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 Objections
Claim 11 is objected to because of the following informalities: at line 3, “movable inner” should read “movable inner annulus”. 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 1, 2, 5, 8, 11, 12, 13, 15, 18-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 7, 11-16, and 18 of U.S. Patent No. 12,163,625. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘625 Patent recite all limitations of the instant claims as described below.
Instant Claim
Corresponding claim from US Patent 12,163,625
Analysis
1
1
Claim 1 of the ‘625 Patent recites all limitations of instant claim 1 and differs with the additional limitation that the sensor be “positioned proximate the fuel nozzle.
2
2
Claim 2 of the ‘625 Patent recites all limitations of instant claim 2 except that the exhaust port and the exhaust nozzle be positioned adjacent thereto. It would be obvious that the exhaust port and the exhaust nozzle claimed in claim 2 of the ‘625 Patent would be positioned adjacent to each other during use, in order to transfer exhaust.
5
5
Claim 5 of the ‘625 Patent recites all limitations of instant claim 5.
8
7
Claim 7 of the ‘625 Patent recites all limitations of instant claim 8.
11
11
Claim 11 of the ‘625 Patent discloses all limitations of instant claim 11.
12
14
Claim 14 of the ‘625 Patent discloses all limitations of instant claim 12.
13
16
Claim 16 of the ‘336 Patent recites all limitations of instant claim 13.
15
18
Claim 18 of the ‘625 Patent discloses all limitations of instant claim 15.
18
15
Claim 15 of the ‘625 Patent discloses all limitations of instant claim 18.
19
12
Claim 12 of the ‘625 Patent discloses all limitations of instant claim 19.
20
13
Claim 13 of the ‘625 Patent discloses all limitations of instant claim 20.
Claims 1, 2, 5, 8, 11, 12, 13, 15, 18-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 7, 11-16, and 18 of U.S. Patent No. 11,988,336. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘625 Patent recite all limitations of the instant claims as described below.
Instant Claim
Corresponding claim from US Patent 11,988,336
Analysis
1
1
Claim 1 of the ‘336 Patent recites all limitations of instant claim 1 except for the recitation of a vehicle rather than a marine vessel. One of ordinary skill in the art would recognize that a marine vessel which consumes fuel and produces exhaust would be a portion of the larger category of “vehicle” with which the exhaust capture system of the ‘336 patent could be advantageously used.
2
2
Claim 2 of the ‘336 Patent recites all limitations of instant claim 2 except that the exhaust port and the exhaust nozzle be positioned adjacent thereto. It would be obvious that the exhaust port and the exhaust nozzle claimed in claim 2 of the ‘625 Patent would be positioned adjacent to each other during use, in order to transfer exhaust.
5
5
Claim 5 of the ‘336 Patent recites all limitations of instant claim 5.
8
7
Claim 7 of the ‘336 Patent recites all limitations of instant claim 8.
11
11
Claim 11 of the ‘336 Patent recites all limitations of instant claim 11 except for the recitation of a vehicle rather than a marine vessel. One of ordinary skill in the art would recognize that a marine vessel which consumes fuel and produces exhaust would be a portion of the larger category of “vehicle” with which the exhaust capture system of the ‘336 patent could be advantageously used.
12
14
Claim 14 of the ‘336 Patent recites all limitations of instant claim 12.
13
16
Claim 16 of the ‘336 Patent recites all limitations of instant claim 13.
15
18
Claim 18 of the ‘336 Patent recites all limitations of instant claim 15.
18
15
Claim 15 of the ‘336 Patent recites all limitations of instant claim 18.
19
12
Claim 12 of the ‘336 Patent recites all limitations of instant claim 19.
20
13
Claim 13 of the ‘336 Patent recites all limitations of instant claim 20.
Claims 1, 2, 5, 8, 11, 12, 13, 15, 18-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 7, 11-16, and 18 of U.S. Patent No. 11,815,227. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘625 Patent recite all limitations of the instant claims as described below.
Instant Claim
Corresponding claim from US Patent 11,815,227
Analysis
1
1
Claim 1 of the ‘227 Patent recites all limitations of instant claim 1 except for the recitation of a vehicle rather than a marine vessel. One of ordinary skill in the art would recognize that a marine vessel which consumes fuel and produces exhaust would be a portion of the larger category of “vehicle” with which the exhaust capture system of the ‘336 patent could be advantageously used.
2
2
Claim 2 of the ‘227 Patent recites all limitations of instant claim 2 except that the exhaust port and the exhaust nozzle be positioned adjacent thereto. It would be obvious that the exhaust port and the exhaust nozzle claimed in claim 2 of the ‘625 Patent would be positioned adjacent to each other during use, in order to transfer exhaust.
5
5
Claim 5 of the ‘227 Patent recites all limitations of instant claim 5.
8
7
Claim 7 of the ‘227 Patent recites all limitations of instant claim 8.
11
11
Claim 11 of the ‘227 Patent recites all limitations of instant claim 11 except for the recitation of a vehicle rather than a marine vessel. One of ordinary skill in the art would recognize that a marine vessel which consumes fuel and produces exhaust would be a portion of the larger category of “vehicle” with which the exhaust capture system of the ‘336 patent could be advantageously used.
12
14
Claim 14 of the ‘227 Patent recites all limitations of instant claim 12.
13
16
Claim 16 of the ‘227 Patent recites all limitations of instant claim 13.
15
18
Claim 18 of the ‘227 Patent recites all limitations of instant claim 15.
18
15
Claim 15 of the ‘227 Patent recites all limitations of instant claim 18.
19
12
Claim 12 of the ‘227 Patent recites all limitations of instant claim 19.
20
13
Claim 13 of the ‘227 Patent recites all limitations of instant claim 20.
Allowable Subject Matter
Claims 1, 2, 5, 8, 11, 12, 13, 15, 18-20 would be allowable upon receipt of a properly filed terminal disclaimer.
Claims 3, 4, 6, 7, 9, 10, 14, 16, and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The combination of a fuel nozzle located within and at least partially surrounded by an exhaust nozzle, a sealing feature located adjacent the forward end of the fueling nozzle, and a sensor proximate the fueling nozzle, in the context of claim 1 is not anticipated or made obvious by the prior art of record in the examiner’s opinion.
The limitation of a fuel and exhaust nozzle having a movable inner annulus, in the context of claim 11 and in the presence of the other limitations, is not anticipated or made obvious by the prior art of record in the examiner’s opinion.
For example, US PGPub 2018/0003116 discloses a method of collecting and off-loading vehicle exhaust, including the step of receiving user instructions to off-load exhaust (S125), but doesn’t disclose the limitation or combination described above.
US PGPub 2022/0282651 discloses a method for capture and off-loading of a vehicle exhaust, wherein exhaust is stored on a vehicle and then released to a collection station, but doesn’t disclose the limitation or combination described above.
US Patent 5,562,133 discloses a nozzle for refueling in which a fueling nozzle (tube 78) is located concentrically with a gas collecting pipe (pipe 18), but doesn’t disclose the limitation or combination described above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON KAROL NIESZ whose telephone number is (571)270-3920. The examiner can normally be reached M-F 9-5 EST.
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/JASON K NIESZ/Primary Examiner, Art Unit 3753
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