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 under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the existing structure and the modification must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Claim Objections
Claim 10 is objected to because of the following informalities: The 7th line of the claim recites “with electrical system of the home”, it will be understood as “with an electrical system of the home”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites “a fuel transmission assembly” in the 6th line of the claim. This had previously been interpreted as a fuel line in Office Action dated 1/7/2026, however Applicant has amended the drawings dated 1/29/2026 to depict “a fuel transmission assembly”, however there is no recitation in the Specification dated 4/12/2024 of “a fuel transmission assembly”. Claims 2-9 depend on claim 1 and are therefore rejected.
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 1-15 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 1 recites in the 10th line of the claim “the existing oil tank is cleaned to eliminate residue that could interfere with operation of the diesel fuel” and in the 14th line of the claim “wherein the system is a stepwise retrofitting of an original heating system the stepwise retrofitting comprising a modification of an original intake”. It is unclear whether the claim is in regards to an apparatus or to a method. For the purposes of examination, it will be understood that “the existing oil tank is cleaned to eliminate residue that could interfere with operation of the diesel fuel” to be “the oil tank” and “wherein the system comprises a modification of an original intake” respectively. Claims 2-9 depend on claim 1 and are therefore rejected.
Claim 1 recites in the 6th line of the claim, “a fuel transmission assembly facilitating the transfer of diesel fuel from the oil tank to the diesel generator, for manual operation or utilizing gravity feed”. It is unclear how the fuel transmission assembly facilitates the transfer of diesel fuel, wherein there is no recitation of the fuel transmission assembly in the Specification, and the newly submitted drawings show what appears to be a filter as “a fuel transmission assembly”.
Claim 1 recites in the 12th line of the claim “the modified intake structure”. There is insufficient antecedent basis for this limitation in the claim. Claims 2-9 depend on claim 1 and are therefore rejected.
Claim 1 recites in the 12th line of the claim “configured to facilitate manual addition of the diesel fuel by untrained personnel” and in the 15th line of the claim “comprising a modification of an original intake, designed for specialized providers, into the modified intake structure.”. It is unclear what constitutes as “untrained personnel” and what constitutes “specialized providers”. It is further unclear wherein the claim recites the intake structure is for “untrained personnel” yet designed for “specialized providers”. For the purposes of examination, it will be understood as “configured to facilitate the addition of the diesel fuel” and “comprises a modification of an original intake” respectively. Claims 2-9 depend on claim 1 and are therefore rejected.
Claim 1 recites in the 12th and 15th line of the claim “the modified intake structure”. It is unclear what a modified intake structure is, wherein it is unclear what constitutes as being modified and how that is facilitating the manual addition of diesel fuel. During a manufacturing process, the oil tank would have to be modified to have an intake structure, such as cutting out a hole out of the tank to produce an intake orifice, or modifying sheets of metal to be molded to produce an intake structure. For the purposes of examination, it will be understood has “an intake structure”. Claims 2-9 depend on claim 1 and are therefore rejected.
Claim 7 recites the limitation “the original oil burner” in the 1st line of the claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, it will be understood as “a burner”.
Claim 10 recites the limitation “the heating oil tank” in the 3rd line of the claim. There is insufficient antecedent basis for this limitation in the claim. Claims 11-15 depend on claim 10 and are therefore rejected.
Claim 10 recites the limitation "oil tank" in the 5th line of the claim. There is insufficient antecedent basis for this limitation in the claim. Claims 11-15 depend on claim 10 and are therefore rejected.
Claim 13 recites the limitation "existing oil burner" in the 1st line of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "adaptation current exhaust pathways of the home" in the 1st line of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites “without extensive alterations to an existing structure” in the 2nd line of the claim. It is unclear what constitutes as “extensive” and it is unclear what is considered “existing structure”.
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 1, 2, 4-6, 8, 10, 12, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Culbertson II et al (US 11,296,510 hereinafter “Culbertson”) in view of Bachman (US 2006/0091667), Van de Loo (US 2017/0174086), Guglia et al (US 4,112,984 hereinafter “Guglia”), and Leith (US 893,528).
In regards to claim 1:
Culbertson teaches a residential energy conversion system using a fuel tank (106) that utilizes diesel fuel, comprising: a diesel generator (104) operatively connected to the fuel tank (106) to convert diesel fuel into electrical energy (Col 1, Lines 13-17 recites a generator electrically connected to the electrical system of a facility); a fuel transmission assembly (122) facilitating the transfer of diesel fuel from the fuel tank (106) to the diesel generator (104) utilizing gravity feed wherein the fuel outlet of the tank is at a lower end of the tank utilizing gravity to provide pressure downwards towards the fuel outlet.
Culbertson does not teach the fuel tank was cleaned prior to use, a modified intake structure to allow for manual addition of diesel fuel, and an exhaust redirection configuration that channels the exhaust from the diesel generator through an existing home chimney infrastructure.
Bachman teaches a fuel tank that is emptied and cleaned (Paragraph [0019]).
It would have been obvious to one of ordinary skill in the art at the time of filing of the application to empty and clean the fuel tank of Culbertson as taught by Bachman in order to remove any contaminants and sludge.
Bachman teaches an intake structure (11) for manual addition of fuel (Paragraph [0019]).
Guglia teaches a funnel (1) affixed to an intake to an oil tank.
It would have been obvious to one of ordinary skill in the art at the time of filing of the application to modify the intake of Culbertson to have an intake structure as taught by Bachman to allow the manual addition of fuel and to apply a funnel as taught by Guglia in order to aid in the refueling of the fuel tank. Wherein funnels are known in the art to provide a larger mouth to prevent spillage and tapered conically to direct the fluid.
Van de Loo teaches an exhaust redirection configuration (72) that channels exhaust gas from a diesel generator (14) to an existing flue structure (20) of a home (20).
Leith teaches a chimney (Shown in Figure 1).
It would have been obvious to one of ordinary skill in the art at the time of filing of the application to modify the system of Culbertson to channel exhaust gas as taught by Van de Loo in order to utilize the waste heat from the exhaust (Paragraph [0061] of Van de Loo) and to have a chimney around the flue in order to protect the flue from weather (Col 1, Lines 5-10 of Leith).
In regards to claim 2:
Culbertson teaches the diesel generator is configured to supply electrical power to a home's electrical system or to an energy storage battery system (Col 1, Line 66 – Col 2, Line 5 recites the system can operate with the generator, an energy storage, or a combination of both).
In regards to claim 3:
Culbertson as modified teaches the modified intake structure comprises a funnel (funnel 1 of Guglia) adapted for compatibility with the oil tank to facilitate diesel fuel input.
In regards to claim 4:
Culbertson teaches the fuel transmission assembly includes a manual pump (125) that can be operated by an individual.
In regards to claim 5:
Culbertson as modified teaches the exhaust redirection configuration is adapted to integrate with the existing chimney infrastructure.
In regards to claim 6:
Culbertson teaches the diesel generator is purposed to provide electricity as a primary source for the home (Col 2, Lines 6-63).
In regards to claim 8:
Culbertson teaches the electrical energy output from the diesel generator is regulated by an electrical grid controller (300) to manage the generation, storage, and allocation of electrical power within the home’s electrical system (Col 10, Lines 10-19).
In regards to claim 10:
Culbertson teaches a method for retrofitting a residential heating oil tank system for combined heat (wherein the generator 104 of Culbertson will produce heat from combustion of fuel) and electrical power generation using diesel fuel, the method consisting of the following steps: installing a diesel generator (104) in operational connection with the oil tank (106) via a fuel transfer line (122); linking the diesel generator’s electrical output with the home’s electrical system (via 118 or with an electrical battery for energy storage (Col 2, Lines 1-5 recites an energy storage).
Culbertson does not teach draining and cleaning the heating oil tank to prepare it for diesel fuel storage, modifying the tank to install an intake that facilitates the manual addition of diesel fuel, configuring the diesel generator’s exhaust to vent through a chimney.
Bachman teaches a fuel tank that is emptied and cleaned (Paragraph [0019]).
It would have been obvious to one of ordinary skill in the art at the time of filing of the application to empty and clean the fuel tank of Culbertson as taught by Bachman in order to remove any contaminants and sludge.
Bachman teaches a tank that has been modified with an intake structure (11) for manual addition of fuel (Paragraph [0019]).
It would have been obvious to one of ordinary skill in the art at the time of filing of the application to modify the fuel tank of Culbertson to have an intake structure as taught by Bachman in order to allow fuel to fill the fuel tank.
Van de Loo teaches an exhaust redirection configuration (72) that channels exhaust gas from a diesel generator (14) to an existing flue structure (20) of a home (20).
Leith teaches a chimney (Shown in Figure 1).
It would have been obvious to one of ordinary skill in the art at the time of filing of the application to modify the system of Culbertson to channel exhaust gas as taught by Van de Loo in order to utilize the waste heat from the exhaust (Paragraph [0061] of Van de Loo) and to have a chimney around the flue in order to protect the flue from weather (Col 1, Lines 5-10 of Leith).
In regards to claim 12:
Culbertson teaches connecting a diesel generator includes mounting a manually operated pump (125) within the fuel transfer line to facilitate diesel fuel movement (Figures 4-13 show a user manually adjusting the fuel to be conveyed by the pump via a computer based on a determined load).
In regards to claim 14:
Culbertson teaches the integration of the diesel generator with the home's electrical system includes employing an electrical grid controller (300) to regulate the distribution of power (Col 10, Lines 10-19).
In regards to claim 15:
Culbertson as modified teaches the adaptation of the home's current exhaust pathways to convey the diesel generator's exhaust without extensive alterations to the existing structure, wherein Van de Loo teaches an existing flue that is attached to the exhaust of the generator, and uses a conduit to connect the exhaust line to the flue.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Culbertson, Bachman, Van de Loo, and Leith as applied to claims 10 above respectively, and further in view of Guglia.
In regards to claim 11:
Culbertson does not teach the installing of an intake involves affixing a funnel to the oil tank for receiving diesel fuel.
Guglia teaches a funnel (1) affixed to an intake to an oil tank.
It would have been obvious to one of ordinary skill in the art at the time of filing of the application to modify the intake of Culbertson to have a funnel as taught by Guglia in order to aid in the refueling of the fuel tank. Wherein funnels are known in the art to provide a larger mouth to prevent spillage and tapered conically to direct the fluid.
Claims 7 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Culbertson, Bachman, Van de Loo, Guglia and Leith as applied to claims 1 and 10 above respectively, and further in view of Petty et al (US 5,769,033 hereinafter “Petty”).
In regards to claim 7:
Culbertson does not teach a burner, which is adapted to combust diesel fuel for the generation of heat.
Petty teaches a burner (32) that is adapted to combust diesel fuel for generation of heat (Col 4, Lines 36-38).
It would have been obvious to one of ordinary skill in the art at the time of filing of the application to modify the system of Culbertson to have a burner as taught by Petty in order to provide heat. Wherein Petty teaches a burner that can use a plurality of fuels including diesel and heating oil (Col 4, Lines 36-38) in order to burn said fuel and convert the fuel into energy in the form of heat.
In regards to claim 13:
Culbertson does not teach a burner to burn diesel fuel to provide home heating.
Petty teaches a burner (32) that is adapted to combust diesel fuel for generation of heat (Col 4, Lines 36-38).
It would have been obvious to one of ordinary skill in the art at the time of filing of the application to modify the system of Culbertson to have a burner as taught by Petty in order to provide heat. Wherein Petty teaches a burner that can use a plurality of fuels including diesel and heating oil (Col 4, Lines 36-38) in order to burn said fuel and convert the fuel into energy in the form of heat.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Culbertson, Bachman, Van de Loo, Guglia and Leith as applied to claim 1 above and further in view of Humburg (US 2012/0211200).
In regards to claim 9:
Culbertson does not teach a hot water heater that is supplied with diesel fuel from the fuel tank via a dedicated line to deliver heated water for domestic use.
Humburg teaches a hot water heater (12) that is supplied with diesel fuel (Paragraphs [0003] and [0015] recite fuels that may be used) from a fuel tank (20) via a dedicated line (Shown in Figure 1) to deliver heated water for domestic use (Paragraph [0005]).
It would have been obvious to one of ordinary skill in the art at the time of filing of the application to modify the system of Culbertson to have a water heater as taught by Humburg in order to deliver hot water.
Response to Arguments
Applicant's arguments filed 1/7/2026 have been fully considered but they are not persuasive. Applicant has argued the prior art does not teach all of the amended limitations. Examiner respectfully disagrees and explains below.
Applicant has added the language of “wherein the existing oil tank is cleaned to eliminate residue that could interfere with operation of the diesel fuel”. Applicant concedes in the amendment that the oil tank has existed prior to any involvement by the Applicant and furthermore has amended the claim to recite functional language. An example to convey this to Applicant would be, if Applicant were to were to have an invention such as a portable gas tank to hold gasoline. One would not be able to claim they have invented a new invention by cleaning that portable gas tank and filling it up with diesel and has now produced a new invention. The prior art teaches the cleaning of a fuel tank and Applicant does not recite any language in the claim to differentiate Applicant’s cleaning process to every cleaning process that has come before. Applicant concedes in the 7th page of Remarks dated 1/29/2026 that “the cleaning is not mere maintenance, it is a critical functional limitation”. Claims are addressed and differentiated by structural limitations, so one may use a funnel for ice cream, popcorn, or to change their oil, but this does not create three different inventions. Applicant further argues the prior art of “Leith” lacks any teaching regarding compatibility issues between residual heating oil and modern gas generators, however Applicant claims an oil tank previously used for heating oil, once cleaned, can be used for modern gas generators, but one from the prior art is incapable of the same process due to compatibility issues. Examiner respectfully disagrees, wherein Applicant concedes that they are not inventing a gas tank and relying on a previously invented gas tank, and are merely cleaning said gas tank to then fill the gas tank with diesel fuel.
Applicant has added the language of “wherein the modified intake structure comprises a funnel configured to facilitate manual addition of the diesel fuel by untrained personnel”. This amendment does overcome the initial prior art; however, the inclusion of a funnel was previously addressed in the rejection of Claim 3 in the Office Action dated 1/7/2026 and has been applied to independent Claim 1. The usage of funnels is known in the art to allow an inlet to have a larger cross-sectional area to prevent spillage of a fluid, and to direct said fluid to a narrower outlet. Applicant argues that the prior art of Bachman teaches away from a professional delivery system and that “untrained personnel” should have patentable weight. Examiner respectfully disagrees, wherein this is functional language and there is no structural language to differentiate one that is untrained or trained.
Applicant has added the language of “wherein the system is a stepwise retrofitting of an original heating system, the stepwise retrofitting comprising a modification of an original intake, designed for specialized providers, into the modified intake structure”. New 35 U.S.C. 112(b) rejections have been added to address this, wherein the claim recites that the apparatus is now a method of retrofitting. The claim also contains language that adds confusion in that the “modified intake structure” is to allow untrained personnel to add fuel, however it is “designed for specialized providers”. Although this is functional language, it adds to the confusion in what Applicant is trying to convey and has been rejected above with 35 U.S.C. 112(b) rejections. Applicant has emphasized that the prior art does not teach “designed for specialized providers”, however Applicant does not recite what structure that defines, such as for example a key pad on the fuel tank that only a specialized provider may know the password to. Another example to convey to applicant, if Applicant were to have an invention, and one were to copy that invention but add the limitation that the invention is to be used by a specially trained individual, that would not constitute as a new invention, such as if Applicant were to invent a car, and another were to claim every single detail verbatim as applicant, but at the end recite the user is to be a specially trained individual, this would not differentiate the structure of the car from Applicant’s car. Applicant is reminded that claims are differentiated by structure recited in the claims, and one of ordinary skill in the art would not know what Applicant has in mind when referring to a “specialized provider” and this is not a common term used to define a specific structure.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JAMES JAY KIM whose telephone number is (571)270-7610. The examiner can normally be reached M-F 9-5 EST.
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/JAMES J KIM/Examiner, Art Unit 3747 /HUNG Q NGUYEN/Primary Examiner, Art Unit 3747