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 .
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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “centerboard” in claims 1, 3, 5, 8 and 10 is used by the claim to mean “keel” or “keel fin,” while the accepted meaning is “a boat hull appendage that can be put up and down in the water.” The term is indefinite because the specification does not clearly redefine the term. Note that as the specification does not enable raising and lowering of the fin, it cannot be considered a centerboard.
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.
[AltContent: textbox (Figure 1- Rawdon Figure 17)]
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Claims 1 and 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over Rawdon US 10,633,058 in view of Holohan US 9,346,527.
Regarding claim 1, Rawdon discloses a maritime drone 1700, which comprises:
a hull which has a body provided with an upper face and with a lower face, and extends along a longitudinal extension direction between a stern end and a bow end;
a centerboard (keel fin) extending projecting from the lower face of said hull in order to give sailing/navigation stability to said maritime drone, wherein said centerboard has a fin-shape; and
at least one wing sail 1702, which comprises a mast connected to said hull and a wing profile 100 connected to said mast and it is suitable to intercept the wind in order to move said maritime drone; and
a second movement system mechanically connected to said wing profile in order to rotate said wing profile around a rotation axis 108 coaxial to said mast (column 13, lines 5-21).
Rawdon does not teach that the centerboard is hollow and it internally defines a containment volume, or that the wing sail is movable between an operative position, in which said wing sail extends at least partially above the upper face of said hull in order to expose at least part of said wing sail to the wind, and an inoperative position, in which said wing sail is at least partially housed in the containment volume of said centerboard in order to retract at least part of said wing sail from the wind, a first movement system mechanically connected to said wing sail to move said wing sail between said operative position and said inoperative position, wherein said first movement system is configured to move said wing sail between said operative position and said inoperative position by means of a linear translation along the rotation axis of said wing profile. Holohan teaches a maritime vessel 100 which comprises:
a hull (top of holds 104) provided with an upper face and with a lower face;
a holding portion (bottom of holds 104) within said hull in order to give sailing/navigation stability to said maritime drone;
at least one sail 120, which is suitable to move said maritime vessel;
wherein said holding portion is hollow and it internally defines a containment volume 122;
said sail being movable between an operative position (Holohan figures 4B-4E), in which said sail extends at least partially above the upper face of said hull in order to expose at least part of said sail to the wind, and an inoperative position (Holohan figure 4A), in which said sail is at least partially housed in the containment volume of said holding portion in order to retract at least part of said sail from the wind; and
a first movement system 150 mechanically connected to said wing sail to move said wing sail between said operative position and said inoperative position, wherein said first movement system is configured to move said wing sail between said operative position and said inoperative position by means of a linear translation along the rotation axis of said wing profile.
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Figure 2- Holohan Figures 4A, 4D and 4E
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the maritime drone of Rawdon by making the sails retractable into the hollow hull/centerboard as taught by Holohan in order to protect the sails when not in use or to give the drone a more compact form factor when desired.
As Holohan teaches that the sail is retracted to the base of the vessel’s interior structure, in the device as taught the centerboard/keel would serve as the storage volume for the sail. In an alternate interpretation, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to lower the containment volume into the centerboard in order to more effectively utilize space or increase the containment volume size, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 3, Rawdon and Holohan teach the invention as claimed as detailed above with respect to claim 1. Holohan also teaches that said hull comprises at least one through cavity extending, at said centerboard, from said upper face to said lower face in order to allow the access of said wing sail into the containment volume of said centerboard (as it must in order to function).
Regarding claim 4, Rawdon and Holohan teach the invention as claimed as detailed above with respect to claim 3. Rawdon also teaches that the wing profile 100 of said wing sail 1702 extends tapered from an attachment edge 116 at said mast to an outlet edge 114 opposite said attachment edge. Holohan also teaches that said through cavity delimiting a passage opening on the upper face of said hull is substantially counter-shaped with respect to the cross-section of said sail, according to a plane orthogonal to said mast. Note that both the sail and through cavity of Holohan are round, so as combined with Rawdon the through cavity would match the shape of the wing. Alternatively, it would have been an obvious matter of design choice to make the different portions of the through cavity match the wing sail profile or of whatever form or shape was desired or expedient in order to allow the sail to pass through with the smallest possible opening. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding claim 5, Rawdon and Holohan teach the invention as claimed as detailed above with respect to claim 4. Rawdon also teaches two wing sails 1802A, 1802B, each provided with a corresponding said mast connected to said hull and a corresponding said wing profile connected to said mast. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the maritime drone of Rawdon figure 17 with multiple sails as taught by Rawdon figure 18 in order to increase or better allocate the wing forces. As modified, the hull would comprise two through cavities, one for each said wing sail, extending, at said centerboard, from said upper face to said lower face in order to allow the access of both said wing sails in the containment volume of said centerboard.
Regarding claim 6, Rawdon and Holohan teach the invention as claimed as detailed above with respect to claim 2. Rawdon also teaches that the wing profile 100 of said wing sail 1702 comprises at least two modules, including an upper module 1702A and a lower module 1702B, which are rotatably movable with respect to said rotation axis and are rotatably movable with relative motion with respect to each other around said rotation axis 108 (column 13, lines 5-21).
Regarding claim 7, Rawdon and Holohan teach the invention as claimed as detailed above with respect to claim 6. Rawdon also teaches that the upper module 1702A and the lower module 1702B of the wing profile 100 of said wing sail 1702 are actuatable to rotate one independently from the other around said rotation axis 108 (column 13, lines 5-21).
Regarding claim 8, Rawdon and Holohan teach the invention as claimed as detailed above with respect to claim 7. Holohan also teaches that said sail 120 is movable into an intermediate position between said operative position and said inoperative position, in which the lower module 140 of said sail is at least partially housed in the containment volume 122 of said centerboard in order to retract said lower module from the wind and the upper module 130 of said wing profile is placed outside the containment volume of said centerboard above the upper face of said hull in order to expose said upper module to the wind (see Holohan figure 4D).
Regarding claim 9, Rawdon and Holohan teach the invention as claimed as detailed above with respect to claim 6. Holohan also teaches that one of said modules 130 defines, therein, a housing volume for the other of said modules 140 and that the other of said modules is retractable in said housing volume (see Holohan figures 4A & 4B). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the maritime drone of Rawdon by making the sail segments nestable as taught by Holohan in order to allow the sail to retract into a smaller containment volume.
Regarding claim 10, Rawdon and Holohan teach the invention as claimed as detailed above with respect to claim 9. Holohan also teaches that said housing volume is obtained inside said upper module 130 and that said lower module 140 is slidably inserted into said housing volume in a telescopic manner between an extended position, in which the lower module projects from said housing volume with respect to said upper module, and a retracted position, in which said lower module is retracted into said housing volume; said sail 120 being movable between said operative position, in which said lower module is placed outside the containment volume of said centerboard above the upper face of said hull and said upper module is in extended position with respect to said lower module (see Holohan figure 4E), an inoperative position, in which said lower module is housed in the containment volume of said centerboard and said lower module is in retracted position in the housing volume of said upper module, and an intermediate position between said operative position and said inoperative position, in which said upper module is placed outside said containment volume above said upper face in order to expose said upper module to the wind and said lower module is in retracted position in the housing volume of said upper module (see Holohan figure 4B) in order to retract said lower module from the wind.
Holohan does not teach that the upper module is housed inside the lower module, however it would have been obvious to one having ordinary skill in the art at the time the invention was made to reverse which section nests inside the other in order to suit packaging restrictions or tailor which section is exposed in the intermediate position, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Response to Arguments
Applicant’s arguments, see pages 7-10, filed 12/3/25, with respect to the rejection over McClure have been fully considered and are persuasive. This rejection of claim 1 has been withdrawn.
Applicant's arguments filed 12/3/25 with respect to the 103 rejection in view of Rawdon and Holohan have been fully considered but they are not persuasive.
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, Rawdon teaches a sailing ship with a wing said and centerboard/keel, while Holohan teaches a sailing ship with sails that can telescope into a lower storage area. So while the examiner agrees that Rawdon does not teach that the sail is retractable, Rawdon is not relied upon for this teaching. Likewise, the examiner agrees that Holohan does not teach a centerboard/keel, and is only relied upon for teaching a retractable sail.
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, one of ordinary skill in the art would understand the benefits of storing the sail away below the top deck, as given above. One ordinary skill in the art would also understand that extending the containment volume to the centerboard/keel would be beneficial in increasing the storage volume, as detailed above.
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). Again in this case, one of ordinary skill in the art would understand the benefits of storing the sail away below the top deck, as given above. One ordinary skill in the art would also understand that extending the containment volume to the centerboard/keel would be beneficial in increasing the storage volume, as detailed above.
Where applicant argues that retracting the sail into the centerboard/keel is not an obvious rearrangement of parts, the examiner disagrees.
First, as detailed above, Holohan teaches that a retractable sail can be brought down to the very base of the vessel. If this teaching is applied to Rawdon (in which the very base is the centerboard/keel), then the wing sail would be at least partially housed in the containment volume of said centerboard/keel.
Second, as detailed above (in an alternative interpretation), moving the containment volume to the centerboard/keel is an obvious rearrangement of parts. The applicant argues that In re Japikse does not apply in this situation, as “The facts of Japikse indicate that relocation of the starting switch would not otherwise modify the operation of the device.” This also applies in this case- as Holohan teaches retracting the sail to the very base of the vessel, relocating the very base from the hull bottom to the centerboard/keel does not otherwise modify the operation of the device- it still simply performs the action of extending and retracting. Any other modifications performed in relation to the relocation of parts would be obvious to one of ordinary skill in the art. Put more simply, just changing where the bottom of the vessel is does not change how the retraction mechanism functions.
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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/MARC BURGESS/Primary Patent Examiner, Art Unit 3615