DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 15, 16 and 20 are objected to because of the following informalities: claims 15, 16 and 20 end in a comma instead of a period. Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 18/915,802 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 alternatively provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/915,802 (reference application). Although the claims at issue appear to be identical (see the statutory non-patenting rejections above), in the event that there is some minor rewording, the claims are substantively the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 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.
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 2-14 and 16-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 2-14 and 16-18 recite in the preamble “the power conversion module”, however depend from claims 1 and 15, respectively which recite “a charger”. Thus the antecedent basis is incorrect and it is also not clear whether the claims are further limiting their respective independent claim. Examiner suggests amending the claims to recite “the charger” in the preamble.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten to overcome the double patenting and indefiniteness rejections set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
With respect to claim 1, the following is an examiner's statement of reasons for the indication of allowable subject matter: the prior art fails to further teach or suggest “a controller, wherein the controller is coupled to the two or more first outputs for obtaining a second voltage of each electric vehicle of the electric vehicles coupled to the two or more first outputs, wherein the controller is configured to optimize an efficiency of the charger based on individual efficiencies of the two or more DC-DC converters, subjected to a constraint of a common first voltage for the two or more DC-DC converters, when the charger is configured to charge two or more electric vehicles coupled to the two or more first outputs connected to the two or more DC-DC converter” in combination with all the other elements recited in claim X.
Claims 2-14, being dependent on claim 1, would be allowable for the same reasons as claim 1.
Claims 15 and 19 recite similar limitations as claim 1, and would therefore be allowable for the same reasons as claim 1.
Claims 16-18 and 20, being dependent on claims 15 and 19, respectively, would be allowable for the same reasons as claims 15 and 19, respectively.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Xu et al. US PGPUB 2019/0372465 discloses an electric vehicle charging system with an AC/DC converter and a plurality of DC-DC converters each with control circuits and switches. Xu, however, fails to further teach or suggest the allowable subject matter indicated above.
Keister et al. US PGPUB 2022/0348096 discloses an electric vehicle charging system with an AC/DC converter and a plurality of DC-DC converters. Keister, however, alone or in combination with Xu fails to further teach or suggest the allowable subject matter indicated above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID V HENZE whose telephone number is (571)272-3317. The examiner can normally be reached M to F, 9am to 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Julian Huffman can be reached at 571-272-2147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID V HENZE/Primary Examiner, Art Unit 2859
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