CTNF 18/542,588 CTNF 91610 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Reissue Applications For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. 14-11-01 Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,702,182 (hereinafter the ‘182 patent) is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04. Drawings The drawings are objected to because reference number “35” is used in Figs. 1 and 2 without a lead line to the part indicated. It appears to the examiner that “downstream end 35” (col. 3:17) is not shown in Figs. 1 and 2. Compare to the use of reference number “35” in Figs. 3 and 4. Accordingly, the examiner suggests deleting reference number “35” in Figs. 1 and 2. Corrected drawing sheets in compliance with 37 CFR 1.173(b)(3) are required in reply to the Office action to avoid abandonment of the application. Amendments in reissue applications are different from standard utility application practice and are governed by 37 CFR 1.173. In particular, 37 CFR 1.173(b)(3) reads, with emphasis: Drawings . One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings. (i) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as "Annotated Marked-up Drawings" and must be presented in the amendment or remarks section that explains the change to the drawings. (ii) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner. The objection to the drawings will not be held in abeyance. See also MPEP 1453. Specification 07-29 AIA The disclosure is objected to because of the following informalities: In col. 1, line 14, it appears that “U.S. Pat. No. 9,937,997” should read --U.S. Pat. No. 9,937,991--. In col. 2, line 41, “compressed air source 12” should read --compressed air source 13--. In col. 2, line 49, it appears that “a controller manner without a need to entering” should read --a controlled manner without a need to enter--. In col. 2, line 59, “propeller shaft 8” should read --propeller shaft 1--. In col. 3, line 48, and col. 4, line 13, each instance of “a first pressure regulator 12” should read --a first pressure regulator 14--. In col. 6, line 11, “compressed air source 12” should read --compressed air source 13 --. Appropriate correction is required. 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. Claims 1, 3-6, and 8-15 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 claim 1 , in the limitation “supplying compressed air from a compressed air source in an air supply line to the air chamber,” it is unclear whether “in an air supply line” means that that the compressed air source is located in an air supply line, as suggested by the claim language, or that the compressed air is supplied through an air supply line, as suggested by the patent disclosure. (See, e.g., Fig. 1, showing compressed air source 13 which supplies compressed air through an air supply line 12 to the air chamber 8.) Considered in view of Applicant’s patent disclosure, it appears that “in an air supply line” should read --through an air supply line--. Similarly, in the limitation “discharging compressed air from the air chamber in an air return line and out of the air return line,” it is unclear whether “in an air return line and out of the air return line” means that the air chamber is located in an air return line (and possibly also out of the air return line?) or that the compressed air is discharged through an air return line, as suggested by the patent disclosure. (See again Fig.1 , showing air chamber 8 from which air is discharged through an air return line 16.) Considered in view of Applicant’s patent disclosure, it appears that “in an air return line and out of the air return line” should read -- through the air return line--. Additionally, it is unclear in what sense the closing of the air return line downstream of the intermediate leakage tank is “in connection with closing the air return line,” as recited in the last two lines of the claim. This appears to be redundant since closing the air return line is, by definition, connected with closing the air return line. It is unclear whether “in connection with closing the air return line” refers specifically to the closing of the air return line upstream of the intermediate leakage tank as recited in line 12. Claims 3-5 are rejected in view of their dependency from claim 1. In addition, in claim 3 , it is unclear whether “to the leakage tank in a connecting liquid line” in the last line of the claim means that the leakage tank is located in a connecting liquid line or that the liquid flows to the leakage tank through a connecting liquid line. Considered in view of Applicant’s disclosure, it appears that “in a connecting liquid line” should read -- through a connecting liquid line--. In addition, in claim 5 , the meaning and scope of the limitation “functionally connected to the air supply line to the third valve” is unclear. Should “functionally connected to the air supply line to the third valve” read --functionally connected to the air supply line and to the third valve--? Regarding claim 6 , the limitation “a connecting air line in fluid connection with the intermediate leakage tank” in line 17 renders the claim indefinite, because it is unclear what component is connected to the intermediate leakage tank by the connecting air line. Related to this issue, it is unclear what structural arrangement would be encompassed by the functional limitation “wherein the drainage arrangement configured to close the first valve in the air return line, to supply compressed air in the connecting air line to the intermediate leakage tank to effect flowing of liquid present in the intermediate leakage tank to the leakage tank in the connecting liquid line” recited in lines 18-21, since the claim does not clearly identify the structural configuration by which compressed air is supplied in the connecting air line. Additionally, it is unclear whether “in the connecting liquid line” means that the leakage tank is located in the connecting liquid line (as suggested by the claim language), or that the liquid flows through the connecting liquid line (as suggested by the patent disclosure). The examiner notes that this rejection could be overcome by amending these limitations to read --a connecting air line in fluid connection [with] between the intermediate leakage tank and the compressed air source , wherein the drainage arrangement is configured to close the first valve in the air return line, and to supply compressed air [in] through the connecting air line to the intermediate leakage tank to effect flowing of liquid present in the intermediate leakage tank to the leakage tank [in] through the connecting liquid line--. Claims 8-15 are rejected in view of their dependency from claim 6. In addition, in claim 8 , the limitations “in the air return line” in line 10 and “in the connecting liquid line” in line 12 are unclear for the reasons discussed above. It appears to the examiner that “in the air return line” should read -- through the air return line--, and “in the connecting liquid line” should read -- through the connecting liquid line--. Additionally, the limitation “the intermediate leakage tank leakage” in line 11 should read --the intermediate leakage tank [leakage]--. Similarly, in claim 9 , it appears that “in the connecting liquid line” in line 5 should read -- through the connecting liquid line--. Additionally, “a third valve” in line 3 should read --the third valve--, since the third valve is first introduced in line 2. Likewise, in claim 10 , it appears that “in the air return line” in line 8 should read -- through the air return line--, and “in the connecting liquid line” in line 10 should read -- through the connecting liquid line--. Again, in claim 11 , it appears that “in the air return line” in line 10 should read -- through the air return line--, and “in the connecting liquid line” in line 12 should read -- through the connecting liquid line--. Additionally, claim 12 recites the limitation “the drainage circuit arrangement” in lines 4, 6, and 8. There is insufficient antecedent basis for this limitation in the claims. It appears that each instance of “the drainage circuit arrangement” should read --the drainage arrangement-- (consistent with claim 8). Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Fangauf (U.S. Patent Pub. 2017/0259898, hereinafter Fangauf) in view of Iwawaki et al. (JP 2006234101 A, hereinafter Iwawaki) . Regarding claim 1 , Fangauf discloses a method for sealing a propeller shaft (2, Fig. 2) located under water (¶ 20), wherein the propeller shaft (2) is arranged at a pod (4) that is suspended at a hull (6) of a ship and wherein an air chamber (28, ¶ 24) is provided circumferentially around the propeller shaft (4), the method comprising: supplying compressed air from a compressed air source (64, ¶ 26) through an air supply line (60) to the air chamber (28); discharging compressed air from the air chamber (28) through an air return line (discharge line 62); collecting liquid present in the compressed air discharged from the air chamber (28) in an intermediate leakage tank (collection container 94, ¶ 36) that is provided in the air return line (62) within a pod housing of the pod (shown in dotted outline at reference number 4 in Fig. 2); supplying compressed air to the intermediate leakage tank (94, via discharge line 62) to effect flowing of liquid present in the intermediate leakage tank (94) to a leakage tank (bilge 68, Fig. 2; via the drainage process described in Fig. 1, ¶ 36; see ¶ 26); and closing the air return line (62) downstream of the intermediate leakage tank (94) in connection with closing the air return line (via valve device 66, ¶ 26). Fangauf does not teach the step of closing the air return line upstream of the intermediate leakage tank. However, Iwawaki teaches a method for sealing an underwater propeller shaft (Fig. 2) including the step of closing an air return line (36) upstream of an intermediate leakage tank (drainage tank 38; at valve 44 which is normally closed). Iwawaki teaches that closing the air return line (36) facilitates the use of an additional air chamber to prolong the service life of the sealing arrangement (¶¶ 8, 16). Therefore, it would have been obvious to one of ordinary skill int the art before the effective filing date of the claimed invention to modify the invention of Fangauf to include the step of closing the air return line upstream of the intermediate leakage tank, in order to extend the service life of the sealing arrangement, as taught by Iwawaki. 1 Allowable Subject Matter Claim 3 (and claims 4-5 and 9-11 dependent therefrom) would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Claims 6 and 8-15 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is Fangauf and Iwawaki, as discussed above for claim 1. Regarding dependent method claim 3, Fangauf and Iwawaki do not disclose a step by which compressed air is supplied to an upstream end of the connecting air line, from a downstream end of the connecting air line to the air return line at a point of the air return line downstream of the intermediate leakage tank, and into the intermediate leakage tank to effect the flowing of liquid from the intermediate leakage tank to the leakage tank through a connecting liquid line. 2 Regarding independent apparatus claim 6, Fangauf discloses an arrangement for sealing a propeller shaft (Fig. 2) comprising an air chamber, an air supply line, an air return line, an intermediate leakage tank, a leakage tank, a connecting air line, and a valve downstream of the intermediate leakage tank in the air return line, as discussed above with respect to the method of claim 1. Fangauf lacks a first valve in the air return line upstream of the intermediate tank and a connecting liquid line which fluidly connects the leakage tank to the intermediate leakage tank. In Fangauf, the intermediate tank (94, Fig. 2) is connected to the leakage tank (68) via the return line in which the second valve (66) is located, not via a distinct connecting liquid line. Claim 6 is understood to require a connecting liquid line that is distinct from the air return line, consistent with the plain meaning of the claim and consistent with the invention as disclosed (see, e.g., Fig. 2, including connecting liquid line 25 connecting intermediate tank 19 to tank 24, distinct from the air return line 6 which includes the second valve 17). Although Iwawaki suggests a first valve in the air return line upstream of the intermediate tank, as discussed above, Iwawaki does not suggest modifying Fangauf to include a connecting liquid line that connects the intermediate leakage tank to the leakage tank, in addition to the air return line of Fangauf . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura L. Davison whose telephone number is (571)270-0189. The examiner can normally be reached Monday - Friday, 8:00 a.m. - 4:00 p.m. ET. 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, Eileen Lillis can be reached at (571)272-6928. 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. /Laura Davison/ Reexamination Specialist, Art Unit 3993 Conferees: /WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993 /EILEEN D LILLIS/ SPRS, Art Unit 3993 Application/Control Number: 18/542,588 Page 2 Art Unit: 3993 Application/Control Number: 18/542,588 Page 3 Art Unit: 3993 Application/Control Number: 18/542,588 Page 4 Art Unit: 3993 Application/Control Number: 18/542,588 Page 5 Art Unit: 3993 Application/Control Number: 18/542,588 Page 6 Art Unit: 3993 Application/Control Number: 18/542,588 Page 7 Art Unit: 3993 Application/Control Number: 18/542,588 Page 8 Art Unit: 3993 Application/Control Number: 18/542,588 Page 9 Art Unit: 3993 Application/Control Number: 18/542,588 Page 10 Art Unit: 3993 Application/Control Number: 18/542,588 Page 11 Art Unit: 3993 1 The examiner notes that claim 1 does not require any causal, functional, or timewise relationship between closing the air return line and effecting flowing of liquid in the intermediate leakage tank to a leakage tank, and thus reads on the proposed combination of Fangauf and Iwawaki. See Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371, 65 USPQ2d 1865, 1869-70 (Fed. Cir. 2003) (Although the specification discussed only a single embodiment, the court held that it was improper to read a specific order of steps into method claims where, as a matter of logic or grammar, the language of the method claims did not impose a specific order on the performance of the method steps, and the specification did not directly or implicitly require a particular order). MPEP § 2111.01, subsection II. 2 For clarity of the record, the examiner notes that Applicant describes this method in Figs. 3 and 4 and the accompanying description at col. 3:7-24 and 6:64-7:39.
Prosecution Insights