DETAILED ACTION
Status of Claims:
Claims 1, 2, and 7-11 are pending.
Claim 1 is amended.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/08/2025 has been entered.
Response to Arguments
Applicant's arguments filed 10/08/2025 have been fully considered but they are not persuasive. The applicant argues that the prior art does not teach “wherein the propulsion unit protection members serves to protect the propulsion unit when the spilled oil recovery apparatus is stored in a land environment”. He applicant states that Lancaster is silent to protecting the propulsion unit during land storage and that Park’s protection structure is designed for in-water operation. Although the applicant is correct that the protection structure is designed for in-water operation, the prior art does not need to disclose the same intended use of a feature for the claimed limitation to be met. The limitation of “serves to protect the propulsion unit when the spilled oil recovery apparatus is stored in a land environment” is an intended use of the propulsion unit protection members, not a structural feature of the protection members. The specification does not identify any structural features of the protection members that correlate to this intended use. Therefore the intended use of protecting when stored in a land environment only adds patentable weight to the extent that the prior art structure must be capable of the same use. In the instant case, as portions of the propulsion unit protection member (protection device 10) extend below the propulsion unit (propeller 2) (see Park ‘107, fig. 1) the propulsion unit protection members serves to protect the propulsion unit when the spilled oil recovery apparatus is stored in a land environment.
The applicant argues that “impermissible hindsight” would be required to find this limitation obvious. 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). This argument is further not persuasive because the feature is already present in Park ‘107 and not an additional modification to Park ‘107.
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 (i.e., changing from AIA to pre-AIA ) 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 1, 2, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lancaster (US 2012/0031829) in view of Park et al (KR 102135107, Cited in IDS, English machine translation provided, hereafter referred to as ‘107).
Regarding Claim 1:
Lancaster teaches the spilled oil recovery apparatus comprising: a body (hull 12) configured to provide buoyancy so that the spilled oil recovery apparatus floats on a surface of sea (see para. 0022, 0023), and to separate oily water comprising a mixture of seawater and spilled oil into the seawater and the spilled oil (see para. 0022); and a spilled oil storage comprising a storage body connected to the body so as to store recovered spilled oil (storage tank 52) (see para. 0028), wherein the body comprises: an oily water inlet configured to form a space having a designated area at one end of the body so that the oily water on the sea is introduced into the oily water inlet (forward end 16 defining oil recovery bay 18) (see para. 0023); a spilled oil separator (oil recovery assembly) provided to communicate with the oily water inlet so as to separate the spilled oil from the introduced oily water (see para. 0024); and a temporary spilled oil storage (oil recovery tray 48) configured to receive the spilled oil from the spilled oil separator and to transfer the spilled oil to the spilled oil storage (see para. 0028); a propulsion unit (outboard motors) provided to propel the spilled oil recovery apparatus (see para. 0031)
Lancaster does not teach and propulsion unit protection members provided on a bottom surface of the body, and configured to surround the propulsion unit so as to space the propulsion unit apart from ground, wherein the propulsion unit protection members comprise an upper end part is configured such that the propulsion unit is fixedly coupled thereto while protecting the bottom surface of the body.
‘107 teaches propulsion unit protection members provided on a bottom surface of the body, and configured to surround the propulsion unit so as to space the propulsion unit apart from ground, wherein the propulsion unit protection members comprise an upper end part is configured such that the propulsion unit is fixedly coupled thereto while protecting the bottom surface of the body (see Abstract, figs 5 and 6 annotated below), wherein the propulsion unit protection members serves to protect the propulsion unit when the spilled oil recovery apparatus is stored in a land environment (see fig. 4). The intended use of protecting when stored in a land environment only adds patentable weight to the extent that the prior art structure must be capable of the same use. In the instant case, as portions of the propulsion unit protection member (protection device 10) extend below the propulsion unit (propeller 2) (see Park ‘107, fig. 4) the propulsion unit protection members serves to protect the propulsion unit when the spilled oil recovery apparatus is stored in a land environment.
Lancaster and ‘107 are analogous inventions in the art of motor powered marine vessels. It would have been obvious to one skilled in the art before the effective filing date of the invention to add the propulsion unit protection member of ‘107 around the propulsion unit of Lancaster because it improves the resilience of the vessel (see ‘107, pg. 1, 2nd paragraph). It would have additionally ben obvious to add the propulsion unit protection member around the propulsion unit of Lancaster because it is the simple addition of a known feature to a known apparatus, obviously resulting in the protection of the propulsion unit. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S.__,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
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Regarding Claim 2:
Lancaster, as modified, teaches the spilled oil recovery apparatus according to claim 1, wherein the spilled oil separator comprises: a spilled oil adsorber (oil recovery discs 32) provided to come into contact with the oily water introduced through the oily water inlet and to be rotated so as to selectively adsorb the spilled oil floating on a surface of the oily water (see para. 0025); and a scraper (wiper assemblies 36) provided to come into contact with the spilled oil adsorber and to cover the spilled oil adsorber so as to scrape out the spilled oil adsorbed onto a surface of the spilled oil adsorber and thus to desorb the spilled oil from the spilled oil adsorber (see para. 0026), wherein the spilled oil adsorber is detachably coupled to the body (adsorber is attached to the body and could be detached) (see fig. 1).
Regarding Claim 11:
Lancaster, as modified, teaches the spilled oil recovery apparatus according to claim 2, wherein the scraper comprises: a scraper body formed to cover the spilled oil adsorber; at least one collection member (wiper elements 44)) coupled to the scraper body and provided to come into contact with the spilled oil adsorber; and at least one collection channel (shallow trough) provided on the scraper body so as to gather and transfer the spilled oil collected by the at least one collection member towards the temporary spilled oil storage (see par. 0027, 0028).
Claim(s) 1, 7, 8, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park et al (KR 20200063394, English Machine translation provided) in view of Park et al (KR 102135107, Cited in IDS, English machine translation provided, hereafter referred to as ‘107) and further in view of Sorley et al (USPN 5,792,350).
Regarding Claim 1:
Park teaches the spilled oil recovery apparatus comprising: a body configured to provide buoyancy so that the spilled oil recovery apparatus floats on a surface of sea, and to separate oily water comprising a mixture of seawater and spilled oil into the seawater and the spilled oil (see pg. 2, 5th paragraph); and a spilled oil storage (oil storage unit 300) comprising a storage body connected to the body so as to store recovered spilled oil (see pg. 3, last paragraph), wherein the body comprises: an oily water inlet (inlet region) configured to form a space having a designated area at one end of the body so that the oily water on the sea is introduced into the oily water inlet (see pg. 2, 5th paragraph); a spilled oil separator (oil water separation unit) provided to communicate with the oily water inlet so as to separate the spilled oil from the introduced oily water (see pg. 34th paragraph); and a temporary spilled oil storage (inlet pipe 311a) configured to receive the spilled oil from the spilled oil separator and to transfer the spilled oil to the spilled oil storage (see pg. 3, last paragraph).
Park does not teach a propulsion unit provided to propel the spilled oil recovery apparatus: and propulsion unit protection members provided on a bottom surface of the body, and configured to surround the propulsion unit so as to space the propulsion unit apart from ground, wherein the propulsion unit protection members comprise an upper end part is configured such that the propulsion unit is fixedly coupled thereto while protecting the bottom surface of the body. Park further teaches that the spilled oil recover apparatus is towed (see Abstract)
Sorely teaches an oil spill recovery apparatus. Sorely further teaches that towing can be substituted for on board propulsion units (see col. 4 lines 50-55).
‘107 teaches a propulsion unit provided to propel a vessel: and propulsion unit protection members provided on a bottom surface of the body, and configured to surround the propulsion unit so as to space the propulsion unit apart from ground, wherein the propulsion unit protection members comprise an upper end part is configured such that the propulsion unit is fixedly coupled thereto while protecting the bottom surface of the body (see Abstract, figs. 5 and 6 annotated above) wherein the propulsion unit protection members serves to protect the propulsion unit when the spilled oil recovery apparatus is stored in a land environment (see fig. 4). The intended use of protecting when stored in a land environment only adds patentable weight to the extent that the prior art structure must be capable of the same use. In the instant case, as portions of the propulsion unit protection member (protection device 10) extend below the propulsion unit (propeller 2) (see Park ‘107, fig. 4) the propulsion unit protection members serves to protect the propulsion unit when the spilled oil recovery apparatus is stored in a land environment.
Park, Sorely, and ‘107 are analogous inventions in the art of marine vessels. It would have been obvious to one skilled in the art to add the propulsion unit and propulsion unit protection member of ‘107 on a bottom surface of the body of Park because it is the simple addition of a known feature to a known apparatus, obviously resulting in the self propulsion and protection of the propulsion unit. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S.__,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.). Further one would be motivated to add the propulsion unit as it is known that the towing of Park can be substituted by an on board propulsion unit (see Sorely col. 4 lines 50-54).
Regarding Claim 7:
Park, as modified, teaches the spilled oil recovery apparatus according to claim 1, wherein the storage body comprises: at least one folding part provided to fold the storage body in a direction of reducing a length (folded in a longitudinal direction) of extension thereof (see pg. 4, 5th paragraph).
Regarding Claim 8:
Park, as modified, teaches the spilled oil recovery apparatus according to claim 1, wherein the spilled oil storage comprises: a seawater outlet (sea water discharge unit 360) formed in a bottom surface of the spilled oil storage so as to discharge seawater present in the spilled oil stored in the spilled oil storage, wherein the seawater outlet comprises: an opening configured to form an open space having a designated area so that the spilled oil storage communicates with outside therethrough; and a discharge amount adjustment member (can selectively open/close, therefore a valve is inherent) provided to vary an open area (vary from at least open to closed) of the opening so as to adjust an amount of seawater discharged through the opening (see pg. 5, 2nd paragraph).
Regarding Claim 10:
Park, as modified, teaches the spilled oil recovery apparatus according to claim 1, wherein the spilled oil storage comprises: shape maintaining parts (frame portions 331, 332, and 333) provided to surround an outer surface of the storage body so as to maintain a shape of the storage body (see pg. 4, 5th paragraph).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park et al (KR 20200063394, English Machine translation provided) in view of Park et al (KR 102135107, Cited in IDS, English machine translation provided, hereafter referred to as ‘107) and further in view of Sorley et al (USPN 5,792,350)as applied to claim 8 above, and further in view of Jang (KR 10169068, English machine translation provided).
Regarding Claim 9:
Park, as modified, teaches the spilled oil recovery apparatus according to claim 8.
Park does not teach wherein the spilled oil outlet further comprises: a filter provided to surround the opening so as to filter out oil present in the seawater discharged from the spilled oil storage.
Jang teaches a spilled oil outlet that further comprises: a filter (filter membrane 166) provided to surround the opening so as to filter out oil present in the seawater discharged from the spilled oil storage (see pg. 4, 4th paragraph).
Park and Jang are analogous inventions in the art of oil recovery apparatuses. It would have been obvious to one skilled in the art before the effective filing date of the invention to add the filter of Jang to the outlet of Park because it prevents the outflow of oil from the outlet (see Jang pg. 4, 4th paragraph).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 12/09/2025