DETAILED ACTION
This is a response to the Amendment to Application # 18/552,260 filed on April 14, 2026 in which claims 1-3, 7, 8, 10-12, 14, 16, 19, and 20 were amended.
Continued Examination Under 37 C.F.R. § 1.114
A request for continued examination under 37 C.F.R. § 1.114, including the fee set forth in 37 C.F.R. § 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 C.F.R. § 1.114, and the fee set forth in 37 C.F.R. § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 C.F.R. § 1.114. Applicant's submission filed on April 14, 2026 has been entered.
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 .
Status of Claims
Claims 1-20 are pending, which are rejected under 35 U.S.C. §§ 112(b) and 103.
Claim Interpretation
Claims 6 and 15 includes the limitations “wherein the background data comprises data indicative of at least one of the running resistance of the trolley assisted mining truck, a wheel suspension movement of the trolley assisted mining truck, the auxiliary energy consumption, the load loaded on the trolley assisted mining truck, and environmental conditions, wherein the environmental conditions include: the humidity of the air, the humidity of the ground, the temperature of the air, the temperature of the ground, the presence of rain or snow, the roughness of the ground, and the kind of ground the trolley assisted mining truck is moving on,” or similar. (Emphasis added).
The broadest reasonable interpretation of this claim only requires the environmental conditions to include the given information when the background data comprises environmental conditions. In other words, if the background data does not comprise environmental conditions, the claimed environmental conditions are not required to be present.
Claim Interpretation—35 U.S.C. § 112(f)
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 claims in this application 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).
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. § 112(f):
(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 “step” 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 “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. § 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f), is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. § 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. § 112(f), is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. § 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. § 112(f), except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. § 112(f), because the claim limitations uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “battery charge status unit,” “transport status unit,” “first communication unit,” and “second communication unit” in claims 1, 3, 5, 7-16, 18-20.
Because these claim limitations are being interpreted under 35 U.S.C. § 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If Applicant does not intend to have these limitations interpreted under 35 U.S.C. § 112(f), Applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. § 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. § 112(f).
This application includes one or more claim limitations that use the word “means,” “step,” or a generic placeholder, but are nonetheless not being interpreted under 35 U.S.C. § 112(f) because the claim limitations recite sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitations are: “detection unit” and “control unit” in claims 1, 5, 7, 8, and 18-20.
Because these claim limitations are not being interpreted under 35 U.S.C. § 112(f), they are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If Applicant intends to have these limitations interpreted under 35 U.S.C. § 112(f), Applicant may: (1) amend the claim limitations to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitations do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Objections
Claim 9 is objected to because of the following informalities: this claim fails to include the correct status identifier as required under 37 C.F.R. § 1.121(c). This claim includes the status identifier “Currently Amended” but the examiner cannot determine any amendments nor is any markings indicating amendments present. The examiner shall treat this claim as “Previously Presented.” Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 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 1-20 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.
Regarding claims 1 and 11, these claims include the limitation “adapt at least one of at least one operational parameter and the operation schedule of the trolley assisted mining truck based on the determined schedule condition so as to obtain a sustainable state of battery charge,” or similar. (Emphasis added).
The use of “so as to,” in this instance, renders the claim subject to two mutually exclusive interpretations. First, this may be interpreted to indicate the intended use of the adaption, which would not be entitled to patentable weight. “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id; Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (emphasis added); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009). This is the interpretation supported by the plain language of the limitation. For example, the sentence “I bought this car so as to drive fast” does not require the speaker to actually drive fast, but merely indicated that its purpose is to drive fast. Thus, when combined with the examiner’s duty to apply the broadest reasonable interpretation during prosecution, this interpretation must be applied to the words of the claim. See MPEP § 2111.
Second, this limitation may be interpreted to affirmatively require the trolley to obtain a sustainable state of battery charge. This interpretation is supported by the prosecution history. (Remarks 10).
“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). See also Ex parte McAward, Appeal 2015-006416 (PTAB 2017) (precedential) (affirming the holding in Ex parte Miyazaki).
Therefore, these claims are indefinite.
In order to overcome this rejection the examiner recommends either deleting “so as to obtain a sustainable state of battery charge” in its entirety or replacing it with a limitation such as “obtaining a sustainable state of battery charge based on the adapted at least one of at least one operational parameter and the operation schedule of the trolley assisted mining truck.”
Regarding claims 1, 3, 5, 7-16, 18-20, the claim limitations “battery charge status unit” and “transport status unit” invoke 35 U.S.C. § 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
When a claim invokes 35 U.S.C. § 112(f) for a computer implemented means-plus-function claim, the specification must disclose the specific algorithm required to transform the general-purpose computing equipment into the required special purpose computer. See MPEP § 2181(II)(B).
The examiner could not find any specific structure or specific algorithm in the present specification, nor has Applicant pointed to such structure or algorithm.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. § 112(b).
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);
(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 C.F.R. § 1.75(d) and MPEP §§ 608.01(o) and 2181.
Because it appears that Applicant does not intended these limitations to be interpreted under 35 U.S.C. § 112(f), (Remarks 13-17) the examiner recommends amending these claims in a format similar to “the system comprising a control unit configured to: determine a battery charge status …”
Regarding claims 2-9 and 12-20, these claims depend from claims 1 or 11 and, therefore, inherit the rejection of those claims above.
Claim Rejections - 35 U.S.C. § 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 of this title, 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 1-7, 11-13, and 15-19 are rejected under 35 U.S.C. § 103 as being unpatentable over Bastien, US Publication 2011/0301794 (hereinafter Bastien), as cited on the Notice of References Cited dated October 10, 2025. in view of Daum et al., US Publication 2012/0316717 (hereinafter Daum), as cited on the Information Disclosure Statement dated February 27, 2025.
Regarding claim 1, Bastien discloses “a system for controlling the electrical charging and/or state of battery of a trolley assisted mining truck connectable to one or more trolley lines.” (Bastien ¶ 38 and Fig. 5). Additionally, Bastien discloses “the trolley assisted mining truck having an electric drive and a battery for delivering energy to the electric drive.” (Bastien ¶ 15). Further, Bastien discloses “the trolley assisted mining truck carrying out an operation schedule comprising predefined transport cycles” (Bastien ¶ 43) where the route of travel is an operation schedule comprising predefined transport cycles. Moreover, Bastien discloses “the system including: a detection unit comprising a battery charge status unit that determines battery charge status data indicative of the present charge status of the battery of the trolley assisted mining truck” (Bastien ¶ 32) where various electronics may determine the battery's “state of charge (SOC).” Likewise, Bastien discloses “a transport status unit that determines progress data of the progress of the trolley assisted mining truck in a present transport cycle of the operation schedule” (Bastien ¶ 43) where the location of the mining truck is the progress data as defined by claim 2. Bastien also discloses “a control unit configured to determine a schedule condition indicative of the vehicle’s current operating conditions“ (Bastien ¶¶ 21, 45) where step 618 determines whether power is available for operations or not, which may be determining if a scheduled event (i.e., a schedule) has caused the power on the catenary line to be available. (Bastien ¶ 45). Bastien discloses that the steps of Fig. 6, including step 618 are performed by a controller (i.e., a control unit, Bastien ¶ 21). In addition, Bastien discloses “adapt at least one of at least one operational parameter and the operation schedule of the trolley assisted mining truck based on the determined schedule condition so as to obtain a sustainable state of battery charge” (Bastien ¶¶ 45-46) where, when it is determined that there is a scheduled power outage (i.e., a not satisfactory schedule condition), the control unit decouples the power source from the catenary line (i.e., adapts at least one operational parameter). Finally, Bastien discloses “control operation of the trolly assisted mining truck by using the adapted at least one of at least one operational parameter and the operation schedule” (Bastien ¶¶ 43-46 and Fig. 6) by determining vehicle operation conditions, which are used as part of the trolly operation (Bastien Fig. 6), including scheduled power interruptions (i.e., the operation schedule, Bastien ¶ 43) and then coupling or decoupling the vehicle based on the previously determined operation parameter. (Bastien ¶¶45-46).
Bastien does not appear to explicitly disclose “determine a schedule condition indicative of whether the operation schedule can be met and maintained based on the battery charge status data determined by the battery charge status unit and the progress data determined by the transport status unit.”
However, Daum discloses a mine car control method including “determine a schedule condition indicative of whether the operation schedule can be met and maintained based on the battery charge status data determined by the battery charge status unit and the progress data determined by the transport status unit” (Daum ¶ 125) by determining if the estimated trip load exceeds the electric energy that is available to power the vehicle.
Bastien and Daum are analogous art because they are from the “same field of endeavor,” namely that of mine cart battery control systems.
Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Bastien and Daum before him or her to modify the operating condition determination of Bastien to include the particular operating condition determination of Daum.
The motivation/rationale for doing so would have been that of applying a known technique to a known device. See KSR Int’l Co. v. Teleflex Inc., 550 US 398, 82 USPQ2d 1385, 1396 (U.S. 2007) and MPEP § 2143(I)(D). Bastien teaches the “base device” for controlling power supplies to a mine cart. Further, Daum teaches the “known technique” for determining if a battery in a mine cart has sufficient power to perform a task that is applicable to the base device of Bastien. One of ordinary skill in the art would have recognized that applying the known technique would have yielded predictable results and resulted in an improved system.
Regarding claim 11, it merely recites a method performed by the system of claim 1. The method comprises execution of computer software modules for performing the various functions. The combination of Bastien and Daum comprises executing computer software modules for performing the same functions. Thus, claim 11 is rejected using the same rationale set forth in the above rejection for claim 1.
Regarding claim 2, the combination of Bastien and Daum discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Bastien and Daum discloses “wherein the progress data comprise data indicative of at least one of the position of the at least one trolley assisted mining truck, the distance of the at least one trolley assisted mining truck to the trolley line, the overall length of the transport cycle, the remaining length of the transport cycle in the actual transport cycle, the duration of one transport cycle, the number of transport cycles gone by the trolley assisted mining truck, the number of transport cycles planned to go by the trolley assisted mining truck in the operation schedule, the time of operation of the trolley assisted mining truck, the remaining time of operation planned for the trolley assisted mining truck in the operation schedule, the load on the at least one trolley assisted mining truck in the actual transport cycle, and the load on the at least one trolly assisted mining truck in a previous transport cycle” (Bastien ¶ 43) where the progress data comprises the location of the mining truck.
Regarding claims 3, 12, and 16, the combination of Bastien and Daum discloses the limitations contained in parent claims 1, 11, and 2 for the reasons discussed above. In addition, the combination of Bastien and Daum discloses “wherein at least one of: the at least one operational parameter of the trolley assisted mining truck adapted by the control unit is at least one of the speed of the trolley assisted mining truck when in contact with the trolley line, the electrical current charged via the trolley line in a loading cycle of the trolley assisted mining truck, and the transport cycle of the mining truck, and wherein the at least one operational parameter of the trolley assisted mining truck is adapted by the control unit for changing the electrical charging of the trolley assisted mining truck via the trolley line, and wherein the at least one operational parameter and the operation schedule of the trolley assisted mining truck is adapted by the control unit for reducing the energy consumption from the battery during a transport cycle” (Bastien ¶ 21) where the determination to charge the battery is “changing the electrical charging of the trolley assisted mining truck via the trolley line.”
Regarding claims 4 and 17, the combination of Bastien and Daum discloses the limitations contained in parent claims 1 and 2 for the reasons discussed above. In addition, the combination of Bastien and Daum discloses “wherein the operation schedule further comprises at least one of a time slot for a predetermined number of transport cycles, parameters of the transport cycle, the length of the trolley line, the path of the transport cycle, a number of transport cycles, the position of the trolley line, target operational parameter of the trolley assisted mining truck, and target charging parameters for the electrical charging of the trolley assisted mining truck via the trolley line” (Bastien ¶ 43) where the “planned route of travel” is a “parameter of the transport cycle.”
Regarding claims 5 and 18, the combination of Bastien and Daum discloses the limitations contained in parent claims 1 and 2 for the reasons discussed above. In addition, the combination of Bastien and Daum discloses “wherein the detection unit further comprises a sensor for gathering background data indicative of at least one of a status of the trolley assisted mining truck, a status of a part of the trolley assisted mining truck, and a status of the environmental conditions of the trolley assisted mining truck” (Bastien ¶ 32) where the various battery information is “a status of a part of the trolley assisted mining truck.”
Regarding claim 6, the combination of Bastien and Daum discloses the limitations contained in parent claim 5 for the reasons discussed above. In addition, the combination of Bastien and Daum discloses “wherein the background data comprises data indicative of at least one of the running resistance of the trolley assisted mining truck, a wheel suspension movement of the trolley assisted mining truck, the auxiliary energy consumption, the load loaded on the trolley assisted mining truck, and environmental conditions, wherein the environmental conditions include: the humidity of the air, the humidity of the ground, the temperature of the air, the temperature of the ground, the presence of rain or snow, the roughness of the ground, and the kind of ground the trolley assisted mining truck is moving on” (Bastien ¶¶ 23, 43) by determining the load to be carried, which is “the load loaded on the trolley assisted mining truck.”
Regarding claims 7 and 19, the combination of Bastien and Daum discloses the limitations contained in parent claims 1 and 2 for the reasons discussed above. In addition, the combination of Bastien and Daum discloses “wherein the detection unit is arranged on the trolley assisted mining truck and the control unit is arranged remotely from the trolley assisted mining truck, and wherein the system further comprises at least one of: a first communication unit for communicating the data determined by the detection unit to the control unit; and a second communication unit for communicating data of the control unit to the trolley assisted mining truck” (Daum ¶ 38) by including a communication unit that communicates between stations and the electric vehicles.
Regarding claim 13, the combination of Bastien and Daum discloses the limitations contained in parent claim 11 for the reasons discussed above. In addition, the combination of Bastien and Daum discloses “wherein determining the progress data by the transport status unit includes determining at least one of the location of the at least one trolley assisted mining truck, the distance of the at least one trolley assisted mining truck to the trolley, the overall length of the transport cycle, the remaining length of the transport cycle in the actual cycle, the duration of one transport cycle, the number of transport cycles gone by the trolley assisted mining truck, the number of transport cycles planned to go by the trolley assisted mining truck, the time of operation of the trolley assisted mining truck, the remaining time of operation planned for the trolley assisted mining truck, and the load on the trolley assisted mining truck in the transport cycle” (Bastien ¶ 43) where the progress data comprises the location of the mining truck.
Regarding claim 15, the combination of Bastien and Daum discloses the limitations contained in parent claim 11 for the reasons discussed above. In addition, the combination of Bastien and Daum discloses “further comprising detecting by a sensor background data indicative of at least one of a status of the trolley assisted mining truck, a status of a part of the trolley assisted mining truck, and a status of the environmental conditions of the trolley assisted mining truck” (Bastien ¶ 32) where the various battery information is “a status of a part of the trolley assisted mining truck.” Further, the combination of Bastien and Daum discloses “wherein the background data comprise in particular at least one of data indicative of the running resistance of the trolley assisted mining truck, data indicative of a wheel suspension movement of the trolley assisted mining truck, the auxiliary energy consumption, the load loaded on the trolley assisted mining truck, and environmental conditions, wherein the environmental conditions include in particular the humidity of the air, the humidity of the ground, the temperature of the air, the temperature of the ground, the presence of rain or snow, the roughness of the ground, and the kind of ground the trolley assisted mining truck is moving on” (Bastien ¶¶ 23, 43) by determining the load to be carried, which is “the load loaded on the trolley assisted mining truck.”
Claims 8 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Bastien in view of Daum, as applied to claims 1 and 2 above, and in further view of Abbot et al., US Publication 2019/0227528 (hereinafter Abbot), as cited on the Notice of References Cited dated October 10, 2025.
Regarding claims 8 and 20, the combination of Bastien and Daum discloses the limitations contained in parent claims 1 and 2 for the reasons discussed above. In addition, the combination of Bastien and Daum does not appear to explicitly disclose “wherein the control unit comprises a self-learning tool that performs at least one of: determines a schedule condition and adapts the at least one operational parameter using continuous feedback from the detection unit and the transportation status unit.”
However, Abbott discloses a battery management system including a control unit “wherein the control unit comprises a self-learning tool that performs at least one of: determines a schedule condition and adapts the at least one operational parameter using continuous feedback …” (Abbott ¶ 70) where the self-updating machine learning controller (i.e., self-learning tool) uses feedback from the various sensors to adapt the operational parameters, such as motor speed and output torque.
A person of ordinary skill in the art prior to the effective filing date would have recognized that when Abbot was combined with Bastien and Daum, the detection and transportation units of Bastien and Daum would provide feedback to the self-learning tool implemented according to the teachings of Abbott. Therefore, the combination of Bastien, Daum, and Abbott at least teaches and/or suggests the claimed limitation “wherein the control unit comprises a self-learning tool that performs at least one of: determines a schedule condition and adapts the at least one operational parameter using continuous feedback from the detection unit and the transportation status unit,” rendering it obvious.
Bastien, Daum, and Abbott are analogous art because they are from the “same field of endeavor,” namely that of battery management systems.
Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Bastien, Daum, and Abbott before him or her to modify the battery management system of Bastien and Daum to include the self-updating machine learning controller of Abbott.
The motivation for doing so would have been to improve performance of the battery. (Abbott ¶ 130).
Claims 9, 10, and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Bastien in view of Daum, as applied to claims 1 and 11 above, and in further view of Bae et al., US Publication 2021/0218262 (hereinafter Bae), as cited on the Notice of References Cited dated October 10, 2025.
Regarding claim 9, the combination of Bastien and Daum discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Bastien and Daum does not appear to explicitly disclose “wherein the control unit is adapted to factor the life span of the battery when calculating the battery charging power, if the control unit adapts the at least one operational parameter of the trolley assisted mining truck for obtaining a sustainable state of battery charge for the operation schedule.”
However, Bae discloses a battery management system with a control unit “wherein the control unit is adapted to factor the life span of the battery when calculating the battery charging power” (Bae ¶¶ 34, 72) by charging the battery according to the control condition (Bae ¶ 72), which is set based on improving the life span of the battery (Bae ¶ 34).
Further, a person of ordinary skill in the art prior to the effective filing date would have recognized that when Bae was combined with Bastien and Daum, that the life span calculation of Bae would be used in all instances of chagrining the battery. Thus, the combination of Bastien, Daum, and Bae at least teaches and/or suggests the claimed limitation “if the control unit adapts the at least one operational parameter of the trolley assisted mining truck for obtaining a sustainable state of battery charge for the operation schedule,” rendering it obvious.
Bastien, Daum, and Bae are analogous art because they are from the “same field of endeavor,” namely that of battery management systems.
Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Bastien, Daum, and Bae before him or her to modify the battery charging of Bastien and Daum to include the life span based calculation of Bae.
The motivation for doing so would have been to allow for more accurate estimations of the battery life. (Bae ¶ 33).
Regarding claim 10, the combination of Bastien, Daum, and Bae discloses the limitations contained in parent claim 9 for the reasons discussed above. In addition, the combination of Bastien, Daum, and Bae discloses “wherein the control unit is adapted to calculate an compromise of battery charging of the mining truck and life span of the battery.” (Bae ¶ 34).
Regarding claim 14, the combination of Bastien and Daum discloses the limitations contained in parent claim 11 for the reasons discussed above. In addition, the combination of Bastien and Daum does not appear to explicitly disclose “factoring by the control unit the life span of the battery when calculating the battery charging power.”
However, Bae discloses a battery management system with a control unit “factoring by the control unit the life span of the battery when calculating the battery charging power” (Bae ¶¶ 34, 72) by charging the battery according to the control condition (Bae ¶ 72), which is set based on improving the life span of the battery (Bae ¶ 34).
Bastien, Daum, and Bae are analogous art because they are from the “same field of endeavor,” namely that of battery management systems.
Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Bastien, Daum, and Bae before him or her to modify the battery charging of Bastien and Daum to include the life span based calculation of Bae.
The motivation for doing so would have been to allow for more accurate estimations of the battery life. (Bae ¶ 33).
Response to Arguments
Applicant’s arguments filed April 14, 2026, with respect to the rejections of claims 1,1 10, and 12 under 35 U.S.C. § 112(b); the objections to claims 1, 6, 11, 14, and 15; and the rejection of claims 1-20 under 35 U.S.C. § 101 (Remarks 9 and 11-12) have been fully considered and are persuasive. The rejections of claims 1, 10, and 12 under 35 U.S.C. § 112(b); the objections to claims 1, 6, 11, 14, and 15; and the rejection of claims 1-20 under 35 U.S.C. § 101 have been withdrawn.
Applicant's arguments remaining filed April 14, 2026 have been fully considered but they are not persuasive.
Regarding the information disclosure statement, Applicant argues “that the primary purpose of citing the foreign Office Action was to ensure the underlying prior art references cited therein were brought to the Office's attention” and “Applicant believes the substantive requirements of the duty of disclosure have been met.” (Remarks 9-10). Applicant continues that because “Applicant does not intend to rely on the specific characterizations set forth in the foreign-language Office Action itself … the references cited in the IDS remain part of the record for this application.” (Remarks 10).
Applicant appears to misunderstand the requirements of 37 C.F.R. § 1.98. The requirement to provide a translation of a foreign language copy is not linked to any intention by the applicant to “rely” on that reference. Nor has Applicant pointed to any rules, laws, or case law that establish such. Instead, the requirement is mandatory for consideration. 37 C.F.R. § 1.98. Therefore, the stricken reference is not part of the record for this application.
Regarding the interpretation of “battery charge status unit” and “transport status unit” under 35 U.S.C. § 112(f) and the accompanying rejection under 35 U.S.C. § 112(b), Applicant first argues that these terms do not use “means” and these connote structure where a “battery charge status unit … denotes a specific class of known physical structures—namely electrical measuring circuits (such as voltmeters or ammeters) or a Battery Management System (BMS) configured to measure the electrical state of a battery” while the “transport status unit … refers to a known class of structural hardware, such as a GPS tracking device, a telemetry module, or a system of physical checkpoint sensors used to track a vehicle’s position.” (Remarks 14-15). The examiner disagrees.
When a claim does not use the term “means,” but does recite a “function without reciting sufficient structure for performing that function,” the presumption under Williamson v. Citrix Online is met. Williamson v. Citrix Online, 792 F.3d 13391349, 115 USPQ2d at 1105, 1111 (Fed. Cir. 2015) (en banc) (quoting Watts v. XL Systems, Inc., 232 F.3d 877, 880, 56 USPQ2d 1836, 1838 (Fed. Cir. 2000); see also Personalized Media Communications, LLC v. International Trade Commission, 161 F. 3d 696, 704, 48 USPQ2d 1880, 1887 (Fed. Cir. 1998).
In the present instance, claim 1 recites “a battery charge status unit that determines battery charge status data indicative of the present charge status of the battery of the trolley assisted mining truck” and “a transport status unit that determines progress data of the progress of the trolley assisted mining truck in a present transport cycle of the operation schedule.” (Claim 1).
Neither the statement “determines battery charge status data indicative of the present charge status of the battery of the trolley assisted mining truck” nor “determines progress data of the progress of the trolley assisted mining truck in a present transport cycle of the operation schedule” recite structure.
Further, contrary to Applicant’s arguments, neither do the terms “battery charge status unit” and “transport status unit.” Although Applicant has listed several possible ways, there are a myriad of other ways to measure a battery’s charge that are neither “electrical measuring circuits” nor “Battery Management Systems.” For example, specific gravity measurements can be used to measure the charge status of some batteries and this is neither an electrical measuring circuit nor a Battery Management System. The same holds true for the claimed “transport status unit” as there are many, many more ways to determine a transport status of a vehicle, such as visual observation. In other words, the use of these terms is a “black box recitation of structure for providing the same specified function as if the term ‘means’ had been used.” Williamson at 1350-13351.
Finally, Applicant has submitted no evidence to support its contention that the listed options are what a person of ordinary skill would understand those terms to mean. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997)
Therefore, Applicant’s argument fails as a matter of law.
Next, Applicant argues that “the Specification explicitly discloses that the transport status unit is equipped with specific, structural hardware devices including a ‘counter for counting the number of transport cycles,’ a ‘locality determination device for determining the position’ (e.g., a GPS receiver), and a communication device,’” which Applicant argues “provides ample physical structure to accomplish the data-gathering function.” (Remarks 15, citing Spec. ¶ 47). The examiner disagrees.
First, it should be noted that Applicant’s specification does not recite “a GPS receiver” at ¶ 47 nor anywhere else in the specification, and this is read into the specification by Applicant in these remarks.
However, even if the specification did recite the use of a GPS, Applicant’s specification states that nothing in the specification is “meant as a limitation.” (Spec. ¶ 161). Thus, Applicant’s own specification states that no recited structure is to be read into the claims as Applicant is suggesting.
Therefore, Applicant’s argument is unpersuasive.
Applicant next argues “no skilled artisan would ever interpret the term ‘battery charge status unit’ or the specification’s supporting disclosure of ‘sensors, current sensing devices, or measuring devices’ (Spec. [0032]) to include a pressure sensor,” while a “skilled artisan would readily understand that a sensor tasked with determining the charge status of an electric battery is an electrical sensor (e.g., a current or voltage sensor).” (Remarks 14). The examiner disagrees.
Similar to the responses above, a sensor to determine the charging status of an electrical battery need not be a current or voltage sensor and the present specification specifically disavows such an interpretation. For instance, the sensor could be a specific gravity sensor, but such a sensor could also be used for different functions.
Additionally, Applicant has submitted no evidence to support its contention that the listed options are what a person of ordinary skill would understand those terms to mean. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997)
Therefore, Applicant’s argument fails as a matter of law.
Finally, Applicant argues that a “person of ordinary skill in the art would immediately understand [a light sensor] as an optical gate or physical checkpoint.” (Remarks 15-16). The examiner disagrees.
Applicant has submitted no evidence to support its contention that the listed options are what a person of ordinary skill would understand those terms to mean. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Therefore, Applicant’s argument fails as a matter of law.
Regarding the rejection of claims 1 and 11, Applicant first argues Bastien fails to teach or suggest “a transport status unit that determines progress data of the progress of the trolley assisted mining truck in a present transport cycle of the operation schedule.” (Remarks 18-19). Specifically, Applicant argues “Bastien's control logic is reactive to the physical slope of the road at any given moment … Bastien reacts to where the truck is (the slope), whereas the present invention reacts to how the truck is performing relative to a schedule (the progress)” and “Bastien does not monitor the truck's completion percentage or physical advancement within a predefined transport cycle (a recurring loop) to evaluate schedule compliance” before concluding “[b]ecause Bastien is concerned with local gradients rather than cycle-based progress, it cannot determine whether an overall operation schedule can be met and maintained.” (Remarks 19). The examiner disagrees.
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Specifically, nothing in the claims requires the claimed invention to “react[] to how the truck is performing relative to a schedule (the progress)” or “determine whether an overall operation schedule can be met and maintained.”
It is well settled that the “name of the game is the claim” and unclaimed features cannot impart patentability to claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). It is the examiner’s duty to give claims “their broadest reasonable interpretation consistent with the specification.” See MPEP § 2111, citing Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005). Further, if the specification is silent to the meaning of claim terminology, “words of the claim must be given their plain meaning.” See MPEP § 2111.01. Additionally, “the question under 35 U.S.C. § 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.” Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F. 2d 804, 807–808 (Fed. Cir. 1989) (Emphasis added).
Instead, the claims merely require determining progress data of the progress in a present cycle of the schedule. Additionally, although not limiting, the present specification gives guidance as to what constitutes “progress data.” Specifically, progress data may include “counter for counting the number of transport cycles of the mining truck, locality determination device for determining the position of a mining truck, communication device for communicating the data to the control unit, sensor(s) recognizing, which mining truck passes by, processing power and the like.” (Spec. ¶ 47, emphasis added).
Bastien explicitly discloses that the system may request the vehicle move from a first location to an alternate location. (Bastien ¶ 43). The first location is undoubtably a “position of a mining truck.” Further, the system of Bastien could not know that the vehicle was at the first location in order to move it to an alternate location without having determined that the vehicle was located at the first position.
Therefore, Bastien does disclose the claimed progress data as defined by Applicant’s own specification and Applicant’s arguments are unpersuasive.
Applicant is invited to add those elements to the claim, if it believes they are distinguishable from the prior art.
Applicant next argues that “Paragraph [0043] of Bastien - cited by the Office Action - describes determining ‘vehicle operating conditions,’ which include a ‘planned route of travel’ and ‘propulsion... requested to move the vehicle... from a first location... to an alternate location,’” while “‘Progress Data,’ as recited in the claims, is a dynamic determination of where the truck currently stands relative to the completion of a specific, predefined loop or sequence (the ‘cycle’).” (Remarks 19). Applicant continues that “[n]othing in par. [0043] suggests that the system monitors the progress or percentage of completion of the vehicle as it moves.” (Remarks 19). The examiner disagrees.
Once again, Applicant is arguing that Bastien fails to disclose unclaimed subject matter. Nothing in the claims, regardless of what Applicant’s remarks say, recite that the progress data “is a dynamic determination of where the truck currently stands relative to the completion of a specific, predefined loop or sequence (the ‘cycle’).” Therefore, Applicant’s argument is unpersuasive.
Applicant is invited to add those elements to the claim, if it believes they are distinguishable from the prior art.
Applicant next argues that Bastien” describes a discrete move ‘from a first location... to an alternate location,’ which is “a linear, point-to-point transport. It does not disclose or suggest a ‘transport cycle’-which, in the context of the present invention and the mining industry, refers to a recurring loop (e.g., Load-Haul-Dump-Return).” (Remarks 19). The examiner disagrees.
Once again, nothing in the claims requires “a recurring loop (e.g., Load-Haul-Dump-Return).” Therefore, Applicant’s argument is unpersuasive.
Applicant is invited to add those elements to the claim, if it believes they are distinguishable from the prior art.
Applicant next argues “while Bastien mentions ‘scheduled power interruptions,’ it does not describe an ‘operation schedule’ for the vehicle itself” and “[w]ithout a ‘cycle’ or a ‘schedule’ to measure against, Bastien cannot determine ‘progress data’ as required by the claims.” (Remarks 19). The examiner disagrees.
Applicant’s argument is based on an erroneous premise—namely that the claims require the “operation schedule” to be “for the vehicle itself.” Once again, this is not required by the claims. Nothing in the claims requires the operation schedule to be for the mining truck. Any operation schedule including predefined transport cycles meets this definition. The “scheduled power interruptions” of Bastien meet this limitation, because they are an operational schedule of when the external power source will be operating and define a cycle of transportation on which the trolley is connected to the catenary line. Therefore, Applicant’s argument is unpersuasive.
Applicant is invited to add those elements to the claim, if it believes they are distinguishable from the prior art.
Applicant next argues that the progress data of Bastien “are used at step 604 to determine how to propel the vehicle (i.e., whether to use the battery or the catenary line),” while “the claimed invention uses the ‘progress data’ (in combination with battery charge status data) to determine a ‘schedule condition’-an assessment of whether the operation schedule can be met or maintained by the mining truck” and that “[t]his specific feedback loop-using cycle progress to trigger parameter adaptation to achieve battery sustainability-is entirely absent from the tramming request logic of Bastien.” The examiner disagrees.
First , “specific feedback loop-using cycle progress to trigger parameter adaptation to achieve battery sustainability” is also entirely absent from the claims.
Second, Applicant appears to be arguing that the intended use of the invention is different than that of Bastien. “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id; Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).
Therefore, Applicant’s argument is unpersuasive.
Applicant is invited to add those elements to the claim, if it believes they are distinguishable from the prior art.
Applicant next argues that the combination of Bastien and Daum fails to disclose “a control unit configured to: determine a schedule condition indicative of whether the operation schedule can be met and maintained based on the battery charge status data determined by the battery charge status unit and the progress data determined by the transport status unit” because “Daum’s energy management system focuses on ‘estimating electric loads... over one or more segments of a trip.’” (Remarks 20, citing Daum Abstract). Applicant, thus alleges that Daum “does not suggest the determination of a ‘schedule condition’ based on the specific combination of ‘battery charge status data’ and ‘progress data... in a present transport cycle’” because “Daum merely estimates how much energy is needed for a segment; it does not determine if a multi-cycle schedule is being met based on real-time progress.” (Remarks 20). The examiner disagrees.
The present claims make no requirement to “determine if a multi-cycle schedule is being met based on real-time progress,” Therefore, Applicant’s argument is unpersuasive.
Applicant next argues “Daum provides no teaching of adapting operational parameters specifically to achieve a ‘sustainable state of battery charge.’” (Remarks 20).
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the present instance, Daum was never offered to teach a “sustainable state of battery charge.” Therefore, Applicant’s argument is unpersuasive.
Finally, Applicant argues that “there would not have been any motivation or reason to modify Bastien with the teachings of Daum to arrive at the presently claimed invention” because “Bastien discloses a complex, three-source power management system (Battery, Engine, Catenary). Its principle of operation is the reactive selection of power sources based on instantaneous external conditions (e.g., gradient)” while “Daum's logic (par. [0125]) is designed for a single-source architecture where the battery is the primary or exclusive source” and “[a]pplying Daum's single-source ‘trip load’ estimation to Bastien's multi-source environment would require a substantial reconstruction and redesign of the control algorithm to account for the time-dependent energy contributions of the catenary line and internal combustion engine” before concluding that “transforming Bastien's reactive switching into Daum's predictive load estimation constitutes such a change [of Bastien’s principle of operation].” (Remarks 21). The examiner disagrees.
Once again, Applicant has submitted no evidence to support its contention that modifying Bastien by Daum would affect the principle of operation of Bastien. Instead, Applicant has merely presented a conclusory statement that such is the case. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Therefore, Applicant’s argument is unpersuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW R DYER whose telephone number is (571)270-3790. The examiner can normally be reached Monday-Thursday 7:30-4:30.
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/ANDREW R DYER/Primary Examiner, Art Unit 3662
1 Due to the use of “control unit”
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