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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on
09/25/2025.
Status of Rejections
All previous rejections are withdrawn in view of the Applicant’s amendments.
New grounds of rejection are necessitated by the Applicant’s amendments.
Claims 1-13 are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-5 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Britton (US 4705331 A).
Claim 1: Britton discloses a device (see e.g. abstract), the device comprising
at least one sacrificial anode (see e.g. col 1, lines 24-32 and col 3, lines 33-38), wherein in that the device further comprises
a clamp for carrying the at least one sacrificial anode (see e.g. col 3, lines 33-38),
the clamp having a jaw (see e.g. #38 on Fig 3) having opposing sets of teeth (see e.g. #76 on Fig 3).
The limitation in the preamble claiming a “device for protecting a subsea mooring chain from corrosion” is an intended use limitation. MPEP § 2111.02 II states ‘If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997)’. The claim is drawn to a device for protecting against corrosion and is not drawn to structure the device is protecting. The preamble of claim 1 does not add any additional structure to the device that is not already claimed within the body.
The limitation claiming “the clamp having a jaw for releasably connecting the sacrificial anode to a chain link of the mooring chain and establishing electrical contact between the sacrificial anode and the chain link” is an intended function/use for the device. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Britton discloses all of the positively recited structure for the device and thus anticipates this limitation. Furthermore, Britton discloses that the jaw releasably connects the sacrificial anode (see e.g. col 5, lines 65-68) to marine structures with different shapes (see e.g. col 1, lines 6-14) wherein the clamp is electrically conductive and establishes establishing electrical contact between the sacrificial anode and the structure (see e.g. col 12, lines 17-21).
Claim 2: Britton discloses that the at least one sacrificial anode comprises a plurality of sacrificial anodes (see e.g. col 1, lines 24-32 and col 3, lines 33-38).
Claim 3: Britton discloses that the at least one sacrificial anode is releasably connected to the clamp (see e.g. col 5, lines 65-68).
Claim 4: Britton discloses that the device is configured for ROV operation (see e.g. col 5, lines 65-68).
Claim 5: Britton discloses a system (see e.g. abstract) the system comprising
the device according to claim 1 (see rejection of claim 1 above),
an installation tool (see e.g. #44 on Fig 1), and
an ROV (see e.g. #42 on Fig 1).
The limitation in the preamble claiming a “system for protecting a subsea mooring chain from corrosion” is an intended use limitation. MPEP § 2111.02 II states ‘If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997)’. The claim is drawn to a system for protecting against corrosion and is not drawn to structure the system is protecting. The preamble of claim 5 does not add any additional structure to the device that is not already claimed within the body.
Claim 12: The limitation claiming that “the chain link remains moveable relative to additional chain links adjacent on each side of the chain link within the mooring chain when the device is connected to the chain link” is directed towards a structure the device is intended to be used with and does not structurally limit the device.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 6-8 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Debost (US 4216070 A) in view of Britton.
Claim 6: Debost discloses a method of protecting a subsea mooring chain from corrosion (see e.g. abstract), the method comprising the following steps:
including anodic material with the chain (see e.g. abstract).
Debost does not explicitly teach the steps of
arranging a device on an installation tool connected to an ROV, the device comprising at least one sacrificial anode and a clamp having a jaw having opposing sets of teeth;
bringing the ROV close to the mooring chain;
connecting the device to a first link on the mooring chain; and
releasing the installation tool from the device leaving the device connected to the first link.
Britton discloses a method for protecting a subsea structure from corrosion (see e.g. abstract), the method comprising
arranging a device on an installation tool connected to an ROV (see e.g. col 5, lines 65-68), the device comprising at least one sacrificial anode (see e.g. col 1, lines 24-32 and col 3, lines 33-38) and a clamp (see e.g. col 3, lines 33-38) having a jaw (see e.g. #38 on Fig 3) having opposing sets of teeth (see e.g. #76 on Fig 3);
bringing the ROV close to the structure (see e.g. Fig 1);
connecting the device to a first link on structure (see e.g. col 16, lines 25-54); and
releasing the installation tool from the device, leaving the device connected to the structure (see e.g. col 16, lines 25-54).
The device and method of Britton has the advantages of incorporating replaceable anodes that can be easily and cheaply mounted and to wide range of structures (see e.g. col 3, lines 50-68). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the method of Debost by including the device and method steps of Britton to provide cathodic protection to the mooring chain because the device of Britton has the added benefits of replaceable anodes that can be easily and quickly mounted and removed from structures whereas the anodes of Debost cannot.
Claim 7: Debost in view of Britton does not explicitly teach the steps of:
arranging a further device on the installation tool; and
connecting the further device to a second link of the mooring chain.
However, Debost discloses having anode on each chain link (see e.g. Fig 1 and Fig 4 of Debost). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the method of Debost by having the ROV install multiple anodes on multiple links of the mooring chain using the installation tool to ensure each link has adequate protection from corrosion.
Claim 8: Debost in view of Britton does not explicitly teach that the second link is separated from the first link by at least one chain link. However, Debost discloses having anode on each chain link (see e.g. Fig 1 and Fig 4 of Debost). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the method of Debost in view of Britton by having the ROV install an anode every other link in instances where there is enough protection provided that all links are provided protection.
Claim 12 Debost teaches that chain link remains moveable relative to additional chain links adjacent on each side of the chain link within the mooring chain when the device is connected to the chain link (see e.g. #6 on Fig 1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that using applying the anode assembly of Debost in view of Britton to the chain link would maintain the moveablility of the chain with respect to additional chain links adjacent on each side of the chain link because the anode assembly is only being mounted to the link similarly what is shown in Debost.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Debost in view of Britton as applied to claim 8 above and in further view of Yule (US 20040099539 A1).
Claim 9: Debost in view of Britton does not explicitly teach the step of estimating an optimal number of chain links between the first link and the second link based on at least one of: the corrosivity and the conductivity of the water. Yule teaches that the number of anodes needed in cathodic protection system depends on the surface area of the structure being protected and a combination of the resistances in the system, including the electrolyte resistance (see e.g. [0038]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the method of Debost in view of Britton to determine the number of anodes needed to protect the mooring chain based on the conductivity of the water to ensure proper protection is being provided.
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Debost in view of Britton as applied to claim 8 above and in further view of Terrase (US 5902463 A).
Claim 10: Debost in view of Britton does not explicitly teach the step of re-connecting the installation tool to the device for detaching the device from the chain link.
Terrase discloses a device (see e.g. abstract), the device comprising at least one sacrificial anode (see e.g. abstract and #17 on 3), wherein in that the device further comprises a clamp for carrying the at least one sacrificial anode (see e.g. #42 on Fig 1-4 and col 2, lines 10-14), the clamp having a jaw (see e.g. #33 on Fig 1-4), wherein the device and method are configured for re-connecting the installation tool to the device for detaching the device from the chain link (see e.g. col 4, lines 3-15 of Terrase). The device and method of Terrase has the advantages of incorporating replaceable anodes that can be easily and quickly mounted and removed from structures (see e.g. col 1, lines 43-52). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the method of Debost in view of Britton by including the step of re-connecting the installation tool to the device for detaching the device from the chain link as taught in Terrase so that the method can be used for replaceable anode assemblies to maintain protection over a long period of time.
Claim 11: Debost in view of Britton does not explicitly teach replacing the at least one sacrificial anode with a new sacrificial anode via the ROV. Terrase discloses a device (see e.g. abstract), the device comprising at least one sacrificial anode (see e.g. abstract and #17 on 3), wherein in that the device further comprises a clamp for carrying the at least one sacrificial anode (see e.g. #42 on Fig 1-4 and col 2, lines 10-14), the clamp having a jaw (see e.g. #33 on Fig 1-4), wherein the device and method are configured for re-connecting the installation tool to the device for detaching the device from the chain link (see e.g. col 4, lines 3-15 of Terrase). Like Britton, the device and method of Terrase has the advantages of incorporating replaceable anodes that can be easily and quickly mounted and removed from structures (see e.g. col 1, lines 43-52). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the method of Debost in view of Britton by including the step of re-connecting the installation tool to the device for detaching the device from the chain link as taught in Terrase so that the method can be used for replaceable anode assemblies to maintain protection over a long period of time.
Response to Arguments
Applicant’s arguments filed 09/25/2025 with respect to the rejection(s) of the claim(s) under 35 USC 102 over Terrase (US 5902463 A) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Britton (US 4705331 A).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795