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 .
Comment on Claim Numbering
The original claims in this application included several numbering errors: a single claim was indicated as both claims 13 & 14 [“13. 14. The apparatus of…”], with the following claim indicated as claim 15, and the final claim after that again labelled as claim 13.
In a preliminary amendment filed 16 December 2024, applicant corrected “13. 14.” to simply read “13.”, and corrected the second “13.” be “16.”. As a result, there is no claim 14. To avoid confusion and to ensure compliance with 37 CFR 1.121(c), all future claim listings should indicate claim 14 as cancelled [i.e. “14. (Canceled)”].
In view of the above, claims 1-13 & 15-16 are presently pending.
Drawings
The drawings are objected to because figure 5 is a photograph.
Photographs are not ordinarily permitted in utility and design patent applications [37 CFR 1.84(b)(1)]. While the Office will accept photographs if photographs are the only practicable medium for illustrating the claimed invention (e.g. cell cultures, crystalline structures, etc.), the photographs must show the invention more clearly than can be done by India ink drawings, which is not the case here.
When the subject matter of the application admits of illustration by a drawing, as it does here, 37 CFR 1.84(b)(1) authorizes an examiner to require a drawing in place of the photograph. See MPEP § 608.02(VII)(B).
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.
Specification
The disclosure is objected to because of the following informalities:
Para. 9, line 6: “gully’s” should read “gullies”.
Para. 22, lines 6-9: a word or phrase appears to be missing after both instances of “used herein to” (e.g., “used herein to mean”, or “used herein to designate”, etc.)
Para. 38, line 4: “3Dprinted” should read “3D printed” or similar.
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 1-13, 15 & 16 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 1 recites “a first shell” (line 1) but then later recites “the first layer”. As best understood, they are intended to refer to the same element (see para. 24: “a first outer shell 180 (which may also be referred to as a first layer”) but this is not made clear in the claims, so they might be seen to refer to different components, rendering the claim indefinite.
It is noted that the term “first layer” is later used in claims 8 & 10, while the term “first shell” is layer used in claim 11. Consistent terminology should be used throughout the claims.
Claim 1 further recites “wherein the internal plenum is configured to modulate at least a portion of the egress flow as it passes through the internal plenum”. As best understood, however, the flow is not modulated by the internal plenum itself, as appears to be claimed, but by a first matrix material (e.g., a porous filler) or baffle structure provided within the internal plenum, causing the claim to take on an unreasonable degree of uncertainty.
Claim 3 recites “a second layer positioned within the first matrix for at least partially housing an internal compartment” however, as best understood, there is no such disclosure of any “second layer” positioned with the “first matrix”.
Instead, as explained in paragraph 28, the “second outer shell 160 (which may be referred to as a second layer)” is positioned around the first layer (first outer shell 180), forming a “second internal compartment 190 (which may also be referred to as a second internal plenum” in which a second matrix (120) may be provided.
As set forth in MPEP § 2173.03, a claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971).
To promote compact prosecution, claim 3 will be interpreted as consistent with the disclosure and figures: the second layer positioned around the first layer (rather than within the first matrix), defining the internal compartment and having a second opening that is releasably connectible to the point of egress from the downspout.
Claim 4 recites “the second internal component” which lacks proper antecedent basis. This was likely intended to reference the “internal compartment” formed by the second layer.
Claim 7 recites “wherein the first material and the second material are compostable, biodegradable, or a combination thereof”, which raises several issues.
First, “the second material” lacks proper antecedent basis. This was likely intended to refer to the “fibrous material” of second matrix in claim 4 (or a material of the second matrix, generally, which may include the fibrous material).
Additionally, the phrase “or a combination thereof” in this context is ambiguous or vague. It is unclear if this means that each of the first material and second material may be partially compostable and partially biodegradable, or if this means that one of the first or second materials may be compostable, and the other may be biodegradable.
Claim 10 recites “wherein the first layer and the second layer are compostable, biodegradable, or any combination thereof”. The phrase “or any combination thereof” in this context is ambiguous or vague. It is unclear if this means that each of the first layer and second layer may be partially compostable and partially biodegradable, or if this means that one of the first or second layer may be compostable, and the other may be biodegradable.
Claim 15 recites “wherein the apparatus is releasably connectible to the downspout by a compostable material, a biodegradable material, or a combination thereof”. The phrase “or a combination thereof” in this context is ambiguous or vague. It is unclear if this means that the material connecting the apparatus to the downspout may be partially compostable and partially biodegradable, or if this means that the apparatus may be connectable to the downspout by a combination of compostable materials and biodegradable materials.
Claim 16 recites “wherein the internal plenum is configured to modulate at least a portion of the egress flow”. As best understood, however, the flow is not modulated by the internal plenum itself, as appears to be claimed, but by a first matrix material (e.g., a porous filler) or baffle structure provided within the internal plenum, causing the claim to take on an unreasonable degree of uncertainty.
Claims recited in the section heading above but not specifically discussed are rejected due to dependency upon at least one rejected 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 (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 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.
Claims 1, 11-13 & 16 (as understood) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Denooy et al. (US 2008/0251150 A1; hereafter Denooy).
Regarding claim 1, Denooy discloses (figs. 1, 2A-G, 5) an apparatus (10) for modulating an egress flow of fluid from a downspout (12), the apparatus comprising:
a first shell [layer] (16; incl. 22, 24, 26) that is releasably connectible proximal to a point of egress from the downspout (see figs. 1, 2A & 2F), the first layer defining a first opening (18) and an internal plenum (see fig. 2F), and wherein the first opening is configured to receive and direct the egress flow (46) through the internal plenum (see fig. 2F), wherein the internal plenum is configured to modulate at least a portion of the egress flow as it passes through the internal plenum (i.e., via internal baffles as shown; see paras. 1, 8 & 39).
Examination Note: to promote compact prosecution, see also US 2,721,660 to Woodrow and US 2013/0057723 A1 to Luneckas et al.
Regarding claim 11, the apparatus of Denooy reads on the additional limitations wherein the first shell [layer] (16) is made of a rigid material (e.g., “a plastic or metal material like the gutter system”, para. 31, lines 14-22; see also para. 35, lines 6-12) that defines the first opening and the internal plenum (as shown), wherein the internal plenum defines one or more baffles (incl. at least 32, 34, 64, 66) that define a circuitous flow path for directing the egress flow therethrough (see. fig. 2F).
Note: common and accepted definitions of “circuitous” include “deviating from a straight course” and “not straight or direct”.
Regarding claim 12, the apparatus of Denooy reads on the additional limitation wherein the rigid material comprises plastic, metal, glass, wood, organic fibre, or any combination thereof (para. 31, line 17-20: “the body 16 may be constructed of a plastic or metal material like the gutter system 14…”).
Regarding claim 13, the apparatus of Denooy reads on the additional limitations wherein the apparatus (10) is releasably connectible to the downspout (12) by a zip tie, a hose clamp, a string, a rope, a rubber band, a downspout connector, a downspout adaptor, or any combination thereof.
Denooy discloses that the apparatus may be connected to the downspout (12) by a downspout adaptor (52), and suggests that the apparatus may be provided with different adaptors (see fig. 2G) to enable the apparatus to connect to different styles of gutter / downspout (see para. 32).
Regarding the limitation wherein the apparatus is “releasably” connected, Denooy disclose that apertures “44” are provided (see figs. 2B-C) to secure the apparatus to a surface to prevent detachment from the downspout by a force of water or “unintentional contact” (see para. 33). Thus, the apparatus is reasonably seen to be “releasably connectible to the downspout”.
Regarding claim 16, the apparatus of Denooy, in its normal and usual operation, reads on a method for modulating an egress flow from a downspout, the method comprising:
(a) providing the apparatus (1) of claim 1; and
(b) releasably connecting the apparatus (via an appropriate adaptor 52) proximal to an egress point of the downspout (12; see figs. 1, 2A & 2F) wherein the internal plenum is configured to modulate at least a portion of the egress flow (i.e., via the baffles; see paras. 1, 8 & 39).
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, 8, 13 & 16 (as understood) are rejected under 35 U.S.C. 103 as being unpatentable over Bussey et al. (US 2008/0107482 A1; hereafter Bussey) in view of Mackintosh et al. (US 2023/0034568 A1; hereafter Mackintosh).
Regarding claim 1, Bussey discloses (fig. 1) an apparatus (10) for modulating an egress flow of fluid from a drain pipe (14), the apparatus comprising:
a first shell [layer] (11) that is releasably connectible proximal to a point of egress from the drain pipe (as shown, via tie means 13), the first layer defining a first opening (i.e., where pipe 14 is partially inserted) and an internal plenum (containing first material 12), and wherein the first opening is configured to receive and direct the egress flow (via the pipe 14) through the internal plenum, wherein the internal plenum is configured to modulate at least a portion of the egress flow as it passes through the internal plenum (i.e., the first material 12 in the internal plenum would serve to restrict / diffuse / modulate egress flow from the pipe).
Bussey does not explicitly disclose the drain pipe to be a downspout, however, it is noted that the downspout itself does not appear to be a positively recited element of the claimed invention. As set forth in MPEP 2115, a claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
The claim is directed to an apparatus for modulating an egress of fluid from a downspout, wherein the first shell is releasable connectible to a downspout, but these recitations appear to be limited to intended use. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim [MPEP § 2114(II)].
However, to promote compact prosecution, the following additional teaching is provided.
Mackintosh teaches (figs. 1-6) an apparatus comprising a first layer (i.e., a permeable filter portion 20) which is releasably connectible to the end of a downspout (12), via a connector (40; see paras. 25 & 26), the apparatus configured to allow egress flow of water while retaining debris (see abstract).
Note: see also replacement / formal drawings in US 12,234,560 B2, corresponding to the patent issued from the same application published as US 2023/0034568 A1.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Bussey such that the drain pipe to which the first shell layer is releasably connected is a downspout (whereby the egress flow modulated by the apparatus would be an egress flow of fluid from said downspout), in view of the teachings of Mackintosh, as a combination of known prior art elements (i.e., the drainage apparatus of Bussey, configured to attach to the end of a drain pipe; and a downspout, i.e., a drainpipe from a gutter / eaves trough system, as in Mackintosh or as otherwise conventional) according to known methods (i.e., Bussey already discloses connecting the first opening to a drain pipe generally; Mackintosh teaches that a permeable filtering device may be releasably connected to the end of a downspout in particular) to obtain predictable results (e.g., providing for an arrangement where egress flow from the downspout may be filtered and modulated for dispersal into the surrounding terrain in a controlled manner, etc.).
Regarding claim 8, the apparatus of Bussey, as modified above, reads on or otherwise renders obvious the additional limitation wherein the first layer comprises netting, mesh, webbing, lace, screening, tulle, veiling, or any combination thereof.
Bussey discloses that the first layer (11) may comprise a water-permeable membrane with “a plurality of interstices sized for the passage of water therethrough and the filtering of fine particles of solid material from the water” (see abstract; para. 45). Bussey later suggests that the first layer may be “a spun bonded”, “non-woven material” (para. 46).
A first layer formed from such a material is reasonably seen to read on the limitation wherein first layer comprises “netting, mesh, webbing, lace, screening, tulle, veiling, or any combination thereof” (e.g., such a spun-bonded non-woven material may be reasonably seen at least as a mesh, a lace, or a screening).
To promote compact prosecution, it is noted that Bussey also proposes that “Of course, any other suitable material may be used for the membrane so long as the characteristics of strength, permeability, filtering and flexibility are provided” (para. 48) and, in the prior art section, Bussey explains that known prior art drainage devices utilize “netting” for the corresponding component (see paras. 2-6).
Finally, it is noted that Mackintosh teaches that a first layer (filtering portion 20) may be formed from “netting, screen, mesh, or other material having consistent or variable size apertures 26 for collecting debris…above a given size and allowing liquids and/or particulate below the given size to pass therethrough” (para. 21, lines 3-7).
Regarding claim 13, the apparatus of Bussey, as modified above, reads on or otherwise renders obvious the additional limitation wherein the apparatus is releasably connectible to the downspout by a zip tie, a hose clamp, a string, a rope, a rubber band, a downspout connector, a downspout adaptor, or any combination thereof.
Bussey originally discloses that the apparatus is releasably connectible to the drain pipe (corresponding to the downspout of Mackintosh) via a “tie means 13, for example in the form of ties” (para. 43). From the figures, the ties 13 may be reasonably seen to correspond to a string or a rope. However, to promote compact prosecution, it is noted that Mackintosh explicitly teaches that an apparatus may be releasably connectible to a downspout by a “securing portion 40” which “may permit relatively quick and easy attachment and removal” of the apparatus “in a [non-permanent] manner” (para. 25).
Mackintosh teaches that such securing means may be in the form of “one or more elastic bands…cable ties (i.e. zip ties), belts, rope, tape, adhesives, relatively high frictions surfaces, combinations thereof, or the like” (para. 25).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Bussey such that the apparatus is releasably connectible to the downspout by a zip tie, a hose clamp, a string, a rope, a rubber band, a downspout connector, a downspout adaptor, or any combination thereof (e.g., a cable/zip tie, a rope, an elastic/rubber band, and combinations thereof), in view of the teachings of Mackintosh, as the simple substitution of one known means for fastening an open end of a first layer/shell to the end of a pipe/spout (i.e., the original tie means of Bussey) for another (e.g., a cable/zip tie, a rope, an elastic/rubber band, or combinations thereof, as taught by Mackintosh) to obtain predictable results (e.g., to enable the apparatus to be non-permanently attached to and removed from the downspout in a relatively quick and easy manner, as suggested by Mackintosh).
Regarding claim 16, the apparatus of Bussey, as modified above, in its normal and usual operation performs or otherwise renders obvious a method for modulating an egress flow from a downspout, the method comprising:
(a) providing the apparatus of claim 1 (see grounds of rejection for claim 1); and
(b) releasably connecting the apparatus (e.g., via the tie means 13) proximal to an egress point of the downspout (i.e., in view of the teachings of Mackintosh; corresponding to the drain pipe 14 of Bussey; as in claim 1) wherein the internal plenum (containing first material 12) is configured to modulate at least a portion of the egress flow (i.e., the first material 12 in the internal plenum would serve to restrict / diffuse / modulate at least a portion of the egress flow).
Claims 2 & 5 (as understood) are rejected under 35 U.S.C. 103 as being unpatentable over Bussey in view of Mackintosh as applied to claim 1 above, and further in view of Faucette (US 2023/0020313 A1).
Regarding claims 2 & 5, the apparatus of Bussey further comprises a first matrix (12) at least partially housed within the internal plenum (see fig. 1).
Bussey explains that the first matrix (12) may be an aggregate. In one example, Bussey suggests the first matrix may be an “expanded thermoplastic”. With respect to the limitation of claim 2 wherein the first matrix comprises a first material that is configured to absorb at least a portion of the egress flow, it is noted that unless the expanded thermoplastic was formed entirely of closed cells, and was not otherwise hygroscopic, the first material would reasonably be configured to absorb at least a portion of the egress flow. However, to promote compact prosecution with respect to the above limitation of claim 2, and to address the limitation of claim 5 wherein the first material comprises vermiculite, clay, sponge, activated carbon, soda lime, napkins, paper towels, anhydrous calcium chloride, allochroic silica gel, sodium polyacrylate, or any combination thereof (which is not explicitly disclosed by Bussey), the following additional teaching is provided.
Faucette is generally directed to an apparatus for filtering contaminants or pollutants from water, such as stormwater or rainwater, the apparatus comprising a first layer (140) defining an internal plenum and a first matrix (110) configured to absorb at least a portion of the egress flow (e.g., absorbing at least some pollutants which may be within the flow).
Faucette suggests that the first matrix (110) may comprise activated carbon and compost particles (see para. 12), wherein the compost particles may comprise a range of materials including clay and lime (see para. 16; see also paras. 39-42).
Faucette explains that stormwater includes rainwater plus debris and particulates captured by the rainwater and can therefore be a source of pollutants (see paras. 3-5). To combat this, Faucette explains that it is known to trap and filter stormwater, typically using a granular medium within a tubular mesh, which filters as water flows through (paras. 6-8).
Faucette suggests that, by using a composition including activated carbon and compost particles, the first matrix material can absorb a broader range of industrial pollutants than conventional filters (see 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 modify the apparatus of Bussey such that the first matrix at least partially housed within the internal plenum comprised a first matric material configured to absorb at least a portion of the egress flow (e.g., pollutants within the egress flow)(as in claim 2), wherein the first material comprises vermiculite, clay, sponge, activated carbon, soda lime, napkins, paper towels, anhydrous calcium chloride, allochroic silica gel, sodium polyacrylate, or any combination thereof (e.g., activated carbon and/or clay)(as in claim 5), in view of teachings of Faucette, to enable the first matrix to remove pollutants, including industrial pollutants, from the incoming stormwater to prevent such pollution from flowing further into the environment with the rainwater (as suggested by Faucette).
Examination Note: to promote compact prosecution, it is noted that the use of vermiculite as a filtering aggregate media is otherwise taught by US 9,273,440 to Moore, Jr., cited below.
Claims 3, 9 & 10 (as understood) are rejected under 35 U.S.C. 103 as being unpatentable over Bussey in view of Mackintosh and Faucette as applied to claim 2 above, and further in view of Moore, Jr. et al. (US 9,273,440; hereafter Moore).
Regarding claim 3, Bussey does not explicitly disclose the apparatus to further comprise a second layer position around the first layer for at least partially housing an internal compartment (see related 35 USC 112(b) rejection), the second layer having a second opening that is releasably connectible to the point of egress from the downspout.
Moore teaches (figs. 19, 19A, 20; see also related figs. 1-4) a drainage apparatus comprising a first layer (e.g., first sleeve / netting 24 and/or first fabric layer 32) defining an internal plenum filled by a first matrix (26) and a second layer (second sleeve / netting 55 and/or second fabric layer 34) positioned around the first layer forming an internal compartment for housing a second matrix (i.e., matrix 36 within “quilt” 30), the second layer having a second opening that is connectible (via a tie wrap 57) to a central pipe (22; see fig. 20 & col. 15, lines 46-49).
Moore explains that the first matrix may be coarser than the second matrix, where the first matrix serves to provide structural integrity to the apparatus, maintaining internal space and distributing the flow, while the second matrix serves as a finer filter for the egress flow (cols. 6-9, generally).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Bussey to further comprise a second layer positioned around the first layer for at least partially housing an internal component (i.e., for receiving a second matrix), the second layer having a second opening that is releasably connectible to the point of egress from the downspout (i.e., the drain pipe), in view of the teachings of Moore, as the use of a known technique (i.e., providing a drainage / filtering apparatus with a second permeable mesh / netting layer around a first permeable mesh / netting layer to define a space for receiving a second filtering matrix material, as in Moore, to improve a similar device (i.e., the apparatus of Bussey, having a first such permeable mesh / netting layer) in the same way (e.g., providing for a second filtering / diffusing stage, whereby the second stage may comprise finer passages to filter smaller particulates and/or may serve to prevent smaller environmental particulates from moving backward into the larger interstitial spaces of the first matrix, etc.).
Regarding claim 9, the apparatus of Bussey, as modified above, reads on or otherwise renders obvious the additional limitation wherein the second layer comprises netting, mesh, webbing, lace, screening, tulle, veiling, or any combination thereof. As noted for claim 8 above, Moore teaches that the second layer may comprise a “second sleeve of netting 55” and/or a fabric layer 34, which may be seen as a mesh, webbing, or screening.
Regarding claim 10, Mackintosh further teaches that the first layer (20; i.e., netting, screen, mesh, etc.) “may be fabricated from a material that is biodegradable”, for example “jute, twine, hemp, organic materials” and combinations thereof (para. 35).
Faucette also teaches that such a first layer (i.e., a mesh) can be made from a material which is “biodegradable, such as cotton, a natural fiber” or “biodegradable polymer, such as plastic and/or starch” (para. 51). “In certain embodiments, the mesh material can be selected to biodegrade within about 1 month to 3 years” (para. 52).
It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify the apparatus of Bussey such that the first layer and the second layer are compostable, biodegradable, or any combination thereof (e.g., biodegradable), in view of the teachings of Mackintosh and/or Faucette, as the use of a known technique (i.e., forming a netting/mesh/screening component of a rainwater/drainage filtering device from biodegradable materials such as jute, twine, hemp, organic materials, etc., as suggested by Mackintosh, or from cotton, natural fibers, or biodegradable polymers, as suggested by Faucette) to improve a similar device (i.e., the first and second layers of the apparatus of Bussey [as modified above]) in the same way (e.g., enabling environmentally conscious disposal means), especially considering that 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.
Claims 4, 6 & 7 (as understood) are rejected under 35 U.S.C. 103 as being unpatentable over Bussey in view of Mackintosh, Faucette and Moore as applied to claim 3 above, and further in view of Zock et al. (US 2019/0388806 A1; hereafter Zock).
Regarding claims 4 & 6, the apparatus of Bussey reads on the additional limitation wherein the apparatus further comprises a second matrix within the second internal component (i.e., corresponding to second matrix 36 of Moore, generally).
With respect to the limitations wherein the second matrix comprises a fibrous material (as in claim 4), and wherein the fibrous material comprises hemp, straw, cotton, flax, wool, jute, linen, silk, or any combination thereof (claim 6), it is noted that Faucette further teaches that the compost particles (which may comprise at least part of the first matrix) may comprise hemp, straw, flax, wool, jute, and other organic materials (para. 16), however, it is unclear if these materials remain fibrous once composted.
To promote compact prosecution, the following additional teaching is provided.
Zock teaches that it is known to use compost-type materials as a matrix material configured to be retained within a mesh/sleeve layer for a drainage filtration device. Zock explains that there is confusion from the prior art as to whether the “compost material” in the sleeve must undergo some degree of composting first, or whether the material is merely one which is biodegradable after it has been placed into the sleeve. Zock suggests that the second meaning is likely more accurate as the industry often uses “freshly chipped or ground wood products” as “compost material” without any “pre-filling composting time”, though some also use materials which have been pre-composted. Either way, Zock defines the phrase “compost material” as used therein to mean “material that has or can be composted or biodegradable material” (para. 4).
Zock further teaches that such a filler material may comprise 60-90% “fibrous” filler, which may include straw and natural fibers such as flax, wool and jute (paras. 16, 19, 27, 29), and 10-40% of a “woody organic” filler. While the use of fibrous fillers alone is also known (see para. 11), Zock explains that the woody filler helps with transportation of the fibrous filler during manufacture and also provides weight to the apparatus relative to the otherwise lightweight fibrous fillers, to prevent the apparatus from moving during use. The composition may be adjusted to for different applications (paras. 32-33 & 40-42).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Bussey (as modified above) such that the second matrix comprises a fibrous material (as in claim 4), wherein the fibrous material comprises hemp, straw, cotton, flax, wool, jute, linen, silk, or any combination thereof (e.g., at least hemp, straw, wool, flax, and/or jute) (as in claim 6), in view of the teachings of Zock, as the simple substitution of one known matrix material (e.g., the original expanded polymer aggregates of Moore and/or Bussey) for another (i.e., a fibrous, biodegradable matrix material like hemp, straw, jute, wool, flax, etc., as in Zock) to obtain predictable results (e.g., providing for a degradable material filling which, when the rest of the apparatus is also biodegradable, may permit the apparatus to be left in the field to degrade after use [as suggested by Zock] and/or does not require landfill disposal, etc.), especially considering that 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.
Regarding claim 7, the apparatus of Bussey, as modified above, reads on or otherwise renders obvious the additional limitations wherein the first material (e.g., the activated carbon and compost particle mixture as taught by Faucette) and the second material (e.g., the biodegradable/compostable fibrous fillers as taught by Zock) are compostable, biodegradable, or a combination thereof.
Claim 15 (as understood) is rejected under 35 U.S.C. 103 as being unpatentable over Bussey in view of Mackintosh as applied to claim 1 above, and further in view of Spangler et al (US 6,547,493; hereafter Spangler).
Regarding claim 15, as set for claim 1 above, Bussey discloses that the apparatus may be releasable connectible to the drain pipe (i.e., the downspout, as modified in view of Mackintosh) by “tie means 13, for example in the form of ties” (para. 43), but does not disclose the material of the ties to be a compostable or biodegradable materials.
Spangler teaches an apparatus (20) comprising a first layer in the form of a net (30) having open ends, and a matrix material (21) disposed in an internal plenum defined by the first layer, wherein one or both ends (33, 34) may be closed by a cord (35). Spangler explains that such a cord may be made from any material but “[i]n applications where natural fibers are preferred, net 30 may be made from ropes or twine made of natural fibers such as jute, hemp, sisal, or coir. For such a natural application, cord 35 would be made of a natural fiber, e.g., jute, sisal, hemp or coir” (col. 3, lines 7-14).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Bussey such that the apparatus is releasably connectible to the downspout by a compostable material, a biodegradable material, or a combination thereof (i.e., by forming the tie from a natural fiber material such as jute or hemp), in view of the teachings of Spangler, especially considering that 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.
Conclusion
The prior art made of record in the attached PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
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/Richard K. Durden/Examiner, Art Unit 3753
/ROBERT K ARUNDALE/Primary Examiner, Art Unit 3753
