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 .
Election/Restrictions
Applicant’s election without traverse of Invention I. in the reply filed on 18 February 2026 is acknowledged.
Claims 10 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 18 February 2026.
Specification
The disclosure is objected to because of the following informalities: at page 34, line 12 of the filed specification, it appears that "FIGS. 2 to 5" should read, “FIGS. 2 to 4”, since these FIGS. in line 12 are being compared with FIGS. 5 to 7.
Appropriate correction is required.
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 9 and 11 to 19 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.
Regarding claims 1 and 11, applicant has apparently not described, in sufficient detail, by what algorithm(s)1, or by what steps or procedure2, he determined whether (e.g., or not) a virtual shift demand existed based on a (any or all) vehicle driving state(s) within a drift mode. For example, other than repeating the claim language, no algorithm(s) for determining whether a virtual shift demand existed based on a/any/all vehicle driving state(s) within a drift mode is apparently described in the specification, in sufficient detail. Moreover, for example, the slope of the torque adjustment is apparently determined based on the amount or change rate of the rear-wheel slip as the “driving state” e.g., at published paragraphs [0024] to [0026]. Yet, no algorithm(s) or steps/procedure for determining the virtual shift demand exists as claimed from the same (e.g., rear-wheel slip) driving state (as the claims apparently would require) is described in the specification. Accordingly, the examiner believes that applicant has not evidenced, to those skilled in the art, possession of the full scope3 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 9 and 11 to 19 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 9ff, and in claim 11, lines 3ff, “determin[e] whether a virtual shift demand exists based on a vehicle driving state within a drift mode” is indefinite and not reasonably certain, with indeterminate metes and bounds. In particular, it is unclear from the teachings of the specification what a “virtual shift demand” is (e.g., a demand from whom or what, defined particularly how?) or particularly how it might come to exist. In this respect, published paragraph [0085] of the specification presupposes that a “virtual shifting demand” exists, and published paragraph [0086] indicates that virtual shifting is performed due to the virtual shifting demand, and the examiner will assume that the “virtual shifting demand” in the specification represents the “virtual shift demand” in the claims. However, what would or would not constitute a “virtual shift[ing] demand”, or particularly how such a demand might come to exist, is apparently neither clarified nor made reasonably certain in the specification. Additionally, the metes and bounds of what would or would not constitute a “vehicle driving state” that the virtual shift demand might be determined based on is not clear from the specification, with published paragraph [0075] indicating, “In some implementations, vehicle driving information, indicating vehicle driving states, such as driver's driving input values input to the controller 20 may include sensor detection information that is detected by the driving information detector 10 and is input to the first controller 21 through a vehicle network.”
In claim 1, lines 12ff, and in claim 11, lines 6ff, “stop[] determination and generation of a shift intervention torque for implementing a virtual shift sensation” is indefinite and unclear in the claim context which does not require any starting of determination and generation of a shift intervention torque, or even any determination and generation of a shift intervention torque in the first place, rendering it unclear what would be required by the recited “stop[ping]” in the claim context (e.g., would simply not performing any such determination and generation of the shift intervention torque at some point in time, after determining that the virtual shift demand exists, satisfy the claimed stop[ping]? Why or why not?) In this respect, “generation” of the shift intervention torque is also unclear (e.g., generated particularly how, by what particularly?)
In claim 2, line 5, “of a gear” is unclear, and should apparently read, “or a gear” (cf. claim 12, line 7).
In claim 3, lines 5ff, “an accelerator position sensor value” is unclear, because “an accelerator position sensor value” has already been recited in line 3, and so it is unclear whether the “accelerator position sensor value” of lines 5ff is the same as, different from, permissively the same as, permissively different from, necessarily the same as, necessarily different from, etc. the “accelerator position sensor value” of line 3.
Similarly, in claim 13, lines 5ff, “an accelerator position sensor value” is unclear
In claim 7, line 4, in claim 8, line 4, in claim 17, line 4, and in claim 18, line 4, “an upshift” is indefinite (e.g., an upshift of what particularly?) In this respect, it is unclear whether this might refer to an upshift of a transmission, a virtual upshift without a transmission, or something else entirely.
In claim 7, line 5, in claim 8, line 5, in claim 17, line 5, and in claim 18, line 5“, a downshift” is indefinite (e.g., a downshift of what particularly?) In this respect, it is unclear whether this might refer to a downshift of a transmission, a virtual downshift without a transmission, or something else entirely.
In claim 13, line 3, “the virtual shifting” apparently has insufficient antecedent basis (e.g., in claim 11, cf. claim 1) 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.
Claim Rejections - 35 USC § 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, 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 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Oh et al.4 (2021/0387530) in view of Yamada et al. (2023/0347896).
Oh et al. (‘530) reveals:
per claim 1, a torque control apparatus [e.g., FIG. 1] of an electric vehicle comprising:
a driving information detector [e.g., 12] configured to detect vehicle driving state information [e.g., paragraphs [0052] to [0055], detecting driver accelerator pedal input information, vehicle speed, etc.];
a controller [e.g., 20, 30] configured to generate a motor torque command related to a demand torque [e.g., the torque command generated by the torque command generation unit 21] based on vehicle driving information including the vehicle driving state information; and
a motor [e.g., 41] configured to operate based on the motor torque command [e.g., as shown and described with respect to FIG. 1],
wherein the controller is configured to:
determine whether a virtual shift demand exists [e.g., paragraph [0087], “Particularly, the change of the target gear shift stage indicates that a new virtual target gear shift stage different from the current gear shift stage is determined from the gear shift schedule map or paddle shift input or shift lever input information in the manual gear shift mode.”] based on a vehicle driving state [e.g., based on APS and the virtual vehicle speed as utilized by the gear shift schedule maps of FIGS. 4, 5, etc., whereby a shift intervention torque (FIG. 11) is used to simulate the sensation of an automatic transmission (AT) shift, e.g., by decreasing the motor torque during (and after) the shift (see FIG. 11)]
Oh et al. (‘530) does not reveal the limitations related to the drift mode/state or the manner in which the motor torque is adjusted in place of the shift intervention torque (used for providing the shift sensation) within the drift mode, although he teaches in FIG. 11 that by the shift intervention torque set when the automatic transmission (AT) is selected, the torque of the driving motor 41 decreases during and after the (virtual) shift of the automatic transmission.
However, in the context/field of a vehicle gear-shifting control apparatus used to prevent an automobile from becoming unstable when gear-shifting control of an automatic transmission (AT) is performed while an oversteered state (O/S) of the vehicle is determined to exist, Yamada et al. (‘896) teaches in conjunction with FIGS. 8, 9, 10, 12, and 14) that a motor torque of a motor 5 is increased5 (i.e., compared to normal control when vehicle otherwise travels straight without slip at S56 in FIG. 10; see e.g., paragraph [0128]) during the gear-shifting time when the vehicle is determined to be in the oversteered state (O/S in FIGS. 12 and 14) so as to suppress the torque fluctuation at the rear wheels and cause the output torque at the propeller shaft 15 and differential 16 to thereby become “flat” (e.g., paragraphs [0114], [0122], [0132], etc.), in order that the vehicle behavior does not become unstable during the oversteer.
It would have been obvious before the effective filing date of the claimed invention to implement or modify the Oh et al. (‘530) control method for generating a sensation of gear-shifting of an electric vehicle so that, when it was determined by sensing actual yaw, etc. that the vehicle was in an oversteered state, the normal motor control used during gear-shifting (e.g., while the vehicle was traveling straight without slip) would have been modified/replaced by a motor control where the motor torque was increased, as taught by Yamada et al. (‘896) in FIGS. 8, 9, 10, 12, and 14, so as to suppress the torque fluctuation at the rear wheels and cause the output torque at the propeller shaft 15 and differential 16 to thereby become “flat” (e.g., paragraphs [0114], [0122], [0132], etc.), in order that the vehicle behavior does not become unstable during the oversteer, with a reasonable expectation of success, and e.g., as a use of a known technique to improve similar devices (methods, or products) in the same way.
As such, the implemented or modified Oh et al. (‘530) control method for generating a sensation of gear-shifting of an electric vehicle would have rendered obvious:
per claim 1, a torque control apparatus [e.g., in Oh et al. (‘530), FIG. 1] of an electric vehicle comprising:
a driving information detector [e.g., in Oh et al. (‘530), 12; and 54 in Yamada et al. (‘896) sensing yaw rate] configured to detect vehicle driving state information [e.g., in Oh et al. (‘530), paragraphs [0052] to [0055], detecting driver accelerator pedal input information, vehicle speed, etc.; and a yaw rate obtained by the yaw rate sensor 54 in Yamada et al. (‘896)];
a controller [e.g., in Oh et al. (‘530), 20, 30; and 20 in Yamada et al. (‘896)] configured to generate a motor torque command related to a demand torque [e.g., in Oh et al. (‘530), the torque command generated by the torque command generation unit 21; and in Yamada et al. (‘896), in conjunction with the gear-shifting control of FIG. 9, as utilized at S310 in FIG. 8, to produce e.g., the motor torque increase shown in FIGS. 12 and 14; see also S44, S54, S55, etc. in FIGS. 9 and 10, wherein wheel slip occurs at S51, Yes in FIG. 10] based on vehicle driving information including the vehicle driving state information [e.g., as shown and described with respect to FIGS. 1 and 2 in Oh et al. (‘530); and in Yamada et al. (‘896), during gear-shifting control, as shown in FIG. 9, depending on whether the vehicle is being oversteered (e.g., the determination of O/S[6] in FIGS. 12 and 14 as determined from/based on the yaw rate detected by the yaw sensor 54]; and
a motor [e.g., in Oh et al. (‘530), 41l; and 5 in Yamada et al. (‘896)] configured to operate based on the motor torque command [e.g., in Oh et al. (‘530), as shown and described with respect to FIG. 1; and as shown and described in FIGS. 12 and 14 of Yamada et al. (‘896)],
wherein the controller is configured to:
determine whether a virtual shift demand exists [e.g., in Oh et al. (‘530), paragraph [0087], “Particularly, the change of the target gear shift stage indicates that a new virtual target gear shift stage different from the current gear shift stage is determined from the gear shift schedule map or paddle shift input or shift lever input information in the manual gear shift mode.”] based on a vehicle driving state [e.g., in Oh et al. (‘530), based on APS and the virtual vehicle speed as utilized by the gear shift schedule maps of FIGS. 4, 5, etc., whereby a shift intervention torque (FIG. 11) is used to simulate the sensation of an automatic transmission (AT) shift, e.g., by decreasing the motor torque during (and after) the shift (see FIG. 11)] within a drift mode7 [e.g., when the vehicle is obviously determined to be in the oversteered state, as taught by Yamada et al. (‘896) in FIGS. 12, 14, etc., and a gear-shift becomes commanded (as shown in FIGS. 12 and 14) based on the “map set with respect to each of an upshift and a downshift” (paragraph [0120]), and obviously based on the virtual shift maps (e.g., FIGS. 4, 5, etc.) for obviously commanding the virtual gear-shifts in Oh et al. (‘530)], the drift mode referring to the electric vehicle traveling in a drift state [e.g., when the oversteered state in Yamada et al. (‘896) exists while the vehicle travels (cf. FIGS. 12, 14, etc.)],
based on a determination that the virtual shift demand exists [e.g., when the gear was shifted in Yamada et al. (‘896) during the oversteered state, and obviously when the virtual gear would have obviously been shifted in Oh et al. (‘530) under the same conditions, in order to provide the same sensation of gear shifting as that of a vehicle equipped with a multi-speed transmission, as desired by Oh et al. (‘530) at paragraph [0007]] (i) stop determination and generation of a shift intervention torque for implementing a virtual shift sensation [e.g., when the motor torque is increased as taught by Yamada et al. (‘896), see FIGS. 12 and 14, to make the vehicle’s output torque (e.g., at the propeller shaft 15 and differential 16) to become “flat” (paragraph [0122]), the torque decrease as shown in FIG. 11 of Oh et al. (‘530) for giving the sensation of AT shifting would have obviously/necessarily been stopped by that increase, since there would no longer be an outputted torque decrease due to the (inputted) motor torque increase taught by Yamada et al. (‘896)] and (ii) determine a motor torque [e.g., the motor torque increase shown in FIGS. 12 and 14 by Yamada et al. (‘896)] by adjusting the motor torque based on a slope [e.g., shown by the (torque slope(s) of the) MOTOR TORQUE INCREASE (and subsequent decrease after the time of increased torque) in FIGS. 12 and 14 of Yamada et al. (‘896)] determined from the vehicle driving state [e.g., as shown and described with reference for FIGS. 12 and 14, to obviously use the motor 5 to increase the AT input torque (after time t4 and before time t5 in FIG. 12, or after time t5 and before time t6 in FIG. 14, as shown) during a gear-shift while in an oversteered state, as shown, where the oversteered state is determined from the vehicle driving state (e.g., yaw rate in Yamada et al. (‘896))], transitioning from a pre-shift target torque to a post-shift target torque [e.g., in Yamada et al. (‘896), in FIG. 12 between the times t4 and t5, and in FIG 14 between the times t3 and t6] throughout virtual shifting [e.g., taught by Oh et al. (‘530), for the electric vehicle to give the sensation of the automatic transmission gear shifting of Yamada et al. (‘896) while preventing unstable vehicle behavior] within the drift mode [e.g., while the vehicle travels in the oversteered state as taught in conjunction with FIGS. 12 and 14 of Yamada et al. (‘896)], and
generate the motor torque command based on the determined motor torque [e.g., in Yamada et al. (‘896), obviously to implement the MOTOR TORQUE INCREASE, as shown in FIGS. 12 and 14 and as described at paragraphs [0114], [0122], [0132], etc., so that the torque fluctuation of the rear wheels 2R is suppressed or, in other words, the AT output torque becomes flat (paragraph [0122]) in order to prevent the vehicle from becoming unstable during gear-shifting the oversteered state; and in particular during the virtual gear-shifting taught in FIG. 11 of Oh et al. (‘530)];
per claim 11, a torque control method of an electric vehicle [e.g., title in Oh et al. (‘530)], the torque control method comprising:
determining, by a controller [e.g., in Oh et al. (‘530), 20, 30; and 20 in Yamada et al. (‘896)], whether a virtual shift demand exists e.g., in Oh et al. (‘530), paragraph [0087], “Particularly, the change of the target gear shift stage indicates that a new virtual target gear shift stage different from the current gear shift stage is determined from the gear shift schedule map or paddle shift input or shift lever input information in the manual gear shift mode.”] based on a vehicle driving state [e.g., in Oh et al. (‘530), based on APS and the virtual vehicle speed as utilized by the gear shift schedule maps of FIGS. 4, 5, etc., whereby a shift intervention torque (FIG. 11) is used to simulate the sensation of an automatic transmission (AT) shift, e.g., by decreasing the motor torque during (and after) the shift (see FIG. 11)] within a drift mode [e.g., when the vehicle is obviously determined to be in the oversteered state, as taught by Yamada et al. (‘896) in FIGS. 12, 14, etc., and a gear-shift becomes commanded (as shown in FIGS. 12 and 14) based on the “map set with respect to each of an upshift and a downshift” (paragraph [0120]), and obviously based on the virtual shift maps (e.g., FIGS. 4, 5, etc.) for obviously commanding the virtual gear-shifts in Oh et al. (‘530)], the drift mode referring to the electric vehicle travelling in a drift state [e.g., when the oversteered state in Yamada et al. (‘896) exists while the vehicle travels (cf. FIGS. 12, 14, etc.)];
stopping [e.g., when the motor torque is increased as taught by Yamada et al. (‘896), see FIGS. 12 and 14, to make the vehicle’s output torque (e.g., at the propeller shaft 15 and differential 16) to become “flat” (paragraph [0122]), the torque decrease as shown in FIG. 11 of Oh et al. (‘530) for giving the sensation of AT shifting would have obviously/necessarily been stopped by that increase, since there would no longer be an outputted torque decrease due to the (inputted) motor torque increase taught by Yamada et al. (‘896)], based on a determination that the virtual shift demand exists [e.g., when the gear was shifted in Yamada et al. (‘896) during the oversteered state, and obviously when the virtual gear would have obviously been shifted in Oh et al. (‘530) under the same conditions, in order to provide the same sensation of gear shifting as that of a vehicle equipped with a multi-speed transmission, as desired by Oh et al. (‘530) at paragraph [0007]], determination and generation of a shift intervention torque for implementing a virtual shift sensation [e.g., when the motor torque is increased as taught by Yamada et al. (‘896), see FIGS. 12 and 14, to make the vehicle’s output torque (e.g., at the propeller shaft 15 and differential 16) to become “flat” (paragraph [0122]), the torque decrease determined/generated as shown in FIG. 11 of Oh et al. (‘530) for giving the sensation of AT shifting would have obviously/necessarily been stopped by that increase, since there would no longer be an outputted torque decrease due to the (inputted) motor torque increase taught by Yamada et al. (‘896)], and determining a motor torque [e.g., the motor torque increase shown in FIGS. 12 and 14 by Yamada et al. (‘896)] by adjusting the motor torque based on a slope [e.g., shown by the (torque slope of the) MOTOR TORQUE INCREASE (and subsequent decrease after the time of increased torque) in FIGS. 12 and 14 of Yamada et al. (‘896)] determined from the vehicle driving state [e.g., as shown and described with reference for FIGS. 12 and 14, to obviously use the motor 5 to increase the AT input torque (after time t4 and before time t5 in FIG. 12, or after time t5 and before time t6 in FIG. 14, as shown) during a gear-shift while in an oversteered state, as shown, where the oversteered state is determined from the vehicle driving state (e.g., yaw rate in Yamada et al. (‘896))], transitioning from a pre-shift target torque to a post-shift target torque [e.g., in Yamada et al. (‘896), in FIG. 12 between the times t4 and t5, and in FIG 14 between the times t3 and t6] within the drift mode [e.g., while the vehicle travels in the oversteered state as taught in conjunction with FIGS. 12 and 14 of Yamada et al. (‘896)], by the controller [e.g., in Oh et al. (‘530), 20, 30; and 20 in Yamada et al. (‘896)]; and
generating, by the controller, a motor torque command based on the determined motor torque [e.g., in Yamada et al. (‘896), obviously to implement the MOTOR TORQUE INCREASE, as shown in FIGS. 12 and 14 and as described at paragraphs [0114], [0122], [0132], etc., so that the torque fluctuation of the rear wheels 2R is suppressed or, in other words, the AT output torque becomes flat (paragraph [0122]) in order to prevent the vehicle from becoming unstable during gear-shifting the oversteered state; and in particular during the virtual gear-shifting taught in FIG. 11 of Oh et al. (‘530)], and controlling a motor that drives the electric vehicle according to the generated motor torque command [e.g., in Oh et al. (‘530), as shown and described with respect to FIG. 1; and as shown and described in FIGS. 12 and 14 of Yamada et al. (‘896)];
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, 2, 11, and 12, in so far as the claims are definite, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 to 16 of copending Application No. 18/612860 to Oh (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each application claims the same features with only slight differences in wording (e.g., virtual shift demand v. virtual shift request, sensation v. feeling, slope determined v. predetermined slope, etc.) and claim order, and other obvious variations (e.g., not providing/stopping a shift intervention torque if its function is not desired, see e.g., MPEP 2144.04, II., A.), with the claim features in the instant application corresponding to features of the claims in the reference application, as in the following claim correspondence table:
Claims in instant application 18/665766 to Oh et al.
Corresponding claims[8] in 18/612860 to Oh (reference application)
1
9, 10, 12
2
9, 10, 12
3
--
4
--
5
--
6
--
7
--
8
--
9
--
11
1, 2, 4
12
1, 2, 4
13
--
14
--
15
--
16
--
17
--
18
--
19
--
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
For example only, Oh (2025/0153580) corresponds to copending U.S. Patent application 18/612860.
Yamada et al. (2023/0347749) is similar to Yamada et al. (‘896).
Ruybal et al. (2019/0176801) teaches at paragraph [0002] that, “A vehicle may purposefully enter vehicle drift where the vehicle's driver intentionally oversteers the vehicle and causes the vehicle's rear wheels to slip.”
The Wikipedia article describes/defines drifting (in motorsport).
Conclusion
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.
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/DAVID A TESTARDI/Primary Examiner, Art Unit 3664
1 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."
2 See http://www.uspto.gov/sites/default/files/documents/fnctnllnggcmptr.pptx at page 29.
3 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)]").
4 Now U.S. Patent 11529876 B2.
5 As shown in this portion e.g., of FIG. 12 (e.g., FIG. 14 is similar), annotated below/on the next page by the examiner to highlight the depicted motor torque increase (and the slope(s) therefor):
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6 Oversteer
7 See e.g., the Wikipedia article entitled “Drifting (motorsport)”, old revision dated 9 December 2023, cited herewith.
8 As amended on 12 March 2026.