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 prior rejections of CLAIMS 2-5 and 17-20 under 35 U.S.C. §112(b) have been overcome by the amendments to the claims filed on 20 January 2026.
The prior rejections of CLAIMS 10 and 11 under 35 U.S.C. §112(b) are herein withdrawn.
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 and 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Enriquez et al. (US 2018/00463429 A1) in view of Piry (US 2,887,977 A).
CLAIM 1 Enriquez et al. ‘429 (“Enriquez”) discloses a buoyancy system for an underwater autonomous vehicle (¶0007), the buoyancy system comprising:
A spherical pressure vessel (112) comprising two hemispherical pieces connected together at a seam joint, wherein the spherical pressure vessel comprises one or more bulkhead feedthroughs (the port fitted to 102) for connecting the spherical pressure vessel to external components, valves, and sensors of the buoyancy system;
a sea water intake valve (60, cl. 11) connected to the spherical pressure vessel for introducing sea water into the spherical pressure vessel (¶0042);
a primary pump (64) connected to the spherical pressure vessel, wherein the primary pump is configured to pump sea water from the spherical pressure vessel; and
a pressure sensor (46, ¶0037) connected to the spherical pressure vessel.
Enriquez fails to teach a level sensor. Piry ‘977 (“Piry”) discloses a buoyancy system for an underwater autonomous vehicle, wherein the buoyancy system comprises a level sensor (col. 3, ll. 18-22) configured to detect a level of sea water in one or more vessels (11, 12) between a first limit (e.g., zero) and a second limit (e.g., full). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the spherical pressure vessel (Enriquez, 112) with the addition of a level sensor, as suggested by Piry. The motivation for making the modification would have been to include means for assessing the water volume in the vessel, and to have done so with a reasonable expectation of success.
Neither Enriquez nor Piry teaches more than one spherical pressure vessel. However, it would have been obvious for one having ordinary skill in the art, before the effective filing date of the claimed invention, to have provided the Enriquez-Piry buoyancy system with at least one additional spherical pressure vessel because it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). The motivation for making the modification would have been to have facilitated operations at different locations.
CLAIM 6 In the combination of Enriquez and Piry, a volume of the sea water within each of the spherical pressure vessels is independently controlled via the operation of the primary pump (Enriquez, 64, ¶0044).
CLAIM 7 In the combination of Enriquez and Piry, the first limit represents a maximum level of sea water allowable and the second limit represents a minimum level of sea water allowable.
CLAIM 8 In the combination of Enriquez and Piry, the spherical pressure vessels (Enriquez, 112), when operated, contain a volume of sea water and a volume of a gas (Enriquez, contained within 50).
CLAIM 9 In the combination of Enriquez and Piry, the gas is at least one of air or filtered air (Enriquez, ¶0013).
CLAIMS 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Enriquez et al. (US 2018/00463429 A1) in view of Piry (US 2,887,977 A), as applied to claim 1 above, and further in view of Ianuzzi (US 3,713,412 A).
CLAIMS 10, 11 Neither Enriquez nor Piry teaches the spherical pressure vessels (Enriquez, 112) configured to operate at great sea depths. Ianuzzi ‘412 (“Ianuzzi”) discloses a submersible apparatus comprising two hemispherical shells formed of glass and connected mechanically to one another, wherein glass is preferable for use at depths of 20,000 feet (~6 km) below sea level (col. 1, ll. 27-30), where ambient water pressure is approximately 600 bar. It would have been obvious for one having ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the prior art spherical pressure vessels such that they would have been operable at a sea depth between about 5 km (~500 bar) and 6 km (~600 bar), as suggested by Ianuzzi. The motivation for making the modification would have been to have facilitate operations “at great water depths” (Ianuzzi, col. 1, ll. 41-5) with a reasonable expectation of success.
CLAIMS 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Enriquez et al. (US 2018/00463429 A1) in view of Asfar et al. (US 2007/0125289 A1) and Ianuzzi (US 3,713,412 A).
Enriquez teaches all of the limitations of the claimed invention with the exceptions addressed in the following paragraphs.
CLAIM 12 Enriquez fails to teach an ore collection system. Asfar et al. ‘289 (“Asfar”) discloses an underwater autonomous vehicle comprising an ore collection system (¶0103). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the prior art system (Enriquez) with the addition of an ore collection system (Asfar, ¶0103), as suggested by Asfar. The motivation for making the modification would have been to have included means for manipulating underwater objects, and to have done so with a reasonable expectation of success.
Neither Enriquez nor Asfar teaches the spherical pressure vessels (Enriquez, 112) configured to operate at great sea depths. Ianuzzi ‘412 (“Ianuzzi”) discloses a submersible apparatus comprising two hemispherical shells formed of glass and connected mechanically to one another, wherein glass is preferable for use at depths of 20,000 feet (~6 km) below sea level (col. 1, ll. 27-30), where ambient water pressure is approximately 600 bar. It would have been obvious for one having ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the prior art spherical pressure vessels such that they would have been operable at a sea depth between about 5 km (~500 bar) and 6 km (~600 bar), as suggested by Ianuzzi. The motivation for making the modification would have been to have facilitated operations “at great water depths” (Ianuzzi, col. 1, ll. 41-5) with a reasonable expectation of success.
None of the prior art references teaches more than one spherical pressure vessel. However, it would have been obvious for one having ordinary skill in the art, before the effective filing date of the claimed invention, to have provided the Enriquez-Ianuzzi-Asfar system with at least one additional spherical pressure vessel because it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). The motivation for making the modification would have been to have facilitated operations at different locations.
CLAIM 14 In the prior art combination, Ianuzzi suggests a predetermined sea depth of 6 km (col. 1, ll. 27-30).
CLAIM 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Enriquez et al. (US 2018/00463429 A1) in view of Asfar et al. (US 2007/0125289 A1) and Ianuzzi (US 3,713,412 A), as applied to claim 12 above, and further in view of Piry (US 2,887,977 A).
CLAIM 16 The combination of Enriquez, Asfar, and Ianuzzi fails to teach a level sensor. Piry ‘977 (“Piry”) discloses a buoyancy system for an underwater autonomous vehicle, wherein the buoyancy system comprises a level sensor (col. 3, ll. 18-22) configured to detect a level of sea water in one or more vessels (11, 12) between a first limit (e.g., zero) and a second limit (e.g., full). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have modified one (first subgroup) of the spherical pressure vessels (Enriquez, 112) with the addition of a level sensor, as suggested by Piry. The motivation for making the modification would have been to have included means for assessing the water volume in first subgroup vessel, and to have done so with a reasonable expectation of success.
Allowable Subject Matter
CLAIMS 2-5 and 17-20 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 20 January 2026 have been fully considered but they are not persuasive.
Claim Rejections - 35 U.S.C. §103
CLAIMS 1 AND 6-9
A. Spherical Pressure Vessels
Applicant argues against the examiner’s interpretation of the prior art vessel (Enriquez, 112) as a “spherical pressure vessel” because it houses several other recited features. Specifically, Applicant states “casing 112 encloses all internal components of the drone, including the concentric ballast tanks 50, water flow valve 60, and air-vent lines 62, which collectively control the buoyancy of Enriquez's drone. (Enriquez, 41-45.) Therefore, casing 112 cannot itself be a pressure vessel.” The examiner disagrees because nothing in Applicant’s CLAIM 1 precludes system components from being positioned internally of the spherical pressure vessel. Moreover, Applicant’s CLAIM 1 does not recite ballast tanks or air vent lines, so these features of the prior art are irrelevant to the rejection of the claim.
B. Seawater Intake
Applicant argues the prior art valve (Enriquez, 60) is not a seawater intake valve connected to the spherical pressure vessel (Enriquez, 112), as required by CLAIM 1. The examiner disagrees. In paragraph 0013, Enriquez teaches expressly “Each of the ballast tanks is preferably configured to be filled with water drawn from a water environment.” Additionally, in publication claim 11, Enriquez recites “each of the ballast tanks are configured to be filled with water drawn from a water environment.” Still further, publication claim 15 recites a strainer unit for an environmental fluid medium, making it clear that water passing through the valve (Enriquez, 60) to the ballast tanks is sourced from the ambient of the spherical pressure vessel. The passage of seawater from the ambient of the spherical pressure vessel (Enriquez, 112) requires a fluid connection between the seawater intake valve and the surface of the pressure vessel.
C. Overall Configuration
Applicant submits that Enriquez's concentric ballast tanks 50 are not spherical pressure vessels, as recited in CLAIM 1. The examiner believes Applicant misunderstands the Office interpretation of Enriquez. In the prior art rejection of CLAIM 1, publication element 60 is identified as corresponding to the claimed spherical pressure vessel, not publication element 50.
Applicant submits Piry fails to teach several limitations required by CLAIM 1. The examiner notes Piry is relied upon for its disclosure of a level sensor. The primary reference to Enriquez discloses the other limitations of CLAIM 1.
D. Conclusion
Applicant fails to present separate arguments for the patentability of CLAIMS 6-9. Thus, the prior art rejection of CLAIMS 1 and 6-9 is maintained.
CLAIMS 12, 13, AND 15
A. Modification of Enriquez
Applicant argues modification of the Enriquez system to include the Asfar ore collection (Asfar, ¶0103) would render the former unsuitable for its intended purpose. Specifically, Applicant asserts the Enriquez system would no longer be operable in both aerial and submerged environments. As a first point, the examiner contends Enriquez discloses separate embodiments of the prior art system for operation in aerial and environments1, thereby eliminating the premise of Applicant’s argument. Second, the examiner contends that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The provision of an ore collection system (Asfar, ¶0103) on the submersible vessel of Enriquez would have allowed for the manipulation of underwater objects and their observation from different angles.
B. Teaching, Suggestion, and Motivation to Combine
The examiner directs Applicant’s attention to the preceding section of this Office.
CLAIM 16
Applicant submits Piry fails to teach several limitations required by CLAIM 12. The examiner notes Piry is relied upon for its disclosure of a level sensor. The combination of Enriquez, Asfar, and Ianuzzi, as applied to CLAIM 12, teaches all of the other limitations of the claimed invention.
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 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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/TARA MAYO/Primary Examiner, Art Unit 3671
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15 April 2026
1 Enriquez references an underwater version of the invention in paragraphs 0007, 0040, and 0042.
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