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 .
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.
Claims 1-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Below are SOME examples of discovered issues.
Claim 1 recites the limitations "the unexploded ordnance" in line 4, "the breached/ decaying/leaching point source emitter" in lines 5-6 (1X) and 8-9 (2X) "the seafloor" in line 10, "the water-soluble cover material" in line 11, "the reaction" in line 13, and "the metal casing" in line 14. There is insufficient antecedent basis for these limitations in the claim.
Note that "UXO" in line 3 must be defined prior to abbreviation. Here, such is presumed to convey --an unexploded ordnance--, the inclusion of which would resolve the relevant rejection, above.
Note that "a point source emitter" is not recited until line 7.
Note that "breaching mechanisms" (the presumed basis for "breached" in lines 6 and 8-9) is not recited until line 7. However, from the claim it is not clear that the "point source emitter" has anything to do with the unexploded ordnance, even giving broad license to "decaying/leaking point source ordnance" in line 5, particularly because such is preceded by "for a" conveying not all ordnance fall into the category of lines 5-6. Further note that “one or more breaching mechanisms” should be replaced with --at least one breaching mechanism--, until such time as a definitely greater number is required as this simplifies subject/verb agreement and, thus, a reader’s understanding of what is being claimed. Regardless, clarification is required.
Note that line 9 is a duplicate of line 8 and, thus, renders the claim ambiguous.
The term “sturdy” in claim 1 is a relative term which renders the claim indefinite. The term “sturdy” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Because sturdiness is defined along a continuum, i.e., there is no specific amount required to qualify as sturdy, and because there is no disclosure of any particular amount of sturdiness required to meet the term, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “membrane” in line 10 requires an article, such as, --a--, and further requires definition as to what membrane, i.e., a membrane belonging to what?
The entirety of line 12, i.e., “creating a contact between energetics, reagent, and water,” is problematic. First, the recitation of “a contact” suggests something electrical, while, presumably, the intent is, e.g., --contacting [a defined] energetics and [a defined] reagent with the [previously-recited] water--, or --[some other defined] water--. The term “between” is normally used when referencing two objects, while “among” is used for three or more. Next, akin to the suggested correction, what energetics and reagent? Last, and also akin to the suggested correction, is the water that recited in line 11 or other water?
Claim 2 recites the limitation "the method for breaching the unexploded ordnance" in line 1. There is insufficient antecedent basis for this limitation in the claim. Note that claim 1 recites only "one or more breaching mechanisms to create a point source emitter" in line 7, but nothing about how this emitter equates to or is intended to be the unexploded ordnance, let alone any recitation of "a method for breaching the unexploded ordnance."
Claim 3 recites similarly to claim 1, above, e.g., "UXO" in lines 3-5 and 8, "the seafloor" in line 6, "the ordnance" in line 7, "the reaction" in line 8, and "the metal casing" in line 10. Furthermore, "and recycle" in line 10 requires an object, e.g., the metal casing, or reciting similarly to claim 1, "for recycling."
Claim 4 recites the limitation "if on land" in line 1, which is ambiguous because claim 3 clearly recite "locating an underwater UXO" (with the presumption being UXO means unexploded ordnance. In the context of Applicant’s disclosure, the term "underwater" can only mean beneath the surface of the water. Thus, how locating an underwater unexploded ordnance can be accomplished on land, is neither remotely addressed by Applicant nor clear.
Claim 4, line 2, should include --an-- before "explosives neutralization reaction."
Claim 5 recites similarly to claim 1, above, e.g., "UXO" variously throughout, and line 8 should include --an-- before "explosives neutralization reaction."
Any unspecified claim is rejected as being dependent upon a rejected base claim.
The above is EXEMPLARY ONLY and NOT EXHAUSTIVE. Though an attempt was made to discover all issues real and potential in the claims, Applicant is strongly encouraged to revisit and revise the claims to conform to current U.S. practice.
The claims will be further treated on the merits as best understood only.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,038,266. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims recite and thus fairly cover the instant claims. While the patent claims may include more requirements, it must be noted such fully recite and convey the metes and bounds of the instant claims. That is, there does not appear to be any language in the instant claims that is not also recited in the patent claims. Thus, the instant claims amount to a mere rewording of the patent claims.
Evidence contrary to any of the above is welcome.
Conclusion
Any inquiry concerning this communication should be directed to Bret Hayes at telephone number (571) 272 – 6902, fax number (571) 273-6902, or email address bret.hayes@uspto.gov, which is preferred, especially for requesting interviews, general questions, etc. Note, however, that return correspondence cannot be made in the event that information subject to the confidentiality requirement as set forth in 35 U.S.C. § 122 has been included. See MPEP §§ 502.03 and 713.01, I, regarding email communications. The examiner can normally be reached Mondays through Fridays from 5:30 AM to 1:30 PM, Eastern.
The Central FAX Number is 571-273-8300.
If attempts to contact the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers, can be reached at (571) 272 – 6874.
/Bret Hayes/
Primary Examiner, Art Unit 3641
30-Jun-25