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 1-9 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8-19 of U.S. Patent No. 10,598,101. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations are similar.
Claims 1-9 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,306,667. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations are similar.
Claims 1-9 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,761,390. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations are similar.
Claim Rejections - 35 USC § 103
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 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) 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto (U.S. Publication 2007/0137591), hereinafter “Sugimoto” in view of Kitch (U.S. Publication 2011/0042964), hereinafter “Kitch”.
Regarding claim 1, Sugimoto discloses the same invention substantially as claimed such as a dual fuel generator (1) comprising: a dual fuel engine (30) operable on a first fuel from a first fuel source (Fa, 61, paragraph 71) or a second fuel from a second fuel source (Fb, 71, paragraph 73); a fuel selector (12) to provide for selection of a first fuel flow from the first fuel source or a second fuel flow from the second fuel source (Fb, 71, paragraph 73) to the dual fuel engine, the fuel selector (12) comprising: a valve assembly (assembly for valve 12, paragraph 83) fluidly couplable to each of the first fuel source and the second fuel source and operable to selectively control the first fuel flow and the second fuel flow to the dual fuel engine; and a selector switch (12) to allow an operator to manually select the first fuel flow or the second fuel flow (shown in figure 5 that user can actuate the switch 12), but is silent to disclose an alternator. However, Kitch teaches the use of an alternator (paragraph 33) for the purpose of converting mechanical energy from the engine to electrical energy. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Sugimoto by incorporating an alternator for the purpose of converting mechanical energy from the engine to electrical energy.
Regarding claim 2, Sugimoto and Kitch disclose the dual fuel generator of claim 1 wherein the valve assembly is configured to selectively supply fuel to the dual fuel engine from only one of the first and second fuel sources responsive to selection of the first fuel flow or the second fuel flow via the selector switch and a corresponding operation of the valve assembly (Sugimoto, shown in figure 5). It is clear from figure 5 of Sugimoto that only one fuel can be provided at a time based upon the switch selections.
Regarding claim 3, Sugimoto and Kitch discloses the same invention substantially as claimed, but is silent to disclose a first fuel valve having open and close positions to selectively control the firs fuel flow to the dual fuel engine; and a second fuel valve having open and closed positions to selectively control the second fuel flow to the dual fuel engine. However, Poehlman teaches the use of a first solenoid fuel valve (45) with open and close positions and a second solenoid fuel valve (43) with open and closed positions (column 4, lines 21-30) for the purpose of preventing leakage and providing fast response times. Therefore, it would have been obvious to one of
ordinary skill in the art before the effective filing date of the invention to modify Sugimoto
by incorporating solenoid valves to provide the different fuel flows of the different fuel
sources as taught by Poehlman when and operator makes a fuel source selection
through valve 12 of Sugimoto for the purpose of preventing leakage and providing fast
response times. Examiner notes that Sugimoto allows for a user to selectively operate
which fuel to use and with Poehlman in combination, allow for the fuel to be provided
with a faster response time and without leakage. Poehlman is brought herein as a
reference only to teach the different valves for each fuel source since Sugimoto is silent,
and would not destroy the invention of Sugimoto nor Kitch.
Regarding claim 6, Sugimoto and Kitch disclose the dual fuel generator of claim 3 wherein the selector switch (Sugimoto, 12) provides for manual actuation of the first fuel valve (Poehlman, 45) and the second fuel valve (Poehlman, 43) between the open and closed positions. Examiner notes that a used actuates the selector switch (120 of Sugimoto and therefore the valves would be considered as being actuated manually.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto and Kitch, and further in view of Mott (U.S. Patent 3,696,333), hereinafter “Mott”.
Regarding claim 7, Sugimoto and Kitch disclose the same invention substantially as claimed except for a carburetor solenoid switch. However, Mott teaches the use of solenoid (24) controlled by a switch (25) for a carburetor (31) for the purpose of opening the automatic choke to allow for the carburetor to operate effectively when enough pressure is built up (column 2, lines 15-27). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Sugimoto and Kitch by incorporating a carburetor solenoid switch as taught by Motts for the purpose of opening the automatic choke to allow for the carburetor to operate effectively when enough pressure is built up.
Allowable Subject Matter
Claims 4-5 and 8-9 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: No prior art teaches all the limitations of claims 4-5, but more specifically the detailed description of the first and second valves each having valve handles or that the valve are mechanical valves and not solenoid valves.
No prior art teaches all the limitations of claim 8, but more specifically, when the selector switch is moved, automatically actuating a carburetor solenoid switch to activate and prohibit the second fuel flow to the engine.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYED O HASAN whose telephone number is (571)272-0990. The examiner can normally be reached Monday-Friday; 11AM-7PM.
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/SYED O HASAN/ Primary Examiner, Art Unit 3747 2/5/2026