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 .
The present application is a continuation of Application No. 18/198,068, which is now U.S. Patent No. 12,122,495, which is a continuation of Application No. 17/326,715, which is now U.S. Patent No. 11,691,706, which is a continuation of Application No. 16/009,112, which is now U.S. Patent No. 11,021,222, which is a continuation of Application No. 15/021,931, which is now U.S. Patent No. 10,000,264.
Drawings
The replacement drawings were received on October 21, 2024. These drawings are acceptable.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on October 21, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,691,706. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-19 are generic to all that is recited in claims 1-19 of US 11,691,706. In other words, claims 1-19 of US 11,691,706 fully encompass the subject matter of claims 1-19 and therefore anticipate claims 1-19. Since claims 1-19 are anticipated by claims 1-19 of US 11,691,706, claims 1-19 are not patentably distinct from claims 1-19 of US 11,691,706, regardless of any additional subject matter present in claims 1-19 of US 11,691,706.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,021,222. Although the claim at issue is not identical, it is not patentably distinct from the other because claim 1 is generic to all that is recited in claim 1 of US 11,021,222. In other words, claim 1 of US 11,021,222 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1. Since claim 1 is anticipated by claim 1 of US 11,021,222, claim 1 is not patentably distinct from claim 1 of US 11,021,222, regardless of any additional subject matter present in claim 1 of US 11,021,222.
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 7, 11-12 and 17-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kohnen (US 5,704,309).
Kohnen discloses the same underwater watercraft as claimed, as shown in Figures 1-12, which includes a compartment, defined as Part #50, that defines an interior space with seats, defined as Part #52, as shown in Figure 1, and an attitude adjustment system that is configured to move said underwater watercraft, defined as Part #10, in at least two operational modes including a surface mode, as shown in Figures 2, 4 and 6, that defines a surface mode center of gravity, defined as Part #60, as shown in Figure 2, and a submerged mode, as shown in Figures 5 and 7, that defines a submerged mode center of gravity, where said surface mode center of gravity is located closer to a front and a bottom of said underwater watercraft when using a front trim weight, defined as Part #108, as shown in Figure 9, to compensate for empty lower ballast tanks, defined as Part #40, when said watercraft is at a water surface, as shown in Figures 4 and 6, in relation to said submerged mode center of gravity when using rear trim weights, defined as Part #105, as shown in Figure 8, to compensate for water in said ballast tanks when said watercraft is submerged. Said surface mode center of gravity and said submerged mode center of gravity are defined in order to adjust an angle of operation of said underwater watercraft in relation to a water surface plane, as shown in Figures 4-7, where said front and rear trim weights are configured to be moved or removed in order to further adjust said angle of operation of said underwater watercraft, as shown in Figures 8-9.
Kohnen also discloses the same method of operating an underwater watercraft as claimed, as shown in Figures 1-12, said method being comprised of the step of operating an attitude adjustment system in order to operate said underwater watercraft, defined as Part #10, in one of a surface mode that defines a surface mode center of gravity, defined as Part #60, as shown in Figure 2, and a submerged mode that defines a submerged mode center of gravity, where said surface mode center of gravity is located closer to a front and a bottom of said underwater watercraft when using a front trim weight, defined as Part #108, as shown in Figure 9, to compensate for empty lower ballast tanks, defined as Part #40, when said watercraft is at a water surface, as shown in Figures 4 and 6, in relation to said submerged mode center of gravity when using rear trim weights, defined as Part #105, as shown in Figure 8, to compensate for water in said ballast tanks when said watercraft is submerged. In said submerged mode, said ballast tanks are filled with water, as shown in Figures 5 and 7, and in said surface mode, said ballast tanks are drained of water, as shown in Figures 4 and 6. An angle of operation of said underwater watercraft in relation to a water surface plane is adjusted by moving or removing said front and rear trim weights, as shown in Figures 8-9.
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 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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kohnen in view of Onofri (US 4,938,164).
Kohnen, as set forth above, discloses all of the features claimed except for the use of one or more upper ballast tanks.
Onofri discloses a submersible vehicle, as shown in Figures 1-17, which is comprised of a compartment, defined as Part #1, that defines an interior space, a frame, defined as Part #2, a plurality of upper ballast tanks, defined as Part #3, that are fixed to a top of said frame and disposed above a horizontal midline of said compartment, as shown in Figures 1-2, and remain at least partially submerged below a water surface plane in a surface mode, as shown in Figure 10, and a lower ballast tank, defined as Part #8, that is at least partially disposed below a horizontal midline of said compartment.
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art, to utilize a plurality of upper ballast tanks on a submersible vehicle, as taught by Onofri, in combination with the underwater watercraft as disclosed by Kohnen for the purpose of providing an underwater vehicle with both upper and lower ballast tanks to allow for the adjustment of an angle of operation of said underwater watercraft in a surface mode and a submerged mode.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARS A OLSON whose telephone number is (571) 272-6685. The examiner can normally be reached Monday to Friday 8:00am - 4:00pm.
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August 10, 2026
/LARS A OLSON/Primary Examiner, Art Unit 3615B
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