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 .
Response to Amendment
This action is responsive to Applicant’s Amendment and Response filed May 4, 2026, addressing the Non-Final Office Action mailed February 3, 2026.
Claims 1–20 are pending. Claims 1–7 and 13–20 remain withdrawn from further consideration as being directed to non-elected subject matter, there being no allowable generic or linking claim. See 37 C.F.R. § 1.142(b). Claims 8–12 are under examination. Claims 8 and 9 have been amended.
Claim Interpretation – Functional and Intended-Use Language
Claim 8 is directed to “a hull for an at-shore water-based apparatus for liquefaction of natural gas.” The “AER System” is not recited as a positively claimed element of the hull; it appears only as the object of functional statements (“operably configured to support a weight of an AER system,” “operably configured to receive LNG from the AER System,” and “a weight that is approximately equal to a weight of the AER System”). Likewise, the “ballast fluid” and the “LNG” are materials worked upon by, and not structural elements of, the claimed hull. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not distinguish over prior art apparatus satisfying the claimed structural limitations. See MPEP § 2114(II) and § 2115. Accordingly, prior art structure that is capable of supporting a topside refrigeration module, of receiving LNG from such a module, and of containing a fluid in the recited void space satisfies these limitations.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Amended claim 8 recites “the void space defining a ballast compartment configured to contain a ballast fluid, the void space comprising a volume sized to contain the ballast fluid having a weight that is approximately equal to a weight of the AER System so as to counterbalance the weight of the AER System on the upper deck.” Applicant asserts that support for this amendment is found at paragraphs [0010], [0013], [0015], and [0073] of U.S. Published Application No. 2025/0155192. Each cited passage has been reviewed, and none provides written description support for the newly added subject matter.
(a) Paragraph [0055] is the only passage of the disclosure that describes placing a fluid in the void space above the storage tanks. It states that void space 64 “may be flooded during manufacturing of apparatus 10 to contain an amount of weight fluid (e.g., water) simulating an installed weight of AER Module 20 on upper deck 12 of hull 11.” The disclosed function of the fluid is to simulate, that is, to stand in for, the weight of a module that is not yet installed — not to oppose the weight of a module that is installed.
(b) Paragraphs [0015] and [0073] confirm that the fluid and the module weight are mutually exclusive. Paragraph [0073] states that the ballast fluid is located in void space 64 “before attaching AER Module 20 to control deflections of hull 11 by simulating a weight of AER Module 20,” and is thereafter “incrementally releas[ed] … while attaching AER Module 20 so that the simulated weight applied by the ballast fluid is reduced in proportion to an actual weight applied by AER Module 20.” Paragraph [0015] is to the same effect. The disclosure therefore describes the fluid as being removed from the void space to the extent that the AER Module weight is applied. There is no description of a hull in which a ballast fluid weighing approximately as much as the AER System is contained in the void space while the AER System is present on the upper deck, which is what claim 8 now requires.
(c) Paragraphs [0010] and [0013] describe the closed loop ballast system 90, which comprises “a plurality of ballast tanks 92” and pumps 94 that move ballast fluid between a first ballast tank 92A in an aft portion of hull 11 and a second ballast tank 92B in a forward portion of hull 11 (see also ¶ [0064]; fig. 3A). Ballast tanks 92 are disclosed as elements distinct from void space 64, and are described as being located fore and aft of one another so that fluid may be transferred between them for trim control. The specification nowhere describes void space 64 as being one of ballast tanks 92, nowhere describes void space 64 as “a ballast compartment,” and nowhere describes the ballast system 90 as operating on void space 64.
(d) The word “counterbalance,” and any concept of the void-space fluid opposing or offsetting the weight of an installed AER System, appears nowhere in the specification, the claims as originally filed, or the drawings. Original claims 3 and 14 recited only that the void space is “configured to contain a fluid” and “comprises a volume to contain fluid having a weight that is approximately equal to a weight of the AER System”; they contained no ballast-compartment limitation and no counterbalancing limitation. Because the specification as filed does not reasonably convey possession of a hull in which the void space defines a ballast compartment that contains ballast fluid counterbalancing the weight of an installed AER System, the newly added limitations constitute new matter. See MPEP §§ 608.04(a) and 2163.06.
Claims 9–12 are also rejected under 35 U.S.C. 112(a) for being dependent upon a rejected claim.
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 8-12 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.
Claim 8 requires that the ballast fluid contained in the void space have a weight approximately equal to the weight of the AER System “so as to counterbalance the weight of the AER System on the upper deck.” The scope of this limitation cannot be determined with reasonable certainty for at least two reasons.
First, the ordinary meaning of “counterbalance” is to oppose or offset a weight or force with an equal weight or force acting in the opposite sense. As claimed, however, the ballast fluid is contained in a void space that lies directly beneath, and is vertically aligned with, the upper deck on which the AER System is located, and both the ballast fluid and the AER System are carried by the same hull. The weight of the ballast fluid therefore acts downward in the same sense as the weight of the AER System and adds to the total load carried by the hull rather than opposing it. The claim does not recite any lever arm, moment arm, buoyancy element, pump, transfer path, or other structure by which the recited counterbalancing could be effected.
Second, the specification does not resolve the ambiguity, because it describes the fluid in void space 64 as simulating (that is, substituting for) the weight of an as-yet-uninstalled AER Module and as being released as the module weight is applied (¶¶ [0015], [0055], [0073]). A limitation that is irreconcilable with the disclosure renders the claim indefinite. See MPEP § 2173.03. One of ordinary skill in the art cannot determine whether claim 8 requires (i) merely a compartment capable of holding a fluid of a stated weight, or (ii) a structural arrangement that produces a force or moment opposing the weight of an installed AER System.
Claim 8 further recites “a volume sized to contain the ballast fluid having a weight that is approximately equal to a weight of the AER System” wherein the limitation defines a dimension of the claimed hull — the volume of the void space — solely by reference to “a weight of the AER System.” The AER System is not a positively recited element of the claimed hull, and neither the claim nor the specification assigns it any weight, weight range, or other quantitative benchmark. The volume of the claimed void space is therefore left wholly undefined, and the boundaries of the claim shift with whatever AER System a reader elects to posit. See MPEP § 2173.05(b)(I) (a claim is indefinite when it refers to an element that is not positively recited and whose parameters are undefined). The further qualifier “approximately” compounds the uncertainty because the specification provides no standard for measuring the permitted degree of departure. See MPEP § 2173.05(b)(III)(D).
Claims 9–12 are also rejected under 35 U.S.C. § 112(b) for being dependent upon a rejected claim.
For purposes of applying prior art under 35 U.S.C. § 103 below, the limitations discussed in this section have been given the broadest reasonable interpretation consistent with the specification, namely, that the void space is a compartment of the hull that is capable of containing a fluid.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8, as amended, requires “a plurality of LNG membrane storage tanks that are on the lower deck of the hull that are spaced between the transverse support structures.” A plurality of tanks cannot be spaced between the transverse support structures unless at least two such structures exist and are separated from one another by an intervening distance. The recitation of claim 9 that “the transverse support structures are spaced apart” is therefore necessarily and inherently required by claim 8 and adds nothing to its scope. See MPEP § 608.01(n)(III). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 8–12 are rejected under 35 U.S.C. § 103 as being unpatentable over Scott et al. (US 2016/0046354 A1) in view of Fitzpatrick et al. (US 2017/0106948 A1) in view of Bernays et al. (US 2013/0283825 A1), and further in view of Luo (US 2010/0186651 A1).
In regard to claim 8, Scott teaches a hull for an at-shore water-based apparatus for liquefaction of natural gas (the hull of floating liquefaction unit 100, which is moored by mooring lines 220 and deadman anchors 230 at dock 200 extending from shoreline 210 and which liquefies natural gas onboard) (¶ 0030, 0033–0034, 0038, 0042, 0046; figs. 1A, 2A, 2B), the hull defining a bow, a stern, a port side, a starboard side, a centerline axis extending from the bow to the stern, and a mid-ship axis extending between the starboard side to the port side at a middle of the hull (floating liquefaction unit 100 is a ship-shaped vessel that is towed through shipping lane 235 into berth 240 and offloads to LNG carrier 250 in a side-by-side or tandem configuration, and by its nature possesses a bow, a stern, port and starboard sides, a longitudinal centerline axis extending from bow to stern, and a transverse mid-ship axis extending from starboard to port at the middle of the hull) (¶ 0033–0035, 0041, 0047; figs. 1A–1C, 2A), the hull comprising:
an upper deck (deck 115, on which liquefaction module 110 is located) (¶ 0034, 0044; figs. 1A, 1B);
a lower deck (the deck within the hull, below deck 115, on which cryogenic LNG storage tanks 120 are carried) (¶ 0030, 0035; figs. 1A, 1C);
a plurality of LNG membrane storage tanks (the ten membrane LNG storage tanks 120 of the membrane containment system) that are on the lower deck of the hull and operably configured to receive LNG from the AER System located on or above the upper deck (LNG liquefied by liquefaction module 110 on deck 115 is transferred to LNG storage tanks 120 at step 430) (¶ 0030, 0034–0035, 0046; figs. 1A, 1C, 3); and
wherein a top surface of each LNG membrane storage tank (120) is spaced apart from the upper deck (115) of the hull to define a void space between the LNG membrane storage tanks (120) and the upper deck (115) (the storage tanks 120 are located below deck 115 within the hull, with a space separating the tops of the tanks from the deck) (¶ 0030, 0034–0035; figs. 1A, 1C).
Scott further teaches that the membrane containment system is arranged in a two row/ten tank configuration selected to minimize sloshing and to “provide mid-span deck support for installed liquefaction train(s),” confirming that the arrangement of tankage and internal hull structure is selected in Scott for the express purpose of carrying the weight of the topside liquefaction equipment (¶ 0035).
Scott does not explicitly teach a plurality of transverse support structures extending from the lower deck to the upper deck operably configured to support a weight of an AER system located on or above the upper deck, or that the plurality of LNG membrane storage tanks are spaced between the transverse support structures.
However, Fitzpatrick teaches a ship (20) having a hull (21) defining a hold (22) framed by side structures (30), a bottom structure (32), and a deck structure (34), the hull comprising a plurality of transverse support structures (each formed by a side web frame 70, 90, 110 integrally joined to an aligned bottom transverse girder 80, 96, 116 and an aligned deck transverse girder 86, 106, 118) that extend from the bottom structure (32) to the deck structure (34) to provide vertical support, that encircle the hull substantially orthogonally to the long axis (x), and that are spaced apart along the length of the hull, and further teaches a plurality of gas storage containers (stacks 124) that are spaced between the transverse support structures, each stack filling the space between adjacent ones of those structures (¶ 0033–0034, 0064, 0070–0072, 0106; figs. 3, 6A, 7). Fitzpatrick additionally teaches that the framing is deepened in the regions between adjacent stacks in order to reinforce the portions of the hold not supported by a stack and to prevent longitudinal shifting of the stacks, and that each container enclosure is itself formed of vertical columns (62, 63) joined by ring beams (64a, 64b, 65a, 65b), withstands significant applied weight, and is connected to and bears against the deck structure (34) through deck support structures (87, 88) (¶ 0046–0048, 0101–0105, 0125, 0127, 0133).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hull of Scott by providing a plurality of transverse support structures extending from the lower deck to the upper deck and by locating the plurality of LNG membrane storage tanks in the spaces between those structures, in view of the teachings of Fitzpatrick, in order to transfer the concentrated weight of the topside liquefaction equipment down to the bottom structure of the hull, to reinforce the regions of the hold not occupied by tankage, and to restrain the storage tanks against movement. Scott itself recognizes the need to provide deck support for its installed liquefaction trains (¶ 0035), so the motivation is supplied by the applied art rather than by hindsight.
The modified Scott does not explicitly teach that the void space defines a ballast compartment configured to contain a ballast fluid, or that the void space comprises a volume sized to contain the ballast fluid having a weight that is approximately equal to a weight of the AER System so as to counterbalance the weight of the AER System on the upper deck.
However, Bernays teaches a floating LNG plant (1, 1’, 100) comprising a hull (5, 5’), a plurality of LNG storage tanks (4, 104), and process equipment (110) for LNG processing carried on deck, wherein internal hull spaces that would otherwise remain void are used as reserve ballast spaces (11, 21, 31, 31’, 121, 131) “by which to control weight and draft of the vessel in both normal and damage scenarios,” and wherein limiting hull deformation such as hogging and sagging permits more deck load to be added to the vessel and increases the operating uptime of the tall process equipment (¶ 0019–0023, 0025, 0068, 0070–0072, 0112).
Luo teaches that, where a heavy topsides (110) is carried above a floating hull (float-over barges 115a, 115b), a ballast (150a, 150b) of liquid such as sea water or fresh water, or of solid material, is pumped into tanks of the hull or otherwise loaded onto it in order to create a counteracting moment against the sagging bending moment exerted on the hull by the weight of the topsides, a ballast of weight P installed at a distance a producing a counteracting moment Pa that reduces the moment 0.125qL² produced by the topsides weight q, so that the topsides and its supporting structure may be designed lighter and with approximately 100 kg/m² less steel for an exemplary topsides of about 20,000 metric tons (¶ 0018, 0059–0061, 0063–0065; figs. 5A, 6, 7).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to further modify the modified hull of Scott by configuring the void space already present above the LNG membrane storage tanks and below the upper deck as a ballast compartment configured to contain a ballast fluid, in view of the teachings of Bernays, in order to make productive use of a hull volume that would otherwise remain void, to satisfy the reserve ballast capacity required of the vessel, and to control the weight, draft, trim, and deformation of the hull carrying heavy topside liquefaction equipment. It further would have been obvious to size the volume of that ballast compartment so that the contained ballast fluid has a weight approximately equal to the weight of the topside refrigeration equipment, so as to counterbalance the weight of that equipment on the upper deck, in view of the teachings of Luo, in order to offset the bending moment imposed on the hull by the topside module and thereby permit a lighter and less costly hull and module support structure. Bernays and Luo are both directed to the ballasting of floating hulls that carry heavy topside hydrocarbon process equipment, and are therefore analogous art reasonably pertinent to the problem with which Applicant is concerned. See MPEP § 2141.01(a).
Luo teaches that the ballast weight P is selected in relation to the topsides weight q so as to offset the moment 0.125qL² that the topsides weight produces, and that the extent of the preloading is bounded by the strength and available buoyancy of the ballasted hull (¶ 0060, 0063–0064). The ballast weight is therefore a result-effective variable, and selecting a ballast weight approximately equal to the weight of the topside module involves only routine skill in the art. See In re Aller, 220 F.2d 454, 456 (CCPA 1955); MPEP § 2144.05(II). Applicant’s specification identifies no criticality for the recited proportion and discloses no unexpected result attending it.
It is further noted, consistent with the Claim Interpretation section above, that the ballast fluid and the AER System are not positively recited elements of the claimed hull. The void space of Scott as modified, being an enclosed compartment of the hull bounded by the tank tops, the bulkheads, and the upper deck, is capable of containing a fluid of the recited weight and therefore satisfies the limitation. See MPEP §§ 2114(II) and 2115.
In regard to claim 9, the modified Scott teaches the hull of claim 8, wherein the transverse support structures (the continuous transverse structures formed by web frames 70, 90, 110 with bottom transverse girders 80, 96, 116 and deck transverse girders 86, 106, 118 of Fitzpatrick) are spaced apart, said structures being “substantially orthogonal relative to, and spaced apart along, the long axis x of the hull” with the container stacks (124) occupying the spaces between them (¶ 0064, 0072, 0106, 0125; figs. 3, 6A, 7; see also the rejection of claim 8 above).
In regard to claim 10, the modified Scott teaches the hull of claim 8, wherein the plurality of LNG membrane storage tanks (120) is spaced apart in a single row along the centerline axis of the hull (the tanks 120 of Scott are arranged in longitudinally extending rows of spaced-apart tanks, and the row of tanks appearing on one side of the plan view of fig. 1C is a single row of spaced-apart tanks extending longitudinally along the centerline axis of the hull) (¶ 0035; fig. 1C). It is noted that claim 10 does not exclude the presence of additional tanks or additional rows of tanks.
In regard to claim 11, the modified Scott teaches the hull of claim 8, wherein each of the LNG membrane storage tanks (120) has a storage volume and is spaced apart in a single row along the centerline axis of the hull, but the modified Scott does not explicitly teach that the storage volume of each tank is approximately centered on the centerline axis.
However, Bernays teaches a floating LNG plant (1, 1’, 100) comprising a converted LNG carrier having a hull (5, 5’) and a plurality of LNG storage tanks (4, 104) arranged in a single longitudinal row with the storage volume of each tank centered on the longitudinal central axis of the hull, and further teaches that the sponsons added at the sides of the hull increase the separation distance between the LNG storage area and the sides of the vessel, which represent the point of impact in a possible side collision (¶ 0021, 0062, 0074, 0076; figs. 1, 2, 3, 6).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the tank arrangement of the modified Scott by substituting a single centerline row of LNG membrane storage tanks whose storage volumes are approximately centered on the centerline axis, in view of the teachings of Bernays, in order to reduce unbalanced transverse loading of the hull and to increase the separation distance between the cryogenic cargo and the side shell for collision protection. Both the side-by-side two-row arrangement of Scott and the single centerline row arrangement of Bernays were known ways of storing LNG in the hull of a floating liquefaction vessel, and the substitution of one known element for another to obtain predictable results is obvious. See KSR, 550 U.S. at 416; MPEP § 2143(I)(B).
In regard to claim 12, the modified Scott teaches the hull of claim 8, wherein the upper deck (115) defines an opening such that a portion of LNG is configured to be routed into the hull from the AER System (liquefaction module 110, located on deck 115) and out of the hull from the plurality of LNG membrane storage tanks (120) through the opening (the LNG produced by liquefaction module 110 on deck 115 is transferred at step 430 into storage tanks 120 located below deck 115 within the hull, and is thereafter transferred at step 435 from storage tanks 120 out of the hull through hose 325 to LNG carrier 250; because the liquefaction module 110 and the transfer hose 325 are above deck 115 while the storage tanks 120 are below deck 115, the cryogenic piping conveying the LNG in both directions necessarily passes through at least one opening defined in deck 115) (¶ 0034–0036, 0046–0047; figs. 1A, 1B, 2A, 3). To the extent that Scott does not use the word “opening,” the provision of a deck penetration for cryogenic piping running between a topside liquefaction module and storage tanks located beneath the deck is the necessary and predictable consequence of the arrangement Scott discloses, and would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in order to place the liquefaction module in fluid communication with the storage tanks and the offloading arms.
Response to Arguments
Applicant’s arguments with respect to the amended claims have been considered but are moot in view of the new ground(s) of rejection, unless otherwise noted below.
B. Applicant’s argument that Fitzpatrick discloses only gas storage containers welded together to act as bulkheads, and not dedicated vertical support structures designed to hold up heavy equipment on the upper deck. Applicant argues that Fitzpatrick fails to cure the acknowledged deficiency of Scott because Fitzpatrick’s stacks of gas storage containers are “cargo containers repurposed as structural walls” rather than “dedicated support columns or frames designed to hold up heavy equipment on the upper deck.”
In response, the allegation is not persuasive. The transverse support structures relied upon in the present rejection are not gas storage containers. They are Fitzpatrick’s transverse framing — the side web frames 70, 90, and 110 integrally joined to the aligned bottom transverse girders 80, 96, and 116 and deck transverse girders 86, 106, and 118. Fitzpatrick teaches that the web frames “provide the vertical support as they extend along the side structures from bottom structure 32 to deck structure 34” (¶ 0064), that each such combination forms “a continuous structure encircling the hull” that is “substantially orthogonal relative to, and spaced apart along, the long axis x of the hull,” and that a stack of containers “fills the space between some of the continuous structures formed by the girders and web frames” (¶ 0072). That single passage supplies both the transverse support structures spanning the decks and the placement of the tanks in the spaces between them.
Further, the claims do not recite what Applicant argues. Claim 8 does not require that the support structures be “dedicated,” “purpose-built,” “vertical,” or free of any additional function. Arguments must be commensurate in scope with the claims, and limitations from the specification are not read into them. See MPEP § 2145(VI). Nor does a dual-purpose structure fall outside the reference’s teaching, since a reference is evaluated for everything it teaches. See MPEP § 2123. Finally, “operably configured to support a weight of an AER system” is functional language directed to an element not positively recited, so prior art structure capable of performing the function satisfies it. See MPEP § 2114(II).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/W.M/Examiner, Art Unit 3763
/FRANTZ F JULES/ Supervisory Patent Examiner, Art Unit 3763
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