DETAILED 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 1-16 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.
The independent claims recite “select and output a specific charge protocol from a plurality of charge protocols based on the predicted life of the battery to maintain the charge end voltage below the drive end voltage,” and the dependent claim recites “the processor to control operation of the battery in accordance with the selected charge protocol,” but said limitations are not supported in the original disclosure. Specifically, the original disclosure discloses a plurality of charge protocols, but does not disclose any selecting or outputting any specific charge protocols to maintain the charge end voltage below the drive end voltage, and controlling, as claimed.
Furthermore, the claims recite “predict a life of the battery corresponding to the charge protocol by determining a final charge cycle in which the charge end voltage reaches a drive end voltage,” but said limitation determining the final charge cycle….is not supported in the original disclosure. Further explaining, the original disclosure discloses “a cycle” in which the charge end voltage reaches a drive end voltage,” but this is not the same as “a final cycle”, as “a cycle” is any cycle where the charge end voltage reaches a drive end voltage, while “a final cycle” is the very last cycle to reach the drive end voltage. Note further that the original disclosure states that drive end voltage may be a voltage in which it is not possible to fast charge the battery any longer. This however, does not mean it is not possible to slow charge the battery.
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.
4. Claims 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without being integrated into a practical application and do not include additional elements that amount to significantly more than the judicial exception.
Utilizing the two-step process adopted by the Supreme Court (Alice Corp vs CLS Bank Int'l, US Supreme Court, 110 USPQ2d 1976 (2014) and the recent 101 guideline, Federal Register Vol. 84, No., Jan 2019)), determination of the subject matter eligibility under the 35 USC 101 is as follows: Specifically, the Step 1 requires claim belongs to one of the four statutory categories (process, machine, manufacture, or composition of matter). If Step 1 is satisfied, then in the first part of Step 2A (Prong one), identification of any judicial recognized exceptions in the claim is made. If any limitation in the claim is identified as judicial recognized exception, then proceeding to the second part of Step 2A (Prong two), determination is made whether the identified judicial exception is being integrated into practical application. If the identified judicial exception is not integrated into a practical application, then in Step 2B, the claim is further evaluated to see if the additional elements, individually and in combination, provide “inventive concept” that would amount to significantly more than the judicial exception. If the element and combination of elements do not amount to significantly more than the judicial recognized exception itself, then the claim is ineligible under the 35 USC 101.
Looking at the claims, the claims satisfy the first part of the test 1A, namely the claims are directed to one of the four statutory class, apparatus and method. In Step 2A Prong one, we next identify any judicial exceptions in the claims. In Claim 1 (as a representative example), we recognize that the limitations “obtain information about a charge end voltage of a battery corresponding to a charge protocol; and predict a life of the battery corresponding to the charge protocol based on the information about the charge end voltage of the battery corresponding to the charge protocol, select a specific charge protocol from a plurality of charge protocols based on the predicted life of the battery to maintain the charge end voltage below the drive end voltage” are abstract ideas as they are directed to mental process. Similar rejections are made for other independent and dependent claims. With the identification of abstract ideas, we proceed to Step 2A, Prong two, where with additional elements and taken as a whole, we evaluate whether the identified abstract idea is being integrated into a practical application.
In Step 2A, Prong two, the claims additionally recite “processor”, but said limitations are merely a recitation of general-purpose computer for implementing the abstract idea. The claim also recites “output a specific charge protocol from a plurality of charge protocols based on the predicted life of the battery to maintain the charge end voltage below the drive end voltage,” is merely an insignificant post-solution activity of outputting the desired data. Additionally, the claim recites “to control operation of the battery in accordance with the selected charge protocol’, but said limitation is also an insignificant post-solution activity, recited at high level of generality, without any particular end use. The claims do not improve the functioning of processor and do not improve other technology. At most, the claims are an improvement in the abstract idea of predicting battery life. However, improved or new abstract ideas are still abstract ideas and not eligible. In short, the claims do not provide sufficient evidence to show that they are more than a drafting effort to monopolize the abstract idea. As such, the abstract idea is not integrated into a practical application. Consequently, with the identified abstract idea not being integrated into a practical application, we proceed to Step 2B and evaluate whether the additional elements provide “inventive concept” that would amount to significantly more than the abstract idea.
In Step 2B, the claims additionally recite “processor”, but said limitations are merely a recitation of general-purpose computer for implementing the abstract idea, that are well-understood, routine and conventional. The claim “output a specific charge protocol from a plurality of charge protocols based on the predicted life of the battery to maintain the charge end voltage below the drive end voltage,” is merely an insignificant post-solution activity of outputting the desired data, that is well-understood, routine and conventional. Additionally, the claim recites “to control operation of the battery in accordance with the selected charge protocol’, but said limitation is also an insignificant post-solution activity, recited at high level of generality, without any particular end use (see Univ of Utah Research Found. vs Ambry Genetics Corp, F774 F.3d 755, 113 USPQ2d 1241 (2014), Id., at 1245) and Gottschalk vs Benson, 409 US 63, 175 USPQ 673 (1972), Id., at 674). As such, the claims do not provide additional elements that would amount to significantly more than the abstract idea.
In Summary, the claims recite abstract idea without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101.
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.
Claims 1-6 and 8-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shin et al., US-PGPUB 2018/0351381 (hereinafter Shin).
Regarding Claims 1 and 11. Shin discloses a battery life prediction, comprising:
a processor, and memory having programmed thereon instructions that, when executed, are configured to cause the processor to (Paragraph [0114], computer):
obtain information about a charge end voltage of a battery corresponding to a charge protocol wherein the charge end voltage is measured at an end of a charge cycle (Paragraphs [0057] cycle with completed CCCV, [0065], [0069], charged to 4.2 V and is measured at an end of a charge cycle; [0071], Fig. 14; [0073]-[0075], linear fitting the terminal charge voltage, Fig. 10, 13, 16, 17, 19); and predict a life of the battery corresponding to the charge protocol by determining a final charge cycle in which the charge end voltage reaches a drive end voltage (Abstract, Paragraph [0090], fully charged at the end of cycling or at the last cycle from a plurality of cycles; [0087]-[0092], predicting effectiveness in slowing down the battery capacity is evaluated, estimating the fading rate; Figs. 24, 25. Claim also does not recite exclusively determining only the final charge cycle), select and output a specific charge protocol from a plurality of charge protocols based on the predicted life of the battery to maintain the charge end voltage below the drive end voltage (Fig 7, Fast vs R-Aware, Paragraphs [0060], user interface showing the charging protocol buttons and choosing the preferred charging method and showing the charging results with conventional and proposed R-aware, Figs. 32; [0091]-[0092], choosing R-Aware based on fading rate and available time to complete the charging; [0107]-[0108], choosing preferred)
Regarding Claims 2 and 12. Shin discloses linearly fitting the charge end voltage of the battery corresponding to the charge protocol in every charge cycle of the battery ([0073]-[0075], linear fitting the terminal charge voltage)
Regarding Claims 3 and 13. Shin discloses predicting the life of the battery as a cycle in which a drive end voltage is reached based on the linear fit (Fig. 24; Paragraphs [0069]; [0090]).
Regarding Claim 4. Shin discloses the drive end voltage is 4.2 V (Fig. 24, Paragraph [0069]).
Regarding Claims 5 and 14. Shin discloses selecting a section in the charge cycle of the battery and linearly fit the charge end voltage of the battery in the selected section ([0073]-[0075], linear fitting the terminal charge voltage, Figs. 16-17).
Regarding Claims 6 and 15. Shin discloses the selected section corresponds to between a 100th cycle of the battery and a 200th cycle of the battery (Paragraph [0090]).
Regarding Claim 8. Shin discloses comparing a plurality of predicted lifetimes of the battery when the battery is charged based on a plurality of charge protocols (Fig. 25, Paragraphs [0090]-[0092])
Regarding Claim 9. Shin discloses comparing the plurality of charge protocols based on the respective predicted lifetimes of the battery corresponding to each of the plurality of charge protocols (Fig. 25, Paragraphs [0090]-[0092])
Regarding Claim 10. Shin discloses the charge protocol comprises information about a current charging the battery according to a step based on an amount of time required for charging the battery (Paragraph [0082], charging time)
Regarding Claim 16. Shin discloses the processor to control operation of the battery in accordance with the selected charge protocol (Paragraph [0060], based on user selection of the preferred charging method, the processor proceeds with charging of the battery accordingly)
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Shin, US-PGPUB 2018/0351381 in view of Bae et al., US Pat No. 11,536,775 (hereinafter Bae).
Regarding Claim 7. Shin discloses estimating the fading rate of the battery per cycle (Paragraph [0092]).
Shin does not explicitly discloses predicting a number of cycles in which the battery is chargeable.
Bae discloses predicting a number of cycles in which the battery is chargeable (Claim 1; Abstract; Figs. 3, 7 and 13; Col. 1, lines 55-67, Col. 2, lines 36).
At the time of the invention filed, it would have been obvious to a person of ordinary skill in the art to use the teaching of Bae in Shin and predict a number of cycles in which the battery is chargeable with accuracy
Response to Arguments
Applicant's arguments filed 04/13/2026 have been fully considered but they are not persuasive.
For the prior arts rejection, the rejection has been updated accordingly.
For the 101 rejection, the Examiner respectfully disagrees.
The Section 101 provides that anyone who “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. The Supreme Court has repeatedly emphasized that patent protection should not extend to claims that monopolize “the basic tools of scientific and technological work.” Gottschalk vs Benson, 409 US 63, 67, 93 S. Ct. 253, 34 L. Edd. 2d 273 [175 USPQ 673] (1972)). Accordingly, laws of nature, natural phenomena, and abstract ideas are not patent-eligible subject matter. Alice, 134 S. Ct. at 2354.
The 101 subject matter eligibility analysis begins with the claimed language (see Synopsis vs Mentor Graphics, 120 USPQ2d 1473 839 F.3d 1138 (Fed. Cir. 2016), Id., at 1481 “The 101 inquiry must focus on the language of the Asserted Claims themselves.”), followed by identifying the focus or underlying invention (see Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 [103 USPQ2d 1425] (Fed. Cir. 2012), Id., at 1431-1432, “Subsequently, however, we explained in CyberSource Corp. v. Retail Decisions, Inc. that we look not just to the type of claim but also “to the underlying invention for patent-eligibility purposes.” 654 F.3d 1366, 1374 [99 USPQ2d 1690] (Fed. Cir. 2011). Looking at the claims in the instant application, the focus of the claimed invention is battery life prediction, an abstract idea.
Here, note that the Supreme Court has emphatically rejected the idea that claims become patent eligible simply because they disclose a specific solution to a particular problem (Supreme Court, Alice Corp v CLS Bank Int’l, 110 USPQ 2d 1976 at 1985; DDR Holding, 773 F.3d at 1265)). In other words, even if the claims had recited specific abstract ideas for “battery life prediction,” it would not have made the claims eligible on its own.
Additionally, note that the novelty of the abstract idea itself, also does not help in overcoming the 101 rejection (see Flook, In Gottschalk vs Benson, Id., at 195, “we held that the discovery of a novel and useful mathematical formula may not be patented,” Indeed, the novelty of the mathematical algorithm is not a determining factor at all.”). This means that any novelty or non-conventionality in the abstract idea of “battery life prediction,” will not be a determining factor. New abstract idea is still an abstract idea (see Synopsis, 839 F.3d 1138, 120 USPQ2d, 1473 (2016), Id., at 1483, “a claim for a new abstract idea is still an abstract idea. The search for a 101 inventive concept is thus distinct from demonstrating 102 novelty.”).
Having said that, the subject matter eligibility analysis continues with the examination of the additional elements with respect to the practical application and significantly more criteria. Looking at the claimed invention, the claims additionally recite
various additional elements as shown above in the rejection,” but said limitations are merely directed to insignificant data collection activity, recited at high level of generality and a general-purpose computer and memory for processing the collected data and storing the resulting processed data that are also well-understood, routine and conventional. Furthermore, nothing in the claims, understood in light of the original disclosure, requires anything other than off-the-shelf, general-purpose computer for collecting data, analyzing and obtaining the desired information (unlike Thales 85- F.3d 1343, 121 USPQ2d 1898 (2017), Id., at 1898 where the inertial sensors are used in non-conventional manner for measuring position and orientation). The claims also recite “a processor to control operation of the battery,” but said limitation is also an insignificant post-solution activity, recited at high level of generality, without any particular end use (see Univ of Utah Research Found. vs Ambry Genetics Corp, F774 F.3d 755, 113 USPQ2d 1241 (2014), Id., at 1245) and Gottschalk vs Benson, 409 US 63, 175 USPQ 673 (1972), Id., at 674).
Furthermore, the claims do not improve the functioning of any machines. The claims in the instant application with the processor, the focus of the claims is not on such an improvement in said processor as tools (as in Enfish), or focused on a specific asserted improvement in “battery life prediction”, in non-abstract way (or improvement in computer animation in non-abstract way, without animators able to do to same, as in McRo), but on certain independently abstract ideas that use the processor as tools. Aside from the processor, the claims do not even recite any limitations associated with data collection activity. In other words, the Applicant is basically claiming the algorithm or abstract idea itself.
Furthermore, the claims also do not improve any technology under the practical application criteria. At most, the claims are an improvement in the “battery life prediction.” However, improved or new abstract idea is still an abstract idea, and not eligible.
Finally, limiting the claims to the technological environment of battery, without the abstract idea being integrated into a practical application or without the additional elements amounting to significantly more than the abstract idea, is insufficient to transform them into patent-eligible applications of the abstract ideas (Flook established that limiting an abstract idea to one field of use or adding token post-solution components did not make the concept patentable” Bilski v. Kappos, 95 USPQ2d 1001, 1010 (U.S. 2010).
For the reasons given above, the abstract idea is not integrated into a practical application and the additional elements do not amount significantly more than the abstract idea.
In Summary, the claims recite the abstract idea of “battery life prediction”, without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101.
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 HYUN D PARK whose telephone number is (571)270-7922. The examiner can normally be reached 11-4.
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/HYUN D PARK/Primary Examiner, Art Unit 2857
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