DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim 12, 17, 19, 25, and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 and 15 of U.S. Patent No. 9,533,569 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. 9,533,569 discloses all required claim limitations and additional structural limitations.
Claim 12, 26, and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 23, 26, and 32 of U.S. Patent No. 9,981,551 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. 9,981,551 discloses all required claim limitations and additional structural limitations.
Claim 12, 25, and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 and 15 of U.S. Patent No. 10,081,244 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. 10,081,244 discloses all required claim limitations and additional structural limitations.
Claim 12, 19, and 25 – 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 14, 16, and 17 of U.S. Patent No. 11,590,839 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. 11,590,839 discloses all required claim limitations and additional structural limitations.
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.
Claims 12, 19 – 21, 23, 25, and 28 – 31 are rejected under 35 U.S.C. 103 as being unpatentable over Robbins (US 2013/0199863 A1) in view of Minami et al. (US 2007/0119646 A1).
For claim 12, Robbins discloses a refuse vehicle 10 comprising:
a vehicle chassis 11;
a container 12 [secured to the vehicle chassis] (page 1, paragraph [0017]); and
a tailgate 20 [coupled to the container at one or more hinges (upper end portions of tailgate comprising a horizontal axis therethrough) disposed at an upper end of the tailgate such that the tailgate is pivotable with respect to the container] (page 1, paragraph [0019]), the tailgate comprising:
a frame including a pair of parallel side members 74, 84 [extending vertically on respective sides of the tailgate] (fig. 3, page 2, paragraph [0026]);
a plurality of compressed natural gas tanks 55, 57, 59 [arranged side-by-side between the side members] (fig. 4, page 2, paragraph [0029] and [0031]); and
a structural cross beam 54 (wherein the fuel pod frame comprises a top cross beam and a bottom cross beam) [connecting the side members] (via 54A, 54B), [extending horizontally between vertical sides of the tailgate] (fig. 4) and [disposed at an elevation between uppermost and lowermost ones of the compressed natural gas tanks] (fig. 4); but does not explicitly disclose the pair of side members are arcuate.
Minami et al. discloses a vehicle comprising [fuel tank supporting brackets 60 which span between a plurality of cross rails 44, 46, 48, 50, respectively] (page 2, paragraphs [0025] – [0027]); a plurality of gas tanks placed on a respective one of the fuel tank supporting brackets] (page 2, paragraphs [0025] – [0027]); and [the fuel tanks are arranged in an arcuate side-by-side arrangement] (fig. 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to alternatively use the arcuate shape arrangement of Minami et al. with the natural tanks and tailgate of Robbins with a reasonable expectation of success because it would allow for a more aesthetic appearance and reduction in debris build-up, thus reducing overall maintenance and replacement costs.
For claim 19, Robbins modified as above discloses the refuse vehicle further comprising [a removable cover 91, 92, 93 enclosing the plurality of compressed natural gas tanks] (page, 3, paragraph [0037]).
For claim 20, Robbins modified as above discloses the refuse vehicle [wherein the cover forms a rear surface of the vehicle] (fig. 3).
For claim 21, Robbins modified as above discloses the refuse vehicle [wherein the cover has a rearwardly-projecting, curved outer surface] (in view of the modification above).
For claim 23, Robbins modified as above discloses the refuse vehicle wherein the cover includes a plurality of discrete sections 91, 92, 93 removably coupled to the tailgate.
For claim 25, Robbins modified as above discloses the refuse vehicle [wherein the compressed natural gas tanks are arranged in an arcuate row] (in view of the modification above).
For claim 28, Robbins discloses a refuse vehicle 10 comprising:
a vehicle chassis 11;
a container 12 [secured to the vehicle chassis] (page 1, paragraph [0017]); and
a tailgate 20 [coupled to the container at one or more hinges (upper end portions of tailgate comprising a horizontal axis therethrough) disposed at an upper end of the tailgate such that the tailgate is pivotable with respect to the container] (page 1, paragraph [0019]), the tailgate comprising:
a frame including a pair of parallel side members 74, 84 [extending vertically on respective sides of the tailgate] (fig. 3, page 2, paragraph [0026]);
a plurality of compressed natural gas tanks 55, 57, 59 [arranged side-by-side between the side members] (fig. 4, page 2, paragraph [0029] and [0031]); and
but does not explicitly disclose
the pair of side members are arcuate.
Minami et al. discloses a vehicle comprising [fuel tank supporting brackets 60 which span between a plurality of cross rails 44, 46, 48, 50, respectively] (page 2, paragraphs [0025] – [0027]); a plurality of gas tanks placed on a respective one of the fuel tank supporting brackets] (page 2, paragraphs [0025] – [0027]); and [the fuel tanks are arranged in an arcuate side-by-side arrangement] (fig. 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to alternatively use the arcuate shape arrangement of Minami et al. with the natural tanks and tailgate of Robbins with a reasonable expectation of success because it would allow for a more aesthetic appearance and reduction in debris build-up, thus reducing overall maintenance and replacement costs.
For claim 29, Robbins modified as above discloses the refuse vehicle wherein:
[the plurality of compressed natural gas tanks comprise extend horizontally between the side members] (fig. 4, page 2, paragraph [0029]); and
[the tanks are arranged such that with the tailgate in a closed position, an uppermost one of the compressed natural gas tanks overlies a lowermost one of the compressed natural gas tanks] (in view of the modification above and through mere duplication of parts (In re Harz, 124 USPQ 378 ), wherein such duplication in parts would extend the length of the arcuate arrangement such that at least a portion of the uppermost gas tank overlies at least a portion of the lowermost gas tank).
For claim 30, Robbins modified as above discloses the refuse vehicle wherein:
[the plurality of compressed natural gas tanks comprise elongated cylinders] (fig. 4); and
the refuse vehicle further comprises a cover 91, 92, 93 [extending across the plurality of compressed natural gas tanks] (figs. 3 and 4) and comprising [a curved outer surface covering 92, 93] (the cover is curved in view of the modification above) and [disposed rearwardly of the compressed natural gas tanks] (figs. 3 and 4).
For claim 31, Robbins modified as above discloses the refuse vehicle wherein:
the frame further comprises:
an upper horizontal member 91 [connecting upper ends of the side members] (fig. 3); and
a lower horizontal member 73 [connecting lower ends of the side members] (fig. 4, page 2, paragraph [0027]); and
the refuse vehicle further comprises an intermediate horizontal cross beam 54 [connecting the side members] (figs. 3 and 4, indirectly) and [disposed between the upper horizontal member and the lower horizontal member] (fig. 4).
Allowable Subject Matter
Claims 32 – 42 are allowed.
Claims 13 – 16, 18, 22, and 24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to disclose the cross beam is secured directly to each of the side members; or
each tank is secured at opposite ends to the side members; or
at least one of the compressed natural gas tanks is disposed between the container and the cross beam; or
the cover comprises two curved panels connected by a horizontal panel connector extending across the cover between the two curved panels; or
the cover comprises two side portions; and a cross member extends between the two side portions; or
a shell within which the frame and plurality of energy storage containers are disposed, the shell comprising two parallel side covers; a rear cover; a top cover; and a forward cover.
Response to Arguments
Applicant's arguments filed 03/18/26 have been fully considered but they are not persuasive.
Applicant argues that a person of ordinary skill in the art would not have understood the modification of the side panels of Robbins with the fuel tank arrangement depicted in Minami as having the benefit of preventing large loads from being placed on the fuel tanks in the event of a collision. Additionally, applicant argues there is no teaching or suggestion in either Robins or Minami that modifying the side panels would allow for a more aesthetic appearance or a reduction in debris build-up. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the arcuate shape arrangement of the tanks of Minami is being incorporated with the tailgate of Robbins to provide an arcuate shape of the upright side panels and cover plates. One of ordinary skill in the art would use the arcuate shape to provide for an aesthetic appearance while also reducing debris build-up compared to current sharp edges of Robbins, thus reducing overall maintenance and replacement costs.
Lastly, applicant argues Robbins does not disclose a structural cross beam connecting the side members, extending horizontally between vertical sides of the tailgate and disposed at an elevation between uppermost and lowermost ones of the compressed natural gas tanks. However, under the broadest reasonable interpretation, the structural cross beam 54 indirectly connects the side members via side elements 54A, 54B and cross member 83. More specifically, the claim limitation “connecting the side members” does not explicitly require the structural cross beam to directly connect the side members.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jacob D. Knutson whose telephone number is (571)270-5576. The examiner can normally be reached 8:00 am - 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Valentin Neacsu can be reached at (571)-272-6265. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB D KNUTSON/Primary Examiner, Art Unit 3611
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