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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 31 and 33-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-13 of U.S. Patent No. 10,067,112 (hereafter ‘112) In view of Casteneda (CN 104222032) and Zhang. (CN 102768268).
With respect to claim 31, claims 1 and 7 of ‘112 teaches a method for collecting environmental data using an autonomous sensor fish, the method comprising: providing a nearly neutrally buoyant sensor fish comprising a power source, processing circuitry, a microcontroller, and a ballasting member; dispatching the sensor fish into an environment to collect environmental data; collecting environmental data with the sensor fish using the processing circuitry; and actuating the microcontroller to release the ballasting member to cause the sensor fish to become more buoyant.
The claims of ‘112 do not explicitly teach an autonomous sensor fish defining a simulated fish body having a body between a head and a tail and defining dorsal and tail fins, dispatching the sensor fish below the surface of a body of water, mimicking the behavior of a live fish using one or more of the body, the dorsal and/or tail fins of the sensor fish, or collecting environmental data below the surface of the body of water.
Casteneda teaches an autonomous sensor fish (device 40) defining a simulated fish body (housing part 50), and a method of dispatching the fish below the surface of a body of water and mimicking the behavior of a live fish using one more of the body, dorsal and/or tail fins of the sensor fish and collecting environmental data below the surface of the body of water. (translation, Abstract, par. 40, 55, 62, Figs. 5-8)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the method of ‘112 to operate with a simulated fish body, as taught by Casteneda, in order to attract the presence of additional fish for a more realistic environment.
Additionally, Zhang teaches a sensor fish defining a simulated fish body having a body between a head and a tail and defining dorsal and tail fins, wherein the sensor fish is configured to mimic the behavior of a live fish using one or more of the body, the dorsal and/or tail fins. (See attached translation and Figure)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the method of ‘112 to include dorsal and tail fins, as taught by Zhang, as an aesthetic choice having no particular impact on the operation of the device.
With respect to claim 33, claim 1 of ‘112, as modified by Casteneda and Zhang, teaches using the sensor fish to detect at least one parameter comprising one or more of orientation, acceleration, rotational velocity, magnetic field intensity, pressure, and/or external temperature.
With respect to claim 34, claim 7 of ‘112, as modified by Casteneda and Zhang, teaches the sensor fish is nearly neutrally buoyant prior to releasing the ballasting member.
With respect to claim 35, claim 8 of ‘112, as modified by Casteneda and Zhang, teaches sampling data using the sensor fish at up to 8,192 Hz for a preselected programmable period of time.
With respect to claim 36, claim 9 of ‘112, as modified by Casteneda and Zhang, teaches triggering an alarm to facilitate identification and location of the sensor fish.
With respect to claim 37, claim 10 of ‘112, as modified by Casteneda and Zhang, teaches identifying the sensor fish using an LED.
With respect to claim 38, claim 11 of ‘112, as modified by Casteneda and Zhang, teaches identifying the sensor fish using a radio frequency (RF) beacon.
With respect to claim 39, claim 12 of ‘112, as modified by Casteneda and Zhang, teaches selectively activating or deactivating the microcontroller by a magnetic field.
With respect to claim 40, claim 13 of ‘112, as modified by Casteneda and Zhang, teaches downloading data collected during use and/or charging a battery of the sensor fish via docking station.
Claims 31-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10,935,536 (hereafter ‘536) in view of Casteneda (CN 104222032) and Zhang. (CN 102768268)
With respect to claim 31, claims 1 and 4 of ‘536 teach a method for collecting environmental data using an autonomous sensor fish, the method comprising: providing a nearly neutrally buoyant sensor fish comprising a power source, processing circuitry, a microcontroller, and a ballasting member; dispatching the sensor fish into an environment to collect environmental data; collecting environmental data with the sensor fish using the processing circuitry; and actuating the microcontroller to release the ballasting member to cause the sensor fish to become more buoyant.
The claims of ‘536 do not explicitly teach an autonomous sensor fish defining a simulated fish body having a body between a head and a tail and defining dorsal and tail fins, dispatching the sensor fish below the surface of a body of water, mimicking the behavior of a live fish using one or more of the body, the dorsal and/or tail fins of the sensor fish, or collecting environmental data below the surface of the body of water.
Casteneda teaches an autonomous sensor fish (device 40) defining a simulated fish body (housing part 50), and a method of dispatching the fish below the surface of a body of water and mimicking the behavior of a live fish using one more of the body, dorsal and/or tail fins of the sensor fish and collecting environmental data below the surface of the body of water. (translation, Abstract, par. 40, 55, 62, Figs. 5-8)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the method of ‘536 to operate with a simulated fish body, as taught by Casteneda, in order to attract the presence of additional fish for a more realistic environment.
Additionally, Zhang teaches a sensor fish defining a simulated fish body having a body between a head and a tail and defining dorsal and tail fins, wherein the sensor fish is configured to mimic the behavior of a live fish using one or more of the body, the dorsal and/or tail fins. (See attached translation and Figure)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the method of ‘536 to operate with a simulated fish body, as taught by Zhang, as an aesthetic choice having no particular impact on the operation of the device.
With respect to claim 32, claim 2 of ‘536, as modified by Casteneda and Zhang, teaches downloading data from the microcontroller and erasing a portion of memory of said microcontroller to prepare said microcontroller for a subsequent deployment.
With respect to claim 33, claim 3 of ‘536, as modified by Casteneda and Zhang, teaches using the sensor fish to detect at least one parameter comprising one or more of orientation, acceleration, rotational velocity, magnetic field intensity, pressure, and/or external temperature.
With respect to claim 34, claim 4 of ‘536, as modified by Casteneda and Zhang, teaches the sensor fish is nearly neutrally buoyant prior to releasing the ballasting member.
With respect to claim 35, claim 5 of ‘536, as modified by Casteneda and Zhang, teaches sampling data using the sensor fish at up to 8,192 Hz for a preselected programmable period of time.
With respect to claim 36, claim 6 of ‘536, as modified by Casteneda and Zhang, teaches triggering an alarm to facilitate identification and location of the sensor fish.
With respect to claim 37, claim 7 of ‘536, as modified by Casteneda and Zhang, teaches identifying the sensor fish using an LED.
With respect to claim 38, claim 8 of ‘536, as modified by Casteneda and Zhang, teaches identifying the sensor fish using a radio frequency (RF) beacon.
With respect to claim 39, claim 9 of ‘536, as modified by Casteneda and Zhang, teaches selectively activating or deactivating the microcontroller by a magnetic field.
With respect to claim 40, claim 10 of ‘536, as modified by Casteneda and Zhang, teaches downloading data collected during use and/or charging a battery of the sensor fish via docking station.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 31-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shelton et al. (US 6,662,742, hereafter Shelton) in view of Casteneda (CN 104222032) and Zhang. (CN 102768268)
With respect to claim 31, Shelton teaches a method for collecting environmental data using an autonomous sensor fish, the method comprising: providing a nearly neutrally buoyant sensor fish (fish 10, col. 7, lines 9-11, col. 13. lines 55-60) comprising a power source (battery 52, col. 14, lines 20-25), processing circuitry, a microcontroller (control electronics, col. 11, lines 1-22), and a ballasting member (col. 29, lines 3-6); wherein the sensor fish is configured to mimic the behavior of a live fish using one or more of the body, the dorsal and/or tail fins of the sensor fish; dispatching the sensor fish into an environment to collect environmental data; collecting environmental data with the sensor fish using the processing circuitry; and actuating the microcontroller to release the ballasting member to cause the sensor fish to become more buoyant. (col. 18, line 59 – col. 19, line 6)
Shelton does not explicitly teach an autonomous sensor fish defining a simulated fish body having a body between a head and a tail and defining dorsal and tail fins, dispatching the sensor fish below the surface of a body of water, mimicking the behavior of a live fish using one or more of the body, the dorsal and/or tail fins of the sensor fish, or collecting environmental data below the surface of the body of water.
Casteneda teaches an autonomous sensor fish (device 40) defining a simulated fish body (housing part 50), and a method of dispatching the fish below the surface of a body of water and mimicking the behavior of a live fish using one more of the body, dorsal and/or tail fins of the sensor fish and collecting environmental data below the surface of the body of water. (translation, Abstract, par. 40, 55, 62, Figs. 5-8)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the method of ‘536 to operate with a simulated fish body, as taught by Casteneda, in order to attract the presence of additional fish for a more realistic environment.
Additionally, Zhang teaches a sensor fish defining a simulated fish body having a body between a head and a tail. (See attached translation and Figure)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the method of Shelton to operate with a simulated fish body, as taught by Zhang, having whatever defining features are desired, such as dorsal and tail fins, as an aesthetic choice having no particular impact on the operation of the device.
With respect to claim 32, Shelton, as modified by Casteneda and Zhang, teaches all that is claimed, as in the above rejection, except for the step of downloading data from the microcontroller and erasing a portion of memory of said microcontroller to prepare said microcontroller for a subsequent deployment. However, it is well-known to reuse data storage memory and therefore this step would have been obvious to one having ordinary skill in the art at the time the invention was filed in order to facilitate collection of a larger amount of data.
With respect to claim 33, Shelton, as modified by Casteneda and Zhang, teaches using the sensor fish to detect at least one parameter comprising one or more of orientation, acceleration, rotational velocity, magnetic field intensity, pressure, and/or external temperature. (Shelton, col. 11, lines 32-40 and col. 19, lines 30-51)
With respect to claim 34, Shelton, as modified by Casteneda and Zhang, teaches the sensor fish is nearly neutrally buoyant prior to releasing the ballasting member. (Shelton, col. 28, lines 52-67)
With respect to claim 35, Shelton, as modified by Casteneda and Zhang, teaches all that is claimed, as in the above rejection, except for explicitly teaching sampling data using the sensor fish at up to 8,192 Hz for a preselected programmable period of time. However, this is a common data collection procedure and would have been obvious to one having ordinary skill in the art at the time the invention was filed in order to effectively collect the sensor data.
With respect to claim 36, Shelton, as modified by Casteneda and Zhang, teaches triggering an alarm to facilitate identification and location of the sensor fish. (Shelton, col. 29, lines 1-19)
With respect to claim 37, Shelton, as modified by Casteneda and Zhang, teaches all that is claimed, as in the above rejection, except for explicitly teaching identifying the sensor fish using an LED. However, Shelton does teach the use of lights on the sensor fish and therefore it would have been obvious to one having ordinary skill in the art at the time the invention was filed to use a light as an identifier in order to readily locate and recover the sensor fish.
With respect to claim 38, Shelton, as modified by Casteneda and Zhang, teaches identifying the sensor fish using a radio frequency (RF) beacon. (Shelton, col. 29, lines 1-19)
With respect to claim 39, Shelton, as modified by Casteneda and Zhang, teaches selectively activating or deactivating the microcontroller by a magnetic field. (Shelton, col. 16, lines 8-35)
With respect to claim 40, Shelton, as modified by Casteneda and Zhang, teaches downloading data collected during use and/or charging a battery of the sensor fish via docking station. (Shelton, col. 11, lines 1-7)
Response to Arguments
Applicant's arguments filed September 17, 2025 have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN 104875868 teaches an invention having similarities to the claimed subject matter.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jill E Culler whose telephone number is (571)272-2159. The examiner can normally be reached M-F 8:30-5:00.
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/JILL E CULLER/Primary Examiner, Art Unit 2853