DETAILED ACTION
Preliminary Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This application claims benefit of 63/451,200 filed 03/09/2023.
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 3 is 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.
In reference to claim 3, the limitations of claim 3 fail to further limit the invention of which claim 3 claims dependency from, claim 1. In other words, the limitations found in claim 3 are already found in claim 1 (see lines 6-8 of claim 1) and therefore claim 3 is indefinite as it fails to particularly point out and distinctly claim subject matter of which Applicant regards as the invention.
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) 1, 3 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Megdal et al. (U.S. Publication 2011/0141853) and Fenu et al. (U.S. Publication 2015/0336650).
In reference to claim 1, Megdal et al. discloses an underwater handheld computer system (see paragraphs 3, 6 and Figures 2, 5 and 6 wherein Megdal et al. discloses systems and methods for underwater positioning and tracking that utilizes an underwater receiver comprising at least a processor, memory, display.) comprising:
a display (see paragraphs 20, 67 and #516 of Figure 5);
at least one hardware processor (see paragraphs 20, 67, 72 and #502 of Figure 5); and
one or more software modules are configured to, when executed by the at least one hardware processor (see paragraphs 20, 67, 72 and #502, 504 of Figure 5),
receive a selection of a mission marker (see paragraphs 6, 77, 80-81 and Figure 6 wherein Megdal et al. discloses the underwater receiver calculating its own absolution position and implementing features typical to a modern GPS receiver such as recording tracks, marking and navigating to waypoints, displaying location on maps and the like. Megdal et al. discloses the display comprising a user interface that receives and displays additional information on the display such as information on local wrecks or formations and heading, depth, latitude, longitude information.) ;
display on a display a diver’s position, heading, depth and course history for the selected mission marker (see paragraphs 6, 77, 80-81 and Figure 6 wherein Megdal et al. discloses the display comprising a user interface that displays additional information on the display such as heading, depth, latitude, longitude information and maps. Megdal et al. discloses the underwater receiver calculating its own absolution position and implementing features typical to a modern GPS receiver such as recording tracks, marking and navigating to waypoints, displaying location on maps and the like of which, the combination thereof, the Examiner interprets as functionally equivalent to Applicant’s “course history.”.); and
interface with a heads up display to mirror the data displayed on the display.
Although Megdal et al. does disclose the underwater receiver comprising a display displaying a multitude of information while further allowing for an interface and communication to an external/remote display (see at least paragraph 97 and Figure 6), Megdal et al. does not explicitly disclose a HUD to mirror the data displayed on the display. Fenu et al. discloses a diver propulsion vehicle and to a method of operating such diver propulsion vehicle (see paragraph 1). Fenu et al. discloses the invention comprising a wireless communications interface that can provide vehicle information to a diver worn head up display and a diver worn dive computer (see at least paragraph 36). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to implement the diver head up and computer interfacing/displaying techniques of Fenu et al. with the underwater receiver device and display of Megdal et al. in order to provide an ease of use for a diving computer whereby hands-free access to critical data can further be provided to a HUD implementation of the diver.
In reference to claim 3, Megdal et al. and Fenu et al. disclose all of the claim limitations as applied to claim 1 above. Megdal et al. discloses the display comprising a user interface that displays additional information on the display such as heading, depth, latitude, longitude information and maps (see paragraphs 77, 80-81 and Figure 6). Megdal et al. discloses the underwater receiver calculating its own absolution position and implementing features typical to a modern GPS receiver such as recording tracks, marking and navigating to waypoints, displaying location on maps and the like (see paragraph 6) of which, the combination thereof, the Examiner interprets as functionally equivalent to Applicant’s “course history.”
In reference to claim 12, Megdal et al. and Fenu et al. disclose all of the claim limitations as applied to claim 1 above. Megdal et al. explicitly discloses the underwater receiver comprising a battery and battery management module, the battery specifically in the format of a lithium ion battery (see paragraph 74). Neither Megdal et al. or Fenu et al. explicitly disclose however the claimed capacity of the battery to be 300Wh or 97Wh. At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to implement the disclosed lithium ion battery of Megdal et al. at any chosen capacity including either 300Wh or 97Wh as claimed. Applicant has not disclosed that explicitly implementing these specific battery capacities provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the teachings Megdal et al. and Fenu et al. because the exact battery capacity chosen for powering a device is a matter of engineering design choice as preferred by the inventor and/or to which best suits the application at hand. Therefore, it would have been obvious to one of ordinary skill in this art to modify Megdal et al. and Fenu et al. to obtain the invention as specified in claim 12.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Megdal et al. (U.S. Publication 2011/0141853), Fenu et al. (U.S. Publication 2015/0336650) and further in view of Jukkala (U.S. Publication 2016/0259029).
In reference to claim 10, Megdal et al. and Fenu et al. disclose all of the claim limitations as applied to claim 1 above. Neither Megdal et al. or Fenu et al. explicitly disclose displaying a pinger locator feature on the display. Jukkala discloses an underwater device comprising an ultrasonic transceiver configured to display, on a diver’s hand console, positions of a target of interest in the manner of ping signal sequences (see paragraphs 9, 41 and 44). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to implement the display of pings by the underwater device of Jukkala with the with the underwater receiver device and displaying techniques of Megdal et al. and Fenu et al. in order to provide tracking of actual diving routes and real-time information to a diver and buddy divers (see paragraphs 41-44 of Jukkala).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Megdal et al. (U.S. Publication 2011/0141853), Fenu et al. (U.S. Publication 2015/0336650) and further in view of McQuitty et al. (U.S. Patent 4,949,317).
In reference to claim 11, Megdal et al. and Fenu et al. disclose all of the claim limitations as applied to claim 1 above. Neither Megdal et al. or Fenu et al. explicitly disclose creating a bezel made of Beryllium Copper to reduce magnetic signatures. McQuitty et al. discloses an improved acoustic baffle of controllable frequency characteristics for attenuation of acoustic energy impingent upon an underwater transducer of a sonic detecting system (see column 1, lines 5-9). McQuitty et al. explicitly discloses constructing the baffle system such that beryllium copper is utilized, the baffle system leading to the attenuation (see at least column 3, lines 11-22 and column 4, lines 30-40). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to implement the usage of Beryllium Copper as in McQuitty et al. with the underwater receiver device and displaying techniques of Megdal et al. and Fenu et al. in order to provide an underwater apparatus that attenuates noise or undesired acoustic energy in critical environments (see column 1, lines 10-19 of McQuitty et al.).
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4-14 of co-pending Application No. 18/601,732 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of claims 1-10, which are not explicitly recited in the combination of claims 1, 2 and 4-14, would have been obvious to one of ordinary skill in the art and/or would have been interpreted equivalent to those limitations recited in the co-pending application as seen to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In reference to claim 1, the limitations of instant application claim 1 and be found basically word-for-word in co-pending application claims 1, 2, 4, 5 and 14. In other words, although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in the combination of claims 1, 2, 4, 5 and 14 respectively. Further note, claims 2, 4, 5 and 14 carry proper/appropriate dependency as they are directly dependent upon claim 1.
In reference to claim 2, the limitations of instant application claim 2 and be found basically word-for-word in co-pending application claims 2 and 13. In other words, although the conflicting claims are not identical, they are not patentably distinct from each other because claim 2 is generic to all that is recited in the combination of claims 2 and 13 respectively. Further note, claims 2 and 13 carry proper/appropriate dependency as they are directly dependent upon claim 1 (as does claim 2 in the instant application).
In reference to claim 3, the limitations of instant application claim 3 and be found basically word-for-word in co-pending application claims 2 and 5. In other words, although the conflicting claims are not identical, they are not patentably distinct from each other because claim 3 is generic to all that is recited in the combination of claims 2 and 5 respectively. Further note, claims 2 and 5 carry proper/appropriate dependency as they are directly dependent upon claim 1 (as does claim 3 in the instant application).
In reference to claim 4, the limitations of instant application claim 4 and be found basically word-for-word in co-pending application claims 2 and 6. In other words, although the conflicting claims are not identical, they are not patentably distinct from each other because claim 4 is generic to all that is recited in the combination of claims 2 and 6 respectively. Further note, claims 2 and 6 carry proper/appropriate dependency as they are directly dependent upon claim 1 (as does claim 4 in the instant application).
In reference to claim 5, the limitations of instant application claim 5 and be found basically word-for-word in co-pending application claims 2, 5 and 7. In other words, although the conflicting claims are not identical, they are not patentably distinct from each other because claim 5 is generic to all that is recited in the combination of claims 2, 5 and 7 respectively. Further note, claims 2, 5 and 7 carry proper/appropriate dependency as they are directly dependent upon claim 1 (as does claim 5 in the instant application).
In reference to claim 6, the limitations of instant application claim 6 and be found basically word-for-word in co-pending application claim 8.
In reference to claim 7, the limitations of instant application claim 6 and be found basically word-for-word in co-pending application claim 9.
In reference to claim 8, the limitations of instant application claim 8 and be found basically word-for-word in co-pending application claim 10.
In reference to claim 9, the limitations of instant application claim 9 and be found basically word-for-word in co-pending application claim 11.
In reference to claim 10, the limitations of instant application claim 10 and be found basically word-for-word in co-pending application claim 12.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 9-12 of co-pending Application No. 18/601,793 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of claims 1-12, which are not explicitly recited in the combination of claims 1-6 and 9-12 would have been obvious to one of ordinary skill in the art and/or would have been interpreted equivalent to those limitations recited in the co-pending application as seen to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In reference to claim 1, the limitations of instant application claim 1 and be found basically word-for-word in co-pending application claims 1 and 10. In other words, although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in the combination of claims 1 and 10 respectively. Further note, claim 10 carries proper/appropriate dependency as it is directly dependent upon claim 1.
In reference to claim 2, the limitations of instant application claim 2 and be found basically word-for-word in co-pending application claim 9.
In reference to claim 3, the limitations of instant application claim 3 and be found basically word-for-word in co-pending application claim 1, lines 5-7.
In reference to claim 4, the limitations of instant application claim 4 and be found basically word-for-word in co-pending application claim 1, last 4 lines.
In reference to claim 5, the limitations of instant application claim 5 and be found basically word-for-word in co-pending application claim 2.
In reference to claim 6, the limitations of instant application claim 6 and be found basically word-for-word in co-pending application claim 1, last 4 lines.
In reference to claim 7, the limitations of instant application claim 7 and be found basically word-for-word in co-pending application claim 3.
In reference to claim 8, the limitations of instant application claim 8 and be found basically word-for-word in co-pending application claim 4
In reference to claim 9, the limitations of instant application claim 9 and be found basically word-for-word in co-pending application claim 5.
In reference to claim 10, the limitations of instant application claim 10 and be found basically word-for-word in co-pending application claim 6.
In reference to claim 11, the limitations of instant application claim 11 and be found basically word-for-word in co-pending application claim 11.
In reference to claim 12, the limitations of instant application claim 12 and be found basically word-for-word in co-pending application claim 12.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of co-pending Application No. 18/601,811 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of claims 1-12, which are not explicitly recited in the combination of claims 1-11 would have been obvious to one of ordinary skill in the art and/or would have been interpreted equivalent to those limitations recited in the co-pending application as seen to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In reference to claim 1, the limitations of instant application claim 1 and be found basically word-for-word in co-pending application claims 1 and 9. In other words, although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in the combination of claims 1 and 9 respectively. Further note, claim 9 carries proper/appropriate dependency as it is directly dependent upon claim 1.
In reference to claim 2, the limitations of instant application claim 2 and be found basically word-for-word in co-pending application claim 1, last 6 lines.
In reference to claim 3, the limitations of instant application claim 3 and be found basically word-for-word in co-pending application claim 1, lines 7-9.
In reference to claim 4, the limitations of instant application claim 4 and be found basically word-for-word in co-pending application claim 4.
In reference to claim 5, the limitations of instant application claim 5 and be found basically word-for-word in co-pending application claim 3.
In reference to claim 6, the limitations of instant application claim 6 and be found basically word-for-word in co-pending application claims 2 and 4.
In reference to claim 7, the limitations of instant application claim 7 and be found basically word-for-word in co-pending application claims 2, 4 and 5.
In reference to claim 8, the limitations of instant application claim 8 and be found basically word-for-word in co-pending application claims 2, 4 and 6.
In reference to claim 9, the limitations of instant application claim 9 and be found basically word-for-word in co-pending application claim 7.
In reference to claim 10, the limitations of instant application claim 10 and be found basically word-for-word in co-pending application claim 8.
In reference to claim 11, the limitations of instant application claim 11 and be found basically word-for-word in co-pending application claim 10.
In reference to claim 12, the limitations of instant application claim 12 and be found basically word-for-word in co-pending application claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Antonio Caschera whose telephone number is (571) 272-7781. The examiner can normally be reached Monday-Friday between 6:30 AM and 2:30 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Said Broome, can be reached at (571) 272-2931.
Any response to this action should be mailed to:
Mail Stop ____________
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
or faxed to:
571-273-8300 (Central Fax)
See the listing of “Mail Stops” at http://www.uspto.gov/patents/mail.jsp and include the appropriate designation in the address above.
Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the Technology Center 2600 Customer Service Office whose telephone number is (571) 272-2600.
/Antonio A Caschera/
Primary Examiner, Art Unit 2612
9/23/25