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 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 20 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 20 sets forth using the subsea tool system to function as an antenna for receiving and transferring communication signals wirelessly from a separate subsea vehicle. However, it is noted that the disclosure does not provide sufficient detail on what arrangement or components have been used that would allow the subsea tool system to function as an antenna. Therefore, in absence of adequate guidance in the specification, a person skilled in the art would not be able to make and/or use the claimed invention.
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 10-11 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.
In claim 10, the limitation “a pinless inductive connection configured to provide rotational power, mechanical power … or a combination of rotational power, mechanical power” emphasis added) renders the claim indefinite. It is not sufficiently clear how the rotational power is different from the mechanical power.
In claim 10 (line 5), the limitation “between small remotely operated vehicle” (emphasis added) renders the claim indefinite. It is not sufficiently clear if it is same or different from the small remotely operated vehicle set forth on line 3 of the same claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-4 and 7-14 are rejected under 35 U.S.C. 102(a1) as being anticipated by Hansen et al. (US 2019/0224858 A1).
Regarding claims 1 and 7, Hansen et al. disclose a subsea tool system, comprising: a housing [20] mounted on a main vehicle [2] (see ¶0041), a small remotely operated vehicle [120], and a main vehicle adapter [21b, 110, 111, 112] (see Figures 2, 8, 9 and 11; and ¶0033 through ¶0035, and ¶0046 through ¶0047). The housing comprises a predetermined footprint that is configured to fit within a predetermined space that is larger than the housing, and the small remotely operated vehicle comprises a predetermined size that is smaller than a narrow region or a constricted area where a larger subsea vehicle cannot enter due to size constraints of the larger subsea vehicle. The main vehicle adapter is configured to operatively connect the small remotely operated vehicle to the main vehicle. The subsea tool system further comprises a tether management system (TMS) disposed at least partially within the housing and configured to provide an adaptive length tether connection between the small remotely operated vehicle and the housing, wherein the TMS comprising a cable operatively connected to a cable retriever that is configured to selectively spool in or spool out the cable (see Fig 9 and Fig 16; and ¶0049).
(Note: It is noted that claim 1 does not positively recite a main vehicle, and sets forth the main vehicle merely in such terms whereby an adapter would be capable of connecting a small ROV to the main vehicle)
Re claim 3, a power source [220, 221] is operatively in communication with the TMS (see ¶0022).
Re claim 4, the main vehicle adapter comprises a male adapter configured to connect with the main vehicle through a tooling interface to provide power to the subsea tool system (Fig 1 and Fig 2).
Re claim 7, the main vehicle further comprises rounded front and aft ends (see Fig 9 and Fig 13a), and a tool interface comprising: a common drive interface; and a power interface (see ¶0025). The system further comprises a predetermined set of tools with a common drive interface; and a tool repository configured to selectively store the predetermined set of tools. (see Fig 9, and ¶0023 and ¶0034).
Re claim 8, the common drive interface comprises a plug and play interface (see ¶0029)
Re claim 9, the tool interface is capable of providing simultaneous mechanical bi-directional torque or rotational power and communication via induction (¶0025).
Re claim 10, the tool interface comprises a pinless inductive connection is capable of providing, and therefore configured to provide, rotational/mechanical power, data communication between the small remotely operated vehicle tool and the main vehicle, or a combination of rotational/mechanical power, and communication between small remotely operated vehicle tool and the main vehicle.
Re claim 11, the data communication comprises communication of data and command signals between the main vehicle and a secondary subsea vehicle or the small remotely operated vehicle using an inductor provided on and between the tooling interface and a male adapter of the subsea tool system (see Fig 12, and ¶0025 and ¶0036).
Re claim 12, the main vehicle comprises a remotely operated vehicle (ROV), an autonomous underwater vehicle (AUV), a subsea drone, a dredging vehicle, a subsea crawler, a hybrid underwater vehicle, a resident remotely operated vehicle, or a skid (¶0042)
Re method claims 13-14, the steps set forth in the claims are considered encompassed in the construction and subsequent use of the device described above. Specifically, the main vehicle itself is broadly considered to be a tool repository for storing a predetermined set of tools each with a common drive interface. Therefore, when the main vehicle is positioned at a predetermined subsea location, the predetermined set of tools are similarly positioned at the same predetermined subsea location for attaching and detaching from the common drive interface.
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 2, 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hansen et al. (US 2019/0224858 A1).
Hansen et al. disclose a subsea tool system, comprising: a housing mounted on a main vehicle and a small remotely operated vehicle, as described above.
Hansen et al. however fail to disclose the small remotely operated vehicle as having a diameter of 300 mm and a length of 435 mm (claim 2), or the housing comprising a corrosion resistant material (claim 5). Hansen et al. also fail to disclose using the TMS tether to retrieve the tool system back to a static unit or cage if the tool system was faulty or not working properly (claim 19).
It would however have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to construct the miniature remotely operated vehicle with the claimed dimension as a matter of routine design choice. Providing the miniature remotely operated vehicle with such dimensions would have enabled it to access extremely constricted and confined spaces, thereby making it more versatile.
It would also have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to construct the housing with a corrosion resistant material. Using such a material would have made the housing resistant to corrosion from the salt water environment, thereby rendering it more durable and safe to use.
Re claim 19, as explained earlier, the main vehicle itself is considered to be a tool repository, and broadly equivalent to a static unit or cage, for storing a predetermined set of tools. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to use the TMS tether to retrieve the tools back to the static unit or cage of the main vehicle for inspection and/or quick replacement if the tool system was faulty or not working properly.
Claim 6 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Hansen et al. (US 2019/0224858 A1) in view of Watt et al. (US 6167831 B1).
Hansen et al. disclose a subsea tool system, comprising a small remotely operated vehicle, as described above.
Hansen et al. however fail to explicitly disclose the small remotely operated vehicle as having a lighting system; a camera; a sensor; and a predetermined set of thrusters configured to assist movement of the small remotely operated vehicle (claim 6); or the tool interface comprises a detachable wet mate connector tied to subsea infrastructure (claim 17).
Watt et al. disclose a subsea system (see Fig 2) comprising remotely operated vehicle having a camera [38] (col. 1, line 43); sensors (col. 9, lines 42-45); a lighting system (col. 1, line 43); and a set of thrusters [28] to assist movement of the small remotely operated vehicle. A tool interface is provided with a detachable wet mate connector for providing power and data communication (see col. 8, lines 33-35).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to provide the remotely operated vehicle of Hansen et al. with a lighting system; a camera; a sensor; and a set of thrusters, as taught by Watt et al. Having such devices would have enabled the remotely operated vehicle of Hansen et al. to perform the inspection, maintenance, and repair work in a safe and efficient manner. It would have also been obvious to a person of ordinary skill in the art before the effective filing date of the invention to provide the tool interface with a detachable wet mate, as taught by Watt et al., which would have further enabled an efficient power and data communication for the subsea tool system.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hansen et al. (US 2019/0224858 A1) in view of Jameison et al. (US 9944370 B2)
Hansen et al. disclose a method of using subsea tool system, comprising a predetermined set of tools with a common drive interface and configured to be connected to a small remotely operated vehicle, as described above.
Hansen et al. however do not disclose placing the predetermined set of tools into a tooling cage or tooling basket near the predetermined subsea location, or docking the subsea tool system on a semi-permanent tooling basket to facilitate easy replacement of the subsea tool
Jamieson et al. disclose a method of using subsea tool system, comprising storing a predetermined set of tools into a tooling cage/basket at a subsea location and enable docking the subsea tool system on the tooling cage/basket to facilitate easy replacement of the subsea tool (see Fig 8; and col. 1; lines 49-54).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to provide the tool system of Hansen et al. with a tooling cage or basket at a subsea location and enable docking the subsea tool system on the tooling cage/basket to facilitate easy replacement of the subsea tool, as taught by Jamieson et al. Having such an arrangement would have allowed efficient subsea operations without requiring lengthy work interruptions for tool change.
Response to Arguments
Applicant's arguments filed 5/15/2026 have been fully considered but they are not persuasive.
Applicant’s Arguments: Regarding the 112(b) rejection of claim 10, Applicant has stated that the rotational power is equated to torque, whereas mechanical power is not necessary so limited.
Response: Rotational power such as torque is classifiable only as mechanical power. Applicant’s response still does not clarify how such rotational power would be different from any other mechanical power. Therefore, the rejection is maintained.
Applicant’s Arguments: On page #14-15 of the arguments, Applicant has argued that the Office Action fails to identify any specific Hansen teaching that suggests that the small remotely operated vehicle (ROV) comprises a predetermined size smaller than a narrow region or a constricted area where a larger subsea vehicle cannot enter due to size constraints of the larger subsea vehicle or where its main vehicle adapter is configured to operatively connect the small remotely operated vehicle to a main vehicle.
Response: It is noted that the claims do not positively recite the narrow region or constricted area as being a part of the claimed tool system, but rather set forth such region/area merely as a conditional limitation. In the present case, any region/area having a size that is smaller than the main vehicle 2 but larger than the housing 20 (as seen in Fig 16) would satisfy such conditional limitation of the claims. In other words, any region/area with a size smaller than the main vehicle 2 but larger than the housing 20 would not be able to accommodate the main vehicle 2, but it would be able to easily admit the small ROV. Additionally, as further seen in the right-side image of Fig 16, the main vehicle adapter operatively connects the small ROV to the main vehicle.
Applicant’s Arguments: On page #16 of the arguments, Applicant has argued that although Hansen discloses an adaptive tooling interface 20 comprising a housing 21, it is completely silent as to where the adaptive tooling interface 20 is mounted. Hansen describes a subsea vehicle 2 but does not disclose that its adaptive tooling interface 20 is disposed on its main vehicle 2.
Response: Claim 1 does not positively recite any main vehicle, and recites an adapter that is capable of connecting to a main vehicle. As for claims 7 and 13, please see Figures 13A, 15 and 16, all of which clearly show the tooling interface disposed on the main vehicle.
Applicant’s Arguments: Applicant has argued that limitation 1(b) of claim 1, and corresponding limitations in claims 7 and 13, require the small ROV to be a part of the subsea tool system, whereas in Hansen the small ROV is separate from the adaptive tool interface 21.
Response: A system is a group of interrelated, interacting elements that work together as a unified whole to achieve a specific purpose or function. In the present case, the small ROV work together with other parts of the subsea tool system as an integral member of such system, and therefore, it is considered to be a part of the subsea tool system.
Applicant’s Arguments: Limitation 1(c) requires a main vehicle adapter that is adapted to operatively connect the small ROV to a main vehicle, which is not shown by Hansen.
Response: As seen in Fig 9, the horizontally-extending middle dash line (which is aligned with the longitudinal axis of the main vehicle) clearly shows that the small ROV is capable of operatively connecting with the main vehicle.
Applicant’s Arguments: Regarding limitation 1(d), Hansen teaches that its adaptive tool interface 20 can be used to house a TMS but it does not teach or suggest that its TMS can provide an adaptive length tether connection between the small remotely operated vehicle and the housing.
Response: The adaptive length of tether controlled by the TMS is attributed to tethered ROV, which is the only tethered object shown by Hansen (see Fig 16)
Applicant’s Arguments: Regarding the obviousness rejection based on 35 USC 103(a), Applicant has argued that the Office Action does not disclose what "the level of ordinary skill in the pertinent art" is supposed to be. By failing to disclose the resolution of the level of ordinary skill in the art, the Patent Office failed to meet its burden of showing a prima facie case of obviousness. Applicants are therefore unable to fully respond to these assertions because the Office Action fails to state what that level of ordinary skill in the art is.
Response: Any person possessing a college-level degree in science, or alternatively, possessing basic work experience in marine industry would be considered as a person having ordinary skill in the art.
Allowable Subject Matter
Claims 15-16 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
THIS ACTION IS MADE FINAL. 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 AJAY VASUDEVA whose telephone number is (571)272-6689. The examiner can normally be reached 6:00 am - 3:00 pm.
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/AJAY VASUDEVA/Primary Examiner, Art Unit 3615
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