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 Objections
Claims 1-15 are objected to because of the following informalities:
In claim 1, line 5, a comma should be added after “elevation”.
In claims 2-11, line 1, “A monopile” should be changed to “The monopile”.
In claim 5, line 2, “that” should be changed to “than”.
In claim 6, line 2, “lower tubular” should be changed to “tubular lower”.
In claim 12, line 1, “a monopile for a wind turbine” should be changed to “the monopile”.
In claim 12, each element/step of the claim is not separated by a line indentation as required by 37 CFR 1,75(i). See MPEP 608.01 (m) for further information.
In claim 13, line 1, “the” should be added before “tubular”.
In claims 13-15, line 1, “A method” should be changed to “The method”.
Appropriate correction is required.
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 1-15 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.
Regarding claim 1, the wording of “A monopile for a wind turbine having an upper end and a lower end when positioned and comprising of a tubular lower part” in lines 1-2 is confusing. The term “having” is placed after “wind turbine” however this term appears to be related to the “monopile”. It is unclear whether the wind turbine or the monopile is being described. For purposes of examination, the examiner interprets “A monopile for a wind turbine having an upper end and a lower end when positioned and comprising of a tubular lower part” to mean “A monopile for a wind turbine, the monopile having an upper end and a lower end when positioned, the monopile comprising: a tubular lower part”. Further, the wording of “the monopile is provided with one or more openings at a higher elevation” in line 5 is confusing. Higher than what? It is unclear relative to which element the openings are higher. For purposes of examination, the examiner interprets “the monopile is provided with one or more openings at a higher elevation” to mean “the monopile is provided with one or more openings at a higher elevation than the injection nozzles”. Finally, the wording of “in at least a tangential and an axial direction towards the lower end” in lines 8-9 is confusing. This limitation seems to require that the water be injected in (1) a tangential direction and in (2) an axial direction, however the drawings show that the water is injected in a direction that is not fully tangential or fully axial. For purposes of examination, the examiner interprets “in at least a tangential and an axial direction towards the lower end” to mean “in a partially tangential and partially axial direction towards the lower end”. Claims 2-15 are rejected for depending from a rejected claim.
Regarding claim 2, the wording of “under an angle of between 30 and 60 degrees with the horizontal” in lines 2-3 is confusing. Does this mean between 30 and 60 degrees? Does this mean less than (i.e. under) 30 and 60 degrees? For purposes of examination, the examiner interprets “under an angle of between 30 and 60 degrees with the horizontal” to mean “at an angle of between 30 and 60 degrees with the horizontal”.
Regarding claim 5, it is unclear whether “the tubular part of the lower zone” in line 2 is the same as or different than, and in addition to, “a tubular lower part” in claim 1 because of the similar but different terminology. For purposes of examination, the examiner interprets “the tubular part of the lower zone” to mean “the tubular lower part”.
Claim 7 recites the limitation “the lower zone” in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 7 also recites the limitation “the injection distance” in line 3. There is insufficient antecedent basis for this limitation in the claim. Examiner notes that a “distance” is previously recited but not an “injection distance”.
Claim 8 recites the limitation “the injection distance” in line 3. There is insufficient antecedent basis for this limitation in the claim. Examiner notes that a “distance” is previously recited but not an “injection distance”.
Claim 9 recites the limitation “the internal wall” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 is rendered indefinite because there is no transitional phrase to define the scope of the claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim. For purposes of examination, the examiner interprets the claim to have a transitional phrase of “comprising”. Further, claim 12 is unclear because the entire claim is a run-on sentence. The method steps should be separated by punctuation for clarity.
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 4-8 (as best understood) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schupp et al (WO 2019/206690).
Regarding claim 1, Schupp discloses a monopile (e.g. 1, Fig.’s 1 and 5) for a wind turbine (e.g. paragraph 001) having an upper end (e.g. shown but not labeled in Fig. 5) and a lower end (e.g. 8, Fig. 1) when positioned and comprising of a tubular lower part extending upwards from the lower end (e.g. lower portion of 2, Fig. 1) and wherein at the inner side (e.g. 4, Fig. 1) of the tubular lower part injection nozzles (e.g. 10, Fig. 1) are present, wherein the monopile is provided with one or more openings at a higher elevation (e.g. 13, Fig. 1, and/or the opening of pipe 24, Fig. 1, and/or the open top of 2, Fig. 5) and wherein the injection nozzles are positioned at a distance from the lower end (e.g. Fig. 1) and directed to inject a flow of water in at least a tangential and an axial direction towards the lower end (e.g. Fig. 2, paragraph 0036, wherein the nozzles are directed tangentially and the flow of water is directed both tangentially and axially as shown in the figures, and/or paragraph 0042, wherein the tangential and axial direction of the nozzles are optimized based on the conditions).
Regarding claim 4, Schupp further discloses that the monopile has a lower zone (e.g. lower and cylindrical portion of 2, Fig. 5) which when positioned in a mass of soil is surrounded by said mass of soil (e.g. 19, Fig. 5) and an upper zone which extends above the mass of soil (e.g. upper portion of 2, Fig. 5) and wherein the one or more openings are present in the upper zone (e.g. Fig. 5 wherein the open top of 2 is above 19).
Regarding claim 5, Schupp further discloses that the upper zone is comprised of a tubular part having a smaller diameter that the tubular part of the lower zone (e.g. Fig. 5) and a transition part having a frusto-conical shape positioned below the tubular part having the smaller diameter (e.g. 20, Fig. 5, paragraph 0046).
Regarding claim 6, Schupp further discloses that the lower tubular part has a cylindrical and flush outer surface (e.g. Fig. 1).
Regarding claim 7, Schupp further discloses that the lower zone and the lower end of the monopile has the shape of a tube provided with a ring of the nozzles at its interior at the injection distance from the lower end (e.g. Fig. 1, paragraph 0034).
Regarding claim 8, Schupp does not specifically disclose that the monopile is designed for a specific type of soil in which it is to be positioned by varying the injection distance, however this is considered a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Therefore, the monopile with the injection distance based on the soil type is not considered patentable over the monopile of Schupp because the end product is the same.
Claims 1, 9 and 10 (as best understood) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP ‘251 (JP 4242251).
Regarding claim 1, JP ‘251 discloses a monopile (e.g. 1, Fig. 2) for a wind turbine having an upper end and a lower end when positioned (e.g. Fig. 2) and comprising of a tubular lower part extending upwards from the lower end (e.g. lower portion of 1, Fig. 2) and wherein at the inner side of the tubular lower part injection nozzles are present (e.g. 3, Fig. 2), wherein the monopile is provided with one or more openings at a higher elevation (e.g. open top of 1, Fig. 2) and wherein the injection nozzles are positioned at a distance from the lower end and directed to inject a flow of water in at least a tangential and an axial direction towards the lower end (e.g. Fig. 2, paragraph 0015, wherein the flow of water is shown extending in both a tangential and axial direction).
Regarding claim 9, JP ‘251 further discloses that the nozzles are fluidly connected to a circular conduit connected to the internal wall of the tubular lower part (e.g. 10, Fig. 3, paragraph 0023) and wherein the circular conduit is fluidly connected to one or more fluid supply conduits which run upwardly (e.g. 2, Fig. 3, paragraph 0023).
Regarding claim 10, JP ‘251 further discloses that the one or more fluid supply conduits are welded to the internal wall of the tubular lower part (e.g. paragraph 0023).
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 2, 3, 9, 10 and 12-15 (as best understood) are rejected under 35 U.S.C. 103 as being unpatentable over Schupp et al (WO 2019/206690) alone.
Regarding claim 2, Schupp discloses the invention substantially as applied above and further discloses that the injection nozzles are directed to the lower end under an angle with the horizontal which is optimized for the conditions (e.g. Fig. 2, paragraph 0042) but Schupp does not explicitly disclose that the angle is between 30 and 60 degrees. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to contrive any number of desirable ranges for the angle limitation disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Finally, Applicant has not disclosed that this angle provides an advantage, is used for a particular purpose, or solves a stated problem.
Regarding claim 3, Schupp discloses the invention substantially as applied above but does not explicitly disclose that the distance at which the injection nozzles are positioned from the lower end is between 0.25 and 2 m. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to contrive any number of desirable ranges for the distance limitation disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Finally, Applicant has not disclosed that this distance provides an advantage, is used for a particular purpose, or solves a stated problem.
Regarding claim 9, Schupp discloses the invention substantially as applied above and further discloses that the nozzles are fluidly connected to a circular conduit (e.g. 9, Fig.’s 1 and 4) adjacent to the internal wall of the tubular lower part (e.g. Fig.’s 1 and 4) and wherein the circular conduit is fluidly connected to one or more fluid supply conduits which run upwardly (e.g. 6, Fig.’s 1 and 4). Schupp does not explicitly disclose that the circular conduit is connected to the internal wall of the tubular lower part. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to connect the circular conduit of Schupp to the internal wall for the expected benefit of securing the conduit in place and avoiding potential damage caused by movement of the conduit.
Regarding claim 10, Schupp further discloses that the one or more fluid supply conduits are adjacent to the internal wall of the tubular lower part but Schupp does not explicitly disclose that the one or more fluid supply conduits are welded to the internal wall of the tubular lower part. The examiner takes official notice that welds are notoriously well known in the art. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to weld the one or more fluid supply conduits of Schupp to the internal wall of the tubular lower part for the expected benefit of securing the supply conduits in place and avoiding potential damage caused by movement of the supply conduits.
Regarding claim 12, Schupp discloses a method for installing a monopile for a wind turbine according to claim 1 (e.g. as explained above) on a soil surface (e.g. 19, Fig. 5) covered by a mass of water (e.g. 17, Fig. 5) by positioning the lower end on the soil surface (e.g. paragraph 0025) and by ejecting water from the injection nozzles in a direction having at least a tangential and an axial direction towards the lower end (e.g. Fig. 2, paragraph 0042, wherein the tangential and axial direction of the nozzles are optimized based on the conditions and the flow of water is directed both tangentially and axially as shown in the figures) resulting in that the ejected water penetrates the soil at the lower end resulting in a soil suspension of water and soil particles which soil suspension spirals upwardly within the monopile towards the one or more openings (e.g. Fig. 4, paragraph 0042) where it is discharged (e.g. paragraph 0045). Schupp does not explicitly disclose that the soil suspension is discharged to the mass of water. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to discharge the soil suspension of Schupp to the mass of water because the mass of water is a local and natural source of the soil and water which would avoid any requirement for storage of the soil suspension.
Regarding claim 13, Schupp further discloses that the diameter of tubular lower part is between 6 and 15 m (e.g. 11m, Table 1) and wherein between 10000 and 100000 I/min of water is ejected from the injection nozzles (e.g. 0.173 m3/s is equivalent to 10380 l/min, Table 1).
Regarding claim 14, Schupp further discloses that the water which is ejected does not substantially penetrate the soil to a level below the lower end of the monopile (e.g. Fig. 4, paragraph 0059).
Regarding claim 15, Schupp does not explicitly disclose that more than 90 vol% of the water ejected from the injection nozzles is discharged via the one or more openings to the mass of water. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to contrive any number of desirable ranges for the discharge percentage limitation disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Finally, Applicant has not disclosed that this discharge percentage provides an advantage, is used for a particular purpose, or solves a stated problem.
Claim 11 (as best understood) is rejected under 35 U.S.C. 103 as being unpatentable over JP ‘251 (JP 4242251) alone.
Regarding claim 11, JP ‘251 discloses the invention substantially as applied above and further does not disclose a pumping system for evacuating fluid from within the monopile, but JP ‘251 does not explicitly disclose that no pumping system is present for evacuating fluid from within the monopile. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to exclude a pumping system for evacuating fluid from within the monopile of JP ‘251 because no such pumping system is required and adding a pumping system would increase cost.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STACY N LAWSON whose telephone number is (571)270-7515. The examiner can normally be reached Mon-Fri 9am-3pm.
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/S.N.L./Examiner, Art Unit 3678
/AMBER R ANDERSON/Supervisory Patent Examiner, Art Unit 3678
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