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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/29/2025 has been entered.
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 1,6-14 and 17-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to Judicial Exception (memory, acquiring, storing, updating information, --- which all considered abstract ideas) without significantly more.
Claim 1 recites, “--an acquirer configured to acquire, from a remote operating server, firmware information for the batteries and to store the firmware information in a device memory of the storing device as first firmware information, and a controller configured to, in response to a determination that the battery has been installed in a slot of the slots compare second firmware information stored in the battery memory of the battery with the first firmware information stored in the device memory, in response to determining that the first firmware information stored in the device memory is newer than the second firmware information stored in the battery memory, update the second firmware information in accordance with the first firmware information, and in response to determining that the second firmware information stored in the battery memory is newer than the first firmware information stored in the device memory, update the first firmware information stored in the device memory in accordance with the second firmware information read from the battery memory and update firmware of one or more other batteries installed in respective one or more slots, of the slots, in accordance with the second firmware information.”
The above limitations are directed to a Judicial Exception (memory, firmware, acquiring, storing, updating information, and manipulation of data, which are all considered abstract ideas) without additional elements that amount so significantly more than the Judicial Exception. The claim does not recite “significantly more” because the claim is not either 1) improving another technology, 2) improving the functioning of the computer itself, 3) Applying the judicial exception with, or by use of, a particular machine, 4) Effecting a transformation or reduction of a particular article to a different state or thing, 5) Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application, or 6) Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. This judicial exception is not integrated into a practical application because data gathering and updating steps required to perform the recited acquiring, storing, updating, and comparing, do not add a meaningful limitation to the method as they are insignificant extra-solution activity.
Further, the recitation “the act of upgrading the firmware” can be done by a general computer without user intervention. This amounts no more than invoking computers to perform the abstract ideas of collecting information, analyzing information, and updating firmware. Applicant’s disclosure clear that updating firmware is directed to an abstract idea., the determination that the battery has been installed in a slot does not change the character of the claims as a whole. The individual claim elements are either generic computer components or routine activity. These components perform routine functions, like “updating”, “collecting data’. Applicant’s specification also fails to explain how updating the firmware improves charging process. In conclusion, updating firmware, storing information, fand comparing stored values do not rescue the claims from abstraction. Thus, the claims are ineligible under § 101. (see also Mymail, Ltd. v. Oovoo, LLC (Fed Cir, 2020-1825, 8/19/2021).
Claim 12 recites, -----an acquirer configured to acquire, from a remote operation server, firmware information configured to upgrade firmware of the batteries; device memory configured to store the firmware information acquired by the acquirer as first firmware information; and a controller configured to, cause a battery memory of the battery to store the firmware information, wherein the controller is configured to, in response to detecting that the battery has been installed in a slot of the slots: compare second firmware information stored in the battery memory of the battery with the first firmware information stored in the device memory, in response to determining that the first firmware information stored in the device memory is newer than the second firmware information stored in the battery memory, update firmware of the battery by writing the first firmware information to the battery memory, and in response to determining that the second firmware information stored in the battery memory is newer than the first firmware information stored in the device memory, replace the first firmware information stored in the device memory with the second firmware information read from the battery memory and write the second firmware information to battery memories of one or more other batteries installed in respective one or more slots of the slots, where in replacement of the first firmware information stored in the device memory with the second firmware information causes the second firmware information to control charging of the battery.”
The above limitations are directed to a Judicial Exception (memory, firmware, acquiring, storing, updating information, and manipulation of data, which are all considered abstract ideas) without additional elements that amount so significantly more than the Judicial Exception. The claim does not recite “significantly more” because the claim is not either 1) improving another technology, 2) improving the functioning of the computer itself, 3) Applying the judicial exception with, or by use of, a particular machine, 4) Effecting a transformation or reduction of a particular article to a different state or thing, 5) Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application, or 6) Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. This judicial exception is not integrated into a practical application because data gathering and updating steps required to perform the recited acquiring, storing, updating, and comparing, do not add a meaningful limitation to the method as they are insignificant extra-solution activity.
Further, the recitation “the act of upgrading the firmware” recited in the claim can be done by a general computer without user intervention. This amounts no more than invoking computers to perform the abstract ideas of collecting information, analyzing information, and updating firmware. Applicant’s disclosure clear that updating firmware is directed to an abstract idea., the determination that the battery has been installed in a slot does not change the character of the claims as a whole. The individual claim elements are either generic computer components or routine activity. These components perform routine functions, like “updating”, “collecting data’. Applicant’s specification also fails to explain how updating the firmware improves charging process. In conclusion, updating firmware, storing information, fand comparing stored values do not rescue the claims from abstraction. Thus, the claims are ineligible under § 101. (see also Mymail, Ltd. v. Oovoo, LLC (Fed Cir, 2020-1825, 8/19/2021).
Claim 13 recites, “-----firmware information sent to the storing device by a remote operation server; causing, by the computer, a device memory of the storing device to store the firmware information as first firmware information; in response to determining that a battery has been installed in a slot of the slots: comparing, by the computer,firmware information stored in a battery memory of the battery, with the first firmware information stored in the device memory; in response to determining that the first firmware information stored in the device memory is newer than the second firmware information stored in the battery memory, updating, by the computer, the second firmware information in accordance with the first firmware information; and in response to determining that the second firmware information stored in the battery memory is newer than the first firmware information stored in the device memory, updating, by the computer, the first firmware information stored in the device memory in accordance with the second firmware information stored in the battery memory and updating, by the computer, firmware of one or more other batteries installed in respective one or more slots, of the slots, in accordance with the second firmware information, the second firmware information, wherein the updating of the first firmware information stored in the device memory in accordance with the second firmware information causes the second firmware information to control charging of the battery.”
The above limitations are directed to a Judicial Exception (memory, acquiring, storing, updating information, and manipulation of data, which are all considered abstract ideas) without additional elements that amount so significantly more than the Judicial Exception. The claim does not recite “significantly more” because the claim is not either 1) improving another technology, 2) improving the functioning of the computer itself, 3) Applying the judicial exception with, or by use of, a particular machine, 4) Effecting a transformation or reduction of a particular article to a different state or thing, 5) Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application, or 6) Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. This judicial exception is not integrated into a practical application because data gathering and steps required to perform the recited acquiring, storing, updating, and comparing, do not add a meaningful limitation to the method as they are insignificant extra-solution activity.
Further, the recitation “the act of upgrading the firmware” recited in the amended claim can be done by a general computer without user intervention. This amounts no more than invoking computers to perform the abstract ideas of collecting information, analyzing information, and updating firmware. Applicant’s disclosure clear that updating firmware is directed to an abstract idea., the determination that the battery has been installed in a slot does not change the character of the claims as a whole. The individual claim elements are either generic computer components or routine activity. These components perform routine functions, like “updating”, “collecting data’. Applicant’s specification also fails to explain how updating the firmware improves charging process. In conclusion, updating firmware, storing information, fand comparing stored values do not rescue the claims from abstraction. Thus, the claims are ineligible under § 101. (see also Mymail, Ltd. v. Oovoo, LLC (Fed Cir, 2020-1825, 8/19/2021).
Claim 14 recites “---acquiring battery firmware information from a remote operation server; causing a device memory of the storing device to store the firmware information as first firmware information; in response to determining that a battery has been installed in a slot of the slots: comparing second firmware information stored in a battery memory of the battery with the first firmware stored in the device memory of the storing device; in response to determining that the first firmware information stored in the device memory is newer than the second firmware information stored in the battery memory, replacing the second firmware information stored in the battery memory with the first firmware information read from the device memory; and in response to determining that the second firmware information stored in the battery memory is newer than the first firmware information stored in the device memory, replacing the first firmware information stored in the device memory with thewherein the replacing of the first firmware information stored in the device memory with the second firmware information causes the second firmware information to control charging of the battery.”
The above limitations are directed to a Judicial Exception (memory, acquiring, storing, updating information, and manipulation of data, which are all considered abstract ideas) without additional elements that amount so significantly more than the Judicial Exception. The claim does not recite “significantly more” because the claim is not either 1) improving another technology, 2) improving the functioning of the computer itself, 3) Applying the judicial exception with, or by use of, a particular machine, 4) Effecting a transformation or reduction of a particular article to a different state or thing, 5) Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application, or 6) Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. This judicial exception is not integrated into a practical application because data gathering and steps required to perform the recited acquiring, storing, updating, and comparing, do not add a meaningful limitation to the method as they are insignificant extra-solution activity.
Further, the recitation “the act of upgrading the firmware” recited in the amended claim can be done by a general computer without user intervention. This amounts no more than invoking computers to perform the abstract ideas of collecting information, analyzing information, and updating firmware. Applicant’s disclosure clear that updating firmware is directed to an abstract idea., the determination that the battery has been installed in a slot does not change the character of the claims as a whole. The individual claim elements are either generic computer components or routine activity. These components perform routine functions, like “updating”, “collecting data’. Applicant’s specification also fails to explain how updating the firmware improves charging process. In conclusion, updating firmware, storing information, fand comparing stored values do not rescue the claims from abstraction. Thus, the claims are ineligible under § 101. (see also Mymail, Ltd. v. Oovoo, LLC (Fed Cir, 2020-1825, 8/19/2021).
Claim 17 recites, “----battery utilization system comprising: a battery configured to be removably mounted on an electric power device comprising a battery memory and a storing device comprising slots configured to hold respective batteries, including the battery, wherein the storing device comprises: an acquirer configured to acquire, from a remote operation server, update information comprising at least one of firmware information for the storing device or advertising information capable of being rendered on a display of the storing device, device memory configured to store the update information acquired by the acquirer as first update information, and a controller configured to, in response to a determination that the battery has been installed in a slot of the slots compare second update information stored in the battery memory of the battery with the first update information stored in the device memory, in response to determining that the first update information stored in the device memory is newer than the second update information stored in the battery memory, replace the second update information stored in the battery memory with the first update information read from the device memory, and in response to determining that the second update information stored in the battery memory is newer than the first update information stored in the device memory, replace the first update information stored in the device memory with the second update information stored in the battery memory and write the second update information read from the battery memory to one or more other batteries installed in respective one or more slots of the slots, wherein replacement of the first firmware information stored in the device memory with the second firmware information causes the second firmware information to control charging of the battery.”
The above limitations are directed to a Judicial Exception (memory, acquiring, storing, updating information, and manipulation of data, which are all considered abstract ideas) without additional elements that amount so significantly more than the Judicial Exception. The claim does not recite “significantly more” because the claim is not either 1) improving another technology, 2) improving the functioning of the computer itself, 3) Applying the judicial exception with, or by use of, a particular machine, 4) Effecting a transformation or reduction of a particular article to a different state or thing, 5) Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application, or 6) Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. This judicial exception is not integrated into a practical application because data gathering and steps required to perform the recited acquiring, storing, updating, and comparing, do not add a meaningful limitation to the method as they are insignificant extra-solution activity.
Further, the recitation “the act of upgrading the firmware” recited in the amended claim can be done by a general computer without user intervention. This amounts no more than invoking computers to perform the abstract ideas of collecting information, analyzing information, and updating firmware. Applicant’s disclosure clear that updating firmware is directed to an abstract idea., the determination that the battery has been installed in a slot does not change the character of the claims as a whole. The individual claim elements are either generic computer components or routine activity. These components perform routine functions, like “updating”, “collecting data’. Applicant’s specification also fails to explain how updating the firmware improves charging process. In conclusion, updating firmware, storing information, fand comparing stored values do not rescue the claims from abstraction. Thus, the claims are ineligible under § 101. (see also Mymail, Ltd. v. Oovoo, LLC (Fed Cir, 2020-1825, 8/19/2021).
Claim 18 recites “---a battery memory; and a storing device comprising slots configured to store batteries, including the battery, and to charge the batteries while the batteries are stored in the slots, wherein the storing device comprises: an acquirer configured to acquire, from a remote operation server, firmware information comprising battery firmware information for the battery or device firmware information for the storing device, and a controller configured to cause the device memory of the storing device to store the firmware information as first firmware information, wherein the controller is further configured to, in response to determining that the battery has been installed in a slot of the slots: compare second firmware information stored in the battery memory of the battery the first firmware information stored in the device memory, in response to determining that the first firmware information stored in the device memory is newer than the second firmware information stored in the battery memory, update the second firmware information in accordance with the first firmware information, and in response to determining that the second firmware information stored in the battery memory is newer than the first firmware information stored in the device memory, update the first firmware information in accordance with the second firmware information and write the second firmware information to battery memories of one or more other batteries installed in respective one or more slots, of the slots, wherein updating of the first firmware information in accordance with the second firmware information causes the second firmware information to control charging of the battery, and wherein the controller is configured to prioritize memorization of the battery firmware information in the battery memory over memorization of the device firmware information in the device memory when the acquirer has acquired both the battery firmware information and the device firmware information, wherein updating of the first firmware information stored in the device memory in accordance with the second firmware information causes the second firmware information to control charging of the battery.”
The above limitations are directed to a Judicial Exception (memory, acquiring, storing, updating information, and manipulation of data, which are all considered abstract ideas) without additional elements that amount so significantly more than the Judicial Exception. The claim does not recite “significantly more” because the claim is not either 1) improving another technology, 2) improving the functioning of the computer itself, 3) Applying the judicial exception with, or by use of, a particular machine, 4) Effecting a transformation or reduction of a particular article to a different state or thing, 5) Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application, or 6) Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. This judicial exception is not integrated into a practical application because data gathering and steps required to perform the recited acquiring, storing, updating, and comparing, do not add a meaningful limitation to the method as they are insignificant extra-solution activity.
Further, the recitation “the act of upgrading the firmware” recited in the claim can be done by a general computer without user intervention. This amounts no more than invoking computers to perform the abstract ideas of collecting information, analyzing information, and updating firmware. Applicant’s disclosure clear that updating firmware is directed to an abstract idea., the determination that the battery has been installed in a slot does not change the character of the claims as a whole. The individual claim elements are either generic computer components or routine activity. These components perform routine functions, like “updating”, “collecting data’. Applicant’s specification also fails to explain how updating the firmware improves charging process. In conclusion, updating firmware, storing information, fand comparing stored values do not rescue the claims from abstraction. Thus, the claims are ineligible under § 101. (see also Mymail, Ltd. v. Oovoo, LLC (Fed Cir, 2020-1825, 8/19/2021).
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive.
Applicant’s Argument
“---, updating the first firmware information stored in the device memory in accordance with the second firmware information read from the battery memory and updating firmware of one or more other batteries installed in respective one or more other slots of the storing device in accordance with the second firmware information, wherein updating of the first firmware information stored in the device memory in accordance with the second firmware information causes the second firmware information to control charging of the battery, do not represent a mere mental activities implemented by a processor that could otherwise be performed by the human mind or by a human using pencil and paper. “
Applicant also argues that,” --- the act of upgrading the firmware of devices generally, and of batteries in particular as recited in amended independent claim 1, is a computer-centric function that cannot be untethered from the technological hardware and software platforms that that use and update device firmware. The act of upgrading device firmware is a function that only has meaning within computerized technical environments, and consequently does not comprise a mere mental step that could otherwise be performed by the human mind absent the relevant computer hardware.. This leads to a conclusion that the recited aspects do not represent mere abstract mental processes that are only nominally tied to a computer environment via claim language. “
Examiner’s Response
Examiner respectfully disagrees with Applicant’s above assertion. The claims are directed to updating firmware software over a network without user intervention. This amounts no more than invoking computers to perform the abstract ideas of collecting information, analyzing information, and updating firmware. The written descriptions make clear that updating firmware is directed to an abstract idea., the determination that the battery has been installed in a slot does not change the character of the claims as a whole. The individual claim elements are either generic computer components or routine activity. These components perform routine functions, like “updating”, “collecting data’. Applicant’s specification also fails to explain how updating the firmware improves charging process. In conclusion, updating firmware, storing information, fand comparing stored values do not rescue the claims from abstraction. Thus, the claims are ineligible under § 101. (see also Mymail, Ltd. v. Oovoo, LLC (Fed Cir, 2020-1825, 8/19/2021). Thus, Applicant’s arguments are unpersuasive and the 101 rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL BERHANU whose telephone number is (571)272-8430. The examiner can normally be reached M_F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Julian A. Huffman can be reached on Julian.Huffman@uspto.gov. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMUEL BERHANU/Primary Examiner, Art Unit 2859