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 .
Claim Interpretation
Claim 8 is interpreted as an independent Claim which incorporates the limitations of Independent Claim 1 in a shorthand fashion.
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 8-10 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.
Claims 8-10 mix statutory classes in a single claim which is impermissible because it creates ambiguity regarding when direct infringement occurs. Claims 8-10 mix structural system elements (e.g., a mixer, an actuator and a pressure differential sensor) and method steps (e.g., a method for controlling a fuel-air mixture as recited in independent Claim 1) are indefinite under 35 U.S.C. § 112(b). Under established Federal Circuit precedent—primarily IPXL Holdings v. Amazon.com—claims that cover both an apparatus (system) and a method of use of that apparatus are invalid. This is because it is unclear if infringement occurs when a manufacturer builds the claimed system or when an end-user actually operates the mixer, actuator and a pressure differential sensor to control the air/fuel ratio. Also, since the claim mixes the act of controlling with the apparatus that allows the controlling. Therefore, the claims are indefinite. See also MPEP § 2173.05(p)(II): “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
Allowable Subject Matter
Claims 1-7 are allowed.
Claims 8-10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure because the references are either in the same field of endeavor or are reasonably pertinent to the particular problem with which the applicant was concerned. Please see form PTO-892 (Notice of References Cited) attached to, or included with, this Office Action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JORGE A PEREIRO whose telephone number is (571)270-3932 and whose fax number is (571) 270-4932. The examiner can normally be reached on M-F 9:00 - 5:00 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Helena Kosanovic can be reached at (571) 272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JORGE A PEREIRO/ Primary Examiner, Art Unit 3799
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