DETAILED ACTION
Status of Claims:
Claims 21-40 are pending.
Claims 38-40 are withdrawn from consideration.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 21-23 and 31-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,018,797. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 21:
The claims of the patent disclose the system, comprising: a filter; a refill system (component of an engine and pump); a valve (multi-position valve), wherein an inlet of the valve is fluidically couplable to an outlet of a component of the refill system (pump), wherein an outlet of the valve is fluidically couplable to a second common junction with an inlet of the filter; a sensor configured to generate a signal; and a control module communicatively coupled to the valve, wherein the control module is configured to detect a triggering condition based on the generated signal and control operation of the valve based on the detected triggering condition (see claim 17).
Regarding Claim 22:
The claims of the patent disclose the system of claim 21, further comprising a supplemental pump (pump) configured to force a fluid through the filter prior to provision of the fluid to a main pump (see claim 17).
Regarding Claim 23:
The claims of the patent disclose the system of claim 22, wherein an outlet of the filter is couplable to an engine comprising the main pump (see claim 19).
Regarding Claim 31:
The claims of the patent disclose the system ,comprising: a prelubrication system; a valve, wherein an inlet of the valve is fluidically couplable (shares a common junction) to an outlet of the prelubrication system; a sensor configured to generate a signal; and a control module communicatively coupled to the valve, wherein the control module is configured to detect a triggering condition based on the generated signal and control operation of the valve based on the detected triggering condition (see claim 1).
Regarding Claim 32:
The claims of the copending application disclose the system of claim 31, further comprising a filter (see claim 4).
Regarding Claim 33:
The claims of the copending application disclose the system of claim 32, wherein the prelubrication system comprises a supplemental pump configured to force a fluid through the filter prior to provision of the fluid to a main pump (see claim 2).
Regarding Claim 34:
The claims of the copending application disclose the system of claim 33, wherein the control module is further configured to control operation of the supplemental pump (see claim 12).
Regarding Claim 35:
The claims of the copending application disclose the system of claim 31, wherein the signal is indicative of a fluid condition, and wherein detection of the triggering condition is associated with the fluid condition (see claim 10).
Regarding Claim 36:
The claims of the copending application disclose the system of claim 31, wherein the signal is indicative of a machine condition (signals indicative of the fluid are also indicative of the machine), and wherein detection of the triggering condition is based associated with the machine condition (see claim 10).
Regarding Claim 37:
The claims of the copending application disclose the system of claim 31, wherein the signal is indicative of an operational state condition (signals indicative of the fluid are also indicative of the operational state), and wherein detection of the triggering condition is associated with the operational state (see claim 10).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claim(s) 21, 27-32, and 35-37 is/are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Apostolides (USPN 7,793,681).
Regarding Claim 21:
Apostolides teaches the system, comprising: a filter; a refill system (reservoirs and engine); a valve (valve 2012), wherein an inlet of the valve is fluidically couplable to an outlet of a component of the refill system, wherein an outlet of the valve is fluidically couplable to a second common junction with an inlet of the filter (see col. 26 lines 4-48, fig. 31 annotated below); a sensor configured to generate a signal (sensors employed in various embodiments) (see col. 14 lines 65-67); and a control module communicatively coupled to the valve, wherein the control module is configured to detect a triggering condition based on the generated signal and control operation of the valve based on the detected triggering condition (controls are associated with valve systems) (see col. 14 lines 31-39).
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Regarding Claim 27:
Apostolides teaches the system of claim 21, wherein the filter comprises a fine filtration medium (see col. 26 lines 46-48).
Regarding Claim 28:
Apostolides teaches the system of claim 21, wherein the signal is indicative of a fluid condition (oil temperature), and wherein detection of the triggering condition is associated with the fluid condition (see col. 15 lines 1-9).
Regarding Claim 29:
Apostolides teaches the system of claim 21, wherein the signal is indicative of a machine condition (oil pressure), and wherein detection of the triggering condition is based associated with the machine condition (see col. 15 lines 1-9).
Regarding Claim 30:
Apostolides teaches the system of claim 21, wherein the signal is indicative of an operational state (cycles of engine operation), and wherein detection of the triggering condition is associated with the operational state (see col. 15 lines 1-9).
Regarding Claim 31:
Apostolides teaches the system, comprising: a prelubrication system (reservoirs); a valve, wherein an inlet of the valve is fluidically couplable to an outlet of the prelubrication system (see col. 26 lines 4-35, fig. 31 annotated above); a sensor configured to generate a signal; and a control module communicatively coupled to the valve, wherein the control module is configured to detect a triggering condition based on the generated signal and control operation of the valve based on the detected triggering condition (see col. 14 lines 1-4 and 35-36 and col. 15 lines 1-9).
Regarding Claim 32:
Apostolides teaches the system of claim 31, further comprising a filter (see fig. 31 annotated above, col. 26 lines 4-35).
Regarding Claim 35:
Apostolides teaches the system of claim 31, wherein the signal is indicative of a fluid condition (oil temperature), and wherein detection of the triggering condition is associated with the fluid condition (see col. 15 lines 1-9).
Regarding Claim 36:
Apostolides teaches the system of claim 31, wherein the signal is indicative of a machine condition (oil pressure), and wherein detection of the triggering condition is based associated with the machine condition (see col. 15 lines 1-9).
Regarding Claim 37:
Apostolides teaches the system of claim 31, wherein the signal is indicative of an operational state (cycles of engine operation), and wherein detection of the triggering condition is associated with the operational state (see col. 15 lines 1-9).
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 22-25, 32 and 34 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Apostolides (USPN 7,793,681) as applied to claim 21 above, and further in view of Apostolides (USPN 5,957,240, hereafter referred to as ‘240).
Regarding Claim 22:
Apostolides teaches the system of claim 21, further comprising a supplemental pump configured to force a fluid through the filter (introduced through the actions of the pump) (see col. 26 lines 16-20).
Apostolides does not explicitly teach that the supplemental pump is prior to provision of the fluid to a main pump. Apostolides teaches that the supplemental pump pumps fluid through the filter to the engine (see fig. 31 above).
‘240 teaches an engine having a main pump (see col. 3 lines 24-27) in addition to a supplemental pump (see col. 4 lines 52-55).
Apostolides and ‘240 are analogous inventions in the art of engine systems. It would have been obvious to one skilled in the art before the effective filing date of the invention to use the system of Apostolides in conjunction with an engine having a main pump because through routine experimentation it would have been obvious to one skilled in the art to find appropriate uses for the known system, with an expectation of success. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Regarding Claim 23:
Apostolides, as modified, teaches the system of claim 22, wherein an outlet of the filter is couplable to an engine comprising the main pump (see ‘240 col. 3 lines 24-27).
Regarding Claim 24:
Apostolides, as modified, teaches the system of claim 22, wherein the control module is further configured to control operation of the supplemental pump based on the detected triggering condition (see Apostolides col. 14 lines 9-10).
Regarding Claim 25:
Apostolides, as modified, teaches the system of claim 22, wherein an inlet of the supplemental pump is couplable to a fluid reservoir (see Apostolides fig. 31, Annotated above).
Regarding Claim 33:
Apostolides teaches the system of claim 32, further comprising a supplemental pump configured to force a fluid through the filter (introduced through the actions of the pump) (see col. 26 lines 16-20).
Apostolides does not explicitly teach that the supplemental pump is prior to provision of the fluid to a main pump. Apostolides teaches that the supplemental pump pumps fluid through the filter to the engine (see fig. 31 above).
‘240 teaches an engine having a main pump (see col. 3 lines 24-27) in addition to a supplemental pump (see col. 4 lines 52-55).
Apostolides and ‘240 are analogous inventions in the art of engine systems. It would have been obvious to one skilled in the art before the effective filing date of the invention to use the system of Apostolides in conjunction with an engine having a main pump because through routine experimentation it would have been obvious to one skilled in the art to find appropriate uses for the known system, with an expectation of success. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Regarding Claim 33:
Apostolides teaches the system of claim 33, wherein the control module is further configured to control operation of the supplemental pump (see col. 14 lines 8-10).
Claim 26 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Apostolides (USPN 7,793,681) as applied to claim 21 above, and further in view of Wendels et al (USPN 6,655,342).
Regarding Claim 26:
Apostolides teaches the system of claim 21.
Apostolides does not teach the filter comprises at least one of an electrical filter, a magnetic filter, a centrifugal filter, a paper-based filter, or a synthetic filter, or combinations thereof.
Wendels teaches a paper-based filter (tissue paper) (see col 4 lines 9-10) used in a filter associated with a pre-lubrication system.
Apostolides and Wendels are analogous inventions in the art of pre-lubrication systems. It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the filter material of Apostolides with a paper-based filter, as disclosed by Wendels because it is the simple substitution of one know filter material for another known filter material, obviously resulting in the filtration of the fluid, with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 9/4/2026
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