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 .
Claim Rejections - 35 USC § 102
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.
Claims 1. 2, 5, 9, 10 are rejected under 35 U.S.C. 102a1 as being anticipated by Campbell (GB 1465043 A).
Regarding Claim 1, Campbell discloses a buoy comprising: a buoyant core component having a plurality of cavities positioned therein; at least two detachable flotation components surrounding and supporting the buoyant core component (See Fig. 1.); and a pair of tie bar assemblies mounted within the plurality of cavities of the buoyant core component (See Fig. 2.).
Regarding Claim 2, Campbell discloses the buoy of claim 1, wherein the buoyant core component includes at least two lifting holes (Element 42) located at an upper portion of the buoyant core component, and at least two mooring holes located at a lower portion of the buoyant core component. (Element 41)
Regarding Claim 5, Campbell discloses the buoy of claim 1, wherein each tie bar assembly of the pair of tie bar assemblies comprises: a rod assembly comprising one or more rods extending substantially through a height of the buoyant core component (Element 40);a first bracing mount fixed to a top of the rod assembly for lifting the buoyant core component (Element 42); and 1a second bracing mount fixed at a bottom of the rod assembly for mooring of the buoy (Element 41).
Claim 9 is a combination of Claims 1 and 2 and is rejected on the same grounds.
Regarding Claim 10, Campbell discloses the buoy of claim 9, wherein the pair of tie bar assemblies provide a lifting point towards a top (Element 42) portion of the buoy and a mooring point towards a bottom portion (Element 41) of the buoy.
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No.12233991. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims contain all the limitation of the present invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW POLAY whose telephone number is (408)918-9746. The examiner can normally be reached M-F 9-5 Pacific.
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/ANDREW POLAY/Primary Examiner, Art Unit 3615 26 Sept 2026
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