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 .
Election/Restrictions
Claim 4 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/8/25.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the other wing surfaces (claim 2) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 5 and 8 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 5, line 1 recites that the “floating elements are mobile along rigid supports.” It is unclear if these are the same “one or more supports connected to the wing surfaces and associated with floating elements” recited in line 7 of parent claim 1. For the purposes of this action (and because this is the configuration depicted) they will be assumed to be the same supports.
Regarding claim 8, the phrase "if necessary" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is further unclear if the phrase "if necessary" applies to the inclusion of the wheels altogether or just the removability of the wheels.
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 1, 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Daniel US 4,452,166 in view of Vos US 2003/0089293 and alternately also in view of Lang US 3,623,444.
Regarding claim 1, Daniel discloses a hull with variable geometry for a vessel, comprising one or more completely immersed parts 12, which are configured to provide part of the buoyancy thrust and are integral with an emerged part of the hull 14 by means of one or more uprights 32, and one or more immersed wing surfaces 42, 44, 46, which, in a situation in which the vessel travels at a sufficiently high speed, are configured to provide the remaining part of the vertical thrust required to keep the vessel above the surface of water at a predetermined height (being used at least for stabilization, which provides required vertical thrust), the hull further comprising:
one or more supports 43, 45, 47 connected to the wing surfaces and associated with floating elements 60 which are mobile with respect to said completely immersed part, said floating elements being fixed to said supports or mobile with respect to said supports, said floating elements thus being substantially cooperating with said completely immersed part and with said wing surfaces, said wing surfaces being fixed with respect to said completely immersed part thereto and said floating elements being configured to increase their immersion as the speed of the vessel decreases, and therefore provide the vertical thrust to maintain or adjust a distance of the vessel from the water in a manner that is optimal and functional for the use of the vessel even at reduced speeds or when the vessel is stationary (column 3, lines 35-50).
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Figure 1- Daniel Figure 4
Daniel does not teach that said one or more uprights are telescopic. Vos teaches a hydrofoil vessel in which the central immersed section 2 is telescopic with respect to the main hull 1. It would have been obvious to one of ordinary skill in the art at the time the invention was filed modify the vessel of Daniel with a telescopic immersed section as taught by Vos in order to vary the draft of the vessel or the overall height when desired, therefor gaining more flexibility and better control. Note that the teaching of telescopic adjustment would apply to the uprights and supports of Daniel, resulting in the ability to increase or decrease a distance of said completely immersed part, said wing surfaces, and said floating elements from said emerged part as a function of navigation requirements (or any other reason desirable). Also note that as the adjustment comprises one element slidably moving in an out of another, it can be considered telescopic. In an alternative interpretation, then it would have been an obvious substitution of functional equivalents to substitute telescopic supports in for the lift system in order to save space or utilize a simple, well-known mechanism, since a simple substitution of one known element for another would obtain predictable results. KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739, 1740, 82 USPQ2d 1385, 1395, 1396 (2007).
Note that in operation, there could be scenarios in which hull 12 is at least temporarily partially submerged. In an alternate interpretation, Daniel does not disclose that hull 12 is completely immersed during operation. Lang teaches a high-speed ship with hulls 40, 50 that remained submerged during travel. It would have been obvious to one of ordinary skill in the art at the time the invention was filed modify the vessel of Daniel such that the hulls are submerged as taught by Lang in order to minimize surface wave reaction (column 2, lines 5-9).
Regarding claim 2, Daniel and Voss, together or also in view of Lang teach the invention as claimed as detailed above with respect to claim 1. Daniel also discloses other wing surfaces, fixed or mobile, independent of said wing surfaces and which contribute to controlling a trim of the hull of the vessel in flight. In this case, without further limitation, any of wings 42, 44, 46 can be considered “other wing surfaces” while the rest can be considered “wing surfaces,” and all contribute to trim to some degree.
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Figure 2- Daniel Figure 5
Regarding claim 5 as best understood, Daniel and Voss, together or also in view of Lang teach the invention as claimed as detailed above with respect to claim 1. Daniel also discloses that said floating elements 60 are mobile along rigid supports 43, 45, 47 positioned outside said one or more uprights 32.
Claims 6, 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Daniel US 4,452,166 in view of Vos US 2003/0089293 and Sancoff US 9,555,859, and alternately also in view of Lang US 3,623,444.
Regarding claim 6, Daniel and Voss, together or also in view of Lang teach the invention as claimed as detailed above with respect to claim 1. Daniel does not teach a propulsion system which is frontal with respect to a direction of travel of the vessel. Sancoff teaches a marine vessel 5 with immersed sections 200 comprising a propulsion system 215 which is frontal with respect to a direction of travel of the vessel. It would have been obvious to one of ordinary skill in the art at the time the invention was filed modify the immersed section of Daniel with frontal propulsion as taught by Sancoff “so that the forward-facing, pulling propellers can ‘bite’ into virgin water, whereby to obtain maximum efficiency” (column 15, lines 44-47).
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Figure 3- Sancoff Figure 15
Regarding claim 7, Daniel and Voss, together or also in view of Lang teach the invention as claimed as detailed above with respect to claim 1. Daniel does not teach a system for delivering compressed air onto an external surface of the completely immersed part. Sancoff teaches a marine vessel 5 with immersed sections 200 comprising a system 275 for delivering compressed air onto an external surface of the completely immersed part (column 16, lines 45-58). It would have been obvious to one of ordinary skill in the art at the time the invention was filed modify the immersed section of Daniel with the compressed air system as taught by Sancoff in order to decrease friction and increase efficiency.
Regarding claim 9, Daniel and Voss, together or also in view of Lang teach the invention as claimed as detailed above with respect to claim 1. Daniel does not teach that the completely immersed part is a torpedo-shaped volume having the function of a tank for fuel of the vessel and/or for batteries and/or fuel cells. Voss teaches that the completely immersed parts 40, 50 are a torpedo-shaped volume. It would have been obvious to one of ordinary skill in the art at the time the invention was filed modify the immersed section of Daniel to be torpedo-shaped as taught by Voss in order to provide a hydrodynamic shape while still providing space for internal components.
Sancoff teaches a marine vessel 5 in which immersed sections 200 are a torpedo-shaped volume having the function of a tank for fuel of the vessel and/or for batteries and/or fuel cells (column 10, lines 49-53). It would have been obvious to one of ordinary skill in the art at the time the invention was filed modify the immersed section of Daniel to be torpedo-shaped and house the fuel system as taught by Sancoff in order to efficiently package all necessary components and locate them away from cabin compartments.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Daniel US 4,452,166 in view of Vos US 2003/0089293 and Fox US 3,226,738, and alternately also in view of Lang US 3,623,444.
Regarding claim 8, Daniel and Voss, together or also in view of Lang teach the invention as claimed as detailed above with respect to claim 1. Daniel does not teach wheels positioned inside said floating elements and removable, if necessary, in order to make the hull movable on land. Fox teaches a vessel comprising wheels positioned inside floating elements 11 in order to make the hull 10 movable on land. It would have been obvious to one of ordinary skill in the art at the time the invention was filed modify the floats of Daniel with retractable wheels as taught by Fox in order to allow the vessel to be towed on land without a separate trailer.
Please note that all components are removable.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Daniel US 4,452,166 in view of Vos US 2003/0089293 and Bussard US 6,499,419, and alternately also in view of Lang US 3,623,444.
Regarding claim 10, Daniel and Voss, together or also in view of Lang teach the invention as claimed as detailed above with respect to claim 1. Daniel also teaches that the wing surfaces and wings are used in concert when traveling, but does not explicitly teach a control system equipped with inertial sensors and height detectors configured to manage movement of the wing surfaces and for active control of motions of the vessel in two main conditions of use, namely when maneuvering by exploiting an increase or reduction of immersed volume of said floating elements, and in flight at cruising speed by varying lift of said wing surfaces. Bussard teaches a hydrofoil vessel comprising a control system 30 equipped with sensors and height detectors configured to manage movement of the wing surfaces and for active control of motions of the vessel (column 3, lines 7-16). It would have been obvious to one of ordinary skill in the art at the time the invention was filed modify the vessel of Daniel with sensors and automatic control as taught by Lang in order to ensure optimum operation of the vessel while requiring less effort by the crew. Note that it has been held that broadly providing a mechanical or automatic means to replace manual activity which has accomplished the same result involves only routine skill in the art. In re Venner, 120 USPQ 192.
Neither Daniel nor Bussard explicitly teach inertial sensors, however examiner is taking official notice that inertial sensors are well-known in the art. It would have been obvious to employ inertial sensors in the control system of Daniel as taught in order to ensure that the controller has a complete representation of the operating environment (acceleration, pitch, etc.) to provide the most comprehensive control.
Response to Arguments
Applicant's arguments filed 11/16/25 have been fully considered but they are not persuasive.
Regarding the drawing objection, the applicant argues that the figures show wing surfaces 36 which are independent from wing surfaces 15. However, elected species C (figures 7-17) does not comprise wing surfaces 36. If the applicant’s intent was to recite wings 36, then claim 2 must be withdrawn, as it does not read on the elected species.
Regarding the 112(b) rejection of claim 5, where the applicant argues that “there is no ambiguity in the claim language,” the examiner disagrees. When a parent claim recites that “one or more supports connected to the wing surfaces and associated with floating elements” and a dependent claim then recites that the “floating elements are mobile along rigid supports,” it is unclear if these are the same supports. In fact, there are two factors that indicate that a new component is being introduced:
First, if a previously introduced component is being referenced, it is proper to preface is with the article “the,” as is the “floating elements are mobile along the rigid supports.” This was not done.
Second, claim 5 uses the modifier “rigid” on the supports, which is not in parent claim 1. This would indicate that the “supports” and “rigid supports” are two different components.
To clarify claim 5, it is recommended to preface the supports with “the” and either remove the modifier “rigid” or also include it in claim 1.
Regarding the 112(b) rejection of claim 8, where the applicant argues that “the functional relationship is clear,” the examiner disagrees. MPEP § 2173.05(d) is clear that description of examples or preferences is properly set forth in the specification rather than the claims. Even if it were permitted to have a contingency of need in an apparatus claim, it is further unclear if the phrase "if necessary" applies to the inclusion of the wheels altogether or just the removability of the wheels. The claim must be rephrased to positively recite structural limitations without contingent modifiers. That is, under applicant’s expressed intention, the phrase “if necessary” adds nothing but confusion to the claim- the wheels are either included or they are not, and are either removable or not.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, most of the applicant’s arguments are directed to the fact that none of the prior art of record (individually) teach every element of the claim, but as detailed above, one of ordinary skill in the art would understand how these references can be combined to arrive at the claimed invention.
In response to applicant's first, third and fourth arguments that “Vos teaches a fundamentally different structure and purpose for telescopic movement than claimed,” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, both Daniel and Voss teach vessels with a lower and upper hull. Where Daniel does not teach that the overall distance between the two can be adjusted, Vos does. One of ordinary skill in the art would understand that this lesson could be applied to the vessel of Daniel in order to vary the draft of the vessel or the overall height when desired. Note that even though the intended use is irrelevant, applicant characterizes that “Vos's telescopic feature is to retract the submerged body into the hull recess for drag reduction when the hydrofoil capability is not needed,” which is a navigation requirement. That is, navigation as a hydrofoil is not required.
Where applicant argues that “Second, Daniel's floating elements 60 operate independently from any hull depth adjustment,” it is unclear how this affects the proposed modification. Daniels floating elements would be free to operate as originally intended, while the telescopic uprights would add an additional capability.
Regarding claim 2, the applicant argues that a subset of wings within 42, 44 and 46 cannot be considered “other wing surfaces.” There are two issues:
The applicant argues that this is because “The claim requires that these other wing surfaces be independent of the wing surfaces recited in Claim 1.” As stated in the action above, the wings are independent in that they are separate. Any further limitation intended by the applicant is not recited in the claim.
Second, the applicant stated in their response that they are relying on wings 36 to be the “other wing surfaces,” which are not disclosed in relation to the elected embodiment.
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, the applicant argues that “The BTFs 200 in Sancoff are surface-piercing floats that provide buoyancy, not completely immersed parts as recited in Claim 1.” the examiner has two main responses:
Sancoff is not relied upon for teaching that the floats are completely submerged, as this was previously taught by Daniel and Lang.
Sancoff does not specifically state whether or not the BTFs are completely submerged (though it is stated that “the gas turbine engines are housed underwater in BTFs 200,” column 14, lines 3-7), however the BTFs are depicted with air holes creating bubbles on all sides (see Sancoff figure 15), which would not be possible if the BTFs were not completely submerged.
But moreover, one of ordinary skill in the art would still understand that the benefits of a leading “puller” prop would still apply to a body that was either completely or partially submerged.
Regarding claim 7, applicant argues that “Sancoff’s compressed air delivery system is structurally different from what would be understood by a person of ordinary skill in the art as ‘a system for delivering compressed air onto an external surface of the completely immersed part’ in the context of the claimed subject matter.” As this is exactly what Sancoff teaches, the examiner cannot agree. There are no structural details in the claim or the disclosure that would differentiate over the system as taught by Sancoff.
Regarding claim 9, the applicant argues that “a tubular structure is not the same as a torpedo-shaped volume,” clarifying that “a torpedo shape has specific hydrodynamic characteristics including a rounded nose, cylindrical mid-section, and tapered tail.” It is first important to note that applicant’s proposed interpretation of “torpedo-shaped” is not a part of the disclosure as originally filed. Also, “torpedo” is defined as “a thin cylindrical self-propelled underwater projectile” which does not necessitate specific rounding or tapering. Torpedoes can have a wide range of shapes. But more importantly, both Sancoff and Lang teach float shapes similar that that disclosed in the current invention.
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, the applicant argues that “Fox's structure (of wheels inside the floats) is fundamentally different from the claimed subject matter.” The applicant appears to claim that Fox’s float wheel cannot be used with a vessel such as Daniel because they “would add unnecessary weight and complexity that would undermine this design objective.” The examiner replies that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Fox very simply teaches that a float body can incorporate wheels for overland travel. That lesson can be applied to any marine vessel, including that of Daniel.
Regarding claim 10, applicant argues that the control system of Bussard could not be applied to the vessel of Daniel. Again, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Daniel, Lang and Voss teach a vessel that operates with the same two modes as the current invention. Bussard is relied upon to teach that a vessel with different operating modes can use a control system with sensors to control these modes. One of ordinary skill in the art would understand how these teachings could be used together to arrive at the invention as claimed.
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 Marc Burgess whose telephone number is (571)272-9385. The examiner can normally be reached M-F 08:30-15:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel (Joseph) Morano can be reached at 517 272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARC BURGESS/Primary Patent Examiner, Art Unit 3615