DETAILED ACTION
This is on the merits of Application No. 18/797700, filed on 08/08/2024. Claims 11-26 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statements (IDS), submitted on 10/30/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Claim Objections
Claim 17 objected to because of the following informalities:
Claim 17 states “configured to received air” and should state –configured to receive air--.
Appropriate correction is required.
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 11-12, and 23 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-7, and 9 of U.S. Patent No. 11173808. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of claim 11 are present in claims 1 and 6 of the patent. The patent provides further limitations not present in the current application, making this a nonstatutory double patenting situation. While claim 12 is not identical to the patent claim 7, it still establishes the air intake volume being forward of the radiator while being partially forward of the radiator, thus defined by the rear frame. Claim 9 of the patent covers the same limitation of claim 23.
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 13 and 21-22 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 13 states “further comprising on operator are supported by the frame”. This sentence is grammatically confusing and does not make sense. As best understood, this appears to be trying to state --further comprising an operator area supported by the frame—and will be examined as such.
Claims 21-22 state “the engine”. There is a lack of antecedent basis for this limitation in the claim. Is this part of the powertrain assembly or a new element?
Claim Rejections - 35 USC § 102
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 11-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent App. Pub. No. 2002/0040822 to Gagnon et al.
Gagnon discloses:
(Claim 11) A utility vehicle (Fig. 2) comprising: a plurality of front ground engaging members (Fig. 2 front wheels); a plurality of rear ground engaging members (Fig. 2 rear wheels); a frame (34 38) supported by the front and rear ground engaging members, the frame including a front frame portion (34) and a rear frame portion (38); a body assembly comprising a plurality of body panels supported by the frame (Fig. 4 shows the frame and Fig. 3 shows the body assembly with body panels supported on the frame); a powertrain assembly (Fig. 3 element 150) operably coupled to the front and rear ground engaging members; and a cooling assembly (Fig. 10) operably coupled to the powertrain assembly (see par. [0071]) and including a radiator (170) supported by the rear frame portion.
(Claim 12) wherein an air intake volume (Fig. 12 element 190) for the radiator is positioned forward of the radiator and is partially defined by the rear frame portion (see Figs. 10-12).
(Claim 13) further comprising on operator are supported by the frame, wherein the radiator is rearward of the operator area (Figs. 3 and 11-12, operator area 140 is in front of radiator 170).
(Claim 14) wherein the air intake volume is defined intermediate frame members of the rear frame portion (see Figs. 3 and 10).
(Claim 15) wherein the body assembly includes at least one fender (112), and wherein the air intake volume is open to exterior air proximate the at least one fender (see Fig. 12).
(Claim 16) wherein the at least one fender is configured to direct air into the air intake volume (see Figs. 11 and 12).
(Claim 17) wherein the air intake volume is configured to received air from right and left sides of the utility vehicle (see Figs. 11-12).
(Claim 18) wherein the at least one fender defines an opening in fluid communication with the air intake volume (see Figs. 11 and 12).
(Claim 19) wherein the at least one fender include a recess positioned adjacent the opening, the recess configured to facilitate air flow toward opening and into the air intake volume (see Figs. 11-12).
(Claim 20) wherein the opening is forward of the radiator (see Figs. 11-12).
(Claim 21) wherein the air intake volume is positioned above the engine (see Fig. 3, engine 150 is below where radiator is positioned).
(Claim 22) wherein the cooling assembly includes a baffle plate (portion of 112 between engine 150 and air intake volume 190, best seen in Fig. 12) positioned between the engine and the air intake volume.
(Claim 23) further comprising a cargo area (Fig. 2 element 124) of the vehicle positioned above the radiator (see Fig. 3).
(Claim 24) wherein the cooling assembly includes at least one fan (Fig. 10 element 172) positioned rearward of the radiator.
(Claim 25) wherein the at least one fan directs air rearwardly at a rear end of the utility vehicle such that the air flows away from the utility vehicle (see Fig. 10).
(Claim 26) wherein the radiator is positioned to define an angle greater than zero degrees relative to a vertical axis (see Fig. 10).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY HANNON whose telephone number is (571)270-1943. The examiner can normally be reached Monday - Friday 10-6.
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/TIMOTHY HANNON/Primary Examiner, Art Unit 3655
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