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 .
Application Status
Claims 1-20 are pending and have been examined in this application.
This communication is the first action on merits.
Information disclosure was filed and reviewed by examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 19-20 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 19, the recited limitation “a hybrid vehicle comprising the device of claim 13.” is indefinite. claim 13 recites the following limitation “a hybrid vehicle comprising the device of claim 9”. It is unclear to the examiner if the hybrid vehicle in claim 19 is a different hybrid vehicle of claim 13 and if the device of claim 9 in claim 13 is different from the device of claim 13 in which claim 19 is comprised of.
In claim 20, the recited limitation “a vehicle comprising the device of claim 13.” is indefinite. claim 14 also recites the following limitation “a vehicle comprising the device of claim 9”. It is unclear to the examiner if the vehicle in claim 20 is a different vehicle of claim 14 and if the device of claim 9 in claim 14 is different from the device of claim 13 in which claim 20 is comprised of.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 17/844,836 now patent No. 12091012 and claims 1, 3-9, and 11-17 of application 17,828/693 now patent No. 12172643. Although the claims at issue are not identical, they are not patentably distinct from each other because they have the same scope.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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.
(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.
Claims 5 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morisawa Kunio (JP2001169402A).
NOTE: see NPL machine translation of JP2001169402A for mapping of the claims.
With respect to claim 5, Morisawa discloses controlling, by a controller, the hybrid vehicle to start a braking operation in response to a brake pedal operation signal (see at least [0013-0015], [0026], and [0060]); after the braking operation of the hybrid vehicle is started, controlling, by the controller, a second motor that is connected to an output shaft of a transmission of the hybrid vehicle to perform regenerative braking (see at least [0013-0015], [0026], and [0060]); determining, by the controller, whether a speed of the hybrid vehicle is less than a vehicle speed reference value (see at least [0043-0047]), wherein, when the speed of the hybrid vehicle is less than the vehicle speed reference value, the controller is configured to control a first motor connected to an input shaft of the transmission to perform the regenerative braking (see at least [0043-0047]).
With respect to claim 15, it is a device claim that recite substantially the same limitations as the respective method claim 1. As such, claim 15 is rejected for substantially the same reasons given for the respective method claim 1 and is incorporated herein.
Allowable Subject Matter
Claims 1-4, 6-14, and 16-20 would be allowable if rewritten to overcome the rejections under double patenting and/or 35 USC 112(b) set forth in this office action and to include all of the limitations of the base claim and any intervening claims.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDALLA A KHALED whose telephone number is (571)272-9174. The examiner can normally be reached on Monday-Thursday 8:00 Am-5:00, every other Friday 8:00A-5:00AM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Faris Almatrahi can be reached on (313) 446-4821. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABDALLA A KHALED/Examiner, Art Unit 3667