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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the MOSFET of Claims 10-12 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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
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 § 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 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. 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12640554. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter is essentially the same with the exception that the patent contains extra limitations.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19653754 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter is essentially the same with the exception that the copending patent application contains extra limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102/103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5, 6, 8-16, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Varigonda et al (USPGPN 20220190629; hereinafter Vari)
Independent Claim 1, Vari discloses/teaches a system for providing a battery protection circuit during an engine (¶’s [25-29]) starting event on a vessel (vessel is defined as “a container for holding something” according to https://www.merriam-webster.com/dictionary/vessel, where ¶[29] describes the system as a commercial vehicle, which one of ordinary skill in the art a commercial vehicle inherently means something is held by it;
furthermore, noted that this limitation is an intended use, where a commercial vehicle with a holding space is certainly able to use a starting system with an engine [In response to applicant's argument that “for providing a battery protection circuit during an engine starting event on a vessel”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim], and further commercial vehicles include commercial waterborne vehicles,
additionally, this intended use is only present in the preamble: [When reading the preamble in the context of the entire claim, the recitation “for providing a battery protection circuit during an engine starting event on a vessel” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02],
see Figs. [5, 6, esp. 5]) comprising:
a first relay (120, 132, esp. 120), wherein the first relay electrically connects between:
a first battery (104), and
a starter motor (110) and a set of on-board accessories (loads shown in Fig. 5, ¶’s [22, 26]), the starter motor mechanically associated with an engine (¶’s [25-29]);
a battery protection circuit, wherein the battery protection circuit comprises a second relay (116) and a current-limiting circuit in parallel (118), and electrically connects between:
a second battery (102), and
the starter motor and the set of on-board accessories (Fig. 5); and
a controller (114), wherein upon receiving a signal to start the engine, the controller is configured to send a first control signal to the first relay and a second control signal to the second relay (¶[28: “Upon the next engine start-up, SCM 114 may connect UC 104 to the DC bus (by closing pre-charge switch 132 and then main contactor 120) before connecting battery 102 to the DC bus or at the same time as connecting battery 102.”], ¶’s [23, 26-28, esp. 27, 28]).
While Vari demonstrates loads, Vari does not explicitly demonstrate them being on-board. It would have been obvious to provide power to loads on-board the vehicle to provide improved safety and comfort. Comfort including HVAC, heated seating, power outlets for charging personal devices, etc. Safety including cameras, safety lights, etc. Where one of ordinary skill in the art before the effective filing date of the claimed invention understands it is common for on-board electric power supplies of hybrid electric vehicles as disclosed by Vari like the battery/capacitor of Fig. 5 to provide power to these various loads.
Independent Claim 14, Vari discloses/teaches a system for starting an engine (¶’s [25-29]) starting event on a vessel (vessel is defined as “a container for holding something” according to https://www.merriam-webster.com/dictionary/vessel, where ¶[29] describes the system as a commercial vehicle, which one of ordinary skill in the art a commercial vehicle inherently means something is held by it;
furthermore, noted that this limitation is an intended use, where a commercial vehicle with a holding space is certainly able to use a starting system with an engine [In response to applicant's argument that “ for starting an engine in a vessel”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim], and further commercial vehicles include commercial waterborne vehicles,
additionally, this intended use is only present in the preamble: [When reading the preamble in the context of the entire claim, the recitation “ for starting an engine in a vessel” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02],
see Figs. [5, 6, esp. 5]) the system comprising:
a first battery (104);
a second battery (102);
a first relay (120, 132, esp. 120), wherein the first relay electrically connects between:
the first battery, and
a starter motor (110) and a set of on-board accessories (loads shown in Fig. 5, ¶’s [22, 26]), the starter motor mechanically associated with an engine (¶’s [25-29]);
a battery protection circuit, wherein the battery protection circuit comprises a second relay (116) and a current-limiting circuit in parallel (118), and electrically connects between:
the second battery, and the starter motor and the set of on-board accessories (Fig. 5); and
a controller (114), wherein upon receiving a signal to start the engine, the controller is configured to send a first control signal to the first relay and a second control signal to the second relay (¶[28: “Upon the next engine start-up, SCM 114 may connect UC 104 to the DC bus (by closing pre-charge switch 132 and then main contactor 120) before connecting battery 102 to the DC bus or at the same time as connecting battery 102.”], ¶’s [23, 26-28, esp. 27, 28]).
While Vari demonstrates loads, Vari does not explicitly demonstrate them being on-board. It would have been obvious to provide power to loads on-board the vehicle to provide improved safety and comfort. Comfort including HVAC, heated seating, power outlets for charging personal devices, etc. Safety including cameras, safety lights, etc. Where one of ordinary skill in the art before the effective filing date of the claimed invention understands it is common for on-board electric power supplies of hybrid electric vehicles as disclosed by Vari like the battery/capacitor of Fig. 5 to provide power to these various loads.
Independent Claim 20, Vari discloses/teaches a method of manufacturing a protection circuit (see Fig. 5), the method comprising:
setting a first relay (120, 132, esp. 120) to electrically connect between:
a first battery (104), and
a starter motor (110) and a set of on-board accessories (loads shown in Fig. 5, ¶’s [22, 26]), the starter motor mechanically associated with an engine (¶’s [25-29]);
setting a battery protection circuit (118, 116) to electrically connect between:
a second battery, and the starter motor and the set of on-board accessories (Fig. 5),
wherein the battery protection circuit comprises a second relay (116) and a current-limiting circuit in parallel (118); and
setting a controller (114) to electrically connect with the first relay and the second relay, wherein upon receiving a signal to start the engine, the controller is configured to send a first control signal to the first relay and a second control signal to the second relay (¶[28: “Upon the next engine start-up, SCM 114 may connect UC 104 to the DC bus (by closing pre-charge switch 132 and then main contactor 120) before connecting battery 102 to the DC bus or at the same time as connecting battery 102.”], ¶’s [23, 26-28, esp. 27, 28]).
While Vari demonstrates loads, Vari does not explicitly demonstrate them being on-board. It would have been obvious to provide power to loads on-board the vehicle to provide improved safety and comfort. Comfort including HVAC, heated seating, power outlets for charging personal devices, etc. Safety including cameras, safety lights, etc. Where one of ordinary skill in the art before the effective filing date of the claimed invention understands it is common for on-board electric power supplies of hybrid electric vehicles as disclosed by Vari like the battery/capacitor of Fig. 5 to provide power to these various loads.
Dependent Claims 2 and 15, Vari discloses the first battery comprises a super-capacitor battery (¶’s [06, 07, 22, 24]).
Dependent Claims 3 and 16, Vari discloses the second battery comprises one of a lead-acid battery, an enhanced flooded battery (EFB), an absorbent glass mat (AGM) battery, or a lithium battery (¶’s [06, 28]).
Dependent Claims 5 and 18, Vari discloses upon receiving the first control signal from the controller, the first relay is configured to switch from an open state to a closed state, so that the first battery supplies electric power to the starter motor to start the engine (¶[28: “SCM 114 to isolate UC 104 by opening switch 132 and main contactor 120 at engine shut down, thereby maintaining the operating voltage of UC 104 for a further extended period of time. Upon the next engine start-up, SCM 114 may connect UC 104 to the DC bus [by closing pre-charge switch 132 and then main contactor 120]”).
Dependent Claims 6 and 19, Vari discloses the first relay comprises an input terminal, an output terminal, and a control terminal;
the input terminal of the first relay electrically connects to a positive terminal of the first battery; the output terminal of the first relay electrically connects to positive terminals of the starter motor and the set of on-board accessories; and
the control terminal of the first relay electrically connects to the controller (Fig. 5).
Dependent Claim 8, Vari discloses/teaches before receiving the second control signal from the controller, the second relay is in a closed state, so that the second battery supplies electric power to the set of on-board accessories via the second relay; and
upon receiving the second control signal from the controller, the second relay is configured to switch from the closed state to an open state, so that the second battery supplies electric power to the set of on-board accessories via the current-limiting circuit (noted that this limitation is an apparatus/system claim, and thus these method limitations are simply able to/configured to/intended use limitations, and as Vari is inherently/obviously capable of performing these actions, and the limitations do not impart a structural difference, these limitations are met;
noted that ¶[28] states that 116 may be closed for safety, i.e. if the battery level gets too low, and only explicitly says 120 is opened at engine shut-off).
Dependent Claim 9, Vari discloses the second relay comprises an input terminal, an output terminal, and a control terminal;
the input terminal of the second relay electrically connects to a positive terminal of the second battery;
the output terminal of the second relay electrically connects to positive terminals of the starter motor and the set of on-board accessories; and
the control terminal of the second relay electrically connects to the controller (Fig. 5).
Dependent Claim 10, Vari discloses the current-limiting circuit comprises a resistor (124) or a pulse width modulation metal-oxide-semiconductor field-effect transistor (MOSFET)
Dependent Claim 11, Vari discloses a resistance value of the resistor or the PWM MOSFET is determined based on a nominal voltage and a maximum discharge current of the second battery (as is known to ordinary skill in the art, resistance is based upon the relationship between voltage and current, therefore, the resistance value is certainly based upon the value of the current [serial in that it flows through both] and voltage [voltage impacts the resistance]).
Dependent Claim 12, Vari teaches the resistor or the PWM MOSFET has a resistance value between 0.01 Ohm and 25 Ohm, inclusive (this value is a simple design choice well within the skill of one of ordinary skill in the art, where it is known that the lower the resistance, the less energy is wasted and less heat is generated, while a lower resistance value would also result in lower costs over a higher resistance value).
Dependent Claim 13, Vari discloses the first control signal and the second control signal is a same signal (¶[28: “SCM 114 to isolate UC 104 by opening switch 132 and main contactor 120 at engine shut down, thereby maintaining the operating voltage of UC 104 for a further extended period of time. Upon the next engine start-up, SCM 114 may connect UC 104 to the DC bus [by closing pre-charge switch 132 and then main contactor 120] before connecting battery 102 to the DC bus or at the same time as connecting battery 102 ”
in light of ¶[27: “engine is shut down… Battery 102 may simply be disconnected for safety by BMS 112 or SCM 114 opening main contactor 116. When engine start-up is commanded, BMS 112 or SCM 114 may sense the voltage of UC 104 using sensor 138 or otherwise and if the sensed voltage is above a pre-determined threshold voltage (e.g., 43 volts), BMS 112 or SCM 114 may close main contactor 116…”]).
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 (i.e., changing from AIA to pre-AIA ) 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4, 7, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Varigonda et al (USPGPN 20220190629; hereinafter Vari) in view of Sekiguchi (USPGPN 20170030316; hereinafter Seki)
Dependent Claims 4,7,&17, Vari is silent to the first relay is a normally-open relay (with respect to [wrt] Claims 4&17), and the second relay is a normally-closed relay (wrt Claim 7)
Seki teaches the first relay is a normally-open relay (SW5, SW6 for first battery 20, ¶[73]) and the second relay is a normally-closed relay (SW1A, SW1B for second battery 12, ¶[69], see at least Fig. 1). Noted that for Vari, the associated switches/relays are described as functionally open normally and potentially functionally closed normally. ¶’s [81-84] describes that by having this functionality, it can ensure that desired loads [e.g. on-board accessories 14/18] can continue be provided with power from 12 while other power sources [e.g. 20, 16] can not be discharged, which helps to prevent the deterioration of these other power sources, analogous to Vari. One of ordinary skill in the art further understands that normally open and normally closed relays offer improved simplicity advantages in that a signal is only required to turn the switch to a single type of change, rather than a signal to change to both state.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Vari with Seki to provide improved reliability [of non-main battery supply] and simplicity.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Closest prior art with respect to the super capacitors and relays on a starter:
US-20110224890-A1 OR US-20120062028-A1 OR US-20120193913-A1 OR US-20150239411-A1 OR US-20150258881-A1 OR US-20170008469-A1 OR US-20160138550-A1 OR US-20170030316-A1 OR US-20200127487-A1 OR US-20120139487-A1 OR US-20170016420-A1 OR US-20170016419-A1 OR US-20220190629-A1
US-8655574-B2 OR US-8646427-B2 OR US-9370992-B2 OR US-9586575-B2 OR US-9689366-B2 OR US-9856847-B2 OR US-11146097-B2 OR US-11506167-B1 OR US-12736015-B2 OR US-10202958-B2 OR US-10060985-B2 OR US-11967854-B2
FR-2935558-A1
The following prior art relates to starters with a protection/limiting circuit:
US-20030080621-A1 OR US-20120060786-A1 OR US-20020152981-A1 OR US-20110260544-A1 OR US-20070139005-A1 OR US-20220282456-A1 OR US-20090056661-A1 OR US-20090230766-A1 OR US-20170022955-A1
US-9046070-B2 OR US-6718927-B2 OR US-9431850-B2 OR US-7608940-B2 OR US-12231036-B2 OR US-7806095-B2 OR US-7847429-B2 OR US-9845783-B2
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN T TRISCHLER whose telephone number is (571)270-0651. The examiner can normally be reached 9:30A-3:30P (often working later), M-F, ET, Flexible. 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, Drew Dunn can be reached at 5712722312. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN T TRISCHLER/ Primary Examiner, Art Unit 2859
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