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 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.
Claim 13 is 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 13 recites “An MSD control system” in the preamble as the basis for the claimed invention, and then goes on to recite that “the MSD control system is configured to…” perform a set of steps. However, “MSD control system” is merely a generic placeholder with no recited structure in the claim, but since the claim is directed to the MSD control system in the preamble, the term in presumed not to invoke 112(f) interpretation. Therefore, it is unclear what structure is actually included in the claimed invention, and also the functions attributed to the MSD control system cannot be given patentable weight if there is no structure recited which can be configured to perform the steps, so their effect on the metes and bounds of the claim is also unclear.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 15 and 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the are directed to signal (claim 15) and software (claim 16), which the courts have long held are not with in the four categories.
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 13-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1/3/10/14 of U.S. Patent No. 11,981,214 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent just use different terminology, such as “mapping model” vs “tyre model”.
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.
Claim(s) 13-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moriki et al (US2010/0114447A1).
Regarding claim 13, Moriki teaches an MSD control system (120) for a vehicle, the MSD control system being connectable to a VMM system (100, 103) and to at least one MSD capable of applying a torque on at least one wheel of the vehicle (See Figures and Summary of Invention), wherein the MSD control system is configured to: receive a control signal from the VMM system, the control signal being indicative of a torque limit and a parameter value relating to a desired wheel speed for the MSD (121, 123) (Paragraphs 0065-0071); and transmit an MSD signal to the MSD for the MSD to generate an operating torque on the at least one wheel subject to the torque limit and the parameter value relating to the desired wheel speed (See 125, 121, 123, 124 in Figure 4; Paragraph 0071).
Regarding claim 14, Moriki teaches a method for controlling an MSD of a vehicle (via 120), the MSD (Paragraph 0113) being configured to apply a torque on at least one wheel of the vehicle, wherein the method comprises: determining a parameter value relating to a desired wheel force of at least one wheel of the vehicle (e.g., motor torque target value); determining a torque limit (via 123) for the at least one wheel based on the parameter value relating to the desired wheel force (Paragraphs 0065-0071; Figure 4); determining a tyre model based on a relationship between wheel force and wheel speed of the at least one wheel (Paragraphs 0073, 0099-0114; Figures 4, 9, and 10); determine a parameter value relating to a desired wheel speed for the at least one wheel based on the tyre model (Paragraphs 0103 and 0110); and controlling the MSD to generate an operating torque on the at least one wheel subject to the torque limit and the parameter value relating to the desired wheel speed (See 125, 121, 123, 124 in Figure 4; Paragraph 0071 and previously cited sections).
Regarding claims 15,16, and 17, Moriki discloses a program (and corresponding control signals) stored on non-transitory computer readable medium for performing the method of claim 14 (See Figures and controller description throughout Specification).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R STECKBAUER whose telephone number is (571)270-0433. The examiner can normally be reached Monday - Thursday 9:30-7:30 PST.
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/KEVIN R STECKBAUER/Primary Examiner, Art Unit 3747
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