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 Amendment
Applicant’s 7-7-2026 Amendment was received. Claims 1 and 4 were amended. Claims 5-6 and 25 were cancelled. New Claim 26 was presented. Claims 2-3 and 7-23 are withdrawn. Claims 1, 4, and 26 are examined in this action.
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.
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 § 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 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GB 2516296 A to Wraith.
In re Claim 1, Wraith an underwater tool (see Wraith, abstract) comprising
a grabber arrangement (see Figs. 1-7, gripping leg #16/gripping leg #16) and a cutter arrangement (see Figs. 1-7, diamond wire #14 its associated structure, wherein the grabber arrangement comprises:
a plurality of grabber elements (see Figs. 1-7, gripping leg #16/gripping leg #16); and the grabber elements comprise one or more first grabber elements (see Figs. 1-7, “right hand” gripping leg #16; see also annotated Fig. 1, below) and one or more second grabber elements (see Figs. 1-7, “left hand” gripping leg #16; see also annotated Fig. 1, below),
the one or more first grabber elements and the one or more second grabber elements being pivotably attached to a body of the tool (see Figs. 1/7), wherein
when in an open disposition the one or more first grabber elements are disposed on a first side of the tool and the one or more second grabber elements are disposed on a second side of the tool (see annotated Fig. 1, below), and
when in a closed disposition a distal end of each of the one or more first grabber elements is disposed on the second side of the tool and a distal end of each of the one or more second grabber elements is disposed on the first side of the tool (see Fig. 7; see also annotated Fig. 7, below).
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In re Claim 4, Wraith teaches a tool according to claim 1, wherein:
the first grabber element(s) is/are connected to the body of the tool on a first side of the tool (see annotated Fig. 1, showing the first grabber connected to the body of the tool on the first side), and/or
the second grabber element(s) is/are connected to the body of the tool on a second side of the tool (see annotated Fig. 1, showing the second grabber connected to the body of the tool on the second side), and/or
the first grabber elements and the second grabber elements comprise arms or fingers (each of the first and second grabber elements are in the form of arms or fingers – see Figs. 1-7, #16/16 in view of Applicant’s disclosure), and/or
the/each first grabber elements and the/each second grabber elements is claw shaped (under the broadest reasonable interpretation, the first and second grabber elements #16/#16 are claw shaped in view of Applicant’s disclosure); and/or
the/each first grabber elements and the/each second grabber elements is curved or arcuate in shape (see Figs. 1/7, each grabber element has a curve shape along it “outer” perimeter).
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.
Claims 4 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over GB 2516296 A to Wraith in view of US 7,311,126 to Sharp.
If it is argued that Wraith does not teach the grabber elements as curved or arcuate in shape, Claim 4 is rejected in view of Sharp.
In re Claim 4, Wraith teaches a tool according to claim 1, wherein:
the first grabber element(s) is/are connected to the body of the tool on a first side of the tool (see annotated Fig. 1, showing the first grabber connected to the body of the tool on the first side), and/or
the second grabber element(s) is/are connected to the body of the tool on a second side of the tool (see annotated Fig. 1, showing the second grabber connected to the body of the tool on the second side), and/or
the first grabber elements and the second grabber elements comprise arms or fingers (each of the first and second grabber elements are in the form of arms or fingers – see Figs. 1-7, #16/16 in view of Applicant’s disclosure), and/or
the/each first grabber elements and the/each second grabber elements is claw shaped (under the broadest reasonable interpretation, the first and second grabber elements #16/#16 are claw shaped in view of Applicant’s disclosure).
If it is argued that Wraith does not teach the/each first grabber elements and the/each second grabber elements is curved or arcuate in shape, the examiner notes that Sharp teaches grabber elements that are curved or arcuate shape (see Sharp, Fig. 1, #3/4).
In the same field of invention, assemblies with cutting tools that grasp elongated workpieces, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to change the shape of the first grabber element and the second grabber element in order to grasp a different shaped workpiece. Changes in shape are within the level of ordinary skill in the art (see MPEP 2144.04, IV, B). Here, changing the surfaces of the arms to better correspond to the different shape workpieces that are intended to be grasped is within the level of ordinary skill in the art.
Claim 26, modified Wraith, in re Claim 4, teaches wherein where the/each first grabber elements and the/each second grabber elements is curved or arcuate in shape (see Sharp, Fig. 1, #3/#4 in view of Wraith Figs. 1 and 7):
a concave surface of each grabber element faces or is faceable towards a centre line of the tool, and a convex surface of each grabber element faces or is faceable away from a/the centre line of the tool (see Sharp, Fig. 1, #3/#4 in view of Wraith Figs. 1 and 7).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 4, and 26 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN G RILEY/Primary Examiner, Art Unit 3724
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