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 .
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 1 – 20 are 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.
In claim 1, the term “available volume” is indefinite. It is unclear if the term refers to space beyond what is occupied by the recited systems. The bounds of each “volume” are not defined in the claims, therefore it is unclear what constitutes “a plurality of first available volumes” compared to one first available volume. Furthermore, it is noted that apparatus claim is not limited by the process in which it is made. In this case, applicant appears to be reciting a method of selecting a location, from a plurality of locations, on which to dispose certain vehicle systems.
It is unclear how claims 5 and 6 further limit claim 1. There is no structural definition of each “volume”, therefore the scope of the claim cannot be determined.
In claims 9 and 10, it is unclear if the term “engine bay” intends to positively recite an engine.
In claims 17 and 18, the term “electromechanical replacement” is unclear. The specification describes the term as “new drive motor(s) to replace the original drive motor(s) from the haul truck”. However, no drive motors are claimed. Furthermore, as above, method steps directed to replacing “original” motors with “new motors” are given no patentable weight in an apparatus claim and raise issues of indefiniteness (i.e., what constitutes a “new” or “original” motor).
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 – 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over applicant’s admitted prior art (as shown in Figs. 1A – 2B and 6A – 6F) in view of Hendricks et al. (US 2022/0105791 A1).
In Figs. 1A – 2B and 6A – 6F, applicant discloses a known mining haul truck comprising a frame (FR) and tray (TR). Applicant alleges that it is not known to provide a hybrid hydrogen fuel cell/battery-based powerplant. However, Hendricks et al. disclose a heavy-duty vehicle comprising a fuel cell system (paragraph [0069]), a battery system (16), and a hydrogen storage system (18) disposed on available volumes on the frame. It would have been obvious to modify the known mining haul vehicle disclosed by applicant to include the hybrid hydrogen fuel cell/battery based power plant of Hendricks et al. in order to reduce emissions.
As for claims 2 – 4, Hendricks et al. disclose a cooling system (see 34) disposed generally at the front portion of the frame.
As for claims 5 – 6, the fuel cell system, battery system, and HSS of Hendricks et al. are distributed along the frame so as to occupy available volumes (Fig. 2).
As for claims 7 – 8, the battery system of Hendricks et al. is disposed between left and right wheels (and therefore “distributed between the left wheel pocket and right wheel pocket” (see Figs. 2 – 4).
As for claims 9 – 10, Hendricks et al. disclose a fuel cell disposed on the vehicle where an engine may be disposed in an engine-powered vehicle.
As for claims 11 – 15, Hendricks et al. disclose an HSS disposed on a volume defined in part by a frame. The HSS stores hydrogen in one or more storage tanks (28). While Hendricks et al. disclose hydrogen gas, it would have been obvious to store hydrogen in a liquid state as both are well-known in the art.
As for claim 16, applicant acknowledges that it is known to provide a deck (DV) on a mining haul truck.
As for claim 17 – 18, it would have been obvious to one of ordinary skill in the art to replace a motor when needed for maintenance or repair.
As for claims 19 – 20, applicant acknowledges that it is known to provide a hydraulic fluid reservoir in a pocket (WP) adjacent to a rear axle.
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 – 4, 9, 11, 13, 16, 19 and 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 8 of U.S. Patent No. 12,391,102 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are generic to all that is recited in the patented claims; in other words, the patented claims fully encompass the present claims and therefore anticipate the present claims.
Claims 1 – 4, 9, 11, 13, 16, 19 and 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 6 of U.S. Patent No. 11,958,352 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are generic to all that is recited in the patented claims; in other words, the patented claims fully encompass the present claims and therefore anticipate the present claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katy M Ebner whose telephone number is (571)272-5830. The examiner can normally be reached Monday - Thursday, 9 a.m. - 3 p.m.
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/Katy M Ebner/Primary Examiner, Art Unit 3613
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