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 1, 3-18, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-28, and 20 of copending Application No. 19/017,333 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the instant Applicant falls within the scope of 19/017,333 (claim version 05/26/2026) (Hereinafter “333”),
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, 333 discloses “a battery managing apparatus comprising: a profile acquisition unit configured to acquire a plurality of first profiles, each first profile of the plurality of first profiles relating a measured voltage and a measured capacity of a battery of a plurality of batteries included in a battery pack; and a diagnosis unit configured to: calculate a plurality of target ratios, each target ratio corresponding to a first profile of the plurality of first profiles and a reference profile, the reference profile relating capacity and voltage of a reference electrode, calculate a plurality of target values, each target value based on a target ratio of the plurality of target ratios, generate a distribution profile representing a distribution off the plurality of target values, determine a determination result indicating whether the distribution profile satisfies a predetermined condition, and diagnose a state of the battery pack as in a degradation balance state or a degradation imbalance state according to the determination result (claim 1), and operate a pack balancing function for resolving the degradation imbalance state or output an alarm, when the state of the battery pack is diagnosed as the degradation imbalance state (claim 15).
Claim 3: claim 3.
Claim 4: claim 4.
Claim 5: claim 5.
Claim 6: claim 6.
Claim 7: claim 7.
Claim 8: claim 8.
Claim 9: Claim 9.
Claim 10: claim 10.
Claim 11: claim 11.
Claim 12: claim 12.
Claim 16: claim 16. Claim 17: claim 17.
Claim 18: claim 18.
Claim 20: claim 20.
Response to Arguments
Applicant’s arguments and amendment to claims filed on 06/26/2026 with respect to 35 USC 101 and 35 USC 103 rejections have been fully considered and are sufficient to overcome previous rejections. The rejections of the claims under 35 USC 101 and 35 USC 103 have been withdrawn.
Regarding 35 USC 101, the claims as a whole or in ordered combination shows an improvement of the technical field as disclosed in MPEP 2106.05(a).
Regarding the Double Patenting Rejections of claims 1, 3-18, and 20, Applicants submits that a terminal will be filed to overcome this provisional non-statutory double patenting rejection upon a determination that the claims are otherwise allowable (see Applicants’ Remarks: Page 9). No Terminal Disclaim has been filed Tin the response filed on 06/26/2026. The Double Patenting Rejection remains outstanding.
Conclusion
Claims 1-13, 16-18, and 20 are patentably distinguishable over the prior art of record. Regarding claim 1, the closest prior art of record either alone or in combination fails to anticipate or render obvious the combination wherein “determine a determination result indicating whether the distribution profile satisfies a predetermined condition…operate a pack balancing function for resolving the degradation imbalance state, when the state of the battery pack is diagnosed as the degradation imbalance state” in combination with other limitations in the claims as defined by Applicants.
Claims 2-13, 16, and 17 depend from claim 1 and therefore are also patentably distinguishable over the prior art of record.
Regarding claim 18, the closest prior art of record either alone or in combination fails to anticipate or render obvious the combination wherein “determining a determination result indicating whether the distribution profile satisfies a predetermined condition…operating a pack balancing…imbalance state” in combination with other limitations in the claims as defined by Applicants.
Regarding claim 20, the closest prior art of record either alone or in combination fails to anticipate or render obvious the combination wherein “determining a determination result indicating whether the distribution profile satisfies a predetermined condition…operating a pack balancing…imbalance state” in combination with other limitations in the claims as defined by Applicants.
THIS ACTION IS MADE FINAL. 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHUONG HUYNH whose telephone number is (571)272-2718. The examiner can normally be reached M-F: 9:00AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew M Schechter can be reached at 571-272-2302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHUONG HUYNH/Primary Examiner, Art Unit 2857 July 18, 2026
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