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 .
Claim Status
This Office action is responsive to amendments and remarks filed on 10/14/2025.
Claims 1-5, and 7-9 have been amended, a new matter rejection is detailed below.
Claims 6 and 10 have been cancelled.
Claims 1-5, and 7-9 are currently pending.
Response to Amendment
In light of the amendment the objection to the abstract is withdrawn.
In light of the amendment the rejection under 36 USC §112(b) to claim 3 for the lack of antecedent basis is withdrawn. However, a new ground of rejection under 112(b) is detailed below.
The substitute specification filed 10/14/2025 has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because: An accompanying clean version (without markings) has not been supplied. The objection is detailed below.
In light of the amendment the claim interpretations under 35 USC §112(f) to claims 1, 4, and 7-9 have been withdrawn, new grounds for interpretation are detailed below.
Response to Arguments
Applicant's arguments filed 10/14/2025 regarding the rejections under 35 USC §101 have been fully considered but they are not persuasive.
Applicant’s arguments appear to be solely directed towards claim 1. Applicant is reminded that the rejection was also directed at matter contained in claims 2, 5 and 10, claim 10 having been cancelled is now moot.
Regarding claim 1, the limitation “a second optical signal that is the optical signal pattern having a largest light emission period ratio in the unit period among the optical signal patterns when the unit cell is in an abnormal state” is still directed to a natural phenomenon. The limitation in the same claim “receiving the optical signal output from the signal output part in each of the plurality of battery units by the light receiving device, and determining that the assembled battery is abnormal when it is analyzed that the second optical signal has been received” is still rejected under §101 for being directed towards abstract ideas that constitute a mental process i.e. observations and evaluations.
Regarding claim 2, the limitations “the first optical signal is an optical signal with a light emission period ratio of 0.01 or less in the unit period” and “the second optical signal is an optical signal with a light emission period ratio of 0.1 or more in the unit period” are again directed towards a natural phenomenon. The optical signal itself can not be claimed as written with regard to overcoming the said rejection under §101.
Regarding claim 5, the limitation “analyzing the optical signal for each wavelength received by the signal receiving part” is still an abstract idea that constitutes a mental process, i.e. observations and evaluations as explained in the rejection under §101 in the prior office action.
Applicant's arguments filed 10/14/2025 regarding the interpretation of the claims under 35 USC §112(f) have been fully considered and a detailed examination of the claims is provided in the sections titled “Claim Interpretation” and “Claim Rejections - 35 USC § 112” below.
Applicant's arguments filed 10/14/2025 regarding the rejection of claim 1 under 35 USC §112(b) have been fully considered but they are not persuasive. The amended claim recites “an oscillation circuit for generating a first optical signal by changing an optical signal pattern during a predetermined unit period in accordance with the state of the unit cell, and generating a second optical signal that is the optical signal pattern having a largest light emission period ratio in the unit period among the optical signal patterns when the unit cell is in an abnormal state.” The term the “oscillation circuit” in and of itself lacks structure and the specification can to be consulted. The specification [0046] discloses “time length of the unit period is specified by a clock signal generated by an oscillation circuit incorporated in the light emission control part 45.” Where figure 5 of the drawing shows an exact structure. Because of this the rejection of claim 1 under 35 USC §112(b) is maintained.
Applicant’s arguments with respect to the rejection of claim 1 under 35 USC §102(a)(1) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Specification
A substitute specification excluding the claims is required pursuant to 37 CFR 1.125(a) because the amended specification submitted 10/14/2025 lacked a clean copy. See the detailed requirement under 37 CFR 1.125(a) below.
A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon, and an abstract idea without significantly more. The claims recite the sending, and receiving of optical signals which are a natural phenomenon, and the analyzing of those optical signals which are generating patterns as read in claim 1, light emission period ratios, as claimed in claim 2, and different wavelengths (i.e. colors) as claimed in claim 5, are abstract ideas that constitute a mental process i.e. observations and evaluations. This judicial exception is not integrated into a practical application because once the determination step is done, a signal (first or second) is sent based on the state of the unit cell. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the assembled battery, the signal output part, the signal receiving part, and the signal analysis processing part are all well understood, routine and conventional within the battery art as evidenced by US 20190229518 A1, RONNE et al. in the §103 rejection detailed below.
The MPEP 2106.05(h) Field of Use and Technological Environment discloses that the courts often cite to Parker v. Flook as providing a classic example of a field of use limitation. See, e.g., Bilski v. Kappos, 561 U.S. 593, 612, 95 USPQ2d 1001, 1010 (2010) ("Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable") (citing Parker v. Flook, 437 U.S. 584, 198 USPQ 193 (1978)). In Flook, the claim recited steps of calculating an updated value for an alarm limit (a numerical limit on a process variable such as temperature, pressure or flow rate) according to a mathematical formula "in a process comprising the catalytic chemical conversion of hydrocarbons." 437 U.S. at 586, 198 USPQ at 196. Processes for the catalytic chemical conversion of hydrocarbons were used in the petrochemical and oil-refining fields. Id. Although the applicant argued that limiting the use of the formula to the petrochemical and oil-refining fields should make the claim eligible because this limitation ensured that the claim did not preempt all uses of the formula, the Supreme Court disagreed. 437 U.S. at 588-90, 198 USPQ at 197-98. Instead, the additional element in Flook regarding the catalytic chemical conversion of hydrocarbons was not sufficient to make the claim eligible, because it was merely an incidental or token addition to the claim that did not alter or affect how the process steps of calculating the alarm limit value were performed. Further, the Supreme Court found that this limitation did not amount to an inventive concept. 437 U.S. at 588-90, 198 USPQ at 197-98. The Court reasoned that to hold otherwise would "exalt[] form over substance", because a competent claim drafter could attach a similar type of limitation to almost any mathematical formula. 437 U.S. at 590, 198 USPQ at 197.
Claim Interpretation
While claim 1 does not invoke USC §112(f) as a means plus function claim, the limitation “a sensor for detecting a state of the unit cell” is not clear without consulting the specification. When looking to the instant specification for clarity the only sensor that is disclosed is the temperature sensor (42). For examination purposes the limitation of the claim will be interpreted as “a temperature sensor for detecting the temperature of the cell.”
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, and 7-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, “an assembled battery state estimation system” is not supported in the specification and appears to be new matter. The specification supports “an assembled battery” and “a state estimation system” but not “an assembled battery state estimation system”. For examination purposes this limitation will be interpreted as “a state estimation system”.
Claims 2-5, and 7-9 are rejected as being dependent on a rejected base claim.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5, and 7-9 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.
Regarding the claim 1 limitation “an oscillation circuit for generating a first optical signal by changing an optical signal pattern during a predetermined unit period in accordance with the state of the unit cell, and generating a second optical signal that is the optical signal pattern having a largest light emission period ratio in the unit period among the optical signal patterns when the unit cell is in an abnormal state."
For examination purposes this limitation will be interpreted as “a device for generating a first optical signal”.
This claim has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether these limitations should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the term “means” or generic placeholder is modified by a word, which is ambiguous regarding whether it conveys structure or function. The boundaries of these claim limitations are ambiguous; 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.
In response to this rejection, applicant must clarify whether these limitations should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claims 2-5, and 7-9 stand rejected under 35 USC §112(b) as being dependent on a rejected base claim.
Furthermore, regarding claims 7-9, the preamble of the claim reads, “The lithium-ion battery system according to claim 1, wherein the functions further include…” This renders the above claims indefinite for failing to particularly point out and distinctly claim the subject matter. The reason being is that it is not clear if the claim is reading on a lithium battery system or the method of using the lithium battery system. Moreover, the limitation “the function” lacks antecedent basis. It is unclear if this is the function of the lithium-ion battery system according to claim 1, or an additional function of “the processor connected to the memory, wherein the processor executes the executable instructions to provide functions including…” For examination purposes the claims will be interpreted as they were in the prior office action. If it is determined that a method of using the claimed lithium-ion battery system is being claimed a restriction requirement will be presented to the applicant.
Claim Rejections - 35 USC § 102
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.
Claims 1-5, and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20190229518 A1, RONNE et al.
Regarding claim 1. A battery system [abstract], comprising:
an assembled battery formed by stacking a plurality of battery units [0002], (referred to as modules) each of the plurality of battery units including a unit cell consisting of a battery and a signal output part [0005] called a pack controller processor provided in the unit cell [0011];
a light guide [0145] called an optical fiber or a light pipe; and
an assembled battery state estimation system [0138] called a battery management system (BMS), wherein
the signal output part [0005] called a pack controller processor includes:
a sensor [0143] called a module controller for detecting a state of the unit cell;
an oscillation circuit [0005] called “signal generation circuitry configured to generate a transmitted electrical signal; and a first electro-optical transmitter communicatively coupled to the signal generation circuitry to receive the transmitted electrical signal and configured to convert the transmitted electrical signal into a transmitted optical signal for transmitting to the module controller”; and
a light emitting part [0004] called a first electro-optical transmitter for emitting the generated first optical signal and the second optical signal, wherein
the light guide [0145] called a light pipe or optical fiber transmits the optical signal including the first optical signal [0006] (referred to as received) and the second optical signal [0011] (referred to as an optical safety fault signal) emitted from the signal output part in each of the plurality of battery units to a light receiving device in a crossing state, and
the battery state estimation system [0138] called a battery management system (BMS) includes:
a memory [0005] called a pack controller memory for storing executable instructions; and
a processor [0005] called a pack controller processor connected to the memory, wherein
the processor executes the executable instructions [0005] to provide functions including:
[0006] receiving the optical signal output from the signal output part in each of the plurality of battery units by the light receiving device, and
[0027] determining that the assembled battery is abnormal when it is analyzed that the second optical signal has been received.
It is noted a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In claims 1-5, and 7-9, the intended use of lithium ion batteries for providing load is not given patentable weight.
Regarding claim 2. The lithium-ion battery system according to claim 1, wherein
each of the optical signal patterns is preset in an IC (Integrated Circuit) chip [0004] called a pack controller ([0226] envisioned as a microprocessor, controller, microcontroller, programmable logic controller, field programmable gate array, or an application-specific integrated circuit) for each of the signal output parts [0010] (electro-optical transmitter),
[0009] the first optical signal is an optical signal with a light emission period ratio of 0.01 or less in the unit period, and
[0009] the second optical signal is an optical signal with a light emission period ratio of 0.1 or more in the unit period.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claim 3. The lithium-ion battery system according to claim 2, wherein
each of the plurality of battery units is provided with [0002] (called battery packs)
each of the plurality of battery units is provided with an IC chip [0004] called a pack controller ([0226] envisioned as a microprocessor, controller, microcontroller, programmable logic controller, field programmable gate array, or an application-specific integrated circuit)
a temperature sensor [0143], and
a light emitting part (electro-optical transmitter) [0004]; and
the IC chip [0004] called a pack controller ([0226] envisioned as a microprocessor) causes the light emitting part to output the optical signal [0004] indicating the abnormality of the unit cell when the temperature detected by the temperature sensor is higher or lower than the proper temperature range Qn. [0046] (where Qn is represented by the overtemperature condition)
Regarding claim 4. The lithium-ion battery system according to claim 2, wherein
each of the signal output part in each of the plurality of battery units includes
[0143] a voltage sensor for detecting a voltage of the unit cell in the battery unit concerned, and
[0004] the IC chip (pack controller) controls the light emitting part to cause the light emitting part to output the optical signal corresponding to
[0046] a temperature detected by the temperature sensor and
[0143] the voltage detected by the voltage sensor part.
Regarding claim 5. The lithium-ion battery system according to claim 2, wherein the light emitting part [0047] (electro-optical transmitter [0004]) in each of the plurality of battery units (packs) emits light with different wavelengths, and wherein the functions [0011] of the module controller further include: analyzing the optical signal for each wavelength received by the signal receiving part.
Regarding claim 7. The lithium-ion battery system according to claim 1, wherein the functions [0011] of the module controller further include:
[0011] an abnormality notification (referred to as an optical safety fault signal) part for issuing a notification when the state determination part ([0143] sensor) determines the assembled battery as being abnormal (the fault state [0015]).
Regarding claim 8. The lithium-ion battery system according to claim1, wherein the functions [0011] of the module controller further include:
estimating [0005] (referred to as a pack controller processor) for estimating (processing) an abnormal state (fault state) of a unit cell adjacent to an abnormal unit cell, which is determined by an analysis by the processor [0005] called a pack controller processor, to be in the abnormal state, by the optical signal corresponding to a temperature detected by the temperature sensor ([0046] thermistor) provided in the abnormal unit cell, and
determining the assembled battery as being abnormal (fault) in accordance with the estimation result by the estimating part pack (controller processor)[0032].
Regarding claim 9. The lithium-ion battery system according to claim1, wherein the functions [0011] of the module controller further include:
estimating (processing) the abnormal state (fault) of a unit cell adjacent to an abnormal unit cell, which is determined by an analysis to be in the abnormal state (half duplex), by the optical signal corresponding to a temperature detected by temperature sensors [0183] provided in both the abnormal unit cell (faulted) and the unit cell adjacent to the abnormal unit cell, and
the abnormality (fault) of the assembled battery is estimated (processed) in accordance with an analysis processing (signal processing circuitry) result and an estimation result [0032].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20120326670 A1, SHOOK et al. which discloses a charge control scheme for power tools using lithium-ion batteries. US 20180224506 A1, KUROSA discloses a circuit management device utilizing fiber optics to detect abnormalities and US 4289836 A, LEMELSON whom discloses a rechargeable battery system that uses LED technology to monitor a battery system.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE LA RAIA III whose telephone number is (703)756-5441. The examiner can normally be reached Mon-Thur 6:00am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached on (571) 272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.L./Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727