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 .
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 “a combination of the first and second embedment modules (being) concurrently arranged” (claim 13) 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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 13 (and all claims that depend therefrom) is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 13 recites “a first mounting mechanism having a first embedment module removably mounted thereto,” “a second mounting mechanism having a second embedment module removably mounted thereto,” and “a combination of the first and second embedment modules is concurrently arranged within the modular follower assembly.” However the disclosure depicts the mounting mechanism 94 as a single interface between subassemblies 101 and 102. It is not explained how these bolts (or the system in general) can concurrently mount multiple, separate modules. Likewise, it appears that newly submitted figure 9 is intended to show the multiple (concurrently mounted) modules, but the updated disclosure refers to claim 9 as “another embodiment.”
Therefore the disclosure does not enable one of ordinary skill in the art to make and use an embedment apparatus with separate mounting mechanisms that can concurrently mount multiple modules.
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 13, 17 and 21 (and all claims that depend therefrom) 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.
Claims 13, 17 and 21 all recite limitations based on the plate anchor (“a portion of the plate anchor is arranged,” “line connected to the plate anchor”) however the plate anchor is never positively recited- only “a clamp module comprising an open ended slot for retaining a plate anchor therein.” It is unclear if the plate anchor is intended to be recited as a component of the invention.
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 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Treu US 5,992,060.
Regarding claim 13, Treu teaches a plate anchor embedment apparatus comprising a modular follower assembly having a housing, the modular follower assembly extending from a first longitudinal end to a second longitudinal end, the modular follower assembly comprising:
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a clamp module 24 comprising an open ended slot for retaining a plate anchor therein, the open ended slot being provided on the first longitudinal end of the modular follower assembly, wherein a portion of the plate anchor 42 is arranged, in use, to extend away from the first longitudinal end of the modular follower assembly such that an end of the plate anchor can be directly driven and penetrated into a sea bed;
a lifting and lowering line securement mechanism 32;
[AltContent: textbox (Figure 1- Treu Figure 2)]a first mounting mechanism 36 having a first embedment module 74 thereto, wherein the first embedment module generates embedment forces for use in efficiently embedding the plate anchor in a first layer/stratum;
a power supply module for supplying power to at least one embedment module (in this case, whatever powers the pump);
wherein the modular follower assembly is reconfigurable on a vessel between subsea deployments to enable embedment modules to be changed for a subsequent deployment and to enable embedment modules mounted to the follower assembly to be removed therefrom or mounted thereto (the modules 72, 74 could be attached or detached at any time).
Treu does not teach a second mounting mechanism for removable mounting a second embedment module thereto. It would have been obvious to one having ordinary skill in the art at the time the invention was made to add additional mounts and embedment modules in order to increase pumping power to better drive the pile into the seabed, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Note that each embedment module could generate embedment forces for use in efficiently embedding the plate anchor in a first or second layer/stratum.
If applicant does not agree that the device is modular, then it would have been obvious to one having ordinary skill in the art at the time the invention was made to form the device modularly in order to replace components as needed, since it has been held that if it were considered desirable for any reason to obtain access to a first component to which a second component is applied, it would be obvious to make the second component removable for that purpose. In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349.
Regarding claim 16, Treu teaches the invention as claimed as detailed above with respect to claim 13. Treu (as modified) also teaches that the first and second embedment modules comprise one of the following: a vibro hammer embedment module; an impact hammer embedment module; a suction embedment module 72, 74; and a jetting module.
Regarding claim 17, Treu teaches the invention as claimed as detailed above with respect to claim 13. Treu also teaches a clamp module 24 which (as modified) is removably mountable within the modular follower assembly and wherein the clamp module comprises a clamping mechanism comprising opposing jaws for clamping a plate anchor therebetween wherein the clamp module retains the plate anchor 42 securely and prevents movement of the plate anchor about a planar orientation within the modular follower assembly and in which the plate anchor is rigidly held in a single plane without allowing significant movement of the plate anchor relative to a housing of the modular follower assembly. In this case, the opposing sides of the plate slot are interpreted as the jaws.
Regarding claim 18, Treu teaches the invention as claimed as detailed above with respect to claim 13. Treu also teaches a power pack module removably mountable to the modular follower assembly in which the power pack module is arranged to supply hydraulic and/or electric power. In this case, the pumpskid 74 can be detached along with ROV 72, which also removes the power source for the pump.
If applicant does not agree that the device is modular, then it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the power pack removable in order to simplify maintenance or replacement, since it has been held that if it were considered desirable for any reason to obtain access to a first component to which a second component is applied, it would be obvious to make the second component removable for that purpose. In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349.
Regarding claim 19, Treu teaches the invention as claimed as detailed above with respect to claim 13. Treu does not explicitly teach that the modular follower assembly comprises a housing having an adjustable longitudinal length. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the housing adjustable in order to allow the depth to be custom tailored to specific environments, since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954).
Regarding claim 20, Treu teaches the invention as claimed as detailed above with respect to claim 19. Treu does not teach that the plate anchor embedment apparatus comprises a number of housing sections which can be removably incorporated into or removed from the housing of the modular follower assembly and wherein the sections provide a variety of sections having different longitudinal lengths. The examiner is taking official notice that it is well-known in the art that length of an assembly can be adjusted by substituting a variety of sections having different lengths. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Treu with a variety of housing sections having different lengths in order to tailor the size of the follower to a plurality of different usage locations.
Regarding claim 21, Treu teaches the invention as claimed as detailed above with respect to claim 13. Treu also teaches a tensioned section of mooring line 58, 56 connected to the plate anchor 42 is arranged to hold the plate anchor in the slot of the follower assembly.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Treu US 5,992,060 in view of Riemers US 6,488,446.
Regarding claim 19, Treu teaches the invention as claimed as detailed above with respect to claim 13. Treu does not explicitly teach that the modular follower assembly comprises a housing having an adjustable longitudinal length. Riemers teaches a marine structure in which the anchor assembly comprises a removable extension 12 coupled to the suction pile 1. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the follower assembly of Treu with a removable extension as taught by Riemers in order to adjust the overall length of the device.
Regarding claim 20, Treu and Riemers teach the invention as claimed as detailed above with respect to claim 19. Neither Treu nor Riemers teach that the plate anchor embedment apparatus comprises a number of housing sections which can be removably incorporated into or removed from the housing of the modular follower assembly and wherein the sections provide a variety of sections having different longitudinal lengths. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide multiple extension sizes in order to allow the depth to be custom tailored to specific environments, since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954).
Response to Arguments
Applicant's arguments filed 2/24/26 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the device as taught does not comprise two different types of embedment modules) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Note that the claim recites that a first module can embed in a first strata while a second module can embed in a second strata. This does not require that the modules are different, as a single module can embed in two different strata.
Where applicant argues that Treu only teaches a single suction port, please see the explanation above. The proposed duplication would result in a second port to correspond to the second module. Please also see the 112(a) issues above- the disclosure does not appear to enable multiple mounting mechanisms or the ability to have a combination of the first and second embedment modules to be concurrently arranged within the follower assembly.
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, Marc Jimenez can be reached at 517 272-4530. 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
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