to pass out of the chamber as water enters the chamber (Pg 6, last ¶ - Pg 7, line 1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the water storage chamber(i.e. buffer layer) of Fillipi to include a ventilating pipe, as in Li, the result having a reasonable expectation of success. One would have been motivated to make such a modification because, as disclosed in Li, a ventilating pipe ensures that the space in the water storage chamber may be used to its fullest extent (no volume unoccupiable, due to stuck air unable to move elsewhere; Pg 6, last ¶ - Pg 7, line 1).
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive.
On pages 9-10 the applicant remarks that the storage element 2 (aka buffer layer) is made of an ultralight honeycomb or expanded clay to provide a very large void volume, and therefore cannot function as a filter of the water stored therein, and does not provide, or suggest the level of filtration that is achieved by the present invention. Further, the applicant remarks that Hempenius fails to suggest that MMVF is suitable for filtering water.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a specific level of filtration ability by the layer of buffer material) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, even this certain filtration ability was recited, it would appear that, given the applicant’s buffer material is MMVFs and Hempenius teaches the MMVF material, that such ability would be inherent to the combined prior art.
On page 10, the applicant contends that there is no suggestion that MMVF would be a suitable material for accommodating a large volume of water in a short time period and therefore there is no motivation to replace the storage element material of Filippi with MMVF. The applicant further contends that unless the prior art suggested the desirability of the modification, the modification would not be made by one of ordinary skill in the art, and that there is no reason to modify Filippi with Hempenius.
The examiner respectfully disagrees. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, one would have been motivated to make this modification in order to optimize water retention of the buffer material, and uniform water redistribution to the plant in the above substrate for optimized growth (¶0009-0011; ¶0019; ¶0026; ¶0028). The cited sections of Hempenius mention the excellent water retention and metered distribution by MMVF, thereby providing motivation to a person having ordinary skill in the art to use the material of Hempenius in the system of Filippi, in which water retention and distribution is similarly important. Further, 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 416. In regard to the applicant’s implication that MMVF could not store a large volume of water, as in Filippi, and therefore would make Filippi inoperable, the examiner respectfully disagrees, pointing again to the cited sections of Hempenius, particularly as they discuss water retention.
On page 10, the applicant argues that it would not be obvious to extend the layer of buffer material along the entire width of Filippi, based on Douwenga, given Douwenga does not provide motivation for such a modification.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would be within the knowledge of one of ordinary skill in the art that extending a dimension of the buffer layer would allow for increased water storage capacity, optimized based on the size of the planter, and more uniform distribution to the plant growth substrate, which lies above the buffer layer.
On pages 10-11, the applicant contends that, in Douwenga, water in the system as a whole could enter and leave the reservoir below the buffer layer without passing through the buffer material, and that the principle of operation of Douwenga is entirely different to that of Filippi where the storage element is not suspended above a water reservoir. The applicant seems to imply that extending the buffer layer would change the principle of operation of Filippi.
The examiner respectfully disagrees. Although it is inconsequential to the validity of the obviousness rejection, for the sake of clarity of the record, the examiner notes that their interpretation of an analogous ‘outlet’ and ‘inlet’ in Douwenga do not include the outlet 53 which the applicant mentioned, but rather are as annotated in Fig 4 below, so, although it is not being relied on for the water having to pass through the buffer layer to get from the inlet to the outlet (that is an inherent functional capability of Filippi when the buffer layer is extended), Filippi does teach, given the interpretations below, that water entering the inlet must pass through the buffer layer to get to the outlet. More importantly, the examiner asserts that simply extending the buffer material layer of Filippi by its width would not change the principle of operation of Filippi, rather it would have predictable results of simply increasing the water storage capacity of the buffer layer material, given storage volume is clearly related to material volume. The examiner did not, and is not, suggesting adding a reservoir below Filippi, as Douwenga has. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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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 BROOK V SCHMID whose telephone number is (571)270-0141. The examiner can normally be reached M-F 8:30-5:30ish.
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/B.V.S./Examiner, Art Unit 3642
/JOSHUA D HUSON/ Supervisory Patent Examiner, Art Unit 3642