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 .
Election/Restrictions
Applicant’s election without traverse of Group II in the reply filed on 3-18-2026 is acknowledged.
Claims 2-3 and 7-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3-18-20206.
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, “each grabber element is claw, talon or tine shaped,” of Claim 4 must be shown or the feature(s) canceled from the claim(s). The claims appear to claim three distinct embodiments (claw, talon and tine) of grabber elements. The figures only show one embodiment. 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 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: plurality of grabber elements; and the grabber elements comprise one or more first grabber elements and one or more second grabber elements, in claim 1; a grabber arrangement or means and/or a cutter arrangement or means in Claim 25.
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(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The broadest reasonable interpretation of claim 25 is “an underwater tool comprising a means.”
Claim 25 is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
As such, Claim 25 is a single means claim (see MPEP 2164.08(a)) A single means claim which covered every conceivable means for achieving the stated purpose was held nonenabling for the scope of the claim because the specification disclosed at most only those means known to the inventor. As such, Claim 25 is not enabled (see MPEP 2164.08(a)).
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 4-6 and 25 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.
In re Claim 4, “(main)” is indefinite. It is unclear if “main” is part of the claim or not as it is within parentheses. The claims were examined as best understood. Appropriate correction is required.
In re Claim 4, “and optionally in such case a concave surface of each grabber element faces or is faceable towards a centre line of the tool, and/or a convex surface of each grabber element faces or is faceable away from a/the centre line of the tool,” is indefinite. It is unclear what “optionally in such a case” means. If it is optional is it required by the claim? How does “in such a case” modify” the optionality of the following clause. This is unclear. The claims were examined as best understood. Appropriate correction is required.
In re Claim 5, “wherein when in an open disposition the/each first/second grabber element is/are disposed on a/the respective first/second side of the tool,” is indefinite. Claim 1 requires one or more first grabber elements and one or more second grabber elements. It is unclear if Claim 5 requires a single grabber element, one of either the first or the second grabber elements, in the open disposition, as applicant uses the verb “is.” Additionally, it appears the grabber elements can be on a single (first) side of the tool. The claims are indefinite as it is unclear how many grabber arrangements are required and which side of the tool a single grabber arraignment needs to be on. The claims were examined as best understood. Appropriate correction is required.
In re Claim 6, “wherein when in a closed disposition a distal end of each first/second grabber element is/are disposed on a/the respective second/first side of the tool,” is indefinite. Claim 1 requires one or more first grabber elements and one or more second grabber elements. It is unclear if Claim 6 requires a single grabber element, one of either the first or the second grabber elements, in the closed disposition, as applicant uses the verb “is.” Additionally, it appears that the grabber elements can be on a single (first) side of the tool. The claims are indefinite as it is unclear how many grabber arrangements are required and which side of the tool a single grabber arraignment needs to be on. The claims were examined as best understood. Appropriate correction is required.
In re Claim 25, “arrangement or means” is indefinite. it is unclear what the difference in scope between arrangement and means is. Are these words meant to have the exact same scope? If so, why are there two words of the same scope. If these words have different scope, it is unclear what the difference is. The specification does not provide one of ordinary skill in the art an apparent difference between “arrangement” and “means.” The claims were examined a best understood. Appropriate correction is required.
In re Claim 25, “a grabber arrangement or means” and “a cutter arrangement or means,” is indefinite. Does “grabber” modified both arrangement and means or only arrangement. Does “cutter” modify both arrangement and means or only arrangement. The claims were examined a best understood. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4-6, and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0313097 to LaTendresse.
In re Claim 1, LaTendresse an underwater tool (the Examiner notes that the device of LaTendresse can be used underwater – see MPEP 211.02, the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction) comprising a grabber arrangement (see Figs. 1-2, #40a/b and 42a/b) and a cutter arrangement (see Figs. 1-2, #50, et al.), wherein the grabber arrangement comprises: a plurality of grabber elements (see Figs. 1-2, #40a/b and 42a/b); and the grabber elements comprise one or more first grabber elements (see Fig. 1-2, #40a/40b) and one or more second grabber elements (see Fig. 1-2, #42a/42b).
In re Claim 4, LaTendresse teaches wherein: the first grabber element(s) is/are disposed on a first side of the tool (see Fig. 1, 40a/#40b on one side of the tool), and/or the second grabber element(s) is/are disposed on a second side of the tool (see Figs. 1-2, #42a/#42b on the other side of the tool), and/or the first/second grabber elements are pivotably attached to a (main) body of the tool (see Para. 0042 teaching actuating the arms), and/or the first/second grabber elements comprise arms or fingers (each of the structures #41a/b/42/a/b/), and/or the/each grabber element is claw, talon or tine shaped; and/or the first/second grabber elements are curved or arcuate in shape (see Figs. 1-2, each of the grabber elements are curved shaped), and optionally in such case a concave surface of each grabber element faces or is faceable towards a centre line of the tool (see Figs. 1-2, showing the curved arms facing toward a centerline of the location of the workpiece the tool grips), and/or a convex surface of each grabber element faces or is faceable away from a/the centre line of the tool (see Figs. 1-2, the convex surface of the arms face away from the center line of the workpiece the tool grips).
In re Claim 5, as best understood, LaTendresse teaches wherein when in an open disposition the/each first/second grabber element is/are disposed on a/the respective first/second side of the tool. In LaTendresse, #41a/b are on one side of the tool and #42a/42b are on the other side of the tool. The claim was interpreted as best understood.
In re Claim 6, as best understood, LaTendresse teaches wherein when in a closed disposition a distal end of each first/second grabber element is/are disposed on a/the respective second/first side of the tool. In LaTendresse, #41a/b are on one side of the tool and #42a/42b are on the other side of the tool. The claim was interpreted as best understood.
In re Claim 25, LaTendresse teaches an underwater tool (the Examiner notes that the device of LaTendresse can be used underwater) comprising a grabber (see Fig. 1-2, #40a/b and 42a/b) arrangement or means and/or a cutter arrangement or means (see Fig. 1-2, #50 et al.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN RILEY whose telephone number is (571)270-7786. The examiner can normally be reached Monday - Friday, 8:30 AM - 5:00 PM.
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/JONATHAN G RILEY/Primary Examiner, Art Unit 3724