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 .
Response to Arguments
Applicant's arguments filed 2/5/26 have been fully considered but they are not persuasive.
Regarding claim 1, Applicant argues that “Since Miller does not disclose an apparatus for use with a subsea connection cable or an apparatus providing measuring means, there is no obvious reason for the skilled person to turn to the disclosure of Miller from the disclosure of Overfield, without the hindsight provided by the current application as filed”.
Examiner respectfully disagrees. The prior art of Overfield and Miller are both classified in E2147/00 which includes the survey of boreholes or wells. Both references are in the field of subsea equipment used for exploring oil fields that exist below ocean floors and therefore are in the same field of art. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant further argues “Specifically, amended claim 1 recites an attachment means, comprising a locking means for inhibiting mechanical detachment of the measurement apparatus from the cable end, and a coupling member for then providing a pulling force via the measurement apparatus to the cable…The connectors 175 are designed for the specific context of connection of a housing and a connector assembly. There is no suggestion that such a connection would be transferrable to the context of cable ends. In particular, in connecting cable ends it is important not to damage the internal connections within the cable. Individual connection points as used in Miller may cause greater strain at individual contact points in contrast with a connection interfacing the entire outer surface of the cable, such as the socket or receptacle 100 for receiving a corresponding plug member 200 of the connectors 10 and 20 within Overfield.”
Examiner disagrees with Applicant’s conclusion. In response to applicant's argument that it would be non-obvious to combine Overfield and Miller, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Miller discloses the use of two devices in a subsea environment which connect together by locking and unlocking. Miller also discloses that a device enables a pulling force to be applied to a cable. Moreover, Overfield also teaches the application of a pulling force since the subsea cable is being pulled via a pulling handle 25.
It is noted that the claim does not explicitly disclose that the attachment means is in a locked position while the coupling member is coupled to the means for providing a pulling force. Rather, the claim only recites that the measurement apparatus includes the attachment means and a means for providing a pulling force; the claim does not disclose the relationship between the application of the pulling force to the measurement apparatus and the operation of the locking means.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/5/26 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
Claim 1-7, 10, 11, 13-20, 95-97 is/are rejected under 35 U.S.C. 103 as being unpatentable over Overfield, US 20110000677 in view of Miller et al., US 20180258741
Regarding claim 1, Overfield teaches a measurement apparatus for connection to an end of a cable having at least one of: at least one electrically conductive core for carrying electrical current and/or electrical signals along the cable (Fig. 3-5; electrical conductors 111a, 111b); at least one electromagnetic waveguide for carrying electromagnetic signals along the cable (Fig. 3-5; waveguide 112); and at least one bore for conveying a fluid along the cable (Fig. 3-5; a fluid conduit 113), the measurement apparatus comprising: at least one connector for connecting to said end in an above-water or out-of-water environment to make at least one of: at least one respective electrical connection to at least one said core (Fig. 5; electrical contacts 1012a, 1012b), at least one respective waveguide connection to at least one said waveguide for sending an electromagnetic signal along the waveguide (Fig. 5; optical element 1120 optically coupled to the wave guide 112), and at least one respective fluid or hydraulic connection to at least one said bore (Fig. 5; fluid connector 1130); and at least one measurement module connected to the at least one connector and operable to perform at least one measurement, via the at least one connector, on a connected said cable (Fig. 5; test apparatus 2 performs at least one measurement on the attached apparatus 1), wherein the measurement apparatus is deployable, when connected to an end of said cable, with said cable end to an underwater location for a period of time, and recoverable with said connected cable end after said period of time to an above-water or out-of-water location (Fig. 5; test apparatus 2 mated with connector 10a at a subsea location as shown in step B and at step A the test apparatus and apparatus 1 are above the surface; See ¶[0086]), and wherein the at least one measurement module is operable to perform said at least one measurement while the measurement apparatus is connected to said cable end and at least while submerged with said connected cable end and/or after recovery with said connected cable end from said underwater location to said above-water or out-of-water location (Fig. 5; measurement is performed by the test apparatus in a subsea location of step B; See ¶[0086]).
Overfield is silent in further comprising attachment means for mechanically attaching the measurement apparatus to the cable end; wherein the attachment means comprises a mechanical arrangement that inhibits mechanical detachment of the measurement apparatus from the cable end; and at least one coupling member to couple to a means for providing a pulling force to enable a pulling force to be applied, via the measurement apparatus, to a said cable mechanically attached to the measurement apparatus. Miller teaches an attachment means for mechanically attaching the measurement apparatus to a cable end; wherein the attachment means comprises a mechanical arrangement that inhibits mechanical detachment of the measurement apparatus from the cable end (Fig. 9A-9I; ¶[0060]; connectors 175 transition from unlocked to locked position) and at least one coupling member to couple to a means for providing a pulling force to enable a pulling force to be applied, via the measurement apparatus, to a said cable mechanically attached to the measurement apparatus (Fig. 9A-9I; lifting device 22 pulls housing 140 to be attached to an assembly 170). It would have been obvious to one of ordinary skill in the art before the filing date of the invention to incorporate the teaching of Miller into Overfield for the benefit of providing secure attachment between the test and measurement apparatus.
Regarding claim 2, Overfield teaches wherein the at least one connector comprises at least one electrical connector for connection to a corresponding electrical connector terminating a said core (Fig. 5).
Regarding claim 3, Overfield teaches wherein the at least one connector comprises a plurality of electrical connectors, each for connection to a corresponding connector terminating a respective said core (fig. 5).
Regarding claim 4, Overfield teaches the limitation of claim 1 and wherein the at least one connector comprises at least one waveguide connector for connection to a corresponding waveguide connector terminating a said waveguide (Fig. 5).
Regarding claim 5, Overfield teaches the measurement apparatus in accordance with claim 4, wherein the at least one connector comprises a plurality of waveguide connectors, each for connection to a corresponding waveguide connector terminating a respective said waveguide (fig. 5).
Regarding claim 6, Overfield teaches wherein the at least one connector comprises at least one fluid or hydraulic connector for connection to a corresponding fluid or hydraulic connector terminating a said bore (i.e. at the end of the cable) (Fig. 5).
Regarding claim 7, Overfield teaches wherein the at least one connector comprises a plurality of fluid or hydraulic connectors, each for connection to a corresponding fluid or hydraulic connector terminating a respective said bore (Fig. 5).
Regarding claim 13, Overfield teaches sealing means arranged to form a seal between the measurement apparatus and said cable to inhibit ingress of water to at least one of: at least one said core; at least one said waveguide; and at least one said bore of a said cable having an end connected to the measurement apparatus (¶[0003]] connecter mated with dummy connector makes seal which prevents ingress of contaminants).
Regarding claim 14, Overfield teaches wherein the at least one connector is adapted to provide a plurality of electrical connections to a respective plurality of electrically conductive cores of a connected said cable (Fig. 3-5; connector 10a).
Regarding claim 15, Overfield teaches wherein said at least one measurement comprises measuring an electrical resistance between a respective pair of said cores (¶[0023]-[0024], [0086]; measuring means measures resistance).
Regarding claim 16, Overfield teaches wherein said at least one measurement comprises measuring an electrical capacitance between a respective pair of said cores (¶[0023]-[0024]; measuring means measures impedance).
Regarding claim 17, Overfield teaches comprising a terminal (e.g. electrode) arranged to make electric connection to a fluid in which the measurement apparatus is immersed (¶[0089]).
Regarding claim 18, Overfield teaches wherein said at least one measurement comprises measuring an electrical resistance between a said core and said terminal (¶[0023]-[0024], [0086]; measuring means measures resistance).
Regarding claim 19, Overfield teaches wherein said at least one measurement comprises measuring an electrical capacitance between a said core and said terminal (¶[0023]-[0024]; measuring means measures impedance).
Regarding claim 20, Overfield teaches wherein said at least one measurement comprises measuring a continuity of at least one core, waveguide, or bore of a connected cable (¶[0086] - [0089]).
Regarding claim 10, Overfield is silent in wherein the attachment means comprises at least one mechanical connector for connection to a corresponding mechanical connector provided at, or proximate, said cable end. Miller teaches wherein the attachment means comprises at least one mechanical connector for connection to a corresponding mechanical connector provided at, or proximate, said cable end (Fig. 9A-9I; connector 175 connects housing 140 and assembly 170 together). It would have been obvious to one of ordinary skill in the art before the filing date of the invention to incorporate the teaching of Miller into Overfield for the benefit of providing secure attachment between the test and measurement apparatus.
Regarding claim 11, Overfield is silent in wherein the attachment means comprises means for clamping or gripping at least one of: the cable end; a portion of the cable; an end portion of the cable; and at least one component of the cable. Miller teaches means for clamping or gripping at least one of: the cable end; a portion of the cable; an end portion of the cable; and at least one component of the cable (Fig. 9A-9I; connector 175 connects housing 140 and assembly 170 together). It would have been obvious to one of ordinary skill in the art before the filing date of the invention to incorporate the teaching of Miller into Overfield for the benefit of providing secure attachment between the test and measurement apparatus.
Regarding claim 95, Overfield teaches wherein said at least one connector comprises at least one of: at least one electric connector for connection to a corresponding electrical connector terminating a said core; at least one waveguide connector for connection to a corresponding waveguide connector terminating a said waveguide; and at least one fluid or hydraulic connector for connection to a corresponding fluid or hydraulic connector terminating a said bore (fig. 5).
Regarding claim 96, Overfield teaches wherein said at least one measurement module comprises at least one of: an electrical measurement module; an optical measurement module; and a hydraulic measurement module (fig. 5).
Regarding claim 97, Miller teaches wherein the at least one coupling member comprises at least one of a hook, loop or rigid coupling member (fig. 9a-9I; lifting device 22 to housing 140, assembly 170). It would have been obvious to one of ordinary skill in the art before the filing date of the invention to incorporate the teaching of Miller into Overfield for the benefit of providing secure attachment between the test and measurement apparatus.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FEBA POTHEN whose telephone number is (571)272-9219. The examiner can normally be reached 8:30-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Judy Nguyen can be reached at 571-272-2258. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FEBA POTHEN/Examiner, Art Unit 2858
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