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
Applicant's arguments filed 19 November 2025 have been fully considered but they are persuasive only in part.
First, applicant argues an “enablement” rejection under 35 U.S.C. 112(a), and indicates that the examiner must perform an analysis of all the “Wands factors”.
While the examiner generally agrees with this assertion in the context of enablement rejections, the examiner merely notes that he made no enablement rejection in the previous Office action. See e.g., paragraphs 4 to 10 of the Office action dated 27 August 2025. The examiner’s rejection involved the description requirement of 35 U.S.C. 112, not enablement. See e.g., MPEP 2161, I. and II. Accordingly, applicant’s arguments are not persuasive in this respect, and the rejection is repeated in modified form to also address the claim amendments..
Second, applicant’s arguments regarding the rejections under 35 U.S.C. 112(b) are, in combination with the amendments, persuasive in part.
For example, the amendments to claims 1 to 3, 8 to 11, and 16 overcome the previous rejections under 35 U.S.C. 112(b). However, the amendments to claims 1, 7, 9, and 15 raise new issues under 35 U.S.C. 112(b), and the amendments to claims 4 and 12 do not cure the previously raised issues but merely change them, as detailed below. In this respect, “lower vehicle speeds” is still indefinite e.g., as being facially subjective in the claim context, in that the examiner cannot tell objectively what would or would not be considered “lower vehicle speeds”, e.g., from the teachings of the specification.
Third, the examiner tentatively agrees that the examiner’s applied references do not reveal or render obvious the now claimed (i.e., in the amended claims) invention under 35 U.S.C. 103. Accordingly the previous rejection is withdrawn. However, because the claims are indefinite and their interpretation would require considerable speculation about the meaning of terms employed in a claim and assumptions as to the scope of the claims, the examiner chooses not to make a (new) potentially improper prior art rejection at this time. See In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962) and MPEP 2173.06, II.
Accordingly, applicant’s arguments are only persuasive in part.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1)1 and MPEP § 608.01(o)2. Correction of the following is required: antecedent basis should be provided in the specification for the following new claim terminology, without adding new matter:
● “a rotational position of an output shaft of the electric motor”; and
● “the driveline model is a discrete state-space model having (a) system states including (i) differences between the rotational position of the electric motor and the speed of the electric motor and (ii) differences between the rotational position of the driveline shaft and a vehicle speed of the electrified vehicle”; and
● “where
θ
¨
m
is a derivative of the speed
θ
˙
m
of the first electric motor, which is a derivative of the rotational position
θ
M
of the output shaft of the first electric motor,
θ
¨
v
is a derivative of the vehicle speed
θ
˙
v
, which is a derivative of the rotational position
θ
v
of the driveline shaft”.
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.
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.
Claims 1 to 5, 7 to 13, 15, and 16 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.
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Regarding claims 1 and 9, applicant has apparently not previously described, in sufficient detail, by what algorithm(s)3, or by what steps or procedure4, he obtained the driveline model as a discrete state-space model having “system states including (i) differences between the rotational position of the electric motor and the speed of the electric motor and (ii) differences between the rotational position of the driveline shaft and a vehicle speed of the electrified vehicle”. No such system states and/or differences are apparently described in sufficient detail, in the specification, and no algorithm(s) or steps/procedure for obtaining such a driveline model is apparently described, in sufficient detail, in the specification. Accordingly, the examiner believes that applicant has not demonstrated, to those skilled in the art, possession of the claimed invention, but has only now described a “desired result”.
In this respect, the specification perhaps unclearly (e.g., with improper grammar) describes at published paragraph [0020] that, “the system states are the differences between motor position and vehicle position, the differences between motor speed and vehicle speed”. But this does not apparently describe differences between a position and speed of the electric motor or differences between the driveline shaft position and the vehicle speed. Accordingly, the examiner believes that applicant has not demonstrated, to those skilled in the art, possession of the claimed invention, but has only now described a “desired result”.
Regarding claims 1 and 9, applicant has apparently not described, in sufficient detail, by what algorithm(s), or by what steps or procedure, he adjusted a motor torque command for the electric motor based on the determined regenerative torque request, the model, and the plurality of parameters. No algorithm(s) for adjusting any motor torque command based on the determined regenerative torque request, the model, and the plurality of parameters is apparently described in sufficient detail. Accordingly, the examiner believes that applicant has not demonstrated, to those skilled in the art, possession of the claimed invention, but has only described a “desired result”.
In this respect, applicant indicates at published paragraph [0023] of the specification:
“At 412, the controller 124 employs the LQR controller to adjust the electric motor torque command and remove driveline oscillations.”
In addition, paragraph [0004] which repeats original claim language indicates:
“In some implementations, the LQR has a performance index that uses a weighting of a time derivative of electric motor torque and a difference between the regenerative torque request and actual regenerative torque. In some implementations, the controller is configured to extend operation of regenerative braking to lower vehicle speeds to thereby improve the vehicle regenerative braking performance and/or vehicle drivability.”
However, while these passages may indicate what the LQR is intended to do (e.g., “what it does”, and not what it is5) as a desired result, they do not apparently describe, in sufficient detail, and/or explain, how the claimed function (of adjusting the motor torque command in the manner indicated) was in fact achieved by applicant, based on the regenerative torque request, the model, and the plurality of parameters, in order to demonstrate that the applicant had possession of it. For example, in what particular way is the “model” (e.g., with the four claimed equations in the dependent claims) used/utilized, in conjunction with both the “regenerative torque request” and the “plurality of parameters”, in order to adjust the motor torque command? Accordingly, the examiner believes that applicant has not demonstrated, to those skilled in the art, possession of full scope6 of the claimed invention, but has only described a “desired result”.
Regarding claims 2 and 10, applicant has apparently not described, in sufficient detail, by what algorithm(s), or by what steps or procedure, he configured the controller to utilize a linear-quadratic regulator (LQR) with integral action to asymptotically track and compensate the regenerative braking torque request. No sufficient details are described regarding the manner in which the controller utilizes an LQR that somehow asymptotically tracks and compensates the regenerative [braking] torque request, and/or to somehow adjust (if it does) the motor torque command of the independent claims. For example, no sufficient details regarding tracking or compensation of the regenerative torque request utilizing LQR or of the adjustment of the motor torque command are apparently described. Accordingly, the examiner believes that applicant has not demonstrated, to those skilled in the art, possession of the claimed invention, but has only described a “desired result”.
Regarding claims 4 and 12, applicant has apparently not described, in sufficient detail, by what algorithm(s), or by what steps or procedure, he extended operation of the regenerative braking to lower vehicle speeds. No sufficient details regarding the manner in which regenerative braking operation was extended is apparently described. Accordingly, the examiner believes that applicant has not demonstrated, to those skilled in the art, possession of the claimed invention, but has only described a “desired result”.
In this respect, see e.g., MPEP 2161.01, I., which indicates, “[O]riginal claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.”
See also e.g., MPEP 2163, I., A. which indicates, “However, as discussed in subsection I, supra, issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the inventor had possession of the claimed invention at the time of filing. . . . An invention described solely in terms of a method of making and/or its function may lack written descriptive support where there is no described or art-recognized correlation between the disclosed function and the structure(s) responsible for the function.”
See also MPEP 2163.03, V. which indicates, “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).”
Claims 1 to 5, 7 to 13, 15, and 16 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.
In claim 1, lines 17ff, and in claim 9, lines 17ff, “system states including (i) differences between the rotational position of the electric motor and the speed of the electric motor and (ii) differences between the rotational position of the driveline shaft and a vehicle speed of the electrified vehicle” is indefinite and not reasonably certain from the teachings of the specification which apparently neither mentions nor clarifies any such/particular “system states”. In this respect, the specification perhaps unclearly (e.g., with improper grammar) apparently indicates at published paragraph [0020], “the system states are the differences between motor position and vehicle position, the differences between motor speed and vehicle speed”, and not differences between a position and speed of the electric motor or differences between the driveline shaft position and the vehicle speed. Moreover, it is unclear how “differences” might be defined and/or quantified between measurable entities (as in claims 1 and 9) having different dimensions (e.g., how might a difference between a position, say an angular position of 30°, and a speed, say 120 rpm, be defined and/or quantified so as to not be indefinite/indeterminate or facially subjective?)
In claim 4, lines 3ff, and in claim 12, lines 3ff, “extend operation . . . compared to control of the electric motor based on the motor torque command” is indefinite and facially subjective with no objective standard provided in the specification for measuring the scope of the term (MPEP 2173.05(b), IV.) and with no such comparison being clearly disclosed/described in the specification.
In claim 4, line 3, and in claim 12, line 3, “lower vehicle speeds” is indefinite and facially subjective (e.g., lower than what clear baseline?) with no objective standard provided in the specification for measuring the scope of the term (MPEP 2173.05(b), IV.)
In claim 7, line 3, and in claim 15, line 3, “the first electric motor” apparently has insufficient antecedent basis and is unclear.
In claim 7, line 3, and in claim 15, line 3, “the transmission” apparently has insufficient antecedent basis and is unclear.
Claim(s) depending from claims expressly noted above are also rejected under 35 U.S.C. 112 by/for reason of their dependency from a noted claim that is rejected under 35 U.S.C. 112, for the reasons given.
Conclusion
Applicant's 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David A Testardi whose telephone number is (571)270-3528. The examiner can normally be reached Monday, Tuesday, Thursday, 8:30am - 5:30pm E.T., and Friday, 8:30 am - 12:30 pm E.T.
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, Rachid Bendidi can be reached at (571) 272-4896. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID A TESTARDI/Primary Examiner, Art Unit 3664
1 Quoting the rule section, “(d)(1) The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. (See § 1.58(a).)”
2 Quoting the MPEP: “New claims, including claims first presented after the application filing date where no claims were submitted on filing, and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification. See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103. Note that examiners should ensure that the terms and phrases used in claims presented late in prosecution of the application (including claims amended via an examiner’s amendment) find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description, see 37 CFR 1.75(d)(1). If the examiner determines that the claims presented late in prosecution do not comply with 37 CFR 1.75(d)(1), applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the terms appearing in the claims provided no new matter is introduced.”
3 See the 2019 35 U.S.C. 112 Compliance Federal Register Notice (Federal Register, Vol. 84, No. 4, Monday, January 7, 2019, pages 57 to 63). See also http://ptoweb.uspto.gov/patents/exTrain/documents/2019-112-guidance-initiative.pptx . Quoting the FR Notice at pages 61 and 62, "The Federal Circuit emphasized that ‘‘[t]he written description requirement is not met if the specification merely describes a ‘desired result.’ ’’ Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at 1349). . . . When examining computer-implemented, software-related claims, examiners should determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as 'a finite sequence of steps for solving a logical or mathematical problem or performing a task.' Microsoft Computer Dictionary (5th ed., 2002). Applicant may 'express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.' Finisar, 523 F.3d at 1340 (internal citation omitted). It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682–83. If the specification does not provide a disclosure of the computer and algorithm(s) in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result, a rejection under 35 U.S.C. 112(a) for lack of written description must be made. See MPEP § 2161.01, subsection I."
4 See http://www.uspto.gov/sites/default/files/documents/fnctnllnggcmptr.pptx at page 29.
5 See MPEP 2114, II., “[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”.
6 See MPEP 2161.01, I. and LizardTech Inc. v. Earth Resource Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) cited therein ("Whether the flaw in the specification is regarded as a failure to demonstrate that the applicant possessed the full scope of the invention recited in [the claim] or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under [§ 112(a)]").