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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/9/2026 has been entered.
Response to Arguments
Applicant's arguments filed 7/9/2026 have been fully considered but they are not persuasive. The applicant’s arguments do not specifically address the previously made rejections based on 35 USC sections 112b and d and therefore some of those rejections are maintained. The applicant did not provide any arguments as to what an Active Fault Signaling function comprises and thus the written description rejection of claim 14 is maintained. The applicant’s amendments have introduced numerous clarity issues and questions about how the invention is described and therefore new 112a and 112b rejections are made in this office action. Regarding the prior art, the Examiner has shown the scope of the claimed apparatus to be unpatentable based on the guidance given in section 2114(II) of the MPEP. The applicant did not explain how the amendment “requires specific capabilities and operational relationships of the claimed system which should be given patentable weight”. There is no attempt to explain how the wherein clauses change the scope of the system comprising a main module and a plurality of sub-modules. After considering the scope of the claims, the Examiner found Kain to read on the broadest reasonable interpretation of the claim because the final limitation of the claims does not limit the structure of the devices that make up the system. The Examiner does not have any suggestions for amending the claims because the applicant did not disclose how the sub-module actually holds signaling based on what is disclosed about the structure of the sub-module. There is no disclosure that the sub-module contains a memory that would implement data structures for managing such data. The sub-module appears to be disclosed solely as a piece of hardware with a battery, an undescribed IC, and an undescribed filter.
Claim Interpretation
The applicant’s system in claim 1 covers a management system comprising a main module and a plurality of sub-modules. The main module and the plurality of sub-modules are connected via a half-duplex communication network having a ring structure but the communication network is not recited as being explicitly part of the claimed system; it only describes how the main module and sub-modules are connected in the claim. Paragraphs 36 and 37 of the disclosure are clear that the main module and sub-modules cover hardware elements. The applicant’s system clearly covers an apparatus. The rest of claim 1 and its depends recite wherein clauses which recite what the apparatus does but they do not recite any limitations which limit the structure of the apparatus, which is comprised of a main module and sub-modules.
Section 2114 (II) states:
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.).
The applicant’s limitations in the wherein clause do not limit the structure of the system which is comprised of the main module and sub-modules. Their structure is described in paragraphs 36 and 37. There structure clearly does not change based on the operations covered by the “wherein” clauses.
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, 3, 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 recites:
a main module and a plurality of sub-modules connected via a half-duplex communication network having a ring structure,
The applicant’s system covers a management system comprising a main module and a plurality of sub-modules. The main module and the plurality of sub-modules are connected via a half-duplex communication network having a ring structure but the communication network is not recited as being explicitly part of the claimed system; it only describes how the main module and sub-modules are connected in the claim.
Paragraphs 36 and 37 provide a description of one possible embodiment of the main module and sub-modules:
[0036] In this case, for a smooth understanding, the description is limited to a battery management system (BMS), which is only an embodiment, and the present disclosure can be applied to communication network that needs to actively and immediately transmit information such as various faults from the slave module to the master module.
[0037] Next, for example, the main module 100 is a battery monitoring unit (BMU), and preferably configured of a micro controller unit (MCU) and an interface IC (IFIC), and the sub- module 200 includes a cell monitoring unit (CMU) and a battery. In this case, the CMU includes a battery monitoring IC (BMIC) and a filter. The main module communicates with the BMICs of each sub-module through the IFIC. To this end, the IFIC and the BMICs are connected in a daisy chain structure.
The applicant has disclosed that the system is comprised of hardware comprising units, in one non-limiting embodiment. There is no alternative description provided of the main module and the sub-modules. None of the units referenced in paragraphs 36 and 37 are described in detail. The main module is disclosed as comprising a micro control unit and interface IC. These can be viewed as a conventional microcontroller and a conventional interface because the applicant has not disclosed anything specific about the applicant’s micro controller unit and interface IC. The sub-module includes a cell monitoring unit and a battery. The cell monitoring unit includes a battery monitoring IC and a filter. The applicant provides no description of the “batter monitoring IC” and the “filter”. Paragraph 57 states that that is “configured” in the sub-module, but provides no description of what “configured” means in such a context. There is no disclosure that the sub-module is a generic computing device that implements instructions in order to carry out the invention. The applicant has not disclosed that the sub-module has a memory or stores instructions in any form. The sub-module is disclosed as being a hardware element comprising a battery monitoring IC, a filter, and a battery. While a battery would be known, there is no evidence that the applicant’s disclosed “battery monitoring IC” and “filter” were well known pieces of hardware that did not require a description. If the applicant argues that they were so well known they did not require description, then they will be treated as applicant admitted prior art based on the guidance given in section 2129 of the MPEP.
Claim 1 features the following limitation:
wherein the at least one of the plurality of sub-modules, when switched to the fault transmission mode, determines the communication direction, and when the determined communication direction is the first direction, holds forwarding of a signal received through the network from the main module or another sub-module, thereby allowing transmission of the fault information without waiting for the communication direction to change.
Claim 3 features the following limitation:
wherein the at least one of the plurality of sub-modules, after holding forwarding of the received signal, transmits the fault information of the corresponding targeted object to the main module through the network in the first direction.
Claim 4 features the following limitation:
wherein the at least one of the plurality of sub-modules, after transmitting the fault information to the main module through the network in the first direction, resumes forwarding of the held signal.
Claim 6 features the following limitation:
wherein, when the main module receives the fault information from at least one of the plurality of sub-modules, the main module transmits, through the network in the first direction, a command signal requesting state information of- corresponding targeted objects being monitored by the plurality of connected sub-modules the corresponding targeted object
The applicant has not disclosed how the actual sub-module performs the function of holding with respect to the discloses structure of the sub-module. The applicant has not disclosed how a sub-module switches from a reception mode to a failure transmission mode. There is no disclosure in paragraphs 68-70 of how the reception and transmission modes relate to the actual structure of the sub-module, as it is described in paragraphs 36 and 37. As such, the applicant has not disclosed how the function of switching to a fault transmission mode is performed as claimed in the final wherein clause of claim 1.
Section 2161.01(I) of the MPEP states:
Additionally, the applicant discloses a function holding forwarding of signals received through the network from the main module or another sub-module, but the applicant does not disclose how the sub-module “holds” signals. Paragraph 61 states that when a communication operation is “held” that the “signals from the connected main modules 100 or the sub-modules 200 are blocked from being received”. The applicant does not describe this blocking mechanism further. If a signal is blocked, this implies that the signal is not received and stored. Paragraph 70 describes a holding release step that “returns the current communication operation” after the transmission of the fault information is completed. There is no description of what the “current communication operation” is or how it relates to the signals that were blocked as part of the hold function described in paragraph 61. There is no description of how the function described in a paragraph 70 relates to the structure of the sub-module described in paragraphs 36 and 37. Paragraph 83 similarly references the holding release step without describing how the step is performed.
The applicant’s disclosure has failed to comply with the written description requirement based on the guidance given in section 2161.01(I) of the MPEP because the applicant has failed to describe how functions of switching transmission modes and holding signals are performed with respect to the structure disclosed regarding the sub-module. There is no description of how the elements disclosed of the sub-module in paragraphs 36 and 37 perform management of a communication mode or holding of a signal from the main module. It cannot be assumed that these functions are performed by generic software algorithms because the applicant has not disclosed that the sub-modules comprise memories which store instructions that would implement such algorithms.
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, 3, 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “half-duplex communication network” in claim 1 is used by the claim to mean “a network in which messages can be sent in two opposite directions,” while the accepted meaning is “a network where messages only move in one direction.” The term is indefinite because the specification does not clearly redefine the term. Paragraph 40 describes how the main module receives responses opposite the first direction in which command messages are sent, making the network full duplex and not half-duplex. A half-duplex network would never send messages in opposite directions. Paragraph 40 does not define “directions” in a manner that clearly redefines the term. Paragraphs 10 and 40 provides literal support for the claim but other references to “half-duplex transmission” refer to a “half-duplex transmission mode” (see paragraphs 3, 4, 6, 8, 15, 23, 25, 28-30, 50, 85, and 86).
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 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:
Claim 1 recites the following limitation:
wherein while the main module controls communication through the network, 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,
Claim 1 then recites the following:
wherein, when an abnormal state of the corresponding targeted object being monitored is detected by at least one of the plurality of sub-modules, the at least one of the plurality of sub-modules switches to a fault transmission mode and temporarily controls communication through the network according to the fault transmission mode, is granted a temporary control right over the communication direction, and transmits information indicating a detected abnormal state as fault information of the corresponding targeted object to the main module without waiting until the main module changes the communication direction,
The main second limitation clearly indicates that the “main module” does NOT have control over the network as any sub-module can stop the transmission of signals and transmit its own “information indicating a detected abnormal state as fault information of the corresponding targeted object of the main module without waiting until the main module changes the communication direction”. This would indicate that the main-module actually has NO control over the communication through the network, despite what is claimed. It is unclear then what the applicant means by “the main module control communication through the network” because it clearly does not control what the sub-modules communicate or when the communicate on the network. It is unclear what it means for the at least one of the plurality of sub-modules to temporarily control communication through the network because the sub-module has no control over what the main-module does. The applicant has not disclosed what entity grants/assigns a temporary control right (see paragraphs 34 and 40).
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: claim 1 states the concept “without waiting until the main modules changes the communication direction” but the applicant does not define any step that would define a scenario where the main module actually changes a communication direction.
Claim 1 recites the limitation "the communication direction" in the final two wherein clauses of claim 1. There is insufficient antecedent basis for this limitation in the claim. The claim defines the main-module has having control right over the “communication direction” and then defines two different communication directions. It is not clear which of these two communication directions the applicant is referring to.
Claim 6 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: claim 6 references “a command signal requesting state information of corresponding target objects being monitored by the plurality of connected sub-modules” and then repeats the phrase “the corresponding targeted object”. It is unclear what this second recitation of “the corresponding targeted object” has to do with the rest of the claim.
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 3, 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. The limitations in the wherein clause do not limit the structure of the claimed system because they do not add elements to the system or change the structure of the existing elements of the system, the main module and the sub-modules, in any manner. Reciting what the main module and sub-modules do does not limit the claim according to the guidance given in section 2114(II) of the MPEP as explained previously in this Office action. 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, 3, 4, 6, 14, and 15 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, 3, 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 corresponding targeted object (paragraph 47, master receives reply from slaves),
wherein, while the main module controls communication through the network, 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 corresponding 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 temporarily controls communication through the network according to the fault transmission mode, 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 information indicating a detected abnormal state fault information of the corresponding 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).
Kain does not explicitly teach the subject matter of the final wherein clause where the sub-modules are switched to a fault transmission mode, and holding signals in response to determining a communication direction is a first direction. This “wherein” clause does not make the claim patentable over Kain because it does not limit the subject matter of the claim which is the apparatus consisting of the main module and the plurality of sub-modules. There is no disclosure that holding forwarding of signals changes the structure of the modules and the concept of holding forwarding is not described with respect to the disclosed structure of the sub-modules as indicated in the written description rejections.
Claims 3, 4, 6, 14, and 15 do not limit the subject matter of claim 1, which is the system comprising the main module and the plurality of sub-modules, and therefore do not feature any limitations that are patentable over Kain. In other words, Kain anticipates the scope claimed which is the main module and the plurality of sub-modules.
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.
Conclusion
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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