DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 must be shown and properly identified by a reference number, or the feature(s) canceled from the claim(s). No new matter should be entered.
traveling block (claims 83 and 85)
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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
traveling block (claims 83 and 85)
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 65-85 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 12,473,060 B2 (‘060) in view of claim 7 and claim 16 of U.S. Patent No. US 8,985,040 B2 (‘040).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims of the co-owned ‘060 Patent disclose all claimed limitations set forth in claims 65-85 of the current application, except the cabling or rigging including one or more pulley blocks (claims 65, 76 and 85 of the application), or the inclusion of crown blocks and traveling blocks (claims 83 and 85 of the application). It is noted that claim 65 of the application employs equivalent terminology used in claim 1 of the ‘060 Patent, using the term “vessel” instead of “hull”, and “cabling” instead of “rigging”. Also, the limitation “frame having upper end portion and first and second, spaced apart lower end portions” recited in claim 65 is encompassed within the limitation “arch” set forth in claims of the ‘060 Patent.
In the co-owned ‘040 Patent, however, claim 7 sets forth the cabling or rigging including one or more pulley blocks, and claim 16 further sets forth the cabling or rigging including a crown block.
Therefore, it would have been obvious to a person of ordinary skill in the art to provide the cabling or rigging in claimed invention of ‘060 Patent with one or more pulley blocks, as taught by the ‘040 Patent. Having such an arrangement would have provided an efficient mechanism for lifting heavy loads. Further, it would have also been obvious to a person of ordinary skill in the art to configure such lifting pulley blocks as crown blocks and companion traveling blocks. Using sets of crown blocks and traveling blocks together would have provided great mechanical advantage to efficiently lift very heavy loads.
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 65-85 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 claim 65 (line 19), the limitation “wherein in steps “d” through “h” the upper end portions of the frames are not connected” (emphasis added) renders the claim indefinite because step “d” describes only a single frame, and a plurality of frames is not set forth until the following step “e”.
In claim 70, the limitation “and in step “h” the cabling is fitted to the beams” renders the claim indefinite because it appears to improperly modify the scope of a preceding claim 65. Did the applicant intend this limitation to be “and wherein the cabling described in step “h” further fitted to the beams”?
In claims 71, the limitation “crown block” renders the claim indefinite. It is not sufficiently clear whether such crown block is a part of, or different from, the pulley block set forth in the preceding claim 65.
In claim 76 (line 16), the limitation “connections of arches to vessels” (emphasis added) renders the claim indefinite. It is not clear if such vessels are same or different from the first and second vessels recited in line 3 of the claim.
In claim 77, the limitation “wherein in step “a” the floating support structure includes a catamaran” renders the claim indefinite because it appears to improperly modify the scope of a preceding claim 76. Did the applicant intend this limitation to be “wherein the floating support structure described in step “a” further includes a catamaran”?
In claim 78, the limitation “wherein step “a” includes using multiple vessels to transport the floating support structure” renders the claim indefinite because it appears to improperly modify the scope of a preceding claim 76.
In claim 78, the limitation “multiple vessels” renders the claim indefinite. It is not clear if such multiple vessels are same or different from the first and second vessels set forth in the preceding claim.
In claim 81, the limitation “wherein in step “a” the floating structure is a catamaran” renders the claim indefinite because it appears to improperly modify the scope of a preceding claim 76. Did the applicant intend this limitation to be “wherein
In claim 81, the limitation “the floating structure” renders the claim indefinite. It is not clear if such “floating structure” is same or different from the “floating support structure”.
In claim 83, the limitation “wherein the rigging in step “c” includes one or more beams supported by one or both arches” renders the claim indefinite because it appears to improperly modify the scope of a preceding claim 76. Did the applicant intend this limitation to be “wherein the rigging described in step “c” further includes one or more beams supported by one or both arches”?
In claims 83, the limitation “crown block” renders the claim indefinite. It is not sufficiently clear whether such crown block is a part of, or different from, the pulley block set forth in the preceding claim 76.
In claim 85 (line 20), the limitation “wherein the rigging of step “f” includes a crown block and a traveling block” (emphasis added) renders the claim indefinite. It is not sufficiently clear if such crown block and traveling block are same or different from the pulley block set forth in the preceding line.
Allowable Subject Matter
Claims 65-85 would be allowable if:
(i) the claims are amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action without broadening the scope of the claims; and
(ii) a proper terminal disclaimer is provided to overcome the double patenting rejection.
Conclusion
The prior art made of record in the attached PTO-892, but not yet relied upon, is considered pertinent to applicant's disclosure.
Kittinger (US 2,390,654) shows two frames connected to hulls by universal joints (see Fig. 7, p-1, lines 42-52)
Hunsucker (US 2,916,002) shows two hulls connected by frames, wherein the frames comprise universal joints and connections that are not universal joints (Figures 2-4)
Philip (US 1822418) shows two hulls connected by frames, wherein the frames comprise articulated connections (Fig 1)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AJAY VASUDEVA whose telephone number is (571)272-6689. The examiner can normally be reached on 6:00 am - 3:00 pm.
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/AJAY VASUDEVA/Primary Examiner, Art Unit 3617
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