DETAILED ACTION
Response to Amendment
The amendment filed 7/28/2026 has been entered. Claims 1-10 are currently pending, with claims 3-6 and 10 allowed. Amendments to claim 1 and its dependents are subject to new grounds of rejection below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2 and 7-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites “the apparatus is configured to adjust a defined uncombusted amount of fuel at the catalyst by controlling the combustion or ignition in the internal combustion engine, wherein the defined uncombusted amount of fuel is catalytically burned by the catalyst to avoid ice formation due to combustion heat.” However, the recited structure is not defined in a capacity rendering it capable of being configured to perform the control functioning recited in this limitation. “Apparatus” does not inherently comprise the requisite structure to do so (such as an electronic controller/circuit), and “apparatus” has not been interpreted under 112(f) since it is the basis of the claimed invention recited in the preamble of the claim (“An apparatus…”). In other words, some other non-recited structure must be included in order to be “configured to” perform the control function “adjust a defined uncombusted amount of fuel at the catalyst by controlling…”. Applicant’s own Specification (Paragraph 0021 of the Specification filed 5/27/2025) notes that “combustion and/or ignition can be controlled by control of the internal combustion engine 1, not shown here”, but never goes on to describe or show the control means and configuration of said control means to perform the control functioning, or suggest these as a part of the invention.
Claims 2 and 7-9 are rejected by virtue of dependence.
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) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lapointe et al (US2014/0069086A1).
Regarding claim 1, Lapointe teaches an apparatus configured to recirculate internal combustion engine exhaust gas recirculation (Figures 2-7 illustrate various EGR structural designs), the apparatus comprising: an exhaust gas recirculation line having an exhaust gas recirculation cooler (See EGR cooler in each of Figures 2-7), an exhaust gas recirculation valve (See EGR valve in each of Figures 2-7), and a catalyst (See catalysts 264 in Figure 2, 464 in Figure 4, 564 in Figure 5), wherein the catalyst is arranged after the exhaust gas recirculation cooler in a flow direction of recirculated exhaust gas (See Paragraph 0041 "in other embodiments, the NOx catalyst 264 could be positioned downstream of the EGR cooler 266 if desired.").
The remaining functional limitations, which are engine control steps, are interpreted as a capability of the structure previously recited in the claim and cited in Lapointe above, given that no control structure is defined in the claim (or even in the Specification and Drawings) which is capable of being configured to perform the recited engine control steps.
Regarding claim 2, Lapointe discloses the invention of claim 1 as discussed above, and Lapointe teaches that the internal combustion engine is designed a hydrogen engine (Paragraph 0030).
Allowable Subject Matter
Claims 3-6 and 10 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claims 3-5 and 10, the closest prior art, Lapointe, does not teach that “the recirculation line opens into an air supply duct to the internal combustion engine after a compressor”, and given the rarity of the previously cited structure in the prior art, a person having ordinary skill in the art would not have found it obvious to make this simple modification absent some reasonable motivation to do so, as post compressor inlet from this EGR line structure would change the flow characteristics drastically.
Regarding claim 6, the prior art does not teach [with the use of “the apparatus comprising an exhaust gas recirculation line having an exhaust gas recirculation cooler, an exhaust gas recirculation valve, and a catalyst, wherein the catalyst is arranged after the exhaust gas recirculation cooler in a flow direction of recirculated exhaust gas”] “adjusting a defined uncombusted amount of fuel at the catalyst by controlling the combustion or ignition in the internal combustion engine, wherein the defined uncombusted amount of fuel is catalytically burned by the catalyst to avoid ice formation due to combustion heat.” A person having ordinary skill in the art would not have found it obvious to perform these steps with the extremely rare structure which is disclosed by Lapointe, as noted in the 102 section above.
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.”
Response to Arguments
Applicant's arguments filed 7/28/2026, regarding claims 1-2 and 7-9 have been fully considered but they are not persuasive, because although claim 1 now recites a set of method steps which are allowable in claim 6, claim 6 is directed to a method which is disclosed in the Specification, but a specific control structure which performs the steps is not, particularly in claim 1 and its dependents (as discussed above in the 112 and 102 sections).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R STECKBAUER whose telephone number is (571)270-0433. The examiner can normally be reached Monday - Thursday 9:30-7:30 PST.
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/KEVIN R STECKBAUER/Primary Examiner, Art Unit 3747
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