DETAILED ACTION
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 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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 indicated in the table below, along with corresponding structure and/or lack thereof:
Claim limitation
Claim Numbers
Structure (PGPUB citation)
an acquisition unit configured to acquire usage history
1
Processing unit, which is a microcomputer with CPU and RAM [0033]
a selecting unit configured to select, among the plurality of electric storage systems, an electric storage system that conducts power transmission and reception with the power grid,
1
Processing unit, which is a microcomputer with CPU and RAM [0033]
an upper limit value storage unit configured to store an upper limit value
7
Non-volatile storage medium [0033]
a priority setting unit configured to set a high priority to a moving object
9
Processing unit, which is a microcomputer with CPU and RAM [0033]
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) abstract ideas which amount to mental processes and
The Supreme Court’s Alice/Mayo test requires a two-part framework to determine whether a claim is eligible under 35 U.S.C. 101. In the first step, it is determined whether the claim is to a “process, machine, manufacture or composition of matter”. Claim 1 is directed to a control apparatus, claim 19 is directed to a process and claim 20 is directed to a program on a non-transitory storage medium (thus a machine/process) and thus the test passes the first step.
Next, it is determined whether the claim recites a judicial exception (step 2A, prong 1, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 54-55 (Jan. 7, 2019)), and if so, whether that judicial exception is integrated into a practical application (step 2A, prong 2, see id. at 56).
Step 1
Claim 1 is directed to a charging control system which takes deterioration and/or usage data of power storage units and appliances and manipulates the data to determine a particular storage unit for use with the grid. This could be considered a mental process, since the entire process of determining which power storage device and connected appliance has been used the most and “selecting” that power storage device for some future use could be performed in one’s head. Examiner notes that nowhere in the claims is the actual power transmission or reception performed.
Essentially, claim 1 describes a describes a computer implementation (control unit) of gathering and manipulating data (receiving data, comparing data and manipulating the data), a mental process that has been recognized by the courts as abstract in the similar cases of Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016) (data analysis steps recited at a level of generality that could be performed in the human mind) and Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011) (collecting and comparing known information).
Step 2A Prong I:
Claim 1 recites: “a control apparatus” comprising “an acquisition unit configured to acquire usage history”, “a selecting unit configured to select, among the plurality of electric storage systems, an electric storage system”, “wherein the selecting unit specifies a deterioration state or usage of each of a plurality of the batteries and a deterioration state or usage of each of a plurality of the electrical appliances based on the usage history” and “selects, among the plurality of electric storage systems, an electric storage system”. Thus, a plurality of generic computer components are recited (“a control apparatus”, “an acquisition unit” and “a selecting unit”), along with attached functions that comprise acquiring data (“acquire usage history”, a mental process step) and manipulating data (“select…an electric storage system” and “specify a deterioration state or usage…based on the usage history”, also a mental process step). Examiner notes that the “acquisition unit” and “selecting unit” are interpreted to be embodied by a general processing unit with memory, as indicated in the 112(f) interpretations above, supported by paragraph [0033] of the PGPUB. In essence, a mental process is claim (acquiring data and making a selection based on the acquired data) and executed by generic computer components.
The remaining limitations which are laid out in the table below, place limits on the type of storage elements from which data is acquired and for which data is manipulated, particularly storage systems capable of charging and discharging power with a power grid and storage systems which include an electrical appliance. Examiner notes that the storage systems, per se, are not a part of the control apparatus and are rather used to limit the abstract idea to a particular field of use, which Examiner notes does not make the abstract idea nonabstract (“Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) (“An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer”).
In sum, the entire process of acquiring usage history and selecting a storage system based on the usage history could be conducted in the mind (i.e. surveying storage batteries in a garage, remembering which storage battery has been used the most, and choosing a different once which has been used less), and the claim takes this abstract idea and applies it using generic computer components.
Remaining claim limitations
Interpretation
“that can conduct charging and discharging of electrical power with a power grid”
Further limits the type of storage systems from which information is acquired
“that conducts power transmission and reception with the power grid”
Further limits the type of storage systems which are “selected”
wherein each of the plurality of electric storage systems includes a battery and an electrical appliance operating when conducting charging and discharging of the battery;
Further limits the type of storage systems from which information is acquired or which are “selected”
that conducts power transmission and reception with the power grid according to the deterioration state or usage of each of the plurality of batteries and the deterioration state or usage of each of the plurality of electrical appliances.
Further limits the type of storage systems which are “selected”
Step 2A Prong II:
With respect to prong 2 of 2A, the claim must be considered as to whether it integrates the abstract idea into a practical application. Again, claim 1 recites: “a control apparatus” comprising “an acquisition unit configured to acquire usage history”, “a selecting unit configured to select, among the plurality of electric storage systems, an electric storage system”, “wherein the selecting unit specifies a deterioration state or usage of each of a plurality of the batteries and a deterioration state or usage of each of a plurality of the electrical appliances based on the usage history” and “selects, among the plurality of electric storage systems, an electric storage system”. The recitation of an acquisition unit and selecting unit does not integrate the claim into a practical application since according to the 112(f) interpretations, both of these units are embodied by generic computer components (see paragraph [0033] of the PGPUB). The additional elements listed above (“electric storage systems”, “batteries”, “electrical appliances”) are not recited as part of the claimed “control apparatus” but are merely devices from which data is taken. The same applies to the “remaining limitations” listed in the table above; they limit the type of device from which the data is taken and manipulated but do not add meaningful limits to the abstract idea of acquiring data using generic computer components and manipulating the data using said generic computer components (forming a “selection” via the selecting unit”). That is, acquiring data from a storage system that is capable of transmitting power to/from the grid is still “acquiring data” which is a form of insignificant extra-solution activity.
Again, though the claim recites “electric storage systems”, “appliances” and “power grid” as , the physical transformation is not positively recited (a selection is made, but power transmission/reception does not occur) nor is it integrated with the data analysis. The claim as recited does not improve the functioning of a computer or other technology, is not applied with a particular type of machine or computer, does not cause a transformation of matter from one state to another (the power transmission/reception does not always occur) and does not apply the judicial exception in a meaningful way besides a general link to the technology of power storage/transmission. The “units” are generic computer components to automate the process. The courts have held that use of a generic computer to automate a mental process does not amount to integration of the abstract idea into a practical application. See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1348 (Fed. Cir. 2016).
Step 2B
With respect to Step 2B, the claim must be considered as to whether the claim includes additional limitations that amount to significantly more than the abstract idea. The claim recites a control apparatus comprising two components: an acquisition unit and a selection unit, which as laid above, are generic computer components. The “electric storage systems”, ”power grid” and “electrical appliances” are not part of the claimed “control apparatus”. Rather, these limitations limit from where the data is acquired and which elements are “selected”. To the extent that they could be considered “additional limitations”, the following analysis applies:
Storage systems that can conduct charging and discharging of electrical power with a power grid
Well known, for example vehicles connected to the grid for charging when charge is needed for travel and discharging to grid to receive an incentive (vehicle-to-grid, V2G)
the plurality of electric storage systems includes a battery and an electrical appliance operating when conducting charging and discharging of the battery
Well known, an electric vehicle has a battery and a converter used when charging/discharging the battery
The power grid
Well known, conventionally used to charge EVs
Thus, though Examiner contends that the claim amounts to an abstract idea (acquiring usage/deterioration data and manipulating that data to form a selection) and a generic computer (“control apparatus”, “acquisition unit” and “selection unit”) and the above claim limitations are merely sources of data for the generic computer, these elements are also well-known, routine and conventional based on Examiner’s expertise in the art.
According to MPEP 2106.05(d), adding data gathering in conjunction with an abstract idea is not enough to qualify as significantly more than the judicial exception (CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g)). Thus, Claim 1 fails to meet the test of “significantly more” since the claim as a whole generally applies the concept of analyzing, comparing and manipulating usage data in a computer environment to make a decision, essentially taking a mental process and “applying it” using a computer. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Examiner notes however, that “novelty” or “nonobviousness” is distinct from the eligibility requirement under 35 U.S.C. 101, and although the prior art of record does preclude patentability under 35 U.S.C. 102/103, this is “neither required for, nor a guarantee of patent eligibility under 35 U.S.C. 101”. See MPEP 2106.05(I).
Claim 20 recites similar limitations as claim 1 and is therefore rejected as ineligible for the same reasons.
Dependent claims 2-18 recite basic additional analyzing steps all representing steps of a mental process that could be performed on a generic computer. None of the dependent claims actually performs the power transmission/reception, but merely adds additional data gathering or manipulating steps. The dependent claims reference other components i.e. “a moving object” in claims 9 and 10, but do not integrate these items within the abstract idea. Claim 9 recites “each electric storage system of the plurality of electric storage systems is provided in one corresponding moving object among a plurality of moving objects”, but neither the storage systems or the moving objects are part of the control apparatus.
Looking at the dependent claim limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hara et al. et al. US PGPUB 2020/0132774 discloses a battery and appliance system which determines charging/discharging windows for batteries based on degradation levels.
Krasovitsky et al. US PGPUB 2020/0119411 discloses a battery and appliance system which determines charging/discharging windows for batteries based on degradation levels.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID V HENZE whose telephone number is (571)272-3317. The examiner can normally be reached M to F, 9am to 7pm.
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, Taelor Kim can be reached at 571-270-7166. 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.
/DAVID V HENZE/Primary Examiner, Art Unit 2859