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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-7 in the reply filed on 01/08/2026 is acknowledged.
Drawings
The drawings are objected to because they contain photocopies of photographs. Pursuant to MPEP 608.02(VII) and 37 C.F.R. 1.84(b), black and white photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, only if photographs are the only practicable medium for illustrating the claimed invention, which the examiner contends does not apply to the current application.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 7 is 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 7 recites the limitation "the cylinder" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the semicircle molded plate" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the upper plate" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Diesen (10,065,714) in view of Illakowicz (9,926,770).
With regard to claim 1, Diesen discloses a subsea termination device for termination, maintenance, repair or re-termination of subsea umbilical cable hoses, the device comprising: a handle (figs. 3a-3b), a base (150), a pressing and termination structure supported on the base (320/324), and a feeding path (310) for feeding the pressing and termination structure (col. 4, line 43 – col. 5, line 7).
Diesen discloses the invention substantially as claimed however fails to explicitly state an ROV through the handle.
Illakowicz discloses a subsea termination device comprising an ROV through a handle (figs 4a-4b; col.4, line 59 – col. 5, line 21).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Diesen and utilize an ROV handle as taught in Illakowicz, with a reasonable expectation of success, in order to allow the ROV to transport the device to its desired location.
Allowable Subject Matter
Claims 2-6 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.
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.
The following is a statement of reasons for the indication of allowable subject matter: the cited prior art, either alone or in any reasonable combination, fails to teach or suggest all the limitations of the dependent claim(s). Subsea termination devices are known such as those taught by Diesen (10,065,714) and Illakowicz (9,926,770) above. However, the cited prior art lacks the base plate with three perforated portions equally spaced apart along its longitudinal length in combination with two parallel supports and two parallel metallic columns supporting a semicircular molded plate as required by the dependent claim(s) and it would not have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the prior art to achieve applicant’s invention without the benefit of hindsight and applicant’s own disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN F FIORELLO whose telephone number is (571)270-7012. The examiner can normally be reached Mon-Fri 8:00AM-4:30PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at (571)270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN F FIORELLO/Primary Examiner, Art Unit 3678
BF
03/04/2026