Candidate arguments for counsel, ranked strongest-first — brainstorming inputs for counsel to evaluate, not a drafted response.
a hull that is shaped to reduce hydrodynamic drag while the multiple floating structures are trailed on a water surface behind the marine vessel ... the multiple floating structures are longitudinally positioned and support the solar panel section while trailing the plurality of solar panel sections about the water surface
Howlin is the sole reference for this §102 rejection and is fully grounded, so its four corners define what it discloses. Howlin describes a floating photovoltaic system that is anchored by a passive single-point mooring buoy so that the array 'weathervanes' about the buoy to shed environmental loads (abstract; summary), i.e., a stationary moored installation on a body of water. As OA2 confirms, the retrieved text 'does not describe a marine vessel, towing, or a structure trailed behind a vessel.' Counsel may weigh whether Howlin therefore fails to disclose both the hull 'shaped to reduce hydrodynamic drag while ... trailed on a water surface behind the marine vessel' and the floating structures 'longitudinally positioned and support the solar panel section while trailing' — limitations the examiner supplies only through a 'structurally capable' rationale rather than any express Howlin disclosure. Because a §102 rejection requires a single reference to disclose every limitation arranged as claimed (MPEP § 2131), the absence of any trailing-behind-a-vessel disclosure is a candidate dispositive defect for counsel to press.
- —Howlin abstract: 'a mooring system (30) comprises a single point mooring buoy (32) ... tethered to at least one anchor point (36).'
- —Howlin description: 'enables the structure to rotate (for example, like a weathervane) to minimize or shed environmental loads (including wind, wave, and current).'
- —OA2 (Howlin): 'It is a stationary, moored installation for a body of water; the available text does not describe a marine vessel, towing, or a structure trailed behind a vessel.'
- —Office action claim 1 mapping relies on the hull being 'structurally capable of reducing hydrodynamic drag while the cited multiple floating structures 10 are trailed on a water surface behind the marine vessel.'
MPEP § 2131 — anticipation requires a single reference to disclose every element arranged as in the claim; see MPEP § 2114 on functional/'capability' limitations in apparatus claims
⚠ Risk The examiner will likely reiterate the MPEP § 2114 position that Howlin's hull is 'structurally capable' of being trailed and that 'behind the marine vessel' is non-limiting intended use. Counsel should be prepared to tie the trailing language to a concrete structural difference in hull shape (see rank 4). Prosecution-history-estoppel caution: characterizing the invention as requiring towing behind a moving vessel narrows claim scope in the file wrapper and may limit later coverage of moored or self-propelled embodiments.
Likely examiner response◐ survives — moderate
The examiner would invoke the capability doctrine (MPEP § 2114) and characterize the phrase 'shaped to reduce hydrodynamic drag while the multiple floating structures are trailed on a water surface behind the marine vessel' as an intended-use / functional recitation rather than a positively recited structural difference. On that reading the examiner would maintain that Howlin's flotation unit (100) with its base (5) and 'a pair of twin horizontal pipe elements' (10) is structurally capable of being trailed, so the anticipation stands under a BRI that treats the trailing relationship as a use rather than a structure. Independently and more dangerously, the examiner has record material to reissue if the §102 falls: OA2 records that Rikoski 'depicts a "towed array solar panel assembly" (Fig. 10)' and that Jayaram teaches a 'reel assembly ... mounted at the stern and the continuous strip is deployed behind the ship' — i.e., express trailing-behind-a-vessel disclosures the examiner could deploy under §103.
How to adjust As a single-reference §102 attack on Howlin alone the missing-element point is genuinely well-grounded (OA2 confirms Howlin 'does not describe a marine vessel, towing, or a structure trailed behind a vessel'), so it holds against the pure capability comeback IF counsel can anchor the trailing/drag-reducing hull as a structural requirement (see rank 4) rather than intended use. The live exposure is not the current rejection but reissue: Jayaram (stern deployment behind ship) and Rikoski Fig. 10 (towed array) are already in the record. For counsel to weigh whether to press the §102 to force a cleaner record while simultaneously preparing an amendment that ties the hull shape to a specific towed-drag geometry those references do not show, so a §103 reissue over Jayaram/Rikoski does not simply absorb the amended claim.
a hull that is shaped to reduce hydrodynamic drag while multiple floating structures are trailed on a water surface behind the marine vessel ... the multiple floating structures are longitudinally positioned and support the solar panel sections while trailing the solar panel sections about the water surface
The §103 rejection of independent claim 5 asserts only Howlin and Bersano, both fully grounded, and the examiner cited Bersano solely for wiring interconnection. As shown at rank 1, Howlin discloses a moored weathervaning installation, not a trailed structure. Per OA2, Bersano describes 'an individual floating solar panel' and 'a solar installation formed by assembling multiple such panels juxtaposed to one another as a mesh/grid' — a juxtaposed grid installation, not a structure trailed behind a marine vessel. Counsel may weigh whether the combination, as articulated, supplies every limitation of claim 5, given that neither asserted reference is shown to teach the trailing-behind-a-vessel feature and the examiner offered no reasoning bridging that gap (MPEP § 2143). Because claims 6-8 depend from claim 5, the same asserted gap flows to them.
- —OA2 (Bersano): 'a solar installation formed by assembling multiple such panels juxtaposed to one another as a mesh/grid.'
- —Bersano claim 12: panels 'juxtaposés les uns aux autres en formant un maillage' (juxtaposed to one another forming a mesh).
- —OA1 rejection 6: examiner cites Bersano only 'because it would have provided for interconnection of the multiple solar panel sections in series.'
- —OA2 (Howlin): 'the available text does not describe a marine vessel, towing, or a structure trailed behind a vessel.'
MPEP § 2143 — a §103 combination must supply every claim limitation with an articulated rational underpinning; MPEP § 2145 — attacking what the combination as a whole actually produces
⚠ Risk The examiner may again invoke the 'structurally capable' rationale for Howlin's hull and treat 'behind the marine vessel' as intended use, arguing the Bersano combination need not reach that limitation because Howlin allegedly already does. Prosecution-history-estoppel caution: emphasizing the trailed-behind-a-vessel distinction narrows scope in the file wrapper.
Likely examiner response◐ survives — moderate
The examiner would first apply the same capability reading (MPEP § 2114) urged against rank 1, and would add that non-obviousness cannot be shown by attacking Howlin and Bersano individually where the rejection rests on their combination (MPEP § 2145). The stronger comeback is a new combination: Jayaram is in the record and, per OA2, teaches the continuous solar strip 'deployed behind the ship' from a stern reel — a direct trailing-behind-a-vessel teaching. An examiner could re-ground claim 5 on Howlin (or Bersano) in view of Jayaram to supply exactly the trailing limitation counsel says is missing, articulating a §2143 rationale (applying a known trailing/deployment technique to a floating-solar array for predictable results).
How to adjust Correct as to the rejection AS WRITTEN — the examiner cited Bersano only for wiring interconnection and neither Howlin nor Bersano is shown to teach trailing, so the gap is real on the present record. But the argument is exposed to a Jayaram-based reissue. For counsel to weigh amending claim 5's independent limitation to a hull-shape/geometry distinction that Jayaram's flexible stern-deployed strip and Howlin's masted vertical 'sails' both lack, rather than resting on the bare absence of a trailing teaching that Jayaram can supply.
Strategy check: re-ranked from #2 — The pure trailing-gap argument currently ranked #3 is undercut for claim 16 because OA2 records that Rikoski — already in this very combination — 'depicts a "towed array solar panel assembly" (Fig. 10),' giving the examiner an in-combination route to the trailing limitation; the construction attack on the drag-reducing-hull structure (rank 4) is not cured by Rikoski's flexible rolled panels and is therefore the more survivable base-claim lever for these claims.
a hull that is shaped to reduce hydrodynamic drag while the multiple floating structures are trailed on a water surface behind the marine vessel
The examiner maps Howlin's base/buoyancy elements to the claimed hull on the theory that the shape is 'structurally capable' of reducing drag while trailed compared to some other shape (OA1 rejection 4). Counsel may weigh whether the limitation 'a hull that is shaped to reduce hydrodynamic drag while ... trailed' recites a structural shape requirement rather than mere capability — Howlin's structure is a base carrying vertical/near-vertical 'sails' on masts with 'a pair of twin horizontal pipe elements' for buoyancy, a geometry that Howlin optimizes to weathervane and shed loads at anchor, not a hull shaped for low drag under tow. Under MPEP § 2114, functional language still requires the prior-art structure to be capable of the recited function, and counsel can argue Howlin's weathervane-optimized geometry is not the claimed drag-reducing hull shape. This construction dispute is the doctrinal hinge that supports the missing-element arguments at ranks 1-3.
- —Howlin description: buoyancy element shown as 'a pair of twin horizontal pipe elements'; PV panels are 'vertical or near-vertical' mounted on masts.
- —OA1 rejection 4: the hull is cited 'because the cited hull has a shape structurally capable of reducing hydrodynamic drag ... compared to another shape which provides more hydrodynamic drag.'
- —Howlin summary: the vertical-sail/weathervane arrangement is designed 'to minimize or shed environmental loads.'
MPEP § 2114 — functional and 'capability' language in apparatus claims; the prior-art structure must actually be capable of the recited function and structural shape limitations are given weight
⚠ Risk The examiner may respond that 'shaped to reduce hydrodynamic drag' and 'trailed ... behind the marine vessel' are statements of intended use that do not structurally distinguish, and that any floating hull inherently has some drag-reducing shape. Counsel should be ready to identify the specific hull geometry in the specification that differs structurally. Prosecution-history-estoppel caution: arguing a narrow hull-shape construction narrows claim scope in the file wrapper.
Likely examiner response◐ survives — moderate
The examiner would press MPEP § 2114 in the opposite direction: 'shaped to reduce hydrodynamic drag while ... trailed' is functional language, and under BRI the prior-art structure need only be capable of the recited function. The examiner would argue Howlin's base (5) and twin horizontal buoyancy pipes (10) constitute a structure capable of reduced-drag movement through water, so the functional 'shaped to reduce drag' language does not distinguish. The examiner may further note the claim does not recite any specific hull dimension, contour, or drag-coefficient limitation that Howlin's structure demonstrably lacks — putting the burden on applicant to identify the structural shape difference.
How to adjust This is the doctrinal hinge on which ranks 1–3 turn, so it should rise in priority. To shore it up, counsel should contrast concrete structural facts on the record — Howlin's geometry carries vertical/near-vertical 'sails' (2) on masts (3) optimized to weathervane and shed loads (OA2), which is a high-profile, load-catching form, versus a low-drag hull shape for towing — arguing the shape is a positively recited structural requirement, not mere capability. If the claim as written does not tie the shape to a definite structural metric, this is a strong signal to AMEND toward a specific drag-reducing geometry so the capability comeback loses traction.
a storage system, wherein the multiple floating structures and the solar panel section are configured to be stored in the storage system in or on the marine vessel
The examiner's stated reason to combine is that adding Rikoski's storage system to Howlin 'would have allowed for the apparatus to be stored' (OA1 rejection 5). Counsel may weigh whether this is an articulated rationale with a rational underpinning or a restatement of the feature's function — i.e., adding a storage system so it can store — which MPEP § 2143.01 identifies as insufficient. The point is sharpened because Howlin is a fixed, permanently-moored installation with no disclosed need to be retracted, stored aboard, or removed from the water, so the examiner has not explained why a PHOSITA would have equipped Howlin's anchored weathervaning array with a vessel-mounted retraction/storage housing.
- —OA1 rejection 5: the modification is justified 'because it would have allowed for the apparatus to be stored.'
- —OA2 (Howlin): 'a stationary, moored installation for a body of water.'
- —OA2 (Rikoski): Rikoski's storage/retraction is directed to a marine vehicle whose assembly is 'extended and retracted.'
MPEP § 2143.01 — the reasoning to combine must be articulated with a rational underpinning, not a conclusory assertion; MPEP § 2143 for the KSR rationales
Risk The examiner can readily supplement with a design-incentive rationale (protecting equipment in adverse weather, transport), which Rikoski itself supplies, so this argument may be curable and is best paired with the stronger trailing-limitation arguments rather than relied on alone.
Likely examiner response◐ survives — moderate
The examiner would answer that Rikoski supplies the rational underpinning the argument says is missing: per OA2 Rikoski expressly teaches storing a marine-vehicle solar assembly in a housing and a controller/motor that retracts it, so combining that known storage/retraction with the array is an application of a known technique for a predictable result (MPEP § 2143(A)/(C)). The examiner would add that once claim 1 is read as a vessel-trailed system (as the claim requires), storing the array aboard the vessel is an obvious convenience, and that the 'permanently moored, no need to store' point improperly imports Howlin's mooring into a claim that recites a marine vessel and trailing.
How to adjust The conclusory-rationale point has some force because the stated reason ('would have allowed for the apparatus to be stored') largely restates the feature's function (MPEP § 2143.01), but Rikoski's express storage/retraction teaching gives the examiner readily available rational underpinning. For counsel to weigh pressing this only as a secondary, motivation-focused point, and to recognize it is weaker than attacking the base-claim trailing/construction issues; if the trailing limitation is amended and defended, the storage combination may need to be re-argued on its own terms.
the multiple floating structures are ... trailed on a water surface behind the marine vessel
Howlin's entire design premise is a passive single-point mooring that lets the array rotate 'like a weathervane' to shed wind, wave, and current loads (summary; description), and Howlin criticizes fixed/non-weathervaning floating-solar arrangements as prone to swamping and high loads (background discussion of US2016141437A1). Counsel may weigh whether reconfiguring Howlin so its structures are trailed behind a moving vessel would change how Howlin fundamentally functions — a moored array that passively aligns to environmental loads is not the same device as one towed under directed motion — implicating MPEP § 2143.01 (a modification cannot change the reference's principle of operation) and the teaching-away doctrine of MPEP § 2145 / § 2141.02. This reinforces both the §102 capability dispute (Howlin's structure is optimized for a different function) and any §103 combination that would need to reach the trailing limitation.
- —Howlin summary: mooring 'enables the structure to rotate (for example, like a weathervane) to minimize or shed environmental loads.'
- —Howlin background: fixed vertical panels 'will attract large wind and wave loads' and there is 'a very high likelihood that the floating PV array will be swamped.'
- —OA2 (Howlin): 'a stationary, moored installation for a body of water.'
MPEP § 2143.01 — a modification that changes the principle of operation of the reference is unsupported; MPEP § 2145 / § 2141.02 — teaching away and considering the reference in its entirety
⚠ Risk For the §102 claims 1-4 there is no combination to attack, so this doctrine operates only to reinforce that Howlin's structure is not the claimed trailed structure; the examiner may say Howlin's structure could still physically be towed. For the §103 claims, the examiner may respond that the combinations (Rikoski, Bersano) do not require towing Howlin's moored array at all. Prosecution-history-estoppel caution: stressing the moored-vs-trailed distinction narrows scope.
Likely examiner response⚠ fragile — the comeback likely defeats it
The dispositive comeback is doctrinal: the primary rejection of claim 1 is §102 anticipation, and teaching-away / change-of-principle-of-operation (MPEP §§ 2143.01, 2145, 2141.02) do not defeat anticipation — a reference can anticipate even if it teaches away from the claimed use. So this argument does not reach the §102 rejection at all. As to the §103 claims, the examiner never proposed physically reconfiguring Howlin into a towed array; the rejection rests on capability, and to the extent trailing is added it can come from Jayaram or Rikoski Fig. 10 (record references that independently teach trailing), so no modification of Howlin's weathervane principle is required and the 'changes principle of operation' objection misfires.
How to adjust Do not deploy principle-of-operation or teaching-away against the §102 claim-1 rejection — it is the wrong lever for anticipation and invites the examiner to correct the record. Reserve any teaching-away/principle-of-operation argument for a §103 combination that actually proposes modifying Howlin, and pair it with the point that bringing in a separate trailing reference (Jayaram/Rikoski) shifts the analysis to motivation-to-combine and reasonable-expectation-of-success (MPEP §§ 2143, 2143.02) rather than modification of Howlin's core function.
the multiple floating structures ... trailed on a water surface behind the marine vessel (incorporated from claim 1) / a storage system ... a retraction mechanism to retract the trailing platform of the multiple solar panels from the water
Claims 16 and 17 depend from claim 1 and therefore incorporate the trailing-behind-a-vessel limitations that, per rank 1, Howlin is not shown to disclose. The examiner added Rikoski only for the storage/housing/retraction feature and expressly rests the base-claim analysis on Howlin's anticipation of claim 1. Because Rikoski is cited only to supply the storage system and not to remedy the trailing limitation, counsel may weigh whether the base-claim gap persists through the dependent claims regardless of the Rikoski combination (MPEP § 2143). Rikoski is fully grounded and does teach housing storage and a retraction mechanism (¶[0008]-[0009]), so the storage feature itself is a weaker target than the unremedied trailing limitation carried down from claim 1.
- —OA1 rejection 5: 'Howlin anticipates claim 1 as discussed above but does not disclose a storage system with a housing and retraction mechanism.'
- —OA2 (Rikoski): 'The available text expressly teaches storage in a housing, solar panels that are ''rolled'' or ''stacked'' when retracted, and a controller/motor that positions the assembly between extended and retracted positions.'
- —OA2 (Howlin): 'the available text does not describe a marine vessel, towing, or a structure trailed behind a vessel.'
MPEP § 2143 — a §103 combination must account for every limitation, including those carried down from the independent claim
Risk The examiner will point to the same 'structurally capable' rationale for the base claim; the strength of this argument rises or falls with the rank 1 / rank 4 dispute over the trailing limitation. Note also the independent §112(b) antecedent-basis defects in claim 17 (see rank 8), which counsel will likely need to resolve by amendment in any event.
Likely examiner response⚠ fragile — the comeback likely defeats it
This argument is undercut by the record itself: OA2 states Rikoski 'depicts a "towed array solar panel assembly" (Fig. 10).' The argument's premise — that Rikoski was cited 'only' for storage and does not remedy the trailing gap — invites the examiner to point to Rikoski Fig. 10 to supply the very trailing-behind-a-vessel limitation carried down from claim 1, and to note Rikoski's express marine-vehicle context. The examiner could thus maintain (or reissue) the §103 by expanding Rikoski's role beyond storage to also teach the towed array, closing the base-claim gap through the reference already in the combination.
How to adjust The 'gap carried down from claim 1' framing does not hold where the added reference independently depicts a towed array (Rikoski Fig. 10). Steer counsel away from resting claims 16–17 on the unremedied-trailing theory and toward (a) the specific storage/retraction structure distinction and (b) an amendment to the base-claim hull geometry that neither Howlin nor Rikoski's towed array is shown to disclose. Confirm what Rikoski Fig. 10 actually shows against the drawing before relying on or distinguishing it.
wherein the multiple solar panel sections are separate independently floating sections interconnected via wiring to one another
The examiner justifies importing Bersano's wiring into Howlin 'because it would have provided for interconnection of the multiple solar panel sections in series' (OA1 rejection 6). Counsel may weigh whether this reasoning merely names the desired result rather than explaining why a PHOSITA would modify Howlin — which already contemplates electrical connection of its own array — with Bersano's specific inter-panel wiring, per MPEP § 2143.01. This argument is secondary to the trailing-limitation gap (rank 2), which is not addressed by Bersano at all, but it may support the position that the combination as articulated lacks a sufficient rational underpinning.
- —OA1 rejection 6: motivation stated as 'because it would have provided for interconnection of the multiple solar panel sections in series.'
- —Bersano claim 11: panels may include 'au moins un connecteur électrique (11-711), étanche' for electrically connecting the photovoltaic cells.
- —OA2 (Bersano): Bersano's panels are secured together as a juxtaposed mesh/grid, not trailed behind a vessel.
MPEP § 2143.01 — articulated reasoning with rational underpinning required; MPEP § 2143 rationales (A)/(G)
Risk Series interconnection of PV panels is well known and the examiner can bolster the rationale (predictable results, known technique), so this is a weaker, likely-curable point. It does not reach the independent-claim trailing limitation and should not displace the rank 2 argument.
8§112(b) antecedent-basis defects — resolvable by amendment, not by attacking the pairing
Definiteness rebuttalClaim 1Claim 5Claim 17Rebuts: §112(b) rejection of claims 1, 2, 3, 4, 5, 6, 7, 8, 16, 17
the solar panel section (claims 1 and 5); the trailing platform / the multiple solar panels (claim 17)
For claims 1 and 5, counsel may weigh whether, under broadest reasonable interpretation, 'the solar panel section' is reasonably certain as referring to each of the previously recited plurality/multiple solar panel sections, which would meet the In re Packard / MPEP § 2173.02 standard; however, the cleanest path is likely an amendment conforming the singular/plural recitations, as the examiner suggested for the related claim objections. For claim 17, 'the trailing platform' and 'the multiple solar panels' have no antecedent in claims 1 or 16 from which claim 17 depends, so a definiteness argument is fragile and an amendment supplying antecedent basis is the more reliable route. Counsel should note that the simultaneous §112(b) and prior-art rejections are permissible compact-prosecution practice (MPEP § 2173.06(II)), so the response should address the antecedent-basis issues on their merits rather than arguing the pairing is improper.
- —OA1 rejection 3: claim 1 'the solar panel section' lacks clear antecedent given 'a plurality of solar panel sections'; same for claim 5.
- —OA1 rejection 3: claim 17 'the trailing platform' and 'the multiple solar panels' have no antecedent basis.
- —Office action ¶ (claim objections) suggests amending 'the solar panel sections' to 'the multiple solar panel sections.'
MPEP § 2173.02 / In re Packard / Ex parte Miyazaki — examination definiteness standard; MPEP § 2173.06(II) — simultaneous §112(b) and prior-art rejections are proper compact prosecution
⚠ Risk The BRI/definiteness argument for claims 1 and 5 is weak because the examiner has identified a genuine plural-antecedent ambiguity; for claim 17 there is simply no antecedent, so an amendment is effectively required. Do NOT argue the §112(b) and §102/§103 rejections are internally inconsistent. Prosecution-history-estoppel caution: any clarifying amendment fixes the meaning of 'solar panel section' and 'trailing platform' in the file wrapper.