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 .
Information Disclosure Statement
The crossed-out listing in the IDS filed 05/23/2024 has not been considered because the prior art is not relevant to the instant invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s).
See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 41-46 and 50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. US 10946939 B1 (‘939).
Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of the instant claims are encompassed in the claims of the ‘939 Patent. Regarding claim 43, although the ‘939 Patent fails to disclose the placement of conductors, it would have been obvious to a person skilled in the art to extend the conductors within the strut, which would have protected the conductors from the harsh marine environment.
Claims 41-46 and 50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 11801919 B2 (‘919).
Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of the instant claims are encompassed in the claims of the ‘919 Patent. Regarding claim 43, although the ‘919 Patent fails to disclose the placement of conductors, it would have been obvious to a person skilled in the art to extend the conductors within the strut, which would have protected the conductors from the harsh marine environment.
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 30-40 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.
In claim 30 (line 3-4), the limitation “the first connector” lacks proper antecedent in the claim, thereby rendering the claim indefinite. Further, it is not sufficiently clear if it is same or different from the “first connector portion” (emphasis added) set forth earlier in the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 31, 34, 38, 40-44 and 47, as best understood, are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zhu et al. (US 20220274673 A1).
Zhu et al. show a watercraft comprising: a board [300] having a cavity; a connector comprising a first connector portion [1100] and a second connector portion [2100] (see Fig 3 and Fig 4), the first connector portion removably connectable to the second connector portion; a strut [1500] having an end portion mounted to the board, the first connector portion secured to the strut at the first end portion of the strut; a propulsion system [1700] mounted to the strut, the propulsion system electrically coupled to the first connector portion via one or more electrical conductors extending through the strut (see ¶0060; lines 13-18); a container [2300] removably insertable into the cavity of the board and having the second connector portion, wherein the second connector connects to the first connector as the container is inserted into the cavity; and a battery disposed in the container and electrically coupled to the second connector portion such that connecting the second connector portion to the first connector portion electrically couples the battery to the propulsion system.
Re claim 34, the first connector portion includes a plug [1200] with a tapered top-end portion to guide the plug into a socket [2210] of the second connector portion (see the larger diameter plug in Fig 3 and Fig 6).
Re claim 38, the first connector portion includes a conductive pin [1210] and the second connector includes a conductive pin socket to receive the pin when the first connector portion is connected to the second connector portion (see Fig 3 and Fig 4).
Re claim 40, at least a portion of the board is sandwiched between the strut and the container when the first connector is connected to the second connector.
Re claims 41-43, see the explanation provided above.
Re claims 44 and 47, the first connector portion includes a plug [1200] with a tapered top-end portion to guide the plug into a socket [2210] of the second connector portion (see the larger diameter plug in Fig 3 and Fig 6).
Claims 41-43 and 50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Born (US 6848815 B1).
Born shows a strut [18] that is capable of being connected to a board of a hydrofoiling watercraft, the strut comprising: a first connector portion [35] attached to an upper portion of the strut, wherein the upper portion is capable of being mounted, and therefore mountable, to a board. The first connector portion is capable of being connected, and therefore, connectable to a corresponding second connector portion of the watercraft. The strut further comprises a lower portion, wherein a hydrofoil and propulsion system are capable of being mounted, and therefore, mountable to the lower portion. Conductors [36] extend from the first connector portion to the lower portion of the strut, which are capable of electrically connecting the first connector portion to the propulsion system. It is noted that the limitations board, watercraft, hydrofoil or the propulsion system are not positively recited in the claim, and are set forth only as capability statements.
Re claim 42, the first connector portion is connectable to the second connector portion mounted to a container of the watercraft housing a battery of the watercraft.
Re claim 43, the conductors extend within the strut from the upper portion to the lower portion.
Re claim 50, the first connector portion is pivotally attached to the strut.
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.
Claims 31-33, 35, 44-46, 48 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. (US 20220274673 A1).
Zhu et al. show a connector comprising a first connector portion removably connectable to the second connector portion, as described above. The first connector portion is shaped as a socket that receives the second connector portion shaped as a plug. A seal [1300] is positioned in an annular groove [2102] to extend about an outer surface of the plug and forming a fluid tight connection between the plug and the socket.
Zhu et al. however do not disclose the first connector portion as being shaped as a plug that is insertable into the second connector portion shaped as a socket.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to swap the connector design as a matter of routine design choice, wherein the first connector portion was shaped as a plug with a seal, to be insertable into the second connector portion that was shaped as a socket. Such swap of the connector design would have enabled the connector to perform equally well without any performance or structural disadvantage. With the above modification in place, the first connector portion would includes a conductive pin and the second connector includes a conductive pin socket to receive the pin when the first connector portion is connected to the second connector portion
Re claims 33 and 46, although Zhu et al. do not disclose the plug having a second seal, it have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to provide a second seal, which would have provided redundant waterproofing and protection in the event of accidental failure of the first seal.
Claims 36 and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. (US 20220274673 A1) in view of Osawa (US 9352660 B2).
Zhu et al. show a connector comprising a first connector portion, as described above. The first connector portion a sidewall extending about one or more pins.
Zhu et al. however fails to show the sidewall including one or more drain holes.
Osawa shows a connector comprising a sidewall extending about one or more pins, wherein the sidewall includes one or more drain holes [62] (see Fig 3).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to provide the connector sidewall of Zhu et al. with one or more drain holes, as taught by Osawa. Having such a modification would have quickly removed any water accumulation with the connector, thereby improving operational safety.
Allowable Subject Matter
Claims 37 and 39 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sewell (US 12145696), Trewern (US 10647392), Werner (US 11383797), Zhu et al. (US 20220247119) and DE-102018129501 each show a watercraft connector comprising a first connector portion removably connectable to a second connector portion.
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/AJAY VASUDEVA/Primary Examiner, Art Unit 3615