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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 18 is objected to because of the following informalities: at line 4, “Wind Turbine Generator” should not be capitalized. 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.
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.
Claims 2, 3, 6, 7, 9, 10, 11, 12, 17, 19, and 20 are 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.
Regarding claim 2 (hence claim 3), line 3, the recitation of "optionally" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 7, line 4, the recitation of “optionally” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 9, line 3 the recitation of “optionally” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 10 (hence claims 11 and 12), line 5, the recitation of “optionally” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 17, line 4, the recitation of “optionally” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 19, line 4, the recitation of “optionally” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 20, line 5, the recitation of “optionally” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Double Patenting
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.
Claims 1 and 9-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-21 and 23 of copending Application No. 18/554,023 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully encompassed by those of copending Application No. 18/554,023.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 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.
Insofar as understood, claim(s) 1, 4, 5, 8-11, 13, 15, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bang-Andreasen (WO 2017/211815).
As to claim 1, Bang Andreasen discloses (see figures 7 and 8) a method for locating a rigid support body at a predetermined location with respect to an aperture in a wall of a facility, comprising the steps of:
providing a rigid support body 34 at a first position outside a facility, the rigid support body comprising at least one retaining element 40 disposed in a storage position, and comprising a through-bore that extends through the support body from a first end of the support body to a further end;
via a first pulling force (via 22) applied to a first terminal end region of a flexible elongate member 16 that includes a covered region located in the through-bore, urging the rigid support body at least partially through an aperture in a wall 35 of a facility, the rigid support body thereby being located at a further position whereby a portion of the rigid support body and at least one retaining element supported on the rigid support body is within the facility and the retaining element is spaced apart from an inner surface of the wall of the facility;
subsequent to location of said retaining element within the facility and in a spaced apart relationship with said inner wall surface, positioning the retaining element out of a storage position by selectively swivelling the retaining element 40 from the storage position; and
subsequently urging the rigid support body into a retained position whereby at least a portion of an abutment surface of the retaining element is disposed in an abutting relationship with the inner surface of the wall proximate to the aperture to thereby locate the rigid support body at a predetermined location with respect to the aperture in which the retaining element is disposed in a deployed position.
As to claim 4, Bang-Andreasen discloses further comprising the steps of: applying the first pulling force (via 22) applied to the first terminal end in a first pulling direction and, via the first pulling force, providing an urging force to the rigid support body in a first penetration direction aligned with an axis of the rigid support body.
As to claim 5, Bang-Andreasen discloses further comprising: applying the first pulling force (via 22) applied to the first terminal end in the first pulling direction that is a substantially vertically upward direction.
As to claim 8, Bang-Andreasen discloses urging the rigid support body 34 into the retained position via relaxing the first pulling force and allowing movement of a previously inside portion of the rigid support body out of the facility via gravity.
As to claim 9, Bang-Andreasen discloses further comprising: positioning the retaining element 40 by selectively swivelling the retaining element from the storage position to the deployed position, optionally via an intermediate position.
As to claim 10, Bang-Andreasen discloses wherein the step of selectively swivelling comprises: selectively swivelling at least one of a pair of retaining arms 40, each disposed on respective opposed sides of the rigid support body, about a respective swivel point, from a storage position towards a deployed position, optionally via an intermediate position.
As to claim 11, Bang-Andreasen discloses further comprising: simultaneously swivelling both retaining arms 40 of the pair.
As to claim 13, Bang-Andreasen discloses reversibly urging the retaining element 40 into a deployed position.
As to claim 15, Bang-Andreasen discloses with the rigid body in the retained position in which an axial position of the rigid support body with respect to a location of the aperture remains substantially unchanged, constantly adjusting a swivel angle and/or an angle of attack, of an abutment surface of a retaining element 40, adopted by each retaining element responsive to environmental forces whereby the retaining element maintains an equilibrium position responsive to all forces exerted on the rigid support body despite at least one of a yaw and pitch and roll angle associated with an orientation of the rigid support body varying.
As to claim 17, Bang-Andreasen discloses at least a portion of the inner surface of the wall of the facility comprises a protective layer to reduce damage and/or wear, the protective layer optionally being corrosion resistant.
As to claim 18, Bang-Andreasen discloses the facility comprises a monopile that optionally comprises a portion of a turbine tower of a wind turbine generator (WTG).
As to claim 19, Bang-Andreasen discloses: the flexible elongate member 16 comprises a flexible pipe or umbilical or a submarine cable and optionally the elongate member comprises a dynamic portion of a submarine electricity cable.
As to claim 20, Bang-Andreasen discloses the rigid support body 34 is arranged, in the retained position in which the retaining element 40 is located in a deployed position, at an oblique angle in respect of a vertical axis associated with the facility, the angle optionally being about around 45 degrees.
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) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bang-Andreasen (WO 2017/211815) in view of Van Hinsbergh (WO 2018/060707)
As to claim 14, Bang-Andreasen discloses all that is claimed except for a sealing element, sealing the aperture around the rigid support body to thereby prevent fluid communication between the facility and the environment in at least one direction.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a sealing element as disclosed by Van Hinsbergh, since doing so provides the expected benefit of sealing an opening of an offshore structure so as to prevent contamination.
Allowable Subject Matter
Claim 16 is 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.
Claims 2, 3, 6, 7, and 12 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:
Insofar as understood, as to claim 2, the prior art of record fails to show or suggest securing a terminal end of a first winching line to the first terminal end region of the flexible elongate member, the winching line being secured to the flexible elongate member via a Chinese finger cable grip element.
Insofar as understood, as to claim 6, the prior art of record fails to show or suggest securing a remaining terminal end region of the flexible elongate member to a tensioning element, the tensioning element optionally being secured to the flexible elongate member via a further Chinese finger cable grip element, the tensioning element comprising a further winching line, a cable engine or a clamping quadrant.
As to claim 12, the prior art of record fails to show or suggest whereby the step of selectively swivelling comprises: removing a securing constraint on each retaining arm and subsequently urging each retaining arm to the deployed position via gravity or via a biasing force exerted via a biasing member.
As to claim 16, the prior art of record fails to show or suggest further comprising: releasing each retaining element from a storage position by breaking a frangible connection of an associated retaining latch arm via an ROV or by urging an abutment element of the latch arm into abutment with an outside surface of the wall as the rigid support body is urged at least partly through the aperture.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FREDERICK L LAGMAN whose telephone number is (571)272-7043. The examiner can normally be reached Tuesday-Friday 8am-6:00pm.
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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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/FREDERICK L LAGMAN/Primary Examiner, Art Unit 3678