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 .
Application Status
This communication is in response to the Amendment and Request for Reconsideration filed 20 October 2025. Claims 18-34 are pending in the application. Claim 18 has been amended.
The claim objections have been overcome by Applicant’s amendments.
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.
Claim 18, 21-23, 32 and 33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20, 23, 29, 32, 33 and 38 of copending Application No. 18/726,822 (‘822). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application recites common subject matter.
As to claim 18, this is a broader version of the device recited in claims 20 and 23 of ‘822. If issued, this claim would be fully anticipated by the claims of the reference application.
As to claim 21, this claim is covered at least in part by claim 20 and 29 of ‘822 since the outlet of the condensate channel reads on the drain valve of ‘822.
As to claim 22, this claim is covered by claim 32 of ‘822.
As to claim 23, this claim is covered at least in part by claim 33 of ‘822.
As to claims 32 and 33, these claims are covered by at least claims 20 and 38 of ‘822.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 18 and 20-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mutschele et al. (German Patent Application Publication No. DE 102019003386).1
Regarding claim 18, Mutschele discloses a device for an anode gas recirculation in a fuel cell system (FIG.’s 1-3, Machine Translation ‘MT’ Abstract), the device comprising a blower which comprises:
a rotor wheel 15.2 (FIG. 3, MT p. 5, 4th para.);
a conveying channel 18, 19 (MT p. 6, 1st para.) which extends from a conveying channel inlet to a conveying channel outlet (as shown);
an electric motor 15.1 (MT p. 5, 4th para.) which comprises a drive shaft on which the rotor wheel 15.2 is attached (refer to an Annotated copy of Mutschele FIG. 3 attached below, as shown and indicated);
a condensate drain channel 27, 28 (Annotated Mutschele FIG. 3, as shown, at least two channels disclosed); and
a cooling channel 25, 26 (MT p. 5, 5th para. to MT p. 6, 1st para., Annotated Mutschele FIG. 3, as shown, groove 25 and gap 26) which is configured to have the anode gas flow therethrough and which is arranged to least partially surround the electric motor 15.1 (as shown, channel surrounds motor under the broadest reasonable interpretation of the terms at least partially because channel 25, 26 is located in the wall of the housing surrounding motor 15.1), the cooling channel 25, 26 being defined by a radially outer wall (Annotated Mutschele FIG. 3, as shown and indicated) and being further configured as a droplet separator so that droplets can be discharged via the condensate drain channel 27 (MT p. 6, 1st para., annular duct water separator groove 25 and gap 26 allows liquid to form along its walls causing water to pass through gap and connecting hole 27 into reservoir 24, __interpreted as forming the claimed radially outer wall droplet separator according to the broadest reasonable interpretation of the terms) and so that a cooling function and a condensation function are realized in the cooling channel in a single process step (intended use/result limitation inherently met at least broadly because Mutschele’s channel 25, 26 is designed to form water droplets from the moisture laden gas stream, doing so involves condensation or formation of water droplets which would provide a degree of cooling under the broadest reasonable interpretation of the terms).2
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Annotated Mutschele FIG. 3
As to claim 20, Mutschele further discloses the rotor wheel 15.2 of the blower is arranged completely above or completely below the electric motor 15.1 (as shown), and the drive shaft is aligned in a direction of an acting gravitational force in a built-in state of the device (as shown).
As to claim 21, Mutschele further discloses an outlet 16 (MT p. 5, 3rd para., drain valve) of the condensate drain channel 27, 28 the outlet 16 being arranged at a lower end of the blower below the conveying channel 18, 19 (as shown).
As to claim 22, Mutschele further discloses an opening 30 which defines an inlet of the condensate drain channel 27, 28 (Annotated Mutschele FIG. 3, as shown and indicated); and a wall which defines the cooling channel at a bottom (as shown), the wall being configured to be inclined to the opening which defines the inlet of the condensate drain channel (Annotated Mutschele FIG. 3, as shown and indicated).
As to claim 23, Mutschele further discloses the wall is configured to be downwardly delimiting (as shown), and the inlet 30 of the condensate drain channel 27, 28 is arranged in the wall at a radially outer region which is opposite to the radially outer wall (Annotated Mutschele FIG. 3, as shown, at least broadly since inlet is arranged in the wall radially spaced from the inlet depending upon viewing perspective __a radially outer region accordingly).
Allowable Subject Matter
Claims 19, 24-31 and 34 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 32 and 33 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims provided that the nonstatutory double patenting rejections are overcome.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 19, the prior art of record either alone or in combination does not teach or fairly suggest the device of claim 18 further wherein the cooling channel is further arranged to be upstream of the conveying channel.
With respect to claim 24 and dependents, the prior art of record either alone or in combination does not teach or fairly suggest the device of claim 18 including the intervening features recited in claims 22 and 23, further comprising an anode gas outlet of the cooling channel, the anode gas outlet being arranged to lead directly into the conveying channel inlet.
With respect to claim 32 and dependents, the prior art of record either alone or in combination does not teach or fairly suggest the device of claim 18 further wherein the cooling channel surrounds the electric motor in a helical shape.
It is the Examiner’s opinion that modifying Mutschele in the manner claimed is not foreseeable in this instance because its annular duct water separator 25, 26 is downstream of the blower. The instant invention cools anode gas and removes water with a single upstream helical cooling channel, a space saving improvement over the prior art.
Response to Arguments
Applicant's remarks have been fully considered but they are not persuasive.
Applicant argues, on pp. 7-8 of the response, that the instant application claims should not be subject to nonstatutory double patenting rejections over co-pending related Application No. 18/726,822 because the “…nonstatutoroy double patenting rejection is here improper.” “A rejection based on nonstatutory double patenting is based on a judicially created doctrine grounded in public policy so as to prevent the unjustified or improper timewise extension of the right to exclude granted by a patent.” The Examiner understands but respectfully disagrees. The judicially created doctrine is primarily for the reason indicated. However, as Applicant acknowledges, the doctrine is also designed “to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention.”3 Further, if there is any delay in prosecution, Patent Term Adjustment (PTA), can be another factor affecting the actual patent term of an issued patent. For these reasons, the Examiner is maintaining the nonstatutory double patenting rejections until it is determined which of the patent applications will issue first.
Applicant argues on pp. 8-9 of the response, that, inter alia, “Mutschele fails to describe, teach or suggest at least the features that "the cooling channel being defined by a radially outer wall and being further configured as a droplet separator so that droplets can be discharged via the condensate drain channel and so that a cooling function and a condensation function are realized in the cooling channel in a single process step" as is now recited in independent claim 18 of the present invention.” Applicant makes more detailed points but the bulk of this argument is directed to Mutschele failing to meet the claim as currently amended. The Examiner respectfully disagrees. Applicant appears to be relying upon the newly amended functional limitations imparting structural features of the cooling channel arrangement that are beyond what the claim is interpreted to cover. In other words, the claims are still overly broad. The newly amended limitation is met by Mutschele’s channel under the broadest reasonable interpretation of the terms because it is designed to separate water droplets from a moisture laden gas stream. Such a process involves condensation and cooling much like how condensation forming on a beverage container imparts a degree of cooling to the surface of the container. Mutschele’s channel would function in much the same way according to basic principles of physics. This argument is unpersuasive.
Applicant continues, arguing on pp. 10-12 of the response, that Mutschele’s cooling channel is actually formed by heat exchanger 11/spiral channel 21 so that interpretation of the droplet separator 14 as the cooling channel is technically inaccurate. The Examiner understands but again respectfully disagrees. Mutschele does in fact disclose the indicated features but the claims currently presently do not exclude covering this and other features because they are drafted using “comprising” in the open format__ allowing for additional elements in the scope of the claim. With this in mind, Mutschels’s water droplet separator 14 and channels 25, 26 are interpreted to cover the recited cooling channel for the reasons set forth in the statement of the rejection and in the previous paragraph. This argument is also not persuasive.
Applicant has not presented any substantive arguments with regard to the rejections of the dependent claims over the art of record including the combinations of proposed modification, rationale, or motivations to make those combinations. Applicant simply asserts that they are allowable for the same reasons made for the independent claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 KENNETH J HANSEN whose telephone number is (571)272-6780. The examiner can normally be reached Monday Friday 7:00 AM to 4:00 PM (MT).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached at (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KENNETH J HANSEN/Primary Examiner, Art Unit 3746
1 Cited as For. Pat. No. B1 in the IDS filed 27 May 2024.
2 Applicant’s invention requires a cooling channel considerably different than Mutschele in that it surrounds the motor. One suggestion to overcome this rejection is to amend the claim to recite that the “cooling channel … is arranged to [[at least partially] surround the electric motor”, deleting the terms in brackets.
3. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). Refer to MPEP 1504.06.
Prosecution Insights