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 the Claims
This office action is made in response to applicant’s arguments filed on 12/24/2025 wherein, claims 1-3, 6,14-18 have been amended, no new claims have been added, and no claims have been canceled. Accordingly, claims 1-20 are pending herein.
Response to Arguments
Applicant’s arguments, filed on 12/24/2025, with respect to the claim interpretation have been fully considered and are persuasive.
Regarding the double patenting rejection, applicant had requested that these double patenting rejections be held in abeyance until prosecution on the merits is otherwise completed. Accordingly, double patenting rejection is maintained herein.
Applicant's arguments filed on 12/24/2025 with regards to the 102/103 rejections of the claims have been fully considered but they are not persuasive. Applicant argues that Lee does not disclose a predetermined power capacity and instead relies only on a present battery voltage, and therefore does not determine or display permitted or prohibited operations based on such a predetermined value.
The Examiner respectfully disagrees with these arguments. Lee teaches sensing a battery voltage and comparing the sensed voltage to a preset reference voltage level stored in memory (see, page 3 of translation attached in the most recent NF). Such a preset reference value constitutes a predetermined threshold, which represents a battery capacity limit, as battery voltage is a well-known indicator of remaining energy capacity. Thus, the determination in Lee is not based solely on a fluctuating measured voltage, but rather on a comparison to a fixed, predetermined reference value. Further, based on this comparison, Lee determines whether an over-discharge condition exists and correspondingly limits or interrupts operation of the vehicle, thereby determining permitted and/or prohibited operations. Lee also provides output to a display indicating such operational limitations, which corresponds to displaying information associated with permitted and/or prohibited operations. Accordingly, Lee teaches or at least suggests the recited limitations. Therefore, Applicant’s arguments are not persuasive, and the rejection is maintained herein.
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 Langi, 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/AIN25, 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/applyingonline/eterminal-disclaimer.
Claims 1-4, 7, 8, 10, 11, 14, 15, 16, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 12, 13, 14, 16, 18, and 21 of U.S. Patent No. 12, 012, 322 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, U.S. Patent No. 12, 012, 322 B2 claims a working machine comprising: a machine body, a ground engaging propulsion structure to permit movement of the machine over the ground a load handling apparatus coupled to the machine body and moveable by a movement actuator with respect to the machine body, at least one electric energy storage module configured to provide electrical energy for actuating a movement actuator of the load handling apparatus, and a controller configured to: receive or acquire information representative of a power capacity of said electric energy storage module; determine permitted and/or prohibited operations of the working machine based on the received or acquired information; and issue an operations signal for use by the movement actuator of the working machine (claim 1) or a display configured to display information corresponding to the determined permitted and/or prohibited operations (claim 2).
Regarding claim 2, U.S. Patent No. 12, 012, 322 B2 claims the controller is configured to receive or acquire information representative of the power capacity directly from the at least one electric energy storage module (claim 12).
Regarding claim 3, U.S. Patent No. 12, 012, 322 B2 claims the controller includes a machine stabilization decision logic configured such that the permitted load of the load handling apparatus and/or the permitted lift height of the load handling apparatus is dependent on the information representative of the power capacity of the said electric energy storage module (claim 1).
Regarding claim 4, U.S. Patent No. 12, 012, 322 B2 claims the working machine comprises at least two electric energy storage modules (claim 13).
Regarding claim 7, U.S. Patent No. 12, 012, 322 B2 claims the working machine comprises a mount for at least a first electric energy storage module and a second electric energy storage module, the machine being operable with at least one of the first and second electric storage modules present (claim 13).
Regarding claim 8, U.S. Patent No. 12, 012, 322 B2 claims the first and second electric energy storage modules are located one above the other (claim 20).
Regarding claim 10, U.S. Patent No. 12, 012, 322 B2 claims the first and/or second electric energy storage modules are configured to be removable from the mount and replaceable, such that the first and/or second electric energy storage modules are interchangeable (claim 13).
Regarding claim 11, U.S. Patent No. 12, 012, 322 B2 claims the first and/or second electric energy storage modules comprise a connector to connect the respective electric energy storage module to the working machine (claim 14).
Regarding claim 14, U.S. Patent No. 12, 012, 322 B2 claims the controller is configured to determine the weight of the electric energy storage module from the power capacity (claim 1).
Regarding claim 15, U.S. Patent No. 12, 012, 322 B2 claims the at least one electric energy storage module is selected based on its power capacity and an intended use of the working machine, wherein the permitted and/or prohibited operations relate to the intended use (claim 16).
Regarding claim 16, U.S. Patent No. 12, 012, 322 B2 claims the electric energy storage module has a power capacity in the range of 10 to 50 kWh (Claim 21).
Regarding claim 19, U.S. Patent No. 12, 012, 322 B2 claims the machine further comprises an operator cab which has a fixed angular orientation with respect to front and/or rear axles of the working machine (claim 18).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LEE (KR-2001-0026778).
Regarding claim 1, LEE discloses a working machine comprising: a machine body, a ground engaging propulsion structure to permit movement of the machine over the ground a load handling apparatus coupled to the machine body and moveable by a movement actuator with respect to the machine body (page 2, Lines 5-6; Implied by forklift), at least one electric energy storage module configured to provide electrical energy for actuating the movement actuator of the load handling apparatus (battery, Page 2, Line 6), and a controller configured to: receive or acquire information representative of a predetermined power capacity of said electric energy storage module (page 3, Line 1); determine permitted and/or prohibited operations of the working machine based on the received or acquired information (Page 3, Lines 6-13); and issue an operations signal for use by the movement actuator of the working machine (Page 3, Lines 8-13) or a display configured to display information corresponding to the determined permitted and/or prohibited operations.
Regarding claim 2, LEE discloses the controller is configured to receive or acquire information representative of the predetermined power capacity directly from the at least one electric energy storage module (Page 3, Lines 6-13).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 3- 13, 15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over LEE in view of DEPRIESTER (US 4,026,378).
Regarding claim 3, LEE discloses the controller includes the permitted load of the load handling apparatus and/or the permitted lift height of the load handling apparatus is dependent on the information representative of the predetermined power capacity of the said electric energy storage module (page 3, Lines 8-13).
However, LEE does not explicitly state a machine stabilization decision logic.
On the other hand, DEPRIESTER teaches a machine stabilization decision logic (Abstract; Counter weight).
It would have been obvious for someone with ordinary skill in the art before the effective filing date of the current application to modify the teachings of the LEE reference and include features from the DEPRIESTER reference with a reasonable expectation of success. Including a machine stabilizer logic provides increasing stability, enhancing safety, and improving operational efficiency.
Regarding claim 4, LEE does not explicitly state the working machine comprises at least two electric energy storage modules.
On the other hand, DEPRIESTER teaches the working machine comprises at least two electric energy storage modules (Fig. 2, module 30, module 32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 5, LEE does not explicitly state the at least two electric energy storage modules have different power capacities.
On the other hand, DEPRIESTER teaches at least two electric energy storage modules having different power capacities (Fig. 2, module 30, 32, implicitly the batteries may have different power capacities).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 6, LEE does not explicitly state the at least two electric energy storage modules have the same predetermined power capacity.
On the other hand, DEPRIESTER teaches the at least two electric energy storage modules have the same predetermined power capacity (Fig. 2, module 30, 32, implicitly the batteries may have same power capacities).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 7, LEE does not explicitly state the working machine comprises a mount for at least a first electric energy storage module and a second electric energy storage module, the machine being operable with at least one of the first and second electric storage modules present.
On the other hand, DEPRIESTER teaches the working machine comprises a mount for at least a first electric energy storage module and a second electric energy storage module, the machine being operable with at least one of the first and second electric storage modules present (Fig. 2, 57).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 8, LEE does not explicitly state the first and second electric energy storage modules are located one above the other.
On the other hand, DEPRIESTER teaches the first and second electric energy storage modules.
It would have been an obvious matter of design choice to locate the first and second electric energy storage modules in the DEPRIESTER reference above each other since applicant has not disclosed that solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 9, LEE does not explicitly state the first and second electric energy storage modules are mounted side by side.
On the other hand, DEPRIESTER teaches the first and second electric energy storage modules are mounted side by side (Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 10, LEE does not explicitly state the first and/or second electric energy storage modules are configured to be removable from the mount and replaceable, such that the first and/or second electric energy storage modules are interchangeable.
On the other hand, DEPRIESTER teaches the first and/or second electric energy storage modules are configured to be removable from the mount and replaceable, such that the first and/or second electric energy storage modules are interchangeable (Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 11, LEE does not explicitly state the first and/or second electric energy storage modules comprise a connector to connect the respective electric energy storage module to the working machine.
On the other hand, DEPRIESTER teaches the first and/or second electric energy storage modules comprise a connector to connect the respective electric energy storage module to the working machine (implied, "electric counterbalanced lift truck).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 12, LEE does not explicitly state the first and/or second electric energy storage modules are fixed to the machine.
On the other hand, DEPRIESTER teaches the first and/or second electric energy storage modules are fixed to the machine (Fig. 2; implied).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 13, LEE does not explicitly state the mount is configured to receive a ballast module.
On the other hand, DEPRIESTER teaches the mount is configured to receive a ballast module (Fig. 2, 57).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 15, LEE does not explicitly state the at least one electric energy storage module is selected based on its predetermined power capacity and an intended use of the working machine, wherein the permitted and/or prohibited operations relate to the intended use.
On the other hand, DEPRIESTER teaches the at least one electric energy storage module is selected based on its predetermined power capacity and an intended use of the working machine, wherein the permitted and/or prohibited operations relate to the intended use (Fig. 2, The limitation "the at least one electric energy storage module is selected based on an intended use of the working machine" is considered as functional language. DEPRIESTER discloses all the structural components of an electric lift truck, which are read on those of the instant invention. Furthermore, the batteries 30,32 of DEPRIESTER are capable of performing the desired function so as to provide an electric lift truck, i.e. it is implicit that the selected batteries of the electric lift truck are suitable for the intended use of providing an electric lift truck).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 17, LEE discloses the controller is configured to receive or acquire information representative of a power capacity of electric energy storage module.
However, LEE does not explicitly state each the first and second electric energy storage modules.
On the other hand, DEPRIESTER teaches each the first and second electric energy storage modules (Fig. 2, 30, 32; Inherently yields receiving power capacity from modules).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER comprising the two electric storage modules, with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 18, LEE discloses the controller is configured to receive or acquire information representative of a power capacity of electric energy storage module (Page 3, Lines 1-13).
However, LEE does not explicitly state total predetermined power capacity of both the first and second electric energy storage modules.
On the other hand, DEPRIESTER teaches total predetermined power capacity of both the first and second electric energy storage modules (Fig. 2, 30, 32; Inherently yields receiving power capacity from modules).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER comprising the two electric storage modules, with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Regarding claim 19, LEE does not explicitly state, the machine further comprises an operator cab which has a fixed angular orientation with respect to front and/or rear axles of the working machine.
On the other hand, DEPRIESTER teaches the machine further comprises an operator cab which has a fixed angular orientation with respect to front and/or rear axles of the working machine (fig. 1, (20)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of DEPRIESTER with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over LEE in view of KIM (US-20200244074-A1).
Regarding claim 14, LEE does not explicitly state the controller is configured to determine the weight of the electric energy storage module from the power capacity.
On the other hand, KIM teaches the controller is configured to determine the weight of the electric energy storage module from the power capacity (claims 4 and 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE to the working machine of KIM with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over LEE in view of SUN (CN 108805321 A; Examiner relied on English translation attached herein).
Regarding claim 16, LEE does not explicitly state the electric energy storage module has the predetermined power capacity in the range of 10 to 50 kWh.
On the other hand, SUN teaches the electric energy storage module has a predetermined power capacity in the range of 10 to 50 kWh (page 9, Lines 35-36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE using the teachings of SUN with a reasonable expectation of success. Doing so prevents the performance of the battery from decreasing and eventually needing to be replaced.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over LEE in view of Brooks (US-20100322753-A1).
Regarding claim 20, LEE does not explicitly state the working machine is a telescopic handler.
On the other hand, Brooks teaches the working machine is a telescopic handler ([0011]; Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to modify the control system taught by LEE using the teachings of Brooks with a reasonable expectation of success. Doing so prevents allows the system in LEE to be applied on the machine in Brooks to achieve a better work performance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
FUKUDA (US-20180093659-A1) discloses an energy management control device for a hybrid vehicle has an energy management controller that suppresses an occurrence of a condition in which an EV start is not possible due to insufficient battery charge capacity when an engagement clutch fails. When the energy management controller has determined that one of the engagement clutches has failed that is used to carry out an EV start using a first motor generator as a drive source that receives electrical power from a high-power battery when starting the vehicle, energy management maps are used in energy management control, which have a usage SOC range that is broader than the usage SOC range of the normal energy management map, which is used during normal operation.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/S.B./Examiner, Art Unit 3666
/SCOTT A BROWNE/Supervisory Patent Examiner, Art Unit 3666
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