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 .
Double Patenting
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 1-13 of U.S. Patent No. 12,116,748. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application are merely broader than the claims to US Patent No. 12,116,748 and are thus encompassed by said claims.
Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/884,884. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application contain variations of the claims in copending Application No. 18/884,884 and therefore the claims in the current application are not patentably distinct from the claims in copending Application No. 18/884,884.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-2, 6-7, 9-10, and 14-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eide et al. (WO 2017/179992 A1).
With regard to claim 1, Eide discloses a method of connecting a lower pipe portion (6b) to a subsea foundation, the method comprising: providing a subsea foundation (100) and an upper pipe portion (6a) connected to the subsea foundation (fig. 4), connecting the lower pipe portion to a pull-in arrangement (15/17/19); deploying the subsea foundation subsea with the lower pipe portion connected to the pull-in arrangement (pg. 12, lines 1-32); and connecting the lower pipe portion to the upper pipe portion subsea using the pull-in arrangement (pg. 23, lines 20-33).
With regard to claims 2 and 10, Eide further discloses the upper pipe portion does not protrude beyond the bottom of the subsea foundation (fig. 4) and wherein, when the lower pipe portion is connected to the upper pipe portion, at least part of the lower pipe portion protrudes beyond the bottom of the subsea foundation (figs. 3-4).
With regard to claims 6 and 15, Eide further discloses the subsea foundation comprises a suction anchor (abstract).
With regard to claims 7 and 16, Eide further discloses the pull-in arrangement comprises one or more pull-in lines (15) that extend through one or more or respective pull-in line conduits (fig. 7), wherein each pull-in line conduit extends through the subsea foundation (fig. 7).
With regard to claim 9, Eide discloses a subsea foundation system for deployment subsea, wherein the subsea foundation comprises: a subsea foundation (100); an upper pipe portion (6a) connected to the subsea foundation; and a lower pipe portion (6b) connected to a pull-in arrangement (15/17/19), wherein the subsea foundation system is arranged such that subsea the lower pipe portion can be connected to the upper pipe portion using the pull-in arrangement (fig. 4).
With regard to claim 14, Eide further discloses a pipe connection guide for guiding the connection between the upper pipe portion and lower pipe portion (figs. 5-6).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 4 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eide et al. (WO 2017/179992 A1) in view of Smith et al. (7,507,055).
With regard to claims 4 and 11, Eide discloses the invention substantially as claimed however is silent regarding the pull-in arrangement comprises two pull-in lines that are connected at one end to the subsea foundation and at the other end to the lower pipe portion.
Smith discloses a subsea device utilize two pull-in lines to pull a pipe into position (3a, 4a).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further Eide and utilize a pulling arrangement with two line as taught in Smith, with a reasonable expectation of success, in order to allow the pipe portion to be aligned properly.
Claim(s) 5 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eide et al. (WO 2017/179992 A1) in view of Pond (4,697,829).
With regard to claims 5 and 13, Eide discloses the invention substantially as claimed however is silent regarding providing a pipe overlap section, wherein connecting the lower pipe portion to the upper pipe portion comprises overlapping the pipe overlap section on a portion of the upper pipe portion and/or the lower pipe portion.
Pond discloses subsea pipe connection wherein when connecting subsea pipes there is a pipe overlap section the pipe overlap section overlaps a portion of the upper pipe portion and/or the lower pipe portion (abstract; fig. 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Eide and utilize a pipe overlap section as taught in Pond, with a reasonable expectation of success, in order to provide the expected benefit of having a friction fit engagement between the pipe sections.
Allowable Subject Matter
Claims 3, 8, 12, 17 would be allowable if the double patenting rejection(s) set forth in this Office action is/are and rewritten to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the cited prior art, either alone or in any reasonable combination, fails to teach or suggest all the limitations of the dependent claim(s). Subsea foundation system comprising upper and lower pipe section are known such as those taught by Mathis (WO 2017/091085 A1), Eide et al. (WO 2017/179992 A1), and Hosoy et al. (2012/0003048). However, the cited prior art lacks deployed the subsea pipe in the stowed position and a pull-in line grip as required by the dependent claim(s) and it would not have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the prior art to achieve applicant's invention without the benefit of hindsight and applicant's own disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN F FIORELLO whose telephone number is (571)270-7012. The examiner can normally be reached Mon-Fri 8:00AM-4:30PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at (571)270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN F FIORELLO/Primary Examiner, Art Unit 3678
BF
04/04/2026
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