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.
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.
At least claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over at least claim 1 of U.S. Patent No. 12176585. Although the claims at issue are not identical, they are not patentably distinct from each other because at least claim 16 of the present application is anticipated by at least claim 1 of U.S. Patent No. 12176585.
Claim Objections
Claim 16 is objected to because of the following informalities: "air the fuel cell stack" --. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: "--. Appropriate correction is required.
Any similar recited informalities in the claims should be corrected.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 16, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oglesby (US 20020163200) as evidenced by Osborne (US 8158291).
Regarding claim 16,
Referring to Fig. 1, Oglesby teaches a management system 10 for a fuel cell mobility vehicle 14, the management system comprising: a hydrogen tank 16 configured to store hydrogen supplied to a fuel cell stack 12; a first turbine 18 fluidically connected to the hydrogen tank and rotated by a pressure (e.g. a pressure of hydrogen supplied from tank 16); a blower 20 configured to pressurize ambient air 48 using rotation force of the at least one of the first turbine, and an electric motor 76 and to supply the pressurized ambient air the fuel cell stack (e.g. via line 50).
Please note that for evidentiary purposes, Osborne teaches a management system 10 for a fuel cell mobility vehicle (see col 2, lines 30-37), wherein element 20 is referred to as a blower (e.g. a compressor/blower). As such, Osborne evidences that element 20 of Oglesby may also be referred to as a blower.
Regarding claim 20,
A claim term is functional when it recites a feature "by what it does rather than by what it is".
While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board' s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
It appears that the language of claim 20 is a recitation of what the apparatus is configured to do and not what the apparatus is as there are no structural attributes of the interrelated components except for the requirement that the blower is operated by either the first turbine or the motor, depending on certain conditions. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see MPEP 2114 [R-1]. Since the blower of Oglesby is capable of the recited requirements of claim 20, the device of Oglesby meets the claimed limitations of being configured to do so. There is no structural difference between the device of Lunde and the device of Applicant' s claim 20.
Allowable Subject Matter
Claims 17, 18-19, 21-30 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:
Regarding claims 17, 21-30,
Oglesby does not teach a refrigerant circulation line comprising a compressor, etc.… or a second turbine, and although it would be obvious to duplicate said first turbine, it would not be obvious to specifically mount said second turbine in the refrigerant circulation line and wherein the blower is connected to the first or second turbines or the motor as defined by claim 17 and dependent claims of 17. Regarding claims 18-19,
Oglesby does not teach wherein the ambient air supply line branches off into a fuel cell line and an air conditioning line as defined by claim 18.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rehg, Kusano, Agnew and Haag teach management systems for fuel cell mobility vehicles.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVE S TANENBAUM whose telephone number is (313)446-6522. The examiner can normally be reached M-F 11 AM - 7 PM.
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/Steve S TANENBAUM/Examiner, Art Unit 3763
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