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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, whatever enables the “possibility of changing the vertical position” (claims 2 and 5) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 and 5 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 claims 2 and 5, the phrase "the possibility of changing" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention, or simply that the device could be altered. See MPEP § 2173.05(d). It is also not clear which component’s vertical position is changing (whole vehicle, stabilizer). It is further unclear if this possibility is an adjustability feature, or if the device could be built to different positions.
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.
[AltContent: textbox (Figure 1- Montague Figure 1)]
PNG
media_image1.png
400
303
media_image1.png
Greyscale
Claims 1-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Montague US 10,940,917 in view of Wilterdink US 3,081,728 or alternatively Kregall US 2,748,400.
Regarding claim 1, Montague teaches a water vehicle 100 comprising:
an above-water platform 102,
a hydrofoil 104 comprising a fuselage 106 with a front wing 118 and a first horizontal stabilizer 116,
a supporting mast 114 connecting the above-water platform with the fuselage of the hydrofoil, and
an underwater drive means 108, 110 for creating horizontal thrust.
Montague does not teach that the water vehicle comprises includes a second horizontal stabilizer located in the vertical direction between the fuselage and the above-water platform, wherein the second horizontal stabilizer, in the longitudinal direction, is located behind the front wing.
Wilterdink teaches a water vehicle 10 comprising:
an above-water platform 11,
a hydrofoil comprising a wings 38, and
a supporting mast 16, 17 connecting the above-water platform with the wings, and a second horizontal stabilizer 50 located in the vertical direction between the wings 38 and the above-water platform.
PNG
media_image2.png
300
315
media_image2.png
Greyscale
Figure 2- Wilterdink Figure 2
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the hydrofoil of Montague with a second horizontal stabilizer on the mast between the platform and bottom/fuselage as taught by Wilterdink in order to “serve to act as intermediate lifting foils as the craft increases in forward speed to its top speed” (column 3, lines 60-65). As modified, the second horizontal stabilizer, in the vertical direction is located between the underwater drive means and the above-water platform, and in the longitudinal direction, is located behind the front wing.
Alternatively, Kregall teaches a water vehicle comprising:
an above-water platform 10,
a hydrofoil comprising a wings 72, 79, and
a supporting mast 32, 74 connecting the above-water platform with the wings, and a second horizontal stabilizer 70/71, 77/78 located in the vertical direction between the wings and the above-water platform.
PNG
media_image3.png
324
440
media_image3.png
Greyscale
Figure 3- Kregall Figure 1
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the hydrofoil of Montague with a second horizontal stabilizer on the mast between the platform and bottom/fuselage as taught by Kregall in order to add additional lift and/or stability at lower speeds. As modified, the second horizontal stabilizer, in the vertical direction is located between the underwater drive means and the above-water platform, and in the longitudinal direction, is located behind the front wing.
Regarding claim 2 as best understood, Montague and Wilterdink or Kregall teach the invention as claimed as detailed above with respect to claim 1. Wilterdink and Kregall also teach the second horizontal stabilizer being mounted to the water vehicle by mounting means (whatever connects the two components) with the possibility of changing its vertical position defining different distances from the fuselage, as any component can be redesigned or reconstructed. Alternatively, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the fins adjustable in order to better customize the device to a particular user or scenario, since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954).
Regarding claim 3 as best understood, Montague and Wilterdink or Kregall teach the invention as claimed as detailed above with respect to claim 1. Wilterdink and Kregall also teach the second horizontal stabilizer being mounted directly or indirectly to the supporting mast
Regarding claim 4, Montague and Wilterdink or Kregall teach the invention as claimed as detailed above with respect to claim 3. Wilterdink also teaches the mounting means for mounting the second horizontal stabilizer 50 to the supporting mast 16, 17 being a support element (whatever element fixes the stabilizer to the mast).
Kregall also teaches the mounting means for mounting the second horizontal stabilizer 70/71, 77/78 to the supporting mast 32, 74 being a support element (whatever element fixes the stabilizer to the mast).
Regarding claim 5 as best understood, Montague and Wilterdink or Kregall teach the invention as claimed as detailed above with respect to claim 4. Wilterdink and Kregall also teach the support element of the second horizontal stabilizer being a support beam which is attached to the supporting mast with the possibility of changing its vertical position along the mast, defining different distances from the fuselage, as any component can be redesigned or reconstructed.
In an alternate interpretation, if the support element is not considered a beam then it would have been an obvious matter of design choice to make the different portions of the attachment a beam of whatever form or shape was desired or expedient in order to provide the desired strength to weight ratio. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
In an alternate interpretation, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the fins/supports adjustable in order to better customize the device to a particular user or scenario, since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954).
Regarding claim 6, Montague and Wilterdink or Kregall teach the invention as claimed as detailed above with respect to claim 1. As taught, the second horizontal stabilizer is mounted at a distance below the above-water platform, but neither Montague, Wilterdink nor Kregall explicitly teach a distance of at least 10cm. It would have been an obvious matter of design choice to locate the second stabilizer however far from the platform was desired in order to obtain the desired balance or flow, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 7, Montague and Wilterdink or Kregall teach the invention as claimed as detailed above with respect to claim 1. As taught, the second horizontal stabilizer is located in the longitudinal direction between the front wing 118 and the first horizontal stabilizer 116.
Regarding claim 9, Montague and Wilterdink or Kregall teach the invention as claimed as detailed above with respect to claim 1. Montague also teaches that the drive means comprises at least one electric motor with a water screw propeller 108, which electric motor is connected to a source of electricity (column 6, lines 23-26).
Response to Arguments
Applicant's arguments filed 7/20/26 have been fully considered but they are not persuasive.
Where “Applicant respectfully submits that replacement drawings are not necessary for examination of the amended claims” (page 4), the examiner responds that while the claims have been examined, 37 CFR 1.83(a) states that “The drawing in a nonprovisional application must show every feature of the invention specified in the claims.” That is, regardless of whether or not the claim can be understood, any claimed feature must be shown. As it stands, the drawings show no features that allow for the “possibility of changing the vertical position.”
In response to applicant’s arguments (regarding 112(b) issues) that “the amended claims make clear that the vertical-position feature refers to the vertical position of the second horizontal stabilizer and/or the support beam carrying the second horizontal stabilizer, not to the entire water vehicle” (page 5), the examiner replies that the issue is not understanding the concept of adjustment, but that the claims unclearly recite a “possibility of changing” (which, as detailed above, could mean several different things) instead of positively reciting the physical characteristics that make the adjustability possible.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, where the applicant argues that Montague does not teach the second horizontal stabilizer, the examiner replies that Wilterdink or Kregall are relied upon for this feature.
Where applicant argues that Wilterdink and Kregall’s horizontal stabilizers are for a different purpose (namely lift), the examiner replies that if a device of the prior art meets a functionally-defined limitation if it is capable of the recited function, the prior art reference need not envision the device actually being used to perform the claimed function. In re Schreiber, 128 F.3d 1473,1477 (Fed. Cir. 1997). That is, Wilterdink and Kregall’s horizontal fins are horizontal stabilizers that meet the claims as written, regardless of the applicant’s intended use.
Conclusion
THIS ACTION IS MADE FINAL. 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 Marc Burgess whose telephone number is (571)272-9385. The examiner can normally be reached M-F 08:30-15:00.
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, Marc Jimenez can be reached at 517 272-4530. 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.
/MARC BURGESS/Primary Patent Examiner, Art Unit 3615
Prosecution Insights