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 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, 3, 5, 33-36 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.
Regarding Claim 1 (and Claim 5, 33-36), the functional limitation "configured for automatic self-stabilization" (and "configured for multiple axis stabilization”) fails to provide a clear-cut indication of the scope of the subject matter embraced by the claim because the claim merely recite a description of a problem to be solved or a function or result achieved by the invention without reciting the particular structure, materials or steps that accomplish the function or achieve the result. (See Halliburton Energy Servs., Inc. V. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) discussed in MPEP 2173.05g) [Examiner notes the plain meaning of the term "configure" from the Oxford English Dictionary as "To fashion according to something else as a model; to conform in figure or fashion (to)." Something can be configured when it is compared to a known model configuration: a Mustang configured to have a hard top or configured to have a soft top. These are known configurations readily identifiable by a person of ordinary skill in the art. A Mustang configured to achieve 100 miles/gallon while traveling at 90 mph is not descriptive of a known configuration because it does not describe an existing model readily identifiable by a person of ordinary skill in the art.]
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 5, 33-38 are rejected under 35 U.S.C. 102a2 as being anticipated by Wengreen (US 10358194 B1).
Regarding Claim 1, Wengreen discloses a water sports device comprising:a float;a hydrofoil apparatus which is fastened by a holding apparatus to the float (8), and a propulsion apparatus (14e) which is provided for the propulsion of the water sports device, wherein the hydrofoil apparatus is arranged on a link of the holding apparatus having one or more hydrofoils (FIg. 39) , wherein the float transferring into a position which is spaced apart from the water surface in the operating position and during a forward movement on account of a buoyancy brought about by way of the hydrofoil apparatus; (This is implicitly understood to be how these boards operate. See MPEP 2144.01 regarding implicit disclosure.) wherein the propulsion apparatus is configured for automatic self-stabilization of the water sports device, and the water sports device has a control unit which is provided to this end. a float (C37, L56); a hydrofoil (73) apparatus which is fastened by a holding apparatus to the float, and a propulsion apparatus which is provided for the propulsion of the water sports device, wherein the hydrofoil apparatus is arranged on a link of the holding apparatus having one or more hydrofoils, wherein the float transferring into a position which is spaced apart from the water surface in the operating position and during a forward movement on account of a buoyancy brought about by way of the hydrofoil apparatus(This is implicitly understood to be how these boards operate. See MPEP 2144.01 regarding implicit disclosure.); wherein the propulsion apparatus is configured for automatic self-stabilization of the water sports device, and the water sports device has a control unit (Element 38) which is provided to this end.
Regarding Claim 5, Wengreen discloses water sports device of claim 3, wherein the control unit is configured for multiple-axis stabilization of the float (See configuration in Fig. 40).
Regarding Claim 33, Wengreen discloses the water sports device as claimed in claim 5, wherein the propulsion apparatus includes an impeller positioned to create a drive jet. (C28, L36)
Regarding Claim 34, Wengreen discloses the water sports device as claimed in claim 33, wherein the propulsion apparatus includes at least one pivoted guide vane (Vane of Elment 25is pivoted via Element 20) positioned behind the impeller, and positioned to orient the drive jet. (Examiner suggests putting a finer point on how and where it is pivoted relative to the propeller.)
Regarding Claim 35, Wengreen discloses the water sports device as claimed in claim 34, further including at least two pivoted guide vanes, wherein a first pivoted guide vane is oriented at a 90-degree angle with respect to a second pivoted guide vane, wherein both the first pivoted guide vane and the second pivoted guide vane are oriented perpendicular to an initial direction of the drive jet. (See Fig. 41.)
Regarding Claim 35, Wengreen discloses the water sports device as claimed in claim 35, further including at least four pivoted guide vanes positioned in a cross shape such that each pivoted guide vane is offset by 90-degrees from adjacent pivoted guide vanes. (See Fig. 41.)
Regarding Claim 37, Wengreen discloses the water sports device as claimed in claim 36, wherein the control unit is operable to control the at least one pivoted guide vane to self-stabilize the water sports device via thrust vector control by directing the drive jet with the at least one pivoted guide vane. (C10, paragraph starting at Line 41)
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 33, 34 are rejected under 35 U.S.C. 103 as being unpatentable over Wengreen (US 10358194 B1).
Regarding Claims 33 discloses the water sports device as claimed in claim 5, but alternatively does not wherein the propulsion apparatus includes an impeller (The distinction between a propeller in a tube and a propeller is somewhat arguable in the 102 rejection above, but the impeller of Element 15 is not arguable) positioned to create a drive jet.
Wengreen discloses wherein the propulsion apparatus includes an impeller (in 15 ) positioned to create a drive jet on the bottom of the surfboard embodiment, but not on the hydrofoil embodiment.
Wengreen suggests the hydrofoil embodiment can have an impeller (C43, L3) It would have been obvious at the time of filing for a person of ordinary skill in the marine art to add the motor system 15 with the impeller of Wengreen to the underwater portion of the embodiment in Fig 41. which can be accomplished with a reasonable expectation of success. The motivation to modify Wengren is to add the contemplated impeller where it can be used in planning made.
Regarding Claim 34, Wengreen discloses the water sports device as claimed in claim 33, wherein the propulsion apparatus includes at least one pivoted guide vane (Element 23a, Fig 41) positioned behind the impeller, and positioned to orient the drive jet.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-40 have been 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.
Allowable Subject Matter
Claims 38, 39, 40 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW POLAY whose telephone number is (408)918-9746. The examiner can normally be reached M-F 9-5 Pacific.
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/ANDREW POLAY/Primary Examiner, Art Unit 3615 24 May 2026
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