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
Applicant’s election without traverse of Specie II in the reply filed on 07/30/2025 is acknowledged.
Applicant alleges claims 1, 2, 4-6, 9-16 and 18-21 are drawn to the elected specie.
However, on closer review the "rotating shaft" of cl. 5 is not found in specie II so claims 5-10 are not drawn to the elected specie and are considered withdrawn.
Claims 3, 5, 6, 7-8, 9, 10, 17 are non-elected.
Claims 1, 2, 4, 11-16, 18-21 remain.
Remarks
This communication is in response to Application No. 18/087,179 filed on 12/22/2022 and the response received 07/30/2025.
Claims 1, 2, 4, 11-16, 18-21 are currently pending and have been examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/22/2022 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings filed 12/22/2022 are acceptable.
Claim Objections
Claim 1 is objected to because of the following informalities:
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However the specification provides no support for ‘a thrusting mechanism’. The specification does provide support for “thrusting means’ and the claim is interpreted as means for the purpose of examination.
Appropriate correction is required.
Claim Interpretation Under 35 USC § 112
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f): "mechanism for," "module for," "device for," "unit for," "component for," "element for," "member for," "apparatus for," "machine for," or "system for." See MPEP 2181.I.A.
Such claim limitation(s) in the instant application is/are:
“a thrusting means configured to be acted on by a remotely operated vehicle to move the locking plate from the first position to the second position” in claim 1.
The presumption that 35 U.S.C. 112(f) does not apply to a claim limitation that does not use the term "means" is overcome when "the claim term fails to 'recite sufficiently definite structure' or else recites 'function without reciting sufficient structure for performing that function.' The following three prong analysis is used:
a) Does the claim limitation use the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function?
Yes. The term “means” is considered non-structural terms having no specific structural meaning = generic placeholder.
b) Is the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"?
Yes. The generic placeholder is modified by functional language “configured to be acted on by a remotely operated vehicle to move the locking plate from the first position to the second position”.
c) Is the term "means" or "step" or the generic placeholder modified by sufficient structure, material, or acts for performing the claimed function?
No. Claim 1 does not recite sufficient structure, material, or acts for performing the claimed function.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The ““a thrusting means configured to be acted on by a remotely operated vehicle to move the locking plate from the first position to the second position” in claim 1 is interpreted per the specification as the structure corresponding to 218 (circled) in fig. 12.
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If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 of this title, 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.
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.
Claims 1, 2, 4, 11, 18, 20 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 395 743 A1, hereinafter D1, in view of US 3,967,572, hereinafter D2.
As to claim 1.
D1 discloses an underwater connector comprising:
a connector body (10 in fig. 3) including:
a first end (generally connecting part 14) with an anchoring point (47);
a second end (head part 11) for the anchoring of a chain (the use of ‘for indicates this is a statement of intended use. All functional implications have been carefully considered but are deemed not to impose any patentably distinguishing structure over that disclosed by the prior art reference. It has been held that 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 satisfying the claimed structural limitations. MPEP 2114), the second end (generally head part 11) including an inlet opening (opening 12);
a housing (head part 11) communicated with the inlet opening (opening 12) and configured to house an end link of the chain (As well as in Fig. 4 it can be seen, the opening 12 in the head part 11 has a shape which allows passage of the link chain 51);
a locking plate (slider 21) being moveable from a first position outside the housing of the connector body (fig. 3) hand a second position inside the housing of the connector body (e.g. fig. 1), when in the first position the end link of the chain is allowed to pass through the inlet opening and into the housing of the connector body (via opening 12), when in the second position the locking plate contacts the end link to lock the end link inside the housing of the connector body (fig. 8), the locking plate (slider 21) including a through groove (22 in fig. 5) for receiving a link of the chain other than the end link (e.g. figs. 6-7).
D1 does not explicitly disclose:
a thrusting means (as interpreted supra) configured to be acted on by a remotely operated vehicle to move the locking plate from the first position to the second position (it is noted that note the phrase “configured to” is typically used to connect structure to a function, similar to the word “for.” “Configured to” (for) usually means the structure can perform the function with no additional modification therefore this recitation is interpreted as a functional recitation. While features of an apparatus may be recited either structurally or functionally; apparatus claims cover what a device is, not what a device does. MPEP 2114. All functional implications have been carefully considered but are deemed not to impose any patentably distinguishing structure over that disclosed by the prior art reference. The function of to be acted on by a remotely operated vehicle to move the locking plate from the first position to the second position is an inherent characteristic of the prior art structure because as a handle it is capable of being acted upon by anything. Note the recitation of the ROV is not a positive recitation. A claim is only limited by positively recited elements. MPEP 2115).
An invention is obvious where some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. D2 is in a related field and teaches a thrusting means (tubular handle 34 in fig. 2).
It would be obvious to one of ordinary skill in the art to use the teachings of D2 to satisfy the requirement for a thrusting means (as interpreted supra) configured to be acted on by a remotely operated vehicle to move the locking plate from the first position to the second position for the purpose of providing ease of manipulation. Combining prior art elements according to known methods to yield predictable results is obvious.
As to claim 2.
D1 discloses wherein the link of the chain other than the end link is a penultimate link of the chain (figs. 6-7).
As to claim 4.
D1 discloses wherein the locking plate (slider 21) is configured to move linearly from the first position to the second position (as indicated by arrow in fig. 3).
As to claim 11.
D1 discloses wherein the inlet opening (opening 12) has an inner wall for receiving the end link of the chain (fig. 3), the inner wall extending directly between an upper edge and a lower edge (figs. 3-5), the lower edge having a cross shape (fig. 4), and the upper edge being wider than the lower edge (note bevel in fig. 3), such that the inner wall defines a plurality of inclined channels that are configured to guide each of the end link and penultimate link of the chain towards the lower edge (figs. 6-7).
As to claim 18.
D1 discloses the connector body includes a support structure that includes (fig. 3) a rod (47) arranged between two lugs (31) of the connector body.
As to claim 20.
D1 discloses wherein the housing of the connector body is sized to simultaneously receive the end link and the penultimate link (fig. 6 below), such that when the locking plate (slider 21) is in the second position, the end link is in contact with the locking plate (slider 21) and the penultimate link is arranged in the through groove of the locking plate (slider 21).
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Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over EP 3 395 743 A1, hereinafter D1, in view of US 3,967,572, hereinafter D2, and further in view of US 2015/0361634, hereinafter D3.
As to claim 21.
D1 discloses a method for connecting a chain under water using the underwater connector according to claim 1, the method comprises:
introducing at least the end link of the end of the chain into the housing of the connector body (fig. 6) through the inlet opening (opening 12);
using a remotely operated vehicle to move the locking plate (slider 21) from the first position (fig. 6) to the second position (fig. 8) to lock the end of the chain housed in the housing (fig. 8);
and pulling the chain towards the inlet opening (opening 12) until the end link contacts (fig. 9) the locking plate (slider 21).
D1 as modified does not explicitly disclose the following which is taught by D3: using a remotely operated vehicle to move the locking plate. D3 teaches it is known in the art to use ROV to perform subsea operations ([0008] to aid positioning, an underwater ROV (remotely operated vehicle) transporting the necessary attachment means such as a bolt, nut, etc., must be deployed to be able to attach the last link).
It would be obvious to one of ordinary skill in the art to use the teachings of D3 for the purpose of providing actuation underwater.
Allowable Subject Matter
Claim 12 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record on the attached PTOL-892 and not relied upon is considered pertinent to applicant's disclosure as each further discloses a state of the art.
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire reference as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or pointed out by the examiner.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to J. Todd Newton, Esq. whose telephone number is (313)446-4899. The examiner can normally be reached 0700-1500 M-F.
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, Woody LEE can be reached on (571) 272-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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J. Todd Newton, Esq.
Primary Examiner
Art Unit 3745
/J. Todd Newton/Primary Examiner, Art Unit 3745 8/8/2025