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 .
Claims 1-20 are pending in the instant application.
Priority
This application is a continuation of U.S. Application Serial No. 17/196,404, filed on March 9, 2021, now Patent No. 11,912,575, Issued February 27, 2024, which is a divisional application of U.S. Application Serial No. 14/669,583, filed on March 26, 2015, now Patent No. 10,988,379, Issued April 27, 2021, which claims priority to U.S. provisional application Serial No.: 61/971,066, filed on March 27, 2014.
Information Disclosure Statements
Applicants’ Information Disclosure Statement, filed on 10/17/2023, has been considered. Please refer to Applicant’s copy of the PTO-1449 submitted herewith.
Response to Restriction Requirement
Applicant’s election without traverse of Group I (i.e. claims 1-12) in the reply filed by Applicant’s representative Christopher B. Linder on 06/12/2026 is acknowledged.
Status of the Claims
Claims 13-20 are withdrawn from further consideration by Examiner as being drawn to non-elected inventions under 37 CFR 1.142(b) responding to the restriction requirement. Claims 1-12 are under examination on the merits.
Specification
The priority data in the first paragraph of the specification does not contain updated information. Specifically, the first paragraph of the specification should include “This application is a continuation of U.S. Application Serial No. 17/196,404, filed on March 9, 2021, now Patent No. 11,912,575, Issued February 27, 2024”. An appropriate amendment is required.
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 1-12 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 pre-AIA the applicant regards as the invention.
Specifically, claim 1 contain the term “the second structure” at line 8. However, a second structure is not cited in claim 1. Therefore, claim 1 is indefinite. Claims 2-12 depending on claim 1 are rejected, accordingly.
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 obviousness-type 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-12 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,912,575 (“the `575 patent”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because Applicant’s claims 1-12 and claims 1-10 of the `575 patent are both drawn to a variable volume reactor, comprising: a reactor chamber adapted to receive a fuel and a gas in a free volume of the reactor chamber; a first structure disposed within the reactor chamber, the fist structure comprising a catalyst selected to assist a reaction of the fuel and the gas; an H2 permeable membrane structure; an active piston movable within the reactor chamber that changes the free volume of the reactor chamber, the free volume being the space between the active piston and the second structure; and wherein the variable volume reactor is configured so that products, CO2 and H2, are formed due to the reaction of the fuel, wherein the CO2 is adsorbed by the sorbent material, and the H2 permeates through the H2 permeable membrane to outside the variable volume reactor, and wherein the active piston is moveable within the reactor chamber such that: a first movement of the active piston decreases the free volume and increases H2 partial pressure in the free volume, which causes an increase of the rate of reaction and hydrogen permeation through H2 membrane, and a second movement of the active piston increases the free volume and decreases the partial pressure of CO2 in the variable volume reactor, which causes the CO2 to desorb from the sorbent material, and a third movement of the active piston decreases the free volume to remove the CO2 out of the variable volume reactor using an open exhaust valve.
Claim 1 of the the `575 patent has a more limited scope of an invention by further defining “each H2 permeable membrane structure formed as a hollow tube”, and reads on the present claim 1. For the rest of the claims, the presently claimed variable volume reactor and the variable volume reactor of the `575 patent are substantially overlapped in scope, used for the same application. Therefore, the present claims 1-12 are non-statutory double patenting over claims 1-10 of the `575 patent.
Conclusions
Specification is objected to.
Claims 1-12 are rejected.
Claims 13-20 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YONG L CHU/Primary Examiner, Art Unit 1731
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