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 .
Information Disclosure Statement
The information disclosure statement filed 12/08/2025 fails to comply with 37 CFR 1.98(a)(1), which requires the following: (1) a list of all patents, publications, applications, or other information submitted for consideration by the Office; (2) U.S. patents and U.S. patent application publications listed in a section separately from citations of other documents; (3) the application number of the application in which the information disclosure statement is being submitted on each page of the list; (4) a column that provides a blank space next to each document to be considered, for the examiner’s initials; and (5) a heading that clearly indicates that the list is an information disclosure statement. Notably, a copy of WO-2017151689 was provided but not cited in the IDS. This might be a typographical error that applicant should correct in their response. The information disclosure statement has been placed in the application file, but the omitted reference has not been considered.
The information disclosure statement filed 12/08/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the references without a corresponding copy provided therein have not been considered. WO-2017015689 is cited in the IDS but not provided; also the applicant/date of this reference do not match what is listed in the IDS (this might be a typographical error that applicant should correct?). Additionally, no copy of WO-20220109575 was provided.
Election/Restrictions
Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/13/2026.
Applicant’s election without traverse of invention I (claims 1-8) and species 1a in the reply filed on 08/13/2026 is acknowledged.
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-8 of U.S. Patent No. 12409953 (henceforth 953. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same matter.
Regarding claim 1, 953 claims a connection system, comprising: one or more booms, the one or more booms having a stored configuration, a deployed configuration, and a closed configuration, wherein each of the one or more booms comprises two inflatable cavities, the two inflatable cavities separately inflatable (953, claim 1, one or more booms with stored, deployed, and closed configurations; booms have two separately inflatable cavities).
Regarding claim 2, 953 claims the connection system of claim 1, further comprising a capture surface coupled to the one or more booms (953, claim 8).
Regarding claim 3, 953 claims the connection system of claim 1, where a first of the two inflatable cavities defines a first length, and the second of the two inflatable cavities defines a second length (953, claim 3).
Regarding claim 4, 953 claims the connection system of claim 3, wherein the second length is longer than the first length (953, claim 4).
Regarding claim 5, 953 claims the connection system of claim 4, wherein terminal end regions of the two inflatable cavities are coupled and the two inflatable cavities are coupled together periodically along the first length (953, claim 5).
Regarding claim 6, 953 claims the connection system of claim 5, further comprising a hub (953, claim 6).
Regarding claim 7, 953 claims the connection system of claim 6, wherein the hub is inflatable (953, claim 7).
Regarding claim 8, 953 claims the connection system of claim 7, wherein the capture surface comprises a mesh (953, claim 8).
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.
(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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ruschulte (US 20140030455 A1).
Regarding claim 1, Ruschulte (US 20140030455 A1) discloses a connection system, comprising: one or more booms (Ruschulte, figure 1, item 1), the one or more booms having a stored configuration, a deployed configuration, and a closed configuration, wherein each of the one or more booms comprises two inflatable cavities (Ruschulte, figure 1, item 11 and 21), the two inflatable cavities separately inflatable (Ruschulte, figure 1-3, item 11 and 21, different cavities are inflated separately from each other).
Regarding claim 2, Ruschulte discloses the connection system of claim 1, further comprising a capture surface coupled to the one or more booms (Ruschulte, figure 1, item 12 and III, inner layer capable of being used as a capture surface).
Regarding claim 3, Ruschulte discloses the connection system of claim 1, where a first of the two inflatable cavities defines a first length, and the second of the two inflatable cavities defines a second length (Ruschulte, figure 1, item 11 and 21, first and second cavities have different lengths).
Regarding claim 4, Ruschulte discloses the connection system of claim 3, wherein the second length is longer than the first length (Ruschulte, figure 1, item 11 and 21, second cavities longer than first cavity).
Regarding claim 5, Ruschulte discloses the connection system of claim 4, wherein terminal end regions of the two inflatable cavities are coupled and the two inflatable cavities are coupled together periodically along the first length (Ruschulte, figure 1, item 4, first and second cavities are coupled together at ends and along intermediate spaces along cavity lengths).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnet (US 6568640 B1) in view of Ruschulte (US 20140030455 A1).
Regarding claim 1, Barnet (US 6568640 B1) discloses a connection system, comprising: one or more booms (Barnet , figure 1, item 24), the one or more booms having a stored configuration, a deployed configuration, and a closed configuration, (Barnet , figures 1-2, 5, and 7-8, item 43, boom capable of moving between stowed, deployed, and close states) wherein each of the one or more booms comprises one inflatable cavity (Barnet , figure 1, item 24, tube with cavity)
except:
wherein each of the one or more booms comprises two inflatable cavities, the two inflatable cavities separately inflatable.
Ruschulte (US 20140030455 A1) teaches a one or more booms comprises two inflatable cavities (Ruschulte, figure 1, item 11 and 21), where the two inflatable cavities separately inflatable (Ruschulte, figure 1-3, item 11 and 21, different cavities are inflated separately from each other).
Barnet and Ruschulte are both considered analogous art as they are both in the same field of inflatable structure. It would have been obvious before the effective filing date of the application for one of ordinary skill in the art to modify the invention of Barnet with the second, separately inflatable cavity of Ruschulte with a reasonable expectation of success in order to allow the boom to be articulated based on selective inflation of the cavities without requiring additional brace structure (Ruschulte, ¶6).
Regarding claim 2, Barnet as modified by Ruschulte teaches the connection system of claim 1, further comprising a capture surface coupled to the one or more booms (Barnet, figure 1, item 40, web can function as a capture surface).
Regarding claim 3, Barnet as modified by Ruschulte teaches the connection system of claim 1, where a first of the two inflatable cavities defines a first length, and the second of the two inflatable cavities defines a second length (Ruschulte, figure 1, item 11 and 21, first and second cavities have different lengths).
Regarding claim 4, Barnet as modified by Ruschulte teaches the connection system of claim 3, wherein the second length is longer than the first length (Ruschulte, figure 1, item 11 and 21, second cavities longer than first cavity).
Regarding claim 5, Barnet as modified by Ruschulte teaches the connection system of claim 4, wherein terminal end regions of the two inflatable cavities are coupled and the two inflatable cavities are coupled together periodically along the first length (Ruschulte, figure 1, item 4, first and second cavities are coupled together at ends and along intermediate spaces along cavity lengths).
Regarding claim 6, Barnet as modified by Ruschulte teaches the connection system of claim 5, further comprising a hub (Barnet, figure 2, item 44).
Regarding claim 7, Barnet as modified by Ruschulte teaches the connection system of claim 6, wherein the hub is inflatable (Barnet, figure 2, item 44, col 3 lines 17-20).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnet (US 6568640 B1) in view of Ruschulte (US 20140030455 A1) as applied to claim 7 above, and further in view of Stone (US 20120097799 A1).
Regarding claim 8, Barnet as modified by Ruschulte teaches the connection system of claim 7, except:
wherein the capture surface comprises a mesh.
Stone (US 20120097799 A1) teaches a capture surface comprising a mesh (Stone, claim 2, mesh net for capturing orbital debris).
Barnet as modified by Ruschulte and Stone are both considered analogous art as they are both in the same field of inflatable structure. It would have been obvious before the effective filing date of the application for one of ordinary skill in the art to modify the capture surface of Barnet as modified by Ruschulte with the mesh capture surface of Stone with a reasonable expectation of success in order to reduce the weight of the capture surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN ANDREW YANKEY whose telephone number is (571)272-9979. The examiner can normally be reached Monday-Thursday 8:30 - 5:00.
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, Joshua Michener can be reached at (571) 272-1467. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN ANDREW YANKEY/Examiner, Art Unit 3642 /JOSHUA J MICHENER/Supervisory Patent Examiner, Art Unit 3642
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