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 .
Drawings
The drawings are objected to because the drawings are not annotated as figures such as “Fig. 1” and “Fig. 2” and so-on; the drawings are numbered in a manner not conforming to proper formatting. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are: Pg. 1, under the “Background of the Invention.” Section (1) there are numerous errors including a semi-colon where a colon should be, incorrect use of “too” in place of “to,” and incorrect sentence structures causing unclear formatting due to run-on sentences and/or incorrect clauses being combined as well as incorrect capitalization.
As an example of a rewrite of this section (which should be done for each section):
Field: The oil and gas industry sector has traditionally used natural methane gas (fuel gas) for its pneumatic industrial control systems. This invention seeks to provide greenhouse gas (GHG) mitigation by converting pneumatic industrial control systems to use compressed air for the pneumatic function of instrument and control devices. This would eliminate the issue of control devices venting methane gas to the atmosphere during operation in order to meet environmental and social governance mandates while also eliminating a potential safety hazard from the system.
Claim Objections
Claim 1 is objected to because of the following informalities: line 3 recites “affixed too” where it should read “affixed to.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-6 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.
Regarding claims 1-6, claim 1 recites “a method of…” but then the rest of the claims are formatted as product claims, not method claims. The claims are indefinite as they are being claimed as method claims but are actually product claims, or at least appear as such due to them being a structure listing more than a particular operational set. For the purposes of examination, the clause “a method of mitigating greenhouse gases (GHG), by substituting methane fuel gas in pneumatic systems with pneumatic air supply which comprises” will instead be read as “A pneumatic air supply comprising:” as the rest of the clause appears to be intended use with no direct claimed structures or method steps.
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.
Claim(s) 1-4 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bankstahl (US 2014/0231400).
Regarding claim 1, Bankstahl discloses a method of mitigating greenhouse gases (GHG), by substituting methane fuel gas in pneumatic systems with pneumatic air supply (Fig. 2, Abstract, and ¶ [0023], the system is for a pneumatic air compressor 68), which comprises: an air compressor 68 designed for commercial truck and equipment air brake service affixed too and energized by an ancillary stationary industrial engine 58 (Fig. 2, shown engine having a compressor can be mounted on various devices including a commercial truck), as an accessory to said engine wherein the primary product of said engine is not pneumatic air supply and production of pneumatic air supply is a secondary product (¶ [0026], compressed air via the compressor 68 can be a secondary product of the system).
Examiner’s note: the “commercial truck and equipment brake service” clause appears to be an intended use recitation and as such will not impart any direct structure.
Regarding claim 2, Bankstahl discloses a method of producing pneumatic air supply as in claim 1, wherein said air compressor is affixed to said engine utilizing an existing accessory port in components of said engine and said compressor is energized by the gear drive inside said engine (Fig. 2, shown compressor 68 is attached via belt to the gear drive of the engine which exists so must be an existing accessory port).
Regarding claim 3, Bankstahl discloses a method of producing pneumatic air supply as in claim 1, wherein said air compressor is affixed to said engine utilizing a bracket for said engine and said compressor, said compressor is energized by a flexible belt drive system on said engine (Fig. 2, shown compressor attached via a flexible belt, wherein the compressor is mounted via shown mounting brackets to the top of the engine).
Regarding claim 4, Bankstahl discloses a method of producing pneumatic air supply as in claim 1, wherein said stationary engine is affixed to a permanent structure (Fig. 2 and Abstract, the system is “permanent” as in it is not temporary. It’s noted that this term has no direct meaning in the art and any structure can be a permanent structure if it is intended to be left somewhere or operated indefinitely in that location).
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bankstahl in view of official notice.
Regarding claims 5 and 6, Bankstahl discloses a method of producing pneumatic air supply as in claim 1, but fails to disclose wherein said stationary engine is affixed to a portable skid apparatus or wherein said stationary engine is affixed to a portable trailer apparatus. Bankstahl, for its part, does not disclose the particular mounting position of its engine.
However, the inclusion of engine-powered pneumatic compressors on both portable skids and portable trailers is sufficiently old and well-known in the art for examiner to take official notice that it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the device of Bankstahl to be included on one such device as doing so would allow the engine system of Bankstahl to be used in various locations as needed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN A LATHERS whose telephone number is (571)272-1050. The examiner can normally be reached M-F 10a-6p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lindsay Low can be reached on 5712721196. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN A LATHERS/Primary Examiner, Art Unit 3747