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 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, 7, 13 are rejected under 35 U.S.C. 101 because:
Regarding to claim 1: For a subject matter to be statutory, a claimed process/method must be limited to a practical application, and a claim is limited to a practical application when the method, as claimed, produces a concrete, tangible and useful result. In addition, a statutory process is one that requires the measurements of physical objects or activities to be transformed outside of the computer (MPEP 2106 IV 2. Statutory Subject Matter). Furthermore, as stated in MPEP 2106 IV 2b that “To be statutory, a claimed computer-related process must either: (A) result in a physical transformation outside the computer for which a practical application in the technological arts is either disclosed in the specification or would been known to a skilled artisan or (B) be limited to a practical application within the technological arts”. In this case, the claimed method stops short at calculating an acceleration factor without further “a physical transformation” to produce a concrete, tangible and useful result.
Regarding to claims 1, 7, 13: The claims are simply directed to a method/device for performing a reference performance test to evaluate the accelerated idle life of a secondary battery in general without any specific and without including additional elements that are sufficient to amount to significantly more than the judicial exception (Abstract idea). Furthermore, the additional limitations (computing the evaluation period and calculating the acceleration factor) do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing 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.
2. Claims 1, 7, and 13 are 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: The claims cite the element “the input unit”/”an evaluation condition input process” without a clear linking to the other elements/processes of the claim body. In addition, the claim preamble is for the evaluation of an accelerated idle life of a secondary battery, which is performed by the reference performance test of the input unit/the evaluation condition input process. The claims however are unclear about the functions/roles of the data computation unit and the acceleration factor calculation unit, and the purpose of computing the evaluation period and the acceleration factor in the evaluation of the accelerated idle life of the secondary battery.
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.
3.Claims 1, 7, and 13 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Regarding to the limitations of computing the capacity degradation and the direct current internal resistance change rate, the Specification as filed regards to FIG. 4A-C for the explanation, but no clear description on how such computation is performed.
Claims 2-6, 8-12, 14-20 are rejected because they depend on claim 1, 7, or 13.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
4. Claims 1, 5-6, 7, 11-12, 13, 17-18, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2-3, 7-9, 13-15, and 20 of U.S. Patent No. 12,422,496 in view of Miyaki (US 2014/0107956).
The patented claims teach a method for evaluating an accelerated idle life of a secondary battery, comprising:
an evaluation condition input process including inputting an idle temperature to evaluate the accelerated idle life of the secondary battery (claim 1, lines 3-4);
a data computation process including computing an evaluation period, in which
a state of health of the secondary battery reaches a set range, a capacity degradation
rate, and a direct current internal resistance change rate (claim 1, lines 6-9); and
an acceleration factor calculation process including calculating an acceleration
factor of the secondary battery using a first equation that the acceleration factor is equal
to the direct current internal resistance change rate divided by a capacity degradation
rate (claim 1, lines 10-15).
The patented claims however do not teach a measurement period inputted for a reference performance test to evaluate the accelerated idle life of the secondary battery.
Miyaki discloses a method of estimating a battery life of a battery from an inputted temperature and the number of days (period) elapsing after an initial charge (Abstract).
Therefore, it would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the method/system in the patented claims to include inputting the day period for the evaluation of the battery life as disclosed by Miyaki to gain the accuracy of the estimation (paragraph [0004]).
Regarding to claims 5-6, 11-12, 17-18, and 20: wherein the set range of the state of health of the secondary battery is about 80% to about 90%, wherein the acceleration factor is about 4 to about 7, and wherein the first equation is that the acceleration factor is equal to the direct current internal resistance change rate divided by a capacity degradation rate (patented claims 2-3, 8-9, 14-15, and 20).
CONTACT INFORMATION
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The pertinent prior art is cited in the attached PTO-892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAM S NGUYEN whose telephone number is (571)272-2151.
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, DOUGLAS RODRIGUEZ, can be reached on 571-431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAM S NGUYEN/ Primary Examiner, Art Unit 2853