DETAILED ACTION
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the figures submitted 2 August 2024 are generally of low visual quality obscuring structural elements and element numbers. Examiner notes especially, Figures 1, 3-15, and 17A-27C. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
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 1, 3-16 and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 and 24-30 of U.S. Patent No. 11,668,226. Although the claims at issue are not identical, they are not patentably distinct from each other because:
From the offset, in regard to US Pat No 11,668,226, Examiner notes that claims 24-29 all depend from claim 8, and claim 30 depends from claim 29.
All limitations of claim 1 of the instant application are analogously found in claims 8, 29, and 30 of US Pat No 11,668,226.
Examiner notes that the limitation from claim 1: “is selectively controlled based on a measured input” is equivalent to the limitation from claim 30 of US Pat No 11,668,226 “is actuated in response to one or more of temperature measured within the expansion chamber, exhaust pressure, turbo boost pressure, and flow of exhaust through the turbocharger”, as any of the listed parameters that could potentially be measured are a “measured input”. Further “selectively controlled based on” and “actuated in response to” are also considered to be equivalent.
All limitations of claim 3 of the instant application are analogously found in claim 30 of US Pat No 11,668,226.
All limitations of claim 4 of the instant application are analogously found in claim 8 of US Pat No 11,668,226.
All limitations of claim 5 of the instant application are analogously found in claim 8 of US Pat No 11,668,226.
All limitations of claim 6 of the instant application are analogously found in claim 8 of US Pat No 11,668,226.
All limitations of claim 8 of the instant application are analogously found in claim 26 of US Pat No 11,668,226.
All limitations of claim 9 of the instant application are analogously found in claim 30 of US Pat No 11,668,226.
All limitations of claim 10 of the instant application are analogously found in claim 8 of US Pat No 11,668,226.
All limitations of claim 11 of the instant application are analogously found in claim 8 of US Pat No 11,668,226.
Examiner notes that the limitation from claim 11 “an expansion chamber having a first end connected to receive exhaust from the engine” is equivalent to the limitation from claim 8 of US Pat No 11,668,226 “an engine assembly comprising an engine and an exhaust manifold, the exhaust manifold having first and second inlets and first and second outlets, wherein the first inlet is connected to receive exhaust from a first cylinder and the second inlet is connected to receive exhaust from a second cylinder, wherein exhaust provided at the first and second inlets is communicated by the exhaust manifold to the first and second outlets; an expansion chamber having a first end connected to receive exhaust from the first outlet”, as both describe a flow path from the engine to the first end of the expansion chamber.
All limitations of claim 12 of the instant application are analogously found in claim 8 of US Pat No 11,668,226.
All limitations of claim 14 of the instant application are analogously found in claim 25 of US Pat No 11,668,226.
All limitations of claim 15 of the instant application are analogously found in claim 28 of US Pat No 11,668,226.
All limitations of claim 16 of the instant application are analogously found in claims 29 and 30 of US Pat No 11,668,226.
All limitations of claim 18 of the instant application are analogously found in claim 30 of US Pat No 11,668,226.
All limitations of claim 19 of the instant application are analogously found in claim 8 of US Pat No 11,668,226
Claims 7 and 13 recite: “wherein the internal wastegate is selectively controlled based on exhaust pressure exerted on the internal wastegate, wherein the internal wastegate is opened in response to increased exhaust pressure and closed in response to decreased exhaust pressure” and claim 25 of US Pat No 11,668,226 recites: “wherein the internal wastegate comprises a valve actuated in response to exhaust pressure”, Examiner takes Official Notice that the purpose of a wastegate is to relieve excess pressure, and as such it would have been obvious to one of ordinary skill in the art at the time the invention was made to configure a waste gate that responds to pressure to open in response to high pressure and to close in response to low pressure.
Allowable Subject Matter
Claims 2 and 17 are objected to as being dependent upon a rejected base claim, but appear they would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB M AMICK whose telephone number is (571)272-5790. The examiner can normally be reached Core Hours 10-6 M-F (First Fridays Off).
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/JACOB M AMICK/Primary Examiner, Art Unit 3747