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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it includes legal phraseology. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 3 is 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.
With regard to claim 3, the scope of the claimed invention is indefinite because it is unclear from which claim it is intended to depend. For the purpose of prosecution on the merits, the examiner has considered the claim to depend from claim 1.
Claim Interpretation
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.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claim(s) 1, 6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marquinez (US 3,990,977 A) in view of Doleshal (US 4,992,000 A).
With regard to claim 1, Marquinez discloses a system for excavating a trench in ground submerged in water, said system comprising:
an excavation device comprising:
locomotion means (1) able to move said excavation device over the submerged ground, and excavating means (8) able to be supplied with pressurized water and to excavate the submerged ground using the pressurized water (via 19; cl. 14), control means (Fig. 4) configured to control the locomotion means (cl. 9), and supply means positioned on the locomotion means (1) and configured to supply pressurized water to the excavating means (col. 4, ll. 39-44).
Marquinez fails to teach a water-jet turbine. Doleshal discloses a system (10) for excavating an underwater trench, the system including supply means (17, 18) configured to supply pressurized water to excavating means (20, Fig. 3), wherein the supply means comprise at least one water-jet turbine, said at least one water-jet turbine being positioned on floating means (12) adapted to position a water intake of said at least one water-jet turbine immersed in the water (col. 3, ll. 33-5). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the supply means (Doleshal, 17 and 18) of Doleshal for the supply means (Marquinez, col. 4, ll. 39-44) in the prior art excavation system (Marquinez). The motivation for making the modification would have been to reduce the weight carried by the locomotion means, and to have done so with a reasonable expectation of success.
With regard to claim 6, in the combination of Marquinez and Doleshal, the excavation device is a trencher.
With regard to claim 8, the method steps recited therein are inherent to use of the system taught by the combination of Marquinez and Doleshal, as applied above to address the limitations of claim 1.
Claim(s) 3 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marquinez (US 3,990,977 A) in view of Doleshal (US 4,992,000 A) as applied to claim 1 above, and further in view of Grinsted (US 4759138 A).
With regard to claim 3, in the combination of Marquinez and Doleshal, the control means (Marquinez, Fig. 4) are able to control the locomotion means (1) to obtain excavation of a portion of the submerged ground underneath the pipeline (Marquinez, via 9a, 9b, 10). The prior art combination fails to teach detection means.
Grinsted discloses an underwater excavation system comprising detecting means having the functionality to detect a pipeline (27) positioned on submerged ground (col. 4, ll. 13-7). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified the prior art underwater system (Marquinez-Doleshal) with the addition detecting means, as suggested by Grinsted. The motivation for making the modification would have been to include means for facilitating desired alignment of the pipeline with the system, and to have done so with a reasonable expectation of success.
With regard to claim 9, the method steps recited therein are inherent to use of the system taught by the combination of Marquinez, Doleshal and Grinsted, as applied above to address the limitations of claim 3.
Claim(s) 4, 5, 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marquinez (US 3,990,977 A) in view of Doleshal (US 4,992,000 A) as applied to claim 1 above, and further in view of Saxon (US 6,022,173 A).
With regard to claims 4 and 5, neither Marquinez nor Doleshal teaches first and second acquisition means. Saxon discloses an underwater excavation system and teaches the use of a first acquisition means on a vessel to obtain a position of an excavation device and a depth of the water at said position (col. 12, ll. 43-7), via acoustic waves (“sonar”) or radio waves (“RF transmission”). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified the prior art system with the addition of first and second acquisition means, as suggested by Saxon. The motivation for making the modification would have been to include means for enhancing the accuracy and precision of trenching operations, and to have done so with a reasonable expectation of success.
With regard to claims 10 and 11, the method steps recited therein are inherent to use of the system taught by the combination of Marquinez, Doleshal and Saxon, as applied above to address the limitations of claims 4 and 5.
Allowable Subject Matter
Claims 2 and 7 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARA MAYO whose telephone number is (571)272-6992. The examiner can normally be reached Monday through Friday 8:30AM-5:00PM EST.
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, Joseph Rocca can be reached at 571-272-8971. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TARA MAYO/Primary Examiner, Art Unit 3671
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29 September 2025
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