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, 6, and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,152,701. 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. 12,152,701 and are thus encompassed by said claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,555,558. 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. 11,555,558 and are thus encompassed by said claims.
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, 6, and 15-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barra et al. (2009/0266552).
With regard to claim 1, Barra discloses a pipeline removal system for removing pipeline from a seafloor (abstract; para 0002), comprising:
a barge (para 0037), a subsea trenching device (10/90), and a trenching device controller (para 0037),wherein said trenching device controller is on said barge (para 0037); wherein said subsea trenching device is operatively connected to said trenching device controller and said trenching device controller is configured to control said subsea trenching device (para 0037); wherein said subsea trenching device comprises at least one spray pipe (94/100) and each said at least one spray pipe further comprises at least one nozzle (96), further wherein said subsea trenching device is configured to receive pressurized water and to spray said pressurized water out of each said at least one nozzle (para 0022) , thereby excavating a trench around a length of said pipeline buried below said seafloor and exposing an uncovered portion of said pipeline (figs. 1-2; para 0022); wherein said subsea trenching device is removably attachable to said pipeline;and wherein, when said subsea trenching device is removably attached to said pipeline (via 212; fig. 3; para 0027) and said pipeline is below said seafloor (figs. 1-2), each said at least one nozzle is located between a bottom of said pipeline and at or below a surface of said seafloor (figs. 1-2; wherein nozzles are below bottom of cut pipe 42).
With regard to claim 6, Barra discloses a pipeline removal system for removing pipeline from a seafloor (abstract; para 0002), comprising:
a barge (para 0037), a subsea trenching device (10/90), a trenching device controller (para 0037), a subsea shear (240), and a shear controller (paras 0030-0031; 0037),wherein said trenching device controller and said shear controller are on said barge (para 0037); wherein said subsea shear is operatively connected to said shear controller and said shear controller is configured to control position and shear-action of said subsea shear (paras 0030-0031; 0037); wherein said subsea trenching device is operatively connected to said trenching device controller and said trenching device controller is configured to control said subsea trenching device (para 0022); wherein said subsea trenching device comprises at least one spray pipe (94/100) and each said at least one spray pipe comprises at least one nozzle (96), further wherein said subsea trenching device is configured to receive pressurized water and to spray said pressurized water out of each said at least one nozzle (para 0022); and wherein said subsea shear is capable of cutting said pipeline (para 0029-0032).
With regard to claim 15, Barra discloses a method of performing subsea pipeline disassembly (abstract; para 0002) comprising: providing a barge (para 0037), a subsea trenching device (10/90), a trenching device controller (para 0037), a subsea shear (240), and a shear controller to an offshore location (paras 0030-0031; 0037); lowering said subsea trenching device into seawater and onto a pipe (40; figs. 1-2); moving said subsea trenching device along a length of said pipe (figs. 1-2); displacing a displaced portion of seafloor using said subsea trenching device to unearth an uncovered portion of said pipe (figs. 1-2); and shearing said uncovered portion of said pipe with said subsea shear (fig. 2; paras 0029-0031); wherein said trenching device controller and said shear controller are on said barge (para 0037);wherein said subsea shear is operatively connected to said shear controller and said shear controller is configured to control position and shear-action of said subsea shear (paras 0029-0031; 0037); and wherein said subsea trenching device is operatively connected to said trenching device controller and said subsea trenching device is configured to be controlled by said trenching device controller (para 0037).
With regard to claim 16, Barra further discloses said subsea trenching device further comprises at least one spray pipe (94/100; fig. 5) and each said at least one spray pipe further comprises at least one nozzle (96), and wherein said displacing step further comprises the step of spraying pressurized water out of each of said at least one nozzle (figs. 1-2).
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) 2-5, 7-14, and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barra et al. (2009/0266552) in view of Norman (4,389,139).
With regard to claims 2, 7 and 17, Barra discloses the invention substantially as claimed however is silent regarding a plurality of air lift columns, each air lift column comprising an opening, an outlet, an interior space, and an air inlet, wherein said air inlet is located below said outlet, further wherein said trenching device controller is capable of delivering pressurized air to said subsea trenching device by a pressurized air hose, and each of said air lift columns is configured to accept said pressurized air through each respective said air inlet, further wherein each of said plurality of air lift columns is capable of lifting water and particulate matter from said seafloor into each respective said opening, through each respective said interior space, and out of each respective said outlet as a result of said pressurized air flowing through each respective said interior space.
Norman discloses a subsea trenching device comprising a plurality of air lift columns (194), each air lift column comprising an opening (192), an outlet (fig. 2), an interior space (fig. 2), and an air inlet (via 206), wherein said air inlet is located below said outlet (fig. 2), further wherein said trenching device controller (col. 5, lines 1-11) is capable of delivering pressurized air to said subsea trenching device by a pressurized air hose (col. 9, lines 48-63), and each of said air lift columns is configured to accept said pressurized air through each respective said air inlet, further wherein each of said plurality of air lift columns is capable of lifting water and particulate matter from said seafloor into each respective said opening, through each respective said interior space, and out of each respective said outlet as a result of said pressurized air flowing through each respective said interior space (col. 9, lines 48-63).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Barra and utilize air lift columns as taught in Norman, with a reasonable expectation of success, in order to provide means to remove the cuttings.
With regard to claims 3 and 8, Barra, as modified, discloses the invention substantially as claimed however is silent regarding a plurality of rollers, wherein said subsea trenching device is configured to position at least some of said plurality of rollers about a pipe to removably attach said subsea trenching device to said pipe.
Norman further discloses a plurality of rollers (26/28), wherein said subsea trenching device is configured to position at least some of said plurality of rollers about a pipe to removably attach said subsea trenching device to said pipe (fig. 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Barra and utilize rollers as taught in Norman, with a reasonable expectation of success, in order to provide means to guide the device along the pipe.
With regard to claims 4, 9, and 18, Barra, as modified, further discloses said subsea trenching device is capable of causing a rolling action of at least some of said plurality of rollers and said rolling action is configured to push said subsea trenching device along said pipe when at least some of said plurality of rollers are removably attached to said pipe (Norman; col. 10, lines 16-29).
With regard to claims 5, 10, and 19, Barra, as modified, discloses the invention substantially as claimed however is silent regarding at least one buoyancy tank capable of receiving air to increase buoyancy of said subsea trenching device and capable of expelling air to decrease buoyancy of said subsea trenching device.
Norman further discloses at least one buoyancy tank (12/14) capable of receiving air to increase buoyancy of said subsea trenching device and capable of expelling air to decrease buoyancy of said subsea trenching device (col. 10, lines 58-63).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Barra and utilize ballast tanks as taught in Norman, with a reasonable expectation of success, in order to provide means to adjust the position of the apparatus.
With regard to claim 11, Norman further discloses each said air inlet further comprises a valve (34) configured to adjust flow of said pressurized air through each said air inlet (col. 5, lines 28-38).
With regard to claims 12-13, Barra further discloses said subsea trenching device is removably attached to said pipe and said pipe is below said seafloor (fig. 1), each said at least one nozzle is located between a bottom of said pipe and at or below a surface of said seafloor (fig. 5).
With regard to claim 14, Barra, as modified, further discloses said pressurized water displaces a displaced portion of said seafloor and said air lift columns are configured to lift said displaced portion of said seafloor (Norman; col. 9, lines 29-63).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barra et al. (2009/0266552) in view of Norman (4,389,139) as applied to claim 19 above, and further in view of Maloberti (5,421,674).
With regard to claim 20, Barra, as modified, discloses the invention substantially as claimed, however is silent regarding at least one sonar device for imaging said seafloor and providing visual indicators and wherein said shearing step comprises the step of identifying said seafloor and said pipe with said at least one sonar device to direct said subsea shear to said pipe.
Maloberti discloses a barge with a sonar device (col. 7, lines 27-55) for indicating locationg of a pipe. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to further modify Barra and utilize sonar as taught by Maloberti, with a reasonable expectation of success, in order to track and locate the pipeline.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BENJAMIN F FIORELLO/Primary Examiner, Art Unit 3678
BF
1/21/2026