patent prosecution Flashcards
what is the claimed invention?
The claims on appeal are directed to a removable storm drain filter with flaps for easy removal. The filter is meant to be used with a storm drain catch basin and help with filtering out nonsoluble materials that may enter into the catch basin.
Site Plans Reference
Hay bales appear to be applying vertical pressure on a sheet that is covering the opening of a storm drain grate.
102 rejection claim 1
- The Site Plans do not teach a bag with a securable flap capable of attaching to an object outside of the catch basin. Additionally, the Site Plans are such that the claimed invention is not necessarily present. See Akamai Technologies, Inc. v. Cable & Wireless Internet Services, Inc., 344 F.3d 1186 (Fed. Cir. 2003)
- The sheet in Site Plans is no more than a sheet that is fixed in place by placing objects such as hay bales on top of the sheet.
[It is believed that if Claim 1 is found to be unanticipated by the cited reference, then all other dependent claims would necessarily be valid under § 102.]
102 rejection claim 2, 7, and 8
- Claim 2 teaches a deformable bag with a conical shape. The cited reference does not teach a bag with a conical shape and therefore not all the elements are present in the prior art.
- The Examiner argues that the “sheet-bag” in Site Plans have a conical shape”. Office Action pg. 1 (OA1). However, it seems this conical shape only exists when an external force is applied to the sheet in the cited reference. Claim 2 teaches a bag with a conical shape before any external force acts on the bag. While the Site Plans sheet may be deformable, it is not both deformable and conical as required by claim 2.
- Claim 7 is not anticipated by Site Plans because it does not disclose a securable flap at the top of a bag, nor is the invention in claim 7 necessarily present in Site Plans
- equating flaps at the top of a bag with the simple extremities of a sheet is an overly broad interpretation of what Site Plans discloses.
- Claim 7 necessarily teaches a narrower scope by specifying the “top”
- Claim 8 teaches a deformable bag such that it changes shape based on its contents and its surroundings. The Site Plans teach a sheet of material that deforms as more silt accumulates on it. The sheet does not encapsulate the objects it is holding but instead supports the weight of silt similar to that of a floor
- “In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation…” Impax Laboratories, Inc. v. Aventis Pharmaceuticals, Inc
- Site Plans do not properly enable the invention such as that claimed in claim 8 through the mere disclosure of a sheet made of a material known to deform upon application under an external force.
102 rejection claim 2, 7, and 8
- Claim 2 teaches a deformable bag with a conical shape. The cited reference does not teach a bag with a conical shape and therefore not all the elements are present in the prior art.
- The Examiner argues that the “sheet-bag” in Site Plans have a conical shape”. Office Action pg. 1 (OA1). However, it seems this conical shape only exists when an external force is applied to the sheet in the cited reference. Claim 2 teaches a bag with a conical shape before any external force acts on the bag. While the Site Plans sheet may be deformable, it is not both deformable and conical as required by claim 2.
- Claim 7 is not anticipated by Site Plans because it does not disclose a securable flap at the top of a bag, nor is the invention in claim 7 necessarily present in Site Plans
- equating flaps at the top of a bag with the simple extremities of a sheet is an overly broad interpretation of what Site Plans discloses.
- Claim 7 necessarily teaches a narrower scope by specifying the “top”
- Claim 8 teaches a deformable bag such that it changes shape based on its contents and its surroundings. The Site Plans teach a sheet of material that deforms as more silt accumulates on it. The sheet does not encapsulate the objects it is holding but instead supports the weight of silt similar to that of a floor.
- “In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation…” Impax Laboratories, Inc. v. Aventis Pharmaceuticals, Inc.
- the deformation of a sheet in the cited reference is different than the bag that encapsulates material and changes shape such as the bag taught in Claim 8. The Site Plans do not properly enable the invention
103 rejection claim 1
- The cited reference does not disclose or suggest claim 1
- claim 1 claims a “deformable” bag as a limitation
- the material is not readily ascertainable from the reference
- The Examiner describes the sheet as “filter fabric” and then concludes that it is deformable. OA2. Rejections cannot be sustained from mere conclusory statements without articulated reasoning for the conclusion. In re Kahn
- it is not clear that the referenced bag extends outside of the catch basin
- Examiner even noted this
- the cited reference teaches away from the claimed invention because if the referenced bag were to extend outside of the catch basin it would obstruct most of the flow into the catch basin.
- Obviousness may be defeated if the prior art indicates that the invention would not have worked for its intended purpose or otherwise teaches away from the invention. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc
- Examiner notes in regard to claim 3 that the bag fits within the catch basin and below the grate. The cited reference cannot both extend out of the catch basin in regard to claim 1 and below the grate for claim 3 based on the shape of the bag.
103 rejection claim 4-6, 8
- not disclosed or suggested. It is not clear what material the bag is constructed from in the Hannon reference.
- it is not clear from the motivation of reducing the “frequency for cleaning catch basins” that this would not be something such as a net or mesh that only catches large solid
- For the same reasons already discussed, neither the figure nor the description provides information regarding the material of the bag.
- The Examiner states that “the bag sides bow outward more as more silt accumulates in it.” OA3. However, no evidence has been provided for this observation, and rejections on obvious grounds need to be articulated with some rationale to support the legal conclusion. In re Kahn
103 rejection claim 9-11, 12
- Neither the figure nor the written description teaches a looped flap
- referenced bag is fixed to a rigid structure in some way but there is no evidence of the manner of the connection.
- the exposed bar sections look to be support for the bag within the basin. The exposed bars in the cited reference appear connected to a funnel mechanism that sits flush with the opening of the catch basin. Since the bars cannot be accessed without lifting the funnel structure, the prior art does not teach exposed bars that readily facilitate the removal of the bag.
- teaches away — by introducing a funnel structure that completely obstructs access to the bars when placed within the catch basin.
-the cited reference teaches away from claim 12
-The cited reference teaches a rigid bar supporting the bag which is sitting below the grate of the catch basin
-Examiner has already acknowledged the bag sits below the grate in claim 3
~destruction~
-One of ordinary skill in the art understands that a chain is non-rigid (compared to the rigid bar taught in the cited reference). One of ordinary skill would also understand a non-rigid support structure, such as a chain, introduced into the cited reference would produce a gap between the upper portion of the catch basin and the bag. This gap would reduce the effectiveness of the bag and its filtering purpose and incoming debris and liquid could escape capture by the bag. Someone of ordinary skill would understand the use of a chain in the cited reference would diminish the performance and therefore there is no suggestion or motivation to modify the Hannon reference to include a chain
