DETAILED ACTION
This is a response to the Amendment to Application # 18/355,328 filed on April 3, 2026 in which claims 1, 14, and 21 were amended.
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 .
Status of Claims
Claims 1-14 and 16-21 are pending, which are rejected under 35 U.S.C. §§ 112(a), 112(b), and 103.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: claims 1, 14, and 21 recite the limitation “autonomously adjusting a trajectory of the underwater vehicle in real-time based on the determined relationship, wherein the autonomous adjusting is performed without operator intervention and without requiring a change in trajectory of the vessel,” or similar. The specification does not support this limitation. Specifically, the present specification states that the vessel may continue to follow the current trajectory instead of adjusting the trajectory (Spec. ¶ 124) and that such occurs without the interference of human operators. (Spec. ¶ 128). However, the current claim language supports situations in which the adjustment occurs without changing the trajectory of the vessel, which is impossible.
A person of ordinary skill in the art prior to the effective filing date would have understood the term “adjust” to mean to change. (“adjust,” Dictionary.com, October 8, 2022, Page 1). Thus, one cannot adjust a trajectory “without requiring a change in trajectory.” As such, the specification lacks antecedent basis for this subject matter.
Claim Rejections - 35 U.S.C. § 112(a)
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.
Claims 1-14 and 16-21 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention.
Regarding claims 1, 14, and 21, these claims have been amended to include the limitation “autonomously adjusting a trajectory of the underwater vehicle in real-time based on the determined relationship, wherein the autonomous adjusting is performed without operator intervention and without requiring a change in trajectory of the vessel,” or similar.
Applicant has not pointed out where the new or amended claim is supported, nor does there appear to be a written description of this claim limitation in the application as filed for the reasons discussed above. See Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) and MPEP § 2163(II)(A).
Therefore, claims 1, 14, and 21 fail to comply with 35 U.S.C. § 112(a).
Regarding claims 2-13 and 16-20, these claims depend from one of the claims above and, therefore, inherit the rejection of that claim.
Claim Rejections - 35 U.S.C. § 112(b)
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.
Claims 1-14 and 16-21 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 1, 14, and 21, these claims include the limitation “autonomously adjusting a trajectory of the underwater vehicle in real-time based on the determined relationship, wherein the autonomous adjusting is performed without operator intervention and without requiring a change in trajectory of the vessel,” or similar.
As discussed above, the plain and ordinary meaning of adjust is to change and one cannot adjust a trajectory “without requiring a change in trajectory” because adjusting necessarily requires a change. Therefore, this limitation cannot be met, rendering the claim indefinite.
For purposes of examination and consistent with ¶ 128 of the present specification, the examiner shall interpret this limitation as “autonomously adjusting a trajectory of the underwater vehicle in real-time based on the determined relationship, wherein the autonomous adjusting is performed without operator intervention and without requiring a change in trajectory of the vessel by a human operator.” However, the examiner notes that this interpretation raises further potential issues of indefiniteness as the second clause appears to duplicate the limitation of the first clause (i.e., wherein the autonomous adjusting is performed without operator intervention).
Regarding claims 2-13 and 16-20, these claims depend from one of the claims above and, therefore, inherit the rejection of that claim.
Claim Rejections - 35 U.S.C. § 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 of this title, 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. Applicants are advised of the obligation under 37 C.F.R. § 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 1-3, 5-11, 14, 16, 17, 20, and 21 are rejected under 35 U.S.C. § 103 as being unpatentable over Rapp et al., US Publication 2010/0282057 (hereinafter Rapp) in view of Dupuis et al., US Publication 2025/0026458 (hereinafter Dupuis), as cited on the Information Disclosure Statement dated July 8, 2025.
Regarding claim 1, Rapp discloses method for autonomously and in real-time controlling “an underwater vehicle moving along a travel trajectory, movement of the underwater vehicle being dependent on a vessel physically connected thereto” (Rapp ¶ 170) where ship 260 is towing vehicle 240 with tether 262. Additionally, Rapp discloses “the method performed by a processor and comprising the steps of: obtaining, via sensor data from a sensor of the underwater vehicle, a topography of an underwater region where the underwater vehicle travels” (Rapp ¶ 98) by using sonar to map the sea floor. Further, Rapp discloses “obtaining a predicted trajectory of the underwater vehicle” (Rapp ¶ 196) where the deployed vehicles 240 (i.e., the underwater vehicle) determine the maneuvers (i.e., trajectories) necessary to maintain their position. Moreover, Rapp discloses “determining a relationship between the predicted trajectory of the underwater vehicle and a seafloor represented by the topography of the underwater region” (Rapp ¶ 99) where the guidance system distinguishes the sea floor from other objects coming towards the vehicle 240 as it maintains its position (i.e., trajectory). Likewise, Rapp discloses “autonomously adjusting of the underwater vehicle in real-time based on the determined relationship” (Rapp ¶ 88) by controlling the propeller and rudder to maneuver the vehicle into position in response to the determinations (i.e., in real time). Finally, Rapp discloses “autonomously adjusting a trajectory of the underwater vehicle in real-time based on the determined relationship, wherein the autonomous adjusting is performed without operator intervention and without requiring a change in trajectory of the vessel” (Rapp ¶ 99) where the calculations are performed by the peer-vector computing machine, which is located on vessel 70 (i.e., the underwater vehicle) and is not human controlled.
Although Rapp discloses the existence of points within a three dimensional environment (i.e., coordinates, Rapp ¶ 161). Therefore, Rapp does not appear to explicitly disclose “wherein the topography of the underwater region is linkable to a coordinate system of the travel trajectory of the underwater vehicle.”
However, Dupuis discloses a method for mapping the topography of an underwater region, “wherein the topography of the underwater region is linkable to a coordinate system of the travel trajectory of the underwater vehicle” (Dupuis ¶ 151) where the map data, including the topographical map data, is expressed with coordinates. The plain and ordinary meaning of “linkable” does not require the topography to actually be linked to the coordinate system, just that it is capable of being linked.
Rapp and Dupuis are analogous art because they are from the “same field of endeavor,” namely that of topographic mapping systems.
Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Rapp and Dupuis before him or her to modify the general coordinate system of Rapp to include the specific coordinate system of Dupuis.
The motivation/rationale for doing so would have been that of simple substitution. See KSR Int’l Co v. Teleflex Inc., 550 US 398, 82 USPQ2d 1385, 1396 (U.S. 2007) and MPEP § 2143(I)(B). Rapp differs from the claimed invention by including a generic coordinate system in place of the claimed coordinate system. Further, Dupuis teaches that the claimed coordinate system was well known in the art. One of ordinary skill in the art could have predictably substituted the specific coordinate system of Dupuis for the general coordinate system of Rapp because both merely define the location of objects within a three dimensional space.
Regarding claim 14, it merely recites a device for performing the method of claim 1. The device comprises computer software modules for performing the various functions. The combination of Rapp and Dupuis comprises computer software modules for performing the same functions. Thus, claim 14 is rejected using the same rationale set forth in the above rejection for claim 1.
Regarding claim 21, it merely recites a computer program product for performing the method of claim 1. The computer program product comprises computer software modules for performing the various functions. The combination of Rapp and Dupuis comprises computer software modules for performing the same functions. Thus, claim 21 is rejected using the same rationale set forth in the above rejection for claim 1.
Regarding claims 2 and 16, the combination of Rapp and Dupuis discloses the limitations contained in parent claims 1 and 14 for the reasons discussed above. In addition, the combination of Rapp and Dupuis discloses an underwater vehicle “wherein the topography of the underwater region is obtained based on at least one of: a measurement by a multibeam system on the vessel connected to the underwater vehicle; a sonar system provided on the underwater vehicle; an optical distance measuring device provided on the underwater vehicle; and historical seafloor information of the underwater region” (Rapp ¶ 68) where the topographical map is made from sonar data.
Regarding claims 3 and 17, the combination of Rapp and Dupuis discloses the limitations contained in parent claims 1 and 14 for the reasons discussed above. In addition, the combination of Rapp and Dupuis discloses “wherein the predicted trajectory of the underwater vehicle is obtained based on a pre-programmed route or via an extrapolation of a current travel trajectory of the underwater vehicle” (Rapp ¶ 196) where the deployed vehicles 240 (i.e., the underwater vehicle) determine the maneuvers (i.e., trajectories) necessary to maintain their position, which is an extrapolation of a current travel trajectory of the underwater vehicle.
Regarding claim 5, the combination of Rapp and Dupuis discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Rapp and Dupuis discloses “wherein the predicted trajectory of the underwater vehicle is obtained based on at least one of a target distance to the seafloor, a current position of the underwater vehicle, and a maximum and a minimum altitude above the seafloor” ((Rapp ¶ 196) where the deployed vehicles 240 (i.e., the underwater vehicle) determine the maneuvers (i.e., trajectories) necessary to maintain their position, which is “a current position of the underwater vehicle.”
Regarding claims 6 and 20, the combination of Rapp and Dupuis discloses the limitations contained in parent claims 1 and 14 for the reasons discussed above. In addition, the combination of Rapp and Dupuis discloses “wherein the predicted trajectory of the underwater vehicle comprises a plurality of points.” (Dupuis ¶ 28). Further, the combination of Rapp and Dupuis discloses “the determining step comprises the steps of: calculating altitude differences between multiple points of the predicted trajectory of the underwater vehicle and corresponding points on the seafloor of the underwater region” (Dupuis ¶ 22) where each zone (i.e., multiple points of the predetermined trajectories) has a corresponding marginal minimal depth (i.e., differences between points and the seafloor). Finally, the combination of Rapp and Dupuis discloses “determining a relationship between each of the altitude differences and a target altitude range” (Dupuis ¶ 22) where the determined marginal minimal depth is the relationship.
Regarding claim 7, the combination of Rapp and Dupuis discloses the limitations contained in parent claim 6 for the reasons discussed above. In addition, the combination of Rapp and Dupuis discloses “wherein the target altitude range is defined by a maximum altitude and a minimum altitude, the determining step comprises determining that the altitude differences are smaller than the maximum altitude and larger than the minimum altitude” (Dupuis ¶¶ 100-102) where two degrees of accessibility are used, with Pmin must be between the vertical protection margin and the vertical protection margin + the current depth. Further, the combination of Rapp and Dupuis discloses “the controlling step comprises allowing the underwater vehicle to travel along a current path” (Dupuis ¶ 172) by controlling the underwater vehicle, which “allows” the vehicle to travel along the current path.
Regarding claim 8, the combination of Rapp and Dupuis discloses the limitations contained in parent claim 6 for the reasons discussed above. In addition, the combination of Rapp and Dupuis discloses “wherein the target altitude range is defined by a maximum altitude and a minimum altitude, the determining step comprises determining that one or more of the altitude differences is larger than the maximum altitude” (Dupuis ¶¶ 100-102) where two degrees of accessibility are used, with Pmin must be between the vertical protection margin and the vertical protection margin + the current depth. Further, the combination of Rapp and Dupuis discloses “the controlling step comprises decreasing the altitude of the plurality points, of the predicted trajectory of underwater vehicle, with altitude differences larger than the maximum altitude” (Dupuis ¶ 92) by unwinding the cable.
Regarding claim 9, the combination of Rapp and Dupuis discloses the limitations contained in parent claim 6 for the reasons discussed above. In addition, the combination of Rapp and Dupuis discloses “wherein the target altitude range is defined by a maximum altitude and a minimum altitude, the determining step comprises determining that one or more of the altitude differences is smaller than the minimum altitude” (Dupuis ¶¶ 100-102) where two degrees of accessibility are used, with Pmin must be between the vertical protection margin and the vertical protection margin + the current depth. Further, the combination of Rapp and Dupuis discloses “the controlling step comprises changing route of the underwater vehicle or stopping the underwater vehicle” (Dupuis ¶ 172) by controlling (i.e., changing) the trajectory of the surface vessel, which also controls the trajectory of the underwater vehicle.
Regarding claim 10, the combination of Rapp and Dupuis discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Rapp and Dupuis discloses “wherein the underwater vehicle is a towed vehicle.” (Rapp ¶ 170). Further, the combination of Rapp and Dupuis discloses “the control step is performed via an in-or out-movement of a cable connecting the towed vehicle to the vessel” (Dupuis ¶ 63) where the winch winds (i.e., performs an in-movement) of the cable.
Regarding claim 11, the combination of Rapp and Dupuis discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Rapp and Dupuis discloses an underwater vehicle “wherein the underwater vehicle is a remotely operated underwater vehicle, ROV, “the control step is performed by sending a command to the ROV, via a tether connecting the ROV to the vessel” (Rapp ¶ 168) where an alternate embodiment allows for the controls to be sent from the ship via a tether.
Claims 4 and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Rapp in view Dupuis, as applied to claims 3 and 14 above, in further view of Parekh et al., US Publication 2017/0254664 (hereinafter Parekh), as cited on the Information Disclosure Statement dated July 8, 2025.
Regarding claims 4 and 18, the combination of Rapp and Dupuis discloses the limitations contained in parent claims 3 and 14 for the reasons discussed above. In addition, the combination of Rapp and Dupuis does not appear to explicitly disclose “wherein the pre-programmed route is obtained from a mission planner or by travelling the underwater vehicle over defined coordinates.”
However, Parekh discloses an unmanned underwater vehicle “wherein the pre-programmed route is obtained from a mission planner or by travelling the underwater vehicle over defined coordinates” (Parekh ¶ 5) where the pre-programmed route is obtained from a mission planner.
Rapp, Dupuis, and Parekh are analogous art because they are from the “same field of endeavor,” namely that of underwater vehicles.
Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Rapp, Dupuis, and Parekh before him or her to modify the route of Rapp and Dupuis to include the route provided by a mission planner of Parekh.
The motivation/rationale for doing so would have been that of simple substitution. See KSR Int’l Co v. Teleflex Inc., 550 US 398, 82 USPQ2d 1385, 1396 (U.S. 2007) and MPEP § 2143(I)(B). The combination of Rapp and Dupuis differs from the claimed invention by not disclosing the source of the pre-programmed route in place of the claimed source. Further, Parekh teaches that receiving a pre-programmed route from a mission planner was well known in the art. One of ordinary skill in the art could have predictably substituted the unspecified source for the pre-programmed route of Rapp and Dupuis for the specific source of pre-programmed routes of Parekh because the pre-programmed route must be received in some manner.
Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over Rapp in view of Dupuis, as applied to claim 1 above, and in further view of Michaelson et al., US Patent 6,734,808 (hereinafter Michaelson), as cited on the Information Disclosure Statement dated July 8, 2025.
Regarding claim 12, the combination of Rapp and Dupuis discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Rapp and Dupuis discloses “wherein the predicted trajectory of the underwater vehicle comprises a plurality of points.” (Dupuis ¶ 28).
The combination of Rapp and Dupuis does not appear to explicitly disclose “the determining step comprises the steps of: calculating a slope of first and a second point following a current point on the predicted trajectory of the underwater vehicle; determining that the slope is larger than an upslope threshold; the controlling step comprises replacing an altitude of the second point following the current point on the predicted trajectory of the underwater vehicle with an altitude calculated based on the upslope threshold.”
However, Michaelson discloses an underwater navigation method for determining a trajectory, wherein “the determining step comprises the steps of: calculating a slope of first and a second point following a current point on the predicted trajectory of the underwater vehicle; determining that the slope is larger than an upslope threshold” (Michaelson col. 19, ll. 1-17) by detecting the path angle to be greater than the GBIAS angle. Additionally, Michaelson discloses “the controlling step comprises replacing an altitude of the second point following the current point on the predicted trajectory of the underwater vehicle with an altitude calculated based on the upslope threshold” ( Michaelson col. 13, l. 56-col. 14, l. 19 and Fig. 9A) by making an ascending maneuver.
Rapp, Dupuis, and Michaelson are analogous art because they are from the “same field of endeavor,” namely that of underwater navigation.
Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Rapp, Dupuis, and Michaelson before him or her to modify the navigation method of Rapp and Dupuis to include the slope detection of Michaelson.
The motivation for doing so would have been allow the vehicle to make an evasive maneuver (Michaelson col. 25, ll. 21-23), thereby increasing safety.
Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Rapp in view of Dupuis, as applied to claim 1 above, and in further view of Thompson, US Publication 2022/0290992 (hereinafter Thompson), as cited on the Information Disclosure Statement dated July 8, 2025.
Regarding claim 13, the combination of Rapp and Dupuis discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Rapp and Dupuis discloses “wherein the predicted trajectory of the underwater vehicle comprises a plurality of points.” (Dupuis ¶ 28).
The combination of Rapp and Dupuis does not appear to explicitly disclose “the determining step comprises the steps of: calculating a slope of first and a second point following a current point on the predicted trajectory of the underwater vehicle; determining that the slope is smaller than a downslope threshold; the controlling step comprises replacing an altitude of the second point following the current point on the predicted trajectory of the underwater vehicle with an altitude calculated based on the downslope threshold.”
However, Thompson discloses a navigation method that determines a trajectory wherein “the determining step comprises the steps of: calculating a slope of first and a second point following a current point on the predicted trajectory of the … vehicle; determining that the slope is smaller than a downslope threshold; the controlling step comprises replacing an altitude of the second point following the current point on the predicted trajectory of the … vehicle with an altitude calculated based on the downslope threshold” (Thompson ¶¶ 27-28, see also Fig. 1) where the system determines a dip based on the slope between two waypoints being less than or equal (i.e., smaller) to another angle and adjusting the altitudes of the waypoints.
A person of ordinary skill in the art prior to the effective filing date would have recognized that when Thompson was combined with Rapp and Dupuis, the slope calculations of Thompson would apply to the underwater vehicle of Rapp and Dupuis. Therefore, the combination of Rapp, Dupuis, and Thompson at least teaches and/or suggests “the determining step comprises the steps of: calculating a slope of first and a second point following a current point on the predicted trajectory of the underwater vehicle” and “ the controlling step comprises replacing an altitude of the second point following the current point on the predicted trajectory of the underwater vehicle with an altitude calculated based on the downslope threshold,” rendering them obvious.
Rapp, Dupuis, and Thompson are analogous art because they are from the “same field of endeavor,” namely that of navigation systems.
At the time of the invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Rapp, Dupuis, and Thompson before him or her to modify the underwater navigation of Rapp and Dupuis to include the downslope detection of Thompson.
The motivation/rationale for doing so would have been that of applying a known technique to a known device. See KSR Int’l Co. v. Teleflex Inc., 550 US 398, 82 USPQ2d 1385, 1396 (U.S. 2007) and MPEP § 2143(I)(D). The combination of Rapp and Dupuis teaches the “base device” navigating a vehicle. Further, Thompson teaches the “known technique” for determining a downslope and adjusting the altitude of a vehicle that is applicable to the base device of Rapp and Dupuis. One of ordinary skill in the art would have recognized that applying the known technique would have yielded predictable results and resulted in an improved system.
Response to Arguments
Applicant's arguments filed April 3, 2026 have been fully considered but they are not persuasive.
Regarding the rejection of claims 1-14 and 16-21 under 35 U.S.C. §§ 112(a) and 112(b), Applicant argues that the amendments to these claims overcomes the previous rejections. Applicant’s arguments are unpersuasive as the amended limitation continues to fail to comply with these statutes, as discussed in the rejections above.
Regarding the rejection of claim 1 under 35 U.S.C. § 103, Applicant first argues that Rapp fails to teach “determining a relationship between the predicted trajectory of the underwater vehicle and a seafloor represented by the topography of the underwater region” because Rapp does not disclose “using a predicted trajectory in this context” or “determining how such a trajectory relates to a seafloor topography.” (Remarks 11-12). Applicant continues that “general maneuvering or positioning … does not disclose or suggest computing a relationship between a predicted trajectory and terrain as required by the claims.” (Remarks 12). The examiner disagrees.
As discussed in the Office Action dated January 6, 2026, Rapp discloses a guided vehicle system that deploys one or more underwater vehicles to surround an enemy vehicle and fire torpedoes at that vehicle, all while predicting and implementing the necessary trajectories for the vessels to maintain their positions in the face of water currents and wind. (Rapp ¶¶ 196-197). Rapp further discloses that part of this process, specifically firing torpedoes, generates a sea-floor map including the positions of all the objects in view, and explicitly including sea-floor components such as “rock beds.” (Rapp ¶ 99). Thus, the sea-floor map of Rapp is “a seafloor represented by the topography of the underwater region,” as claimed.
Further, because this processes is used while firing torpedoes and maintaining a position, Rapp is necessarily including this seafloor information when generating the predicted trajectories as the seafloor must be considered when calculating the currents. (Ocean Currents and Climate, NationalGeographic.org, July 17, 2022, Page 2). Therefore, Rapp is determining a relationship between the predicted trajectories and the sea-floor map.
Therefore, Applicant’s arguments are unpersuasive.
Applicant next argues that the combination of Rapp and Dupuis fails to teach “trajectory adjustment without requiring a change in trajectory of the vessel.” (Remarks 12-13).
As discussed in the rejection of this claim under 112(b) above, it would be impossible to adjust a trajectory without changing a trajectory because plain and ordinary meaning of “adjust” is to change. Therefore, Applicant’s argument is unpersuasive.
Applicant next argues that Dupuis does not teach “determining a relationship between the predicted trajectory of the underwater vehicle and a seafloor represented by the topography of the underwater region” or “trajectory adjustment without requiring a change in trajectory of the vessel.” (Remarks 13).
As discussed above, Rapp teaches these features. Therefore, Applicant’s argument is unpersuasive.
Applicant next argues that the proposed “modification is not a simple substation, but rather a reconfiguration of how control decisions are made and executed” and that the rejection “does not identify any teaching or suggestion in the prior art that would motivate a person of ordinary skill in the art to make such a change.” (Remarks 13). The examiner disagrees.
Regarding Applicant’s argument that the medication is not a simple substation, it is well-settled that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). Here, Applicant has presented no evidence as to why such a modification is not a simple substitution within the scope of KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007) and MPEP § 2143(I)(B). Thus, this argument is unpersuasive.
Regarding the argument that the rejection does not provide any teaching or suggestion in the prior art, the Supreme Court explicitly states that the Office “need not seek out precise teachings directed to the challenged claim’s specific subject matter” and that while such a teaching, suggestion, or motivation is useful, it is not the only method for establishing a motivation to combine references. KSR at 401-402.
Therefore, Applicant’s argument is unpersuasive.
Regarding the rejection of claims 2-14 and 16-21 under 35 U.S.C. § 103, Applicant argues that these claims are allowable for either the same reasons as claim 1 or for depending on such a claim. (Remarks 14). Applicant’s arguments are unpersuasive for the reasons discussed above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 C.F.R. § 1.17(a)) pursuant to 37 C.F.R. § 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.
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/ANDREW R DYER/Primary Examiner, Art Unit 3662
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