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; and ... 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 fully grounded and, on its own text, describes a floating photovoltaic array that is MOORED to a single-point mooring buoy and passively 'weathervanes' about that fixed point — not an array trailed on the water behind a moving marine vessel (Howlin Abstract; claim 1 reciting a 'mooring system (30) comprises a single point mooring buoy (32) ... tethered to at least one anchor point (36)'). Per OA2, Howlin's available text 'does not describe a marine vessel that tows or trails the array, nor a system that is trailed on a water surface behind the marine vessel.' The examiner supplies the trailed-behind-a-vessel configuration only through an MPEP § 2114 'structurally capable' inference, not through any affirmative Howlin disclosure, and counsel should weigh whether that clause is a positively recited structural configuration (a §102 gap if so) rather than mere intended use. Counsel should further weigh that a system fixed by mooring lines (34) to anchor points (36) and designed to rotate about a buoy is arguably not even structurally capable of being trailed behind a moving vessel — undercutting the capability inference itself. Because anticipation requires a single reference to disclose every limitation arranged as claimed (MPEP § 2131), this is a candidate dispositive gap for the entire §102 rejection.
- —Howlin claim 1: 'the mooring system (30) comprises a single point mooring buoy (32) connected to the at least one buoyancy element (10) or to the base (5), and at least one mooring line (34) ... tethered to at least one anchor point (36)'
- —Howlin description: 'the array of flotation units 100 automatically or passively rotating downwind or down wave of the single point mooring buoy 32'
- —OA2 (Reference 1 reality check): 'The available text does not describe a marine vessel that tows or trails the array, nor a system that is trailed on a water surface behind the marine vessel.'
- —Office action claim 1 mapping: hull 'cited to read on the claimed ... because the cited hull has a shape structurally capable of reducing hydrodynamic drag while the cited multiple floating structures 10 are trailed ... behind the marine vessel'
MPEP § 2131 — anticipation requires every limitation in a single reference arranged as claimed; the examiner's capability inference implicates MPEP § 2114/§ 2115 (functional/intended-use language), which counsel must address by arguing the clause is a positive structural configuration.
⚠ Risk The examiner will likely reassert that an apparatus claim's 'trailed behind the marine vessel' language is intended use and that Howlin's structure is capable of the recited function (MPEP § 2114). Prosecution-history-estoppel caution: characterizing the invention as specifically 'towed behind a moving vessel' to distinguish Howlin narrows claim scope in the file wrapper and may foreclose broader (e.g., moored) coverage later.
Likely examiner response◐ survives — moderate
For an apparatus claim under §102, an examiner would invoke MPEP § 2114/§ 2115 and characterize 'trailed on a water surface behind the marine vessel' as a statement of intended use/manner of operation that does not structurally distinguish over Howlin. The examiner would argue Howlin's flotation units (100) linked by horizontal elements (8) and flexible joints (9) are structurally capable of being towed, that mooring to buoy (32)/anchor (36) is a temporary use-state rather than a permanent structural feature that forecloses towing, and that the array 'could be' detached and trailed — placing the burden on applicant to show the structure is INcapable of the recited use (In re Schreiber burden-shift).
How to adjust The genuinely contestable point is whether 'trailed behind the marine vessel' is a positively recited structural configuration or mere intended use — a fight counsel can lose under § 2114. A cleaner, harder-to-answer lever hides in the same hook: claim 1 positively recites a marine vessel with a hull 'shaped to reduce hydrodynamic drag,' and per OA2 Howlin discloses no marine vessel or hull at all. Counsel should confirm from the actual office action how (or whether) the examiner mapped a hull/vessel; an outright missing-vessel gap is dispositive for §102 in a way the capability inference is not, and it does not depend on winning the intended-use characterization.
the multiple solar panel sections have buffers to absorb impact forces during lateral collisions of the separate independently floating sections
The office action maps the claimed impact-absorbing 'buffers' to Howlin's elements 8/9, but Howlin's fully grounded text characterizes element 8 as a 'horizontal element' linking the bases and element 9 as a 'flexible joint,' not as a buffer that absorbs impact during collisions. Howlin affirmatively teaches that its units 'cannot clash with each other as they are restrained in surge, sway, and yaw' — a restraint that PREVENTS lateral clashing rather than a buffer that 'absorbs impact forces during lateral collisions.' Read in its entirety (MPEP § 2141.02), Howlin's disclosed function is the opposite of the recited impact-absorption during collision, which counsel should weigh as a mischaracterization / prima-facie gap for claim 6. (Counsel should separately note that Bersano claim 9 discloses peripheral shock absorbers but was not asserted against claim 6; whether the examiner may bring it in on a new rationale is a distinct consideration.)
- —Howlin description: 'The linking horizontal elements 8 are connected to the bases 5 by flexible joints 9.'
- —Howlin description: 'the sails of the flotation units cannot clash with each other as they are restrained in surge, sway, and yaw'
- —Office action claim 6: 'the multiple solar panel sections ... have buffers 8/9 to absorb impact forces during lateral collisions'
- —OA3 (claim 6 chart): Howlin's restraint 'PREVENTS lateral clashing rather than a buffer that absorbs impact forces during lateral collisions.'
MPEP § 2141.02 — a reference must be considered in its entirety, including teachings that contradict the mapped function; see also MPEP § 2131 for the anticipation-level element requirement carried into the §103 base.
⚠ Risk The examiner may reassert that a flexible joint inherently cushions or that element 8 has structure capable of absorbing impact, or may issue a new rejection importing Bersano's shock absorbers (Bersano claim 9). No estoppel concern beyond confirming what 'buffer'/'absorb impact' means in the specification.
Likely examiner response◐ survives — moderate
Under BRI (MPEP § 2173), an examiner could construe 'buffers to absorb impact forces during lateral collisions' broadly and argue that Howlin's flexible joint (9) inherently cushions/absorbs relative motion between units, so a structure that limits clashing by flexing is a 'buffer.' The examiner may also frame Howlin's statement that units 'cannot clash ... as they are restrained in surge, sway, and yaw' as describing the RESULT of compliant elements that necessarily absorb load, not a teaching away. And Bersano claim 9 (peripheral shock absorbers) sits in the record as a ready new-ground supplement for the buffer function.
How to adjust The function-mismatch reading (prevent clashing vs. absorb collision impact) is defensible under § 2141.02 (reference read in entirety), but it turns on claim construction of 'buffer' and 'absorb impact,' which the examiner can contest under BRI. Counsel should pin the construction — what structure/function the spec assigns to 'buffers' — and weigh that Bersano's admitted shock absorbers make this a candidate for amendment (tie the buffer to disclosed impact-absorbing structure) rather than a pure argument, since the examiner can likely reach the feature on a new rationale.
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 claim 5 rests on Howlin as the base reference, with Bersano brought in only for the wiring-interconnection feature. As established for claim 1, Howlin's fully grounded text describes a moored weathervaning array, not structures trailed behind a marine vessel (OA2, Reference 1; Howlin claim 1 mooring system). Bersano is likewise a set of individually-floating panels juxtaposed into a moored mesh/grid (Bersano claims 12-16, describing peripheral retention means and mooring), and does not supply a vessel-trailed configuration either. Because neither asserted reference affirmatively discloses trailing behind a marine vessel and the examiner supplies it only by the same capability inference, counsel should weigh whether the §103 prima facie case is incomplete as to claim 5 and its dependents 6-8.
- —OA2 (Reference 1): Howlin's text 'does not describe ... a system that is trailed on a water surface behind the marine vessel.'
- —OA2 (Reference 3): Bersano describes 'a solar installation formed from an assembly of multiple such individually-floating panels juxtaposed together into a mesh/grid' with 'peripheral retention means' (Bersano claims 12-16).
- —Office action claim 5 mapping relies on Howlin elements 10 being 'structurally capable of being longitudinally positioned ... while trailing the plurality of solar panel sections.'
MPEP § 2143.01 / § 2141.02 — a §103 rejection must account for every limitation across the combination; a limitation absent from all asserted references (and supplied only by capability inference) is a gap in the prima facie case.
⚠ Risk The examiner will likely repeat the intended-use/capability position and note that claim 5 is an apparatus claim. Prosecution-history-estoppel caution: emphasizing 'trailed behind a moving vessel' as the distinguishing feature narrows the claim scope of record.
Likely examiner response◐ survives — moderate
The strongest comeback is not within the four corners of the current rejection but in the record: Reference 4 (Jayaram) is described in OA2 as disclosing a reel assembly mounted at the stern of a ship deploying a continuous strip of panels 'to extend behind the vessel on or above the water surface' — i.e., the very trailed-behind-vessel configuration the argument says no asserted reference supplies. An examiner (given this examiner's ~3.7 OAs-to-allowance and interview propensity) could issue a new-ground §103 adding Jayaram to Howlin/Bersano, articulating that trailing panels behind a vessel was a known deployment, thereby curing the mapped gap.
How to adjust As to the CURRENT rejection the gap holds — neither Howlin nor Bersano affirmatively discloses trailing behind a vessel and it rests only on the capability inference. But counsel should treat Jayaram as the examiner's readiest cure and pre-position a distinction: claim 5 requires 'multiple floating structures'/'separate independently floating sections' that are 'longitudinally positioned,' whereas OA2 describes Jayaram as a single continuous strip wound on a reel. Weigh whether that separateness/longitudinal-support feature distinguishes Jayaram, and whether amending to sharpen it is preferable to resting on a gap the examiner can fill in the next action.
a storage system ... configured to be stored in the storage system in or on the marine vessel with the plurality of solar panels being configured to be compacted together ... and comprises a retraction mechanism to retract the trailing platform of the multiple solar panels from the water
The §103 rejection's stated motivation — that adding Rikoski's storage system to Howlin 'would have allowed for the apparatus to be stored' — is a candidate for challenge as a conclusory rationale lacking a rational underpinning (MPEP § 2143.01). Rikoski is directed to small autonomous marine vehicles and buoys with a controller/motor that rolls flexibly bendable panels into a housing (Rikoski Abstract; claims 1-2, 5), whereas Howlin is a large, spaced-apart moored offshore array of vertical-panel flotation units tethered to anchor points. Counsel should weigh whether a PHOSITA would have had a reason, beyond hindsight from the applicant's own disclosure, to compact and retract Howlin's fixed, weathervaning array into a housing on a vessel, and whether doing so is consistent with Howlin's principle of operation. The bare assertion that storage is generally desirable does not, standing alone, supply the required articulated reasoning under MPEP § 2143.
- —Office action §103 (claims 16-17): 'it would have been obvious ... to have modified the apparatus of Howlin et al. to include the storage system, as suggested by Rikoski, because it would have allowed for the apparatus to be stored.'
- —Rikoski claim 5: 'the one or more solar panels are flexibly bendable, the one or more solar panels being rolled in the retracted position'
- —OA2 (Reference 2): Rikoski is for 'powering a marine vehicle' with a controller that 'extends and retracts' a solar panel assembly between deployed and stored positions.
- —OA4 combination weaknesses: 'conclusory_motivation (moderate); hindsight_reconstruction (moderate)'
MPEP § 2143 / § 2143.01 — every obviousness rationale requires articulated reasoning with a rational underpinning; conclusory 'would have allowed it to be stored' is attackable, and hindsight drawn only from the applicant's disclosure is impermissible.
Risk The examiner may respond that storability is a well-recognized design incentive (MPEP § 2143 rationale F) and that Rikoski expressly teaches storage of marine solar assemblies, supplying an adequate reason. Note also that claim 17's 'the trailing platform' antecedent-basis defect (below) may need to be resolved before the art argument is fully joined.
Likely examiner response◐ survives — moderate
The examiner has a pointed rebuttal in Rikoski's own text: OA2 notes Rikoski 'references a towed array solar panel assembly (Fig. 10)' and discloses a controller/motor that retracts panels into a housing. The examiner can argue Rikoski is squarely in the towed/marine-solar field (not a distant art), that storing/retracting a deployed marine solar array is a known technique yielding the predictable result of protecting it from weather/transit (MPEP § 2143 rationale C/D), and that this supplies more than a bare 'storage is desirable' statement. Rikoski's towed-array reference blunts both the non-analogous framing and the 'no reason to combine' framing.
How to adjust Counsel should confront Rikoski's Fig. 10 towed-array disclosure head-on rather than characterize Rikoski only as 'small autonomous vehicles/buoys' — that characterization is vulnerable given the record. The stronger residual point is the scale/architecture mismatch (rolling a flexible panel into a housing vs. compacting Howlin's spaced-apart vertical-panel flotation units tethered to anchors) and whether retracting a weathervaning moored array is consistent with Howlin's principle of operation. Weigh pressing the § 2143 articulated-reasoning gap narrowly, and consider whether the storage/retraction claim elements are better secured by amendment tied to the specific compaction mechanism disclosed.
the multiple floating structures are ... trailed on a water surface behind the marine vessel
As a fallback to the capability inference, counsel should weigh that Howlin's entire purpose is a passive single-point mooring that lets the array 'weathervane' to shed environmental loads about a fixed buoy and anchor point (Howlin Abstract; claim 1; description of mooring system 30/buoy 32/anchor 36). Trailing the array behind a moving marine vessel — a fundamentally different, non-moored, load-imposing configuration — would rework how Howlin fundamentally functions and would defeat the passive load-shedding that Howlin identifies as its object. Under MPEP § 2143.01, a proposed reading or modification that changes the reference's principle of operation, or renders it unsatisfactory for its intended purpose, does not support the rejection. This reinforces both that Howlin is not structurally 'capable' of the trailed configuration and that any obviousness bridge to it would be improper.
- —Howlin description: 'This allows free rotation of the array of flotation units 100 about a single point (the single point mooring buoy 32) ... results in the array ... automatically or passively rotating downwind or down wave'
- —Howlin background/summary: mooring system 'enables the structure to rotate (for example, like a weathervane) to minimize or shed environmental loads (including wind, wave, and current)'
- —OA4 combination weaknesses: 'destroys_principle_of_operation (moderate); combination_inoperable (moderate)'
MPEP § 2143.01 — a modification cannot change the principle of operation of the reference or render it unsatisfactory for its intended purpose.
Risk The examiner did not expressly propose modifying Howlin into a trailed system (the §102/§103 mappings rely on capability), so the examiner may respond that no modification was proposed and the argument is inapposite. Frame this as supporting the capability/missing-element attack rather than as a stand-alone response.
Likely examiner response⚠ fragile — the comeback likely defeats it
This lever is aimed at a target the rejection may not present. 'Changing the principle of operation' (MPEP § 2143.01) polices a proposed MODIFICATION or combination; but for claim 1 (§102) and for the trailing element generally, the examiner supplies the trailed configuration through a § 2114 structural-capability inference, not by proposing to rework Howlin's mooring into a tow. Where no modification of Howlin is proposed, there is no 'principle of operation' being changed to attack — the examiner can respond that capability-to-be-towed does not require destroying the weathervaning design. And if the examiner instead brings in Jayaram, the trailed configuration comes from Jayaram (which is built for stern deployment), so Howlin's principle need not be altered at all.
How to adjust Do not press this as a standalone lever against a capability-based §102 or a Jayaram-sourced §103 — it presupposes a modification the record may not contain. Its real utility is as reinforcement of the rank-1 capability rebuttal (a moored, anchor-tethered array designed to weathervane is arguably not structurally capable of being trailed). Fold it into argument 1 rather than advancing it independently; reserve the full § 2143.01 principle-of-operation argument for any future action in which the examiner actually proposes to modify Howlin's mooring to achieve trailing.
wherein the multiple solar panel sections are separate independently floating sections interconnected via wiring to one another
The rejection's motivation for importing Bersano's wiring into Howlin — that it 'would have provided for interconnection of the multiple solar panel sections in series' — is a candidate for challenge as merely restating the added feature rather than supplying an articulated reason a PHOSITA would combine these particular references (MPEP § 2143.01). Counsel should weigh this as a secondary/supporting point, because it is weaker than the trailing missing-element attack: interconnecting floating solar panels via wiring is a comparatively standard teaching (Bersano claim 11 recites a watertight electrical connector), and the examiner may readily supplement the reasoning. This argument is best paired with the rank-2 base-reference gap (Howlin/Bersano not disclosing the trailed-behind-vessel configuration), which is the stronger lever for claims 5-8.
- —Office action §103 (claim 5): 'it would have been obvious ... to have modified the apparatus of Howlin et al. to include the wiring of Bersano et al. because it would have provided for interconnection of the multiple solar panel sections in series.'
- —Bersano claim 11: watertight electrical connector 'permettant le raccordement électrique des cellules photovoltaïques'
- —OA4 combination weaknesses: 'conclusory_motivation (weak)'
MPEP § 2143.01 — a motivation statement must be more than a restatement of the feature being added; see also MPEP § 2143 (rationale must rest on factual findings).
Risk This is a weak lever: the examiner will likely cure any conclusoriness by pointing to the well-known benefit of series interconnection for voltage, and Bersano expressly teaches electrical connection. Do not rely on it alone for claims 5-8.
7Antecedent-basis §112(b) rejections of claims 1 and 5 are best resolved by amendment, with a limited construction fallback
Definiteness rebuttalClaim 1Claim 5Rebuts: §112(b) rejection of claims 1, 2, 3, 4, 5, 6, 7, 8, 16, 17
the solar panel section (claim 1 lines 8-9; claim 5 lines 8-9), following 'a plurality of solar panel sections' / 'multiple solar panel sections'
The examiner rejects claims 1 and 5 because 'the solar panel section' lacks a clear antecedent given the earlier recitation of a plurality/multiple 'solar panel sections.' Under the examination standard (BRI plus MPEP § 2173.02 / In re Packard / Ex parte Miyazaki), counsel should weigh whether the scope is nonetheless reasonably certain — i.e., that 'the solar panel section' reads on each of the previously recited sections — but this is a fragile lever because the singular/plural mismatch is a genuine drafting ambiguity that the examiner can reasonably say is amenable to more than one construction. The practical and stronger path for counsel is a conforming amendment (the amendment CONCEPT: make the later reference agree in number with, and clearly point back to, the earlier-introduced sections), which the examiner has expressly indicated would overcome the related objections. Note that a simultaneous §112(b) and §102/§103 rejection here is proper compact-prosecution practice (MPEP § 2173.06(II)), so counsel should not argue the pairing is inconsistent.
- —Office action ¶7 (claim 1): 'As there is more than one previously recited "solar panel section" ... it is unclear as to what "the solar panel section" ... is referring to.'
- —Office action claim 5 objection: 'Amending "the solar panel sections" to "the multiple solar panel sections" would overcome the objection.'
MPEP § 2173.02 / In re Packard / Ex parte Miyazaki — examination definiteness standard (BRI; unclear-term and plural-construction prongs); do NOT cite Nautilus, which is the litigation standard.
Risk The examiner will likely maintain the rejection absent an amendment because the antecedent-basis ambiguity is facially reasonable. Amendment is low-risk here, but counsel should confirm the amended number/reference is consistent throughout claims 1-8, 16-17 to avoid new antecedent issues; watch for any scope narrowing introduced by the conforming amendment.
8Antecedent-basis §112(b) rejection of claim 17 ('the trailing platform' / 'the multiple solar panels') — amend-first
Definiteness rebuttalClaim 17Rebuts: §112(b) rejection of claims 1, 2, 3, 4, 5, 6, 7, 8, 16, 17
the trailing platform of the multiple solar panels (claim 17 lines 2-3)
The examiner rejects claim 17 because 'the trailing platform' and 'the multiple solar panels' lack antecedent basis in claim 17 or its parent claim 16, which recites 'a plurality of solar panels' and 'the solar panel section' but never a 'trailing platform.' Under MPEP § 2173.02, counsel should weigh whether the intended referents are reasonably clear from the parent claim, but this is a fragile rebuttal because the specific term 'trailing platform' does not appear in the claim 16/1 chain — an amendment to introduce or conform the terminology is the stronger path. Counsel should coordinate any amendment with the rank-1/rank-2 'trailed behind the marine vessel' arguments, since introducing 'trailing platform' language could bear on claim scope characterization. As with claims 1 and 5, the co-pending §103 rejection of claim 17 does not make the §112(b) rejection improper (MPEP § 2173.06(II)).
- —Office action ¶9-10: claim 17 'recites the limitation "the trailing platform" ... There is insufficient antecedent basis' and 'recites the limitation "the multiple solar panels" ... There is insufficient antecedent basis.'
- —Claim 16 text: recites 'a storage system' and 'the plurality of solar panels'/'the solar panel section' but not a 'trailing platform.'
MPEP § 2173.02 / In re Packard — examination definiteness standard; not Nautilus.
⚠ Risk The examiner will likely maintain the rejection absent amendment. Prosecution-history-estoppel caution: introducing 'trailing platform' terminology to cure the antecedent-basis defect could be read as narrowing the invention toward a specifically towed/trailed configuration; coordinate with the trailing-limitation arguments to avoid inconsistent scope statements in the file wrapper.