DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19, 26, 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, and 8 of U.S. Patent No. 12,202,377. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application are broader recitation of the subject matter of the respective claims in the ‘377 patent. Thus, the invention of the claims in the ‘377 patent is in effect a "species" of the invention of the claims in the instant application. Since it has been held that the generic invention is anticipated by the species these claims are not patentably distinct. See In re Goodman, 29 USPQ2d 2010 (Fed Cir.1993.)
Instant application
U.S. Patent No. 12,202,377
19
1, 6, 8
26
3-5
28
5
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 30-38 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 30 recites the limitation "the boosting" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 33 recites “determining, by a controller” and “charging, by a controller” it is unclear if this is the same controller or a second separate controller.
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.
(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 19-21, and 26-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsubara (US 10951041).
Regarding claim 19, Matsubara discloses a vehicle (system mounted on a vehicle, Col. 3 ln 57-61) comprising:
a first battery (22, Col. 3 ln 67- Col.4 ln 3) ;
a motor (10) configured to supply a driving force for the vehicle (col. 3 ln 57-61);
an inverter (14) configured to convert power to supply to the motor (10), the inverter being connected to the first battery (22)(see fig. 1, col. 2 ln 8-10, col. 4 ln 1-3, 14-17);
a second battery (18) connected (indirectly) to the inverter (14)(see fig. 1, col. 3 ln 62-cl. 4 ln 3); and
a controller (control unit 24) configured to charge the first battery (22) using power from the second battery (18) via the inverter (14)(control unit 24, motor control unit 32 outputs power of battery 18 from inverter and transmits it to battery 22 through the coil of motor 10 and the second inverter 14, col. 8 ln 66- col. 9 ln 10, col. 9 ln 42-48, col. 8 ln 28-41).
Regarding claim 20, Matsubara discloses wherein the second battery (18) is connected to the inverter (14) through an inductor (coils 10u-10e each include a reactor component lying on the path between battery 18 and inverter 14, Col. 3 ln 53-56, Col. 3 ln 62-col.4 ln 3).
Regarding claim 21, Matsubara discloses wherein the inductor (reactor components of 29u, 10v, 10w) comprises at least one winding coil (coils 10u-w) of the motor (10).
Regarding claim 26, Matsubara discloses wherein the controller (control unit) is further configured to perform charging based on a state of the motor (10) (control unit creates switching signals based on motor information, col. 4 line 49-53, and charging battery 22 is performed while the motor is maintained in a stationary state, col. 8 ln 66 – col. 9 ln 5, col. 4 ln 45-48, desirable that the motor be stationary during external charging).
Regarding claim 27, Matsubara discloses, wherein the controller (control unit) further configured to control the motor (10) to remain in a non-rotating state during the charging (qaxis current is set to zero so output torque becomes zero, maintaining motor 10 stationary; rotative speed of motor 10 becomes zero. Col. 9 ln 37-42, col. 10 ln 30-35, fig. 9 or the motor may be stopped by a mechanical brake col. 12 ln 35-38).
Regarding claim 28, Matsubara discloses, wherein the controller (control unit) is further configured to perform the charging when the motor (10) is not supplying the driving force (output torque of motor 10 is zero during charging, col. 9 ln 39-42, col. 10 ln 30-33).
Regarding claim 29, Matsubara discloses a power supply system (system mounted on the vehicle) comprising:
a first battery (22);
a second battery (18); and
a boost converter (motor and inverters) configured to boost a voltage of the second battery (18) to a voltage of the first battery (22)(in regeneration mode, inverter 12 powering, inverter 14 regenerative, together with the motor coils, transmit power to battery 22 even when the supply side, battery 18, has a potential lower than the receiving side battery 22, thereby the lower source voltage is stepped up to the receiving battery voltage, see col. 11 ln 12-17, col. 1 ln 49-56, col. 10 ln 45-58) wherein the boost converter comprises a motor (10) and an inverter (12,14).
Regarding claim 30, Matsubara wherein the motor (10) comprises at least one winding coil (10u – 10w) that functions as an inductor for the boosting (coils 10u-10w each include a reactor component and carry the transferred current. Col. 3 ln 53-56, col. 9 ln 42-46).
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 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Matsubara as applied to claims above, and further in view of Lee (US 10358041) .
Regarding claim 22, Matsubara discloses claim 19-21 but fails to teach wherein the controller is further configured to determine the at least one winding coil from among multiple phase coils of the motor by controlling the inverter. However, Lee teaches motor coils L1, L2, L3 as the boost inductors and inverter switches S1-S6 as the boost switches, with each coil and its switch pair forming a separate boost group (see col. 9 ln 16-37; fig. 10); Lee teaches selectively operating some or all of the parallel boost groups according to desired power allows high efficiency operating from low to high output power (col. 7 ln 7-22; fig. 6); and that the motor/inverter embodiment operates in the same manner as the converter of fig. 4 (col. 10 ln 29-33). It would have been obvious to a person of ordinary skill in the art before the effective filing date to configure Matsubara’s controller to select which phase coils carry the transfer current by controlling the inverter switching, as lee teaches, because doing so would operate the power conversion at high efficiency across the range of charging power (Lee Col. 7 ln 15-18, fig. 6). Thereby applying a known technique to a known device ready for improvement with a reasonable expectation of success.
Regarding claim 23, Matsubara, in combination with Lee teach claim 22. Matsubara further teaches wherein the controller is further configured to control the inverter by turning on a switch of the inverter to accumulate energy in the at least one winding coil (inverter switching elements whose on state drives current through the motor coils, col. 4 ln 18-27).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Matsubara and Lee as applied to claims 22-23 above, and further in view of Miyazaki (US 7439697).
Matsubara in view of Lee teach charging the receiving battery from a supply side at lower potential (col. 11 ln 12-17) but fails to explicitly teach that turning off the switch releases the accumulated winding energy to deliver the boosted voltage to the battery, wherein the controller is further configured to control the inverter by turning off the switch to supply power, with a voltage boosted from a voltage of the second battery by the energy accumulated in the at least one winding coil, to the first battery. Miyazaki teaches that after energy is stored in the reactor, power is supplied with the reactor acting as a current source (i.e., the stored energy adds to the source voltage to produce a boosted output, see col. 1, ln 37-42). It would have been obvious for the controller to control the inverter by turning off the switch to release stored winding energy to the first battery at the boosted voltage because Miyazaki identifies release of reactor energy as a current source as is shown to be conventional technique by Miyazaki, such a modification would have been made before the effective filing date with a reasonable expectation of success.
Claims 33-37 are rejected under 35 U.S.C. 103 as being unpatentable over Matsubara (US 10951041) and further in view of Miyazaki (US 7439697).
In regards to claim 33, Matsubara discloses a method of charging a battery (18, 22) in a vehicle (system mounted in a vehicle), the method comprising: charging, by a controller, a first battery (22) using power from a second battery (18) via an inverter (14) based on the state of the motor (10), the inverter (14) being configured to convert power to supply to the motor (10)(col. 3 ln 57-61, col. 8 ln 66-col. 9 ln 10, col. 9 ln 42-48), but fails to teach or discuss determining, by a controller, a state of a motor of the vehicle, the motor being configured to supply driving force for the vehicle.
However, Miyazaki teaches a controller that obtains motor output from the torque command value and motor rotation speed, determines whether the rotation speed is low or high, and selects boosting mode (second switch unit on, DC current through the neutral point) based on that determination (fig. 7, col. 11 ln 60-65, col. 12 ln 4-9, 17-25). It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified Matsubara’s controller determining the motor state (rotation speed) and initiate the battery to battery charging based on it because Matsubara’s transfer requires the motor to be held stationary (col. 4 ln 45-48, col. 9 ln 37-42) and Miyazaki teaches gating the winding-based boost operation on a determined motor speed state. Such a modification would have implemented the improvement technique Miyazaki with a reasonable expectation of success.
Regarding claim 34, Matsubara, as combined with Miyazaki teaches further comprising controlling the motor (10) to remain in a non-rotating state during the charging (motor is stationary and the rotation speed is zero, col. 9 ln 37-42).
Regarding claim 35, Matsubara, as combined with Miyazaki teaches wherein the charging is performed when the motor (10) is not supplying the driving force (when the output torque is zero, col. 9 ln 39-42).
Regarding claim 36, Matsubara as combined with Miyazaki teaches wherein the charging comprises turning on a switch of the inverter to accumulate energy in at least one winding coil of the motor (10u-10w) (inverter switching elements whose on state drives current through the motor coils, col. 4 ln 18-27).
Regarding claim 37, Matsubara in view of Miyazaki above, teach charging the receiving battery from a supply side at lower potential (col. 11 ln 12-17) but fails to explicitly teach that turning off the switch releases the accumulated winding energy to deliver the boosted voltage to the battery, wherein the controller is further configured to control the inverter by turning off the switch to supply power, with a voltage boosted from a voltage of the second battery by the energy accumulated in the at least one winding coil, to the first battery. Miyazaki teaches that after energy is stored in the reactor, power is supplied with the reactor acting as a current source (i.e., the stored energy adds to the source voltage to produce a boosted output, see col. 1, ln 37-42). It would have been obvious for the controller to control the inverter by turning off the switch to release stored winding energy to the first battery at the boosted voltage because Miyazaki identifies release of reactor energy as a current source as is shown to be conventional technique by Miyazaki, such a modification would have been made before the effective filing date with a reasonable expectation of success.
Allowable Subject Matter
Claim 25 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 31-32, and 38 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art alone or in combination fail to teach or suggest the limitation recited in claims 25, 32, and 38 wherein the inverter comprises a diode and a resistor, both connected in parallel to the first battery. And the limitation in claim 31 wherein the inverter comprises a switch configured to accumulate energy in the inductor when turned on, and to supply the accumulated energy, along with energy from the second battery, to the first battery when turned off.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See pto-892 for a list of relevant prior art including, Berels, US 6791295 B1: a controller convers a low voltage battery voltage to a high voltage via converter and charges the high voltage battery and Kusaka, US 6806671: low voltage battery connected through reactor to the motor neutral point, inverter control sets voltage to charge the low voltage battery, relay control based on motor output, efficiency, and regeneration and Prasad, US 12397658: battery to battery transfer via multilevel inverter and motor.
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/C.A.M./ Examiner, Art Unit 3614
/JASON D SHANSKE/ Supervisory Patent Examiner, Art Unit 3614
