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 .
35 USC 102 rejections
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) 1, 18-20 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by JP 2004-120999.
Regarding independent claim 1, JP 2004-120999 discloses a lift device comprising: a chassis; a lifting mechanism supporting a lifting platform relative to the chassis; a plurality of traction devices to support the chassis on an underlying surface; an electric motor 4 drivingly coupled to at least one of the plurality of traction devices; a traction battery 13 in electrical communication with the electric motor 4; a user input to control a speed of the lift device by inputting a requested speed; and a controller 14 configured to, in response to the lift device being on a non-zero grade and if the requested speed is greater than a predetermined speed, command the electric motor 4 to output a braking torque and provide electrical power to the traction battery 13, and limit the speed of the lift device to the predetermined speed. Note: (Figure 3) is deemed to describe a lifting mast comprising a mobile work machine, a traction device for supporting the mobile work machine on an underlying surface, a motor 4 drivingly connected to the traction device, a control unit 14 in communication with the motor 4 and an energy storage device 13 in communication with the motor 4 via the control unit 14, a hydraulic circuit including a hydraulic pump 8 and a control valve block 10, a motor 5 in electrical communication with the energy storage device 13, an operating element, and a hydraulic braking device 15 that reduces the opening of the pump 8 and controls the control valve block 10 to increase the galley pressure in response to the voltage exceeding a threshold while the motor 4 outputs braking torque and supplies power, thereby reducing the power to the energy storage device 13.
Regarding independent claim 18, JP 2004-120999 discloses a method of controlling a lift device (figure 3), the method comprising: receiving a requested speed for the lift device from a user input; propelling the lift device at the requested speed via an electric motor 4 connected to a wheel, the electric motor 4 electrically connected to a traction battery 13; determining that the requested speed is greater than a predetermined speed when the lift device is on a non-zero grade, the predetermined speed being dependent on the grade; and limiting a speed of the lift device to the predetermined speed by (i) commanding the electric motor 4 to output a braking torque and provide electrical power to the traction battery while the lift device is on the non-zero grade, and (ii) operating a pump motor 5 to increase a flow of a pump 8 thereby reducing electrical power to the traction battery 13.
Regarding claim 19, JP 2004-120999 discloses limiting the speed of the lift device to the predetermined speed by (iii) controlling a valve 10 fluidly coupled to the pump 8 via a pressure galley 9 and a return line to reduce a size of the valve opening and increase pressure in the pressure galley thereby reducing electrical power to the traction battery 13.
Regarding claim 20, JP 2004-120999 discloses that wherein parts (ii) and (iii) are performed in response to receiving a parameter associated with the battery 13.
Double Patenting, 35 USC 101 rejections
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. US 12,522,491. This is a statutory double patenting rejection.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
Obviousness Double Patenting Rejections
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 of U.S. Patent No. 12,522,491. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Claim-matching table:
Claims of this application
Claims of US 12,522,491
18. A method of controlling a lift device, the method comprising: receiving a requested speed for the lift device from a user input; propelling the lift device at the requested speed via an electric motor connected to a wheel, the electric motor electrically connected to a traction battery; determining that the requested speed is greater than a predetermined speed when the lift device is on a non-zero grade, the predetermined speed being dependent on the grade; and limiting a speed of the lift device to the predetermined speed by (i) commanding the electric motor to output a braking torque and provide electrical power to the traction battery while the lift device is on the non-zero grade, and (ii) operating a pump motor to increase a flow of a pump thereby reducing electrical power to the traction battery.
Claim 1 (nearly identical with claim 1 of this application). A lift device comprising: a chassis; a lifting mechanism supporting a lifting platform relative to the chassis; a plurality of traction devices to support the chassis on an underlying surface; an electric motor drivingly coupled to at least one of the plurality of traction devices; a traction battery in electrical communication with the electric motor; a user input to control a speed of the lift device by inputting a requested speed; and a controller configured to, in response to the lift device being on a non-zero grade and if the requested speed is greater than a predetermined speed, command the electric motor to output a braking torque and provide electrical power to the traction battery, and limit the speed of the lift device to the predetermined speed.
4. The lift device of claim 1 further comprising a hydraulic circuit with a pump, a pressure galley, a return line, and a valve controlling pressure in the pressure galley and fluidly connecting the pressure galley to the return line; and a pump motor drivingly connected to the pump and in electrical communication with the traction battery; wherein the controller is further configured to, in response to a battery parameter being outside a predetermined range while the electric motor is outputting the braking torque and providing electrical power to the traction battery, increase a flow of the pump and control the valve to reduce a size of the valve opening and increase pressure in the pressure galley thereby reducing electrical power to the traction battery.
Anticipation:
As noted above, claim 1 of US 12,522,491 is nearly identical with claim 1 of this application.
Claim 4 of US 12,522,49 anticipates the claimed subject matter of claims 1-8, 18-20 this application. The claims of the patent recite more elements than in this application and therefore the claims of this application should be rejected under obviousness double patenting rejection. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). Note: the functions of the elements in the apparatus claims of US 12,522,491 are equivalent with the method steps in claims 18-20.
Obviousness:
Claims 9-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,522,491.
Claim 4 of U.S. Patent No. 12,522,491 recites all the claimed subject matter as set forth above in the rejection of claims 9-17, but does not recite the specific parameters in claims 9-12, the actuator, parking brake, joystick and infer in claims 13-17. However, according to MPEP 2144.05, II. ROUTINE OPTIMIZATION, A) Optimization Within Prior Art Conditions or Through Routine Experimentation, note In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). The concept of changing the parameters, and using basis elements including the actuator, parking brake, joystick, and infer in these claims involves only the result of “routine optimization”. It would have been a “routine optimization” to one of ordinary skill in the art at the time the claimed invention was filed to elect the specific parameters and basic elements as claimed in claim 4 of US 12,522,491 for the purpose of achieving equivalent power output based on the specifically set parameters/basis elements.
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.
Conclusions
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/HOANG M NGUYEN/Primary Examiner, Art Unit 3746
HOANG NGUYEN
PRIMARY EXAMINER
ART UNIT 3746
Hoang Minh Nguyen
7/30/2026
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