DETAILED ACTION
Claims 1-20 are pending.
Terminal Disclaimer
A terminal disclaimer may be effective to overcome a provisional nonstatutory double patenting rejection over a pending application (37 CFR 1.321(b) and (c)). 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. 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/PatentForms. The filing date of the application will determine what form 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/TerminalDisclaimer.
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 §§ 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 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,592,489 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because a later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the double patenting rejection(s) set forth in this Office action.
The following is an examiner’s statement of reasons for allowance:
Claim 1 is allowed because the closest prior art, Wiley et al. [US Patent Number 6,031,354], fails to anticipate or render obvious the monitoring unit configured to generate and output a time-varying, repeating signal that is based on the comparison of the one or more operating parameters with the first setpoint value and that has one or more characteristics indicative of the number of the energy storage devices having the values of the one or more operating parameters that are outside of the designated range, in combination with all other limitations in the claim(s) as defined by applicant.
Claim 9 is allowed because the closest prior art, Wiley et al. [US Patent Number 6,031,354], fails to anticipate or render obvious a monitoring unit configured to receive a comparison between the one or more operating parameters with the designated range from the one or more local units, the monitoring unit configured to generate and output a time-varying, repeating signal having one or more characteristics that are based on the number of the battery cells having the one or more operating parameters that are outside of the designated range, in combination with all other limitations in the claim(s) as defined by applicant.
Claim 17 is allowed because the closest prior art, Wiley et al. [US Patent Number 6,031,354], fails to anticipate or render obvious a monitoring unit configured to receive a comparison of the one or more operating parameters with the designated range from the one or more local units, the monitoring unit configured to generate and output a time-varying, repeating signal having one or more characteristics that are based on the number of the battery cells having the one or more operating parameters that are outside of the designated range, in combination with all other limitations in the claim(s) as defined by applicant.
Response to Arguments
Applicant’s arguments, see page 9, first paragraph, filed 04/09/2026, with respect to claim 1 have been fully considered and are persuasive. The rejection of claims 1-20 has been withdrawn.
Applicant informs a terminal disclaimer was filed (see page 7 of the remarks).
In response, the Examiner indicates the disclaimer appears to not have been submitted yet. Recommendation is made to file a terminal disclaimer.
Relevant Prior Art / Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hauenstein (US Patent Application Publication 2014/0278327 A1) discloses methods and systems to virtualize energy functions and processes into a cloud based model.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICKY GO whose telephone number is (571)270-3340. The examiner can normally be reached on Monday through Friday from 9:00 a.m. to 5:30 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arleen M. Vazquez can be reached on (571) 272-2619. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RICKY GO/Primary Examiner, Art Unit 2857
Prosecution Insights