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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Currently, no claim limitation is being interpreted as invoking 35 U.S.C. 112(f).
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 1-4, 14-16 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent 5,878795 to Armellino (Armellino).
Regarding claim 1, Armellino discloses a fuel spill prevention device (title/abstract), comprising: a body section (collector 24 as shown in Figs. 2 and 4) defined by a first end (upper end) and a second end (lower end), wherein the body section is hollow throughout (the body is hollow, having a liquid passage therethrough) and having a first opening disposed at the first end (opening at the upper end) and a second opening disposed at the second end (opening at the lower end), both the first and second opening being in communication with an interior of the body section (see Figs. 2 and 4); wherein the body section is further comprised of at least a first subsection (upper member 34 forms a first subsection) and a second subsection (lower member 32 forms a second subsection), wherein the first subsection has a diameter that is larger than a diameter of the second subsection (shown in Figs. 2 and 4; the diameter of subsection 34 is larger than the diameter of subsection 32).
Regarding claim 2, Armellino discloses a transition section (the lower end of body 26 is a transition section) disposed between the body section and the second opening (see Fig. 4), wherein the transition section tapers inwardly from the body section to the second opening (the lower end of body 26 tapers inward from the body to the second opening; the taper is shown around opening 30).
Regarding claim 3, Armellino discloses the first opening is defined by a first diameter (the first opening has a first diameter) and the second opening is defined by a second diameter (the second opening has a second diameter) that is smaller than the first diameter (the lower opening has a diameter smaller than the first diameter; see Figs. 2 and 4).
Regarding claim 4, Armellino discloses a flange element disposed about the first end, the flange element extending radially outwardly from the first end (collar 42 forms a flange about the first end and extends outward from the first end; see Fig. 4).
Regarding claim 14, Armellino discloses the first end is constructed as a funnel-shaped element that tapers inwardly toward the body section (see Fig. 4; the upper portion 34 is tapered inward at its bottom end).
Regarding claim 15, Armellino further discloses a flange element (collar 42 forms a flange; Figs. 2 and 4) is disposed on the funnel-shaped element (the collar 42 is disposed on the funnel-shaped portion; see Fig. 4).
Regarding claim 16, Armellino discloses a fuel spill prevention device (title/abstract), comprising: a body section (24 as shown in Figs. 2 and 4) defined by a first end (upper end) and a second end (lower end), wherein the body section is hollow throughout (the body is hollow having a liquid passage therethrough) and having a first opening disposed at the first end (upper opening at the first end) and a second opening disposed at the second end (lower opening at the second end), both the first and second opening being in communication with an interior of the body section (both openings communicate with the interior of the body; see Figs. 2 and 4); wherein the body section is further comprised of a first subsection (upper section 34), a second subsection (middle section 26), and a third subsection (lower section 32), wherein the first subsection has a diameter that is larger than a diameter of the second subsection (see Fig. 4; the diameter of section 34 is larger than the diameter of section 26) and wherein the diameter of the second subsection is larger than a diameter of the third subsection (see Fig. 4; the diameter of section 26 is larger than the diameter of section 32), such that the first, second and third subsections are arranged in a successive, graduated manner (shown in Fig. 4); and a transition section (the tapered portion shown around opening 30) extending from the third subsection, wherein the transition section tapers inwardly from the third subsection to the second opening (the taper is inward toward the second opening).
Regarding claim 19, Armellino discloses the first end is constructed as a funnel-shaped element that tapers inwardly toward the body section from the first opening (see Fig. 4; the upper portion 34 is tapered inward at its bottom end).
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 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Armellino.
Regarding claims 12-13, Armellino discloses the body section is made up of an additional third subsection (middle section 26 is a third subsection) and wherein each of the first, second and third subsections are arranged in a successive, graduated manner (shown in Fig. 4), but does not disclose wherein each subsection corresponds to a standard size of a fuel intake in boats. It would have been an obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the subsections to have sizes corresponding to standard sizes of fuel intakes in boats, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04(IV)(A). Sizing the sections to correspond to the size of standard fuel intakes helps to seal the openings with the collector, thereby reducing the chances for fuel to escape between the body and the fuel intake. Further, having different sizes allows the spill preventor to be used with different boats having differently sized intakes.
Claims 5 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Armellino in view of US Patent 5,918,650 to Borden (Borden).
Regarding claims 5 and 17, Armellino discloses the fuel spill prevention device of claims 1 and 16 (see above), but does not disclose each of the body subsections further comprise a thread disposed on an outer circumferenial surface. Borden teaches a liquid transfer device including a plurality of subsections having threads (see subsections and threads in Fig. 2) an outer circumferenial surface such that the subsections can be removably coupled to one another. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included threads on an outer circumferenial surface of the subsections such that the subsections can be removably coupled to one another. Using a modular design allows for subsections of differing sizes or configurations to be attached depending on the needs of the particular fuel intake of the boat and allows for replacement of a damaged subsection.
Claims 6-8, 11 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Armellino in view of US Patent Application Publication 2004/0201217 to Mobley et al. (Mobley).
Regarding claims 6-7, 11 and 18, Armellino discloses the fuel spill prevention device of claims 1 and 16, but does not disclose the fuel spill prevention device is constructed of a gas resistant rubber including thermoplastic elastomer having an anti-static additive. Mobley teaches a fuel transport device which is formed of gas resistant rubber including a thermoplastic elastomer (see [0029]) having an anti-static additive (see [0025] and [0028]) to prevent static buildup and degradation of the fuel transport device from contact with the fuel. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the device of Armellino from a thermoplastic elastomer having an anti-static additive as taught by Mobley to prevent static buildup and degradation of the fuel spill prevention device from contact with the fuel.
Regarding claim 8, Armellino as modified by Mobley discloses the fuel spill prevention device of claim 7, but does not disclose the anti-static additive comprises approximately 3% of the material composition for the fuel spill prevention device. Applicant has placed no criticality on the range of approximately 3% (see [0029] where 3% is an example of one possible material composition). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to for the device having approximately 3% anti-static additive, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05(II)(A)). Choosing a material composition of approximately 3% anti-static additive is a matter of design choice and one of ordinary skill in the art can determine an appropriate material composition based on the desired properties (see MPEP § 2144.07).
Allowable Subject Matter
Claims 9 and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the cited documents do not disclose, in combination with the claimed invention as a whole, wherein the gas resistant rubber material further includes a biodegradable additive. While biodegradable additives are known in the art, the examiner finds no evidence that one of ordinary skill in the art would include such an additive in the combination of Armellino and Mobley, absent the teachings of Applicant’s disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and claimed invention.
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/NICOLAS A ARNETT/Primary Examiner, Art Unit 3753 March 4, 2026