FINAL REJCTION
This office action is in response to the amendment and remarks filed on 05/13/2026. Claims 1-13 and 15-21 are currently pending and being examined.
Response to Arguments
Applicant’s amendment filed on 05/13/2026 has overcome the 35 USC 103 rejections, however, the double patenting rejection is still pending since no terminal disclaimer has been filed.
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 1-13 and 15-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,410,746. Although the claims at issue are not identical, they are not patentably distinct from each other because the referencing US Patent fully encompass the subject matter of the instant application claims and therefore anticipate the claims of the instant application. Since the claims of the instant application are anticipated by the claims of the referencing US Patent, the claims of the instant application are not patentably distinct from the referencing US Patent.
The comparison of the claims is as follows:
Instant Application
Patent 12,410,746
Claim [ 1 ] compressor section, combustion section, combustion chamber, turbine section, gaseous hydrogen fuel, gaseous fuel nozzle assembly, first fluid passage, second fluid passage, steam, plurality of orifices, controlling flame speed.
Claim [ 1 ] compressor section, combustion section, turbine section, combustor liner, combustion chamber, gaseous fuel nozzle assembly, steam supply, steam, hydrogen fuel supply, gaseous hydrogen fuel, fuel nozzle body, limit flame speed, first fluid passage, second fluid passage, annular configuration, plurality of orifices.
Instant Application
Patent 12,410,746
Claim [11 ] compressor section, combustion section, combustion chamber, turbine section, fuel, gaseous fuel nozzle assembly, first fluid passage, steam, second fluid passage, steam conduit, fuel nozzle body, outer wall, controlling flame speed.
Claim [ 12 ] compressor section, combustion section, turbine section, combustor liner, combustion chamber, gaseous fuel nozzle assembly, steam supply, steam, hydrogen fuel supply, gaseous hydrogen fuel, fuel nozzle body, limit flame speed, first fluid passage, second fluid passage, annular configuration, steam conduit, outer wall.
THIS ACTION IS MADE FINAL. 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.
Allowable Subject Matter
Claims 1-13 and 15-21 are allowed in view of the amendments to the claims filed on 05/13/2026 pending submitting a terminal disclaimer to overcome the pending double patenting rejection.
The prior art of record neither discloses nor makes obvious the combination set forth in the amended independent claims 1 and 11, particularly the limitations incorporated into the independent claims by the amendment filed on 05/13/2026, in combination with the other claim limitations.
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.”
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H RODRIGUEZ whose telephone number is (571)272-4831. The examiner can normally be reached Mon-Fri 8:30-6:30.
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, Phutthiwat Wongwian can be reached at 571-270-5426. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/William H Rodriguez/Primary Examiner, Art Unit 3741
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