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.
Claim 10, 14 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 Claims 10 and 14, the functional limitation “the buoyancy system is configured to operate up to a sea depth of about 5 km to 6 km” fails to provide a clear-cut indication of the scope of the subject matter embraced by the claim because the claim merely recite a description of a problem to be solved or a function or result achieved by the invention without reciting the particular structure, materials or steps that accomplish the function or achieve the result. (See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) discussed in MPEP 2173.05g Examiner notes the plain meaning of the term “configure” from the Oxford English Dictionary as “To fashion according to something else as a model; to conform in figure or fashion (to).” Something can be configured when it is compared to a known model configuration: a Mustang configured to have a hard top or configured to have a soft top. These are known configurations readily identifiable by a person of ordinary skill in the art. A Mustang configured to achieve 100 miles/gallon while traveling at 90 mph is not descriptive of a known configuration because it does not describe an existing model readily identifiable by a person of ordinary skill in the art. In this case, the scope of the apparatus features required to fulfill the functional claim limitation would not be clear.)
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, 3, 4, 5, 6, 7, 9 10 are rejected under 35 U.S.C. 103 as being unpatentable over Enriquez (US 20180063429 A1).
Regarding Claim 1, Enriquez discloses buoyancy system for an underwater autonomous vehicle, the buoyancy system comprising: one or more pressure vessels (tank 50); a primary pump (Element 64) connected to each of the one or more pressure vessels, wherein the primary pump is configured to pump liquid from the one or more pressure vessels (paragraph 42); a controller communicatively coupled to the primary pump and configured to operate the main pump via wireless or wired communication (paragraph 49); and a power source (paragraph 7) configured to provide power to the controller and the primary pump. Enriquez does not explicitly disclose the primary pump is configured to pump liquid from the one or more pressure vessels at a rate of at least 4 liters per second.
Enriquez discloses that the displacement changes for the mission (paragraph 36) and that “By controlling the ingress and egress of water into each ballast tank 50 individually, angular attitude can also be controlled” (paragraph 42) suggesting that controlling the ingress and egress of water is a result effective variable for the rate of angular attitude control. It would have been obvious at the time of filing for a person of ordinary skill in the marine art to optimize the flow rate of the primary pump by configured the pump liquid from the one or more pressure vessels at a rate of at least 4 liters per second which can be accomplished with a reasonable expectation of success. The motivation to modify Enriquez is to optimize the rate of angular attitude control for different displacement missions.
Regarding Claim 3, Enriquez discloses a buoyancy system of claim 1, wherein a volume of a liquid within each of the one or more pressure vessels is independently controlled via the operation of the primary pump through the controller. (paragraph 42)
Regarding Claim 4, Enriquez discloses a buoyancy system of claim 1, wherein the one or more pressure vessels are arranged in an array. (See Fig. 7)
Regarding Claim 5, Enriquez discloses a buoyancy system of claim 1, wherein the one or more vessels contain a volume of a liquid and a volume of a gas. (paragraph 44. This is true for at least some period of time.)
Regarding Claim 6, Enriquez discloses a buoyancy system of claim 5, wherein the liquid is at least one of sea water, filtered sea water, desalinated water, or de-ionized water. (paragraph 7)
Regarding Claim 7, Enriquez discloses a buoyancy system of claim 5, wherein the gas is at least one of air or filtered air. (paragraph 13)
Regarding Claim 9, Enriquez discloses a buoyancy system of claim 1, wherein the power source is a battery park. (paragraph 7)
Regarding Claim 10, Enriquez discloses the buoyancy system of claim 1, but does not explicitly disclose wherein the buoyancy system is configured to operate up to a sea depth of about 5 km to 6 km.
It would have been obvious at the time of filing for a person of ordinary skill in the marine art to configure the buoyancy system to operate up to a sea depth of about 5 km to 6 km which can be accomplished with a reasonable expectation of success. The motivation to modify Enriquez is to extend the range of the camera.
Claims 11, 12, 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Enriquez (US 20180063429 A1) in view of Asfar (US 20070125289 A1).
Regarding Claim 11, Enriquez discloses deep-sea mining system, the system comprising: a dynamic buoyancy system comprising one or more pressure vessels; an autonomous underwater vehicle; wherein the dynamic buoyancy system is configured to dynamically control a buoyancy of the deep-sea mining system while the deep-sea mining system descends, ascends, and remains at a pre-determined sea depth during an ore collection process. Enriquez does not explicitly disclose and an ore collection system.
Asfar discloses an ore collection system in the form of an arm mounted to the hull. (paragraph 103) It would have been obvious at the time of filing for a person of ordinary skill in the marine art to add the arm of Asfar to the hull of Enriquez. The motivation to modify Enriquez is to gather samples for research.
Regarding Claim 12, Enriquez in view of Asfar discloses the system of claim 11, wherein the dynamic buoyancy system dynamically controls the buoyancy of the deep-sea mining system by independently adjusting a liquid volume within each of the one or more pressure vessels. (See rejection of Claim 3 above.)
Regarding Claim 14, Enriquez in view of Asfar discloses the system of claim 11, but does not explicitly disclose wherein the pre-determined sea depth is between 5 km and 6 km.
It would have been obvious at the time of filing for a person of ordinary skill in the marine art to configure the buoyancy system to operate up to a sea depth of about 5 km to 6 km which can be accomplished with a reasonable expectation of success. The motivation to modify Enriquez is to extend the range of the camera.
Regarding Claim 15, Enriquez in view of Asfar discloses the system of claim 11, wherein the dynamic buoyancy system is further configured to adjust the buoyancy of the deep-sea mining system to compensate for weight changes in the deep-sea mining system caused during the ore collection process. (The apparatus of Enriquez in view of Asfar has the configuration to be operated to compensate for weight changes because it is a ballast system. See MPEP 2114 regarding operation of an apparatus.)
Regarding Claim 16, Enriquez in view of Asfar discloses the system of claim 11, wherein the dynamic buoyancy system is further configured to keep the deep-sea mining system neutrally buoyant during the entire ore collection process. (The apparatus of Enriquez in view of Asfar has the configuration to be operated to compensate to keep neutral buoyancy because is a ballast system. See MPEP 2114 regarding operation of an apparatus. See Enriquez paragraph 42.)
Regarding Claim 17, Enriquez in view of Asfar discloses the system of claim 11, wherein the dynamic buoyancy system further comprises: a primary pump connected to each of the one or more pressure vessels, wherein the primary pump is configured to pump a liquid from the one or more pressure vessels; a controller communicatively coupled to the primary pump and configured to operate the main pump via wireless or wired communication; and a power source configured to provide power to the controller and the primary pump. (See rejection of Claim 1 above.)
Regarding Claim 18, Enriquez in view of Asfar discloses the system of claim 17, wherein the liquid is at least one of sea water, filtered sea water, desalinated water, or de-ionized water. (See rejection of Claim 6 above.)
Claims 2, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Enriquez (US 20180063429 A1) in view of Hudson (US 20130239870 A1) and further in view of Stetchler (US 3812922 A).
Regarding Claim 2, Enriquez buoyancy system of claim 1, comprising a compressed air tank (claim 12) but does not explicitly disclose further comprising: a first pump connected to each of the one or more pressure vessels via a liquid inlet valve, the first pump configured to pump liquid into each of the one or more pressure vessels when commanded by the controller; and a second pump connected to each of the one or more pressure vessels via a gas inlet valve, the second pump configured to pump in gas to each of the one or more pressure vessels when commanded by the controller.
Hudson discloses : a first pump connected to each of the one or more pressure vessels via a liquid inlet valve, the first pump configured to pump liquid into each of the one or more pressure vessels when commanded by the controller (High pressure, paragraph 79) It would have been obvious at the time of filing for a person of ordinary skill in the marine art to add the high pressure pump of Hudson to the buoyancy system of Enriquez. The motivation to modify Enriquez is to have a pump that works at greater depths. Hudson does not disclose a second pump for gas.
Stechler discloses wherein a compressed air tank is filled with a pump. (C14, L63) It would have been obvious at the time of filing for a person of ordinary skill in the marine art to use a second pump connected to the compressed air tank of Enrique which is connected to each of the one or more pressure vessels via a gas inlet valve, the second pump configured to pump in gas to each of the one or more pressure vessels when commanded by the controller which can be accomplished with a reasonable expectation of success. The motivation to modify Enrique is to provide a source of gas for the tank.
Regarding Claim 8, Enriquez in view Hudson and further in view of Stechler buoyancy system of claim 1, wherein a pressure of a gas contained each of the one or more vessels is between about 14.1 psi and about 3.2 psi. (Vacuum from decreasing fluid, Stechler C8, L57)
Claims 13, 19, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Enriquez (US 20180063429 A1) in view of Asfar (US 20070125289 A1) in view of Hudson (US 20130239870 A1) and further in view of Stechler (US 3812922 A).
Regarding Claim 19, Enriquez in view of Asfar discloses the system of claim 17, but does not explicitly disclose wherein the dynamic buoyancy system further comprises: a first pump connected to each of the one or more pressure vessels via a liquid inlet valve, the first pump configured to pump the liquid into each of the one or more pressure vessels when commanded by the controller; and a second pump connected to each of the one or more pressure vessels via a gas inlet valve, the second pump configured to pump a gas to each of the one or more pressure vessels when commanded by the controller.
Hudson discloses: a first pump connected to each of the one or more pressure vessels via a liquid inlet valve, the first pump configured to pump liquid into each of the one or more pressure vessels when commanded by the controller (High pressure, paragraph 79) It would have been obvious at the time of filing for a person of ordinary skill in the marine art to add the high pressure pump of Hudson to the buoyancy system of Enriquez. The motivation to modify Enriquez is to have a pump that works at greater depths. Hudson does not disclose a second pump for gas.
Stechler discloses wherein a compressed air tank is filled with a pump. (C14, L63) It would have been obvious at the time of filing for a person of ordinary skill in the marine art to use a second pump connected to the compressed air tankof Enrique which is connected to each of the one or more pressure vessels via a gas inlet valve, the second pump configured to pump in gas to each of the one or more pressure vessels when commanded by the controller which can be accomplished with a reasonable expectation of success. The motivation to modify Enrique is to provide a source of gas for the tank.
Regarding Claim 20, Enriquez in view of Asfar and further in view of Hudson and further in view of Stechler discloses the system of claim 19, wherein the gas is at least one of air or filtered air. (See rejection of Claim 7 above.)
Regarding Claim 13, Enriquez in view of Asfar and further in view of Hudson and further in view of Stechler buoyancy system of claim 1, wherein a pressure of a gas contained each of the one or more vessels is between about 14.1 psi and about 3.2 psi. (Vacuum from decreasing fluid, Stechler C8, L57)
Response to Arguments
Applicant's arguments filed 30 Jan 2026 have been fully considered but they are not persuasive.
Claim Interpretation:
Examiner puts in the Claim Interpretation per the Office’s requirement that Examiner’s point out which terms are using terms of art with standard meanings (jargon) vs. which terms are defined only within the specification and claims (nonce.) It’s not a rejection, but supposedly made for the intention of helping out any further Appeals. 112f requires functionally defined nonces have the corresponding structure in the specification. Applicant argues that the spec does have the corresponding structure of the generic term “system” to satisfy the function of “ore collection.” It’s still a nonce. When it lacks the corresponding, it’s indefinite under 112b. Applicant can avoid 112f treatment by putting the corresponding structure that accomplishes the function in the claims.
Rejection under 112b
Examiner rejected the "configured to operate up to a sea depth of about 5 km to 6 km" for not reciting the particular structure, materials or steps that achieve the result. In response, Applicant cites multiples features of Applicants invention throughout different parts of the specification that may be required in combination, in part, and do not even clearly provide all the structures necessary. Examiner is not persuaded that the configuration to operate up to a sea depth of about 5 km to 6 km would be clear to a person of ordinary skill in the art from Applicant’s cited portions of the specification.
Claim Rejections - 35 U.S.C. § 102
Applicant argues that Enriquez fails to disclose the claimed feature of “controller communicatively coupled to the primary pump and configured to operate the main pump via wireless or wired communication”. Examiner cited paragraph 49 which was cut and paste by Applicant in its entirety including “All cables 80 are connected to a computer module 84 located inside the cylindrical housing 22. … Connection of all thrusters 74 and related speed controllers 78 to the computer module 84 allows the camera drone 10 to be controlled, stabilized and maneuvered in any axial direction at different speeds.” As evidence, Applicant concludes “From this passage, a person of ordinary skill in the art (POSITA) would understand that Enriquez's computer module 84 connects to thrusters 74 and related speed controllers 78.” Examiner agrees. But this is not evidence that the controller would not also be understood to control the pump. The essential part of paragraph 49 was “stabilized” which we learned up above in paragraph 42 “By controlling the ingress and egress of water into each ballast tank 50 individually, angular attitude can also be controlled“ and in paragraph 44 “In the autonomous version, a compact electronically controlled water pump 64 is included to control water flow in and out of the tanks 50.” Examiner’s position is that paragraph 49 contains the controller that was suggested to control the pump by a preponderance of the evidence. The Examiner maintains the rejection.
Claim Rejections - 35 U.S.C. § 103
Applicant argues that Enrique lacks the feature of “configured to operate up to a sea depth of about 5 km to 6 km” because the modification step of “to configure the buoyancy system to operate up to a sea depth of about 5 km to 6 km” would not be motivated by “to extend the range of the camera.” As evidence, Applicant argues “Any suggestion that the system's camera range could be extended is unsupported by Enriquez and amounts to speculation”. However, under the 112b rejection above, Applicant also argues “A person of ordinary skill in the art would readily understand the structural adaptations required to operate at the recited depth”. Examiner agrees that modifications are within the skill level of a POSITA even if they are not clearly definite. Examiner was not persuaded that extending the range of an underwater camera is not a basic motivation, nor that a person of ordinary skill in the art lacks the ability to readily understand the structural adaptations required to operate at the recited depth. The Examiner maintains the rejection.
Intended Purpose and Changes its Principle of Operation
Applicant argues adding an arm to a modular underwater drone is not supported by Enriquez. This is true. The modification and motivation come from the underwater vehicle of Asfar, which also existed at the time of Applicant’s invention. Asfar’s teachings could be used to improve the camera drone of Enriquez, as cameras can be used for research and Asfar’s arm can be used for research. They are complimentary purposes.
Applicant argues the arm would render the modular drone unsatisfactory for its intended purpose as an airborne device. Of course, so would the water ballast tanks that get the water from the sea in the embodiment described in Enriquez. The drone is modular; the subsea version is the module being modified. Applicant would need to argue it would cease to be a subsea drone, but Asfar teaches a POSITA can use arms on subsea drone. The Examiner is not persuaded that Asfar teaches arms render subsea drones unfit for being subsea drone.
There is no Teaching, Suggestion, or Motivation in the Prior Art
The motivation cited was clearly labled as “The motivation to modify Enriquez is to gather samples for research.” And is contained in Asfar as cited by Applicant, which also demonstrates a POSITA can put the arm on an underwater autonomous vehicle to achieve the benefit of collecting samples. Examiner remains unpersuaded this modification would fundamentally alter the principle of operation of Enriquez's drone or render it inoperable for its intended purpose. The Examiner maintains the rejection.
Enriquez in view of Hudson and further in view of Stetchler
Applicant argues that Enriquez does not indicate a need for “greater depths.” This is true. The motivation is taught by Hudson, and it allows a POSITA to improve Enriquez by incorporating the benefits of Hudson.
Applicant argues the combination with Stetchler lacks a motivation because a skilled artisan would not "modify Enriquez to provide a source of gas for the tank," even though Enriquez does not require such a feature. Examiner disagrees. Enriquez uses gas for tanks. Compressed air tanks are in paragraphs 45 and 46 of Enriquez. Examiner was not persuaded that the combination and motivation lack technical reasoning. Examiner did use hindsight, the hindsight obtained by reading and citing references before the date of Applicant’s invention. The permissible kind of hindsight. The Examiner maintains the rejection.
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 ANDREW POLAY whose telephone number is (408)918-9746. The examiner can normally be reached M-F 9-5 Pacific.
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/ANDREW POLAY/Primary Examiner, Art Unit 3615 1 June 2026
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