Ex. PGS 1048
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark (mice
`Address: COMMISSIONER FOR PATENTS
`P.0. Box‘l45Q _
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`Alexandria, Vugmm 22313-I450
`www.usp1o.gov
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`APPLICATION NO.
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`FTLING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`I 1/455,042
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`06/I6/2006
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`Oyvind Hillesund
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`l4.0l23-PCT-US-CONT4
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`9:23
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`WESTERNGECO L.L.C.
`10001 RICHMOND AVENUE
`(P.O. BOX 2469, HOUSTON, Tx 77252-2469, U.S.A.)
`HOUSTON, TX 77042
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`SOTELO, Jesus D
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`3617
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`DATE MAILEDI 08/I8/2006
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PTO—90C (Rev. 10/03)
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`Ex. PGS 1 048
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`Ex. PGS 1048
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`Office Action Summary
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`Application No.
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`Applicant(s)
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`11/455,042
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`Examine,
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`Jesus D. Sotelo
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`HILLESUND ET AL.
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`An Unit
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`3617 -
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`- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE § MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event. however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`Ii NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
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`- Failure to reply within the set or extended period for reply will, by statute. cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months rafter the mailing date of this communication. even if timely filed. may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)l:J Responsive to communication(s) filed on __
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`2a)l:] This action is FINAL.
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`2b)® This action is non-final.
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`3)l:I Since this application is in condition for allowance except for fonnal matters, prosecution as to the merits is
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`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 0.03. 213.
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`Disposition of Claims
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`4)E§ C|aim(s)1;;_t_4_ is/are pending in the application.
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`4a) Of the above c|aim(s) __ is/are withdrawn from consideration.
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`5)l:] Claim(s) __ is/are allowed.
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`6)® Claim(s) 1 2 18 and 19 is/are rejected.
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`7)lZ] Claim(s) 3-17 and 20-34 is/are objected to.
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`8)l:] Claim(s)
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`are subject to restriction and/or election requirement.
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`Application Papers
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`9)I:J The specification is objected to by the Examiner.
`10)E The drawing(s) filed on 16 June 2006 is/are: a)® accepted or b)[:] objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required ifthe drawing(s) is objected to. See 37 CFR 1.121(d).
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`11)[:] The oath or declaration is objected to by the Examiner. Note the attached Office Action orfonn PTO-152.
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`Priority under 35 U.S.C. § 119
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`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)|Z All
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`b)l:] Some * c)C] None of:
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`Certified copies of the priority documents have been received.
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`Certified copies of the priority documents have been received in Application No. 09/787 723.
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`Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the lntemational Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachmentisl
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`4) [3 Interview Summary (PTO-413)
`Paper N°(3)/M3" 039- _._:
`5) Cl Notice of informal Patent Application (PTO-152)
`rs) [:1 Other:
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`Notice of References Cited (PTO-892)
`1)
`2) El Notice of Draftspersons Patent Drawing Review (PTO-948)
`3) [:1 Information Disclosure Statement(s) (PTO-1449 or PTO/SB/O8)
`Paper No(s)/Mail Date
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`US. Patent and Trademark Office
`PTOL«326 (Rev. 7-05)
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`Office Action Summary
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`Part of Paper No./Ma‘!
`ate 00 0816
`Ex. Pet 1 54
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`Ex. PGS 1048
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`Application/Control Number: 11/455,042
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`Art Unit: 3617
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`Page 2
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`DETAILED ACTION
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`Claims 1-34 are in the application.
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`The cross-reference to related applications should be updated to reflect the present status
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`1.
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`2.
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`of the parent and related applications.
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
`3.
`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 obviousness—type 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 43 8, 164 USPQ 619 (CCPA 1970); and In re 7710ringt0n, 418 F.2d 528, 163
`USPQ 644 (CCPA 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(0) or 1.321(d) may
`be used to overcome an actual or provisional rejection based on a nonstatutory double patenting
`ground provided the conflicting application or patent either is shown to be commonly owned
`with this application, or claims an invention made as a result of activities undertaken within the
`scope of a joint research agreement.
`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR
`3.73(b).
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`4.
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`Claims 1, 2, 18 and 19 are rejected on the ground of nonstatutory double patenting over
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`claim 10 of U. S. Patent No. 6,932,017 since the claims, if allowed, would improperly extend
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`the "right to exclude" already granted in the patent.
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`The subject matter claimed in the instant application is fully disclosed in the patent and is
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`covered by the patent since the patent and the application are claiming common subject matter,
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`EX. PGS 1048
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`Ex. PGS 1048
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`Application/Control Number: 11/455,042
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`Art Unit: 3617
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`Page 3
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`as follows: “control system configured to use a control mode selected from a feather angle mode,
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`a turn control mode, and a streamer separation mode” generally as in claims 7 and 8 of the
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`patent.
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`Furthermore, there is no apparent reason why applicant was prevented from presenting claims
`corresponding to those of the instant application during prosecution of the application which
`matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See
`also MPEP § 804.
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`Allowable Subject Matter
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`5.
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`Claims 3-17 and 20-34 are objected to as being dependent upon a rejected base claim, but
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`would be allowable if rewritten in independent form including all of the limitations of the base
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`claim and any intervening claims.
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`Conclusion
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`6.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure. Dolengowski (4,890,568) discloses the use of feathering control. Nielsen et al
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`(5,913,280) and Walker et al (5,973,995) disclose the problems with separation of streamers.
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`7.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Jesus D. Sotelo whose telephone number is 571-272-6686. The
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`examiner can normally be reached on Mon. —- Fri. 5:30 AM — 2:00 PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Mr. Samuel J. Morano can be reached on 571-272-6684. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
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`EX. PGS 1048
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`Ex. PGS 1048
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`Application/Control Number: 11/455,042
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`Art Unit: 3617
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`Page 4
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only, For more information about the.PAIR
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`system, see http://pair-directuspto. gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`Primary Examiner
`Art unit 3617
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`KNX 03D69 ©
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`jds
`August 16, 2006
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`EX. PGS 1048
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`Ex. PGS 1048
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`Application/Control No.
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`W455-042
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`Examiner
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`Jesfls D. Sotelo
`U.S. PATENT DOCUMENTS
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`Applicant(s)/Patent Under
`Reexamination
`HILLESUND ET AL.
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`Art Umt
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`3617
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`Page 1 °”
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`114/246
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`l E
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`E E
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`Notice of References Cited
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`Document Number
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`Date
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`US-4,890,568
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`01-1990
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`Dolengowski, George A
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`US-6,932,017
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`08-2005
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`Hillesund et al.
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`114/244
`—
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`FOREIGN PATENT DOCUMENTS
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`Date
`MM-YYYY
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`C°u""y
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`Classification
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`NON-PATENT DOCUMENTS
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`Document Number
`Country Code-Number-Kind Code
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`‘A copy at this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
`US. Patent and Trademark Office
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`PTO-892 (Rev. 01»2001)
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`Notice of References Cited
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`Part of Paper No. 20060816
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`EX. PGS 1048
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`Ex. PGS 1048