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 .
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.
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Claims 1-10 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10,851,728. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 9 of the ’728 patent recite evaluating incoming air to a first internal combustion engine with a sensor to detect a concentration of at least one flammable gas, determining whether the detected concentration is between a first threshold concentration and a higher second threshold concentration, transmitting a first signal to shut down the engine by sending an electronic code to an EMS controller when the detected concentration exceeds the first threshold, and transmitting a second signal causing a valve to close and terminate airflow into the air intake when the detected concentration is above the second threshold. Claims 1, 9, 10 and 13 of the present application are anticipated by claims 1 and 9 of the ’728 patent, and claims 2-8 of the present application correspond to claims 2-8 of the ’728 patent.
Claims 1-7, 9 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,661,896. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 8 of the ’896 patent recite evaluating incident air provided to a first engine with a sensor to detect a concentration of at least one flammable gas, determining whether the detected concentration is above at least a first threshold concentration, and transmitting a signal to shut down the first engine by sending an electronic code to an EMS controller. Claim 1 of the present application is anticipated by claims 1 and 8 of the ’896 patent, and claims 2-7, 9 and 10 of the present application correspond to claims 2-7, 8 and 9 of the ’896 patent.
Claims 1-10 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,098,686. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 9 of the ’686 patent recite evaluating incident air provided to a first engine with a sensor to detect a concentration of at least one flammable gas, determining whether the detected concentration is above at least a first threshold concentration, shutting down the first engine by sending an electronic code to an EMS controller, and transmitting a shutdown signal from the first engine to other sensors within a geographical zone over a mesh network to direct a shutdown of at least one second engine. Claims 1 and 17 of the present application are anticipated by claims 1 and 9 of the ’686 patent, and claims 2-8, 9 and 10 of the present application correspond to claims 2-8, 9 and 10 of the ’686 patent.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 2, 7-10, 13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wright Jr. (US 5,311,851) in view of Hawkins et al. (US 2006/0015244).
Claim 1
Wright discloses a method of activating a pre-set controller, the method comprising: evaluating incident air provided to a first engine with a sensor to detect a concentration of at least one flammable gas in the incident air; determining whether the detected concentration of the at least one flammable gas is at concentration above at least a first threshold concentration; and transmitting a signal to shut down the first engine when the detected concentration is above the at least first threshold concentration (see abstract, Column 1, Lines 15-54 and Column 3, Line 4 through Column 4, Line 57).
Wright does not disclose the signal comprising a kill signal to an engine management system of the first engine.
However, Hawkins discloses a hazardous gas sensor monitored for engine shutdown conditions (paragraph [0015]), generating an engine shutdown signal when a hazardous combustible gas is detected (paragraph [0026]), the shutdown signal comprising a kill signal to an engine management system of the engine (“send a shutdown command to the engine electronic control module by means of a digital communication link”, paragraph [0008]).
Therefore it would have been obvious to modify the method disclosed by Wright with the shutdown command to the engine electronic control module disclosed by Hawkins in order to provide an immediate electronic shutdown redundant to the air shutoff (Hawkins, paragraphs [0003] and [0008]).
Claim 2
Wright/Hawkins disclose the method of claim 1, wherein evaluating incoming air comprises identifying the at least one flammable gas (methane reading, Wright, col. 3, lines 34-38).
Claim 7
Wright/Hawkins disclose the method of claim 1, wherein evaluating incoming air comprises evaluating incoming air at an air intake of the at least first internal combustion engine (Wright, col. 3, lines 39-41).
Claim 8
Wright/Hawkins disclose the method of claim 1, wherein determining comprises receiving data reporting the detected concentration from at least one sensor at a controller and comparing the detected concentration to a threshold below the concentration of flammable gas sufficient to support an overspeed condition (preset level below the run-away level, Wright, col. 1, lines 40-42 and col. 3, lines 49-57).
Claim 9
Wright/Hawkins disclose the method of claim 1, wherein transmitting a signal comprises sending an electronic code to an EMS controller to stop the first internal combustion engine (Hawkins, paragraph [0008], see also rejection of claim 1 above for 103 motivation).
Claim 10
Wright/Hawkins disclose the method of claim 1, wherein transmitting a signal comprises sending a signal to a valve assembly disposed on an air intake to the first internal combustion engine to stop airflow to the first internal combustion engine (flapper valve 38, Wright, col. 4, lines 47-57).
Claim 13
Wright/Hawkins disclose a method according to claim 1, further comprising, when the detected concentration is above a second threshold concentration, the second threshold concentration being above the at least first threshold concentration, sending a signal to a valve assembly disposed on an air intake of the first engine to stop airflow to the first engine (Wright, col. 3, line 64 through col. 4, line 57).
Claim 19
Wright/Hawkins disclose the method of claim 1, further comprising displaying a status of the detected concentration on a display (reading displayed on a meter, Wright, col. 3, lines 36-38).
Claim(s) 3-5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Wright/Hawkins as applied to claim 1 above, and further in view of Lewis et al. (US 2002/0197390).
Claim 3
Wright/Hawkins disclose the method of claim 1, with a sensor detecting the concentration of the flammable gas (Wright, col. 3, lines 34-38).
Wright/Hawkins do not disclose detecting the concentration using a multichannel array sensor.
However, Lewis discloses detecting vapors, including combustible gas detection, using a multichannel array sensor (arrays containing multiple sensing modalities, paragraph [0044]; combustible gas detection, paragraph [0043]).
Therefore it would have been obvious to modify the method disclosed by Wright/Hawkins with the sensor array disclosed by Lewis in order to improve vapor discrimination and quantification (Lewis, paragraph [0044]).
Claim 4
Wright/Hawkins/Lewis disclose the method of claim 1, wherein evaluating incoming air comprises evaluating incoming air using multiple sensors to characterize multiple properties of flammable vapors in the incoming air (array members of different sensing modalities, Lewis, paragraph [0044]; diffusion coefficient, paragraph [0025], see also rejection of claim 3 above for 103 motivation).
Claim 5
Wright/Hawkins/Lewis disclose the method of claim 4, wherein evaluating the incoming air comprises evaluating the incoming air with more than one sensor selected from the group comprising density sensors, thermal conductivity sensors, diffusion rate sensors, evaporation rate sensors, chemically selective redox sensors, chemical solubility sensors, and thermodynamic analysis sensors (diffusion coefficient determination, Lewis, paragraph [0025]; metal oxide gas sensor and electrochemical gas detector, paragraph [0044]).
Claim 18
Wright/Hawkins/Lewis disclose the method of claim 1, wherein the sensor comprises a surface acoustic wave planar chemical sensor (surface acoustic wave arrays, Lewis, paragraph [0044]; surface acoustic wave crystal, paragraph [0027], see also rejection of claim 3 above for 103 motivation).
Claim(s) 6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Wright/Hawkins as applied to claim 1 above, and further in view of Swanson et al. (US 2018/0128763).
Claim 6
Wright/Hawkins disclose the method of claim 1, with a sensor detecting the concentration of the flammable gas (Wright, col. 3, lines 34-38).
Wright/Hawkins do not disclose evaluating incoming air using orthogonal analysis on a MEMS detector to characterize at least one property of a flammable vapor in the incoming air.
However, Swanson discloses a combustible gas sensor having a MEMS pellistor (paragraph [0047]) whose output is analyzed in two independent ways, a first output during an ON time determining the species of the gas and a second output determining its concentration (paragraphs [0010] and [0052]).
Therefore it would have been obvious to modify the method disclosed by Wright/Hawkins with the MEMS pellistor analysis disclosed by Swanson in order to identify the gas species with one MEMS sensor (Swanson, paragraph [0010]).
Claim 14
Wright/Hawkins/Swanson disclose the method of claim 1, wherein evaluating the incident air comprises determining a species of the at least one flammable gas, and transmitting the signal is performed based at least in part on the determined species (species determined, then concentration of that species compared to the threshold, Swanson, paragraphs [0010], [0015] and [0058], see also rejection of claim 6 above for 103 motivation).
Claim(s) 11, 12, 16, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wright/Hawkins as applied to claim 1 above, and further in view of Rivet (US 2014/0048040).
Claim 11
Wright/Hawkins disclose the method of claim 1, with the kill signal sent to the engine electronic control module by a digital communication link (Hawkins, paragraph [0008]).
Wright/Hawkins do not disclose sending the kill signal to the engine management system by a wireless means.
However, Rivet discloses sending engine shutdown signals to the engine controller of a vehicle by a wireless means (radio frequency transmission from remote transmitters, paragraph [0042]; radio signal 46 triggering engine shutdown, paragraph [0044]) and an interface to the engine management system (paragraph [0049]).
Therefore it would have been obvious to modify the method disclosed by Wright/Hawkins with the wireless transmission disclosed by Rivet in order to shut down engines from a remote location (Rivet, paragraph [0042]).
Claim 12
Wright/Hawkins disclose the method of claim 1, with the kill signal sent to the engine electronic control module (Hawkins, paragraph [0008]). Wright/Hawkins do not disclose the engine management system comprising an on-board computer of a vehicle in which the first engine is disposed.
However, Rivet discloses an engine disposed in a vehicle (paragraph [0006]) having an engine or vehicle management computer system (paragraph [0035]) and a vehicle or engine control module on a data bus (paragraph [0040]) to which the shutdown system is connected (paragraph [0049]).
Therefore it would have been obvious to modify the method disclosed by Wright/Hawkins with the vehicle management computer disclosed by Rivet in order to integrate the shutdown with the vehicle’s existing controls (Rivet, paragraph [0049]).
Claim 16
Wright/Hawkins disclose the method of claim 1. Wright/Hawkins do not disclose recording sensor data including a gas exposure and a location associated with the detected concentration.
However, Rivet discloses event logging with time stamping of alarm and shutdown events driven by sensor thresholds (paragraphs [0034] and [0052]) and a GPS receiver providing the location of the equipment (paragraph [0050]).
Therefore it would have been obvious to modify the method disclosed by Wright/Hawkins with the event logging and GPS location disclosed by Rivet in order to permit event reconstruction and forensics (Rivet, paragraph [0052]).
Claim 17
Wright/Hawkins disclose the method of claim 1. Wright/Hawkins do not disclose sending, by a wireless means, a signal to a second system not having detected the at least one flammable gas, the signal causing the second system to take action before the at least one flammable gas is detected at the second system.
However, Rivet discloses that upon a shutdown event a controller transmits wireless signals to the controllers of other vehicles to actuate their respective shut-off valves (paragraph [0047]), including engines in a zone not yet contaminated by the airborne combustibles (paragraph [0044]).
Therefore it would have been obvious to modify the method disclosed by Wright/Hawkins with the wireless signal to other controllers disclosed by Rivet in order to protect nearby engines before the gas reaches them (Rivet, paragraph [0044]).
Claim 20
Wright/Hawkins disclose the method of claim 1.
Wright/Hawkins do not disclose transmitting the signal based at least in part on the location of the sensor.
However, Rivet discloses delivering shutdown commands to selected engines based on the zone in which the equipment carrying the sensor is located (paragraph [0044]) and geo-fencing by GPS (paragraph [0050]).
Therefore it would have been obvious to modify the method disclosed by Wright/Hawkins with the zone-based shutdown disclosed by Rivet in order to confine shutdowns to the affected area (Rivet, paragraph [0044]).
Claim(s) 15 is rejected under 35 U.S.C. 103 as being unpatentable over Wright/Hawkins as applied to claim 1 above, and further in view of Bogen et al. (US 4,074,243).
Claim 15
Wright/Hawkins disclose the method of claim 1, with the signal transmitted when the detected concentration exceeds the threshold (Wright, col. 3, lines 64-68).
Wright/Hawkins do not disclose transmitting the signal based at least in part on a rate of concentration increase of the at least one flammable gas.
However, Bogen discloses a flammable gas detection system in which a differentiator produces a signal proportional to the rate of increase of the gas concentration (col. 3, lines 18-24) and the resulting signal operates as a control for switching off machinery including a generator (col. 5, lines 20-23).
Therefore it would have been obvious to modify the method disclosed by Wright/Hawkins with the rate-of-increase control disclosed by Bogen in order to act before the concentration reaches a hazardous level (Bogen, col. 1, lines 12-19).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments filed June 29, 2026 have been fully considered. Applicant’s arguments with respect to the rejection of claims 1, 2 and 7-10 under 35 U.S.C. 102(a)(1) over Wright are persuasive as to the amended claims. Wright’s shutdown signal actuates a pneumatic shutdown solenoid and flapper valve (col. 3, line 64 through col. 4, line 57) and does not disclose a kill signal to an engine management system. The rejection is withdrawn.Applicant’s traversal of the rejection of claims 3-6 under 35 U.S.C. 103 over Wright alone, and the request for documentary evidence, have been considered. The rejection over Wright alone is withdrawn. The rejections of claims 3-6 set forth above rest on the documentary evidence of Lewis and Swanson. Applicant’s remaining arguments are moot because they do not apply to the combinations of references being used in the current rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIZO BINDA VILAKAZI whose telephone number is (571)270-3926. The examiner can normally be reached 10am-6pm.
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/SIZO B VILAKAZI/Primary Examiner, Art Unit 3747
