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 .
Claim Interpretation
The following is from section 2114(II) of the MPEP:
II. MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
In claim 1 the applicant is claiming a system comprising a main module and a plurality of sub-modules connected via a half-duplex communication network having a structure. The module and plurality of sub-modules are the subject of the claim. The module and plurality of sub-modules form an apparatus claim. The remainder of the limitations in claim 1 and the limitations in the dependent claims cover a series of wherein clauses that specify what the main module and sub-modules do but they do not further limit what the modules are. The wherein clauses cannot be given any patentable weight, based on the guidance in section 2114(II) of the MPEP, because they fail to limit the subject of claim 1 which is the system comprising the modules; the use of the modules, in the “wherein” clauses, does not change the scope of what the modules cover. The wherein clauses do not further limit the claimed modules that make up the claimed system or introduce further elements to the claimed system. For examination purposes, the Examiner has mapped the method covered by the wherein clauses even though they fail to limit the claimed subject matter.
Response to Arguments
Applicant's arguments filed 3/16/2026 have been fully considered but they are not persuasive. The applicant’s arguments regarding the Kain reference are not persuasive because the features argued as patentable are not covered by the scope of the claims and the amended language was not mapped by the Examiner so the applicant’s speculative mapping of Kain is irrelevant. The Examiner has provided a revised mapping of the claims in the current office action.
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 1-4, 6, 14, and 15 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 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.
Claim 1 features the following limitation:
wherein, under a control right over a communication direction set at the main module, the main module sequentially transmits a command signal to the plurality of sub-modules through the network in a first direction and receives, through the network in a second direction opposite to the first direction, a response signal to the command signal from at least one of the plurality of sub-modules,
The applicant did not describe or even use phrase “under control right over a communication direction” in their original disclosure. There is no description of what concept such a phrase would cover. It cannot be inferred what “right over” means or how such a direction would be relates to the claimed ring network. The applicant does not define whether “right” means “correct” or the direction opposed to left. It is not clear how “right” would relate to “over” in the context of the claim because the applicant not define control over direction in terms of “right”.
Claim 14 recites an a “active fault signaling (AFS) function”. The original disclosure uses this term in paragraphs 17 and 73 but does not define such a function in any technical detail. The applicant has failed to disclose how the claimed AFS function is performed and thus failed to meet the written description requirement as described in sections 2161.01(I) and 2163.03(V) of the MPEP.
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 1-4, 6, 14, and 15 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 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are:
The applicant references a condition “when an abnormal state of the targeted object being monitored is detected by the at least one of the plurality of sub-modules” which defines when “the at least one of the plurality of sub-modules switches to a fault transmission mode and is granted a temporary control right over the communication direction”. The applicant does not define the step of detecting that would be required to determine when the claimed condition occurs.
It is not clear in the third “wherein” clause how the sub-modules can be “granted temporary control right over the communication direction” when in the second “wherein” clause the “communication direction” is “set at the main module”. The applicant is missing a step of communicating with the “main module” in order to take control over the communication direction which is defined as being “set by the main module”.
The applicant cannot transmit fault information, in the final wherein clause, without first defining it. Previously, the applicant only detects an “abnormal state” but there is no description of how this “abnormal state” might be related to “fault information”.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are:
In claim 2, the at least one sub-module evaluates a condition “when the determined current communication direction is the first direction” but “the first direction” is only defined previously, in claim 1, as covering the direction in which the main module transmits a command signal. The applicant lacks a step of defining the “first direction” at the sub-module so that the sub-module can performed the claimed evaluation of the “current communication direction” to see if it matches the “first direction”.
Claim 6 recites the limitation "the targeted object monitored with respect to all of the plurality of connected sub-modules". There is insufficient antecedent basis for this limitation in the claim. Claim 1 only recites that target object is being monitored by it does not specify that the target object is being “monitored with respect to all of the plurality of connected sub-modules”. Claim 1 does not specify what monitors the target object; it only states that the “at least one of the plurality of sub-modules” detects and abnormal state. Claim 1 should be amended to define the “monitoring”.
Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: the applicant does not define a step of activating an AFS function so it is not clear what the “after” period covers in the claim.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: it is not clear how the each of the individual “two or more of the plurality of sub-modules” would know about whether the other respective sub-modules of the “two or more of the plurality of sub-modules” are detecting the same abnormal state. The claims do not cover how the sub-modules would have information about target objects being monitored at other sub-modules.
The term “closest” in claim 15 is a relative term which renders the claim indefinite. The term “closest” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The applicant does not define any physical proximity with respect to the sub-modules and the main module. Instead, the applicant defines the sub-modules as being in a ring network with the main module. If the applicant is trying to define the “sub-module” with the fewest hops to the main module, the applicant should use clear language, supported by the specification, to do this.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-4, 6, 14, and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 covers a management system comprising a main module and a plurality of sub-modules. According to section 2114(II) of the MPEP, these are interpreted as the only limitations of the system. Claims 2-4,6, 14, 15 fail to limit the scope of the system by further limiting the subject matter of the claims that they depend upon. Claims 2-4, 6, 14, and 15 recite what the system and its elements “do” but what the system including the module and sub-modules “is”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication Number 2017/0346308 by Kain et al.
As to claims 1 and 15, Kain teaches a management system (Figures 4A and 4B), comprising: a main module (ref. no. 404) and a plurality of sub-modules (ref. no. 406) connected via a half-duplex communication network having a ring structure (Figures 4A and 4B show a ring network that uses half-duplex communication). This is all claims 1-4, 6, 14, and 15 actually cover according to the guidance given to the Examiner in section 2114(II) of the MPEP as explained above.
As to claim 1, Kain teaches a management system:
wherein the plurality of sub-modules (ref. no. 406, slaves 106) each monitor a state of a corresponding targeted object (paragraphs 25, 26, and 31, blocks of battery stack 120), wherein the main module (ref. no. 404, master 104) receives, from at least one of the plurality of sub-modules, state information of the targeted object (paragraph 47, master receives reply from slaves),
wherein, under a control right over a communication direction set at the main module, the main module sequentially transmits a command signal to the plurality of sub-modules through the network in a first direction (paragraph 47 and Figure 4A, command is sent from master) and receives, through the network in a second direction opposite to the first direction, a response signal to the command signal from at least one of the plurality of sub-modules (Figure 4A shows the reply, referenced in paragraph 47, is received from the opposite direction, with respect to the master, from which the master sent the command), and
wherein, when an abnormal state of the targeted object being monitored is detected by at least one of the plurality of sub-modules (paragraphs 25, 26, 31, and 47, the rely covers both the scenarios of detecting normal and abnormal and thus covers the condition. If the applicant is trying to claim only detecting abnormal states, they should clearly exclude detecting normal states), the at least one of the plurality of sub-modules switches to a fault transmission mode and is granted a temporary control right over the communication direction (paragraph 47, the slave sends the reply in the communication direction indicated in Figure 4A. The Examiner notes that applicant is not actually claiming any change in communication direction, just “control right over” communication direction), and transmits fault information of the targeted object to the main module without waiting until the main module changes the communication direction (in paragraph 47, there is no disclosure of any waiting for a change in communication direction before sending the reply).
As to claim 14, see paragraphs 25, 26, 31, and 47, the function which detects the voltage is considered an AFS function, a concept not defined by the applicant.
Claims Not Rejected with Prior Art
Claims 2-4, 6, and 15 are not rejected with prior art. The Examiner could not find art which mapped to the limitations claims in claims 2 and 15 or showed these limitations to be obvious. However, these claims are not indicated as allowable because they are not clear and not coherent. Claims 3, 4, and 6 were not rejected by virtue of the dependence on claim 2 which could not be rejected.
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 DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Glenton Burgess can be reached at 571-272-3949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOUGLAS B BLAIR/Primary Examiner, Art Unit 2454
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