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 .
The amendment filed on December 2, 2025 has been considered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, an energy storage system comprising at least one string of N modules … and providing a short circuit between the at least one input and the at least one output (claim 1) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 7 and 20 are objected to because of the following informalities:
- claims 7 and 20, “all” (claim 7, lines 5, 6; claim 20, lines 36, 37) should be deleted.
Appropriate correction is required.
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 2 and 16-19 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 2 and 16, the specification does not enable one skilled in the art to use the switching unit to provide a short circuit between the at least one input and the at least one output. A switching unit (121-124) in the embodiment of Fig. 1A is not enabled (or arranged) to provide a short circuit between the at least one input (A) and the at least one output (B).
Claim Rejections - 35 USC § 102
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 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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, 4-6, 8, 9, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanemura et al. (US 2020/0136196).
Regarding claims 1 and 12, Tanemura et al. discloses an energy storage system and method (100, Fig. 1) comprising:
at least one string of N modules (102’s) with an integer N>1 (102a, 102b, 102n), the at least one string comprising at least one first end (T1) and at least one a second end (T2) (Fig. 1), wherein each module comprises:
at least one input and at least one output, wherein an at least one output of the (n)-th module is connected to an at least one input of the (n+1)-th module for each integer n with 0<n<N, an input of a first module is connected to the at least one first end and an output of the (n+1)-th module is connected to the at least one second end (modules 102’s are connected in series from T1 to T2, Fig. 1);
an energy storage device (10’s);
a switching unit configured to switch between at least two states of operation ("when the gate drive signal is at a high (H) level, the first switch element 16 is placed in the OFF state, and the second switch element 18 is placed in the ON state. When the gate drive signal is at a low (L) level, the first switch element 16 is placed in the ON state, and the second switch element 18 is placed in the OFF state. Namely, the battery module 102 to which the high(H)-level gate drive signal is applied is connected in series with the other battery modules 102, and the battery module 102 to which the low(L)-level gate drive signal is applied is disconnected from the other battery modules 102, and placed in a through state", figure 1, paragraph [0029]) including
connecting the energy storage device between the at least one input and
the at least one output (102’s are connected in series between T1 and T2, Fig. 1), and
providing a short circuit between the at least one input and the at least
one output (connecting an input of a 102 to an output of another 102, Fig. 1); and
a controller (104) configured to perform the following steps during on-load operation of the ESS (The battery modules 102 can be connected in series under control of the controller 104. The battery modules 102 included in the power supply system 100 can supply electric power (for power running) to a load (not shown) connected to terminals T1 and T2, or can be charged (regenerated) with electric power from a power supply (not shown) connected to the terminals T1 and T2., paragraph 0022):
to change a state of at least one switching unit of a P-th module Pm
with 0<P<=N (disconnection, S16),
to measure a current I (S10/S12) and a voltage V.mP (S14) at an energy
storage device P of the P-th module Pm (paragraph 60, lines 1-3), and to determine characteristics of the energy storage device P (Rmod, S22) on a basis of at least the current I (Imod) and a change over time of said voltage VmP (ΔV=Vmod(OCV) – Vmod(CCV)) measured before (Vmod(CCV) measured before disconnection) and after (Vmod(OCV) measured after disconnection) a change of the state of the at least one switching unit of the P-th module Pm (disconnection, S16),
wherein at least one sample of the voltage VmP is taken before the
change of said state (S14) and a plurality of samples of the voltage VmP is taken after the change of said state (S18), and at least one sample of current I is taken before (S10/S12) and/or after the change of said state.
Regarding claim 4, Tanemura et al. discloses said controller is configured to calculate multiple equivalent circuit parameters based on the measured values of the voltage VmP and current I (calculate internal resistance(s) of battery modules 102’s, paragraph 0068).
It is noted that said controller is configured to average measured values of the voltage VmP and current I over multiple changes of the state of the at least one switching unit of the P-th module Pm is an alternative limitation since it is recited in the alternative form.
Regarding claim 5, Tanemura et al. discloses
the controller is further configured to control the energy storage device P to charge or discharge to a predefined state of charge (SOC) level or to a predefined voltage (charge to module voltage, Fig. 7).
It is noted that said controller is configured to repeatedly change the state of at the least one switching unit of the P-th module Pm is an alternative limitation since it is recited in the alternative form.
Regarding claim 6, Tanemura et al. discloses the switching unit is configured to select, in the state of said connecting the energy storage device between the at least one input and at least one output a polarity of the energy storage device (switching unit 16/18 connects with battery module 10 between T1 and T2, Fig. 1).
Regarding claim 8, Tanemura et al. discloses determined characteristics of the energy storage device P comprise at least one or more parameters of an equivalent circuit including an internal resistance of the energy storage device P at one or more state of charge (SOC) levels (paragraph 0070, lines 3-4).
Regarding claim 9, Tanemura et al. discloses each energy storage device includes at least one of: a battery (10).
It is noted that each energy storage device includes at least one of: a battery cell, a battery pack, a fuel cell, a stack of fuel cells, a solid state battery, and a high-energy capacitor are alternative limitations because they are recited in the alternative forms.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tanemura et al. (US 2020/0136196).
Regarding claim 11, Tanemura et al. discloses
a controller unit (104), each controller unit being associated with one or more module (Fig. 1), and
one or more measurement units (S10, S14; 32, 34) configured to measure at least one of the current (S10, 32) through and the voltage (S14, 34) at a corresponding energy storage device (paragraph 0060, lines 1-3).
However, Tanemura et al. does not disclose a plurality of controller units, each controller unit being associated with one or more modules.
Tanemura et al. discloses the claimed invention except for a plurality of controller units. It would have been obvious to duplicate the controller unit (104), since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 for a multiplied effect. Providing a plurality of controller unit (104) would improve the performance speed since there are more controller units to handle the modules.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Tanemura et al. with a plurality of controller units for the purpose of improving the performance speed.
Claims 3, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Tanemura et al. in view of Elmer et al. (US 2019/0393703).
Regarding claim 3, Tanemura et al. does not disclose said controller is further configured to determine said characteristics of the energy storage device P on a basis of an estimated state of charge (SOC) of such energy storage device.
Elmer et al. discloses a controller (paragraph 0096) is further configured to determine said characteristics of the energy storage device P on a basis of an estimated state of charge (SOC) of such energy storage device (paragraph 0026).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Tanemura et al. with determining a SOC value as suggested by Elmer et al. for the purpose of representing characteristics of the energy storage device.
Regarding claim 13, Tanemura et al. does not disclose the characteristics of the energy storage device P comprise at least one of: one or more parameters of an electric equivalent circuit diagram including an internal resistance, and state of health (SOH) of the energy storage device P; and/or
wherein the determining characteristics of the energy storage device P is further based on at least one of:
an estimated state of charge (SOC) of the energy storage device P, wherein the SOC is estimated by integrating the current through the energy storage device P and dividing the integrated current by an available capacity Cx of the energy storage device P, and/or
an assessed temperature of the energy storage device P.
Elmer et al. discloses characteristics of the energy storage device P comprise at least one of: one or more parameters of an electric equivalent circuit diagram including an internal resistance (paragraph 0028), and state of health (SOH) of the energy storage device P (paragraph 0028, lines 2-4); and/or
an assessed temperature of the energy storage device P (paragraph 0028, lines 5-7).
It is noted that characteristics of the energy storage device P comprise at least one of: the determining characteristics of the energy storage device P is further based on at least one of:
an estimated state of charge (SOC) of the energy storage device P, wherein the SOC is estimated by integrating the current through the energy storage device P and dividing the integrated current by an available capacity Cx of the energy storage device P are alternative limitations because they are recited in the alternative form.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Tanemura et al. with determining an internal resistance of an energy storage module, an SOH of the energy storage module, and temperature of the energy storage module as suggested by Elmer et al. for the purpose of determining characteristic of the energy storage module.
.
Regarding claim 14, Tanemura et al. does not disclose said determining characteristics of the energy storage device P further comprises determining the available capacity Cx of the energy storage device P by applying at least one substantially fully discharge and/or charge cycle to the energy storage device P, thereby integrating current I to obtain a total charge transfer during the at least one substantially fully discharge or charge cycle.
Elmer et al. discloses determining characteristics of the energy storage device P further comprises determining the available capacity Cx of the energy storage device P (paragraph 0004, lines 1-6) by applying at least one substantially fully discharge and/or charge cycle to the energy storage device P (paragraph 0027, lines 2-4), thereby integrating current I (current residual capacity, paragraph 0004, lines 1-2) to obtain a total charge transfer during the at least one substantially fully discharge cycle (discharge current, paragraph 0028, lines 7-8).
It is noted that integrating current I to obtain a total charge transfer during the at least one substantially fully charge cycle is an alternative limitation because it is recited in the alternative form.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Tanemura et al. with determining the available capacity Cx of the energy storage device as suggested by Elmer et al. for the purpose of determining characteristic of the energy storage module.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Tanemura et al. in view of Gotz (US 2019/0288504).
Regarding claim 10, Tanemura et al. discloses at least one switching unit (16/18) is configured to switch at least two energy storage devices in series (Fig. 1).
It is noted that at least one switching unit is configured to switch at least two energy storage devices in parallel is an alternative limitation since the limitation is recited in the alterative form.
Tanemura et al. does not disclose the at least one switching unit comprises at least one of:
a three pole switch,
a half bridge, wherein a half-bridge comprises two switches;
two half-bridges; and
one or two full bridges, wherein each full bridge comprises four switches and/or a battery switch to bypass a corresponding energy storage device.
Gotz discloses at least one switching unit comprises at least one of:
a half bridge, wherein a half-bridge comprises two switches (paragraph 0009, lines 1-5).
It is noted that at least one switching unit comprises at least one of:
a three pole switch,
two half-bridges; and
one or two full bridges, wherein each full bridge comprises four switches and/or a battery switch to bypass a corresponding energy storage device are alternative limitations because they are recited in the alternative form.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Tanemura et al. with a half bridge disclosed by Gotz for the purpose of providing two switches.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Tanemura et al. in view of Dixit (US 2021/0335059).
Regarding claim 15, Tanemura et al. does not disclose the state of health is estimated by at least one of:
dividing the available capacity Cx by a nominal capacity CN of a new energy storage device P, and
dividing an actual internal resistance by a nominal internal resistance of the new energy storage device P.
Dixit discloses a state of health is estimated by at least one of:
dividing the available capacity Cx by a nominal capacity CN of a new energy storage device P (paragraph 0216).
It is noted that dividing an actual internal resistance by a nominal internal resistance of the new energy storage device P is an alternative limitation because it is recited in the alternative form.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Tanemura et al. with dividing the available capacity Cx by a nominal capacity CN of an energy storage device P as disclosed by Gotz for the purpose of estimating the SOH.
Prior Art Note
Claims 2 and 16-19 do not have prior art rejections
The combination as claimed wherein an energy storage system comprising switching unit is changed from/to said connecting the energy storage device between the at least one input and the at least one output to/from said providing a short circuit between the at least one input and the at least one output (claims 2, 16) is not disclosed, suggested, or made obvious by the prior art of record.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 20 would be allowable if rewritten or amended to overcome the objection set forth in this Office action.
Reasons For Allowance
The following is an examiner’s statement of reasons for allowance:
The combination as claimed wherein an energy storage system comprising said at least the module Pm being comparatively unbalanced to achieve charging or discharging that is faster than that of the remaining modules (claims 7, 20) is not disclosed, suggested, or made obvious by the prior art of record.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed on December 2, 2026 have been fully considered.
Applicant’s arguments and amendments with respect to the drawing objections of Fig. 1B and Fig. 2B have been fully considered and are persuasive. The drawing objections have been withdrawn.
Since Applicants have not responded to the drawing objection pertaining to claim 1, the drawing objection pertaining to claim 1 has been maintained. Fig. 1A shows an energy storage system (100) comprising at least one string of N modules (111, 112, 113, 114) and switch units (121, 122, 123, 124). However, Fig.1A does not show a switch (just one unit of 121, 122, 123, or 124) providing a short circuit between the at least one input (A) and the at least one output (B). Fig. 2B shows a switching unit (220) comprising an energy storage device (221) and switches (224, 225). However, Fig.2B does not show a switch (just one of 224 or 225) providing a short circuit between the at least one input (222) and the at least one output (223). Further, Fig. 2B does not show at least one string of N modules.
Applicant’s arguments and amendments with respect to the objections of claims 1 and 12 have been fully considered and are persuasive. The objections of claims 1 and 12 have been withdrawn.
With regard to the objection to claim 7, Applicants argue “the proposed modification to claim 7 by the Office would impermissibly alter the intended scope of the claim. Claim 7 is drafted as intended. Objection to claim 7 is believed to be unfounded and should be withdrawn.”
Examiner’s position is that “all” is not definitely defined. How many is “all”? “All modules” are merely interpreted as a plurality of “modules”.
With regard to the rejection under 35 USC 112(a), Applicants argue “the Office has, by only providing a mere conclusion of non-enablement by the disclosure, failed to satisfy its burden to articulate a prima facie case. And, without adequate notice of the basis of this rejection, the burden to rebut with evidence and/or argument has not yet shifted to Applicant.”
Examiner’s position is that Fig. 1A shows switch units (121-124) between input (A) and output (B). A switching unit (i.e., at least one switching unit of 121, 122, 123, or 124) is not arranged for providing a short circuit between the at least one input (A) and the at least one output (B). A short circuit between the at least one input (A) and the at least one output (B) may require a combination of the switching units 121, 122, 123, and 124.
Applicant’s arguments and amendments with respect to the rejections under 35 USC 112(b) have been fully considered and are persuasive. The rejections under 35 USC 112(b) have been withdrawn.
With regard to the rejection under 35 USC 102/103, Applicants argue “[i]n stark contradistinction with the present invention, the teachings of Tanemura disclose the methodology of determining only the internal resistance of a battery without providing a current sensor for each battery module (See [0012]). As expressly discussed by Tanemura in reference to FIGs. 5 and 6, the current of the battery is not measured but estimated based on a value of the output current delivered during the ON time of the cycle by multiplying such output current by the duty cycle (the averaging operation, of sorts).”
Examiner’s position is that Tanemura discloses “measure a current” (see step S12) and a voltage (see step S14).
Applicants further argue “[a] simple two-point measurement described in Tanemura simply does not allow the skilled person to assess the multiple battery parameters discussed in the present application - and, instead, a highly dynamic measurement of a curve form is required to achieve the desired result (as provided by the embodiments of the invention). In particular, the identification of the specified parameters can only be done based on a sequence of measurement data points, since otherwise the time dependency of the parameters of the equivalent circuit model of a battery cannot be estimated.”
Examiner’s position is that Tanemura discloses “measure a current” (see step S12) and a voltage (see step S14). The measured current in S12 and the measured voltage in S14 will eventually be used to calculate characteristics of the energy storage device (Rmod). It is noted that the measured current (in S10) is used to calculate Imod (S12), which is then used to calculate Rmod (S20, S22).
Applicants further argue “[t]he Applicant did not succeed finding - in Tanemura - and reference to taking a plurality of measurements of the voltage at the energy storage device, let alone a plurality of such measurement taken after the change of the state of the battery module (as recited).”
Examiner’s position is that Tanemura discloses a plurality of such measurement (see S18, measure OCV, CCV) taken after the change of the state of the battery module (the voltages OCV, CCV are measured after the state is changed following S16, i.e., after YES following S16).
Applicant’s remaining arguments are similar to the arguments discussed above. They have been considered but are traversed in view of the discussions above.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Nghiem whose telephone number is (571) 272-2277. The examiner can normally be reached on M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Schechter can be reached at (571) 272-2302. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/MICHAEL P NGHIEM/Primary Examiner, Art Unit 2857 February 21, 2026