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 .
This action is responsive to communication filed on 08/31/2022.
Claims 1-8 are pending. Claims 1-8 have been amended. Entry of this amendment is accepted and made of record.
Claim Objections
Claim 1 objected to because of the following informalities: the claim recites “the battery” in line 7 of the claim. For consistency and in order to avoid antecedent basis issues the examiner suggests the recitation to be amended as --the rechargeable battery--. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “monitoring circuit configured to…”, “transmitter configured to …”, in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-7 is 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, support for the newly added limitation of “a transmitter configured to transmit the first data and the second data stored in the memory via the network based on a request from the server” in lines 13-15 of the claim and for the recited “the server having at least one processor circuit with a first memory comprising instructions that when executed by the at least one first processor circuit cause the at least one first processor circuit to at least” recited in lines 16-18 of the claim and “each of the plurality of information reception devices having at least one second processor circuit with a second memory comprising instructions that when executed by the at least one processor circuit, cause at least one second processor circuit to at least” recited in lines 11-14 on page 3 of claim 1 cannot be found on the original disclosure of the invention or in the portions of the original disclosure of the invention cited by the applicant. Paragraph 0043 of the original disclosure of the invention discloses “image processing unit 47 is a dedicated device that visualizes data collected from the information collection device as an image and includes a high-performance image processing processor”, however it does not expressly or explicitly disclose the image processing unit or high-performance image processing processor being a circuit, nor disclose the server comprising said processor circuit, nor disclose the at least one second processor circuit. While para. 0161 of the original disclosure of the invention discloses “a server serving as an information distribution device or an information processing device” however it does not expressly or explicitly disclose the server comprising “at least one first processor circuit” nor disclose “at least one second processor circuit” as claimed. Clarification and correction is required.
Regarding claim 7, support for the newly added limitation of “at least one processor circuit with a memory comprising instructions that, when executed by the at least one processor circuit, cause the at least one processor circuit to at least” cannot be found on the original disclosure of the invention or in the portions of the original disclosure of the invention cited by the applicant. Paragraph 0043 of the original disclosure of the invention discloses “image processing unit 47 is a dedicated device that visualizes data collected from the information collection device as an image and includes a high-performance image processing processor”, however it does not expressly or explicitly disclose the image processing unit or high-performance image processing processor being a circuit, nor disclose the server comprising said processor circuit, nor disclose the at least one second processor circuit. While para. 0161 of the original disclosure of the invention discloses “a server serving as an information distribution device or an information processing device” however it does not expressly or explicitly discloses the server comprising “at least one first processor circuit” as claimed. Clarification and correction is required.
Dependent claims 2-6 are rejected under 35 USC 112(a) for the reasons discussed above with respect to independent claim 1 from which they depend.
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.
Claim 4-5 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.
Claim 4 recites the limitation "the information collection devices collecting the first data based on the first data" in line 4 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Dependent claims 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph for the reasons discussed above with respect to dependent claim 4 from which it depends.
For examination on the merits the claims will be interpreted as best understood in light of the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. A subject matter eligibility analysis is set forth below. See MPEP 2106.
Under Step 1 of the analysis, claim 1, belongs to a statutory category namely a system. Likely claims 7 belongs to a statutory category, namely a server and claim 8 , belongs to a statutory category, namely it is a method.
Under Step 2A, prong 1: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
The claim(s) 1, 7 and 8 recite(s) concepts related to mathematical algorithms/concepts, and mental processes and concepts performed in the human mind e.g. observation, evaluation, judgment, opinion and methods of organizing human activity and human/commercial practices e.g. organizing information and selling information (see MPEP § 2106.04(a)(2), subsection II) for constructing a power demand model in which the rechargeable battery is used based on the first data and the second data stored in the database and providing at least one of the first data and the second data stored in the database, and the power demand model to the plurality of information reception devices via a network for a fee.
The concepts discussed above can be considered to describe mental processes, namely concepts performed in the human mind or with pen and paper, and/or mathematical concepts, namely a series of calculations leading to one or more numerical results or answers. Although, the claim does not spell out any particular equation or formula being used, the lack of specific equations for individual steps merely points out that the claim would monopolize all possible calculations in performing the steps. These steps recited by the claims, therefore amount to a series of mental or mathematical steps and to methods of organizing human activity and human/commercial practices, making these limitations amount to an abstract idea.
Claim 7 is a server, and claim 8 is an information providing method, with substantially similar claim language as the information providing system of claim 1.
Step 2A, Prong 2 of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.
This judicial exception is not integrated into a practical application because the abstract idea is not performed by using any particular device and because the “information collection devices”, “processor circuit” and “server” (claims 1, 7 and 8), amounts to the recitation of a general purpose computer used to apply the abstract idea; “a monitoring circuit configured to monitor a state of the battery”, “a sensor configured to detect a state of an environment…”, “a collection unit configured to collect the first data and the second data from each of the plurality of information collection devices…”, “a reception unit configured to receive at least one of the first data, the second data and the power demand model…” (claim 1), “collection unit” (claim 7), “ information collection devices”, “collecting…first data…second data…” and “information reception devices” (claim 8), which is mere gathering recited at high level of generality and the results of the algorithm are merely output as part of insignificant post-solution activity (i.e. providing at least one of the first data and the second data stored in the database and the power demand to the plurality of information reception devices …, storing the collected data, data transmission request) generally linking the abstract idea to a field of use (i.e. battery monitoring) and are not used in any particular matter as to integrate the abstract idea in a practical application.
Under Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as described above with respect to Step 2A Prong 2, amounts general purpose computer “devices” used to apply the abstract idea and mere data gathering/output recited at a high level of generality and insignificant extra-solution activity that when further analyzed under Step 2B is found to be well-understood, routine and conventional activities as evidenced by MPEP 2106.05(d)(II); and because the data of performing the algorithm must necessarily be “obtained” and the use of a general purpose computer to implement the abstract idea for performing the algorithm does not amount to significantly more than the recitation of the abstract idea itself.
Therefore, claims 1, 7 and 8 are rejected under 35 U.S.C. 101 as directed to an abstract idea without significantly more.
Dependent claims 2-6 merely appends additional steps that merely expand on the abstract idea of their respective independent claim 1.
Step 2A Prong 1
Dependent claims 2 and 5-6 merely expands on the abstract idea by reciting additional steps related to mathematical algorithms/concepts, and mental processes and concepts performed in the human mind e.g. observation, evaluation, judgment, opinion to “correcting a first deterioration model for predicting a degree of deterioration in a new battery to a second deterioration model intrinsic to the rechargeable battery of a respective one of the information collection device…” (claim 4), “comparing the degree of deterioration predicted using the first deterioration model with a degree of deterioration in the rechargeable battery based on the first data, and corrects the first deterioration model to the second deterioration model based on a result of the comparison” (claim 5) and mere data characterization of the data acquired and applied for performing the abstract idea (claim 3).
Step 2A Prong 2
This judicial exception is not integrated into a practical application in claims 2-6 because the abstract idea is not performed by using any particular device and because the “constructing unit” (claim 5), amounts to the recitation of a general purpose computer used to apply the abstract idea; and because the recitation of “the information collection device collecting the first data based on the first data” (claim 5) amounts to mere data gathering recited at a high level of generality, the limitations merely add further details as to the type of data, the means of collecting data being received/input (claim 2-3), generally linking the abstract idea to a field of use (i.e. rechargeable battery) and the results are merely output as part of insignificant post-solution activity (i.e. through wireless communication or wired communication) (claim 6) and generally linking the abstract idea to a field of use (i.e. battery monitoring) and are not used in any particular matter as to integrate the abstract idea in a practical application.
Step 2B
The claim(s) 2-6 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional elements are general purpose computer used to apply the abstract idea and mere data gathering/output recited at a high level of generality and insignificant extra-solution activity that when further analyzed under Step 2B is found to be well-understood, routine and conventional activities as evidenced by MPEP 2106.05(d)(II) (i.e. network performing communication…); and because the data of performing the algorithm must necessarily be “obtained” and the use of a general purpose computer to implement the abstract idea for performing the algorithm does not amount to significantly more than the recitation of the abstract idea itself.
Discussion of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Maruno US 20210192865A1 discusses An information providing server includes: a communication part configured to communicate with a terminal device; and a provision part configured to read information according to a request level from a battery database including a plurality of elements regarding a secondary battery in response to a request received by the communication part from the terminal device, the request including the request level representing a degree of information disclosure, and the request further including code information assigned to the secondary battery for a vehicle read by the terminal device, and provide the read information to the terminal device using the communication part (abstract). And further discloses he information providing server 200 is used by an information provider that reads battery provision information from the generated battery database and provides the user with the read battery provision information in response to a request from the user. For example, the information provider sells the authority to receive the battery provision information to the user (para. 0029).
Amano et al. US 20190355071 A1 discusses a management server, a first acquirer acquires a use condition for each of multiple electric outlets. An identification unit identifies an electric outlet through which electricity is supplied to a vehicle of a user. A second acquirer acquires charge result information of the vehicle charged up with electricity supplied through the identified electric outlet. A deriver derives at least one of an amount of payment to a manager of the installation place of the identified electric outlet and an amount charged to the user, based on the use condition for the identified electric outlet acquired at the first acquirer and the charge result information acquired at the second acquirer (abstract). And further discusses the management server 18 transmits, to the user terminal 14, receipt information for the fee for the battery charge and also transmits, to the manager terminal 16, payment completion information for the amount of payment to the manager (para. 0037).
Hanafusa US 20140089692A1 discusses a storage battery monitoring method including: receiving, via a communication network, identification information indicating a storage battery system and characteristic data indicating a state of at least one storage battery; determining, based on the received characteristic data, a deterioration model corresponding to the at least one storage battery from among deterioration models managed in a database and indicating deterioration tendencies of other storage batteries; generating, via the communication network, control data for ameliorating a deterioration state of the at least one storage battery at a predetermined point in time according to the corresponding deterioration model; transmitting the generated control data to the storage battery system; and controlling, in the storage battery system, the at least one storage battery based on the transmitted control data (abstract, Fig. 1).
Kamijama US20210091583A1 discloses battery management system includes an electronic device including a battery and a management server connected to the electronic device via a network. The electronic device transmits battery information, including information indicating the battery status, to the management server. The management server accumulates the battery information received from the electronic device in a storage. The management server predicts the current status of the battery of the electronic device based on the battery information of the electronic device, and transmits control information for the battery control of the electronic device to the electronic device based on a prediction result (abstract).
However, the closest prior art of record either in singularly or in combination fails to anticipate or render obvious the limitations set forth by independent claims 1, 7 and 8 without the use of impermissible hindsight.
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
With respect to applicant arguments with respect to claim interpretation under 35 USC 112(f) applicant argues that the claims have been amended so as to eliminate the language that invokes such an interpretation where appropriate and requests the assertion that any elements of the present claims are subject to interpretation under 35 USC 112(f) be withdrawn (see section I, second paragraph of page 7 of the remarks).
In response, the examiner disagrees and submits that as discussed the claims are still subject to interpretation under 35 USC 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “monitoring circuit configured to…”, “transmitter configured to …”, in claim 1.
With respect to rejections made to claims 1-8 under 35 USC 112(b), applicant submits that as amended the claims address the formalities noted in the Office Action including providing antecedent basis where found lacking (see section II, last paragraph of page 7 of the remarks). In response the examiner disagrees and submits that the amendment to the claims were not sufficient to overcome all the issues under 35 USC 112(b). Although the amendments to the claims were sufficient to overcome the 35 USC 112(b) issues of claims 1-3 and 6-8, however claims 4-5 stand rejected under 35 USC 112(b). Claim 4 stand rejected under 35 USC 112(b) because the claim recites the limitation "the information collection devices collecting the first data based on the first data" in line 4 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Dependent claims 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph for the reasons discussed above with respect to dependent claim 4 from which it depends.
With respect to applicant submission that claims 1-8 fall within one of the enumerated categories under step 1 set forth in MPEP 2106.03, the examiner agrees and submits that as pointed out in outstanding office action on page 8, lines 4-5 claim 1 corresponds to a system, claims 7 is a server and claim 8 is an information providing method. Therefore, the claims falls within one of the enumerated categories under Step 1 set forth in MPEP 2106.03.
With respect to claims 1-8 rejected under 35 USC 101 applicant argues that the claims are Patent-Eligible under Step 2A, prong 1 set forth in MPEP 2106.04 (see section B on page 8 of the remarks).
Applicant argues that the office action has not alleged hot the present claim are preemptive or how they improperly monopolize the basic tools of scientific and technological work and submits that the claim 1 as amended is not preemptive such that it improperly monopolizes any basic tool of scientific or technical work. Applicant submits that claim 1 includes a rechargeable battery, a monitoring circuit, a sensor that detects a state of the environment, a memory to store a history of the state of the rechargeable battery and a transmitter to communicate with the server; and that claim 1 further recites a server that issues data transmission requests to information collection devices, collects data from the information collection devices via a network, stores the data, constructs a power demand model for the rechargeable battery and sends data and the poser demand model to information reception devices and includes information reception devices that receive the data and the power demand model (see last paragraph of page 8 of the remarks through line 9 of page 9 of the remarks). Applicant further submits that “[t]he office action provides no analysis with respect to how the present claims are preemptive” and asserts that claims 1, 7 and 8 as amended are relatively specific given the combination of various elements they recite ad that the rejection of claims 1, 7 and 8 is improper (see second paragraph of page 9 of the remarks).
In response the examiner disagrees and submits that as discussed in outstanding office action the claims does not spell out any particular equation or formula being used. The absence of specific equations for individual steps merely points out that the claim would monopolize all possible calculations in performing the steps for providing/constructing a power demand model in which the rechargeable battery is used based on the first data and the second data stored in the database; and providing at least one of the first data and the second data stored in the database, and the power demand model to the plurality of information reception devices via a network for a fee. These steps recited by the claim therefore amount methods of organizing human activity and human/commercial practices e.g. organizing information and selling information (see MPEP § 2106.04(a)(2), subsection II), and to a series of mental or mathematical steps, making these limitations amount to an abstract idea. The lack of specific steps in “constructing/providing a power demand model in which the rechargeable battery is used based on the first data and the second data stored in the database and providing at least one of the first data and the second data stored in the database, and the power demand model to the plurality of information reception devices via a network for a fee” would monopolize all the possible ways of constructing or providing a power demand model and providing the data to information devices via a network for a fee.
The examiner further submits that although the claim 1 includes a rechargeable battery, a monitoring circuit, a sensor that detects a state of the environment, a memory to store a history of the state of the rechargeable battery and a transmitter to communicate with the server; and that claim 1 further recites a server that issues data transmission requests to information collection devices, collects data from the information collection devices via a network, stores the data, constructs a power demand model for the rechargeable battery and sends data and the poser demand model to information reception devices and includes information reception devices that receive the data and the power demand model, however the additional claim elements are not sufficient to amount to integrate the abstract idea into a practical application such that the claim amounts to significantly more than the abstract idea itself. As such the claimed monitoring circuit , sensor amounts to mere data gathering recited at a high level of generality and generally linking the abstract idea to a field of use (i.e. rechargeable battery monitoring), which do not integrate the abstract idea into a practical application. The claim does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional elements are general purpose computer used to apply the abstract idea and mere data gathering/output recited at a high level of generality and insignificant extra-solution activity that when further analyzed under Step 2B is found to be well-understood, routine and conventional activities as evidenced by MPEP 2106.05(d)(II) (i.e. memory to store a history of the state of the rechargeable battery and a transmitter to communicate with the server, network performing communication…); and because the data of performing the algorithm must necessarily be “obtained” and the use of a general purpose computer to implement the abstract idea for performing the algorithm does not amount to significantly more than the recitation of the abstract idea itself.
Therefore the claims stand rejected under 35 USC 101 as being directed to an abstract idea without significantly more.
Applicant argues in penultimate paragraph of page 14 of the remarks that the claims recite elements that cannot be practically performed in the human mind, such that the human mind is not equipped to perform such claim elements are not mental process and therefore are not an abstract idea in accordance with step 2A. Applicant asserts that the elements of at least independent claims 1, 7 and 8 cannot practically be performed in the human mind and accordingly these elements do not recite a mental process. Applicant submits that independent claim 1 requires multiple information collection device that include a rechargeable battery that supplies power and that the information collection devices also include a monitoring circuit that monitors the state of the rechargeable battery and that this monitoring is done over a long period of time as the state of the rechargeable battery changes with time (see last paragraph of page 14 of the remarks). Applicant further submits that it would not be practical for a user to observe the use of a rechargeable battery over time to collect such information, since are not reasonably accessible to a user for the purpose of collecting information on the state of a battery (see last paragraph of page 14 through line 5 of page 15 of the remarks). Applicant further submits that it would be impractical for a user to request information from the information collection devices as such devices are presumably being used for various purposes and that it is not practical to implement the communication necessary to interact with the information collection devices in a manner that will maintain timely data from the information collection devices that is needed to determine the current state of the batteries associated with the information collection devices (see penultimate paragraph on page 15 of the remarks). In addition applicant submits that it would not be practical for a human being to store the significant amount of data from the information collection devices and to produce a power demand model associated with the user of the respective rechargeable batteries, given that the data may be collected over a long period of time, the data may be determined “big data” and cannot be practically processed with mental capacity of the human being (see last paragraph of page 15 of the remarks). Furthermore applicant submits that the data and the model are provided to reception devices, that the data is provided to the information reception devices for a fee and that the human mind is not equipped to obtain the large amounts of data, generate models, and send the data and the models to the reception devices in a timely manner such that the model accurately reflects the state of the rechargeable given that there are a plurality (see first paragraph of page 16 of the remarks); that it would not practical for a human being to provide for such communication either orally or by way of pen and paper (see second and penultimate paragraph of page 16 of the remarks); and that the rejection of the claimed subject matter here so broadly construes the notion of an abstract idea that the exclusionary principal has, in fact, swallowed the patentability of the claimed embodiments (see last paragraph of page 16 through second line of page 17 of the remarks).
In response, the examiner submits that it appears that the applicant have misconstrued the analysis and the rejections under 35 USC 101 which have been made following the subject matter eligibility analysis according to the guidelines set forth on MPEP 2106.
As discussed above, and that the argued limitations which is part of the data gathering step and the memory configure to store is not considered as part of the abstract idea, but as an additional element and well understood, routine and conventional activities as evidenced by MPEP 2106.05(d)(II).
The claimed information reception devices, the monitoring circuit configured to monitor the state of a battery and sensor configured to detect a state of an environment where the plurality of information collection devices are installed is mere data gathering recited at a high level of generality generally linking the abstract idea to a field of use (i.e. battery monitoring) and storing the data in a memory is insignificant extra-solution activity, which are elements do not integrate the abstract idea into a practical application nor amount to significantly more than the abstract idea itself.
Furthermore, the claim does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional elements are general purpose computer used to apply the abstract idea and mere data gathering/output recited at a high level of generality and insignificant extra-solution activity that when further analyzed under Step 2B is found to be well-understood, routine and conventional activities as evidenced by MPEP 2106.05(d)(II) (i.e. memory to store a history of the state of the rechargeable battery and a transmitter to communicate with the server, network performing communication…); and because the data of performing the algorithm must necessarily be “obtained” and the use of a general purpose computer to implement the abstract idea for performing the algorithm does not amount to significantly more than the recitation of the abstract idea itself.
Although examiner submits that even when handling “big data” and to perform data analysis of said data to provide a power demand model would be a complex task to perform in the human mind or by pen and paper and would take more time than by performing complex operations by using a general computer, however, constructing said power demand model and providing said data and power model to the plurality of information reception devices via the network for a fee are still considered abstract ideas directed to mathematical algorithms/concepts, and mental processes and concepts performed in the human mind e.g. observation, evaluation, judgment, opinion and methods of organizing human activity and human/commercial practices e.g. organizing information and selling information (see MPEP § 2106.04(a)(2), subsection II).
While implementing the abstract idea would be advantageous to use a generic computer device reduce the time it would take to implement complex operations, it have been held that the use of a general purpose computer to implement the abstract idea do not amount to significantly more than the abstract idea and cannot be considered a practical application of the abstract idea. Therefore, for the reasons discussed above the claims stand rejected under 35 USC 101.
The examiner reiterates that as discussed above the claim(s) 1, 7 and 8 recite(s) concepts related to mathematical algorithms/concepts, and mental processes and concepts performed in the human mind e.g. observation, evaluation, judgment, opinion and methods of organizing human activity and human/commercial practices e.g. organizing information and selling information (see MPEP § 2106.04(a)(2), subsection II) for constructing a power demand model in which the rechargeable battery is used based on the first data and the second data stored in the database and providing at least one of the first data and the second data stored in the database, and the power demand model to the plurality of information reception devices via a network for a fee.
This judicial exception is not integrated into a practical application because the abstract idea is not performed by using any particular device and because the additional claimed elements amounts to the recitation of a general purpose computer used to apply the abstract idea; to mere gathering recited at high level of generality and the results of the algorithm are merely output as part of insignificant post-solution activity (i.e. providing at least one of the first data and the second data stored in the database and the power demand to the plurality of information reception devices …, storing the collected data, data transmission request) generally linking the abstract idea to a field of use (i.e. battery monitoring) and are not used in any particular matter as to integrate the abstract idea in a practical application.
Under Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as described above with respect to Step 2A Prong 2, amounts general purpose computer “devices” used to apply the abstract idea and mere data gathering/output recited at a high level of generality and insignificant extra-solution activity that when further analyzed under Step 2B is found to be well-understood, routine and conventional activities as evidenced by MPEP 2106.05(d)(II); and because the data of performing the algorithm must necessarily be “obtained” and the use of a general purpose computer to implement the abstract idea for performing the algorithm does not amount to significantly more than the recitation of the abstract idea itself.
Therefore the claims stand rejected as being directed to an abstract idea without significantly more.
With respect to claims 1-18 applicant argues that the claims are patent eligible under step 2a, prong 2 set forth in MPEP 2106.04.
Applicant submits that “…assuming solely for the sake of argument, and without conceding that the claims were directed to an abstract idea, claims 1-8 are nevertheless patent-eligible because the specific combination of limitations integrate the alleged judicial exception into a practical application as determined under Step 2A, prong 2.
Applicant asserts that claim 1 as amended as a whole integrates an alleged abstract idea into a practical application. Specifically, the reasons that the various elements of the present claims cannot be practically performed by the human mind as set forth above provide the reasons that the subject matter of claim 1 as amended integrates an alleged abstract idea into a practical application. Applicant notes that in order to provide data and generate a meaningful power demand model that comports with the current usage of the rechargeable battery, the data must be obtained in a timely manner by way of the network and the communication between the respective devices.
Accordingly, Applicant asserts the above elements of at least claims 1, 7, and 8 when interpreted relative to the specification set forth elements that are indicative of a practical application under Step 2A, prong 2. Accordingly, for at least the foregoing reasons, Applicant requests that the rejection of claims 1, 7, and 8 under § 101 be withdrawn. Further, Applicant requests that the rejection of claims 2-6 be withdrawn as depending from claim 1.” (see page 17 of the remarks).
In response, the examiner disagrees and submits that the additional claim limitations recited by the instant application claims do not reflect an improvement to the functioning of the computer, improvement to any other technology or technical field, applying the judicial exception with or by use of a particular machine or adding a specific limitation other than what is well-understood, routine and conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application as discussed above and is generally linking the use of the judicial exception to a field of use – see MPEP 2106.05(h) and as such is not indicative of a practical application of abstract idea.
Applicant argues that claims 1-8 are patent eligible under step 2B set forth in MPEP 2106.04.
Applicant submits that “assuming solely for the sake of argument, and without conceding that the claims were directed to an abstract idea, claims 1-8 are nevertheless patent-eligible because at least claims 1, 7, and 8 as amended recite additional elements that are sufficient so as to amount to significantly more than the judicial exception as determined under Step 2B.
Applicant asserts that claim 1 as amended as a whole amounts to significantly more than the judicial exception. Specifically, the reasons that the various elements of the present claims cannot be practically performed by the human mind as set forth above provide the reasons that the subject matter of claim 1 are sufficient so as to amount to significantly more than the judicial exception. Applicant notes that in order to provide data and generate a meaningful power demand model that comports with the current usage of the rechargeable battery, the data must be obtained in a timely manner by way of the network and the communication between the respective devices.
Accordingly, for at least the foregoing reasons, Applicant requests that the rejection of claims 1, 7, and 8 under § 101 be withdrawn. Further, Applicant requests that the rejection of claims 2-6 be withdrawn as depending from claim 1” (see page 18 of the remarks).
In response the examiner disagrees and submits that as discussed above under Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as described above with respect to Step 2A Prong 2, amounts general purpose computer “devices” used to apply the abstract idea and mere data gathering/output recited at a high level of generality and insignificant extra-solution activity that when further analyzed under Step 2B is found to be well-understood, routine and conventional activities as evidenced by MPEP 2106.05(d)(II); and because the data of performing the algorithm must necessarily be “obtained” and the use of a general purpose computer to implement the abstract idea for performing the algorithm does not amount to significantly more than the recitation of the abstract idea itself.
As discussed above, even when the argued tasks i.e. handle “big data” and to perform data analysis of said data to provide a power demand model, can be considered a complex task to perform in the human mind or by pen and paper that would take more time than by performing complex operations by using a general computer, however constructing said power demand model and providing said data and power model to the plurality of information reception devices via the network for a fee are still considered abstract ideas directed to mathematical algorithms/concepts, and mental processes and concepts performed in the human mind e.g. observation, evaluation, judgment, opinion and methods of organizing human activity and human/commercial practices e.g. organizing information and selling information (see MPEP § 2106.04(a)(2), subsection II).
While implementing the abstract idea would be advantageous to use a generic computer device reduce the time it would take to implement complex operations, it have been held that the use of a general purpose computer to implement the abstract idea do not amount to significantly more than the abstract idea itself and cannot be considered a practical application of the abstract idea nor an improvement to the technology. Therefore, for the reasons discussed above the claims stand rejected under 35 USC 101.
Conclusion
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 YARITZA H PEREZ BERMUDEZ whose telephone number is (571)270-1520. The examiner can normally be reached Monday-Friday.
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/YARITZA H. PEREZ BERMUDEZ/
Examiner
Art Unit 2857
/SHELBY A TURNER/Supervisory Patent Examiner, Art Unit 2857