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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
- Claims 1-7 and 16-17 are rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 1-9 of prior U.S. Patent No. 12,025,319. This is a statutory double patenting rejection.
- Claims 8-12 are rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 10-14 of prior U.S. Patent No. 12,025,319. This is a statutory double patenting rejection.
- Claims 13-15 and 18-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 10-14 of prior U.S. Patent No. 12,025,319. This is a statutory double patenting rejection.
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 1-6 and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-6 and 16-17 of U.S. Patent 11,629,859
Regarding Claim 1, Although the claims at issue are not identical, they are not patentably distinct from each other as they differ only as described in the table below.
Claim language: Application 19/298,143 (This Application)
Claim language: US 11,629,859
Differences /
Obviousness rationale
1. (Currently Amended) An apparatus, comprising:
a first valve (vi), wherein the apparatus is configured to receive a first amount of natural gas through the first valve (v1);
a first piping section;
a high-pressure accumulator (Al),
wherein the first piping section is between the first valve (vi) and the high-pressure accumulator (Al);
a second valve (225);
a catalytic heater (H1);
a medium-pressure accumulator (A2),
wherein the catalytic heater (H1) is located between the high-pressure accumulator (Ai) and the mid-pressure accumulator (A2);
a first controller (A),
wherein the first controller (A) is configured to be connected to the mid-pressure accumulator (A2) via a second piping section;
a control valve (v7),
wherein the first controller (A) is configured use the first amount of natural gas to control the control valve (v7);
a third piping section;
a fail-close valve (v5),
wherein the third piping section is between the first controller (A) and the fail-close valve (v5);
a fourth piping section,
wherein the fail-close valve (v5) and the control valve (v7) are located on the fourth piping section;
a fifth piping section (202);
an indirect heater (230),
wherein the fifth piping section (202) is located between the control valve (v7) and the indirect heater (230);
a sixth piping section (204);
a seventh piping section (207),
wherein the sixth piping section (204) is configured to be connected to the seventh piping section (207);
an inverse acting valve (v20),
wherein the seventh piping section (207) is configured to be connected to the inverse acting valve (v20);
an eighth piping section (209),
wherein the eighth piping section (209) is configured to be connected to the seventh piping section (207);
a third valve (v23),
wherein the eighth piping section (209) is configured to be connected to the third valve (v23),
wherein the mid-pressure accumulator (A2) is configured to send a second amount of natural gas, from the mid-pressure accumulator (A2), through a ninth piping section, to the first controller (A), and
wherein the first controller (A) is configured to use the second amount of natural gas to control the control valve (v7) instead of the first amount of natural gas based on the second amount of natural gas having a greater pressure than the first amount of natural gas.
1. An apparatus, comprising:
a first valve (v1), wherein the apparatus is configured to receive a first amount of natural gas through the first valve (v1);
a first piping section;
a high-pressure accumulator (A1),
wherein the first piping section is between the first valve (v1) and the high-pressure accumulator (A1);
a second valve (225);
a catalytic heater (H1);
a medium-pressure accumulator (A2),
wherein the catalytic heater (H1) is located between the high-pressure accumulator (A1) and the mid-pressure accumulator (A2);
a first controller (A),
wherein the first controller (A) is configured to be connected to the mid-pressure accumulator (A2) via a second piping section;
a control valve (v7),
wherein the first controller (A) is configured use the first amount of natural gas to control the control valve (v7);
a third piping section;
a fail-close valve (v5),
wherein the third piping section is between the first controller (A) and the fail-close valve (v5);
a fourth piping section,
wherein the fail-close valve (v5) and the control valve (v7) are located on the fourth piping section;
a fifth piping section (202);
an indirect heater (230),
wherein the fifth piping section (202) is located between the control valve (v7) and the indirect heater (230);
a sixth piping section (204);
a seventh piping section (207),
wherein the sixth piping section (204) is configured to be connected to the seventh piping section (207);
an inverse acting valve (v20),
wherein the seventh piping section (207) is configured to be connected to the inverse acting valve (v20), and
wherein the third piping section is connected to the inverse acting valve (v20);
an eighth piping section (209),
wherein the eighth piping section (209) is configured to be connected to the seventh piping section (207);
a third valve (v23),
wherein the eighth piping section (209) is configured to be connected to the third valve (v23); and
a ninth piping section,
wherein the ninth piping section is configured to be connected between the third valve (v23) and the mid-pressure accumulator (A2),
wherein the mid-pressure accumulator (A2) is configured to send a second amount of natural gas, from the mid-pressure accumulator (A2), through the ninth piping section, to the first controller (A), and
wherein the first controller (A) is configured to use the second amount of natural gas to control the control valve (v7) instead of the first amount of natural gas based on the second amount of natural gas having a greater pressure than the first amount of natural gas.
The patent is more specific.
The patent is more specific.
Further regarding Claim 1 of the present application, It is clear that all the elements of Claim 1 are to be found in patent ‘859 Claim 1. The difference between Claim 1 of the application and Claim 1 of the patent lies in the fact that the patent claim includes more elements and is thus much more specific.
The elements of Claim 1 of the patent that are not included in the present application include:
- the third piping section is connected to the inverse acting valve (v20 );
- a ninth piping section, wherein the ninth piping section is configured to be connected between the third valve (v23) and the mid-pressure accumulator (A2 ).
Thus, the invention of Claim 1 of the patent is in effect a “species” of the “generic” invention of Claim 1 of the present application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed Cir 1993). Since Claim 1 of the present application is anticipated by Claim 1 of patent ‘859, it is not patentably distinct from Claim 1 of patent ‘859.
Regarding Claim 2, in the present Application, Claim 2 recites, “2. The apparatus of claim 1, wherein the indirect heater (230) is located after the first controller (A).” See Claim 2 of the patent.
Regarding Claim 3, in the present Application, Claim 3 recites, “3. The apparatus of claim 1, further comprising: a computing device.” See Claim 3 of the patent, which is more specific.
Regarding Claim 4, in the present Application, Claim 4 recites, “4. The apparatus of claim 1, further comprising: a second controller (B); another fail-close valve (v6), wherein the other fail-close valve (v6) is located before the control valve on a tenth piping section.” See Claim 4 of the patent.
Regarding Claim 5, in the present Application, Claim 5 recites, “5. The apparatus of claim 1, wherein the first controller (A) does not control the fail-close valve.” See Claim 5 of the patent.
Regarding Claim 6, in the present Application, Claim 6 recites, “6. The apparatus of claim 1, further comprising: a burner, wherein the burner is located: after the control valve (v7), and before the indirect heater (230).” See Claim 6 of the patent.
Regarding Claim 16, in the present Application, Claim 16 recites, “16. The apparatus of claim 1, further comprising: a second controller (B), wherein the second controller (B) is configured to be connected to the mid-pressure accumulator (A2); another control valve (v8) and another fail-close valve (v6), wherein the other control valve (v8) and the other fail-close valve (v6) are located on an eleventh piping section; and a twelfth piping section, wherein the twelfth piping section is between the second controller (B) and the fail-close valve (v5), and wherein the twelfth piping section is configured to be connected to the fifth piping section (202).” See Claim 16 of the patent.
Examiner acknowledges Claim 16 of the patent recites “a thirteenth piping section”, instead of “a twelfth piping section”, as recited in the current application. However, within the claim tree of the ‘859 patent (Claim 1 to Claim 16), there is no “twelfth piping section” recited. Examiner concludes that the Claim 16 of the present application is therefore not patentably distinct from Claim 16 of the patent, as both recite a total of twelve “piping sections”.
Regarding Claim 17, in the present Application, Claim 17 recites, “17. The apparatus of claim 16, further comprising: a fourth valve (v11); a fifth valve (218); and a sixth valve (v13), wherein the fifth valve (218) is located between the fourth valve (v11) and the sixth valve (v13).” See Claim 17 of the patent, which is more specific.
Claims 8-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 8-12 of U.S. Patent 11,629,859
Regarding Claim 8, Although the claims at issue are not identical, they are not patentably distinct from each other as they differ only as described in the table below.
Claim language: Application 19/298,143 (This Application)
Claim language: US 11,629,859
Differences /
Obviousness rationale
8. A device, comprising:
a memory;
a processor coupled to the memory to:
receive electronic information about pressure; and
generate electronic instructions to open or close one or more valves,
wherein the one or more valves include a control valve and a fail-close valve;
a first valve (vi),
wherein the apparatus is configured to receive a first amount of natural gas through the first valve (vi);
a first piping system;
a high-pressure accumulator (A1),
wherein the first piping section is between the first valve (vi) and the high-pressure accumulator (A1);
a second valve (225);
a catalytic heater (H1);
a medium-pressure accumulator (A2),
wherein the catalytic heater (H1) is located between the high-pressure accumulator (A1) and the mid-pressure accumulator (A2);
a first controller (A),
wherein the first controller (A) is configured to be connected to the mid-pressure accumulator (A2) via a second piping section;
a control valve (v7),
wherein the first controller (A) is configured use the first amount of natural gas to control the control valve (v7);
a third piping section;
a fail-close valve (v5),
wherein the third piping section is between the first controller (A) and the fail-close valve (v5);
a fourth piping section,
wherein the fail-close valve (v5) and the control valve (v7) are configured to be attached on the fourth piping section;
a fifth piping section (202);
a sixth piping section (204);
a seventh piping section (207),
wherein the sixth piping section (204) is configured to be connected to the seventh piping section (207);
an inverse acting valve (v20),
wherein the seventh piping section (207) is configured to be connected to the inverse acting valve (v20), and
wherein the third piping section is configured to be connected to the inverse acting valve (v20);
an eighth piping section (209),
wherein the eighth piping section (209) is configured to be connected to the seventh piping section (207);
a third valve (v23),
wherein the eighth piping section (209) is configured to be connected to the third valve (v23); and
a ninth piping section,
wherein the ninth piping section is configured to be connected between the third valve (v23) and the mid-pressure accumulator (A2),
wherein the mid-pressure accumulator (A2) is configured to send a second amount of natural gas, from the mid-pressure accumulator (A2), through the ninth piping section, to the first controller (A), and
wherein the first controller (A) is configured to use the second amount of natural gas to control the control valve (v7) instead of the first amount of natural gas based on the second amount of natural gas having a greater pressure than the first amount of natural gas.
8. A device, comprising:
a memory;
a processor coupled to the memory to:
receive electronic information about pressure; and
generate electronic instructions to open or close one or more valves,
wherein the one or more valves include a control valve and a fail-close valve;
a first valve (v1),
wherein the apparatus is configured to receive a first amount of natural gas through the first valve (v1);
a first piping system;
a high-pressure accumulator (A1),
wherein the first piping section is between the first valve (v1) and the high-pressure accumulator (A1);
a second valve (225);
a catalytic heater (H1);
a medium-pressure accumulator (A2),
wherein the catalytic heater (H1) is located between the high-pressure accumulator (Al) and the mid-pressure accumulator (A2);
a first controller (A),
wherein the first controller (A) is configured to be connected to the mid-pressure accumulator (A2) via a second piping section;
a control valve (v7),
wherein the first controller (A) is configured use the first amount of natural gas to control the control valve (v7);
a third piping section;
a fail-close valve (v5),
wherein the third piping section is between the first controller (A) and the fail-close valve (v5);
a fourth piping section,
wherein the fail-close valve (v5) and the control valve (v7) are configured to be attached on the fourth piping section;
a fifth piping section (202);
an indirect heater (230),
wherein the fifth piping section (202) is between the control valve (v7) and the indirect heater (230);
a sixth piping section (204);
a seventh piping section (207),
wherein the sixth piping section (204) is configured to be connected to the seventh piping section (207);
an inverse acting valve (v20),
wherein the seventh piping section (207) is configured to be connected to the inverse acting valve (v20), and
wherein the third piping section is configured to be connected to the inverse acting valve (v20);
an eighth piping section (209),
wherein the eighth piping section (209) is configured to be connected to the seventh piping section (207);
a third valve (v23),
wherein the eighth piping section (209) is configured to be connected to the third valve (v23); and
a ninth piping section,
wherein the ninth piping section is configured to be connected between the third valve (v23) and the mid-pressure accumulator (A2),
wherein the mid-pressure accumulator (A2) is configured to send a second amount of natural gas, from the mid-pressure accumulator (A2), through the ninth piping section, to the first controller (A), and
wherein the first controller (A) is configured to use the second amount of natural gas to control the control valve (v7) instead of the first amount of natural gas based on the second amount of natural gas having a greater pressure than the first amount of natural gas.
The patent is more specific.
Further regarding Claim 8 of the present application, It is clear that all the elements of Claim 8 are to be found in patent ‘859 Claim 8. The difference between Claim 8 of the application and Claim 8 of the patent lies in the fact that the patent claim includes more elements and is thus much more specific.
The elements of Claim 8 of the patent that are not included in the present application include:
- an indirect heater (230), wherein the fifth piping section (202) is between the control valve (v7) and the indirect heater (230).
Thus, the invention of Claim 8 of the patent is in effect a “species” of the “generic” invention of Claim 8 of the present application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed Cir 1993). Since Claim 1 of the present application is anticipated by Claim 8 of patent ‘859, it is not patentably distinct from Claim 8 of patent ‘859.
Regarding Claim 9, in the present Application, Claim 9 recites, “9. The device of claim 8, wherein the first controller (A) pneumatically controls the control valve (v7).” See Claim 9 of the patent.
Regarding Claim 10, in the present Application, Claim 10 recites, “10. (Currently Amended) The device of claim 8, wherein the first controller (A) does not control the fail-close valve (v5).” See Claim 10 of the patent
Regarding Claim 11, in the present Application, Claim 11 recites, “11. The device of claim 8, wherein the electronic instructions are displayed on a graphical user interface, and wherein the device controls the graphical user interface.” See Claim 11 of the patent.
Regarding Claim 12, in the present Application, Claim 12 recites, “12. The device of claim 8, further comprising: a second controller (B).” See Claim 12 of the patent, which is more specific.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M AFFUL whose telephone number is (571)272-8421. The examiner can normally be reached Monday - Thursday: 7:30 AM - 5:00 PM Eastern Time.
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, Craig Schneider can be reached at 5712723607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER M AFFUL/Primary Examiner, Art Unit 3753
Prosecution Insights