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 .
Response to Arguments
Applicants' arguments filed January 15, 2026 have been fully considered but they are only persuasive for claim 1 – they are not persuasive for claim 20.
In claim 1, the limitation that the first battery is directly connected and the second battery is indirectly connected to the vehicle overcomes the cited references. A new rejection is presented citing Doane (US 2021/0218268), which discloses a vehicle (fig 5) with a power controller (120) that connects and routs power between a directly connected battery (unlabeled, but at the end of cable 520), an indirectly connected battery (140-6 or 50) and DC sources (130-1, 130-4).
For claim 20, the Applicants’ comments for the allowability of claim 1 are not persuasive.
Throughout the remarks, the Applicants repeat the phrase “the current office action appears to be silent on at least amended Claim 1’s features of …”. But the amended limitations were not pending when the office action was written (they were added by amendment afterwards) and the office action’s “silence” is not a fault. The Applicants have changed the language and added limitations that they contend is not found in the prior art – but this is a completely different issue than stating that the office action failed to address language.
The limitation of modifying power transmission between the DC source(s) and batter(ies) is taught by the combination of Cirillo and Johnson (Remarks, page 12, penultimate paragraph). This issue was discussed during the interview and was rebutted by the Examiner. Cirillo clearly discloses routing power between batteries and an alternator (figs 5-15). The presence of a renewable DC source (wind, solar) is taught by Johnson. Modifying Cirillo to have a renewable source would have been within the level of one of ordinary skill in the art. Thus, it is combination that teaches the amended limitations. The Applicants’ piecemeal analysis of the references does not show any error in the combination.
During the interview, the Applicants’ also pointed to Cirillo figure 4 as showing a vehicle that is off (Remarks, page 12-13, bridging paragraph). But the Examiner noted that figures 5-15 then clearly show the vehicle on, moving and transferring power between various inputs, outputs and batteries. It is unclear why the Applicants continue to cite to only figure 4. This is not a persuasive argument. To assist the Applicants, citations to figure 4 are removed from the art rejection.
The direct/indirect connection of the batteries is not recited in claim 20 (Remarks, page 13, top). Claim 20 recites only those limitations that were proposed during the interview and which the Examiner noted would not overcome the cited art. The Applicants’ response does not contain any rebuttal of the Examiner’s comments to indicate why the art rejection cannot be applied to claim 20.
The Applicants’ citation to various examples in the specification, while helpful to understand the concept being claimed, is just an example. None of these battery locations is explicitly cited. Further, claim 20 explicitly omits reciting any “indirect” battery connection.
Lastly, the Applicants cite to MPEP rules regarding “as a whole” and “impermissible hindsight” (Remarks, page 13). But at no point to the Applicants allege that the office action violated any of these rules. Citing a rule or legal precedent is not the same as specifically illustrating where the office action has allegedly failed to follow it.
The previous art rejection of claim 1 (Cirillo/Johnson) is maintained for claim 20. The other claims are rejected over Tomlinson.
Furthermore, the Applicants should note the extreme breadth of the claims. For example:
The modification of the power transmission is “based on monitoring a condition” of the DC sources and batteries. But there are no limitations in the claim that recite any structure that completes the monitoring (there are no sensors or sensing method steps). “based on monitoring” does not require any actual monitoring. “based on” implies a relationship to a monitored condition, but does not exclude data derived from other places.
The ports “facilitate power transmission”. A port is a passive electrical junction – it is where two components can be physically and electrically joined. The port does not actually control power transmission through itself. The actual control of power transmission would be done by the power controller (or whatever processor it contains).
The ports “facilitate” simultaneous charging/discharging. Again, the ports are not control devices. They are passive electrical junctions. The claim does not contain any limitations directed to how the power controller is configured to control the distribution of power to actually make the two batteries do these things at the same time.
The Applicants have deleted language directed to the presence of converters and switches in the power controller – i.e. the things that would actually result in changes to power transmission and create the simultaneous charge/discharge.
The Applicants are encouraged to avoid reciting “facilitate” functionality and, instead, assign the functionality to the proper component (i.e. a controller). The Applicants may also consider reintroducing the converters and switches to more clearly show how the power controller is configured to modify power transmission and/or charge/discharge the batteries (one at a time or simultaneously).
The Applicants’ response does not address all of the §112(d) rejections.
Specification
The disclosure is objected to because it repeatedly refers to a battery as a “bank” (at least par 3, 8, 12). A battery bank is a plurality of batteries – but the Applicants’ figures show that each battery is a single unit (not a plurality). Since the specification misuses “bank”, each battery of the application (including within the claims) will be interpreted as a single battery unit.
Appropriate correction is required.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 21 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
The only difference between claims 1 and 20 is that claim 20 omits the “directly” and “indirectly” modifies for the two batteries. But claim 21 then reintroduces this language, thereby causing it to be an exact duplicate of claim 1.
Claims 1, 12 and 20 are objected to because each claim recites “wherein the circuit board is configured to” followed by power control language. A circuit board is a piece of plastic with conductive traces (see specification, par 28 for examples of circuit boards) – it is not a “controller” with any type of processor or decision making ability. It is unclear why the claim recites what the circuit board is configured to do and not that the “power controller” has these configurations/abilities.
Claims 1, 12 and 20 are objected to because it is unclear why the circuit board is in a housing, but the power controller is not. It would appear that the power controller is the larger device that contains the, relatively smaller, circuit board. ).
Claim 12 is objected to because its method is not directed to “controlling power”. The only method steps in the claim are for “providing” physical structure and, therefore, the claim is directed to building the a power supply system. The Examiner notes the presence of power control verbs in the claim (modify power transmission, monitoring a condition, simultaneous charging) – but these are not method steps. They are descriptive of structure (how the circuit board or ports are “configured”). This language was copied from claim 1 (an apparatus - no method steps) – the slightly different preamble in claim 12 (adding “method”) does not change the interpretation of the claim language. Namely “[structure] configured to [function]” is a structural imitation.
Appropriate correction is required.
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 8 and 16 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 8 recites that the modification of power transmission is “Based on a communication protocol”. It is unclear if the Applicants are actually using one of named protocols or a derived protocol.
Further, there is no antecedent basis in claim 1 for any communication. The modification of power transmission does not inherently incorporate a data bus into the system.
The same analysis applies to claim 16.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 9 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3: “dumb” or “smart” includes all types of alternators. There are no possible options that are excluded from this list. Thus, the claim is not further limiting.
Claim 9: the monitoring of the condition is not a distinctly claimed limitation. The modification of power transmission is only loosely “based on” monitoring. Reciting that the condition is of current or voltage does not remedy the breadth of “based on” in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 9-13, 17 and 20-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Doane (US 2021/0218268).
With respect to claim 1, Doane discloses a system for power control (fig 1-5; par 21, 25-37; the Examiner notes that Doane incorrectly refers to figure 5 as figure 6), comprising:
a combustion powered mobile vehicle (100);
at least two batteries comprising:
a first battery (fig 5, the unlabeled battery in the tractor, electrically in between alternator 130-4 and selector 120) that is directly electrically connected to the combustion powered mobile vehicle, and
a second battery (140-6 or 50) that is indirectly electrically connected to the combustion powered mobile vehicle,
wherein at least one of the first battery or the second battery facilitates ignition of an engine of the combustion powered mobile vehicle (par 6, 28);
DC power sources (130-4 and 130-1) connected to the combustion powered mobile vehicle, comprising:
a first power source (130-4) comprising a motor driven alternator; and
a second power source (130-1) comprising one or more of:
a solar powered renewable energy source (par 27),
a hydro powered renewable energy source, or
a wind powered renewable energy source;
a power controller (120) electrically connected to the combustion powered mobile vehicle, the power controller configured to control power transmission of the system when the mobile vehicle is in motion (par 20, 28, 30-33, 42; namely par 28 discusses the availability of more power when the engine is on and its alternator is providing power to the tractor [and its starter battery] to be shared with the rest of the vehicle; par 30 mentions “on an open road” indicating the path over which the vehicle will travel; par 42 discloses the kinetic harvesting of a rotating axle while the vehicle is in motion), the power controller comprising:
a circuit board (par 44) disposed within a housing (the boundaries of the controller 120), the housing positioned within the combustion powered mobile vehicle, wherein the circuit board is configured to:
modify power transmission (par 20, 28, 30-333) between two or more of the first power source, second power source, or at least one battery of the at least two batteries based on:
monitoring a condition of one or more of the first power source or the second power source (par 28, 32) , and
monitoring a condition of at least one of the two batteries (par 30); and
at least two power ports (the boundaries of 120 through which the wires [510, 520, and the unlabeled wire to 152] pass) that facilitate power transmission between the circuit board, the at least two batteries, and the first power source and the second power source (not claimed; see discussion below for “facilitate”) , wherein the at least two power ports facilitate one or more of:
simultaneous charging of the at least two batteries based on the modified power transmission of the circuit board (not claimed), or
simultaneous discharging of the at least two batteries based on the modified power transmission of the circuit board (not claimed).
Doane discloses a tractor trailer with a directly connected battery (the tractor starter 12V battery) and an indirectly connected battery (any of the batteries in the trailer). Doane also discloses first (alternator) and second (solar) DC power sources.
The selector (i.e. controller with its circuit board) monitors the sources and batteries to determine when and how to route excess power. This includes moving power into and out of the selector through “ports” that enable the wiring shown in figure 5 from interfacing with internal circuitry of the selector. The specification gives various examples for how to construct the circuit board (par 28). These are all examples and none of them are explicitly recited in the claim. “Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”. Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed.Cir. 2004). MPEP §2111.01(II). The claim defines the circuit board as “configured to modify power transmission”, but all mention of the converters and switches have been deleted from the claim. Doane’s selector is configured to modify power transmission and it is within a housing. Thus, it qualifies as the claimed “circuit board”.
The term “facilitate” is interpreted as “not prohibiting” or “not preventing”. A port “facilitates” a function by not preventing it. This is because a port is a passive interface – it does not have control functionality (nor do the Applicants argue that this was their intention with the selected language). The claim clearly the configuration for power control to the circuit board (even though this appears to be incorrect, as it should be the power controller) – the ports “facilitate” the power routing decisions made elsewhere.
Doane also does not prevent any simultaneous charge or discharge of its batteries. Therefore, the ports “facilitate” such an ability. The claim does not give either the power controller or its circuit board the configuration to control the timing of battery (dis)charge. If the controller isn’t responsible for controlling power transmission to (or from) both batteries simultaneously, then there is nothing for the ports to “facilitate”. And the Applicants have deleted the language regarding the use of switches to control when each battery is selected (for charge or discharge).
Further, the limitation that the circuit board is configured to modify power transmission “based on monitoring a condition” of the DC sources or batteries has minimal patentable weight because the claim does not recite any structure that monitors these conditions in the first place. Also “based on” implies an indirect relationship to the monitored condition – the information is somehow adjusted/altered or changed to create the power control. Without any monitoring structure and an undefined “based on” relationship, it is unclear what data inputs the circuit board actually uses (and that it should probably be the power controller receiving these inputs and making the decisions on how to control the circuit board).
With respect to claim 2, Doane discloses the solar powered renewable energy source is a solar photovoltaic panel or array of panels (par 27).
With respect to claim 3, Doane discloses an alternator (130-4) and it is inherent that it is either dumb or smart, as those are the only two possible options.
With respect to claim 4, claim 1 recites that the second DC power source comprises one or more of the three listed sources (solar, hydro, or wind). In claim 1, Doane is cited as disclosing solar power and the alternative language means that the reference is not required to disclose any of the other two. Claim 4 effectively further narrows an unselected option. The narrow structure of the wind turbine is irrelevant to Doane’s anticipation of a solar source.
With respect to claim 5, Doane discloses the first battery (par 22, 28) and the second battery (par 31) both supply 12v DC power.
With respect to claim 9, Doane discloses the condition of the at least one battery comprises one or more of current or voltage (par 5).
With respect to claim 10, Doane discloses the first and second battery differ in voltage (par 30). Doane suggests that in one embodiment, all of the batteries are 12v (par 31). This indicates that the batteries can also be different voltages. Meanwhile, paragraph 30 more explicitly discusses that different sources would be monitored to have different voltages (thereby affecting the priority of charging/discharging). Thus, the Doane batteries would be expected to have a different voltage at least one during the lifetime of the system. The claim only broadly recites the batteries “differ in voltage” and makes no mention of their capacity or rating. The claim does not recite that the maximum voltage of the batteries are different – just that, at some point during use, their voltages differ.
With respect to claim 11, Doane discloses the power controller is mounted in a delivery vehicle or trailer therefore, a transport vehicle or trailer thereof, or a work vehicle or trailer thereof.
With respect to claims 12-13 and 17, Doane discloses the apparatus necessary to “provide” the vehicle, its batteries and DC sources, as discussed above in the art rejection of claims 1-2 and 11, respectively.
With respect to claims 20-21, Doane discloses the system for power control, as discussed above in the art rejection of claim 1.
Claim Rejections - 35 USC § 103
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 6-8 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Doane in view of Richardson (US 2018/0037178).
With respect to claims 6-7 and 14-15, Doane discloses the first and second batteries, but does not expressly disclose their type. Richardson discloses that vehicle batteries are known to be selected from one or more of a GEL battery, a AGM battery, a flooded battery bank or a combination (i.e. different types, as in claim 7) (par 10).
Doane and Richardson are analogous to the claimed invention because they are from the same field of endeavor, namely vehicle batteries. At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to select the Doane batteries to be one or more of the types listed by Richardson. The motivation for doing so would have been to fill in the gaps missing in the Doane disclosure. Doane discloses that batteries are necessary, but does not explicitly disclose the types. Thus, the skilled artisan would look to the prior art to understand which battery types are known and accepted in vehicular use.
While the claim uses the plural “banks”, it is clear from the Applicants’ figures that each bank is a singular battery (50, 60).
With respect to claims 8 and 16, Doane does not expressly disclose a communication bus or protocol. Richardson discloses its vehicle uses CANBUS (par 67, 158).
Doane and Richardson are analogous to the claimed invention because they are from the same field of endeavor, namely vehicles with alternators. At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to modify Doane to include the communication bus, as taught by Richardson. The motivation for doing so would have been to control the alternator to produce power (as opposed to just waiting for it to do so).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Cirillo (US 2023/0057202) in view of Johnson (US 2013/0147272).
Cirillo discloses a system for power control (fig 2-3, 5-16; par 22-66, 118-121, 145), comprising:
a combustion powered mobile vehicle (par 21, 28 – the train includes a combustion engine 6);
at least two batteries (21; par 43-45 – fig 16 shows at least two batteries, one for each car) comprising: a first (in the left car) and second (in the right car) that are electrically connected to the combustion powered mobile vehicle,
wherein at least one of said batteries facilitates ignition of an engine of the combustion powered mobile vehicle (“facilitates” is broad and does not actually recite any connection of the battery to a starter or control over a battery to discharge when starting/igniting the engine. Cirillo’s batteries do not prohibit engine ignition and thus “facilitate” this unclaimed event);
DC power sources connected to the combustion powered mobile vehicle, comprising:
a first power source comprising a motor driven alternator (3b and 3c;
a second power source (catenary 2);
a power controller (item 20 – fig 2 incorrectly labels it as “10” – and the controller device of fig 3) electrically connected to the combustion powered mobile vehicle and configured to control power transmission of the system when the vehicle is in motion (the motor and engine are there specifically to accelerate and propel the vehicle), the power controller comprising:
a circuit board (electronics of figs 2 and 16) disposed within a housing (42 and/or 44), the housing positioned within said vehicle, said circuit board configured to:
modify power transmission between two or more of the first power source, second power source, or at least one battery (see figs 5-15) based on:
monitoring a condition of one or more of the power sources (par 55, 136); or
monitoring a condition of at least one battery (par 43, 50, 55).
at least two ports (a “port” is represented in Cirillo by where the DC bus branches off towards any of the connection switches K1-K5) that facilitate (broad and does not further narrow the structure of the port, a discussed above) power transmission between the circuit board, the batteries and the power sources (see fig 5-16), wherein the ports facilitate one or more of simultaneous charge or discharge of the batteries (these events are not prohibited, so they are “facilitated” by “ports”).
Cirillo discloses a combustion powered vehicle with at least two batteries and two DC power sources. Cirillo discloses a DC bus (the “circuit board”) with ports that “facilitate” the modification and transfer of power between all of the components (see fig 5-15), as needed (i.e. “based on” unclaimed condition monitoring). Cirillo discloses the vehicle contains DC power sources, but does not expressly disclose it comprises a renewable energy source as the second power source. Johnson discloses a system for power control (fig 1-2; par 11-83), comprising:
a second DC power source comprising one or more of solar (112a), hydro, or wind (112b) power;
a first and second battery (112e – the sources can be duplicated, see par 30, so Johnson is interpreted as using two batteries); and
a power controller (102) comprising a circuit board (194) and ports (106n) to facilitate the modification and transfer of power between the sources and batteries and to facilitate the simultaneous charge/discharge of the batteries (see analysis of “facilitate”, above).
Johnson discloses a power controller with “self-adjusting” ports. In this case, Johnson’s ports actually “facilitate” power transfer. But the claimed ports are passive and are not disclosed as having any smart/adaptive structure or functionality.
Cirillo and Johnson are analogous to the claimed invention because they are from the same field of endeavor, namely power controllers for modifying power transmission from and between a plurality of sources and batteries through a DC bus. At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to modify Cirillo to include a renewable energy source, as taught by Johnson. The motivation for doing so would have been to add to the reliability of producing power on the Cirillo bus (to proper the train) or to reduce the need to rely on fossil fuels.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references list in the enclosed PTO-892 disclose vehicles with direct/starter and “indirect” batteries (for loads in the trailer) and with renewable DC power sources (to compliment the vehicle alternator and/or to charge the indirect battery). Most notable is Pierce (US 10,710,525), which discloses a tractor trailer with a first DC source (alternator 132) and directly connected battery (130-99) and a trailer with a second DC source (140) and indirectly connected battery (120-99). Figure 2 shows how power is transferred/shared between the two parts. The reference does not necessarily show a control device in the path with “ports”, but: a) one can obviously be added to give it more controllability; and b) the claim only broadly refers to what the ports facilitate without defining any structure to make it so.
Applicants' 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.
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/ADI AMRANY/ Primary Examiner, Art Unit 2836