DETAILED ACTION
This is in response to the applicant’s communication filed on 8/27/25, wherein:
Claims 1 and 7-11 are currently pending; and
Claims 2-6 are cancelled.
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 .
Specification
Applicant’s amendment of the Specification, filed 8/27/2025, specifically the amendment to the title, is entered.
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.
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:
“a first device configured to: store an amount of CO2 emissions emitted by manufacturing a secondary battery . . .” in claim 9.
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 § 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 and 7-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claim 1 recites a device and therefore, falls into a statutory category. Similar independent claims 8 and 9 recite a method and a system, and therefore, also fall into a statutory category. Claim 1 is used as an exemplary claim.
Step 2A – Prong 1 (Is a Judicial Exception Recited?): The underlined limitations of
a storage configured to store an amount of CO2 emissions emitted by manufacturing a secondary battery; and
a controller configured to, when the secondary battery is recycled by a business operator who recycles the secondary battery;
acquire battery information including a voltage, a current, and a temperature of the secondary battery from a moving body;
calculate a full charge capacity of the secondary battery based on the battery information;
calculate a capacity maintenance rate based on a ratio of the full charge capacity to an initial full charge capacity of the secondary battery;
calculate a first CO2 emission amount borne by a manufacturer that manufactured the moving body and a second CO2 emission amount borne by the business operator by apportioning the amount of CO2 emissions between the manufacturer and the business operator according to a capacity maintenance rate of the secondary battery at a time of being recycled; and
update the amount of CO2 emissions stored in the storage to a value of the first CO2 emission amount
are processes that, under their broadest reasonable interpretation, are considered certain methods of organizing human activity – commercial or legal interactions (including agreements in the form of contracts and marketing or sales activities or behaviors) and/or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Accordingly, the claim recites an abstract idea.
Also, the underlined limitations of
calculate a full charge capacity of the secondary battery based on the battery information;
calculate a capacity maintenance rate based on a ratio of the full charge capacity to an initial full charge capacity of the secondary battery;
calculate a first CO2 emission amount borne by a manufacturer that manufactured the moving body and a second CO2 emission amount borne by the business operator by apportioning the amount of CO2 emissions between the manufacturer and the business operator according to a capacity maintenance rate of the secondary battery at a time of being recycled
are processes that, under their broadest reasonable interpretation, are considered mathematical concepts, in the form of a mathematical relationship, mathematical formulas or equations, and/or mathematical calculations. It is important to note that a mathematical concept need not be expressed in mathematical symbols. See MPEP 2106.04(a). Accordingly, the claim recites an abstract idea.
The types of identified abstract ideas are considered together as a single abstract idea for analysis purposes.
Step 2A-Prong 2 (Is the Exception Integrated into a Practical Application?): This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of a storage (claims 1 & 8), a controller (claim 1), a moving body (claims 1, 8, & 9), a first device (claim 9), and a second device (claim 9), all of which are considered computer components. The computer components are recited at a high-level of generality (i.e., as a generic processing device performing generic computer functions), such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Additionally, the storing limitation may be considered insignificant extra-solution activity (see MPEP 2106.05(g)). Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea when considered both individually and as a whole. The claims are directed to an abstract idea. Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application, and the claim is directed to the judicial exception.
Step 2B (Does the claim recite additional elements that amount to Significantly More than the Judicial Exception?): The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using computer components to perform the claimed steps amount to no more than mere instructions to apply the exception using a generic computer component. Further, the claims simply append well-understood, routine, and conventional (WURC) activities previously known to the industry, specified at a high level of generality, to the judicial exception, in the form of the extra-solution activity. The courts have recognized that the computer functions claimed (the storing limitation) as WURC (see 2106.05(d), identifying storing information in memory as WURC, as recognized by Versata). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible, as when viewed individually, and as a whole, nothing in the claim adds significantly more to the abstract idea.
Dependent claims 7 and 10 merely recite further embellishments of the abstract idea of independent claim 1 as discussed above with respect to integration of the abstract idea into a practical application, and these features only serve to further limit the abstract idea of independent claim 1; however, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limits.
Dependent claim 11 further includes the additional element of a terminal. The terminal is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic component. Even, in combination, this additional element does not integrate the abstract idea into a practical application and does not amount to significantly more than the abstract idea itself. The claims are ineligible.
In light of the detailed explanation and evidence provided above, the Examiner asserts that the claimed invention, when the limitations are considered individually and as whole, is directed towards an abstract idea.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 7-11 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 pre-AIA the applicant regards as the invention.
Claim limitations:
“a first device configured to: store an amount of CO2 emissions emitted by manufacturing a secondary battery . . .” in claim 9
invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Examiner reviewed the entirety of the Specification and did not find any corresponding structure, material, or acts. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 1 is 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 1 states, “calculate a first CO2 emission amount borne by a manufacturer that manufactured the moving body and a second CO2 emission amount borne by the business operator by apportioning the amount of CO2 emissions between the manufacturer and the business operator according to a capacity maintenance rate of the secondary battery at a time of being recycled” which is unclear since the previous limitation refers to “a capacity maintenance rate.” So, the second reference to a capacity maintenance rate is either referring to a different capacity maintenance rate or this should be “the capacity maintenance rate.” Examiner requires clarification. For the purposes of examination, Examiner assumes that the term should be the capacity maintenance rate. Claim 8 and claim 9 are rejected on a similar basis.
Notice
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 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.
Subject Matter Distinguished from Prior Art
The prior art of record neither anticipates nor supports a conclusion of obviousness without the use of impermissible hindsight with respect to claims 1 and 7-11.
The most closely applicable prior art of record is Vollmert et al. (US 20220076182). Vollmert discloses a system for determining a carbon footprint metric for a product (abstract).
Morita et al. (US 20210081875) is also closely related prior art. Morita discloses remanufacturing a battery including acquiring data representing the performance of the battery, considering the degradation of the battery and providing an remanufacturing plan based on diagnostic data (abstract).
The prior art of record neither anticipates not fairly and reasonable teach (claim 1 is used as an exemplary claim here) a management device comprising: a storage configured to store an amount of CO2 emissions emitted by manufacturing a secondary battery; and
a controller configured to, when the secondary battery is recycled by a business operator who recycles the secondary battery;
acquire battery information including a voltage, a current, and a temperature of the secondary battery from a moving body;
calculate a full charge capacity of the secondary battery based on the battery information;
calculate a capacity maintenance rate based on a ratio of the full charge capacity to an initial full charge capacity of the secondary battery;
calculate a first CO2 emission amount borne by a manufacturer that manufactured the moving body and a second CO2 emission amount borne by the business operator by apportioning the amount of CO2 emissions between the manufacturer and the business operator according to a capacity maintenance rate of the secondary battery at a time of being recycled; and
update the amount of CO2 emissions stored in the storage to a value of the first CO2 emission amount.
Examiner notes that the underlined limitations above, in combination with the other limitations found within the independent claims are not found in the prior art. Similar reasoning is applicable to claims 8 and 9.
Response to Arguments
Examiner appreciates Applicant pointing out the support in the Specification for the claim amendment.
I. Objection to the Specification
Withdrawn, in response to Applicant’s amendment.
II. Claim Interpretation under 35 USC 112(f)
Applicant argues only that the claims are amended and do not now invoke 112(f). Examiner has considered the amendments and updated the rejection accordingly. A full explanation has been provided above for the remaining rejection.
III. Rejection under 35 USC 112(b)
Applicant argues only that the claims are amended to obviate the rejection. Examiner has considered the amendments and updated the rejection accordingly (see above).
IV. Rejection under 35 USC 101
Applicant compares the claims to Example 42 and indicates that the “ability to apportion and store CO2 emissions based on real-time calculations and updates represents a specific improvement over known methods for managing the amount of CO2 emissions emitted by manufacturing secondary batteries.” Remarks 9-10. Examiner respectfully disagrees with Applicant. Example 42 provided evidence in the Specification which showed that the claim provided a technical improvement. Applicant has not provided any such evidence here. Further, apportioning the CO2 emissions is considered part of the abstract idea, and therefore, does not provide a technical improvement. Storing the emissions is done using generic computer components. The computer components are recited at a high-level of generality (i.e., as a generic processing device performing generic computer functions), such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
V. Rejection under 35 USC 103
Withdrawn, in light of Applicant’s amendments.
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 CARRIE S GILKEY whose telephone number is (571)270-7119. The examiner can normally be reached Monday-Thursday 7:30-4:30 CT and Friday 7:30-12 CT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached on 571-270-3445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CARRIE S GILKEY/Primary Examiner, Art Unit 3626