Rejections under this clause are based on the fact that claims do not fall within one of the four statutory categories of acceptable subject matters: process, machine, article of manufacture, or composition of matter.

One of the ways to overcome this type of rejection is by claiming an invention by properly reciting the subject matter. In the automobile industry, the claims must satisfy process, machine, and manufacture categories.

Example: A method for enabling anti-lock braking in a vehicle which is propelled at least by an electric motor, the method comprising:

  • obtaining monitored parameters by monitoring a speed of at least one of the motor, transmission, shaft and ground speed;
  • detecting a tendency of locking of at least one wheel by comparing actual speed indicated by said monitored parameters with expected speed indicated by said monitored parameters, wherein the vehicle is being decelerated;
  • modulating an output of one or more portions of a regenerative braking system as a function of the tendency of locking of at the least one wheel, wherein said modulation of the regenerative braking force is based on one or more of pre-programmed empirical values, weight of the vehicle and the motor torque speed characteristics, to prevent locking of the at least one  wheel of the vehicle; and
  • activating at least one of a mechanical brake system and a hydraulic brake system after increasing said regenerative braking force in the at least one wheel to its full potential.

The above mentioned independent claim has no rejections under 35 U.S.C. 101 as the claim clearly recites the subject matter by explaining the method in detail.

Rejections under 35 U.S.C. 112

Under this clause, rejections are based on substantive issues of lack of enablement or failure of support from written description which means that the claimed subject matter is not sufficiently disclosed in the specification.

One of the ways to overcome rejections based on lack of enablement is by demonstrating that the specification and drawing of the patent application provide enough information for one of ordinary skill in the art to make and use the claimed invention.

In the automobile industry, parts of the automobile should be claimed clearly and working parts can be claimed separately.

Example: A method for enabling anti-lock braking in a vehicle which is propelled at least by an electric motor, the method comprising:

  • modulating at least regenerative braking force to prevent locking of at least one wheel of the vehicle, wherein said modulation of the regenerative braking force is based on one or more of pre-programmed empirical values, weight of the vehicle and the motor torque speed characteristics; and
  • activating braking by one or more of mechanical and hydraulic brakes present in the vehicle after increasing regenerative braking force in at least one wheel to its full potential.

In the above mentioned claim, there are no rejections under 35 U.S.C. 112 as the subsequent claims and the description are sufficient enough to meet the enablement criteria as described under 35 U.S.C. 112.

Rejections under 35 U.S.C. 102

Under this clause, rejections are based on Anticipation. A claim is anticipated if and only if all the claimed limitations are disclosed by a single reference. One of the ways to overcome this type of rejection is by pointing out to the examiner what element has been over looked in the rejection and by including a key distinguishing feature over the prior art.

Example: A method for enabling anti-lock braking in a vehicle which is propelled at least by an electric motor, the method comprising:

  •   obtaining monitored parameters by monitoring a speed of at least one of the motor, transmission, shaft and ground speed;
  • detecting a tendency of locking of at least one wheel by comparing actual speed indicated by said monitored parameters with expected speed indicated by said monitored parameters, wherein the vehicle is being decelerated;
  • modulating an output of one or more portions of a regenerative braking system as a function of the tendency of locking of at the least one wheel, wherein said modulation of the regenerative braking force is based on one or more of pre-programmed empirical values, weight of the vehicle and the motor torque speed characteristics, to prevent locking of the at least one wheel of the vehicle; and
  • activating at least one of a mechanical brake system and a hydraulic brake system after increasing said regenerative braking force in the at least one wheel to its full potential.

The above mentioned claim was rejected based on anticipation and the applicant amended the claim and included ‘obtaining monitored parameters by monitoring a speed of at least one of the motor, transmission, shaft and ground speed’ which was the key distinguishing factor over the prior art reference.

Rejections on 35 U.S.C. 103

Under this clause, a patent claim is said to be obvious only if the claimed subject matter is taught, suggested or motivated by the prior art and also the claims can be obvious by combining the elements from one or more prior art references.

One of the ways to overcome this type of rejection is by locating something that the cited reference doesn’t teach, and then including a limitation in the claims such that the added limitation enables the claim, as compared to the reference. Improper Hindsight is one of the common phenomenon of viewing an invention as being obvious in light of current knowledge. When considering obviousness in light of a combination of two or more prior art references, the operative question is whether a mere combination of the references in question will anticipate the claimed invention.

Example: A method for enabling anti-lock braking in a vehicle which is propelled at least by an electric motor, the method comprising:

  •  modulating at least regenerative braking force to prevent locking of at least one wheel of the vehicle, wherein said modulation of the regenerative braking force is based on one or more of pre-programmed empirical values, weight of the vehicle and the motor torque speed characteristics; and
  • activating braking by one or more of mechanical and hydraulic brakes present in the vehicle after increasing regenerative braking force in at least one wheel to its full potential.

In the above mentioned claim, there are no rejections under 35 U.S.C. 103 as the element 1 of the aforementioned claim is not anticipated by a combination of the prior art references.

Authored by Anjali Santhosh (for Aishwarya Narayan)

Contributed by Patent Prosecution Division of BananaIP in India
For further information on  Patent Prosecution strategies in India, write to contact@bananaip.com