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 .
Status of the Application
This Office Action is in response to amendments and arguments received on 12 June 2026. Claims 1 and 3-6 have been amended. Claims 2 and 7 have been cancelled. Claims 1, 3-6 and 8-11 remain pending. This communication is the fourth Office Action on the Merits.
Key to Interpreting this Office Action
For readability, all claim language has been bolded. Citations from prior art are provided at the end of each limitation in parenthesis. Any further explanations that were deemed necessary by the Examiner are provided at the end of each claim limitation. The Applicant is encouraged to contact the Examiner directly if there are any questions or concerns regarding the current Office Action.
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
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.
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: power-to-mechanical conversion unit interpreted in view of Applicant disclosure as PMU 130 generating control signals C21 and C22.
MPEP § 2181, I. A. provides a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f): "mechanism for," "module for," "device for," "unit for," "component for," "element for," "member for," "apparatus for," "machine for," or "system for." Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096, 89 USPQ2d 1289, 1293-94 (Fed. Cir. 2008); Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354, 80 USPQ2d 1225, 1228 (Fed. Cir. 2006); Personalized Media, 161 F.3d at 704, 48 USPQ2d at 1886–87; Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214-1215, 48 USPQ2d 1010, 1017 (Fed. Cir. 1998). Note that there is no fixed list of generic placeholders that always result in 35 U.S.C. 112(f) interpretation, and likewise there is no fixed list of words that always avoid 35 U.S.C. 112(f) interpretation. Every case will turn on its own unique set of facts.
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 § 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 1, 3-6 and 8-11 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 applicant regards as the invention.
In regards to claims 1 and 6: Applicant has amended the claims such that the power-to-mechanical conversion unit is no longer modified by structural modifiers , and now invokes and is interpreted under 35 U.S.C. 112(f), as outlined above, per MPEP 2181. The power-to-mechanical conversion unit is interpreted as PMU 130 generating control signals C21 and C22. However, the Applicant disclosure is silent as to what PMU 130 is structurally and/or physically, and is therefore indefinite as claimed. Corrective action or clarification is required.
For the sake of compact prosecution, the claimed power-to-mechanical conversion unit (i.e. PMU 130) is interpreted as a structure capable of using algorithms per [0049] of Applicant’s published disclosure, such as a generic processor or processor-based controller programmed to generate control signals C21 and C22.
All other dependent claims of the indefinite claims detailed above are also indefinite at least by virtue of depending on the indefinite claims detailed above.
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, 3-6 and 8-11 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 significantly more.
Claim 1 is directed to:
1. A method performed by a control unit (CU) comprised in an energy management system (EMS) (the CU and EMS are interpreted in view of Applicant disclosure CU 121, located within EMS 120, described in Applicant disclosure [0060]-[0063] as modules, circuits, and/or processors configured with software, firmware or other digital hardware. Therefore, the broadest reasonable interpretation (BRI) of the claimed CU and EMS include structures that are considered well-understood, routine and conventional computer processing devices.)
for controlling charging of an energy storage system (ESS) comprising one or more batteries configured to store energy and provide power, (intended use in the preamble, no patentable weight given)
the method comprising:
obtaining, from the ESS, an obtained charge ability of the ESS and an actual charging power or current of the ESS during a regeneration braking period, the obtained charge ability being a maximum power or current convertible to stored energy and less than a maximum overcharging limit; (interpreted as performing step 310 of Fig. 3 and demonstrated as communication between ESS 110 and EMS 120 per Fig. 2, this obtaining step is considered to be mere communication of data from one processor or processing unit to another processor or processing unit. Communication of data is considered to be well-known, well-understood, routine and conventional computer functions.)
comparing the actual charging power or current with the obtained charge ability; (interpreted as step 320 of Fig. 3, this is considered a data processing step that is an abstract mental process performable by one of ordinary skill mentally or by hand.)
adjusting the obtained charge ability to an adjusted charge ability based on comparing the actual charging power or current with the obtained charge ability; (interpreted as step 330 of Fig. 3, this is considered a data processing step that is considered an abstract mental process performable by one of ordinary skill mentally or by hand.)
and providing the adjusted charge ability to a power-to-mechanical conversion unit (interpreted as performing step 340 of Fig. 3, and demonstrated as communication between EMS 120 and PMU 130 per Fig. 2, this providing step is considered to be mere communication of data from one processor or processing unit to another processor or processing unit. Communication of data is considered to be well-known, well-understood, routine and conventional computer functions.)
configured to control charging power delivered to the ESS during the regeneration braking period by the one or more electric machines based on the adjusted charge ability. (As claimed, this limitation merely further limits the processor of PMU 130, and most specifically the programming used by the processor of PMU 130. It is particularly noted that the generation of the control signals C21 and C22 is not explicitly claimed as a method step, and the electric machines 141 and 142 are not actively controlled by the configured PMU 130. Therefore, this is not considered a practical application of the abstract data processing, outlined above.)
Applying Step 1 of the Alice Analysis, the claims are understood to be directed to a process, machine, manufacture or composition of matter, and therefore we proceed to step 2A.
Applying Step 2A, Prong One of the Alice analysis, claim 1 is determined to be directed to an abstract idea (mental processes). Claim 1 is directed to generic computer processors that adjust a data point based on a comparison of that data point to a control, an abstract mental process performable mentally or by hand. Claim 1 does not claim any steps that cannot be performed mentally by one of ordinary skill in the art, but is merely performed on a generic computer, and therefore falls within the “mental processes” grouping. See 84 Fed. Reg. 52. Because we conclude that claim 1 recites an abstract idea, we proceed to Step 2A, Prong Two.
Applying Step 2A, Prong Two of the Alice analysis, we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception; and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. This evaluation requires an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. If the recited judicial exception is integrated into a practical application, the claim is not “directed to” the judicial exception.
Apart from the comparing and adjusting steps of the abstract idea above, the only additional elements recited in claim 1 is obtaining data and providing data, interpreted as mere data communication steps between processors or processing modules. Claim 1 does not recite any limitation that even generally links the use of the judicial exception to a particular technological environment. Accordingly, the language itself of claim 1 does not reflect an improvement in any particular technical field or technology. There is also no evidence that the claimed system recites an improvement to the functioning of the “computer system” itself. See MPEP § 2106.05(a). Claim 1 also does not appear to use a judicial exception in conjunction with any particular machine. See 84 Fed. Reg. 55. Accordingly, claim 1 does not integrate the judicial exception into a practical application of the exception, and we proceed to Step 2B.
Applying Step 2B of the Alice analysis, the claim(s) does/do not include additional elements beyond the judicial exception that is not “well-understood, routine, conventional” in the field or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations are no more than a field of use or merely involve insignificant extrasolution activity. Therefore, viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. Corrective action or clarification is required.
Independent claim 6 is a system that is the same or similar to the system of claim 1, and is rejected the same or similar to claim 1, as detailed above.
Dependent claims 3-5 and 8-11 have been evaluated in a similar manner, and do not appear to overcome these deficiencies. Therefore, dependent claims 3-5 and 8-11 are rejected in the same or a similar manner as claims 1 and 6, above.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-6 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Center et al. (US 20090118877 A1) herein “Center” in view of Mitsutani et al. (US 20110285350 A1) herein “Mitsutani”.
In regards to Claim 1, as best understood, Center discloses the following:
1. A method performed by a control unit (CU) comprised in an energy management system (EMS) for controlling charging of an energy storage system (ESS), comprising one or more batteries configured to store energy and provide power, (see at least Fig. 2, items 5, 19, 21, 56, 72 and 74 and [0025] “batteries of ESD 74 and the first and second electric machines 56 and 72”)
the method comprising:
obtaining, from the ESS, an obtained charge ability of the ESS (see at least [0030] “BPCM 21 is signally connected to sensors (not shown) to monitor the ESD 74, including states of electrical current and voltage parameters, to provide information indicative of parametric states of the batteries of the ESD 74 to the HCP 5. The parametric states of the batteries preferably include… available battery power, referred to as a range P.sub.BAT.sub.--.sub.MIN to P.sub.BAT.sub.--.sub.MAX.”)
and an actual charging power or current of the ESS (see at least [0042] “BPCM 21 monitors operating parameters of the ESD 74 including electrical current”) during a regeneration braking period, (see at least [0044] “electric machines 56 and 72… generate electric power during a regenerative braking event. For operations that require a charge or discharge power greater than the long term power limits, the powertrain operations can control operation of the first and second electric machines 56 and 72 through the motor control modules and power inverters of the TPIM 19 to charge or discharge the ESD 74 limited by the short term power limit for short time periods, e.g., one to ten second time periods. A maximum short term power limit can be defined based upon the maximum long term power limit of the ESD 74, and a minimum short term power limit can be defined based upon the minimum long term power limit of the ESD 74.”) the obtained charge ability being a maximum power or current convertible to stored energy and less than a maximum overcharging limit (see at least [0004] “electric machines may transform vehicle kinetic energy, transmitted through the vehicle driveline, to electrical energy that is storable in an electrical energy storage device.” and [0043] “ESD 74 exhibits physical power charge and discharge operating limits… operating limits include maximum charge power and discharge power that the ESD 74 can support without sustaining internal physical damage”, [0044] “maximum short term power limit”)
comparing the actual charging power or current with the value of the obtained charge ability; (see at least [0050] “EQU00001”)
adjusting the obtained charge ability to an adjusted charge ability based on comparing the actual charging power or current with the obtained charge ability; (see at least [0054] “If the actual power exceeds the long term power limits, the HCP 5 increases the energy area metric as described hereinabove (408). The HCP 5 determines whether the energy area metric exceeds a predetermined threshold. If the energy area metric is less than the predetermined threshold the HCP 5 continues the method at block 403. If the energy area metric exceeds the predetermined threshold, the HCP 5 ramps the short term power limit to the long term power limit (416).”)
Center discloses adjusts a battery charge-power capability based on the comparison claimed. Although clearly suggested, Center discloses adjusting a short term power limit to the long term power limit, and therefore does not explicitly disclose adjusting the long-term limit, which would be necessary in Center for explicit disclosure of the terms claimed.
However, this is more clearly taught by Mitsutani. (see at least [0083] “Subtraction unit 53 subtracts target value PR from monitor value PM2, and outputs the calculation result to feedback control unit 54” and [0084] “Feedback control unit 54 performs a proportional-plus-integral operation (PI control) using, as a control input, a deviation between monitor value PM2 received from subtraction unit 53 and target value PR of the charge power, and outputs the calculation result as a feedback correction value PC. Addition unit 55 adds correction value PC to target value PR”)
Before the effective filing date of the claimed invention, it would have been obvious to a person having ordinary skill in the art to combine the features of Mitsutani with the invention of Center, with a reasonable expectation of success, with the motivation of providing charging feedback in order to properly adjust charging when an abnormality occurs (Mitsutani, [0003]) and/or with the motivation of allowing charging power at over a maximum charge power for short time periods that exceed the maximum discharge and charge rates without damaging the electrical energy storage device. (Center, [0005])
As best understood, Center, as modified by Mitsutani, discloses the following:
and providing the adjusted charge ability to a power-to-mechanical conversion unit configured to control charging power delivered to the ESS during the regeneration braking period by one or more electric machines based on the adjusted charge ability. (see at least [0044] “powertrain operations can control operation of the first and second electric machines 56 and 72 through the motor control modules and power inverters of the TPIM 19 to charge or discharge the ESD 74 limited by the short term power limit for short time periods”, [0043] “Based on each of the above detected values, charging ECU 46 performs feedback correction for power command value CHPW of charger 42 such that the charge power actually supplied to power storage devices 10-1 to 10-3 is equal to target value PR”)
In regards to Claim 3, as best understood, Center, as modified by Mitsutani, discloses the following:
3. The method of claim 1, wherein adjusting the value of obtained charge ability based on the comparing result comprises:
increasing the value of charge ability if the actual charging power or current is smaller than the value of obtained charge ability; (see at least previous citations at [0046] and [0054])
and decreasing the value of charge ability if the actual charging power or current is larger than the value of obtained charge ability. (see at least previous citations at [0046] and [0054])
In regards to Claim 4, as best understood, Center, as modified by Mitsutani, discloses the following:
4. The method of claim 1, wherein one or more control signals are generated based on the adjusted value of charge ability for controlling the charging power delivered by one or more electric machines comprised in the vehicle (see at least [0041] “motor torque commands (`T.sub.A`, `T.sub.B`) for controlling the first and second electric machines 56 and 72”) such that: the charging power is increased if the charging power delivered by the one or more electric machines is smaller than the adjusted value of charge ability; or the charging power is decreased if the charging power delivered by the one or more electric machines is larger than the adjusted value of charge ability. (see at least previous citations at [0046] and [0054])
In regards to claim 5, as best understood, Center discloses the following:
5. The method of claim 1, further comprising:
receiving by the CU a signal from the power-to-mechanical conversion unit (PMU); and determining by the CU whether or not to start a control procedure based on the received signal. (see at least [0032] ”control algorithms… may be executed in response to the occurrence of an event.” and [0044] “regenerative braking event”)
In regards to claim 6: Claim 6 is the system performing the method of claim 1, and is therefore rejected the same or similar to claim 1, above.
In regards to claims 8 and 9: Claims 8 and 9 claim vehicle(s) comprising the systems of claims 6 and a vehicle comprising a processor performing the method of claim 1, respectively. Center discloses a vehicle (see at least Fig. 1 and [0046]) comprising the systems of claim 6, performing the method of claim 1. Accordingly, claims 8 and 9 are rejected the same or similar to claims 1 and 6, above.
In regards to claims 10 and 11: Claims 10 and 11 are the non-transitory computer program product and the non-transitory computer-readable storage medium performing the method of claim 1, respectively, and are therefore also rejected the same or similar to claim 1, above.
Response to Arguments
Applicant’s amendments and arguments made regarding the 35 U.S.C. § 112(f) interpretation have been fully considered, and are persuasive as amended for the previously claimed battery monitoring units. However, amendments removing structural modifiers to the claimed power-to-mechanical conversion unit have triggered a 35 U.S.C. § 112(f) interpretation for this term, per MPEP 2181. See the above 35 U.S.C. § 112(f) interpretation and subsequent 35 U.S.C. § 112(b) rejection above for details.
Applicant’s amendments and arguments made in accordance with the 35 U.S.C. § 112(a) have been fully considered, and are persuasive. The 35 U.S.C. § 112(a) rejection is withdrawn.
Applicant’s amendments and arguments made in accordance with the 35 U.S.C. § 112(b) have been fully considered, and are persuasive. However, Applicant amendments have generated a new 35 U.S.C. § 112(b) rejection detailed above. See the above 35 U.S.C. § 112(f) interpretation and subsequent 35 U.S.C. § 112(b) rejection above for details.
Applicant’s amendments and arguments made in accordance with 35 U.S.C. § 102 (a)(1) have been fully considered. However, with respect to the previous claim rejections under 35 U.S.C. § 102, applicant has amended the independent claim, and these amendments have changed the scope of the original application and the Office has supplied new grounds for rejection attached above in this FINAL office action and therefore the prior arguments are considered moot.
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 extension fee 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 Jason Roberson, whose telephone number is (571) 272-7793. The examiner can normally be reached from Monday thru Friday between 8:00 AM and 4:30 PM. The examiner may also be reached through e-mail at Jason.Roberson@USPTO.GOV, or via FAX at (571) 273-7793. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Navid Z Mehdizadeh can be reached on (571) 272-7691.
Another resource that is available to applicants is the Patient Application Information Retrieval (PAIR) system. Information regarding the status of an application can be obtained from the PAIR system. Status information for published applications may be obtained from either Private PAIR or Public PAX. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have any questions on access to the Private PAIR system, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll free).
Applicants are invited to contact the Office to schedule either an in-person or a telephone interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
Sincerely,
/JASON R ROBERSON/
Patent Examiner, Art Unit 3669
August 21, 2026
/NAVID Z. MEHDIZADEH/Supervisory Patent Examiner, Art Unit 3669
Prosecution Insights