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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/8/26 has been entered.
Response to Amendment
The reply filed on 3/8/26 includes amendments to the figure drawings which are not approved since they do not address the issues described in the Non-Final Office Action dated 8/2/23 or the Notice to File Corrected Application Papers dated 2/10/25. Figures 3 and 5-7 are not acceptable.
Response to Arguments
Applicant's arguments filed 3/8/26 have been fully considered but they are not persuasive.
In reference to the comments with respect to the statutory type double patenting rejection of claim 1, claim 9 of Patent No. 11,770,091 is directed to a motor controlling process through a digital power inverter which includes the same algorithm (series of method steps) recited in the body of pending claim 1. The preamble of patented claim 9 is not given any patentable weight since it describes a plurality of structure components which are part of the body of the claim plus the claim is directed to a control method. If we compare the body of patented claim 9 to the body of pending claim 1, then we can see the exact limitations being claimed. The amendment to pending claim 1, submitted with the RCE filed on 3/8/26, does not add anything new; all the added information is inherent in the original components of the claim. Pending claim 1 is directed to a motor control process for a motor in a motor vehicle, the output of the three-phase power inverter which is an AC power output is inherently used to drive the motor in the vehicle as stated in section (a) of the claim; section (b) starts by describing that the variable resistances of the power wires are inputted into the CPU to determine a failure state of the accelerator so adding that the CPU determines whether the accelerator line is abnormal based on the variables resistances is repeating the same information given at the beginning of the section; and section (c) starts by describing that the variable resistances are inputted into the CPU to determine a failure state of the brake so adding that the CPU determines whether the brake line is abnormal based on the variables resistances is repeating the same information given at the beginning of section (c). The statutory double patenting rejection will be maintained. Applicant needs to amend claim 1 to recite new “steps” for controlling the motor.
Claims 2 to 20 only repeat the structural components recited in either the preamble of claim 9 or the structural components of claims 1-8. Why is applicant stating the claims in the instant application are directed to a method of operation, where claims 2-20 only recite structural components without further limiting the “method” or algorithm of claim 1. Claims 2-20 will be rejected under non-statutory double patenting.
Drawings
The drawings are objected to because they do not correct the issues described in the Non-Final Office Action dated 8/2/23 or the Notice to File Corrected Application Papers dated 2/10/25. Figures 3 and 5-7 are not acceptable.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Double Patenting
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.
Claim 1 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 9 of prior U.S. Patent No. 11,770,091. This is a statutory double patenting rejection.
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 2-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,770,091. Although the claims at issue are not identical, they are not patentably distinct from each other because they are a simple variation of the already patented claims. Applicant has only recited the structural components of claims 1-8 or the preamble of claim 9 in claims 2-20 without claiming anything new or improved.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The documents cited in the attached PTO-892 described other motor control systems or method of operation with similar components as the ones recited in the pending claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rina I Duda whose telephone number is (571)272-2062. The examiner can normally be reached M-F 8-4 PM.
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, Eduardo Colon-Santana can be reached at (571) 272-2060. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RINA I DUDA/Primary Examiner, Art Unit 2846