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 .
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 1-26 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 regards to Claims 1-5 and 21-23, it is unclear whether there is one image, or two images. Claim 1, line 11 recites “an image”, but lines 13 and 14 recite “the image of the first material” and “ the image of the second material”. Claims 2-5 and 21-23 offer similar confusion, with phrases such as “the image”, “a first image”, and “a second image”.
In regards to Claims 2, 6-8, 11, 21-23, and 26, the phrase “the cord” lacks proper antecedent basis.
In regards to Claims 19 and 22, the phrase “at least one of” is unclear. How can multiple ranges be chosen when their numbers conflict?
In regards to Claims 24 and 25, the phrase “the visual presence” lacks proper antecedent basis.
The remaining claims inherit the rejection by dependency.
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 1-11 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 12,284,955.
Although the claims at issue are not identical, they are not patentably distinct from each other because both teach the same seaweed cultivation system, with the claims aligned as follows.
Claim 1 of the instant application aligns with Claim 1 of the ‘955 patent. The phrase “are viewable at a microscopic level to provide an image” is interpreted as the substrate of the ‘955 patent is capable of being viewable at a microscopic level and capable of providing an image.
Claims 2-6 of the instant application are, similarly to Claim 1 above, the result of being viewable at a microscopic level and providing an image, which the ‘955 patent is capable of.
Claim 7 of the instant application aligns with Claim 1 of the ‘955 patent discussing midpoint.
Claim 8 of the instant application aligns with Claim 1 of the ‘955 patent discussing navigating around.
Claim 9 of the instant application aligns with Claim 1 of the ‘955 patent discussing navigating around.
Claims 10 and 11 of the instant application are obvious, as the path of the ‘955 patent, starting at the surface, would have a terminal point and depth from the surface.
Claim 26 of the instant application aligns with Claim 10 of the ‘955 patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shaun R Hurley whose telephone number is (571)272-4986. The examiner can normally be reached Monday thru Friday, 8:00am - 3:00pm.
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/SHAUN R HURLEY/Primary Examiner, Art Unit 3732