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 .
Status of Claims
This action is in reply to the communication filed on . The disposition of claims is as follows:
Pending:
Rejected:
Withdrawn from consideration:
Response to Arguments and Amendments
Applicant's arguments filed have been fully considered. The Examiner proceeds below with a response.
Regarding Claims rejected under 35 U.S.C. § :
Applicant's arguments have been fully considered but they are not persuasive.
Applicant presents the following arguments:
The specification provides sufficient written description and enabling disclosure regarding the prediction of reverse rotation of the engine. In particular, paragraph [0089] explicitly states that "the reverse rotation of the engine 110 is predicted based on the present angular acceleration and the predetermined target angular acceleration." Furthermore, Figure 4 clearly illustrates negative rpm values, which indicate the occurrence of reverse rotation. As described, the reverse rotation (rpm < 0) can be predicted based on the detected engine rpm or the rate of change (slope) of the rpm.
In addition, claim 11 has been amended to clarify that an occurrence of reverse rotation of the engine is predicted based on a determination that the rotational speed of the engine is less than the predetermined first target rotational speed.
The Examiner respectfully disagrees.
Contrary to applicant’s arguments, the specification as filed describes prediction of an occurrence of reverse rotation as follows:
(See at least Instant Specification as Filed: ¶¶)
Although applicant contends " in regards to claim limitation: ”, this is insufficient to satisfy the written description requirement. To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
Applicant's arguments amount to an assertion that it would be common practice for a person skilled in the art to based on present angular acceleration and the predetermined target angular acceleration and predict reverse rotation based thereupon.
Applicant asserts that a person skilled in the art understands how to . Although a person skilled in the art may arguably have familiarity angular accelerations and that certain angular accelerations have an association with reverese rotation, such a person would not understand that the Applicant had possession of the claimed invention. Employing angular accelerations and comparing them to target values in order to predict reverse rotation would require at least tuning for multiple vehicle situations. Absent knowledge of how tuning is employed with the specified predetermined values, a person skilled in the art would be faced with a vast amount of inputs, algorithms, model training, and data sets that would confound the process of implementing Applicant's actual invention.
Moreover, Applicant does not direct Examiner to any language, steps or flow charts in the disclosure to show particular hardware or an algorithm, such that a skilled artisan would understand how to . There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs and output a value. As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I.)
Absent from the Specification is any discussion as to the particular steps, i.e., algorithm, necessary to perform the claimed functions. As such, the rejection is maintained as the instant Specification does not disclose sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to . Stated differently, the steps, procedure or algorithm taken to perform the claimed functions are not described in sufficient detail in the instant Specification to demonstrate that the inventor was in possession of that knowledge.
Therefore, the rejection has been maintained.
Regarding Claims rejected under 35 U.S.C. § :
Applicant's arguments have been fully considered and are persuasive.
Regarding Claim(s) rejected under 35 U.S.C. § :
Applicant’s argument have been considered but are moot because the arguments do not apply to reference combinations being used in the current rejection.
Claim Rejections - 35 USC § 112(a)
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 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 claims contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 1,
The claim recites “redict an occurrence of reverse rotation of the engine based on a determination that the rotational speed of the engine is less than the predetermined first target rotational speed”
The specification does not provide adequate written description of how . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
(See at least Instant Specification as Filed: ¶¶)
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output a . As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claims ,
The claims ultimately depend from a claim that fails to comply with the written description requirement and is/are rejected for depending therefrom.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims are rejected under 35 U.S.C. § 103 as being unpatentable over (), hereinafter “” in view of by (JP 2023076335 A), hereinafter “”
Regarding Claim
disclose:
A hybrid electric vehicle comprising:
an engine ();
a motor () directly connected to the engine (1) (¶¶); and
a control unit () configured to:
determine, when an engine stop request is generated, whether a first condition for stopping the engine and a second condition for recovering an engine rotational energy by of the motor are satisfied (¶¶) (),
apply, when the first condition and the second condition are satisfied, a negative torque to the motor, wherein the negative torque is determined based on a rotational speed of the engine and a predetermined first target rotational speed, (¶¶) ()
predict an occurrence of reverse rotation of the engine based on the rotational speed of the engine, and apply, when the occurrence of the reverse rotation is predicted, a feedback torque for satisfying a target behavior of the engine to the motor (¶¶).
disclose:
a rotational speed of the engine determined by a detection result of at least one sensor
discloses:
a prior art upon which the claimed invention can be seen as an improvement.
teaches:
a prior art utilizing a known technique applicable to the of . Namely, the technique of utilizing to determine rotational speed of the engine in order to provide an engine speed to a controller. See at least ¶¶0030, 0042, 0080, 0115.
Therefore, a person having ordinary skill in the art before the effective filing date of the claimed invention would have recognized that applying the known technique taught by to the of would have yielded predicable results and resulted in an improved . Namely, a that would utilize in to provide an engine speed to a controller. See at least ¶¶0030, 0042, 0080, 0115; MPEP § 2143(I)(D).
Regarding Claim ,
The combination of references further disclose:
wherein the at least one sensor includes a first sensor configured to detect a position of a rotor of the motor, and the rotational speed of the engine is determined based on a detection result of the first sensor (: ¶¶).
Regarding Claim ,
The combination of references further disclose:
wherein the negative torque is determined to correspond to an absolute value of a difference between the rotational speed of the engine and a target rotational speed (: ¶¶).
Regarding Claim ,
The combination of references further disclose:
wherein the negative torque is determined by considering at least one of a predetermined maximum value or a predetermined variance limit per hour (: ¶¶).
Regarding Claim ,
The combination of references further disclose:
wherein whether the first condition is satisfied is determined based on at least one of an engine clutch state, a powertrain mode, or whether a fuel injection request is generated (: ¶¶).
Regarding Claim ,
The combination of references further disclose:
wherein whether the second condition is satisfied is determined based on at least one of the rotational speed of the engine, a battery state, or whether the at least one sensor is normally operating (: ¶¶0030, ).
Special Definitions for Claim Language - MPEP § 2111.01(III)-(IV)
No special definitions are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given the plain meaning to a person of ordinary skill in the art. (See MPEP §§ 2173.01, 2173.05(a), and 2111.01).
If special definitions are present, Applicant should bring them to the attention of the Examiner and the prosecution history in the next response.
To date, Applicant has provided no indication of special definitions.
Terminology
The Examiner notes that the following terms are utilized in Applicant’s specification as follows:
:
See Instant PgPub: ¶¶
:
… The second condition is on the engine 110 rotational energy recovery of the first motor 120 considering the engine 110, the battery protection, or the energy recovery efficiency, and when the stop-control-entry determining unit 310 does not satisfy the second condition, it is considered that the rotational energy recovery is impossible or inappropriate, so thus the engine-stop control is not entered. See Instant PgPub: ¶
:
See Instant PgPub: ¶¶
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is provided on the attached PTO-892 Notice of References Cited form.
disclose:
A hybrid electric vehicle comprising:
an engine ();
a motor () directly connected to the engine () (¶¶); and
a control unit () configured to:
determine, when an engine stop request is generated, whether a first condition for stopped the engine (¶¶) and a second condition for an engine rotational energy recovery of the motor are satisfied (¶¶),
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entirety of identified prior art references as applicable as to the limitations of the claims. It is noted that any citations to specific pages, paragraph numbers, columns, lines, or figures in the prior art references presented and any interpretation of the reference should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP § 2123. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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 SCOTT A REINBOLD whose telephone number is (313)446-6607. The examiner can normally be reached on MON - FRI: 8AM - 5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Logan Kraft, can be reached on (571)270-5065. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant may call Examiner Reinbold directly at (313)446-6607 (preferred) or use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/SCOTT A REINBOLD/Primary Examiner, Art Unit 3747
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