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.
Response to Request for Reconsideration
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.
Applicant’s arguments, see Remarks (pp. 6-7) filed 25 September 2026, with respect to the rejection(s) of independent CLAIMS 1 AND 8 under § 103 have been fully considered and are persuasive in-part.1 Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Mathieu (US 3,885,331 A).
The indicated allowability of CLAIM 2 is withdrawn in view of the newly discovered reference to Mathieu (US 3,885,331 A). Rejections based on the newly cited reference follow.
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 § 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.
CLAIMS 1-12 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.
CLAIM 1 Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “turbine” in CLAIM 1 is used by the claim to mean “impeller,” while the accepted meaning is “a rotary engine actuated by the reaction or impulse of a fluid subject to pressure.”2 The term is indefinite because the specification does not clearly redefine the term. More specifically, a “turbine” converts fluid energy into mechanical energy, while an “impeller” functions to increase the pressure of fluids.
For the purpose of prosecution on the merits, the examiner has interpreted the limitation “turbine” to mean --impeller--.
CLAIMS 2 AND 7 are rejected and treated similarly to CLAIM 1 because they both recite the limitation “turbine.”
CLAIMS 3-6 are rejected because they depend from CLAIM 1.
CLAIM 8 is rejected and treated similarly to CLAIM 1 because it recites the limitation “turbine.”
CLAIMS 9-12 are rejected because they depend from CLAIM 8.
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, 2, 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 Mathieu (US 3,885,331 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 mounted on the locomotion means (1) 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.
Mathieu ‘331 (“Mathieu”) discloses a system useful for underwater excavation (Fig. 1, 2), the system including supply means (Fig. 4) configured to supply pressurized water to excavating means (48), wherein the supply means comprise at least one water-jet turbine (26, 27; col. 2, ll. 20-39), said at least one water-jet turbine being positioned on floating means (16, 17) adapted to position a water intake (30, 32) of said at least one water-jet turbine (26, 27) immersed in the water. 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 (Mathieu, 26, 27) of Mathieu for the supply means (Marquinez, col. 4, ll. 39-44) mounted on the locomotion means (Marquinez, 1) 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.
CLAIM 2 In the combination of Marquinez and Mathieu, the system (Mathieu, Figs. 1, 2, 4) further comprises at least one watercraft (Mathieu, 10) comprising said at least one water-jet turbine (Mathieu, 26, 27) and the floating means (Mathieu, 16, 17).
CLAIM 6 In the combination of Marquinez and Mathieu, the excavation device (Marquinez, 8) is a trencher.
CLAIM 8 The method steps recited therein are inherent to use of the system taught by the combination of Marquinez and Mathieu, as applied above to address the limitations of CLAIM 1.
CLAIM 12 In the combination of Marquinez and Mathieu, 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 Mathieu (US 3,885,331 A), as applied to CLAIMS 1 AND 8 above, and further in view of Grinsted (US 4,759,138 A).
CLAIM 3 In the combination of Marquinez and Mathieu, the control means (Marquinez, Fig. 4) are able to control the locomotion means (Marquinez, 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-Mathieu) with the addition of 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.
CLAIM 9 The method steps recited therein are inherent to use of the system taught by the combination of Marquinez, Mathieu and Grinsted, as applied above to address the limitations of CLAIM 3.
CLAIMS 4, 5, 10 AND 11 are rejected under 35 U.S.C. 103 as being unpatentable over Marquinez (US 3,990,377 A) in view of Mathieu (US 3,885,331 A), as applied to CLAIMS 1 AND 8 above, and further in view of Saxon (US 6,022,173 A).
CLAIMS 4, 5 Neither Marquinez nor Mathieu 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 (Marquinez-Mathieu) 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.
CLAIMS 10, 11 The method steps recited therein are inherent to use of the system taught by the combination of Marquinez, Mathieu and Saxon, as applied above to address the limitations of CLAIMS 4 AND 5.
Allowable Subject Matter
CLAIM 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine M. Mills can be reached at (571)272-8322. 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
07 October 2026
1 The decision to withdraw finality of the last Office Action (mailed 27 May 2026) and apply Mathieu is also due in-part to reconsideration of the term “turbine.”
2 See dictionary entry for turbine at merriam-webster.com/dictionary/turbine.
Prosecution Insights