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 .
Obviousness Double Patenting rejection
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,281,601 or claim 5 of US patent 11,927,117. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Claim-matching table:
Claims 1, 5, 9, 10, of this application
Claim 5 of US 12,281,601
Claim 5 of US 11,927,117
1. Apparatus for producing mechanical work comprising:
a heat engine comprising:
a heat transfer liquid (HTL) input port for accepting HTL into the heat engine;
a gas injector port for injecting compressed gas into the heat engine;
one or more chambers for mixing the gas and the HTL, producing a gas-and-HTL
mixture; and
a plurality of nozzles for receiving said gas-and-HTL mixture and allowing said
gas-and-HTL mixture to undergo isothermal or quasi-isothermal expansion therein, resulting in
ejecting the gas-and-HTF mixture; and
a rotor;
wherein the ejection of the gas-and-HTF mixture through the one or more nozzle(s) results
in the rotation of the rotor, thereby producing mechanical work.
5. The apparatus according to claim 1 wherein the heat engine is designed to withstand
HTL comprising molten salt.
9. The apparatus of claim 1, wherein the HTL comprises a liquid selected from a group
consisting of: water, oil, molten salt, and molten metal.
10. The apparatus of claim 1, wherein the plurality of nozzles is mounted on a turbine
that comprises said rotor to result in its rotation.
5. A method for converting heat to mechanical work comprising: providing incoming heat transfer fluid (HTL) at a first temperature to a plurality of mixing chambers; providing incoming compressed gas at a second temperature to the plurality of mixing chamber; enabling the gas and the HTL to mix, producing a gas-and-HTL mix; enabling the HTL in the gas-and-HTL mix to heat the gas and isothermal expansion of the gas in the gas-and-HTL mix; limiting volume of the gas-and-HTL mix, thereby increasing pressure of the gas and causing acceleration of a flow of the gas-and-HTL mix; causing the gas-and-HTL mix to eject through a plurality of nozzles, thereby converting the heat of the HTL to kinetic energy to cause movement of the plurality of nozzles, wherein the plurality of nozzles is mounted on a turbine to result in its rotation; and using the kinetic energy to produce mechanical work.
5. A method for converting heat to mechanical work comprising: providing incoming heat transfer fluid (HTF) at a first temperature to a plurality of mixing chambers; providing incoming compressed gas at a second temperature to the plurality of mixing chamber; enabling the gas and the HTF to mix, producing a gas-and-HTF mix; enabling the HTF in the gas-and-HTF mix to heat the gas and isothermal expansion of the gas in the gas-and-HTF mix; limiting volume of the gas-and-HTF mix, thereby increasing pressure of the gas and causing acceleration of a flow of the gas-and-HTF mix; causing the gas-and-HTF mix to eject through a plurality of nozzles, thereby converting the heat of the HTF to kinetic energy to cause movement of the plurality of nozzles, wherein the plurality of nozzles is mounted on a turbine to result in its rotation; and using the kinetic energy to produce mechanical work; wherein the HTF comprises a fluid selected from a group consisting of: water, oil, molten salt and molten metal.
Obviousness:
From the claim-matching table above, the method claim 5 of US 11,927,117 recites all the operating steps equivalent with the functions of the claimed elements in the apparatus claims 1, 5, 9, 10 of this application but in method form instead of apparatus form as in this application. However, according to MPEP 2144.05, II. ROUTINE OPTIMIZATION, A) Optimization Within Prior Art Conditions or Through Routine Experimentation, In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). It would have been a “routine optimization” for a person having ordinary skill in the art to form an apparatus in the claims of this application based on the equivalent operating steps in claim 5 of US 11,927,117 for the purpose of forming an apparatus to perform works. Regarding dependent claims 2, 3, 4, 6-8, claim 5 of US 11,927,117 does not teach different number of heat engines in claim 2, different types of rotor in claim 3, different temperature/pressure to prevent cavitation in claims 4, 6-8. However, again according to MPEP 2144.05, II. ROUTINE OPTIMIZATION, it would have been obvious and as a matter of “routine optimization” to elect different number of heat engines in claim 2, different types of rotor in claim 3, different temperature/pressure to prevent cavitation in claims 4, 6-8 in the apparatus formed by the method steps of claim 5 of US, 11,927,117 for the purpose of generating appropriate work output.
Also from the claim-matching table above, the method claim 5 of US 12,281,601 recites all the operating steps equivalent with the functions of the claimed elements in the apparatus claims 1, 10 of this application but in method form instead of apparatus form as in this application. However, according to MPEP 2144.05, II. ROUTINE OPTIMIZATION, A) Optimization Within Prior Art Conditions or Through Routine Experimentation, In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). It would have been a “routine optimization” for a person having ordinary skill in the art to form an apparatus in the claims of this application based on the equivalent operating steps in claim 5 of US 12,281,601 for the purpose of forming an apparatus to perform works. Regarding dependent claims 2-9, claim 5 of US 12,281,601 does not teach different number of heat engines in claim 2, different types of rotor in claim 3, different temperature/pressure to prevent cavitation in claims 4, 6-8, different fluids in claims 5, 9. However, again according to MPEP 2144.05, II. ROUTINE OPTIMIZATION, it would have been obvious and as a matter of “routine optimization” to elect different number of heat engines in claim 2, different types of rotor in claim 3, different temperature/pressure to prevent cavitation in claims 4, 6-8, or different fluids in claims 5, 9 in the apparatus formed by the method steps of claim 5 of US, 12,281,601 for the purpose of generating appropriate work output.
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.
Conclusions
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/HOANG M NGUYEN/Primary Examiner, Art Unit 3746
HOANG NGUYEN
PRIMARY EXAMINER
ART UNIT 3746
Hoang Minh Nguyen
3/5/2026
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