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 .
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 pre-AIA 35 U.S.C. 112, 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 limitations are: “torque management system” (line 7 of claim 1) and “energy management system” (lines 9-10 of claim 1).
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(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 1-7 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 limitations “torque management system” (line 7 of claim 1) and “energy management system” (lines 9-10 of claim 1) invoke 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. For example, it is unclear whether each of the “torque management system” and “energy management system” is implemented by hardware and/or software of the claimed “vehicle control unit,” and it is unclear what structure, if any, is intended to be included by the “vehicle control unit” via inclusion of each of the “torque management system” and “energy management system,” especially since Applicant’s disclosure only defines the “vehicle control unit” by requiring inclusion of the “torque management system,” “energy management system,” and a “speed controller” (of which the written description also fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function), and respective functions thereof. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If Applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, Applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim limitation “speed controller” (line 9 of claim 1) has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the term is not described structurally, or otherwise defined, by Applicant’s specification, is not shown by Applicant’s drawing, and appears to have an ordinary meaning of nothing more than “thing that controls” or “means for controlling.” The written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. For example, it is unclear whether the “speed controller” is implemented by hardware and/or software of the claimed “vehicle control unit,” especially since Fig. 1 does not show a “speed controller,” and especially since Fig. 1 depicts the “vehicle control unit” via a dashed line representative of nothing more than a “boundary” according to the “key” of the figure. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b).
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2018/0111496 to Cholewa et al. (hereinafter: “Cholewa”).
With respect to claim 1, Cholewa teaches an electric heavy vehicle (e.g., 10) (apparent from at least Fig. 1 in view of at least ¶ 0002-0004 & 0016-0017) having [“having” is understood to be an open-ended transitional phrase of the preamble of the claimed “electric heavy vehicle” (e.g., see: MPEP 2111.03_I & 2111.03_IV)] a system for managing regenerative braking power when the electric heavy vehicle descends on a downward grade by managing speed of the electric heavy vehicle (apparent from at least Figs. 3-5 in view of at least ¶ 0030-0034 & 0042-0050, the haul truck 10 includes structure, definable as a “system,” structured to perform functions to control generation of regenerative braking power 60 (e.g., “managing regenerative braking power”) based on setting of a regenerative torque target 134 for a regenerative braking system of the haul vehicle 10 and corresponding control of a maximum speed of the haul vehicle 10 (e.g., “by managing speed of the electric heavy vehicle”) at times including when the haul vehicle 10 travels on a downhill grade (e.g., “when the electric heavy vehicle descends on a downward grade”); also, note that “for managing regenerative braking power when the electric heavy vehicle descends on a downward grade by managing speed of the electric heavy vehicle” amounts to a recitation of intended use or purpose without reciting any distinct definition of any limitation of the claimed “electric heavy vehicle” such that “for managing regenerative braking power when the electric heavy vehicle descends on a downward grade by managing speed of the electric heavy vehicle” is not a limitation and is of no significance to claim construction (e.g., see: MPEP 2111.02); also, note that apparatus claims cover what a device is, not what a device does, and a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim, and “for managing regenerative braking power when the electric heavy vehicle descends on a downward grade by managing speed of the electric heavy vehicle” is only directed at the manner in which the claimed “electric heavy vehicle” is intended to be employed], the system comprising: an electric motor (90) disposed on the electric heavy vehicle (apparent from at least Fig. 4); a vehicle control unit (e.g., 130) disposed on the electric heavy vehicle (apparent from at least Figs. 4 & 5) and operatively connected with the electric motor (apparent from at least Fig. 4), wherein the vehicle control unit comprises: a torque management system [as depicted by at least Figs. 3-5 and as discussed by at least ¶ 0048-0050 (also see claim 12 of Cholewa), the vehicle controller 130 is structured to perform functions to manage the regenerative torque target 134 for the regenerative braking system, such that the vehicle controller 130 includes structure and function definable as a “torque management system” under a broadest reasonable interpretation], a speed controller operatively connected with the torque management system [as depicted by at least Figs. 3-5 and as discussed by at least ¶ 0048-0050 (also see claim 12 of Cholewa), the vehicle controller 130 is structured to perform functions to control the maximum speed of the haul vehicle 10, such that the vehicle controller 130 includes structure and function definable as a “speed controller” under a broadest reasonable interpretation, where said “speed controller” is necessarily functionally linked (e.g., “operatively connected”) with the aforementioned “torque management system” by virtue of each being included by the vehicle controller 130 for performing respective functions], and an energy management system operatively connected with the torque management system [as depicted by at least Figs. 3-5 and as discussed by at least ¶ 0043-0051, the vehicle controller 130 includes structure and function definable as an “energy management system” under a broadest reasonable interpretation, where said “energy management system” is necessarily functionally linked (e.g., “operatively connected”) with the aforementioned “torque management system” by virtue of each being included by the vehicle controller 130 for performing respective functions]; and battery component (e.g., 14) disposed on the electric heavy vehicle (apparent from at least Fig. 4) and operatively connected with the torque management system (apparent from at least Figs. 4 & 5).
With respect to claim 2, Cholewa teaches the electric heavy vehicle of claim 1 wherein the electric motor is a DC electric motor (apparent from at least Fig. 4 in view of at least ¶ 0037).
With respect to claim 3, Cholewa teaches the electric heavy vehicle of claim 1 wherein the electric motor is an AC electric motor (as discussed by at least ¶ 0040).
With respect to claim 4, Cholewa teaches the electric heavy vehicle of claim 1 further comprising: a set of sensors disposed on the electric heavy vehicle and operatively connected with the speed controller (apparent from at least Figs. 4 & 5 in view of at least ¶ 0027-0028, 0030, 0032, 0034-0035, 0043 & 0049).
With respect to claim 5, Cholewa teaches the electric heavy vehicle of claim 1 further comprising: a display component disposed on the electric heavy vehicle and operatively connected with the torque management system (apparent from at least Figs. 4 & 5 in view of at least ¶ 0028, 0034, 0036, 0043 & 0047).
With respect to claim 6, Cholewa teaches the electric heavy vehicle of claim 5 wherein the display component comprises an electromagnetic wave emitter disposed on the electric heavy vehicle operatively connected with the torque management system (apparent from at least ¶ 0028, 0036 & 0043).
With respect to claim 7, Cholewa teaches the electric heavy vehicle of claim 5, further comprising: an auditory component comprising a longitudinal wave emitter disposed on the electric heavy vehicle (apparent from at least ¶ 0047).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Cholewa in view of U.S. Patent Application Publication No. 2022/0314809 to Yokoo (hereinafter: “Yokoo”), in the alternative to being rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cholewa.
As discussed in detail above with respect to the rejection of claims 2 and 3 under 35 U.S.C. 102(a)(1), Cholewa teaches each and every limitation of the electric heavy vehicle of each of claim 2 and claim 3 so as to anticipate the claims under a broadest reasonable interpretation. However, in such a case where Applicant is able to persuasively argue that Cholewa does not fully teach that the electric motor is a DC electric motor (as required by claim 2) and/or that the electric motor is an AC electric motor (as required by claim 3), and/or in such a case where Cholewa is not interpreted or relied upon to teach that the electric motor is a DC electric motor (in the case of claim 2) and/or that the electric motor is an AC electric motor (in the case of claim 3), it is also noted that Yokoo teaches an analogous electric heavy vehicle (10) including an electric motor (e.g., 1 or 2), where the electric motor is one of a DC electric motor and an AC electric motor (as discussed by at least ¶ 0027).
Therefore, even if Cholewa is not interpreted or relied upon to teach that the electric motor is a DC electric motor (in the case of claim 2) and/or that the electric motor is an AC electric motor (in the case of claim 3), it would have been obvious to one having ordinary skill in the art at the time the invention was made to have modified the electric heavy vehicle of Cholewa with the teachings of Yokoo, if even necessary, such that the electric motor is a DC electric motor (in the case of claim 2), or such that the electric motor is an AC electric motor (in the case of claim 3), because Yokoo demonstrates that each of a DC electric motor and an AC electric motor is alternatively usable as an electric motor in a heavy electric vehicle having regenerative braking. Therefore, such a modification, if even necessary, would also amount to a simple substitution of one known element for another to obtain predictable results (e.g., see: MPEP 2143_I_B).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is provided on the attached PTO-892 Notice of References Cited form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ZALESKAS whose telephone number is (571)272-5958. The examiner can normally be reached M-F 8:00 AM - 4:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Logan Kraft can be reached at 571-270-5065. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN M ZALESKAS/Primary Examiner, Art Unit 3747
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