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.
Claims 1-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5, 7-15, 17, 19, 20 of copending Application No. 18/452,988. Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between the copending application 18/452,988 and current application is that application ‘988 discloses a narrower claim 1 by combining the same subject matter provided in claim 16. Hence there is no difference between subject matter claimed from current applicant and application ‘988.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-10 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 Reference to Claim 1
In line 1 the claim is indefinite for lacking a transitional phrase. It’s unclear what is supposed to be preamble. For examination purposes the claim is being interpreted “governor comprising programming configured to”.
In Reference to Claim 5 and 15
In line 1 the claim recites “min-max demand governor type/mode” is unclear if the governor is required or not. It’s unclear if the governor is that of an alternative or the same governor being claim in the independent claim. For examination purposes claims 5 and 15 are being interpreted as not requiring the claim limitation “min/max demand governor”.
Claim Rejections - 35 USC § 102
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) 1-5, 8-15, 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0040804 to Atterberry et al. (Atterberry).
In Reference to Claim 1
Atterberry discloses:
A virtual dual fuel governor configured to:
receive driver input 92 from a vehicle controller area network;
calculate a total fuel demand, paragraph [0020] and [0026] (total governed fueling amount);
calculate 98 a control diesel fuel demand, 104 delivery commands;
calculate a secondary fuel demand,104;
send the secondary fuel demand 104 to a secondary fuel flow controller 102 to control a flow of secondary fuel to a diesel engine 10; and
send the control diesel fuel demand 104 to a diesel electronic control module 102 which uses the diesel fuel demand to control a flow of diesel fuel to the diesel engine 10, see paragraph [0012-0016], [0018-0027] and Fig.1, 2 and 4.
In Reference to Claim 2 and 12
Atterberry discloses:
The virtual dual fuel governor is further configured to select a governor type/mod (liquid mode or mixed liquid, see paragraph [0012], [0016], [0021]-[0022], [0024] and [0026])
In Reference to Claim 3 and 13
Atterberry discloses:
wherein the selection is based on one of an automatic selection and user input, see paragraph [0022] and [0026], based on operating conditions such as during startup or conditions suitable for gathering engine power output data.
In Reference to Claim 4 and 14
Atterberry discloses:
wherein the governor type/mode is at least one of a min/max demand, a full-range demand, a VCC demand, and an engine speed demand 92.
In Reference to Claim 5 and 15
Atterberry discloses, see rejection of claim 5 and 15 above:
wherein the min/max demand governor type/mode allows a driver to control total fuel demand directly via a pedal position when the diesel engine is operating between a pre-defined minimum and a maximum speed and up to a pre-defined fueling limit, the limit being based on at least one of intake manifold air pressure, temperature, and barometric conditions.
In Reference to Claim 8 and 18
Atterberry discloses, above:
wherein driver input includes at least one of a pedal position and a vehicle cruise control input (depressing an accelerator pedal see paragraph [0018])
In Reference to Claim 9 and 19
Atterberry discloses, above:
wherein the virtual dual fuel governor is configured to receive data related to engine operating parameters, see paragraph [0020].
In Reference to Claim 10 and 20
Atterberry discloses, above:
wherein the operating parameters include at least one of engine speed, diesel fuel consumption rate, MAP, and MAT; see paragraph [0058]
Allowable Subject Matter
Claim 16-17 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. primarily because the prior art of record cannot anticipate Applicant’s claimed invention by a single reference nor render Applicant’s claimed invention obvious by the combination of more than one reference.
Claims 6-7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Furthermore, the prior art of record does not teach “the combination including the virtual dual fuel governor calculating a diesel demand using a measured secondary fuel flow” as within the context of the claimed invention as disclosed and within the context of the other limitations present in claim 6 and 16;
Therefore, the prior art of record cannot anticipate Applicant’s claimed invention by a single reference nor render Applicant’s claimed invention obvious by the combination of more than one reference.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY AYALA DELGADO whose telephone number is (571)270-3452. The examiner can normally be reached on Mon-Fri 8:00-5:00.
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, Mark III Laurenzi can be reached on (571) 270-7878. 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.
/ANTHONY AYALA DELGADO/
Primary Examiner, Art Unit 3746