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 1-5 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.
Specifically, representative Claim 1 recites:
“A server that calculates a lease fee of an electrically powered vehicle or a secondary battery of the electrically powered vehicle, the server comprising:
a memory that stores an arithmetic expression or a table for deriving a decrease in amount of capacity retention of the secondary battery, and
a processor, wherein the processor executes program instructions stored in the memory to
send a request to the electrically powered vehicle, the request causing the electrically powered vehicle to discharge power from the secondary battery to a power system,
in response to a signal from the electrically powered vehicle indicating discharge to the power system has been executed,
transmitting a request to the electrically powered vehicle for execution condition information of the executed discharge,
receive information of the executed discharge from the electrically powered vehicle,
derive the decrease in amount of the capacity retention of the secondary battery using the information of the executed discharge and the arithmetic expression or the table,
store a first decrease in amount of the capacity retention due to a first discharge to a power system in the memory separately from a second decrease in amount of the capacity retention due to a second discharge other than the first discharge, and
calculate the lease fee in a state in which an influence of a degree of degradation of the secondary battery due to the first discharge on the lease fee is reduced to a predetermined value that is larger than or equal to 0.”
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
Under the Step 1 of the eligibility analysis, we determine whether the claims are to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter. The above claim is considered to be in a statutory category (process).
Under the Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the highlighted portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitations that fall into/recite an abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject matter Eligibility Guidance, it falls into the groupings of subject matter that covers mathematical concepts - mathematical relationships, mathematical formulas or equations, mathematical calculations and mental processes – concepts performed in the human mind including an observation, evaluation, judgement, and/or opinion.
For example, steps of “derive the decrease in amount of the capacity retention of the secondary battery using the information of the executed discharge and the arithmetic expression or the table” and “calculate the lease fee in a state in which an influence of a degree of degradation of the secondary battery due to the first discharge on the lease fee is reduced” are treated as belonging to the mathematical concepts grouping while the steps of “in response to a signal from the electrically powered vehicle indicating discharge to the power system has been executed” and “reduced to a predetermined value that is larger than or equal to 0” are treated as belonging to mental process grouping. These mental steps represent a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. In the context of this claim, it encompasses a user responding to a request and making a decision (“judgement”) to start discharging.
Similar limitations comprise the abstract idea of Claim 5.
Next, under the Step 2A, Prong Two, we consider whether the above claims that recites a judicial exception are integrated into a practical application.
The above claims comprise the following additional elements:
In Claim 1: A server that calculates a lease fee of an electrically powered vehicle or a secondary battery of the electrically powered vehicle, the server comprising: a memory that stores an arithmetic expression or a table for deriving a decrease in amount of capacity retention of the secondary battery, and a processor, wherein the processor executes program instructions stored in the memory; send(ing) a request to the electrically powered vehicle, the request causing the electrically powered vehicle to discharge power from the secondary battery to a power system; transmitting a request to the electrically powered vehicle for execution condition information of the executed discharge, receive information of the executed discharge from the electrically powered vehicle; store a first decrease in amount of the capacity retention due to a first discharge to a power system in the memory separately from a second decrease in amount of the capacity retention due to a second discharge other than the first discharge.
In Claim 5: Contains similar additional elements as in Claim 1 except “A server that calculates a lease fee of an electrically powered vehicle or a secondary battery of the electrically powered vehicle, the server comprising: a memory that stores an arithmetic expression or a table for deriving a decrease in amount of capacity retention of the secondary battery, and a processor, wherein the processor executes program instructions stored in the memory”.
The additional elements in the preambles are recited in generality and represent insignificant extra-solution activity (field-of-use limitations) that is not meaningful to indicate a practical application.
The additional element in the claim such as a server and a processor (Claim 1) are examples of a generic computer equipment (components) that are generally recited and not meaningful and, therefore, are not qualified as particular machines to indicate a practical application. The limitations that generically send(ing) a request to the electrically powered vehicle, the request causing the electrically powered vehicle to discharge power from the secondary battery to a power system; transmitting a request to the electrically powered vehicle for execution condition information of the executed discharge, receiving information of the executed discharge from the electrically powered vehicle and storing a first decrease in amount of the capacity retention due to a first discharge to a power system in the memory separately from a second decrease in amount of the capacity retention due to a second discharge other than the first discharge represent insignificant extra-solution activity of mere data gathering. According to the October update on 2019 SME Guidance such steps are “performed in order to gather data for the mental analysis step, and is a necessary precursor for all uses of the recited exception. It is thus extra-solution activity, and does not integrate the judicial exception into a practical application”.
Therefore, the claims are directed to a judicial exception and require further analysis under the Step 2B.
However, the above claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B analysis) because these additional elements/steps are well-understood and conventional in the relevant art based on the prior art of record including Kim and Yamada, among others.
The independent claims, therefore, are not patent eligible.
With regards to the dependent claims, claims 2-4 provide additional features/steps which are part of an expanded abstract idea of the independent claims (additionally comprising abstract idea steps) and, therefore, these claims are not eligible without meaningful additional elements that reflect a practical application and/or additional elements that qualify for significantly more for substantially similar reasons as discussed with regards to Claim 1.
For example, additional elements in Claims 3 and 4 (arithmetic expression stored in the memory and a table stored in the memory, respectively) represent insignificant extra-solution activity of storing data, they are recited in generality and, therefore, not meaningful to indicate a practical application and/or qualify for significantly more.
Examiner Note with Regards to Prior Art of Record
Claims 1-5 are distinguished over prior art of record based on the reasons below.
However, in regards to Claim 1, the claim differs from the closest prior art, Kim, Yamada, and Kirimoto, either singularly or in combination, because the references fail to anticipate or render obvious
derive the decrease in amount of the capacity retention of the secondary battery using the information of the executed discharge and the arithmetic expression or the table,
store a first decrease in amount of the capacity retention due to a first discharge to a power system in the memory separately from a second decrease in amount of the capacity retention due to a second discharge other than the first discharge, and
calculate the lease fee in a state in which an influence of a degree of degradation of the secondary battery due to the first discharge on the lease fee is reduced to a predetermined value that is larger than or equal to 0, in combination with all other limitations in the claim as claimed and defined by applicant.
Response to Arguments
Applicant's arguments filed 4/23/2026 have been fully considered but they are not persuasive.
The Applicant argues (p.5-6): These additional steps clearly recite a practical application. First, the request sent to the electrically powered vehicle causes the vehicle to discharge power from the secondary battery to a power system. Next, when an electrically powered vehicle discharges to the power system, a signal is sent from the electrically powered vehicle and received at the server indicating discharge to the power system has been executed. In response, the server transmits a request to the electrically powered vehicle for execution condition information of the executed discharge. The server then receives the information of the executed discharge, and derives the decrease in the amount of capacity retention of the secondary battery using the information of the executed discharge together with the arithmetic expression or the table … Embodiments of the present application, as presented in the amended claims, result in a practical application …
The Examiner respectfully disagrees and submits that in order to demonstrate a practical application, meaningful additional elements have to be recited in the claim. According to MPEP, steps of sending/receiving information correspond to insignificant extra-solution activity that is needed to execute the abstract idea. All uses of judicial exception require these steps as discussed in the rejection.
The Applicant argues (p.6): Moreover, the above limitations enable tabulating deterioration of capacity that is the result of responding to a request from the server to discharge power from the electrically powered vehicle to the power system. As a result, suppression of lease fee increases can more accurately account for virtuous discharging performed by electrically powered vehicles in response to requests.
In addition to the above response about a practical application, the Examiner submits that the above advantages are related to the abstract idea steps. However, such improvements are not qualified improvements that indicate eligibility. According to the October 2019 Update on 2019 PEG: “it is important to keep in mind that an improvement in the judicial exception itself (e.g., a recited fundamental economic concept) is not an improvement in technology. Further, in Synopsys: “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”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yasuhide Kurimoto et al. (US 20200290477) discloses determining a capacity retention ratio changes by a specified amount, when the user pays the lease fee, the capacity retention ratio indicating a degree of progress of deterioration of the battery.
Shinya Nishikawa et al. (US 20220355702) discloses calculating a degradation cost of batteries for each of the numbers of the one or more batteries, the degradation cost being calculated based on the amount of power consumption and on the number of batteries.
Takuma Kogo (US 20210075226) discloses a remaining capacity change model that estimates a temporal change of a remaining capacity which is based on charging/discharging and computing a charging/discharging plan of each of the plurality of energy storage systems based on the remaining capacity change model of each of the plurality of energy storage systems.
Takaaki Fukunishi et al. (US 20250102583) discloses machine learning of a relationship between the plurality of first degradation levels and the plurality of pieces of first log data of a battery during charge/discharge cycles.
THIS ACTION IS MADE FINAL. 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 ALEXANDER SATANOVSKY whose telephone number is (571)270-5819. The examiner can normally be reached on M-F: 9 am-5 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine Rastovski can be reached on (571) 270-0349. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER SATANOVSKY/
Primary Examiner, Art Unit 2857
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