DETAILED ACTION
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
This is the first Office Action on the merits. Claims 1-15 are currently pending and addressed below.
Priority
Examiner notes that Applicant claims priority to EP24199828.5 filed 9/11/2024. However, Applicant has not submitted certified copies of papers required by 37 CFR 1.55. Therefore, the present application will be given a priority date of 9/4/2025.
Furthermore, should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified copy as well as a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/4/2025 was filed before the mailing date of the present Office Action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: the specification incorrectly recites “suppling configuration” in ¶¶ [0003], [0012], [0031], [0033], [0070], and [0083] rather than the correct term “supplying configuration.”
Appropriate correction is required.
Claim Objections
Claims 1, 8, 13, and 14 are objected to because of the following informalities:
Line 4 of claim 1 should read –supplying configuration—rather than “suppling configuration”;
Line 3 of claim 8 should read –threshold being at least more than—rather than “threshold being a least more than”;
Line 1 of claim 13 reads “A controller a computer readable medium.” Either a comma after controller or some other clarifying language should be included to separate the controller from the computer readable medium. Appropriate correction is required; and
Line 4 of claim 14 should read –supplying configuration—rather than “suppling configuration.”
Appropriate correction is required.
Claim Interpretation
Claims 3-6 recite contingent limitations that are not given patentable weight as presently written. Specifically, independent claims 3 and 5 recite “if one regenerative-powered switching criteria is complied with…” prior to setting forth functional limitations that occur if this contingent step is performed. The broadest reasonable interpretation of a method (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur, but not to actually perform the function. MPEP § 2111.04(II). As such, for the purpose of compact prosecution the limitations that follow the contingent language in claims 3-6 will be addressed below, but those limitations, as presently written, do not weigh on the patentability of the claims as a whole because the contingent limitations are not positively recited in the claims.
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) 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):
(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(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:
“a device for converting energy…” (claims 1 and 14; example of supporting structure found in ¶ [0028], which includes an electric machine);
“a kinetic energy recovery system configured for switching between…” (claims 1 and 14; no support found in the specification, see § 112(b) rejection below);
(A) Each of the limitations (1) - (2) recited above use the generic placeholder “system” and “device” for performing a claimed function, or other generic placeholder. See MPEP 2181, 1A (“The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6: “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for.” Welker Bearing Co., v. PHO, Inc., 550 F.3d 1090, 1096, 89 USPQ2d 1289, 1293-94 (Fed. Cir. 2008”). Accordingly, recitations of “system” and “device” in (1)-(2) above pass prong A.
(B) each of the phrases following the bolded portion in limitations (1)-(2) constitute functional language modifying the generic terms in prong (A), respectively.
(C) each of the terms preceding “system” and “store” in (1)-(2) above do not connote sufficient structure for performing the claimed function. In addition, none of the generic placeholders recited in (A) are modified by sufficient structure, materials, or acts for performing the claimed function.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they 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 these limitations interpreted under 35 U.S.C. 112(f) applicant may: (1) amend the claim limitation(s) to avoid it/them 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(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).
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.
Claims 1-14 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 11 recites the limitation “the parameter processing unit” in lines 4-5. There is insufficient antecedent basis for this limitation in the claim. Claim 12 depends from claim 11 and indefinite for the same reason.
Claim 13 recites the limitation “the parameter processing unit” in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim limitation “kinetic energy recovery system” recited in claims 1 and 14 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. 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. While the term “kinetic energy recovery system” is recited throughout the specification, it is described only by what it does and not what it is, or using any structure sufficient to link the function to the structure. Specifically, the system seems to be described as a battery that can store and discharge energy (eg., ¶¶ [0031] – [0036], [0065]). However, the limitation is recited as a system and there is no description to connect the system to any sort of battery, as there is no mention of a battery in the specification. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as well as claims 2-13 and 15 that depend from claims 1 and 14.
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 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 11-13 are rejection under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims recite only software per se without any physical or tangible form. Specifically, claim 11 is directed toward a computer program product comprising computer-readable medium that is not expressly in a non-transitory form; claim 12 is directed to a computer readable medium that is not expressly in a non-transitory form; and claim 13 is directed to a computer readable medium having encoded thereon a computer program that is not expressly in a non-transitory form.
Under the broadest reasonable interpretation, transitory-computer readable medium, or signal, is referred to as signal per se. Signal per se is not patentable under § 101; therefore, the claimed inventions do not fall within a statutory class of patentable subject matter. See MPEP § 2106.03(II) (“[T]he BRI of machine readable media can encompass non-statutory transitory forms of signal transmission, such as a propagating electrical or electromagnetic signal per se. See In re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007). When the BRI encompasses transitory forms of signal transmission, a rejection under 35 U.S.C. 101 as failing to claim statutory subject matter would be appropriate.”).
Examiner suggests amending the claims to state that the computer-readable medium is non-transitory, as support by ¶ [0042] of the present disclosure.
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.
(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 1-3, 5, and 7-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2014163619 to Trase et al.
Regarding claim 1, Trase et al. discloses:
A method for controlling a powertrain of a vehicle (Figures 3 and 4), the powertrain comprising:
a device for converting energy for driving wheels of the vehicle (¶ [0027] describing a device for converting energy for driving wheels of a vehicle),
an engine, configured for providing energy to the device (¶ [0027] describing engine 210 that provides energy to the device),
a kinetic energy recovery system, configured for switching between a suppling configuration in which the kinetic energy recovery system provides energy to the device and a charging configuration in which the kinetic energy recovery system is charged by the engine to storage kinetic energy (¶ [0027] describing kinetic energy recovery system 215 switching between a discharging of the system and a charging of the system),
the powertrain being configured to switch between a regenerative configuration in which the kinetic energy recovery system is in the charging configuration and the device is powered by the engine, and a powered configuration in which the kinetic energy recovery system is in the supplying configuration (¶¶ [0027], [0031], [0032] describing switching between a regenerative configuration that charges the battery when the device is powered by the engine 210, and a discharging configuration when the engine is off and all power is supplied by the battery),
wherein the method comprises at least one regeneration-power cycle, comprising the following successive steps:
a) controlling the powertrain in the regenerative configuration, b) switching the powertrain from the regenerative configuration to the powered configuration; and c) controlling the powertrain in the powered configuration (¶¶ [0027], [0031] describing controlling the powertrain in a regenerative configuration and switching to a configuration powered by the engine).
Regarding claim 2, Trase et al. discloses all the limitations of claim 1. Trase et al. further discloses:
wherein the device maintains a constant rotation speed of the wheels constant during the at least one regeneration-power cycle (¶ [0031] describing maintaining a constant vehicle speed during the regeneration configuration, which includes constant rotational speed of the wheels).
Regarding claim 3, Trase et al. discloses all the limitations of claim 1. Trase et al. further discloses:
wherein the step b) is carried out if one regenerative-powered switching criteria is complied with, the regenerative-powered criteria comprising charging the kinetic energy recovery system above a charging capacity threshold (¶ [0027] describing switching to the kinetic energy configuration when the charge is above and/or below certain thresholds, and switching to the engine powered configuration when the charging of the kinetic energy is above and/or below certain thresholds).
Regarding claim 5, Trase et al. discloses all the limitations of claim 1. Trase et al. further discloses:
wherein the at least one regeneration-power cycle further comprises, after step c), a step d) of switching the powertrain from the powered configuration to the regenerative configuration, the step d) is carried out if one powered-regenerative switching criteria is complied with, the powered-regenerative criteria comprising discharging the kinetic energy recovery system under a discharging capacity threshold (¶ [0032] describing switching back into the engine powered configuration when the kinetic energy recovery system falls below a nominal threshold, such as 1/3 of the remaining capacity).
Regarding claim 7, Trase et al. discloses all the limitations of claim 1. Trase et al. further discloses:
wherein, in the powered configuration of the powertrain, the engine is switched off (¶ [0030] describing that the engine is switched off during the powered configuration).
Regarding claim 8, Trase et al. discloses all the limitations of claim 1. Trase et al. further discloses:
wherein, during the regenerative configuration of the powertrain, the engine is used above a generation power threshold, the generation power threshold being a least more than 80% of a maximal generation power capacity of the engine (¶ [0032] describing the engine being use at full power during the regenerative configuration).
Regarding claim 9, Trase et al. discloses all the limitations of claim 1. Trase et al. further discloses:
wherein the regeneration-power cycle is implemented when a speed of the vehicle is above a speed threshold and/or when the speed of the vehicle is constant (¶ [0031] describing maintaining constant vehicle speed while switching to and from the regenerative configuration).
Regarding claim 10, Trase et al. discloses all the limitations of claim 1. Trase et al. further discloses:
wherein the method comprises several successive regeneration-power cycles (¶ [0027] describing successive cycles).
Claim 11 contains all the limitations of claim 1, but with the additional elements of a computer program product comprising a computer readable medium, having a computer program comprising program instructions, the computer program being loadable into a processing unit (¶ [0039]). Therefore, the supporting rationale of the rejection of claim 1 applies equally as well to claim 11.
Claim 12 contains all the limitations of claim 11, but with the additional elements of a computer readable medium having encoded thereon a computer program (¶ [0039]). Therefore, the supporting rationale of the rejection of claim 11 applies equally as well to claim 12.
Claim 13 contains all the limitations of claim 1, but with the additional elements of a computer readable medium having encoded thereon a computer program comprising program instructions, the computer program being loadable into a processing unit (¶ [0039]). Therefore, the supporting rationale of the rejection of claim 1 applies equally as well to claim 13.
Claim 14 contains all the limitations of claim 11 (i.e., claim 14 recites no additional elements beyond those recited in claim 1). Therefore, the supporting rationale of the rejection of claim 1 applies equally as well to claim 14.
Claim 15 contains all the limitations of claim 14, but with the additional elements of a vehicle (¶ [0027] vehicle 225). Therefore, the supporting rationale of the rejection of claim 14 applies equally as well to claim 15.
Claim Rejections - 35 USC § 103
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 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 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Trase et al.
Regarding claim 4, Trase et al. discloses all the limitations of claim 3.
While Trase et al. does disclose charging the kinetic system above a threshold, Trase et al. does not expressly disclose that the threshold is 80% of capacity.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Trase et al.’s invention to incorporate a capacity threshold of 80% based on the teachings of Trase et al. with a reasonable expectation of success in switching to the kinetic system powered configuration when the capacity of the battery reaches above a certain threshold sufficient to power the vehicle (Trase et al. at ¶ [0027]).
Regarding claim 6, Trase et al. discloses all the limitations of claim 5.
While Trase et al. does disclose a discharge threshold of 33% (¶ [0027]) and that it can be reduced to a nominal amount (¶ [0038]), Trase et al. does not expressly disclose that the threshold is less than 20% of the capacity.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Trase et al.’s invention to incorporate a capacity threshold of 20% based on the teachings of Trase et al. with a reasonable expectation of success in switching to the engine powered configuration when the capacity of the battery falls below a certain threshold. Furthermore, a person having ordinary skill in the art would recognize such a modification as falling into the “nominal amount” threshold taught by Trase et al.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Pub. No. 2023/0307986 to Cao et al. teaches switching between regenerative braking while using an engine to power the vehicle to use a battery to power the vehicle (¶¶ [0030] – [0036]);
U.S. Pub. No. 2022/0281432 to Snyder et al. teaches kinetic energy recovery during engine shutdown (¶¶ [0030] – [0035]);
U.S. Pat No. 10,632,828 to Trase et al. teaches switching between regenerative energy recovery during engine powered configuration and a battery powered configuration when the engine is shutoff (Figures 3 and 4 and the description thereof);
U.S. Pub. No. 2017/0015188 to Kim teaches regenerative energy recovery by switching between engine and battery power (¶¶ [0027] – [0040]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D HOLMAN whose telephone number is (571)270-5291. The examiner can normally be reached M-F 8:30am-5pm ET.
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/JOHN D HOLMAN/Examiner, Art Unit 3667
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