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 .
Specification
The prior objections to the abstract have been overcome by the amended abstract filed 02 February 2026.
Claim Rejections - 35 USC § 112
The prior rejection of CLAIM 3 under §112(b) has been overcome by the response filed 02 February 2026, wherein Applicant corrected the dependency of the claim.
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
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.
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.
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, 6, 8, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marquinez (US 3,990,377 A) in view of Doleshal (US 4,992,000 A).
CLAIM 1
Marquinez ‘377 (“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 positioned on floating means.
Doleshal ‘000 (“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 have reduced the weight carried by the locomotion means, and to have done so with a reasonable expectation of success.
CLAIM 6
In the combination of Marquinez and Doleshal, the excavation device is a trencher.
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 12
In the combination of Marquinez and Doleshal, the excavating means (Marquinez, 8) are configured to form a trench in the ground submerged in water.
CLAIMS 3 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marquinez (US 3,990,377 A) in view of Doleshal (US 4,992,000 A) as applied to CLAIM 1 above, and further in view of Grinsted (US 4,759,138 A).
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 ‘138 (“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 of detecting means, as suggested by Grinsted. The motivation for making the modification would have been to have included means for facilitating desired alignment of the pipeline with the system, and to have done so with a reasonable expectation of success.
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.
CLAIMS 4, 5, 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marquinez (US 3,990,377 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).
CLAIMS 4, 5
Neither Marquinez nor Doleshal teaches first and second acquisition means.
Saxon ‘173 (“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 have included means for enhancing the accuracy and precision of trenching operations, and to have done so with a reasonable expectation of success.
CLAIMS 10, 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.
Response to Arguments
Applicant's arguments filed 02 February 2026 have been fully considered but they are not persuasive.
Rejections of Claims Under 35 U.S.C. §103
Marquinez
Applicant argues the prior art excavation means (Marquinez, 8) lacks the functionality to excavate submerged ground using pressurized water because the nozzles (Marquinez, 19) are laterally directed. The examiner disagrees for the following reasons.
In col. 4, ll. 47-50, Marquinez discloses “supplies the nozzles 19 with pressurized water so that the jets of water hollow out the side walls of the trench which consequently becomes sufficiently wide.” Thus, the prior art excavation means disclosed by Marquinez function to excavate submerged ground.
In claim 14, Marquinez recites “a plurality of nozzles distributed in the direction of the height of said plowshare and further comprising pressurized water means connected to said nozzles for locally enlarging said trench, by means of jets of water.” Thus, the prior art excavation means disclosed by Marquinez function to excavate submerged ground.
Excavation is not limited to a specific direction.
Applicant’s arguments are not fully responsive because they do not address the prior art passages and claims cited in the last Office Action.
Doleshal
Applicant submits the barge-supported water pump of Doleshal is not a water-jet turbine, as required by the claims, but fails to set forth reasons in support thereof. Thus, Applicant’s arguments amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. See 37 C.F.R. 1.111(b).
Applicant further challenges the motivation to combine set forth in the above obviousness rejection of CLAIM 1. The examiner contends the motivation is very clear. Placement of a water-jet turbine on floating means instead of the locomotion means would have reduced the weight on the latter during travel along the sea floor.
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 TARA MAYO whose telephone number is (571)272-6992. The examiner can normally be reached Monday through Friday 8:30AM-5:00PM EST.
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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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21 May 2026
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