DETAILED ACTION
Claims 1-3, 5-7, 9-10, 18, 20-23, and 26-29 are pending, and claims dated 01/09/2026 are being examined.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/10/2026 has been entered.
Response to Arguments
Regarding the rejection(s) to the claim(s) under 35 U.S.C. § 101: Applicant has amended the claim(s) to overcome the previously set forth rejection(s). Accordingly, the Examiner has withdrawn the previously set forth rejection(s) to the claim(s). However, the amendments have raised new rejections as outlined below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/05/2026 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
Claims 1-3, 5-7, 9-10, 18, 20-23, and 26-29 of this application are patentably indistinct from claims 1, 3-4, 6-10, 14, 17, 26, 30, 32, and 38-41 of Application No. 18/551,065. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the instant application is broader in scope by disclosing a “stationary object” rather than “a vessel”. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
While Applicant in p. 7 of remarks filed 10/08/2025 argues that “there is no disclosure in '065 of monitoring the cleanliness of an underwater surface of a stationary object because the monitoring performed in '065 is performed "during a journey of the vessel" i.e., when the vessel is moving” this argument is not persuasive because the broadest reasonable interpretation of a “during a journey” is not defined by or requires a non-stop moving vessel. A journey merely defines the act of traveling from one place to another, where in some locations during the journey the vessel may be stationary. It is therefore also obvious that the scope of dynamically monitoring “during a journey of said vessel” encompasses monitoring during times where the vessel may be stationary.
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.
Specification
The abstract of the disclosure is objected to because it is a copy paste of the first page of a WIPO publication. It is recommended to provide a text only < 150-word abstract, removing any drawings or unnecessary information. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Allowable Subject Matter
Claims 1-3, 5-7, 9-10, 18, 20-23, and 26-29 would be allowable if rewritten to overcome the double patenting rejections, set forth in this Office Action and to include all the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding the independent claims, the prior arts on record do not teach, describe, and/or suggest all the limitations as presented in the claims as a whole – specifically “identifying a level of risk of fouling on the surface of the stationary object by determining a fouling risk value using the fouling protection value and the fouling value; and identifying high risk fouling conditions by determining that the fouling risk value exceeds a predetermined threshold, and in response, outputting a control signal to: (i) a remotely operated underwater vehicle or a cleaning robot configured to clean the surface of the stationary object, to initiate inspection of the surface of the stationary object (ii) a cleaning robot configured to clean the surface of the stationary object, to initiate cleaning of the surface of the stationary object or (iii) an output device of the computing device, or a remote device, to alert a user to the high risk fouling conditions”.
The closest prior art Kato et al. (US-20180211453-A1) does not teach identifying a level of risk of fouling on the surface of the stationary object by determining a fouling risk value using the fouling protection value and the fouling value.
Prior art Visser et al. (US-20180304321-A1) teaches the claimed fouling protection value corresponding to the temperature of the surface ([0023]). Visser does not teach however, determining a fouling risk value using the surface temperature.
Prior art Umemiya (US-20210047012-A1) teaches a level of risk of fouling determined based on seawater temperature ([0049]), but said seawater temperature does not correspond to the claimed fouling protection value which is said to be associated with a surface of the stationary object.
Prior art Smith (US-20140076224-A1) teaches control of a cleaning robot when a cleaning differential exceeds a predetermined threshold amount or range of acceptable values ([0034]), but said cleaning differential does not correspond to the claimed fouling risk value which is identified based on both the fouling protection value and the fouling value.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-11192069-B2 Coster teaches a method for assessing a state of fouling
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVIN SEOL whose telephone number is (571) 272-6488. The examiner can normally be reached on Monday-Friday 9:00 a.m. to 5:00 p.m.
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/DAVIN SEOL/Examiner, Art Unit 3662
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