DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
3. Claims 21-33 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of US Patent 12,215,647 B1 [hereinafter as ‘647 Patent]. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Taking the independent claim 21 [18/983652] vs claim 1 [‘647 Patent] as an exemplary claim, both applications are claiming common subject matters, as follows:
Application 18/983,652
US Patent 12,215,647 B1
A system for controlling nitrogen oxide (NOx) production in an engine, the system comprising:
A system for controlling nitrogen oxide (NOx) production in an engine, the system comprising: (col. 12, lines 40-41)
a first control module connected to a first fuel pump that is configured to route diesel from a first fuel tank into an engine cylinder;
a first control module connected to a first fuel pump that is configured to route diesel from a first fuel tank into an engine cylinder; (col. 12, lines 42-44)
a second control module connected to a second fuel pump that is configured to route ethanol from a second fuel tank into the engine cylinder producing a mixture comprising the diesel and ethanol in the engine cylinder; and
a second control module connected to a second fuel pump that is configured to route ethanol from a second fuel tank into the engine cylinder producing a mixture comprising the diesel and ethanol in the engine cylinder; and (col. 12, lines 45-49)
wherein the ethanol has a concentration in a range from about 140 proof to about 190 proof.
wherein the ethanol has a concentration in a range from about 140 proof to about 190 proof. (col. 12, lines 55-56)
As per dependent claims 22-33 of the instant application, they contain similar subject matter as claims 2-12 of ‘647 Patent. [notes that claim 23 of 18/983,652 is contained a common subject matter of claim 1 of ‘674 Patent (col. 12, lines 50-54). Accordingly, they are provisionally rejected under the judicially created doctrine of non-statutory double patenting.
Claim Rejections - 35 USC § 103
4. 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.
5. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
6. Claims 21, 22, 29 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Gonzalez Salazar et al. (US 2018/0171890 A1) in view of Koegler et al. (US 2004/0084023 A1).
Regarding claim 21, notes at least Figure 1, Gonzalez Salazar invention teaches a system for controlling NOx production in an engine (30) [para. 0002 teaches an engine system is able to maintain nitrogen oxides and other types of regulated emissions below mandated levels], the system comprising: a first control module configure to route diesel into the engine [Figs. 1-4 illustrate a liquid hydrocarbon fuel source (16); liquid hydrocarbon fuel inlet (12), compressor (20); and para. 0023 teaches non limiting examples of a liquid hydrocarbon fuel (15) includes diesel, gasoline, kerosene, jet fuel, or combination thereof]; and a second control module configured to route ethanol into the engine [para. 0023 teaches hydrocarbon gas fuel (17) may include any suitable hydrocarbon that is present in a gaseous state at atmospheric pressure and temperature. Non limiting examples of a first hydrocarbon gas fuel (17) include methane, propane, ethane, hydrogen, or combinations thereof; and para. 0018 teaches the first hydrocarbon gas (17) from a first hydrocarbon gas fuel source (18)].
Regarding the specific range of ethanol concentration; notes para. 0024, Gonzalez Salazar invention teaches the hydrocarbon gas fuel may include at least 75 wt % of methane or ethane [para. 0024] and the hydrocarbon gas fuel may include methane or ethane [para. 0023] in a range from about 90 wt % to 100 wt % [notes that the proof of ethanol is twice the percentage of alcohol by volume (ABV). For example, an ethanol with 50% ABV is 100 proof, while an ethanol with 40% ABV is 80 proof]. It is the examiner’s position that a range from about 140 proof to about 190 proof, which would have been obvious to one having ordinary skill in the art at the time the invention was made to, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges or values involves only routine skill in the art . In re Aller, 105 USPQ 233 (CCPA 1955).
Gonzalez Salazar invention discloses all of the claimed limitations except a first control module connected to a first pump and second control module connected to a second pump.
Notes Figures 1-3, Koegler invention teaches a fuel delivery system for an engine comprising two reservoir (18(a), 18(b)) which allows the fuel injector to provide a combustible fuel vapor comprised from a mixture of two different combustible fuels, such as gasoline and ethanol; the fuel reservoirs (18(a) and 18(b)) may or may not be connected to fuel pumps (not shown) [para. 0021].
Since the prior art references are both from the same field of endeavor, the purpose disclosed by Koegler invention would have been recognized in the pertinent art of Gonzalez Salazar invention.
It would have been obvious at the time the invention was made to a person having ordinary skill in the art to modify the fuel supply system of Gonzalez Salazar invention which included the two fuel pumps in connection the two fuel sources with for the purpose of ensures a consistent fuel supply at a specific pressures to maintain proper engine combustion.
Regarding to claim 22, the modified Gonzalez Salazar invention disclosed all the claimed invention except for the range from about 5% to about 85% [para. 0023]. It would have been obvious to one having ordinary skill in the art at the time the invention was made to, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges or values involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Regarding claim 29, the modified Gonzalez Salazar invention discloses all the claimed limitation as discussed above except the first control module is coupled to the second control module.
The use of control module to route diesel and/or ethanol into the engine is so notoriously well known in the art. It would have been obvious to one having ordinary skill in the art at the time the invention was made, to have included a control module in order to route the diesel and ethanol into the engine, which would have been well-known in the art.
Regarding claim 33 see rejection and motivation in claims 1 and 2.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHNNY H HOANG whose telephone number is (571) 272-4843. The examiner can normally be reached on Monday-Friday [Maxi-Flex].
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, Logan Kraft can be reached on (571) 270-5065. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
January 29, 2026
/JHH/
/Johnny H. Hoang/
Examiner, Art Unit 3747
/LOGAN M KRAFT/Supervisory Patent Examiner, Art Unit 3747