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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Claims 1 – 20 are entitled to a priority date of April 24, 2024.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 5, 19, and 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 5 recites at least one gas turbine. The metes and bounds of the claim are unascertainable because Claim 1, upon which claim 5 depends, already introduces at least one gas turbine, making it unclear whether the instance in Claim 5 refers to the same at least one gas turbine or a different at least one gas turbine. The claim will be interpreted as reciting the at least one gas turbine.
Claim 19, Line 6 recites a steam turbine. The metes and bounds of the claim are unascertainable because Claim 19, Line 2 already introduces a steam turbine, making it unclear whether the instance in Line 6 refers to the same steam turbine or a different steam turbine. The claim will be interpreted as reciting the steam turbine.
Claim 20 is rejected by virtue of its dependence on Claim 19.
Double Patenting
Statutory
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 – 18 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 – 18 of prior U.S. Patent No. 12480719. This is a statutory double patenting rejection.
Claims 1 – 18 of the instant application are verbatim copies of Claims 1 – 18 of the US Patent. Although Claim 5 varies slightly due to the 112b issue, based on examiner’s interpretation above, the scopes are identical.
Non-Statutory
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19 and 20 of U.S. Patent No. 12480719. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the comparative table below:
Claim 19 of Instant Application
Claim 19 of US 12480719
A method for clean-energy operation of a microgrid power generation system including at least one gas turbine, at least one heat recovery steam generator (HRSG), a steam turbine, and a thermal energy storage (TES) system, the method including:
charging the TES system using heat energy generated from electricity from a renewable electricity source and/or an electrical grid;
selectively operating a steam turbine using steam generated from the TES system to maintain the steam turbine in an operational state while a gas turbine is offline; and
selectively operating the gas turbine so as to maintain a substantially constant power output despite variations in renewable electricity supply and steam availability from the TES system.
A method for clean-energy operation of a microgrid power generation system including at least one gas turbine, at least one heat recovery steam generator (HRSG), a steam turbine, and a thermal energy storage (TES) system with a steam generation subsystem, the method including:
charging the TES system using heat energy generated from electricity from a renewable electricity source and/or an electrical grid;
selectively operating the steam turbine using steam generated from the steam generation subsystem of the TES system to maintain the steam turbine in an operational state while a gas turbine is offline; and
selectively operating the gas turbine so as to maintain a substantially constant power output despite variations in renewable electricity supply and steam availability from the TES system.
As seen above, the underlined portions show the differences between the claims. The instant application removes the steam generation subsystem of the TES system. As such, the instant application claim is broader and the US Patent claim fully anticipates the instant application claim.
Claims 20 of both the instant application and the US Patent are verbatim copies of one another.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAERT DOUNIS whose telephone number is (571)272-2146. The examiner can normally be reached on Mon. - Thurs: 10a - 4:30p.
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, MARK LAURENZI can be reached on (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Laert Dounis/
Primary Examiner, Art Unit 3746
Thursday, July 2, 2026
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