DETAILED ACTION
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 .
Information Disclosure Statement
The IDSes filed 2/24/23 (2 copies), 6/16/23 and 2/24/23 have all been considered and placed of record. The initialed copies are attached herewith.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The disclosure should be carefully reviewed to ensure that any and all grammatical, idiomatic, and spelling or other minor errors are corrected. For example, claim 4, line 10, the term “pack” should have been pluralized as “packs.”
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Re claim 1, the second occurrence of the limitation “an energy control system” on line 7 (first occurrence is on line 4) is confusing because the specification only disclose one energy control system. The limitations “the operation of the vehicle” on line 8 lack proper antecedent basis. The limitation “the state of the energy storage unit” on line 9 lacks proper antecedent basis. The limitation “the associated memory” on line 11 lacks proper antecedent basis. The limitation “a device” on line 12 is confusing because “a device” has already occurred in the first line. The specification does not disclose two devices.
Re claim 2, the claim is indefinite for depending on indefinite claim 1.
Re claim 3, the term “distinctive” on lines 1 and 3 is subjective and therefore indefinite.
Re claim 4, the limitation “the apparatus,” on the third line from the bottom, lacks proper antecedent basis.
Re claim 5, the claim is indefinite for depending on indefinite claim 4.
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, 4 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13 and 14 of U.S. Patent No. 12,227,108. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Re claim 1, the pending claim is broader and narrower than patent claim 1. It is narrower, in one instant, because the pending claim defined the power packs as supercapacitor power packs. Official notice is taken of the fact that both supercapacitors and batteries maybe used as power packs. It would have been obvious to have used supercapacitors as a power source because they are safer over a wider temperature range, can be charged faster and have an extended cycle life. The pending claim is broader for not claiming a photovoltaic array. In addition, the pending claim broadly claims the control system adapted to anticipated power demand change while patent claim 1 detailed the optimization technique used to data tracking and the flow of power.
Re claims 4 and 5, the pending claims are broader and narrower than patent claims 13 and 14. It is narrower, in one instant, because the pending claims defined the power packs as supercapacitor power packs. Official notice is taken of the fact that both supercapacitors and batteries maybe used as power packs. It would have been obvious to have used supercapacitors as a power source because they are safer over a wider temperature range, can be charged faster and have an extended cycle life. The pending claims are broader for not defining the specific charge management database.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-5, 10 and 11 of copending Application No. 17/976,674 (reference application; US 2023/0136195). Although the claims at issue are not identical, they are not patentably distinct from each other because
Re claim 1, instant claim 1 is similar to copending claim 2. Copending claim 2 does not claim the specific name of the dynamic module. However, its function is same as the function of the dynamic module of instant claim 1.
Re claims 2 and 3, they are similar to copending claims 3 and 4.
Re claims 4 and 5, the claims are similar to a combination of copending claims 2, 5, 10 and 11.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication should be directed to the Examiner at the below-listed number. The Examiner can normally be reached on Mon-Thu from 7:00am-5:00pm.
The Examiner’s SPE is Drew Dunn and he can be reached at 571.272.2312. The fax number for the organization where this application is assigned is 571.273.8300.
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/EDWARD TSO/Primary Examiner, Art Unit 2859 571.272.2087