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 .
Priority
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.
Election/Restrictions
Claims 31-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/29/2026
Applicant's election with traverse of Group I (claims 31-40) in the reply filed on 7/29/2026 is acknowledged. The traversal is on the ground(s) that there was not an explanation of why there is a serious search burden between Groups I thru III. This in not found persuasive because Groups I, II and III have different classification which require a different field of search. 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 21-30 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.
The term “substantially horizontally” in claim 21, line 7; claim 22, line 2 is a relative term which renders the claim indefinite. The term “substantially horizontally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Does the term “substantially horizontally” mean that a deviation from horizontal of 5, 10, 15 or 20% is acceptable? It is suggested to delete the phrase substantially or define the requisite degree in the claims.
Claims 23-30 are also rejected because they are dependent upon claim 21.
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 21-29 are rejected under 35 U.S.C. 103 as being obvious over Terada (US 2017/0107901) in view of Claypole (US 2009/0020081).
With respect to the limitations of claim 21, Terada teaches a power system (title, abstract), comprising: an engine (Figs 1-5, engine 11, 0036); a generator configured to generate electrical power from mechanical power provided by the engine (generator 12, 0036); a housing enclosing (housing package 2, 0037) the engine and the generator; and a radiator assembly (Figs 1a, 6, radiator/exhaust chamber 6, radiator 42, 0052) configured to cool the engine and comprising: a heat exchanger oriented substantially horizontally (Fig 2a, heat exchanger 14, 0052) when the power system is installed; a fan (radiator fan 43, 0053) configured to urge air through the heat exchanger to cool the heat exchanger. Terada discloses the claimed invention except for explicitly showing a first side tank located on a first side of the heat exchanger and configured to receive coolant from the engine and to supply the coolant to the heat exchanger; and a second side tank located on a second side of the heat exchanger and configured to receive the coolant from the heat exchanger for circulation to the engine.
However, Claypole discloses a first side tank (Fig 6, inlet tank 118 ‘’’, 0050) located on a first side of the heat exchanger (heat exchanger 106 ’’’, 0050) and configured to receive coolant (engine cooling piping 128 ””, 0051) from the engine (engine 108’, 0053) and to supply the coolant to the heat exchanger; and a second side tank located on a second side (outlet tank 120 ‘’’, 0051) of the heat exchanger and configured to receive the coolant (coolant piping 128 “”, 128a, 0053) from the heat exchanger for circulation to the engine is known in the art. It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to adapt the power system of Terada having an engine and heat exchanger silent to first and second radiator side tanks with a first side tank located on a first side of the heat exchanger and configured to receive coolant from the engine and to supply the coolant to the heat exchanger; and a second side tank located on a second side of the heat exchanger and configured to receive the coolant from the heat exchanger for circulation to the engine of Claypole for the purpose of forming a known inlet and outlet tank configuration that allows for suitable coolant circulation from the engine and radiator to ensure proper cooling of the engine (0054).
With respect to the limitations of claims 22, 23, 24 and 25, Terada in view of Claypole discloses the radiator assembly is oriented such that coolant flows substantially horizontally within the heat exchanger (Claypole, Fig 6, horizontal flow arrow of coolant 122 “”, 0049);
further comprising a third side tank having a higher vertical position than the first side tank or the second side tank, the third side tank (Claypole, Fig 6, shared coolant reservoir 132 “”, pressure relief filler cap 134 “”, 0049) configured to deaerate the coolant.
the third side tank comprises a coolant filling neck (Claypole, Fig 6, neck for pressure relief filler cap 134);
a top surface of the third side tank has a higher vertical position (Claypole, Fig 6, shared coolant reservoir 132 “”, pressure relief filler cap 134 “”, 0049) than top surfaces of the first side tank and the second side tank (Claypole, Fig 6, inlet tank 118 ‘’’, outlet tank 120 ‘’’);
With respect to the limitations of claims 27, 28 and 29, Terada teaches the engine is a gasoline engine or a diesel engine (0040, gas engine);
the radiator assembly comprises: a heat exchanger (heat exchanger 14); and a fan (radiator fan 43) configured to urge air through the housing and through the heat exchanger to cool the heat exchanger and one or more of the engine (engine 11) or the generator (generator 12, 0036);
the housing is configured to direct the air to exit the housing via the radiator assembly (Figs 1a, 1b, radiator 42, radiator ventilation holes 42a, 0052).
Claim 26 is also rejected because it is dependent upon rejected claims 21 and 23.
Claim 30 is rejected under 35 U.S.C. 103 as being obvious over Terada (US 2017/0107901) in view of Claypole (US 2009/0020081) as applied to claims 21 and 28, further in view of Konop (US 2008/0042625).
With respect to the limitations of claim 30, Terada in view of Claypole discloses the claimed invention except for the housing has no opening on two of the sides of the housing. However, Konop discloses the housing has no opening on two of the sides of the housing (Figs 5, 6, front hood 104, no openings on left, right sides) is known in the art. It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to adapt the power system of Terada in view of Claypole having air outlet openings silent to no opening on two of the sides of the housing with the no opening on two of the sides of the housing of Konop for the purpose of relocating the air outlet openings in a known location (Konop, Figs 5, 6, air outlet 114, 0058) that is suitable for exhaust air to escape.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21-30 of the instant application is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,686,240 in view of Hruska (US 2019/0160579).
With respect to the limitations of claims 21-30, Claims 1-10 of U.S. Patent No. 11,686,240 teaches all the limitations of the claims including a power system, comprising: an engine; a generator configured to generate electrical power from mechanical power provided by the engine; a housing enclosing the engine and the generator; and a radiator assembly configured to cool the engine and comprising: a heat exchanger oriented substantially horizontally when the power system is installed; a fan configured to urge air through the heat exchanger to cool the heat exchanger; a first side tank located on a first side of the heat exchanger and configured to receive coolant from the engine and to supply the coolant to the heat exchanger; and a second side tank located on a second side of the heat exchanger and configured to receive the coolant from the heat exchanger for circulation to the engine. Claims 2-10 almost identical to claims 22-30 of the instant application.
Claim 21 does not disclose power conversion circuitry configured to convert the electrical power from the generator to welding-type power. However, Hruska discloses the power system including power conversion circuitry (Fig 3, power supply 34, chopper or inverter circuitry, 0030) configured to convert the electrical power from the generator (generator 30, 0030) to welding-type power (welding arc 36, 0030) is known in the art. It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to adapt the power system of the instant application to include power conversion circuitry configured to convert the electrical power from the generator to welding-type power of Hruska for the purpose of providing known power conversion circuitry that allows the engine driven generator to produce power for welding applications.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THIEN S TRAN whose telephone number is (571)270-7745. The examiner can normally be reached Monday-Friday [8:00-4:00].
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/THIEN S TRAN/Primary Examiner, Art Unit 3761 9/10/2026
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