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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group II and species (a)(i) and (b)(i) in the reply filed on January 7, 2026 is acknowledged. The traversal is on the ground(s) that the elected and nonelected subject matter are similar and there is no undue burden on the Examiner. This is not found persuasive because the inventions of Groups I and II have different classifications and thus meet the criteria for a serious search and examination burden. Regarding the species, the species within each subgenus are mutually exclusive, require different searches, and thus also meet the criteria for a serious burden.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13-16 and 20 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.
Claim 13 recites the limitation "the first sensor" in line 11. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 13-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Repice et al (US 20200324624) in view of Wessells et al (US 20030019231).
Regarding claim 13, Recipe et al. teach a transport refrigeration unit (TRU) and a method for performing pre-trip sequence and diagnostics for a leak sensor (see claims 6 and 20 of the reference). The method comprises validating the operation of a sensor (first component), operating an evaporator fan (second component) based at least in part on validating the operation of the sensor; then, responsive to operating the evaporator fan, determining if a leak (first fault) is in effect using the sensor; performing a refrigeration test of a refrigeration system (system of which the first and second components are parts), determining if a leak (second fault) is in effect using the sensor, and providing an alarm based at least in part on determining a leak (first or second fault) is present (see claim 6 of the reference). Regarding claim 15, the method is executed prior to a transportation run ([0033]). Regarding claims 16 and 20, the evaporator fan (second component) can be considered part of an “electrical subsystem” because it is electrically powered.
Recipe et al. does not expressly teach a component being “engaged with or is a component of a fuel cell” as recited in claim 13.
Wessells et al. teach an electrically powered trailer refrigeration unit. A fuel cell or multiple fuel cells power all of the refrigeration system electrical components (abstract).
Therefore, the invention as a whole would have been obvious to one skilled in the art at the time of filing because the artisan would have been motivated to use a fuel cell to power the components of the TRU of Recipe et al. In [0005], Wessells et al. teach that a TRU can be provided with an electrical power system that provides the entire motor and control system power for the refrigeration system while at the same time meeting required space limitations. Accordingly, the artisan would have been motivated to use a fuel cell to power the components of the TRU of Recipe et al. Therefore, the existing components of Recipe et al. would be “engaged with a fuel cell” as recited in claim 13.
Regarding claim 14, it is disclosed in [0039] that “It should be understood the method 300 can be repeated whenever the system is initially powered on and started or when manually initiated by an operator or administrator.” This is suggestive of the claimed test button coupled to the fuel cell that initiates the method when activated.
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 13-16 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-19 of U.S. Patent No. 11407287 (Recipe et al) in view of Wessells et al. The ‘287 patent claims recite all the limitations of present claim 13 except for the component being “engaged with or is a component of a fuel cell” as recited in claim 13. However, Wessells teaches a fuel cell in a TRU as set forth in the rejection above. It would have been obvious to use a fuel cell in the system of the ‘287 patent claims for the reasons stated above. Accordingly, the instant claims are obvious variants of the ‘287 patent claims. Further, the test button recited in present claim 14 is also considered to be an obvious variation because it would be obvious to manually initiate the method of the ‘287 patent claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan Crepeau whose telephone number is (571) 272-1299. The examiner can normally be reached Monday-Friday from 9:30 AM - 6:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Nicole Buie-Hatcher, can be reached at (571) 270-3879. The phone number for the organization where this application or proceeding is assigned is (571) 272-1700. Documents may be faxed to the central fax server at (571) 273-8300.
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/Jonathan Crepeau/
Primary Examiner, Art Unit 1725
March 5, 2026