DETAILED ACTION
Claims 1-2, 4, 8-14 and 18-20 are currently presented for examination.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/19/2026 has been entered.
Response to Arguments
Following Applicants amendments to the Claims, the objections of the Claims are Withdrawn.
Following Applicants arguments and amendments, and in light of the 2019 Patent Eligibility guidance, the 101 rejection of the Claims is Maintained.
Applicant’s Argument: Applicant’s arguments directed to 101 rejection are based on newly amended subject matter."
Examiner’s Response: All arguments are addressed in the 101 rejection of the claims below.
Applicant’s Argument: The claims are akin to example 39.
Examiner’s Response: The Examiner disagrees because Example 39 of the January 2019 PEG is eligible under 35 USC 101 because the claim does not recite an abstract idea under Step 2A, Prong 1. In contrast, the present claims recite multiple abstract limitations for consideration under Step 2A, Prong 1. Therefore, Applicant’s assertion in view of Example 39 are not persuasive.
Applicant’s Argument: The claims cannot be performed in the human mind because they require complex neural networks.
Examiner’s Response: The Examiner disagrees and points to claims 9 to 12 (similarly recited in 19 to 20). In claims 9 to 11 and 19 the model is a physics based model that can be performed mentally, and a data driven model that can also be performed mentally. When looking at claims 12 and 20, which are the only claim that recites a neural network, the neural network is not even required as it is part of an “or” statement with “a set of universal and partial differential equations”, which is also an abstract idea. Therefore, Applicant’s argument is not required by the claims.
Applicant’s Argument: The outputting step integrates the claim into a practical application or amounts to significantly more.
Examiner’s Response: The Examiner disagrees and points to the previous office action that noted the outputting step is not an additional element. MPEP 2106.05(a): “It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements...” Additionally, as discussed in 2106.05(a)(II) improvements to technology or technical fields, “an improvement in the abstract idea itself … is not an improvement in technology”. These arguments are unpersuasive.
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.
Regarding claims 1-2, 4, 8-14 and 18-20, are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. abstract idea) without anything significantly more.
Step 1: Claims 1-2, 4 and 8-12 are directed to a method, which is a process, which is a statutory category of invention. Claims 13-14 and 18-20 are directed to a system, which is a machine, which is a statutory category of invention. Therefore, claims 1-2, 4, 8-14 and 18-20 are directed to patent eligible categories of invention.
Step 2A, Prong 1: Claims 1 and 13 recite the abstract idea of choosing a battery for an application, constituting an abstract idea based on Mental Processes based on concepts performed in the human mind, or with the aid of pencil and paper. The limitation of " deriving one or more battery latent spaces describing characteristics of one or more batteries …;” covers mental processes including judging how to describe a data set about one or more batteries. But for the recitation of using a trained auto encoder, there is nothing that precludes operation of the claim in the human mind or with pencil and paper. This follows for each subsequent recitation. Additionally, the limitation of “deriving an application latent space describing requirements of the application ...; and” covers mental processes including evaluating the requirements of an application and making a judgement about how to describe it. Additionally, the limitation of “choosing a best fit between the one or more batteries and the application based on a comparison of the one or more battery latent spaces and the application latent space” covers mental processes including evaluating a dataset to determine the best fit and making a judgment on what to select. Additionally, the limitation of “outputting a selection of the best fit and required changes to battery parameters comprising one or more of thickness, electrode material, and electrolyte material to conform to the requirements of the application” covers mental processes including writing down the selected required changes to the battery parameters. Thus, the claims recite the abstract idea of a mental process performed in the human mind, or with the aid of pencil and paper.
Dependent claims 2, 4, 8-12, 14 and 18-20 further narrow the abstract ideas, identified in the independent claims.
Step 2A, Prong 2: The judicial exception is not integrated into a practical application. In Claims 1 and 13 the additional elements of “an auto encoding network trained to create the battery latent spaces”, “the application latent space is derived using an auto network trained to create the application latent space”, as well as “a trained neural network” in claims 12 and 20 merely uses a computer device as a tool to perform the abstract idea. (MPEP 2106.05(f)) Therefore, the judicial exception is not integrated into a practical application.
Dependent claims 2, 4, 8-12, 14 and 18-20 further narrow the abstract ideas, identified in the independent claims, and do not introduce further additional elements for consideration beyond those addressed above.
Step 2B: Claims 1 and 13 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. In Claims 1 and 13 the additional elements of “an auto encoding network trained to create the battery latent spaces”, “the application latent space is derived using an auto network trained to create the application latent space”, as well as “a trained neural network” in claims 12 and 20 merely uses a computer device as a tool to perform the abstract idea. (MPEP 2106.05(f)) Therefore, the claim as a whole does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered alone or in combination, do not amount to significantly more than the judicial exception. As stated in Section I.B. of the December 16, 2014 101 Examination Guidelines, “[t]o be patent-eligible, a claim that is directed to a judicial exception must include additional features to ensure that the claim describes a process or product that applies the exception in a meaningful way, such that it is more than a drafting effort designed to monopolize the exception.”
The dependent claims include the same abstract ideas recited as recited in the independent claims, and merely incorporate additional details that narrow the abstract ideas and fail to add significantly more to the claims.
Dependent claims 2 and 14 are directed to further defining the representations as vectors, which further narrows the abstract idea identified in the independent claim, which is directed to “Mental Processes”, alternatively this could be viewed as a “Mathematical Concept.”
Dependent claims 4 and 14 are directed to further defining the derivation of the latent space using vectors, which further narrows the abstract idea identified in the independent claim, which is directed to “Mental Processes”, alternatively this could be viewed as a “Mathematical Concept.”
Dependent claims 7 and 17 are directed to further defining the output of the system, which further narrows the abstract idea identified in the independent claim, which is directed to “Mental Processes.”
Dependent claim 9 and 19 is directed to further defining the use of a physics model, which further narrows the abstract idea identified in the independent claim, which is directed to “Mental Processes.”
Dependent claim 10 and 19 is directed to further defining the use of a data driven model, which further narrows the abstract idea identified in the independent claim, which is directed to “Mental Processes.”
Dependent claim 11 and 19 is directed to further defining the use of a fusion model, which further narrows the abstract idea identified in the independent claim, which is directed to “Mental Processes.”
Dependent claim 20 is directed to further defining the use of partial differential equations in the model, which further narrows the abstract idea identified in the independent claim, which is directed to “Mental Processes”, alternatively this could be viewed as a “Mathematical Concept.”
Accordingly, claims 1-2, 4, 8-14 and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. an abstract idea) without anything significantly more.
Allowable Subject Matter
See Non-Final Office Action dated 2/19/2026.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Masse et al. USPPN 2023/0280411: also uses latent spaces to determine battery parameters.
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/MICHAEL EDWARD COCCHI/Primary Examiner, Art Unit 2188
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