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 .
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 1-12 and 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7, 9, 11, 12, 15-17, 19 and 20 of U.S. Patent No. 11,807,220 in view of US Patent Application Publication 2011/0082621 to Berkobin et al. (Berkobin).
The claims of the present application correspond to the claims of the ‘220 patent as shown in the chart below
Present Application claims
US 11,807,220 claims
1
1
2
2
3
3
4
4
5
8
6
7
7
9
8
11
9
12
10
15
11
15
12
16
14
17
15
19
16
20
The claims of the ‘220 patent teach the limitations of the claims in the current application except a controller; a voltage monitor coupled to a vehicle battery of the vehicle, the voltage monitor having a voltage monitor output representing a battery voltage of the vehicle battery; an analog-to-digital converter (ADC) having a digital output coupled to the controller and an analog input coupled to the voltage monitor output; a digital to analog converter (DAC) coupled to the controller and having a DAC output; a comparator having a first input coupled to the voltage monitor output, a second input coupled to the DAC output, and a comparator output coupled to the controller; and a non-volatile memory coupled to the controller, the non-volatile memory storing machine-executable programming instructions. Berkobin teaches a controller (Fig. 6, controller 610), measuring voltage level of a battery (Fig. 6, interface 111, par. 86, voltage level), an ADC (Fig. 6, A/Ds), a digital potentiometer that is controller by the processor, which corresponds to a DAC (Fig. 6, digital POT; par. 85), a comparator (Fig. 6, comparator 612), and memory (par. 22). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the claims of the ‘220 patent to include the hardware teachings of Berkobin, because then well known hardware would have been available to perform the claimed method functions.
Allowable Subject Matter
Claims 13, 17 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANUEL L BARBEE whose telephone number is (571)272-2212. The examiner can normally be reached M-F: 9-5:30..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelby A Turner can be reached at 571-272-6334. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MANUEL L BARBEE/Primary Examiner, Art Unit 2857
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