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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/626909, filed on 12/2/2019.
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 7-9, 19-20, 27 and 31-32 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.
Claim 7 recites "piston-type or double-stroke piston type". It is not clear what the addition of the word "type" is intended to convey. See MPEP 2173.05(b)(III).
Claim 19 recites “if an electric drive motor is available for braking action at at least one axle of the vehicle”. It is not clear an electric drive motor is required, or what is required by the claim in an electric drive motor is not available.
Claim 20 recites “the motor of at least one of the main modules is designed only for an anti-lock braking/electronic stability control feedback control function.” It would seem that at least ABS function would be carried out across a wide range of power levels or speeds otherwise associated with normal braking depending on the driving surface the vehicle is on. It is not clear what is encompassed by the claim limitation. Claim 32 recites similar.
Claim 27 recites " an electrical connection between a superordinate control device and/or at least one traction motor, on the one hand, and the main module and/or the first further module, on the other hand." It is not clear what is encompassed by this recitation, particularly the one hand/other hand language as it is used in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 31 recites the broad recitation “in the case of a fast build-up of brake pressure,” and the claim also recites “namely with a time-to-lock of 150 ms or less” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-11, 15-16, 18, 21-26, 28-30 and 34 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zimmermann et al (US# 2019/0344769).
Zimmerman et al disclose all the limitations of the instant claim including; a drive and braking system for a vehicle, comprising: at least a first main module 5/100 and a second main module 2/110 wherein each main module comprises a respective motor 35/M, a respective control unit 100/110, a respective pressure-generating unit 5/2, and a respective output line 13b/13a; wherein the first main module is connected via its output line 13b to a first brake circuit HA, and the second main module is connected via its output line 13a to a second brake circuit VA; and wherein the first and second brake circuits are selectively connectable to one another by means of a connecting line that is able to be shut off by means of at least one connecting valve 40/140.
Regarding claim 2, in an event of failure of one pressure-generating unit of the first main module or the second main modules, the pressure-generating unit of the respective second main module or first main module is able to, by opening the at least one connecting valve, perform pressure change in the first and second brake circuits. [0052]
Regarding claim 4, the first 5 and second 2 main modules are not arranged on a bulkhead of the vehicle. [0152] recites the option of mounting the modules on the chassis.
Regarding claim 5, a further module (200 or 8a w/IPB) is arranged spatially separately from the first and second main modules. Figure 3.
Regarding claim 6, an actuating unit having an electrical brake pedal 1/3 or a go-stop switch, wherein the control units 100/110 of the first and second main modules are connected to a central control unit 200 by redundant data lines 58/68/71.
Regarding claim 7, the two pressure-generating units of the at least first and second main modules are driven by their respective motors and are in the form of piston-type 5 or double-stroke piston-type pumps. [0045] suggests identical linear actuators 5.
Regarding claim 8, the respective motor 35 adjusts the piston of the piston-type or double-stroke piston-type pump via a transmission mechanism 39.
Regarding claim 9, each of the at least first main module 5 and second main module 2 further comprises a respective cylinder and a respective piston 36, wherein the respective piston and cylinder delimit a respective working chamber 37, which is connected via a respective suction valve 53 to a reservoir vessel 4.
Regarding claim 10, for each of the at least first and second main modules, the respective output line is connected to a respective brake circuit, to which wheel brakes 8a-8d are connected with the interposition of respective switching valves 6a-6d; wherein, when a respective switching valve is closed, pressure in the associated wheel brake is conserved, and, when one or several of the switching valves are open, a pressure build-up and/or pressure dissipation in the respective wheel brake(s) associated with the one or several of the switching valves is performed.
Regarding claim 11, at least one outlet valve 7a-7d is arranged such that a pressure dissipation in a wheel brake of the vehicle is able to be realized selectively via the outlet valve in a direction of a reservoir vessel 4 or a respective switching valve 6a-6d associated with the wheel brake into a working chamber 37 of the pressure-generating unit of one of the at least one first and second main modules.
Regarding claim 15, a pressure sensor 19/49 is arranged to determine a pressure in a brake circuit of the first brake circuit and the second brake circuit.
Regarding claim 16, the first main module and/or the second main module is/are connected redundantly to two voltage sources 57/67.
Regarding claim 18, the system is operated such that, if at least first main module and second main module is exactly two main modules and one of the main modules fails, all wheel brakes of the vehicle are enabled to be operated in multiplex (MUX) operation by means of the respective pressure-generating unit of the non-failing main module, by virtue of the at least one connecting valve 40 in the connecting line being opened and the first and second brake circuits being connected to one another [0157]-[0160].
Regarding claim 21, further comprising an anti-lock braking system/electronic stability control (ABS/ESP) unit, wherein, in an event of failure of the ABS/ESP unit [0157], one of the main modules is able to perform brake force boosting and feedback control function for ABS/ESP at all wheel brakes of the vehicle through utilization of the connecting line [0157][0159][0160].
Regarding claim 22, a bypass valve circuit includes two connecting valves 40/23 in the connecting line with a central outlet valve 32 to a reservoir vessel 4.
Regarding claim 23, by opening the central outlet valve 32 and by retraction of a piston 36 of at least one of the pressure-generating units, further volume is able to be drawn in by opening at least one of the two connecting valves 23/40. Note the claim appears to only require a capability and does not specify where the further volume is drawn into.
Regarding claim 24, an actuating unit 200 that includes a piston-cylinder unit 80, wherein at least one piston of the piston-cylinder unit is adjustable by means of a brake pedal 1, wherein the piston-cylinder unit is connected via at least one hydraulic line 85 to at least one of the output lines of the main modules.
Regarding claim 25, the piston-cylinder unit of the actuating unit includes a single-circuit master cylinder 80 or a two-circuit tandem master cylinder, and wherein the actuating unit further comprises at least one isolating valve 81/82 that enables selectively opening or closing the at least one hydraulic line between a working chamber of the master cylinder or two working chambers of the two-circuit tandem master cylinder and one or two brake circuits.
Regarding claim 26, the at least one hydraulic line is closed off during normal operation by means of a normally open valve 81/82 and/or, in an emergency situation, a pressure is able to be transferred by means of the actuating device via the at least one hydraulic line into at least one of the brake circuits .
Regarding claim 28, each main module provides pressure feedback control in one brake circuit or two brake circuits, wherein in each case at least one wheel brake is arranged in each brake circuit. [0095] closed-loop.
Regarding claim 29, the main modules provide pressure feedback control for brake force boosting, blending, ABS/ESP, and/or driver assistance functions [0157].
Regarding claim 30, in the case of there being two or more wheel brakes, at least one of the main modules, in a multiplex mode, performs pressure feedback control simultaneously and/or in time-offset fashion [0160].
Regarding claim 34, each of the main modules is enabled to be utilized for pressure change in each of the brake circuits.
Claim(s) 1-2, 4-5, 7-8, 10, 15-16, 18-21, 24-26, 28-30 and 34 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Besier et al (US# 2019/0031165).
Besier et al disclose all the limitations of the instant claim including; a drive and braking system for a vehicle, comprising: at least a first main module 20 and a second main module 24 wherein each main module comprises a respective motor 36/40, a respective control unit 250/254, a respective pressure-generating unit 28/32, and a respective output line 272/278; wherein the first main module 20 is connected via its output line 272 to a first brake circuit 8, and the second main module 24 is connected via its output line 278 to a second brake circuit 12; and wherein the first and second brake circuits are selectively connectable to one another by means of a connecting line 290 that is able to be shut off by means of at least one connecting valve 100/364.
Regarding claim 2, in an event of failure of one pressure-generating unit of the first main module or the second main modules, the pressure-generating unit of the respective second main module or first main module is able to, by opening the at least one connecting valve 100, perform pressure change in the first and second brake circuits. Figure 5.
Regarding claim 4, the first 20 and second 24 main modules are not arranged on a bulkhead of the vehicle. [0044][0045] indicates that the actuation unit 160 is mounted to the bulkhead and modules 20/24 are mounted with structural separation, in a suitable free space in the vehicle so that noises in the passenger compartment can be avoided.
Regarding claim 5, a further module 160 is arranged spatially separately from the first and second main modules. [0044][0045].
Regarding claim 7, the two pressure-generating units of the at least first and second main modules are driven by their respective motors and are in the form of piston-type 28/32 or double-stroke piston-type pumps.
Regarding claim 8, the respective motor 36/40 adjusts the piston of the piston-type or double-stroke piston-type pump via a transmission mechanism [0037].
Regarding claim 10, for each of the at least first and second main modules, the respective output line is connected to a respective brake circuit, to which wheel brakes 8/12 are connected with the interposition of respective switching valves 112/134/124/142; wherein, when a respective switching valve is closed, pressure in the associated wheel brake is conserved, and, when one or several of the switching valves are open, a pressure build-up and/or pressure dissipation in the respective wheel brake(s) associated with the one or several of the switching valves is performed.
Regarding claim 15, a pressure sensor 88/92 is arranged to determine a pressure in a brake circuit of the first brake circuit and the second brake circuit.
Regarding claim 16, the first main module and/or the second main module is/are connected redundantly to two voltage sources [0072].
Regarding claim 18, the system is operated such that, if at least first main module and second main module is exactly two main modules and one of the main modules fails, all wheel brakes of the vehicle are enabled to be operated in multiplex (MUX) operation by means of the respective pressure-generating unit of the non-failing main module, by virtue of the at least one connecting valve 100 in the connecting line being opened and the first and second brake circuits being connected to one another [0069].
Regarding claim 19, if an electric drive motor is available for braking action at at least one axle of the vehicle [0058], the connecting valve(s) 100 is/are configured to be used to open the connecting line such that a pressure build-up in individual wheel brakes is able to be realized jointly by the pressure-generating units of the at least first and second main modules. Note the valve 100 is “configured to be used” as claimed.
Regarding claim 20, the motor 36 of at least one of the main modules is designed only for an anti-lock braking/electronic stability control feedback control function. Note the 112 rejection above.
Regarding claim 21, further comprising an anti-lock braking system/electronic stability control (ABS/ESP) unit, wherein, in an event of failure of the ABS/ESP unit [0157], one of the main modules is able to perform brake force boosting and feedback control function for ABS/ESP at all wheel brakes of the vehicle through utilization of the connecting line [0069].
Regarding claim 24, an actuating unit 160 that includes a piston-cylinder unit 164, wherein at least one piston of the piston-cylinder unit is adjustable by means of a brake pedal 172, wherein the piston-cylinder unit is connected via at least one hydraulic line 242/300 to at least one of the output lines of the main modules.
Regarding claim 25, the piston-cylinder unit of the actuating unit includes a single-circuit master cylinder or a two-circuit tandem master cylinder 164, and wherein the actuating unit further comprises at least one isolating valve 96/104 that enables selectively opening or closing the at least one hydraulic line between a working chamber of the master cylinder or two working chambers of the two-circuit tandem master cylinder and one or two brake circuits.
Regarding claim 26, the at least one hydraulic line is closed off during normal operation by means of a normally open valve 96/104 and/or, in an emergency situation, a pressure is able to be transferred by means of the actuating device via the at least one hydraulic line into at least one of the brake circuits .
Regarding claim 28, each main module provides pressure feedback control in one brake circuit or two brake circuits, wherein in each case at least one wheel brake is arranged in each brake circuit. [0012] closed-loop.
Regarding claim 29, the main modules provide pressure feedback control for brake force boosting, blending, ABS/ESP, and/or driver assistance functions [0058][0068].
Regarding claim 30, in the case of there being two or more wheel brakes, at least one of the main modules, in a multiplex mode, performs pressure feedback control simultaneously and/or in time-offset fashion [0061].
Regarding claim 34, each of the main modules is enabled to be utilized for pressure change in each of the brake circuits.
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.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zimmermann et al (US# 2019/0344769) in view of Satou et al (US# 2011/0156629).
Zimmermann et al disclose all the limitations of the instant claims with exception to the motor having 2x3 phases. Satou et al disclose an electrical vehicle component drive and further teach multiple sets of windings 11/12. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide 2 sets of 3 phase windings, as taught by Satou et al, in the device of Zimmerman et al to increase the fault resistance of the system, thereby ensuring brake function.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Besier et al (US# 2019/0031165) in view of Satou et al (US# 2011/0156629).
Besier et al disclose all the limitations of the instant claims with exception to the motor having 2x3 phases. Satou et al disclose an electrical vehicle component drive and further teach multiple sets of windings 11/12. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide 2 sets of 3 phase windings, as taught by Satou et al, in the device of Besier et al to increase the fault resistance of the system, thereby ensuring brake function.
Claim(s) 31-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zimmermann et al (US# 2019/0344769) in view of Bareiss (US# 2015/0283987).
Regarding claim 31, Zimmermann et al further disclose that the brake circuits can be connected to one another by means of a connecting line and open connecting valves 40/140 arranged in the connecting line, but lack the disclosure of, in a case of a need for fast build-up of brake pressure, both modules are used for the pressure build-up. Bareiss disclose a similar brake system and further teach the use of two pressure sources only when high pressures are required such as emergency braking. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use both the pressure sources of Zimmermann et al during emergency braking, such as taught by Bareiss, as it allows a reduction in size of the primary pressure device which improves economy, and facilitates installation.
Regarding claim 32, the respective motor of one of the main modules has only a level of drive power sufficient for an ABS and/or ESP feedback control function. Note the 112 rejection above.
Regarding claim 33, as modified, the at least one connecting valve(s) is/are opened, and the at least first and second main modules simultaneously adjust, or apply force to, respective pistons of the at least first and second main modules, which could be for build-up of pressure in the first and second brake circuits in an event of fading as well as normal braking. The claim language does not appear to require an active brake fade determination.
Claim(s) 31-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Besier et al (US# 2019/031165) in view of Bareiss (US# 2015/0283987).
Regarding claim 31, Besier et al further disclose that the brake circuits can be connected to one another by means of a connecting line and open connecting valve 100 arranged in the connecting line, but lack the disclosure of, in a case of a need for fast build-up of brake pressure, both modules are used for the pressure build-up. Bareiss disclose a similar brake system and further teach the use of two pressure sources only when high pressures are required such as emergency braking. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use both the pressure sources of Besier et al during emergency braking, such as taught by Bareiss, as it allows a reduction in size of the primary pressure device which improves economy, and facilitates installation.
Regarding claim 32, the respective motor of one of the main modules has only a level of drive power sufficient for an ABS and/or ESP feedback control function. Note the 112 rejection above.
Regarding claim 33, as modified, the at least one connecting valve(s) is/are opened, and the at least first and second main modules simultaneously adjust, or apply force to, respective pistons of the at least first and second main modules, which could be for build-up of pressure in the first and second brake circuits in an event of fading as well as normal braking. The claim language does not appear to require an active brake fade determination.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Besier et al (US# 2019/0031165) in view of Besier et al (US# 2017/0282877).
Besier et al disclose all the limitations of the instant claims with exception to the first main module having a first housing and the second main module having a separate second housing. Besier et al ‘877 disclose a similar brake system and further teach two modules HCU1/HCU2 having separate housings. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide each module of Besier et al ‘165 with a separate housing, as taught by Besier et al ‘877 as an obvious variant which provides a greater degree of modularity and/or installation options.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Besier et al (US# 2019/0031165) in view of Michels et al (US# 2020/0055506).
Besier et al disclose an actuating unit having an electrical brake pedal (figure 7) or a go-stop switch, wherein the control units 250/254 of the first and second main modules receive pressure setpoints from an outside via a communication connection. Besier et al lack the specific details of the control units being connected to a central control unit by redundant data lines. Michels et al disclose a similar brake system and further teach a central control unit ECU-3 communicating with other control units ECU-1/ECU-2 via redundant bus connections BUS-1/BUS-2. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a pedal control unit ECU-3 and redundant buses, as taught by Michels et al in the system of Besier et al as an obvious means of providing actuating data to the controllers in a redundant and therefore fault tolerant form.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zimmermann et al (US# 2019/0344769) in view of Feigel et al (US# 2016/0200307).
Zimmermann et al disclose all the limitations of the instant claims with exception to during pressure dissipation via the outlet valve 7a-7d, a piston 36 of the pressure-generating unit is stationary, or the piston is moved during the pressure dissipation for volume being replenished, wherein pressure dissipation is performed simultaneously in two wheel brakes of the first brake circuit or two wheel brakes of the second brake circuit. [0092] discloses an axle multiplex method setting pressures on an axle-by-axle basis, but lack the specific details. Feigel et al disclose a similar brake system and further teach pressure dissipation via outlet valves 8, a piston 34 of the pressure-generating unit is stationary, or the piston is moved during the pressure dissipation for volume being replenished, wherein pressure dissipation is performed simultaneously in two wheel brakes of the first brake circuit or two wheel brakes of the second brake circuit [0052]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the pressure dissipation taught by Feigel et al, in the brake system of Zimmermann et al to provide appropriate pressure dissipation with the outlet valves providing rapid release and the multiplex mode providing a conservation of fluid.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zimmermann et al (US# 2019/0344769) in view of Irwan et al (US# 2018/0162339).
Zimmermann et al further discloses sensors 44 configured to determine a respective rotational angle α of the respective motor, but lack the disclosure of a respective motor current i, and a respective temperature T (claim 13), wherein feedback control of a piston movement in the respective pressure-generating unit of a main module of the at least first main module and second main module is realized by means of the respective position α, respective motor current i and/or the respective temperature T (claim 14). Irwan et al discloses a similar system and further teach sensing motor current i, and a temperature T [0011] for motor feedback control. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use current and temperature for feedback in the control of Zimmermann et al, as taught by Irwan et al to improve the accuracy of the motor actuation, thereby increasing system performance.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Besier et al (US# 2019/0031165) in view of Irwan et al (US# 2018/0162339).
Besier et al further discloses sensors (figures) configured to determine a respective rotational angle α of the respective motor, but lack the disclosure of a respective motor current i, and a respective temperature T (claim 13), wherein feedback control of a piston movement in the respective pressure-generating unit of a main module of the at least first main module and second main module is realized by means of the respective position α, respective motor current i and/or the respective temperature T (claim 14). Irwan et al discloses a similar system and further teach sensing motor current i, and a temperature T [0011] for motor feedback control. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use position, current and temperature for feedback in the control of Besier et al, as taught by Irwan et al to improve the accuracy of the motor actuation, thereby increasing system performance.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zimmermann et al (US# 2019/0344769) in view of Semsey et al (US# 2012/0130581).
Zimmermann et al disclose all the limitations of the instant claim with exception to an electrical connection between a superordinate control device and/or at least one traction motor, on the one hand, and the main modules and/or the further module, on the other hand. Semsey et al disclose a vehicle control system and further teach at least one superordinate control device 9 connected with an electrical connection to main modules 6/12. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the brake and slip controller configuration and control taught by Semsey et al with the brake system of Zimmermann et al to provide energy efficiency by allowing regenerative braking and improve dynamic stability and reduce friction abrasion, thereby improving performance.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Besier et al (US# 2019/0031165) in view of Semsey et al (US# 2012/0130581).
Besier et al disclose all the limitations of the instant claim with exception to an electrical connection between a superordinate control device and/or at least one traction motor, on the one hand, and the main modules and/or the further module, on the other hand. Semsey et al disclose a vehicle control system and further teach at least one superordinate control device 9 connected with an electrical connection to main modules 6/12. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the brake and slip controller configuration and control taught by Semsey et al with the brake system of Besier et al to provide energy efficiency by allowing regenerative braking and improve dynamic stability and reduce friction abrasion, thereby improving performance.
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, 16-17, 31-32 and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17, 20, 23, and 27-28 of U.S. Patent No. 11685355. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Application claim 1 is anticipated by patent claim 23 or 27
Application claims 31 and 34 are anticipated by patent claim 27
Application claim 32 is anticipated by patent claim 28
Application claim 16 is an obvious combination of patent claims 23 or 27 and 20
Application claim 17 is an obvious combination of patent claims 23 or 27 and 17.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY T KING whose telephone number is (571)272-7117. The examiner can normally be reached 10:30-5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Siconolfi can be reached at 571 272-7124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRADLEY T KING/Primary Examiner, Art Unit 3616
BTK
