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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/29/2026 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.
Claim(s) 1-6, 8-15, 17-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more (See 2019 Update: Eligibility Guidance).
Independent Claim(s) 1, 10, 19 recites
generate data corresponding to a plurality of parameters of said at least one target device,
receive, during the training phase while operating said at least one target device according to the training routine, first data obtained from said at least one target system,
the first data including
one or more measured values relating to said at least one battery during the training phase;
after the training phase,
perform a Monte Carlo simulation
that outputs
a first plurality of uncertainty intervals based on the first data received while operating said at last one target device according to the training routine,
the first plurality of uncertainty intervals defining a first prediction of a lifetime of said at least one battery;
generate a machine learning model
by
identifying one or more correlations between the first plurality of uncertainty intervals output by the Monte Carlo simulation and the first data received while operating said at least one target device according to the training routine;
receive, during a prediction phase, second data from said at least one target system,
the second data including
one or more measured values relating to said at least one battery during the prediction phase;
generate, using the machine learning model, a second plurality of uncertainty intervals based on the second data,
the second plurality of uncertainty intervals defining a second prediction of the lifetime of said at least one battery,
wherein
generating the second plurality of uncertainty intervals using the machine learning model requires less energy than outputting the first plurality of uncertainty intervals using the Monte Carlo simulation.
[Mathematical Concepts – mathematical relationships; mathematical formulas or equations or mathematical calculation] and/or [Mental Processes - concepts performed in the human mind (including an observation, evaluation, judgement, opinion)].
In combination with Independent Claim(s) 1, 10, 19, Claim(s) 2-6, 8, 9, 11-15, 17, 18, 20 recite(s)
receive third data obtained from said at least one target system; and
retrain the machine learning model based on the third data.
to generate the machine learning model, said processor is configured to
perform a partial least square regression.
the first plurality of uncertainty intervals and the second plurality of uncertainty intervals correspond to
a cumulative damage model.
the first data and the second data include
stress factors of said at least one target device.
the first plurality of uncertainty intervals and the second plurality of uncertainty intervals correspond to
a lifetime of said battery.
the first data and the second data correspond to
one or more of time, temperature, voltage, state of charge, depth of discharge, charge rate, and charge frequency.
[Mathematical Concepts – mathematical relationships; mathematical formulas or equations or mathematical calculation] and/or [Mental Processes - concepts performed in the human mind (including an observation, evaluation, judgement, opinion)].
This judicial exception is not integrated into a practical application. Limitations that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP § 2106.05(f)) (i.e. at least one target system comprising at least one target device and configured to; said at least one target device comprising at least one battery; and a computing device comprising a processor and a user interface in communication with said processor, said processor configured to:; wherein said at least one target system comprises an energy storage system);
Adding insignificant extra-solution activity to the judicial exception (see MPEP § 2106.05(g)) (i.e. generic controlling steps to facilitate generic data acquisition for the identified abstract idea [e.g., control, during a training phase, said at least one target system to operate said at least one target device according to a training routine by controlling said at least one battery to vary in state of charge to cycle said at least one battery through a plurality of different charge conditions; receive, during the training phase while operating said at least one target device according to the training routine, first data obtained from said at least one target system, receive, during a prediction phase, second data from said at least one target system]; generic computer functions and data output [e.g., display the second plurality of uncertainty intervals via said user interface]); or
Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP § 2106.05(h)) (i.e. at least one target system comprising at least one target device and configured to; said at least one target device comprising at least one battery; and a computing device comprising a processor and a user interface in communication with said processor, said processor configured to:; wherein said at least one target system comprises an energy storage system).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The additional elements simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 134 S. Ct. at 2359-60, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)) (see Alice Corp., 134 S. Ct. at 2359-60, 110 USPQ2d at 1984 and cited references as evidence of the additional elements (e.g., generic computer structure; generic device comprising generic battery structure; generically charging/discharging the generic battery structure for the purpose of generic data acquisition)).
Allowable Subject Matter (over Prior Art)
See prior OA, mailed 07/16/2025, for the statement of reasons for the indication of allowable subject matter over prior art.
Response to Arguments
Applicant’s amendments, filed on 01/29/2026, have been entered and fully considered. In light of the applicant’s amendments changing the scope of the claimed invention, the rejection(s) have been withdrawn or updated. However, upon further consideration, a new or updated ground(s) of rejection(s) have been made, and applicant's argument(s)/remark(s) pertaining to the amended language have been rendered moot.
Applicant's argument(s)/remark(s), see page(s) 8-12, filed 01/29/2026, with respect to the 101 rejection(s) has/have been fully considered.
-Applicant states
“Claim Rejection - 35 U.S.C. § 101
The rejection of Claims 1-20 under 35 U.S.C. § 101 for allegedly reciting non-statutory subject matter is respectfully traversed.”.
-Applicant states
“A. The Pending Claims Are Not Directed to an Abstract Idea
The pending claims are not directed to a judicial exception (e.g., an abstract idea) under the USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance ("2019 PEG"). The 2019 PEG describes a two-prong inquiry, below, for determining whether a claim is "directed to" the judicial exception (emphasis added):
In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is "directed to" a judicial exception.
In the first prong, examiners evaluate whether a claim recites a judicial exception, and in particular an abstract idea, by (a) identifying the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites the abstract idea; and (b) determining whether the identified limitation(s) falls within the subject matter groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity, and mental processes).
The Office Action alleges, at Page 3, that the claims fall within the "Mathematical Concepts" or "Mental Process" grouping of abstract ideas. Applicant respectfully disagrees.
As stated in the August 4, 2025 USPTO memorandum (Kim, Charles. "Reminders on evaluating subject matter eligibility of claims under 35 U.S.C.101." August 4, 2025),"Examiners should be careful to distinguish claims that recite an exception (which require further eligibility analysis) from claims that merely involve an exception (which are eligible and do not require further eligibility analysis)." (Emphasis added.) Applicant respectfully submits that, even if the current claim limitations were considered to involve an exception, these claim limitations do not recite any mathematical concepts. More specifically, the limitations of Claim 1 as amended cannot practically be performed by humans, because the method includes electronic manipulation of data to control at least one target system to operate at least one battery according to a training routine by controlling the battery to vary in state of charge to cycle the battery through a plurality of different operating conditions, to perform a Monte Carlo simulation, to generate predictions using a machine learning model, and to display a generated set of predictions via a user interface. This type of activity inherently must be performed by a computer.
Therefore, these claims should be found to be subject matter eligible under the First Prong.”
Examiner respectfully disagrees with the underlined argument(s)/remark(s).
Examiner’s BRI of the claimed invention is generic computer structure, communicatively coupled to a conventional/generic device structure comprising a conventional/generic battery structure, being used as a tool to: conventionally/generically acquire data corresponding to the conventional/generic battery structure of the conventional/generic device structure while the conventional/generic battery structure is conventionally/generically discharging/charging; training a mathematical model with the generically acquired data; and generating a result from the mathematical model for display.
When examining step 2A Prong 1, Examiner determines if there is an abstract idea present. One skilled in the art can at least perform the identified abstract idea utilizing Mathematical Concepts – mathematical relationships; mathematical formulas or equations or mathematical calculation. The arguments, in light of the specification, fail to convince the Examiner that utilizing Mathematical Concepts and/or Mental Processes does not fit within the scope of the identified abstract limitations.
With respect to the August 4th, 2025 memorandum, the memorandum refers to the July 2024 Subject Matter Eligibility examples. The examined claims align with Example 47, claim 2, which an abstract idea was identified as being present and was found to be patent ineligible.
It is important to note, the judicial exception alone cannot provide the improvement. An improved abstract idea is still an abstract idea.
-Applicant states
“Nevertheless, in any event, even assuming arguendo that the independent claims recite a judicial exception enumerated in the 2019 PEG, the present claims are subject-matter eligible under the second prong of Step 2A. In the second prong, the Office evaluates whether a claim as a whole integrates the judicial exception into a practical application of the exception. Examiners evaluate integration into a practical application by. (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. Importantly, the 2019 PEG provides that revised Step 2A does not evaluate whether an additional element is well-understood, routine, or conventional activity, and Examiners are reminded that a claim that includes conventional elements may still integrate an exception into a practical application.
Applicant respectfully submits that the present claims are directed to a practical application that imposes a meaningful limit on the alleged abstract idea. For example, as described at paragraph [0002], Monte Carlo simulations are generally too computationally expensive to be used by computers to make recurring predictions of a lifetime of a battery. Claim 1 solves this problem by using an initial Monte Carlo simulation to generate a first set of uncertainty intervals, which are then used to train a machine learning model, which may be used by the computer to make future predictions with greater computational efficiency while maintaining the degree of accuracy of the Monte Carlo simulation, as described, for example, at paragraphs [0021] and [0034]. Therefore, by generating the second plurality of uncertainty intervals using the machine learning model requires less energy that outputting the first plurality of uncertainty intervals using the Monte Carlo simulation. Claim 1 improves the functioning of the computer itself by increasing the computational efficiency with which the computer can make accurate predictions.
Additionally, data is required to perform the initial Monte Carlo simulation. Claim 1 solves this problem by controlling the target system including the battery to operate according to a training routine in which the the battery is controlled to vary in state of charge to cycle the battery through a plurality of different operating conditions, as described at paragraph [0020], which may ensure sufficient data (e.g., a sufficient amount of data corresponding to a sufficient number of potential operating conditions) to be accumulated to execute the Monte Carlo simulation (e.g., before the target system is online). Once the machine learning model is trained and the target sytem is undergoing normal operation, the machine learning model may be used to make predictions based on live data.
Accordingly, in this case, "a technical explanation of the asserted improvement is present in the specification, and . .. the claim reflects the asserted improvement," which is sufficient to establish a practical application. See USPTO October 2019 Guidance, Section IIIB. Independent Claims 10 and 19, although differing in scope, include similar recitations.
Accordingly, Applicant respectfully requests that the Section 101 rejection be withdrawn because the claims are not "directed to" an abstract idea.”.
Examiner respectfully disagrees with the underlined argument(s)/remark(s).
The claimed invention merely utilizes generic computer structure as a tool to perform the mathematical processing and display the result of the mathematical model corresponding to the lifespan of a generic battery structure. Examiner is not persuaded, in light of the specification, that the claimed invention is directed to improving how a computer functions.
When examining step 2A Prong 2, Examiner examines the additional elements to determine if the identified abstract idea has been practically applied in a particular way in a particular technology. Limitations that are not indicative of integration into a practical application: Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP § 2106.05(f)); Adding insignificant extra-solution activity to the judicial exception (see MPEP § 2106.05(g)); or Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP § 2106.05(h)). The additional elements, when viewed individually and in combination with the identified abstract idea, do not add anything beyond mere instructions to implement an abstract idea on a computer, adding generic ‘apply it’ language, and generically linking the identified abstract idea to a technological environment or field of use.
Again, it is important to note, the judicial exception alone cannot provide the improvement. An improved abstract idea is still an abstract idea.
-Applicant states
“B. Applicant's Claims Are Directed to "Significantly More" Than the Abstract Idea
With that said, even assuming for the sake of argument that the pending claims are directed to an abstract idea (which Applicant does not concede), the claims are directed to "significantly more" than the alleged abstract idea itself.
In particular, "[t]he second step of the Alice test is satisfied when the claim limitations involve more than performance of well understood, routine, [and] conventional activities previously known to the industry." Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (emphasis added). Moreover, at this second step of the analysis, the elements of each claim must be examined both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent eligible application. Id. at 1366; see also MPEP 2106.05(d) ("Even if one or more additional elements are well-understood, routine, conventional activity when considered individually, the combination of additional elements may amount to an inventive concept. For example, a microprocessor that performs mathematical calculations and a clock that produces time data may individually be generic computer components that perform merely generic computer functions, but when combined may perform functions that are not generic computer functions and thus be an inventive concept."). Importantly, "[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact." Berkheimer, 881 F.3d at 1368 (emphasis added).
With this guidance in mind, the Office must provide factual evidence to support any conclusion that the elements of the pending claims recite, both individually and in combination, no more than well-understood, routine, and conventional activities, in order to reject the claims under Section 101 at the second step of the eligibly analysis. In the instant application, the pending claims clearly recite more than well-understood, routine, or conventional functionality of uncertainty prediction computing systems. As the Federal Circuit confirmed in Berkheimer, even if the Office Action asserts that the pending claims are rendered obvious by virtue of disparate publications, this does not amount to evidence that the recitations are well understood, routine, or conventional under this second step. See Berkheimer, 881 F.3d at 1369 ("Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean that it was well-understood, routine and conventional.") (emphasis added); see also MPEP 2106.05(d) ("An additional element (or combination of additional elements) that is known in the art can still be unconventional or non-routine. The question of whether a particular claimed invention is novel or obvious is 'fully apart' from the question of whether it is eligible."). The fact that the pending claims overcome the prior art strengthens the conclusion that these steps are not well understood, routine, and conventional.
In summary, at a minimum, the Section 101 rejection must be withdrawn under Berkheimer because the Office Action presents no evidence that it was well-understood, routine, or conventional to perform the steps discussed above. This is true for each of the pending independent and dependent claims, which in combination recite far more than well-understood, routine, and conventional activities.
Accordingly, for these additional reasons, Applicant respectfully requests that the Section 101 rejection of Claims 1-20 be withdrawn.”.
Examiner respectfully disagrees with the underlined argument(s)/remark(s).
When examining step 2B, Examiner examines the additional elements to determine if they amount to significantly more than the abstract idea. The only additional element(s) is/are the generic computer structure, communicatively coupled to a conventional/generic device structure comprising a conventional/generic battery structure, being used as a tool to perform the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
With respect to Berkheimer, examiner is only required to show evidence for the additional elements that they are well understood, routine, and/or conventional, not the entire claim. This is a 101 rejection, not a prior art rejection.
Examiner has shown evidence by citing Alice Corp., 134 S. Ct. at 2359-60, 110 USPQ2d at 1984 and a plurality of cited references (see Non-Final OA mailed 12/07/2023). For example, VALPOLA (US 20200151547 A1) teaches controlling a target system for the purpose of training a mathematical uncertainty model and visually displaying information corresponding to the model. CHOW (US 20160209472 A1) teaches utilizing sensors communicatively coupled to a battery to acquire data during charging/discharging cycles for the purpose of estimating battery life.
Therefore, Examiner maintains that the additional elements are well understood, routine, and/or conventional.
With everything being said, Examiner has updated said rejections necessitated by amendment(s).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND NIMOX whose telephone number is (469)295-9226. The examiner can normally be reached Mon-Thu 10am-8pm CT.
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RAYMOND NIMOX
Primary Examiner
Art Unit 2857
/RAYMOND L NIMOX/Primary Examiner, Art Unit