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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,035,418 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Maintenance Fee Reminder
Applicant is reminded during the prosecution of the instant reissue patent application, maintenance fees must be kept up to date for the Patent No. 10,035,418 (“the ‘418 patent”). A review of the maintenance fee status for the ‘418 patent shows the 3.5 year fee has been paid and the 7.5 year fee is currently due and opened on July 31, 2025, the surcharge starts February 3, 2026, and the last day to pay is July 31, 2026.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. RE50,108. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims are narrow in scope than the instant claims. The patent claims include all of the limitations of the instant claims with some addition features, and as such, encompass and read on the instant claims. Thus patent claims 1-18 render instant claims 1-18 unpatentable under anticipatory type obvious double patenting.
Allowable Subject Matter
Claims 19-36 would be allowable if a proper terminal disclaimer (TD) is filed to overcome the rejection(s) under nonstatutory double patenting, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art, Brown et al. (US-20140150422) discloses a method comprising detecting (via 338) one or more of opening or closing of a lid 214 for a recessed compartment 208; and changing a flow rate of gas into the recessed compartment (see paragraph [0023], lines 7-11), upon or after detecting the opening or closing of the lid (see paragraph [0023], lines 7-11) and before, during or after dispensing fuel and delivering the fuel through the recessed compartment (as depicted in Figure 4) and into a mobile fuel storage tank 202 (mobile as it is part of vehicle 200) (Figures 1-4), but does not expressly disclose the one or more of the opening or closing of the lid comprises detecting a motion of the lid from an open state towards a closed state, or from the closed state to the open state.
Royle et al. teaches detecting (via 32) the motion of a fire door (lid) of a stair well (recessed compartment) from a closed state to an open state and changing a flow rate of gas (pressurized air flow rate changes from zero to a positive pressure) into the stairwell upon detecting the opening or closing of the door (Figures 1-18). However, Royle et al. has nothing to do with fuel dispensing or any kind of mobile dispensing device. Thus, it would not have been obvious to combine Royle et al. with Brown et al. As such, claims 19-36 are allowable.
Therefore, the prior art of record, when taken as a whole, does not disclose or suggest the combination of claim 19, including a method comprising detecting one or more of opening or closing of a lid for a recessed compartment, before, during, or after dispensing fuel from and delivering fuel to a storage, wherein detecting the one or more of the opening or closing of the lid comprises detecting a motion of the lid from an open state towards a closed state, or from the closed state towards the open state in conjunction with the rest of the limitations of claim 19.
Response to Arguments
With respect to Applicant’s arguments starting on page 7, line 11 to page 7, line 24, Applicant argues the subject matter of the claims have not been allowed, new claims 19-36 are different from as-filed claims 1-18, allowed claims may be different than the claims rejected for double patenting, and Applicant will file a terminal disclaimer if one or more claims is indicated as allowable. Applicant’s arguments are not persuasive. The amendment to the claims have in fact made the claims closer to the claims of RE50,108 in that the limitation, “detecting a motion of the lid from an open towards a closed state, or from the closed state towards the open state” has been added back to replace from a first state to a second state. The only difference between instant claims 19-36 and the claims of RE50108 is that RE50108 is narrower and has extra limitations, such as “through the recessed compartment…mobile fuel…tank”. Thus the double patenting rejection is maintained.
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 WILLIAM E DONDERO whose telephone number is (571)272-5590. The examiner can normally be reached Monday-Friday 6 am - 4 pm ET, Alternate Fridays.
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, EILEEN D LILLIS can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM E DONDERO/Reexamination Specialist, Art Unit 3993
CONFEREES: /WILLIAM C DOERRLER/ /EILEEN D LILLIS/ Reexamination Specialist, Art Unit 3993 SPRS, Art Unit 3993
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