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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 26 April, 2024 is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
The amendment filed 26 April, 2024, with regards the amendments to page 1 of the amended specification to incorporates Cross-Reference to Related Application section, is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
MPEP 608.01(p) – I(B) states,
“ As a safeguard against the omission of a portion of a prior application for which priority is claimed under 35 U.S.C. 119(a)-(d) or (f), or for which benefit is claimed under 35 U.S.C. 119(e) or 120, applicant may include a statement at the time of filing of the later application incorporating by reference the prior application. See MPEP § 201.06(c) and 211 et seq. where domestic benefit is claimed. See MPEP §§ 213 - 216 where foreign priority is claimed. See MPEP § 217 regarding 37 CFR 1.57(b). The inclusion of such an incorporation by reference statement in the later-filed application will permit applicant to include subject matter from the prior application into the later-filed application without the subject matter being considered as new matter. For the incorporation by reference to be effective as a proper safeguard, the incorporation by reference statement must be filed at the time of filing of the later-filed application. An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a) ). Although, as discussed above, an incorporation by reference statement can be used as a safeguard against an omission of a portion of a prior application for which priority is claimed under 35 U.S.C. 119(a)-(d) or (f), or for which benefit is claimed under 35 U.S.C. 119(e) or 120, it should be noted that an incorporation by reference statement will not satisfy the specific reference requirement of 35 U.S.C. 119(e) or 120 or 37 CFR 1.78. See Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 126 USPQ2d 317 (Fed. Cir. 2018).”
, and wherein MPEP 1893.03(b) states,
“An international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages. Often the date of entry into the national stage is confused with the filing date. It should be borne in mind that the filing date of the international stage application is also the filing date for the national stage application. Specifically, 35 U.S.C. 363 provides that
An international application designating the United States shall have the effect, from its international filing date under Article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.
Similarly, PCT Article 11(3) provides that
...an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.”
As such, the inclusion of the recitation,
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,is new matter, as the recitation to include the incorporation by reference of the applications was made after (i.e., 26 April, 2024) the effective filing date of the instant application (i.e., 22 September, 2022).
Applicant is required to cancel the new matter in the reply to this Office Action.
Appropriate correction is required.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“control and measuring devices” in claim 3.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-8 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.
Claim 1 recites the limitations:
"the first row" in line 8.
“the second row” in line 12.
There is insufficient antecedent basis for these limitations in the claim. For examination purposes, it is being interpreted as a first row and a second row.
Claims 2-8 are dependent from rejected claim 1, and thereby, are further rejected under 35 U.S.C. 112(b).
Claim limitation “control and measuring devices”, recited in claim 3 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The claim limitation utilizes the nonce term “devices” in combination with functional language “control and measuring” without further recitation of sufficient structure. The specification repeats the same terminology, but fails to set forth the corresponding structure of “devices” that one having ordinary skill within the art would understand to perform the recited function of “control and measuring”. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 4 depends from rejected claim 3, and thereby, is further rejected under 35 U.S.C. 112(b).
Claim 4, dependent from claim 3, recites, “wherein its open tier accommodates air-cooled heat exchanger”, which renders the claim indefinite. Particularly, it is unclear to what “its” refers to. Is it the open tier of the top side modules as originally provided within claim 3? Is it the same row as described in claim 4? Is it the main technical room and emergency diesel generators? For examination purposes, it is being interpreted the claim is directed to the topside modules equipment set forth by claim 3 from which claim 4 further depends.
Claim 7 recites the limitations:
"the compartments formed by the GBS central part" in line 2.
“the GBS central part longitudinal and transverse walls” in lines 2-3
There is insufficient antecedent basis for these limitations in the claim. For examination purposes, it is being interpreted as compartments formed by a GBS central part longitudinal wall and GBS central part transverse wall.
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(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over BYFIELD (US 2014/0053599 A1 – published 27 February, 2014; U.S. Patent Application Publication Document No. 1 of the IDS filed on 26 April, 2024), in view of KANAYAMA (US 2022/0324541 A1 – published 13 October, 2022; U.S. Patent Application Publication Document No. 2 of the IDS filed on 26 April, 2024 ), MIN (KR1020130009064A – published 23 January, 2013; Foreign Document No.3 of the IDS filed on 26 April, 2024; see Applicant provided document for citations), and MEEK (WO 2005/043032 A1 – published in English on 12 May, 2005).
As to claim 1, BYFIELD discloses a liquefied natural gas (LNG) production complex (10) comprising a gravity-based structure (GBS) (par. 124), with the GBS top slap on which topside modules are located (par. 92 – base which defines a horizontal plane for which each module resides along), including at least one interconnecting module (central element, 18, with two groups of heat exchanger banks, 30,36, defining the interconnecting modules, as shown in annotated figure 1b and 1c)– along the top slap centerline(16), and equipment modules(additional elements, 18, with modules along upper and lower sides to the axis line, 14), at least some of which are lined up on each side of at least on interconnecting module(shown to be left and right of the designated at least one interconnecting module, central element, 18, defined by two interconnecting modules, 30,36, in annotated figure 1b and 1c), and liquid storage tanks (par. 124), wherein the complex comprises interconnecting modules lined up along the top slap centerline(30,36; see annotated figure 1b and 1c; figure 9 and 10), and the equipment modules include:
the first row on one side (left or right side additional elements, 18, with at least two rows of modules lined up along upper and lower sides to the axis line, 14) of the interconnecting modules:
at least one module of reception installations (par. 99, in view of par. 93-94), a condensate stabilization installation (par. 117, in view of par. 93-94), and an acid gas removal installation (par. 115, in view of par. 93-94), and
at least one module of mixed refrigerant compressors(par. 116, in view of par. 93-94),
the second row on the other side (left or right side additional elements, 18, with at least two rows of modules lined up along upper and lower sides to the axis line, 14) of the interconnecting modules of the interconnecting modules:
modules of gas dehydration(par. 115, in view of par. 93-94), mercury removal (par. 115, in view of par. 93-94), wide fraction of light hydrocarbon extraction (par. 118, in view of par. 93-94), fractionation and liquefaction installations (par. 118, in view of par. 93-94),
the equipment modules also include located along the GBS short end (figure 1b and 1c, wherein the equipment is relatively positioned in a finite area that enables it to be along a short end or long end) at least one auxiliary systems module (any additional module, as defined by BYFIELD).
However, BYFIELD does not expressly disclose wherein the liquid storage tank is necessarily located inside the GBS or the equipment modules include at least one module of boil-off gas, fuel gas system and heating medium compressors; at least one power plant module and at least one module with the main technical room and emergency diesel generators located along the GBS short end.
KANAYAMA, however, is within the field of endeavor provided a liquefied natural gas (LNG) production complex comprising a gravity-based structure (GBS) (abstract; par. 17). KANAYAMA teaches wherein the system includes liquid storage tanks (12; par. 1; figure 1) located within the GBS for the purpose of storing the liquefied natural gas (par. 33 and 40), which can later be used by a city gas (par. 41). This is strong evidence that modifying BYFIELD as claimed was well within the ordinary capabilities of one skilled in the art and would produce predictable results to one skilled in the art, (i.e., positioning the liquid storage tanks within the GBS for storage purposes). Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed, to modify BYFIELD by KANAYAMA such that the liquid storage tanks are located inside the GBS, since all claimed elements were known in the art, and one having ordinary skill in the art could have modified the prior art as claimed by known methods with no changes in their respective functions and the combination would have yielded the predictable result of positioning the liquid storage tanks within the GBS for storage purposes.
Second, MIN is within the field of endeavor provided a liquefied natural gas (LNG) production complex comprising a gravity-based structure (GBS) (abstract). MIN teaches wherein it is known to provide equipment modules of such systems including at least one module of boil-off gas (par. 15 and 60-61), fuel gas system (par. 61-63), and heating medium compressors (par. 45) which are included to process and utilize the boil-off gas generated from the natural gas storage tank (par. 15), interconnecting upper and lower facilities of the GBS (par. 61), and compressing refrigerant (par. 45). Further, MIN teaches including within the equipment modules, along a short end of the GBS (figure 2), at least one power plant module (unnamed paragraph at page 4 of the Applicant-provided document, lines 139-140) and at least one module with the main technical room (unnamed paragraph at page 4 of the Applicant-provided document, lines 139-140), for electrically interconnecting the facility (par. 52). Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed to modify BYFIELD, in view of the teachings of MIN, to include such structures to provide these advantages.
Lastly, MEEK is within the field of endeavor provided a liquefied natural gas (LNG) production complex comprising a gravity-based structure (GBS) (pg. 1, field of the invention; pg. 2 – pg. 2, summary of the invention). MEEK teaches including within the GBS system, wherein positioning on the GBS would provide the equipment located along a short end (due to the equipment being confined within a contained structure that includes structures relatively positioned along both long and short ends thereof), an emergency diesel generator (pg. 16, summary of the invention) which is used to maintain the temperature of a liquefied gas storage tank walls. Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed to modify BYFIELD, in view of the teachings of MEEK, to include such structure to provide these advantages.
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Annotated Figure 1b and 1c of BYFIELD
As to claim 2, BYFIELD, as modified, further discloses wherein each topside module has a frame with braces (scaffolding shown in figures 2-3, 5, 7, 9, 11, and 13), with equipment installed on its tiers (as shown in figures 2-3, 5, 7, 9, 11, and 13).
As to claim 3, BYFIELD, as modified, further discloses wherein in each interconnecting module, a lower main tier accommodates local substations and control and measuring devices (lowest level shown in figure 9, with equipment, 24; par. 8, 39, 92, and 95), an intermediate tier accommodates cable overpasses (lower middle level shown in figure 9, which structures tubular and square in cross-section positioned thereon), an upper tier accommodates pipeline overpasses(upper middle level shown in figure 9, which includes pipelines between all the components, as understood through par. 95 and 123), and an open tier (upper most tier in figure 9) accommodates air-cooled heat exchangers located above all topside modules equipment (figure 1b and 1c, as shown with open tier air-cooled heat exchangers, defining, 30 and 36; par. 124; figure 9).
As to claim 4, BYFIELD, as modified, discloses wherein the interconnecting module and the equipment modules are provided within the same row (see annotated figure 1b and 1c), and wherein its open tier accommodates air-cooled heat exchangers(figure 1b and 1c, as shown with open tier air-cooled heat exchangers, defining, 30 and 36; par. 124; figure 9).
More so, BYFIELD, as modified, previously taught including the main technical room and emergency diesel generator module being a part of the equipment modules (see rejection of claim 1). As such, the combination of BYFIELD, in view of the previously provided teachings, yields the main technical room and emergency diesel generators module being installed in the same row as the interconnecting modules, based on the positioning of the interconnecting module and equipment modules of BYFIELD being in the same row.
As to claim 5, BYFIELD, as modified, discloses wherein the GBS has a central part (central rectangular portion of the top slab with scaffolding positioned thereon shown in figures 2-3, 5, 7, 9, 11, and 13) and a protruding part (perimeter portion of the top slab surrounding the central rectangular portion), with the central part being a rectangular prism with the said top slab, the protruding part stretching along the central part sides all around its perimeter and having external vertical walls (vertical walls protruding from the base of the top slab, as shown in figures 2-3, 5, 7, 9, 11, and 13) , the protruding part and the central part sharing the said base slab (the combination of the central and protruding part form the base slab), and the protruding part being lower in height than the central part (at least the protruding vertical walls therefrom).
As to claim 6, BYFIELD, as modified, does not further disclose the requirements of the claimed invention set forth by claim 6.
KANAYAMA, however, teaches wherein a GBS central part (central structure body, 8,; figure 1) has internal longitudinal and transverse walls (walls of the GBS central part that extend along the longitudinal direction of figure 1 or 2, and along the transverse direction of figure 2; figure 1) forming compartments (figure 1, based on the positioning of the structure, 8) and in which the tanks (12; par. 1; figure 1) some of which are ballast compartments (MPEP 2114 – II). In addition, KANAYAMA teaches a GBS protruding part (peripheral body, 10; figure 1) having internal walls (see annotated figure 1) being perpendicular to its external walls (see annotated figure 1) and forming compartments (with connection to the central part, compartments, 12, are formed) with some being ballast compartments (10). This is strong evidence that modifying BYFIELD as claimed was well within the ordinary capabilities of one skilled in the art and would produce predictable results to one skilled in the art, (i.e., forming and positioning the liquid storage tanks within the GBS for storage purposes). Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed, to modify BYFIELD by KANAYAMA such that the GBS includes the GBS central part and GBS protruding part, as claimed, since all claimed elements were known in the art, and one having ordinary skill in the art could have modified the prior art as claimed by known methods with no changes in their respective functions and the combination would have yielded the predictable result of forming and positioning the liquid storage tanks within the GBS for storage purposes.
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Annotated Figure 1 of KANAYAMA
As to claim 7, BYFIELD, as modified, further discloses wherein compartments formed by GBS central part longitudinal wall and transverse wall (such as those formed by the scaffolding) accommodate auxiliary equipment (any additional module, as defined by BYFIELD).
As to claim 8, BYFIELD, as modified, further discloses wherein the topside modules are mounted on supports located on the top slab (frame and scaffolding shown in figures 2-3, 5, 7, 9, 11, and 13) above intersections of a GBS central part (central part of the GBS slab) longitudinal and transverse walls (walls of the GBS central part that extend along axis, 14, and walls of the GBS central part that extend along axis, 16).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA M MARONEY whose telephone number is (571)272-8588. The examiner can normally be reached Monday - Friday 7AM to 4PM, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Len Tran can be reached at (571) 272-1184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNA M MARONEY/Primary Examiner, Art Unit 3763 3/31/2026
JENNA M. MARONEY
Primary Examiner
Art Unit 3763
Prosecution Insights