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 .
Status of Claims
In the instant case, claims 1-13 are pending and under examination. Claims 10-13 have been withdrawn from further consideration.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-9, drawn to a biofouling preventing device for ships, classified in A61L 2/03.
II. Claim s 10-13, drawn to a method of manufacturing a biofouling preventing device for a ship, classified in B08B 17/02.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the process as claimed can be used to make another materially different product such as a biofouling preventing device without a resistance measuring device configured to measure the resistance of the electrodes.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Jin Seo Park on 06/17/26 a provisional election was made without traverse to prosecute the invention of group I drawn to a biofouling preventing device for ships, claims 1-9. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-13 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bradie S. Crandall whose telephone number is (571)272-9778. The examiner can normally be reached Mon-Fri 9:00am-5:00pm 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, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Claim Interpretation
For purposes of examination, a driving signal will be interpreted as an electromagnetic wave as supported by the immediate specification which indicates that driving signal corresponds to electromagnetic waves (par. 9). The immediate specification also describes the driving signal having both a frequency measured in Hertz and an amplitude measured in volts (par. 73), further supporting the electromagnetic wave interpretation.
Claim Objections
Claims 1-2 and 9 are objected to due to the following informalities:
Claim 1 recites, “an electrode disposed on a surface area of a hull and configured to supply with a driving signal to provide electromagnetic waves corresponding to the driving signal.”
However, to improve readability, claim 1 should recite, “an electrode disposed on a surface area of a hull and configured to be supplied with electromagnetic waves from a driving signal.” For purposes of examination, claim 1 will be interpreted using the language suggested by the examiner.
Claim 2 recites, “the driving signal is generated by mixing an AC signal and a DC.”
However, to improve readability, claim 2 should recite, “the driving signal is generated by a mixture of an AC signal and a DC signal.” For purposes of examination, claim 2 will be interpreted using the language suggested by the examiner.
Claim 9 recites, “the signal supply modify at least one of an amplitude and a DC offset…”
However, to improve readability, claim 9, should recite, “the signal supply modifies at least one of an amplitude and a DC offset…” For purposes of examination, claim 9 will be interpreted using the language suggested by the examiner.
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 1, 5, and 6-7 are rejected under 35 U.S.C. 102(a)(2) as being anticipate by Van Delden (U.S. Patent Application No. 16473173).
Regarding claim 1, Van Delden discloses electrodes attached to the surface of a marine structure (par. 14) which is equivalent to an electrode disposed on a surface area of a hull as claimed. Van Delden also discloses conductors attached to a power source (par. 9) for proving an electrical potential to the electrodes (par. 12 and 25) which necessitates a driving signal, or electromagnetic wave, as claimed. Thus, the teachings of Van Delden are equivalent to an electrode disposed on a surface area of a hull and configured to be supplied with electromagnetic waves from a driving signal; and a signal supply configured to supply the driving signal to the electrode as claimed.
Regarding claim 5, Van Delden discloses the electrode has a dielectric layer that can be achieved by one or more coating layers on the electrode (par. 28) and that the dielectric layer acts as a cover layer that physically protects the conductive layer from the liquid (par. 29). This is equivalent to a protective layer disposed on the electrode as claimed.
Regarding claim 6, Van Delden discloses two electrodes on two different surface regions of a surface area (par. 53 and Fig. 1/item 110). This is equivalent to the surface area includes a first surface area and a second surface area, and the electrode includes a first electrode disposed on the first surface region and a second electrode disposed on the second surface region as claimed.
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Regarding claim 7, Van Delden discloses electrodes (item 110) with at least three different widths in Figure 1 where two of the electrodes with differing widths can be numbered as claimed. This is equivalent to the first electrode has a width different from the second electrode as claimed.
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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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2-4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Van Delden (U.S. Patent Application No. 16473173), in view of Usami (U.S. Patent No. 5088432).
Regarding claim 2, Van Delden discloses conductors attached to a power source (par. 9) for providing an electrical potential to the electrodes (par. 12 and 25) with direct current (par. 15) which is equivalent to a driving signal, or electromagnetic wave, being generated by a DC signal as claimed.
Van Delden does not disclose the driving signal, or electromagnetic wave, being generated by a mixture of an AC signal and a DC signal as claimed.
However, Usami discloses a power source that supplies direct current (claim 1) and also alternating current using a polarity switching circuit (claim 4) which is equivalent to a mixture of an AC signal and a DC signal as claimed. It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the driving signal, or electromagnetic wave, taught by Van Delden with the mixture of AC and DC signal taught by Usami. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to combine the driving signal, or electromagnetic wave, taught by Van Delden with a mixture of an AC signal and a DC signal using a polarity switching circuit, or a polarity reversing switch, to achieve a more economical anti-fouling system (see Usami par. 23). One of ordinary skill in the art, before the effective filing date of the claimed invention, would have a reasonable chance of success for arriving at the claimed invention by using known work in a field of endeavor to prompt variations of it for use in the same field of endeavor based on market forces because:
Usami, Van Delden, and the instant application all teach the analogous device of an electrode to prevent the growth of organism on a surface
Market forces would have prompted adaptation of the known device
The differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art
One of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art
Thus, the known work of a mixture of an AC and a DC signal taught by Usami can be used with the driving signal, or electromagnetic wave, taught by Van Delden as an obvious variation to achieve a more economical anti-fouling system (see Usami par. 23).
Regarding claim 3, Van Delden discloses a power source, which is equivalent to a signal supply, that is arranged to generate voltage pulses for charging and discharging electrodes due to changes in the electrical potential (abstract generally). Van Delden also discloses the power source having a switch to connect and disconnect the power which is equivalent to modifying a characteristic of the driving signal, or electromagnetic wave in response to an external input (par. 66). Thus, the teachings of Van Delden are equivalent to a signal supply configured to modify at least one characteristic of a driving signal, or electromagnetic wave, in response to an external input as claimed.
Regarding claim 4, Van Delden discloses a DC offset voltage added to voltage pulses (claim 7) and the voltage pulses having a current (claim 2), which necessitates the presence of an amplitude. Thus, the teachings of Van Delden are equivalent to the characteristics of the driving signal, or electromagnetic wave, including an amplitude and a DC offset as claimed.
Regarding claim 8, Van Delden discloses two electrodes that can be numbered as claimed (item 110/Fig. 1). Van Delden also discloses conductors attached to a power source (par. 9) for providing an electrical potential to the electrodes (par. 12 and 25) which necessitates a driving signal, or electromagnetic wave, as claimed. This is equivalent to the signal supply supplying a first driving signal (or electromagnetic wave) and a second driving signal (or electromagnetic wave) as claimed. Van Delden also discloses that the currents and slopes associated with the electrodes (Fig. 3), which necessitate the existence of an amplitude, may differ (par. 63). This is equivalent to at least one of an amplitude and a DC offset of the first driving signal (or electromagnetic wave) is set to be different from at least one of a corresponding amplitude and DC offset of the second driving signal (or electromagnetic wave), as claimed.
Van Delden does not disclose supplying a mixture of an AC signal and a DC signal to the first electrode and second electrode as claimed.
However, Usami discloses a power source that supplies direct current (claim 1) and also alternating current using a polarity switching circuit (claim 4) which is equivalent to a mixture of an AC signal and a DC signal as claimed. It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the mixture of AC and DC signals taught by Usami with the two electrodes taught by Van Delden. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to combine the two electrodes taught by Van Delden with a mixture of an AC signal and a DC signal using a polarity switching circuit, or a polarity reversing switch, to achieve a more economical anti-fouling system (see Usami par. 23). One of ordinary skill in the art, before the effective filing date of the claimed invention, would have a reasonable chance of success for arriving at the claimed invention by using known work in a field of endeavor to prompt variations of it for use in the same field of endeavor based on market forces because:
Usami, Van Delden, and the instant application all teach the analogous device of an electrode to prevent the growth of organism on a surface
Market forces would have prompted adaptation of the known device
The differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art
One of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art
Thus, the known work of a mixture of an AC and a DC signal taught by Usami can be used with the two electrodes taught by Van Delden as an obvious variation to achieve a more economical anti-fouling system (see Usami par. 23).
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Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Van Delden (U.S. Patent Application No. 16473173), in view of Usami (U.S. Patent No. 5088432) and in further view of Baek (WO Patent Application No. 2019083189), as evidenced by Hamilton (ISBN: 978-0-511-06318-3).
Regarding claim 9, Van Delden discloses a power source arranged to generate voltage pulses for charging and discharging electrodes due to changes in the electrical potential (abstract generally), which is equivalent to a signal supply. Van Delden discloses a DC offset voltage added to voltage pulses (claim 7) and that the voltage pulses have a current (claim 2), which necessitates the presence of an amplitude, as claimed. Van Delden discloses a circuit with a known time constant, a known capacitance, and an effective resistance (par. 32, 59, and 65).
Van Delden does not disclose a resistance measuring device.
However, Baek discloses a device for measuring capacity. Although Baek does not disclose a resistance measuring device, a known time constant and a measured capacitance can be used to determine resistance as evidenced by Hamilton with the equation Τ = RC, where Τ represents a time constant, R represents resistance, and C represents capacitance (pg. 17/par. 5). Thus, given a known time constant, a device for measuring capacity is equivalent to a resistance measuring. Baek also discloses the use of the capacity measuring device (or resistance measuring device) to control and supply the intensity of the current, which necessitates the presence of an amplitude, applied to the distribution unit based on the measured capacity (or resistance) (par. 27). Thus, the teachings of Baek are equivalent to a resistance measuring device configured to measure resistance and a signal supply modifying an amplitude of the electromagnetic wave in response to a resistance value measured by the resistance measuring device as claimed.
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to combine the electrode and signal supply taught by Van Delden with the resistance measuring device as taught by Baek as evidenced by Hamilton. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to combine the electrode and signal supply taught by Van Delden with the resistance measuring device taught by Baek as evidenced by Hamilton to control the intensity of the current or voltage applied (see Baek par. 27). One of ordinary skill in the art, before the effective filing date of the claimed invention, would have a reasonable chance of success for arriving at the claimed invention by combining prior art elements according to known methods to yield predictable results because the prior art included each element claimed with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. The electrode and signal supply taught by Van Delden can be combined with the resistance measuring device taught by Baek as evidenced by Hamilton to yield the predictable result of controlling the intensity of the current or voltage applied (see Baek par. 27).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bradie S. Crandall whose telephone number is (571)272-9778. The examiner can normally be reached Mon-Fri 9:00am-5:00pm 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, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from
Patent Center. Unpublished application information in Patent Center is available to registered users. To
file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit
https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional
questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like
assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or
571-272-1000.
/B.S.C./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
Prosecution Insights