DETAILED ACTION
This is a response to Application # 19/192,594 filed on April 29, 2025 in which claims 1-9 were presented for examination.
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 .
Status of Claims
Claims 1-9 are pending, of which claims 1-9 are rejected under 35 U.S.C. §§ 112(b) and 102(a)(1).
Information Disclosure Statement
The information disclosure statement filed April 29, 2025 complies with the provisions of 37 C.F.R. § 1.97, 1.98 and MPEP § 609. It has been placed in the application file and the information referred to therein has been considered as to the merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 C.F.R. § 1.55.
Drawings
The drawings are objected to because Figure 3 is small, unfocused and difficult to read and, as a result, fails to comply with 37 C.F.R. § § 1.84(l). Applicant should amend this figure to be easily readable in the drawings.
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 C.F.R. § 1.121(d). If the changes are not accepted by the Examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Claim 1 refers to a “heat engine.” The plain and ordinary meaning of a heat engine is merely a “combustion engine.” (Piccone, US Publication 2022/0380030 ¶ 5). Therefore, the heat engine shall be interpreted as any combustion engine.
Additionally, claim 1 includes the limitations “an amount of required energy that can be delivered by the source to authorize their execution and ensure execution of the safety functions” and “the controller being linked to the components, to the electrical energy source and to an engine activation module in order to send it the authorized functions according to a completed control.” (Emphasis added). This appears to recite that the intended use for the amount of energy is to authorize the execution of functions, including safety functions, and that the intended use of the control is to send authorized functions but does not appear to require the authorization of functions or that those authorized functions are actually sent. “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id; Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).
Claim 2 includes the limitation “wherein the energy management module stores an energy management plan to ensure the execution of the safety functions and provides, throughout a mission, a set of functions available per given mission segment and an amount of energy required for each function for the segment.” (Emphasis added). This appears to recite the intended use of the energy management plan. “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id; Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).
Claims 3, 8, and 9 refer to “degraded energy management plans” and a “degraded energy plan.” Applicant has properly acted as its own lexicographer by defining a degraded plan as a new plan that takes into account updated information (Spec. ¶ 24), Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). Therefore, the term “degraded” shall be interpreted in the manner set forth by the present specification.
Claim 4 recites a method claim including the limitations “upon receiving one or more specific aircraft parameters, transmitting a set of available functions, stored in the energy management module, associated with the parameters to the controller and the charge required for executing the functions and the controller checking proper operation of the aircraft components required for executing the received available functions and the amount of electrical energy from the source that must be sufficient to ensure the execution thereof and that of the safety functions; if the available functions can operate correctly and the amount of energy likely to be delivered by the source is sufficient, the controller authorizes the execution of the functions and transmits the authorized functions to the module for activating the engine; when the engine activates an authorized function, throughout the execution of the function, the controller checks that the authorized function does not consume abnormally and, if so, the controller notifies the engine that the authorization for the function is withdrawn.” (Emphasis added).
None of the transmission, execution, or checking functions are required to be performed, because none of their precedent conditions are not required to occur. See Ex parte Schulhauser, 2013-007847 (PTAB 2016) (precedential) where the board held that when method steps are to be carried out only upon the occurrence of a condition precedent, the broadest reasonable interpretation holds that those steps are not required to be performed. (id. at *7). See, e.g., Reactive Surfaces v. Toyota Motor Corp., IPR2016-01914 (PTAB 2018) (“[t]he use of ‘when’ instead of ‘if’ does not change whether the method step is conditional”) (citing Ex parte Kaundinya, No. 2016-000917, 2017 WL 5510012, at *5-6 (PTAB Nov. 14, 2017) ("when" may indicate a conditional method step); Ex parte Zhou, No. 2016-004913, 2017 WL 5171533, at *2 (PTAB Nov. 1, 2017) (same); Ex parte Lee, No. 2014-009364, 2017 WL 1101681, at *2 (PTAB Mar. 16, 2017) (same)). See, e.g., Ex parte Sheinfeld Appeal No. 2018-007091 (PTAB 2019) at *13; Ex Parte Vdovjak 2018-007087 (PTAB 2019) at 18; Ex parte Ionescu 2018-002662 (PTAB 2018) at *4; Ex parte Shier 2017-011168 (PTAB 2019) at *23; and Ex parte Blight 2017-006004 (PTAB 2018) at *12 (supporting the interpretation that “upon” limitations are conditional).
Claim 5 recites a method claim including the limitation “wherein when consumption while executing an authorized function abnormally exceeds an expected consumption by a certain determined amount, the controller sends a signal to an engine computer notifying it that the authorization for the authorized function is withdrawn after a certain number of seconds to allow time for the engine computer to configure itself to a non-electrical assistance mode.” (Emphasis added). As discussed above, the broadest reasonable interpretation does not require signal to be sent because the claim does not require the consumption to exceed a threshold.
Additionally, this claim includes the limitation “after a certain number of seconds to allow time for the engine computer to configure itself to a non-electrical assistance mode” which appears to be a recitation of the intended use of the time period. (Emphasis added). “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id; Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).
Claim 8 recites a method claim “wherein the energy management module continuously checks that energy consumption matches an mission energy plan to ensure a minimum charge level for executing the safety functions and, in an event of an anomaly, the energy plan is updated and is replaced by a degraded energy plan.” (Emphasis added). As discussed above, because an anomaly is not required to occur, the broadest reasonable interpretation does not require the energy plan to be updated and replaced by a degraded energy plan.
Claim 9 recites a method claim including the limitation “9. The method according to claim 8, wherein the energy management module continuously checks that the energy consumption matches the degraded energy plan to ensure a minimum charge level for executing the safety functions and, in an event of an anomaly, the energy plan is updated and is replaced by another degraded energy plan. ” (Emphasis added). As discussed above, because an anomaly is not required to occur, the broadest reasonable interpretation does not require the energy plan to be updated and replaced by a degraded energy plan.
Claim Interpretation—35 U.S.C. § 112(f)
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 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).
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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f), 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. § 112(f), 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), 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), 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), because the claim limitation 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 is: the “energy management module” in claims 1-4.
Because this claim limitation is being interpreted under 35 U.S.C. § 112(f), it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Specifically, the present specification states that this may be performed by the engine computer. (Spec. ¶ 27). While, traditionally, a computer-implemented means-plus-function claim is required to disclose the algorithm necessary to convert the general purpose computer into a special purpose computer, when the functions are “basic functions of a microprocessor” a general purpose computer is sufficient. EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015). In the present instance, this claim is merely reciting the function of storing data in a manner that does not require any specialized steps or structure, meaning that this act of storage is within the basic functions of a microprocessor.
If Applicant does not intend to have this limitations interpreted under 35 U.S.C. § 112(f), Applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. § 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. § 112(f).
Claim Objections
Claim 1 is objected to because of the following informalities: “the source” at line 8 should be amended to “the electrical energy source.” Appropriate correction is required.
Claim 8 is objected to because of the following informalities: claim 8 is a method that depends from claim 2, which not a method but an aircraft. For purposes of examination, this claim shall be interpreted to depend from claim 4, which is a method. Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 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.
Claims 1-9 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 1 and 4, the term “likely” is a relative term which renders the claim indefinite. The term “likely” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In other words, a person of ordinary skill in the art would not be able to appropriately judge when an amount of energy is “likely” to be delivered and when it is “unlikely.” Therefore, this claim is indefinite.
In order to overcome this rejection, the examiner recommends replacing “likely” with non-relative terminology such as “within a probability threshold,” or similar.
Regarding claim 5, the term “abnormally” is a relative term which renders the claim indefinite. The term “abnormally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In other words, a person of ordinary skill in the art would not know how much time would be required to be considered “abnormal.” Therefore, this claim is indefinite.
In order to overcome this rejection, the examiner recommends replacing “abnormally” with non-relative terminology such as “outside a predefined normality threshold,” or similar.
Regarding claims 2, 3, and 5-9, these claims depend from at least one of the claims above and, therefore, inherit the rejection of that claim.
Claim Rejections - 35 U.S.C. § 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 1-9 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Lim et al., US Publication 2023/0064866 (hereinafter Lim).
Regarding claim 1, Lim discloses an aircraft comprising “an energy management system for an electrical energy source in a hybrid electric propulsion architecture comprising at least one heat engine using fuel combustion and the electrical energy source” (Lim ¶ 35) where the engine may be a turbofan or turbojet engine (Spec. ¶ 16) and include electric motors (i.e., an electrical energy source). Additionally, Lim discloses “the aircraft comprising an avionics system and components conveying parameters of the aircraft.” (Lim ¶ 75). Further, Lim discloses the energy management system “comprising: an energy management module that stores functions available for a given mission of the aircraft that are likely to be used by the engine and allowing assistance from the source, as well as a necessary associated charge required for execution thereof” (Lim ¶ 28) where the “energy management system” (i.e., an energy management module) includes modes of operation (i.e., functions” and parameters associated with those functions such as power. As will be discussed below, the power is related to the amount of power required to maintain those functions. This “allows assistance from the [electrical energy] source” because it receives power from the electric motors. (Lim ¶ 35). Moreover, Lim discloses “a controller for controlling a status of the components required for executing each of the available functions that have been transmitted by the management module it is connected to” (Lim 26) where the flight management system is the controller for controlling a status of the components. Likewise, Lim discloses “a controller for controlling … an amount of required energy that can be delivered by the source to authorize their execution and ensure execution of the safety functions” (Lim ¶ 42) by setting a power setpoint that controls engine power output (i.e., an amount of energy that can be delivered). Finally, Lim discloses “the controller being linked to the components, to the electrical energy source and to an engine activation module in order to send it the authorized functions according to a completed control” (Lim Fig. 3) where Fig. 3 shows such linkages.
Regarding claim 2, Lim discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, Lim discloses “wherein the energy management module stores an energy management plan to ensure the execution of the safety functions” (Lim ¶ 31) where the flight plan includes (i.e., stores) the various scenarios, which are energy management plans because determine actions to be performed based on parameters such as power or speed. (for example, Lim ¶ 48). Further, Lim discloses that the energy management module “provides, throughout a mission, a set of functions available per given mission segment and an amount of energy required for each function for the segment” (Lim ¶¶ 42, 47) by setting a power setpoint (Lim ¶ 42) that is used to select various scenarios and functions. (Lim ¶ 47).
Regarding claim 3, Lim discloses the limitations contained in parent claim 2 for the reasons discussed above. In addition, Lim discloses “wherein the energy management module stores degraded energy management plans providing updates to the management plan in an event of anomalies” (Lim ¶ 18) by including scenarios for when the aircraft is unable to perform the intended function (i.e., anomalies).
Regarding claim 4, Lim discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, Lim discloses “comprising: upon receiving one or more specific aircraft parameters, transmitting a set of available functions, stored in the energy management module, associated with the parameters to the controller and the charge required for executing the functions” (Lim ¶¶ 48-50) by describing a process where the system receives parameters indicating that the aircraft is unable to meet the airspeed setpoint (Lim ¶ 48), transitions to underpower mode (i.e., transmits a set of available functions, Lim ¶ 49) and controls the engine to operate at full power (i.e., transmitting the charge required, Lim ¶ 50). Further, Lim discloses “the controller checking proper operation of the aircraft components required for executing the received available functions and the amount of electrical energy from the source that must be sufficient to ensure the execution thereof and that of the safety functions” (Lim ¶ 55) by determining that the aircraft is unable to maintain the minimum airspeed threshold while commanding full power. Moreover, Lim discloses “if the available functions can operate correctly and the amount of energy likely to be delivered by the source is sufficient, the controller authorizes the execution of the functions and transmits the authorized functions to the module for activating the engine” (Lim ¶ 55 and Fig. 4) where if the aircraft is able to maintain the airspeed above the minimum threshold (i.e., it can operate correctly) it continues to operate in the same mode. Finally, Lim discloses “when the engine activates an authorized function, throughout the execution of the function, the controller checks that the authorized function does not consume abnormally and, if so, the controller notifies the engine that the authorization for the function is withdrawn” (Lim ¶¶ 55-56 and Fig. 4) where if the aircraft is not able to maintain the airspeed above the minimum threshold (i.e., it can operate correctly) the aircraft changes to a manual mode to allow the pilot to take control. This is “withdrawing” the previous scenario because that scenario is no longer being operated.
Regarding claim 5, Lim discloses the limitations contained in parent claim 4 for the reasons discussed above. In addition, Lim discloses “wherein when consumption while executing an authorized function abnormally exceeds an expected consumption by a certain determined amount, the controller sends a signal to an engine computer notifying it that the authorization for the authorized function is withdrawn after a certain number of seconds to allow time for the engine computer to configure itself to a non-electrical assistance mode” (Lim ¶ 53) where the conditions are required to be present for a period of time before allowing the scenario to change.
Regarding claim 6, Lim discloses the limitations contained in parent claim 4 for the reasons discussed above. In addition, Lim discloses “wherein functions available for an aircraft mission are stored in the energy management module together with the associated necessary charge required for the execution thereof.” (Lim ¶¶ 31, 79).
Regarding claim 7, Lim discloses the limitations contained in parent claim 4 for the reasons discussed above. In addition, Lim discloses “wherein when an engine computer receives a request to activate a function, it checks that the function is authorized to use electrical assistance and execute the function” (Lim ¶¶ 47-48) where the autopilot determines to switch to underpower mode, which is then determined if underpower mode can be maintained before either switching modes or maintaining the mode.
Regarding claim 8, Lim discloses the limitations contained in parent claim [4] for the reasons discussed above. In addition, Lim discloses “wherein the energy management module continuously checks that energy consumption matches an mission energy plan to ensure a minimum charge level for executing the safety functions” (Lim Fig. 4) where Fig. 4 shows that this is a continuous process. Further, Lim discloses “in an event of an anomaly, the energy plan is updated and is replaced by a degraded energy plan” (Lim ¶¶ 48-50 and Fig. 4) by describing a process where the system receives parameters indicating that the aircraft is unable to meet the airspeed setpoint (i.e., an anomaly occurs, Lim ¶ 48), transitions to underpower mode (i.e., the previous scenario is replaced by an alternate scenario, Lim ¶ 49).
Regarding claim 9, Lim discloses the limitations contained in parent claim 8 for the reasons discussed above. In addition, Lim discloses “wherein the energy management module continuously checks that the energy consumption matches the degraded energy plan to ensure a minimum charge level for executing the safety functions and, in an event of an anomaly, the energy plan is updated and is replaced by another degraded energy plan” (Lim ¶¶ 55-56 and Fig. 4) where if the aircraft is not able to maintain the airspeed above the minimum threshold (i.e., it can operate correctly) the aircraft changes to a manual mode to allow the pilot to take control (i.e., the previous scenario is replaced by an alternate scenario).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Saha et al., US Publication 2017/0331400, Rotating engine including an energy management system.
Gazzino, US Publication 2022-0081122, Helicopter including an energy management system.
Piccone, US Publication 2022/0380030, Commonly owned reference defining terms of art used in this application.
Burkell et al., US Publication 2024/0154443, System and method for monitoring power usage during the course of travels.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW R DYER whose telephone number is (571)270-3790. The examiner can normally be reached Monday-Thursday 7:30-4:30.
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/ANDREW R DYER/Primary Examiner, Art Unit 3662
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