DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is sent in response to Applicants’ Communication received on April 23, 2025 for application number 19/186,998. This Office hereby acknowledges receipt of the following and placed of record in file: Specification, Drawings, Abstract, Oath/Declaration, and Claims.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on April 23, 2025 and February 18, 2026 are noted. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “fuel delivery system, first fuel, alternative fuel, electronic control unit” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by enough structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites enough structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting enough structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting enough structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
“fuel delivery system”, “emissions control system”, “electronic control unit”, “regeneration event” in claims 1-20.
“fuel supply system” in claims 1-12 and 15-20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guo et al. (CN 104847515 B), hereinafter “Guo”.
Regarding claim 1, Guo discloses a method of modifying the operation of an engine, having at least a fuel delivery system associated with a first fuel and an emissions control system, to enable operation with the first fuel and an alternative fuel (paragraph 17), the method comprising the steps of: providing the engine with a fuel supply system associated with the alternative fuel and an electronic control unit, the electronic control unit configured to communicate with at least the emissions control system, the fuel delivery system, and the fuel supply system (paragraphs 17 & 18); operating the engine using the alternative fuel; receiving, with the electronic control unit, notification from the emissions control system that a regeneration event is needed (paragraphs 19-21); and supplying, with the fuel delivery system, the first fuel to the emissions control system for the regeneration event (paragraphs 17-21).
Regarding claim 2, Guo discloses the method of claim 1, further comprising the step of purging the alternative fuel from the engine prior to the regeneration event before supplying the first fuel to the emissions control system (paragraphs 17-20).
Regarding claim 3, Guo discloses the method of claim 2, further comprising the step of delaying the regeneration event until the purging step is complete (paragraphs 18-20).
Regarding claim 4, Guo discloses the method of claim 1, further comprising the step of inhibiting the regeneration event from occurring until a message is sent to the emissions control system by the electronic control unit to begin the regeneration event (paragraphs 16-22).
Regarding claim 5, Guo discloses the method of claim 1, further comprising resuming operation of the engine using the alternative fuel after the regeneration event has completed (paragraphs 19, 20).
Regarding claim 6, Guo discloses the method of claim 1, wherein the first fuel is a petroleum-based fuel and the alternative fuel is a biogenic-based fuel (paragraphs 17-19).
Regarding claim 7, Guo discloses the method of claim 1, wherein the alternative fuel is unsuitable for a regeneration event (paragraphs 18, 19).
Regarding claim 8, Guo discloses the method of claim 1, wherein the step of operating the engine using the alternative fuel further comprises inhibiting the emissions control system from executing a regeneration event (paragraphs 18-21).
Regarding claim 9, Guo discloses the method of claim 1, wherein the emissions control system comprises a dosing injector, a dosing fuel line, and a dosing flush valve in fluid communication with the engine’s fuel delivery system and the electronic control unit directs the dosing flush valve to flush the alternative fuel out of the dosing injector and dosing fuel line by supplying the fuel delivery system with the first fuel prior to the emissions control system undergoing a regeneration event (paragraphs 15-25).
Regarding claim 10, Guo discloses the method of claim 1, wherein the emissions control system comprises a dosing injector that is in fluid communication only with the first fuel (paragraphs 17-21).
Regarding claim 11, Guo discloses the method of claim 1, wherein the engine further comprises a fuel selection valve for selectively providing the first fuel or the alternative fuel to the engine (paragraphs 18-20).
Regarding claim 12, Guo discloses the method of claim 1, wherein the engine further comprises cylinders having combustion chambers and the first fuel is supplied to the emissions control system by injection into the combustion chambers during an exhaust stroke of the cylinders (paragraphs 16-22).
Regarding claim 13, Guo discloses a method of modifying the operation of an engine to enable operation with a first fuel and an alternative fuel (paragraph 17), the method comprising the steps of: providing the engine with an electronic control unit (paragraphs 17 & 18), a fuel delivery system comprising a first fuel container for containing the first fuel and an alternative fuel container for containing the alternative fuel, and an emissions control system, the electronic control unit configured to communicate with the emissions control system and the fuel delivery system; operating the engine using the alternative fuel (paragraphs 19-21); receiving, with the electronic control unit, notification from the emissions control system that a regeneration event is needed; and supplying the first fuel to the emissions control system for the regeneration event (paragraphs 17-21).
Regarding claim 14, Guo discloses the method of claim 13, wherein the first fuel is a petroleum-based fuel and the alternative fuel is a biogenic-based fuel (paragraphs 17-19).
Regarding claim 15, Guo discloses a fuel delivery system for delivering fuel to an engine, the fuel delivery system (paragraph 17) comprising: an electronic control unit configured to communicate with an emissions control system of the engine and a fuel supply system comprising a first fuel supply and an alternative fuel supply (paragraphs 19-21), the controller comprising at least one processor programmed or configured to: operate the engine with an alternative fuel using the alternative fuel supply (paragraphs 17-21); receive notification from the emissions control system that a regeneration event is needed; and supply a first fuel using the first fuel supply to the emissions control system for the regeneration event (paragraphs 17-21).
Regarding claim 16, Guo discloses the fuel delivery system of claim 15, wherein the at least one processor is further programmed or configured to purge the alternative fuel from the engine prior to the regeneration event before supplying the first fuel to the emissions control system (paragraphs 17-20).
Regarding claim 17, Guo discloses the method of claim 15, wherein the at least one processor is further programmed or configured to resume operation of the engine using the alternative fuel after completion of the regeneration event (paragraphs 17-21).
Regarding claim 18, Guo discloses the fuel delivery system of claim 15, wherein the first fuel is a petroleum-based fuel and the alternative fuel is biodiesel, and wherein the alternative fuel is unsuitable for the regeneration event (paragraphs 16-22).
Regarding claim 19, Guo discloses the fuel delivery system of claim 15, wherein operating the engine using the alternative fuel further comprises inhibiting the emissions control system from executing a regeneration event (paragraphs 18-21).
Regarding claim 20, Guo discloses the fuel delivery system of claim 15, wherein the electronic control unit is further configured to communicate with a fuel selection valve for selectively providing the first fuel or the alternative fuel to the engine (paragraphs 18-20).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,305,583. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 are basically claims 1-20 of U.S. Patent No. 12,305,583 with minor English language syntax differences. Further on, claims 1-20 of U.S. Patent No. 12,305,583 anticipates claims 1-20 of the instant present application. Still further, please refer to the following table for the correspondence of claims between the present application and U.S. Patent No. 12,305,583:
Application (19/186,998)
Claims
Patent (U.S. Patent No. 12,305,583)
Claims
1
1
2
2
3
3
4
4
5
5
6
6
7
7
8
8
9
9
10
10
11
11
12
12
13
13
14
14
15
15
16
16
17
17
18
18
19
19
20
20
Therefore, claims 1-20 of U.S. Patent No. 12,305,583 anticipate claims 1-20 of the instant present application separately alone or altogether.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMAR MORALES whose telephone number is (571)272-5923. The examiner can normally be reached on Monday thru Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lindsay Low can be reached on (571)272-1196. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/O.M/Examiner, Art Unit 3747
/LINDSAY M LOW/Supervisory Patent Examiner, Art Unit 3747
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