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)
“charging station electronic control unit”
9
None
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 1-8 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
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 method for detecting disconnection of a charge cable and transmitting information to the user regarding the disconnection, which is a 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).
Claim 1 is directed to a method for detecting disconnection of a charge cable and transmitting information to the user regarding the disconnection which establishes a data connection, detects cable connection data, takes cable connection data and transmits other data (“a verification request) based on that data. Examiner notes that this is the broadest reasonable interpretation of claim 1, since the step of “deactivating a supply of power” is presented as an alternative limitation to the “transmitting” step. This is a mental process, since the entire process of detecting data and using that data to decide to output other data could be performed in one’s head.
Essentially, claim 1 describes a describes a computer implementation (“data connection”) of gathering and manipulating data an idea 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).
Thus, claim 1, indeed discloses a judicial exception. The nominal recitation of the data connection being between a “vehicle electronic control unit and a charging station” is merely a field of application of the method, since it doesn’t add any physical transformations to the claim.
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, though the claim recites “vehicle electronic control unit and a charging station”, the physical transformation is not positively recited (the “deactivating” does not always 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 charging does not always occur) and does not apply the judicial exception in a meaningful way besides a general link to the technology of electric vehicle charging. The “charging cable” and use of the charging cable with a vehicle and station is essentially insignificant extra-solution activity. 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).
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. Claim 1 fails to meet this test since the claim as a whole generally applies the concept of detecting data and transmitting data based on the detected data, essentially taking a mental process or method “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.
Dependent claims 2-8 recite basic additional data detection and data analysis steps all representing steps of a mental process that could be performed on a generic computer.
Looking at the dependent claim limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
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.
Claims 9-10 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 9 limitation “charging station electronic control unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification and drawings do not indicate any particular structure (i.e. a processor, microcontroller) which serve as the actual structure for the "unit". Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 9-10 have been found indefinite for reciting the 112(f) limitation “charging station electronic control unit” for which there is not adequate structure disclosed for performing the corresponding function of "communicatively coupling", “establishing”, “deactivating” and “transmitting”; therefore there is a lack of written description since an indefinite unbounded functional limitation would cover all ways of performing a function, known and unknown, and would indicate that the inventor has not provided sufficient disclosure to show possession of the invention.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-5 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tonegawa US PGPUB 2011/0022222.
Regarding claim 1, Tonegawa discloses a method of vehicle recharge matching [fig. 1], the method comprising:
establishing a data connection between a vehicle electronic control unit and a charging station upon detection of a physical coupling of a charge cable to a vehicle [fig. 3, steps 100/200 and 150/220; when cable is detected, authentication information regarding the vehicle’s key is received from the charger and an authentication result and is sent from the vehicle, thus a data connection is established after detection of the charge cable connection (steps 140-150/215-220); pars. 65 & 88-91]; and
upon receiving an indication that the charge cable has been physically disconnected from the vehicle and subsequently reconnected:
deactivating a supply of power to the charge cable [pars. 6 & 155; fig. 3; steps 160/240/335; the authentication is requested “every time” the cable is disconnected and reconnected, and stopped when the cable has been reconnected to a vehicle besides the one that is reauthenticated, thus at least some of the time, the supply of power is deactivated following subsequent reconnection (reconnection to the same vehicle is not claimed here)]; and/or
transmitting a verification request.
Regarding claim 2, Tonegawa discloses wherein the verification request is transmitted to a user device and/or a charging station display [Examiner notes that this limitation is an alternative limitation and since the alternative has been addressed (“deactivating”) the limitations contingent to the other alternative do not have to be addressed by the prior art. See MPEP 2111.04 (Ex Parte Schulhauser)].
Regarding claim 4, Tonegawa discloses wherein the verification request is a credit card verification request [Examiner notes that this limitation is an alternative limitation and since the alternative has been addressed (“deactivating”) the limitations contingent to the other alternative do not have to be addressed by the prior art. See MPEP 2111.04 (Ex Parte Schulhauser)].
Regarding claim 5, Tonegawa discloses wherein the verification request comprises providing an instruction to insert, swipe, or tap a credit card at a payment reader of the charging station [Examiner notes that this limitation is an alternative limitation and since the alternative has been addressed (“deactivating”) the limitations contingent to the other alternative do not have to be addressed by the prior art. See MPEP 2111.04 (Ex Parte Schulhauser)].
Regarding claim 8, Tonegawa discloses wherein upon the charge cable being placed back into a docking handle of the charging station, resetting the data connection and establishing a second data connection between a second vehicle electronic control unit and the charging station upon detection of a physical coupling of the charge cable to a second vehicle [pars. 6, 64, 73-74 & 155; fig. 3; steps 160/240/335; the authentication is requested “every time” the cable is disconnected and reconnected, thus, if the cable 160 is plugged back into the charging socket (docking handle) of station 200 (par. 64), the data connection is reset and started again upon the detection of coupling].
Regarding claim 9, Tonegawa discloses an electric vehicle charging station, the charging station comprising:
a charging unit [fig. 2, charger 200];
a charge cable electrically coupled to the charging unit and configured to deliver an electrical current from the charging unit to a vehicle when physically coupled to the vehicle [fig. 2, charging cable 160; pars. 48-49 & 51]; and
a charging station electronic control unit configured to communicatively couple to a vehicle electronic control unit when the charge cable is physically coupled to the vehicle [fig. 2, ECU 210 communicates via 205 and 115 with ECU 114 of vehicle 100; pars. 58, 65, 68-70 & 72; ], wherein, upon receiving a signal indicating that the charge cable has been physically connected to the vehicle, the charging station electronic control unit is configured to: establish a data connection between the vehicle electronic control unit and the charging station electronic control unit [fig. 3, steps 100/200 and 150/220; when cable is detected, authentication information regarding the vehicle’s key is received from the charger and an authentication result and is sent from the vehicle, thus a data connection is established after detection of the charge cable connection (steps 140-150/215-220); pars. 65 & 88-91]; and
upon receiving an indication that the charge cable has been physically disconnected from the vehicle and subsequently reconnected: deactivate a supply of power to the charge cable [pars. 6 & 155; fig. 3; steps 160/240/335; the authentication is requested “every time” the cable is disconnected and reconnected, and stopped when the cable has been reconnected to a vehicle besides the one that is reauthenticated, thus at least some of the time, the supply of power is deactivated following subsequent reconnection (reconnection to the same vehicle is not claimed here)]; and/or
transmit a verification request.
Regarding claim 10, Tonegawa discloses wherein the verification request is transmitted to a user device and/or a charging station display [Examiner notes that this limitation is an alternative limitation and since the alternative has been addressed (“deactivating”) the limitations contingent to the other alternative do not have to be addressed by the prior art. See MPEP 2111.04 (Ex Parte Schulhauser)].
Claim Rejections - 35 USC § 103
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.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tonegawa US PGPUB 2011/0022222.
Regarding claim 7, Tonegawa discloses further comprising transmitting data from the vehicle electronic control unit to the charging station over the data connection [steps 140-150/215-220); pars. 65 & 88-91; authentication information].
Tonegawa does not explicitly disclose wherein the data from the vehicle electronic control unit includes credit card information of a user.
However, Examiner takes Official Notice that it is well known in the electric vehicle charging arts to communicate credit card information from a vehicle ECU so that billing for the charging can take place in a commercial setting. Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify Tonegawa to further include wherein the data from the vehicle electronic control unit includes credit card information of a user for the purpose of allowing a user to purchase energy for charging their vehicle at a location outside their home, and since it has been held to be within the general skill of a worker in the art to apply a known technique to a known device (method, or product) which was ready for improvement in order to yield results predictable by one of ordinary skill the art. KSR International Co. v Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007).
Allowable Subject Matter
Claims 3 and 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
With respect to claim 3, the following is an examiner's statement of reasons for the indication of allowable subject matter: the prior art fails to further teach or suggest “transmitting a notification to a user device when the charge cable has been physically disconnected from the vehicle and subsequently reconnected” in combination with all the other elements recited in claim 3.
With respect to claim 6, the following is an examiner's statement of reasons for the indication of allowable subject matter: the prior art fails to further teach or suggest “determining a vehicle location; and when the vehicle location is within a residential area, disabling the verification request” in combination with all the other elements recited in claim 6.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hagenmaier et a l. US PGPUB 2011/0279082 discloses an electric vehicle charging system which detects the unplugging of a charging cable and disables power supply.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Julian Huffman can be reached at 571-272-2147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID V HENZE/Primary Examiner, Art Unit 2859
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