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 .
Specification
The objections to the specification have been addressed in the amendment filed 9/11/2026 and are removed.
Claim Objections
The objection to claim 7 has been addressed in the amendment filed 9/11/2026 and is removed.
An objection is made to claim 11, which starts out with “The control system of any of claim 8…”, which should be “The control system of claim 8…”
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.
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Claims 1 & 8 (of the present application 19/242,462, referred to as ‘462) is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. US 12,344,261 B2 (referred to as ‘261). Although the claims at issue are not identical, they are not patentably distinct from each other because as shown below, the metes and bounds of claim 11 of ‘261 covers the metes and bounds of claim 1 of ‘462:
Claim 1 ‘462
Claim 11 ‘261
A control system for controlling at least one electric machine of a vehicle to support diagnostic testing of a vehicle system comprising an internal combustion engine, the control system comprising one or more electronic controllers, the one or more electronic controllers configured to:
A control system for controlling at least one electric machine of a vehicle to support diagnostic testing of a vehicle system comprising an internal combustion engine, the control system comprising: one or more electronic controllers, the one or more electronic controllers configured
control a torque output of the at least one electric machine to allow a vehicle drive torque demand to be met while the internal combustion engine is operated within the at least one torque threshold for the diagnostic testing,
to control a torque output of the at least one electric machine to allow a vehicle drive torque demand to be met while the internal combustion engine is operated within one of: at least one torque threshold for the diagnostic testing;
and a torque setpoint for the diagnostic testing;
(this limitation is for an AND/OR requirement so is irrelevant here.)
[the one or more electronic controllers configured to] control the internal combustion engine to operate within at least one torque threshold for the diagnostic testing; and
wherein the control system is configured to control the internal combustion engine to operate within the at least one torque threshold or at the torque setpoint for the diagnostic testing;
wherein the control of the internal combustion engine to operate within the at least one torque threshold is conditional upon an absence of an overriding request for operation of the vehicle in an off-road mode, an off-road-suitable terrain mode, or a driving surface optimization mode.
and wherein the control of the internal combustion engine is conditional upon an absence of an overriding request for operation of the vehicle in an off-road mode, an off-road-suitable terrain mode, or a driving surface optimization mode.
Claim 8 of ‘462 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of ‘261 for similar reasons as claim 1.
Claim 8 ‘462
Claim 11 ‘261
A control system for controlling at least one electric machine of a vehicle to support diagnostic testing of a vehicle system comprising an internal combustion engine, the control system comprising one or more electronic controllers, the one or more electronic controllers configured to:
A control system for controlling at least one electric machine of a vehicle to support diagnostic testing of a vehicle system comprising an internal combustion engine, the control system comprising: one or more electronic controllers, the one or more electronic controllers configured
control the internal combustion engine to operate at a torque setpoint for the diagnostic testing;
to control a torque output of the at least one electric machine to allow a vehicle drive torque demand to be met while the internal combustion engine is operated within one of: at least one torque threshold for the diagnostic testing;
and a torque setpoint for the diagnostic testing;
(this limitation is for an AND/OR requirement so is irrelevant here.)
control a torque output of the at least one electric machine to allow a vehicle drive torque demand to be met while the internal combustion engine is operated at the torque setpoint for the diagnostic testing,
wherein the control system is configured to control the internal combustion engine to operate within the at least one torque threshold or at the torque setpoint for the diagnostic testing;
wherein the control of the internal combustion engine to operate at the torque setpoint is conditional upon an absence of an overriding request for operation of the vehicle in an off-road mode, an off-road-suitable terrain mode, or a driving surface optimization mode..
and wherein the control of the internal combustion engine is conditional upon an absence of an overriding request for operation of the vehicle in an off-road mode, an off-road-suitable terrain mode, or a driving surface optimization mode.
Allowable Subject Matter
Claim 20 is allowed.
Claims 2-7, and 9-19 are objected to as being dependent upon a rejected base claim, but no prior art has been found for these claims and would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANYA CHRISTINE SIENKO whose telephone number is (571)272-5816. The examiner can normally be reached Mon - Fri 8:00-5:00.
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/TANYA C SIENKO/Examiner, Art Unit 3664
/KITO R ROBINSON/Supervisory Patent Examiner, Art Unit 3664
