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 .
Interview Practice
Beginning October 2025, the USPTO is implementing an updated interview practice for patent examination: One interview per new application or RCE (Request for Continued Examination, see 37 CFR 1.114 and MPEP 706.07(h)) will generally be granted. Additional interview(s) which serve to advance prosecution may be granted with supervisory approval.
Applicants are encouraged to avail themselves of the interview available, as discussions between an Applicant and an Examiner are often indispensable to advance the prosecution of a patent application by improving the mutual understanding of specific issues therein.
To request an interview, Applicant may, preferably, contact the Examiner at the telephone number provided at the end of this Office Action and/or Applicant may file an Applicant Initiated Interview Request (AIR) form (PTOL-413A), which may be found here: https://www.uspto.gov/patents/apply/forms.
It may be useful to also file an Authorization for Internet Communications form (PTO/SB/439, also found at the link provided above), which would allow the Examiner to substantively respond to Applicant using electronic communication (i.e., via email).
If an interview is desired, it is advisable to request the interview sufficiently ahead of the due date of any response to an outstanding Office Action, to allow adequate time to schedule, prepare for, and hold the interview. Submission of an Interview Agenda by Applicant is also generally required (see MPEP 713.01(IV)).
Requests for interviews after final rejection may be denied and generally will be denied in cases where the interview is merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search (see MPEP 713.09).
Duty of Disclosure
Applicant is respectfully reminded of their duty to disclose to the Office all information known to that individual to be material to patentability. See 37 CFR 1.56, MPEP 2001.
Note that Applicant has filed four (4) counterpart applications—19/037,314; 19/037,315; 19/037,317; and 19/038,733—disclosing very similar, if not identical subject matter, with claims overlapping in scope to those in the instant application. However, none of these applications has been identified by Applicant for review and consideration by the Examiner in the instant application.
These cases have been reviewed for Double Patenting purposes; though neither statutory nor obviousness-type double patenting issues appear to be present currently (relative to the instant application), Applicant is strongly encouraged to avoid such issues in amending the claims in this and the co-pending applications.
Preliminary Formalities
Claims 1-4, as filed 01/27/2025, are under examination.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
A certified copy of JP 2024-048863, filed 27 Mar 20224, has been received.
Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Appropriately descriptive titles may result in slightly longer titles, but the loss in brevity of title will be more than offset by the gain in its informative value in indexing, classifying, searching, etc. (MPEP § 606.01).
Claim Objections
Claim 1 is objected to because of the following informalities. Appropriate correction is required.
Regarding claim 1, lines1 23-24, the limitation “is less than predetermined electric power” is grammatically incorrect (an article is missing). It should be amended to, e.g., —is less than a predetermined electric power—.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts in support
thereof, and such claim shall be construed to cover the corresponding structure, material,
or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are as follows.
Claim 1:
“an electric power source connection member,” which may be interpreted as, e.g., —a means for connecting an electric power source— but without any corresponding structure disclosed (see associated rejection under 35 U.S.C. §112(a) below);
“a first connection-disconnection device,” which may be interpreted as, e.g., —a first means for connecting [and] disconnecting— and appears to correspond to “a contactor” (see p. 10, ll. 4-7 of the originally-filed Specification of 01/27/2025);
“a second connection-disconnection device,” which may be interpreted as, e.g., —a second means for connecting [and] disconnecting— and appears to correspond to “a contactor” (see p. 10, ll. 4-7).
N.B. – The term “electric power control unit” is not being interpreted under §112(f) as the claim does appear to recite sufficient structure to perform the recited function—i.e., “the electric power control unit comprises: a first full-bridge circuit […] [and] a second full-bridge circuit […]”.
Claim 2:
“a third connection-disconnection device,” which may be interpreted as, e.g., —a third means for connecting [and] disconnecting— and appears to correspond to “a contactor” (see p. 13, ll. 8-9).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, line2 9, the limitation “an electric power source connection member that connects the electric power control unit to an external electric power source” appears to comprise subject matter which was not described in the specification as originally filed.
As discussed above, the limitation appears to invoke, and is being interpreted under, 35 U.S.C. §112(f).
However, the specification fails to make clear what a “an electric power source connection member” may be or what corresponding structure(s) it may comprise. The specification discusses this feature on, e.g., p. 6, ll. 20-25 but, though the feature is named, the specification does not provide a written description of what it may be or what corresponding structure(s) it may comprise.
Thus, it is found that the subject matter noted above was not described in the specification as originally filed in such a way as to reasonably convey to one skilled in the relevant art that the inventor had possession of the claimed invention.
Regarding claims 2-4, they are dependent on claim 1 and thereby inherit the deficiencies thereof.
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 1-4 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 pre-AIA the applicant regards as the invention.
Regarding claim 1, lines3 6-8, the limitation “an electric power control unit that is connected to the electric power storage device and the rotary electric machine and controls electric power transfer of each […]” is vague and indefinite. The limitation comprises a run-on phrase and fails to clearly set forth the structural relationships between the various claim features.
If appropriately descriptive of the invention, the phrase may be more clearly written as: —an electric power control unit that is connected to the electric power storage device and to the rotary electric machine, the electric power control unit controlling
Regarding claim 1, line 9, the limitation “an electric power source connection member that connects the electric power control unit to an external electric power source” is vague and indefinite. The claim fails to make clear what the “electric power source connection member” may be and how it can “connect[] the electric power control unit to an external electric power source” as claimed. As discussed above, the limitation invokes and is being interpreted under 35 U.S.C. §112(f) but the specification fails to make clear what structure(s) may correspond to the claimed feature.
Regarding claim 1, lines 12-14, the limitations “both ends of the first coil,” “both ends of the second coil” (emphasis added) are recited. There is insufficient antecedent basis for these limitations in the claim, thereby rendering the claimed invention vague and indefinite.
Regarding claim 1, lines 15-16, the limitation “one end of the first coil” is vague and indefinite. The claim fails to make clear whether the “one end of the first coil” may be comprised by, or is separate and distinct from, the “both ends of the first coil” previously recited.
Regarding claim 1, line 18, the limitation “one end of the second coil” is vague and indefinite. The claim fails to make clear whether the “one end of the second coil” may be comprised by, or is separate and distinct from, the “both ends of the second coil” previously recited.
Regarding claim 1, lines 19-21, the limitation “the electric power source connection member is connected to both ends of each of the first connection-disconnection device and the second connection-disconnection device” is vague and indefinite.
First, the limitation “both ends of each of the first connection-disconnection device and the second connection-disconnection device” is recited. There is insufficient antecedent basis for this limitation in the claim, thereby rendering the claimed invention vague and indefinite.
Second, and relatedly, the claim fails to make clear how “the electric power source connection member” may be “connected to” multiple (presumably, four?) “ends” of the “device[s]”. Said differently, the claim fails to make clear the structural relationships between the various features, including, e.g., what the input(s) and output(s) to the “device[s]” may be.
Regarding claim 2, lines 5-7, the limitation “a third connection-disconnection device that is connected between the electric power source connection member and the first connection-disconnection device or the second connection-disconnection device” (emphasis added) is vague and indefinite. The claim fails to make clear what “connect[ions]” are required and “connect[ions]” are alternative(s) or optional.
If appropriately descriptive, the limitation may be amended as: —a third connection-disconnection device that is connected between the electric power source connection member and either i) the first connection-disconnection device or ii) the second connection-disconnection device—.
Regarding claims 3, 4, the limitation “when the first coil and the second coil are connected in parallel, the electric power control unit sets a flow direction in the first coil and the second coil of a current supplied from the external electric power source such that magnetic fluxes of the first coil and the second coil that are magnetically coupled cancel each other out” is vague and indefinite.
First, the limitation is generally narrative and, consequently, it is unclear what exactly is being claimed.
Second, and relatedly, the claim fails to make clear what a “flow direction […] such that magnetic fluxes […] cancel each other out” may be or how such a “flow direction” may be determined.
The limitation recites function rather than structure. It is noted that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Furthermore, it must be noted that “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). See MPEP § 2114(I).
Third, the claim fails to make clear the referents of the term “that”—i.e., it fails to make clear what features are “magnetically coupled”.
Regarding claims 2-4, they are dependent on claim 1 and thereby inherit the deficiencies thereof.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references each disclose an electric apparatus comprising a rotary electric machine with an electric power control unit comprising first and second full-bridge circuits.
Applicant, in preparing a response, should fully consider each of the references in its entirety as potentially teaching all or part of the claimed invention.
Conclusion
Applicant should, in response to this Office Action, provide support for all language added to any original claims on amendment and any new claims. See MPEP 2163(II)(A). That is, Applicant should specifically note the page(s) and line number(s) in the original specification and/or feature(s) in the original drawing figure(s) where support for newly added claim language may be found. No new matter may be added. See 35 U.S.C. §132(a).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. MIKAILOFF whose telephone number is (571) 270-7894. The examiner can normally be reached Mon. - Thurs. 10am - 6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, T.C. PATEL can be reached at (571) 272-2098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S. MIKAILOFF/Examiner, Art Unit 2834
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
1 Using line numbers provided by Applicant in the claims filed 01/27/2025.
2 Using line numbers provided by Applicant in the claims filed 01/27/2025.
3 Using line numbers provided by Applicant in the claims filed 01/27/2025.
Prosecution Insights