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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/04/2026 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 reads “(b) a reef nail comprising a nail and a second marine tile in the form of a
screw nut, and comprising male threads, the female threads of the first marine tile are adapted for mating with male threads on the second marine tile, wherein the second marine tile is in the form of a screw nut,” which should read “(b) a reef nail comprising a nail and a second marine tile in the form of a screw nut, and comprising male threads, wherein the female threads of the first marine tile are adapted for mating with male threads on the second marine tile, .
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 1-7 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 is rejected for lack of clarity. Specifically, it is unclear, based on the claim, drawings and specification, what is the first and second marine tile. Given the claim language of “a first marine tile comprising a first face, second face and one or more central openings comprising female threads,” the first marine tile appears to be that which is shown in figure 14. However, in claim section (b), describing the reef nail, the second marine tile is referred to as a screw nut, which is a fastener with a threaded hole, which also appears to also correspond to that shown in figure 14. The reef nail is described as having a second marine tile in the form of a screw nut (i.e. fig 14) and a nail having male threads (i.e. fig 15), which would lead one to assume that the reef nail is the combination of figures 14 and 15 (as described in claim 41). However, if this is the case, then it is unclear how the threads of the first marine tile would be able to mate with those of the second marine tile. Claims 2-7 are rejected by virtue of their dependency. Clarification and correction are required but no new matter may be added.
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.
Claim(s) 14-15 are rejected 35 U.S.C. 103 as being unpatentable over Warren (US 5803660 A) in view of Tickle (US-11598879-B2) and Chuo-ku (JP S647157 Y2).
Regarding claim 14, Warren discloses a marine pod (1400) comprising one or more marine tiles (tile with apertures in 1300),
wherein the marine pod comprises:
a first panel (1100, see fig 11), wherein the first panel (side of 1100) comprises a first slit (1164);
a second panel (1500), wherein the second panel comprises a second slit (600),
wherein the first panel and the second panel are interlocked via sliding the first slit into the second slit (see figs 11 and 14),
wherein the marine tile comprises a first face (top face of 1300) and a second face (bottom face of 1300);
one or more openings comprising female threads (1610, see fig 16), wherein the female threads are adapted for mating with external male threads (1710, see fig 17),
and wherein the marine tiles are attached to an artificial supporting substrate (marine tiles 1700 attached to substrate 1600 via screws 1710, see fig 17).
Warren fails to disclose a miniature electronic transmitter tracking device, and wherein the marine tiles are attached to an artificial supporting substrate via nails.
Tickles teaches a miniature electronic transmitter tracking device (mini tracking device, see col 5, lines 42-55 and claims 6-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the tile system of Warren with the tracking device of Tickle with a reasonable expectation of success because this will ensure the location of the tile is easily obtainable when needed.
Chuo-ku teaches attaching tiles to a substrate with nails (nail 2 attaching to 5, see figs 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to have modified the tiles with the nail attachment taught by Chuo-ku with a reasonable expectation of success as this will allow for a secure connection fastener and since the equivalence of screws and nails for their use in the fastener art and the selection of any known equivalents to connect two elements would be within the level of ordinary skill in the art. Applicant has not provided criticality for this attachment being a nail vs a screw or a plug.
Regarding claim 15, the modified reference teaches the marine pod of claim 14, and Warren further discloses wherein the first panel and the second panel intersect at a 90-degree angle (see fig 11 and 14).
Claim(s) 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Warren (US 5803660 A) in view of Chuo-ku (JP S647157 Y2).
Regarding claim 1, Warren discloses a marine tile system (see figs 16-18) comprising:
a first marine tile (1600) comprising a first face, a second face (top and bottom faces, see fig
16) and one or more central opening comprising female threads (1610) and
a reef nail comprising a second marine tile (1700) in the form of a screw nut (1710), and
comprising male threads (male threads 1710, see figs 16-17),
wherein the female threads (1610) of the first marine tile (1600) are adapted for mating
with male threads (1710) on the second marine tile, wherein the second marine tile is in the form of a screw nut (1700, see figs 16-17).
Warren fails to disclose the combination of a reef nail comprising a nail and a second marine
tile.
Chuo-ku teaches (b) a reef nail (see fig 1) comprising a nail (1) and a second marine tile (3) in
the form of a screw nut, and comprising male threads (3), wherein the female threads (interior of 9) of the first marine tile (7/8) are adapted for mating with male threads on the second marine tile in the form of a screw nut (see fig 2)
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to have modified the reef nail to be a combination nail with threads on its head as taught by Chuo-ku with a reasonable expectation of success as this will allow for a secure multi-connection fastener and therefore increased versatility in building constructions.
Regarding claim 2, the modified reference teaches the marine tile system of claim 1, and
Warren further discloses wherein the first marine tiles comprises a plurality of openings comprising
threads (1610, see fig 16), the first marine tile (1600) further comprising one or more marine organisms (1790, coral grown on top of bolt 1700, see fig 17 and col 6, lines 52-54), attached to the marine tile at the plurality of openings (see fig 16).
Regarding claim 3, the modified reference teaches the marine tile system of claim 1 and
Warren further discloses wherein the first marine tile comprises one or more sites on the first face,
wherein the one or more sites are located on the first face (top face of 1600), wherein the first face is flat (top face of 1600, see fig 16).
Claim(s) 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Warren (US 5803660 A) in view of Chuo-ku (JP S647157 Y2) as applied to claim 1 above and further in view of Tickle (US-11598879-B2).
Regarding claim 4, Warren as modified by Chuo-ku teaches a marine pod comprising the tile system of claim 1 as above.
Tickle teaches wherein the first marine tile comprises: a miniature electronic transmitter tracking device (mini tracking device, see col 5, lines 42-55 and claims 6-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the tile system with the tracking device of Tickle with a reasonable expectation of success because this will ensure the location of the tile is easily obtainable when needed.
Regarding claim 5, the modified reference teaches the marine tile system of claim 4, and
Warren further discloses wherein the first marine tile further comprises a plurality of openings comprising threads (1610, see fig 16), the marine tile (1600) further comprising marine organisms (1790, coral grown on top of bolt 1700, see fig 17 and col 6, lines 52-54), attached to the marine tile at the plurality of openings (see fig 16).
Regarding claim 6, the modified reference teaches the marine pod of claim 4 and Warren
further discloses wherein the first face of the first marine tile comprises a combination of
projections and spaces that together form a 3D pattern (see figs 5, 8 and 14).
Regarding claim 7, the modified reference teaches the marine tile system of claim 4 Warren
further discloses wherein the one or more marine organisms comprises coral (coral attachment on artificial reefs, see col 3, lines 62-65).
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Warren (US 5803660 A) in view of Chuo-ku (JP S647157 Y2) as applied to claim 1 above, and further in view of Gunseli (Volvo creates living seawall to combat pollution and promote biodiversity).
Regarding claim 17, Gunseli discloses a method for constructing an underwater garden
comprising positioning a plurality of the marine tile system of claim 1 (see above rejection with Warren and Chuo-ku), a predetermined depth in the ocean (positioning tiles on a preexisting seawall, see page 2); or positioning a plurality of the marine tiles and/or the plurality of the marine pods at the bottom of a marine tank.
Claim(s) 41 is rejected under 35 U.S.C. 103 as being unpatentable over Warren (US 5803660 A) in view of Chuo-ku (JP S647157 Y2).
Regarding claim 41, Warren discloses a reef nail comprising: (a) a marine tile (see fig 18) comprising a first face (top face), a second face (bottom face) and a central opening (1810, see fig 18).
Warren fails to disclose a nail comprising a head, shank and point, wherein the head of the nail comprises external nail threads, and the central opening corresponds with and mates with the head of the nail.
Chuo-ku teaches a nail comprising a head, shank and point (see fig 1, head 3, shank 2 and point at the end), wherein the head of the nail comprises external nail threads (external threads on nail head 3, see fig 1), and the central opening corresponds with and mates with the head of the nail (central opening of 9 mates with 3, also the internal threads of the tile of Warren would mate with the external threads of nail head 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Warren with the nail of Chuo-ku with a reasonable expectation of success because this threaded nail configuration will ensure the marine tiles are securely connected.
Response to Arguments
Applicant's arguments filed 03/04/2026 have been fully considered but they are not persuasive.
In regards to independent claims 1, 14 and 41, Applicant argues that using the nail of Chuo-ku would destroy the principle operation of Warren as the threaded screws of Warren are designed to be removable and the installation of the nails would destroy the marine organism on its surface. The Office respectfully disagrees. Firstly, nails are indeed removable fasteners, and unlike screws, do not have the potential to become cross threaded and damaged, and therefore this change of fastener would an obvious modification to one of ordinary skill in the art. Applicant argues that the nail of Chuo-ku is intended to be a permanent fastener, however nails themselves are removable fasteners, and claims directed to apparatus must be distinguished from the prior art in terms of structure rather than functions. In re Danly, 120 USPQ 528, 531. Further, apparatus claims cover what a device is not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525, 1528.
In regards to the installation of the nail harming the marine organism, as seen in figure 18 of Warren, the marine organism 1790 is removable from hole 1810, and therefore the element 1700 could easily be hammered into the substrate before the organism 1790 is installed in bolt 1700/1800.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, modifying the threaded screw arrangement of Warren for the nails of Chuo-ku would be an obvious modification of fastener choice.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE ANNE KLOECKER whose telephone number is (571)272-5103. The examiner can normally be reached M-Th: 8:00 -5:30 MST, F: 8:00 - 12:00 MST.
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/K.A.K./Examiner, Art Unit 3642
/MAGDALENA TOPOLSKI/Primary Examiner, Art Unit 3642
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