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 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 20 features of “means for removably attaching a buoyant housing to a target object under a surface of water” “means for disabling a locking mechanism” “locking mechanism” (synonymous with “means for locking” with no standard meaning in this context. Corresponding structure in paragraph 47 and 80. Locking means is interpreted under 112f for Claims 1-9, 12-20) and “means for releasing the buoyant housing” are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph
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 20 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 20 limitation “means for disabling a locking mechanism configured to the buoyant housing” is unclear. The plain meaning of configure form the Oxford English Dictionary is “To fashion according to something else as a model; to conform in figure or fashion”. It would not be clear to a person of ordinary skill in the art how a “means for disabling a locking mechanism” is fashioned according to a buoyant housing as a model.
Claim limitation “means for removably attaching a buoyant housing to a target object under a surface of water” “means for disabling a locking mechanism” “means for releasing the buoyant housing”” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. No corresponding structure is clearly identified. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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)(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.
Claim 20 is rejected under 35 U.S.C. 102a1 as being anticipated by Berndt (US 2198755 A).
Regarding Claim 20, Berdt discloses a system for marking an underwater object comprising: means for removably attaching a buoyant housing to a target object under a surface of water (Element 7); means for disabling a locking mechanism (buoyancy force as in “buoyancy of the float I is sufficient to unwind the cord 12 on the spool II against the frictional resistance of the coil spin”) configured to the buoyant housing , wherein the locking mechanism is preventing rotation of a shaft configured to spin and deploy a line (Element 13); and means for releasing the buoyant housing (soluble glue, 6) to float to the surface of water while remaining attached to the target object by way of the line.
Claims 1-10, 12, 14, 16-19 are rejected under 35 U.S.C. 102a1 as being anticipated by Saulnier (US 4778422 A).
Regarding Claim 1, Saulnier discloses a marker buoy comprising: an upper body having a longitudinal axis and an outer surface (top of Element 114); a lower body that has a proximal end and a distal end having a line-feed aperture (lower portion of Element 114), the proximal end positioned at a center portion of the upper body and the lower body distal end extending away from the longitudinal axis (See Fig. 5.); a rotatable shaft (Element 126a) having a first end and a second end, the rotatable shaft positioned in the upper body and aligned with the longitudinal axis of the upper body; a spool (Element 126) positioned in the upper body and coupled to the shaft to rotate with the shaft; a fitting coupled to the first end of the shaft and positioned outside the upper body (cross-shaped recess in 126a); a line (See Fig. 4) wound onto the spool and extending through the proximal end of the lower body and the lower body distal end and out of the housing through the line-feed aperture; at least one mount (Element 142) coupled to the outer surface of the upper body; and a locking mechanism (Element 129) releasably coupled to the shaft for preventing the shaft from rotating.
Regarding Claim 2, Saulnier discloses a marker buoy of claim 1, wherein the upper body and the lower body each contain a cavity. (See Fig. 4, around the spool)
Regarding Claim 3, Saulnier discloses a marker buoy of claim 1, further comprising foam positioned within the upper body for providing positive buoyancy for the marker buoy. (a buoyant plastics foam material part 114)
Regarding Claim 4, Saulnier discloses a marker buoy of claim 1, wherein the lower body is formed integral with the upper body. (See Fig. 4.)
Regarding Claim 5, Saulnier discloses a marker buoy of claim 1, wherein the lower body proximal end is coupled to the upper body. (See Fig. 4.)
Regarding Claim 6, Saulnier discloses a marker buoy of claim 1, wherein the second end of the shaft extends from the upper body to turn the shaft manually.(shaft of cruciform cross-section welded to the center of a so-called "pot-hauler" which is indicated at 40 in Fig. 2.)
Regarding Claim 7, Saulnier discloses a marker buoy of claim 1, further comprising a weight that is positioned to ensure the marker buoy maintains proper orientation. (Element 116 has weight; whatever orientation it assumes is proper based on the balance of forces.)
Regarding Claim 8, Saulnier discloses a marker buoy of claim 7, wherein the weight is positioned in the lower body. (Element 116)
Regarding Claim 9, Saulnier discloses a marker buoy of claim 1, wherein the upper body and the lower body are one component creating a single, unified housing. (See Fig. 4.)
Regarding Claim 10, Saulnier discloses a marker buoy of claim 1, wherein the locking mechanism comprises a first aperture through the upper body and a second aperture through the first end of the shaft, the first aperture and the second aperture are alignable, wherein a removable locking pin is sized to fit through the first aperture and the second aperture when aligned. (C4, paragraph starting at line 67)
Regarding Claim 12, Saulnier discloses a marker buoy of claim 1, wherein the fitting has 1 or more straight sides. (See Fig. 4.)
Regarding Claim 14, Saulnier discloses a marker buoy of claim 1, wherein the upper body and the lower body are molded from a buoyant material. (Foam)
Regarding Claim 17, Saulnier discloses a marker buoy of claim 1, wherein the lower body extends from the upper body at least one inch. (See Fig. 5, based on the scale of the handle.)
Regarding Claim 18, Saulnier discloses a marker buoy of claim 1, further comprising a first seating point and a second seating point, wherein the shaft rests in the upper body on the first and the second seating points. (Element 123)
Regarding Claim 19, Saulnier discloses a marker buoy of claim 1, wherein the at least one mount has threads for attaching components to the marker buoy. (Element 144, Fig. 8)
Allowable Subject Matter
Claims 11, 13, 15 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW POLAY whose telephone number is (408)918-9746. The examiner can normally be reached M-F 9-5 Pacific.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joe Morano can be reached at 5712726684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW POLAY/Primary Examiner, Art Unit 3615 21 March 2026