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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-11 remain pending, and are rejected.
Claims 12-16 have been added, and are rejected.
Response to Arguments
Applicant’s arguments filed on 12/8/2025 with respect to the rejection under 35 U.S.C. 101 have been fully considered, but are not persuasive for at least the following rationale:
Applicant’s arguments filed on 12/8/2025 with respect to the rejection under 35 U.S.C. 101 for claims directed to a judicial exception are not persuasive.
Notably, on pages 8-10 of the Applicant’s Remarks, arguments are made that the identifying a notification destination makes it possible to send the price information to a more adequate destination to improve the possibility that the second user reviews the price information and approves the selling of the battery at the price included in the price information, and improves the functioning of a computer or another technical field. On pages 10-11, the Applicant makes arguments that the claims are not anticipated nor obvious from the prior art and are unique and not conventional, and thus would require appropriate forms of support in rejecting the claims for being well-understood, routine, and conventional.
Examiner respectfully disagrees. Choosing a destination to receive a notification does not change or improve any technology or technical field. This is equivalent to choosing a different address or room to receive mail or any other deliverable from a sender. There is not any inherent technical nature to identifying a notification destination. Furthermore, the improvement of the possibility that the second user reviews the price information and approves the selling of the batter at the price included in the price information is not related to any technology, but is a part of the abstract idea of selling the battery as relaying information of the transaction. How a computer operates or functions remains unchanged, and any particular technical method of sending information is also unchanged. The claims may not be well-understood, routine, or conventional, but are only so within the abstract idea. The claims merely recite generic computing components to perform what the courts have recognized to be well-understood, routine, and convention functions, such as receiving or transmitting data over a network (se MPEP 2106.05(d)(II)). Any additional element recited in the claims only provides a general link such that the abstract idea is performed on a computing device over a network.
In view of the above, the rejection under 35 U.S.C. 101 has been maintained below.
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 1-16 are rejected under 35 U.S.C. 101 because the claims are directed to a judicial exception without significantly more.
Step 1:
Claims 1-8 and 11-16 are directed to a server, which is an apparatus. Claim 9 is directed to a system, which is an apparatus. Claim 10 is directed to a method, which is a process. Therefore, claim 1-16 are directed to one of the four statutory categories of invention.
Step 2A (Prong 1):
Taking claim 9 as representative, claim 9 sets forth the following limitations reciting the abstract idea of selling a used battery to a buyer:
a first user who desires to reuse a battery mounted on a vehicle capable of travelling with an electric motor as a power source;
a second user who owns the vehicle;
acquire price information that includes a price to be paid for purchasing the battery for reuse and that is presented by the first user;
identify a notification destination of the second user and provide the notification destination of the second user with the price information that is acquired acquiring, after the acquiring acquires the price information;
decide a business agency that will remove the battery from the vehicle, after providing the providing provides the notification destination of the second user with the price information and the second user approves selling of the battery at the price included in the price information;
notify the notification destination of the second user of business agency information about the business agency after the deciding decides the business agency;
The recited limitations above set forth the process for selling a used battery to a buyer. These limitations amount to certain methods of organizing human activity, including commercial or legal transactions (e.g. agreements in the form of contracts, advertising, marketing or sales activities or behaviors, etc. The claims recite acquiring price information and determining a business agency to service the item upon approval of the price (see specification [0003] disclosing the problem of reusing batteries of hybrid vehicles), which are sales activities.
Such concepts have been identified by the courts as abstract ideas (see: MPEP 2106.04(a)(2)).
Step 2A (Prong 2):
Examiner acknowledges that claim 9 recites additional elements, such as:
a server;
a first terminal;
a second terminal;
at least one processor with a memory comprising instructions;
an acquisition unit;
a provision unit;
a decision unit;
a notification unit;
Taken individually and as a whole, claim 9 does not integrate the recited judicial exception into a practical application of the exception. The claim merely includes instruction to implement an abstract idea on a computer, or to merely use a computer as a tool to perform an abstract idea.
Furthermore, this is also because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement a judicial exception with a particular machine, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
While claim 9 recites a server and various terminals, these additional elements are recited with a very high level of generality. The server and terminals are also disclosed with a very high level of generality in the specification, such as in paragraphs [0022-0023], which merely describe them as a computer or a mobile terminal including a CPU, a memory, and the like. As such, it can be seen that the server and terminals are any generic computing devices, and merely serve to provide a general link to a computing environment. The various units are also disclosed with a very high level of generality, such as in paragraphs [0026-0027], which disclose the units as functions of the processing unit that is represented by a processor, and achieved by hardware or software. The units are merely any generic processor or instructions that execute the abstract idea, and are not particular devices.
In view of the above, under Step 2A (Prong 2), claim 9 does not integrate the recited exception into a practical application (see: MPEP 2106.04(d)).
Step 2B:
Taken individually or as a whole, the additional elements of claim 9 do not provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). As noted above, the additional elements recited in claim 9 are recited in a generic manner with a high level of generality and only serve to implement the abstract idea on a generic computing device. The claims result only in an improved abstract idea itself and do not reflect improvements to the functioning of a computer or another technology or technical field. As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process ultimately amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Even when considered as an ordered combination, the additional elements of claim 9 do not add anything further than when they are considered individually.
In view of the above, representative claim 9 does not provide an inventive concept under step 2B, and is ineligible for patenting.
The analysis above applies to all statutory categories of invention. Regarding independent claim 1 (server) and independent claim 10 (method), the claims recite substantially similar limitations as set forth in claim 9. The additional elements of claims 1 and 10 remain only broadly and generically defined, with the claimed functionality paralleling that of claim 9 (system). As such, claims 1 and 10 are rejected for at least similar rationale as discussed above.
Regarding Claim 1 (server): Claim 1 recites at least substantially similar concepts and elements as recited in claim 9 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 1 is rejected under at least similar rationale as provided above regarding claim 9.
Regarding Claim 10 (method): Claim 10 recites at least substantially similar concepts and elements as recited in claim 9 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 10 is rejected under at least similar rationale as provided above regarding claim 9.
Dependent claims 2-8 and 11-16 recite further complexity to the judicial exception (abstract idea) of claim 9, such as by further defining the algorithm for selling a used battery to a buyer. Thus, each of claims 2-8 and 11-16 are held to recite a judicial exception under Step 2A (Prong 1) for at least similar reasons as discussed above.
Under prong 2 of step 2A, the additional elements of dependent claims 2-8 and 11-16 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. More specifically, dependent claims 2-8 and 11-16 rely on at least similar elements as recited in claim 9. Further additional elements (e.g., a determination unit (claim 6); a database (claim 8); a GPS (claim 14)) are also acknowledged; however, the additional elements of claims 2-8 and 11-16 are recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Secondly, this is also because the claims fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Taken individually and as a whole, dependent claims 2-8 and 11-16 do not integrate the recited judicial exception into a practical application of the exception under step 2A (prong 2).
Lastly, under step 2B, claims 2-8 and 11-16 also fail to result in “significantly more” than the abstract idea under step 2B. The dependent claims recite additional functions that describe the abstract idea and use the computing device to implement the abstract idea, while failing to provide an improvement to the functioning of a computer, another technology, or technical field. The dependent claims fail to confer eligibility under step 2B because the claims merely apply the exception on generic computing hardware and generally link the exception to a technological environment.
Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
Taken individually or as an ordered combination, the dependent claims simply convey the abstract idea itself applied on a generic computer and are held to be ineligible under Steps 2B for at least similar rationale as discussed above regarding claim 9. Thus, dependent claims 2-8 and 11-16 do not add “significantly more” to the abstract idea.
Subject Matter Free of Prior Art
The following is a restatement of the reasons for subject matter free of the prior art indicated in the previous Office Action mailed on 8/6/2025.
Claims 1-16 are determined to have overcome the prior art of rejection and are free of the prior art, however the claims remain rejected under 35 USC 101, as set forth above.
Claims 1-16 are found to overcome the prior art rejection for the reasons set forth below.
Claim 1 recites the claimed features of decide a business agency that will remove the batter from the vehicle, after the provision unit provides the second user with the price information and the second user approves selling of the battery at the price included in the price information;
The closest prior art was found to be as follows:
Shoji (US 20220405719 A1) recites [0008] – “A used secondary battery reuse system according to the present invention is a used secondary battery reuse system that supports reuse of a used secondary battery used as a secondary battery for vehicle driving, including: a storage unit configured to store position information of each of a plurality of trade-in facilities for trading in a vehicle on which the secondary battery is mounted; a purchase request information reception unit configured to receive, from a purchase applicant who wants to purchase the used secondary battery, purchase request information for the used secondary battery including an intended use of the used secondary battery and position information of a delivery site, and store the purchase request information in the storage unit; a trade-in request information reception unit configured to receive, from a trade-in applicant who wants to trade in the vehicle, trade-in request information including information indicating a degradation state of the secondary battery mounted on the vehicle; an extraction unit configured to extract the purchase request information including the intended use of the used secondary battery that matches the degradation state included in the trade-in request information; a sale price determination unit configured to determine a sale price of the secondary battery to be traded in for the purchase applicant, depending on the intended use of the used secondary battery related to the extracted purchase request information; a transportation cost estimation unit configured to estimate, based on the position information of the delivery site included in the extracted purchase request information and the position information of each of the plurality of trade-in facilities, a transportation cost of the secondary battery to be traded in from each trade-in facility to the delivery site; and a trade-in price determination unit configured to determine a trade-in price of the secondary battery to be traded in in each trade-in facility”. Notably, while Shoji discloses determining the highest price trade-in facility, Shoji does not disclose where a business agency is determined after providing the user with the price information and after the user approves a price. In Shoji, the prices are determined for each trade-in facility and the highest price is chosen; the user is not provided the price information and does not approve the price before the trade-in facility is selected.
Sims (US 20150058151 A1) recites [0047] – “In response to the offer price, the seller 102 can choose to accept or decline the offer price for the vehicle 112. If the seller 102 accepts the offer price for the vehicle 112, the offer price becomes a firm offer that expires at the end of a sales window, such as a timed auction. For example, after the offer price for the vehicle 112 is accepted by the seller 102, the vehicle 112 is placed in a timed auction. By putting the vehicle into the timed auction, the seller 102 agrees that it will accept the highest bid made during the timed auction for the vehicle 112, provided that the highest bid at least matches the offer price for the vehicle”.
Gara (US 20190392367 A1) recites [0055] – “the mobile service provider system 100 may determine one or more service providers that can meet the service request provided by the user. The mobile service provider system 100 may utilize various information to assist with matching the service providers and the user. The mobile service provider system 100 may search and identify any available professional service providers. The mobile service provider system 100 may search and identify any available service providers based on the preferences of the user requesting the services and the service providers”.
NPL Reference U (see PTO-892 Reference U mailed on 7/31/2024) discloses a system for matching buyers and sellers by searching based on buyer requests through an attribute tree to meet the buyer’s requests, and then engaging in negotiation for the matching pair.
It was found that no references alone or in combination, neither anticipates, reasonable teaches, nor renders obvious the below noted features of Applicant’s invention. The features of claim 1 in combination that overcome the prior art are:
decide a business agency that will remove the batter from the vehicle, after the provision unit provides the second user with the price information and the second user approves selling of the battery at the price included in the price information;
Therefore, none of the cited references disclose or render obvious each and every feature of the claimed invention and the claimed invention is determined to be free of the prior art. Although individually the claimed features could be taught, any combination of references would teach the claimed limitations using a piecemeal analysis, since references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The examiner emphasizes that it is the interrelationship of the limitations that renders these claims free of the prior art/additional art.
Therefore, it is hereby asserted by the Examiner that, in light of the above, that claims 1-16 are free of prior art as the references do not anticipate the claims and do not render obvious any further modification of the references to a person of ordinary skill in art.
Conclusion
THIS ACTION IS MADE FINAL. 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 TIMOTHY J KANG whose telephone number is (571)272-8069. The examiner can normally be reached Monday - Friday: 7:30 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maria-Teresa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.J.K./ Examiner, Art Unit 3689
/VICTORIA E. FRUNZI/ Primary Examiner, Art Unit 3689 2/12/2026