DETAILED CORRESPONDENCE
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, the following claimed limitations (see below) must be shown or the feature(s) canceled from the claim(s). The claimed limitations not shown are:
“wherein one of the boom mounted part and the support mounted part comprises a frame with at least one longitudinally extending chord; and in the case of the boom mounted part comprising the frame, said longitudinally extending chord is configured for connection to the boom by braces or trusses, and in the case of the support mounted part comprising the frame, said longitudinally extending chord is configured for connection to the support structure by braces or trusses; wherein the other one of the boom mounted part and the support mounted part comprises a biasing element that is biased towards an extended position” (See Claim 1 lines 6-13. The figures only show the boom mounted part comprising the frame and the support mounted part comprising the biasing element. However, the figures do not show the other alternative of the boom mounted part comprising the biasing element and the support mounted part comprising the frame. As the alternative is being positively claimed in an independent claim, this alternate must be shown in the figures. Further, as the arrangement of parts of the alternative is being claimed, the specific feature of the arrangement of parts of the alternative must be shown in figures.)
“wherein said braces or trusses for connection of the chord to the boom are provided at multiple distinguished positions in an axial direction, which is a longitudinal direction of the boom, and/or in a radial direction, which is transverse to the axial direction.” (See claim 6. While the figures appear to show the braces or trusses for connection of the chord to the boom provided at multiple positions in both the axial direction and the radial direction, the figures do not clearly show the braces or trusses for connection of the chord to the boom in only the axial direction or only radial direction. Thus, the figures do not show the “or” part of “and/or” limitation above.)
“configured to automatically lock the biasing element in response to a pressure on the biasing element exceeding a first predefined pressure threshold.” (See claim 9. The figures do not clearly show what structure is configured to automatically lock the biasing element.)
“configured to automatically release a locked biasing element in response to a predefined release criterion, in particular in response to the pressure on the biasing element falling below a second predefined pressure threshold equal to or smaller than the first predefined pressure threshold.” (See claim 10. The figures do not clearly show what structure is configured to automatically release the biasing element.)
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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Regarding claim 17, the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because “A method for lifting a load, said method comprising using the offshore crane according to claim 13 for said lifting.” does not fall within at least of a process (or method), as the limitation of this claim does not set forth any positive steps in the method/process. See MPEP 2173.05(q).
For example, there does not appear to be a specific positive step of lifting a load set forth in this claim.
Claim Rejections - 35 USC § 112
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.
Claims 1-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for 1) a boom mounted part comprising a frame with at least one chord and a support mounted part comprising a biasing element or 2) the boom mounted part comprising a biasing element and a support mounted part comprising a frame with at least one chord does not reasonably provide enablement for in the case of the boom mounted part comprising the frame, said longitudinally extending chord is configured for connection to the boom by braces or trusses, and in the case of the support mounted part comprising the frame, said longitudinally extending chord is configured for connection to the support structure by braces or trusses. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Regarding claim 1, this claim claims “in the case of the boom mounted part comprising the frame, said longitudinally extending chord is configured for connection to the boom by braces or trusses, and in the case of the support mounted part comprising the frame, said longitudinally extending chord is configured for connection to the support structure by braces or trusses”. The specification is not enabling because the specification does not enable both cases of the limitation above occurring simultaneously (see “and” limitation between both claimed cases).
Regarding the In re Wands Factor of “Amount of direction provided”, no direction is provided by the inventor for both cases of “in the case of the boom mounted part comprising the frame, said longitudinally extending chord is configured for connection to the boom by braces or trusses, and in the case of the support mounted part comprising the frame, said longitudinally extending chord is configured for connection to the support structure by braces or trusses”, as the inventor only appears to provide direction of 1) a boom mounted part comprising a frame with at least one chord and a support mounted part comprising a biasing element or 2) the boom mounted part comprising a biasing element and a support mounted part comprising a frame with at least one chord. What direction has Inventor/Applicant provided for both case applying at the same time?
Regarding the Wands Factor of “Existence of Working Examples”, this claim claims “in the case of the boom mounted part comprising the frame, said longitudinally extending chord is configured for connection to the boom by braces or trusses, and in the case of the support mounted part comprising the frame, said longitudinally extending chord is configured for connection to the support structure by braces or trusses”. However, the disclosure only appears to disclose 1) a boom mounted part comprising a frame with at least one chord and a support mounted part comprising a biasing element or 2) the boom mounted part comprising a biasing element and a support mounted part comprising a frame with at least one chord. The working example(s) of 1) a boom mounted part comprising a frame with at least one chord and a support mounted part comprising a biasing element or 2) the boom mounted part comprising a biasing element and a support mounted part comprising a frame with at least one chord is/are the only working example(s) provided in the disclosure. No working example is disclosed for the claimed limitation (of the claim invention) of both cases of the above limitation. Thus, a single working example for the claimed invention is not disclosed.
Where in the specification is a working example of “in the case of the boom mounted part comprising the frame, said longitudinally extending chord is configured for connection to the boom by braces or trusses, and in the case of the support mounted part comprising the frame, said longitudinally extending chord is configured for connection to the support structure by braces or trusses”?
Regarding the Wands Factor of “Quantity of experimentation needed”, this claim claims “in the case of the boom mounted part comprising the frame, said longitudinally extending chord is configured for connection to the boom by braces or trusses, and in the case of the support mounted part comprising the frame, said longitudinally extending chord is configured for connection to the support structure by braces or trusses”. However, the disclosure only appears to disclose 1) a boom mounted part comprising a frame with at least one chord and a support mounted part comprising a biasing element or 2) the boom mounted part comprising a biasing element and a support mounted part comprising a frame with at least one chord. Because of the significant difference between the disclosure and the above limitation, the disclosure does not provide a reasonable amount of direction or guidance for experimentation. How would one of ordinary skill in the art with the disclosure arrive at the claimed invention of both claimed cases occurring at the same time?
Applicant may want to amend claim 1 by claiming the offshore crane more generically, and then claim the different configurations of the boom mounted part, support mounted part, frame with at least one chord, and biasing element in separate dependent claims.
Claims 2-21 are rejected under 112(a) because of their dependency to independent claim 1.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for said braces or trusses for connection of the chord to the boom are provided at multiple distinguished positions in an axial direction, which is a longitudinal direction of the boom, and in a radial direction, which is transverse to the axial direction, does not reasonably provide enablement for said braces or trusses for connection of the chord to the boom are provided at multiple distinguished positions in an axial direction, which is a longitudinal direction of the boom, or in a radial direction, which is transverse to the axial direction. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Thus, the “and” part of “and/or” is enabled, but the “or” part of “and/or” is not enabled.
Regarding claim 6, this claim claims “wherein said braces or trusses for connection of the chord to the boom are provided at multiple distinguished positions in an axial direction, which is a longitudinal direction of the boom, and/or in a radial direction, which is transverse to the axial direction”. The specification is not enabling because the specification enables the positions of the braces or trusses in an axial direction and radial direction (i.e. the “and” part of “and/or”), but does not enable the positions of the braces or trusses in only the axial direction or only radial direction (i.e. the “or” part of “and/or”). See figures 1-5.
Regarding the In re Wands Factor of “Amount of direction provided”, no direction is provided by the inventor to provide the positions of the braces or trusses in only the axial direction or only radial direction, as the inventor only appears to provide direction of the positions of the braces or trusses in the axial direction and radial direction. What direction has Inventor/Applicant provided for the braces or trusses in only the axial direction or only radial direction?
Regarding the Wands Factor of “Existence of Working Examples”, this claim claims “wherein said braces or trusses for connection of the chord to the boom are provided at multiple distinguished positions in an axial direction, which is a longitudinal direction of the boom, and/or in a radial direction, which is transverse to the axial direction”. However, the disclosure only appears to disclose the braces or trusses in the axial direction and radial direction. The braces or trusses in the axial direction and radial direction is the only working example provided in the disclosure. No working example is disclosed for the claimed limitation (of the claim invention) of the braces or trusses in only the axial direction or only radial direction. Thus, a single working example for the claimed invention is not disclosed. Where in the specification is a working example of the braces or trusses in only the axial direction or only radial direction disclosed?
Regarding the Wands Factor of “Quantity of experimentation needed”, this claim claims “wherein said braces or trusses for connection of the chord to the boom are provided at multiple distinguished positions in an axial direction, which is a longitudinal direction of the boom, and/or in a radial direction, which is transverse to the axial direction”. However, the disclosure only appears to disclose the braces or trusses in the axial direction and radial direction. Because of the significant difference between the disclosure and the above limitation, the disclosure does not provide a reasonable amount of direction or guidance for experimentation. How would one of ordinary skill in the art with the disclosure arrive at the claimed invention without unreasonable experimentation?
Claim 9 is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without the structure that is “configured to automatically lock the biasing element in response to a pressure on the biasing element exceeding a first predefined pressure threshold”, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
Regarding claim 9, this claim claims “configured to automatically lock the biasing element in response to a pressure on the biasing element exceeding a first predefined pressure threshold”.
However, the claim lacks the essential structure that has the function of being “configured to automatically lock the biasing element in response to a pressure on the biasing element exceeding a first predefined pressure threshold”. Further, while the Specification discusses the locking of the biasing element, the Specification does not identify what structure automatically locks the biasing element.
What is the structure that is “configured to automatically lock the biasing element in response to a pressure on the biasing element exceeding a first predefined pressure threshold”?
Claim 10 is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without the structure that is “configured to automatically release a locked biasing element in response to a predefined release criterion.”, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
Regarding claim 10, this claim claims “configured to automatically release a locked biasing element in response to a predefined release criterion.”.
However, the claim lacks the essential structure that has the function of being “configured to automatically release a locked biasing element in response to a predefined release criterion.”. Further, while the Specification discusses the releasing of the biasing element, the Specification does not identify what structure releases the biasing element.
What is the structure that is “configured to automatically release a locked biasing element in response to a predefined release criterion.”?
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 1-21 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 pre-AIA the applicant regards as the invention.
Regarding claim 1, the limitation of “in the case of the boom mounted part comprising the frame, said longitudinally extending chord is configured for connection to the boom by braces or trusses, and in the case of the support mounted part comprising the frame, said longitudinally extending chord is configured for connection to the support structure by braces or trusses” (see lines 8-11) renders the claim indefinite because the use of the term “and” appears to require both claimed cases to occur at the same time, which appears to be inconsistent with the Specification. The Specification only appears to disclose the braces or trusses on one of the boom mounted part or the support mounted part, and not on both the boom mounted part and support mounted part at the same time.
Applicant may want to amend claim 1 by claiming the offshore crane more generically, and then claim the different configurations of the boom mounted part, support mounted part, frame with at least one chord, and biasing element in separate dependent claims.
Claims 2-21 are rejected under 112(b) because of their dependency to independent claim 1.
Regarding claim 9, the limitation of “configured to automatically lock the biasing element in response to a pressure on the biasing element exceeding a first predefined pressure threshold” renders the claim indefinite because the limitation is unclear as to what claimed structure is automatically locking the biasing element. What claimed structure is automatically locking the biasing element? Is the Applicant invoking means plus function claim language?
Regarding claim 10, the limitation of “configured to automatically release a locked biasing element in response to a predefined release criterion” renders the claim indefinite because the limitation is unclear as to what claimed structure is automatically releasing the biasing element. What claimed structure is automatically releasing the biasing element? Is the Applicant invoking means plus function claim language?
Please review all claims before the formal response is submitted, as any new 112(b) rejections introduced in the response may be grounds for a Final Rejection.
Withdrawal of Previous Indicated Allowable Subject Matter
As independent claim 1 has been rejected under a 112(a) rejection, the previous indication of allowable claim subject matter of the Non-Final of 04/03/2026 of dependent claims 11-12 has been withdrawn. These claims are rejected under 112(a) because of their dependency to claim 1. The allowable subject matter of these claims will be reconsidered once the 112(a) rejection and 112(b) rejection to claim 1 have been overcome.
Response to Arguments
Applicant's arguments filed July 6, 2026 (see Remarks REM of 07/06/2026) have been fully considered but they are not persuasive.
Regarding Applicant’s argument(s) to the Drawing Objections (starting on page 1 of the Remarks), the Examiner respectfully does not agree because the arrangement of parts of the alternative is being claimed, the specific feature of the arrangement of parts of the alternative must be shown in figures.
Regarding Applicant’s argument(s) to the 101 rejection (see page 2 of the Remarks), the Examiner respectfully does not agree because there does not appear to be a specific positive step of lifting a load set forth in claim 17. What is the specific positive step for lifting a load in this claim?
Regarding the Applicant’s argument(s) to the 112(a) rejections to claims 6, 9, and 10 (see page 2 of the Remarks), the Examiner respectfully does not agree because the reference to other Wands Factors does not positively address how the Wands Factors presented in the rejections of these claims are addressed by the disclosure of this application to enable the claimed invention of these claims.
Further regarding the rejection to claim 6 under 112(a), see page 3 of the Remarks, the argument is not commensurate with the scope of the invention because claim 6 claims “and/or” (see line 5), not just “and”. The use of “and/or” broadly requires positions of the braces or trusses to also be in the axial direction or the radial direction, which is not enabled by the disclosure.
Further regarding the rejections to claims 9 and 10 under 112(a), see page 3 lines 4-7 of the Remarks, the Examiner respectfully does not agree because the claimed invention of these claims being easily implemented by one of ordinary skill in the art does not enable the claimed invention of claims 9 and 10. Nor does these claims being easily implemented by one of ordinary skill in the art address the Wands Factors presented in the rejections of these claims.
Further regarding the 112(b) rejections to claims 9 and 10, Applicant argues:
“Regarding the rejections of claims 9 and 10 "because the limitation is unclear as to what claimed structure is automatically locking [or releasing] the biasing element," for the reasons noted above, the skilled person reading the present specification and having background knowledge of the state of the art would have been well apprised of specific locking and releasing devices for implementation with the biasing element as claimed. The definiteness standard under 35 U.S.C. § 112 requires the Office to consider the claim language "not in a vacuum, but always in light of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232, 1235 (C.C.P.A. 1971) (emphasis added). This rejection is therefore respectfully traversed.”
See page 4 of the Remarks.
The Examiner respectfully does not agree because one of ordinary skill in the art being appraised of specific locking and releasing devices for implementation with the biasing element as claimed does not define the scope of the claimed invention of claims 9 and 10.
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 JUAN J CAMPOS, JR whose telephone number is (571)270-5229. The examiner can normally be reached on Monday-Friday 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert W. Hodge can be reached on phone number (571)272-2097. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JJC/
/ROBERT W HODGE/Supervisory Patent Examiner, Art Unit 3654
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