REISSUE NON-FINAL OFFICE ACTION
This is a Non-Final Office Action in Reissue Application 18/380,468 (the ‘468 application), which is a continuation of 17/382,892 (“the ‘892 application”), now RE49,777, for U.S. Patent No. 11,001,263 (“the ‘263 Patent”).
Claims 1-14 have been cancelled. Claims 15-18 have been added. Claims 15-18 are currently pending.
Reissue Declaration & Reason for Reissue
The Declaration By The Inventors (“Reissue Dec”) filed October 16, 2023, states,
“At least one error being relied on as the basis for the reissue is that the patented claims failed to recite the scope that (i) the state of the vehicle includes a speed of the vehicle in the braking force control device according to claim 11, and (ii) the state of the vehicle includes a speed of the vehicle in the braking force control method according to claim 14. The combination of this claim scope of new claims 13 and 14 was not previously recited in the patent even though we, as the joint inventors, had the right to claim this scope of features in the patent.”
Defective Reissue Declaration – 35 USC 251 Rejection
The Reissue Dec filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175and MPEP § 1414. The Reissue Dec is a copy of the reissue declaration filed in the parent reissue. The error statement refers to canceled claims and does not apply to new claims 15-18. A new reissue declaration with an appropriate error statement is required.
Claims 15-18 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this reexamination are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th (“§ 112 ¶ 6”) paragraph, is invoked.
As explained in MPEP § 2181 I., claim limitations that meet the following three-prong test will be interpreted under § 112 ¶ 6:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance § 112 ¶ 6. The presumption that the claim limitation is interpreted under § 112 ¶ 6, is rebutted when the claim limitation recites sufficient structure (as defined by the MPEP and the Federal Circuit) to perform each of the identified claimed functions.
Absence of the word “means” in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance § 112 ¶ 6. The presumption that the claim limitation is not interpreted under § 112 ¶ 6, is rebutted when the claim limitation recites function without reciting sufficient structure (as defined by the MPEP and the Federal Circuit) to perform each of the identified claimed functions.
Claim limitations in this reexamination that use the word “means” are being interpreted under § 112 ¶ 6, except as otherwise indicated in an Office action. Conversely, claim limitations in this reexamination that do not use the word “means” are not being interpreted under § 112 ¶ 6, except as otherwise indicated in an Office action.
This reissue includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under § 112 ¶ 6, because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure (as defined by the MPEP and the Federal Circuit) to perform each of the identified claimed functions.
Such claim limitations are:
Functional Phrase # (“FP#”)
Claim
No.
Functional Phrases that Invoke
§ 112 ¶ 6
Corresponding Structure in the ‘263 Patent
1
15
calculation unit configured to calculate a driving/braking request when a plurality of longitudinal accelerations is received from a driving assistance system
It is unclear where the corresponding structure is in the specification.
2
15
distribution unit configured to distribute the driving/braking request to a powertrain system including a powertrain actuator and a brake system including a brake actuator, wherein the distribution unit distributes a first braking force to a first actuator with higher priority between the powertrain actuator and the brake actuator, and distributes a second braking force smaller than the first braking force to a second actuator with lower
It is unclear where the corresponding structure is in the specification.
3
16
wherein the distribution unit determines the powertrain actuator and brake actuator in order of a predetermined priority
It is unclear where the corresponding structure is in the specification.
4
17
distribution unit determines the predetermined priority on the basis of at least one of certainty of operation, the generable braking force, control accuracy, stability to disturbance, influence on fuel economy, and durability, of the powertrain actuator and the brake actuator
It is unclear where the corresponding structure is in the specification.
5
18
distribution unit sets the order of the predetermined priority as descending order of the powertrain actuator and the brake actuator
It is unclear where the corresponding structure is in the specification.
Table 1: Identification of Corresponding Structure
Because these claim limitations are interpreted under § 112 ¶ 6, they are “construed to cover the corresponding structure … described in the specification and equivalents thereof.” § 112 ¶ 6.
Claim Rejections - 35 USC § 112
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 15-18 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 claim(s) contains 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
A powertrain system and a powertrain actuator are not disclosed in the specification. While the disclosure gives examples of various actuators like brake, alternator, engine, and transmission (the ‘263 Patent at 2:63-65 and 4:32-57), the disclosure fails to discuss a powertrain system or a powertrain actuator with respect to how they are recited in the claims.
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.
Claim limitations FP1 through FP5 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the function.
With regard to FP1, “longitudinal accelerations” is not in the specification. Additionally, it is unclear how a “driving/braking request” is “calculated.” The specification discusses calculating a braking force (the ‘263 Patent at 4:57-63); but does not disclose calculating a braking request or a driving request. Thus, it is not clear what the corresponding structure is for calculating a driving/braking request when a plurality of longitudinal accelerations is received from a driving assistance system.
With regard to FP2 through FP5, while the disclosure gives examples of various actuators like brake, alternator, engine, and transmission (the ‘263 Patent at 4:32-57), the disclosure fails to discuss a powertrain system or a powertrain actuator. Thus, it is not clear what the corresponding structure is for the claimed functions relating to a powertrain system or a powertrain actuator.
Furthermore, Examiner notes that applicant has provided the same citation for the showing of support for each of the new claims 15-18. However, the citations don’t show where the corresponding structure is for the different claimed functions discussed above.
Therefore, claims 15-18 are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 15-18 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.
With regard to claim 15, it is unclear what is meant by “driving/braking” request. Are “driving/braking” meant to be synonyms or alternatives? It seems that a “driving request” would be broader than a “braking request” as “driving” would encompass more modes related to driving: accelerating, braking, coasting, etc. Should the limitation mean all modes of driving, it does not appear that the specification has support for requests for all modes of driving.
Also, it is unclear how a “driving/braking request” is “calculated.” The specification discusses calculating a braking force (the ‘263 Patent at 4:57-63); but it is unclear how a braking request is calculated.
With regard to claim 16, it is unclear what is meant by the distribution unit “determines the powertrain actuator and the brake actuator in order of a predetermined priority.” Determines what about the two actuators? Is one selected over the other based on priority?
Claims 17-18 are rejected because they inherit the deficiencies identified for claim 16 and do not correct said deficiencies.
Information Disclosure Statement
Prior art is evaluated in accordance with the policy of MPEP 2256, which states:
“Where patents, publications, and other such items of information are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given to such information will be normally limited by the degree to which the party filing the information citation has explained the content and relevance of the information. The initials of the examiner placed adjacent to the citations on the form PTO /SB /08A and 08B or its equivalent, without an indication to the contrary in the record, do not signify that the information has been considered by the examiner any further than to the extent noted above.”
Notification of Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘263 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Future Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to C. Michelle Tarae whose telephone number is (571)272-6727. The Examiner can normally be reached on M-F 8:00-4:30.
If attempts to reach the Examiner by telephone unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, can be reached on 571-272-6779.
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.
Signed:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
Conferees:
/RACHNA S DESAI/Reexamination Specialist, Art Unit 3992 /ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992