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 Claims and Other Notes
Claims 1–13 are pending.
Claims 1–9 are being treated on their merits.
Claims 10–12 are withdrawn from consideration.
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 (i.e., changing from AIA to pre-AIA ) 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 paragraph numbers cited in this Office Action in reference to the instant application are referring to the paragraph numbering of the PG-Pub of the instant application. See US 2024/0258589 A1.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 27 November 2023 and 11 December 2024 were filed before the mailing of a first Office Action on the merits. The submissions comply with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1–9, drawn to energy storage system.
Group II, claim(s) 10–12, drawn to a method of operating an energy storage system.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of receiving a measurement data and a failure flag of a battery rack, and storing the measurement data based on activation of the failure flag, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Su et al. (CN 110943261 A, hereinafter Su). Su discloses receiving a measurement data and a failure flag of a battery rack (FIG. 2, [0032]), and storing the measurement data based on activation of the failure flag (FIG. 3, [0033]). Therefore, the shared technical feature is not special.
During a telephone/email conversation with Joseph R Anderson (Reg. No. 79,684) on 27 May 2026, a provisional election was made with traverse to prosecute the invention of the energy storage system, claims 1–9. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10–12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Drawings
The drawings are objected to because:
The view numbers of FIGS. 1–4 are not larger than the letters, numbers, and reference characters used in the drawing. The view numbers must be larger than the numbers used for reference characters. See 37 CFR 1.84 (u)(2).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: ENERGY STORAGE SYSTEM INCLUDING COMMUNICATION CONVERSION DEVICE STORING MEASUREMENT DATA WHEN FAILURE FLAG ACTIVATED AND METHOD FOR OPERATING SAME.
The disclosure is objected to because of the following informalities:
Reference character 2000 is referred to as a server in paragraph [0037]. Reference character 2000 is used to designate a communication conversion device; and reference character 3000 is used to designate a server. Reference character 3000 should be used to designate a server in paragraph [0037].
Reference character 3000 is referred to as a communication conversion device in paragraph [0041]. Reference character 2000 is used to designate a communication conversion device; and reference character 3000 is used to designate a server. Reference character 2000 should be used to designate a communication conversion device in paragraph [0041].
Reference character 110 is referred to as a communication unit in paragraph [0042]. Reference character 110 is used to designate a measurement unit; and reference character 120 is used to designate a communication unit. Reference character 120 should be used to designate a communication unit in paragraph [0042].
Reference character 230 is referred to as a control unit in paragraph [0045]. Reference character 220 is used to designate a control unit; and reference character 230 is used to designate a memory. Reference character 220 should be used to designate a control unit in paragraph [0045].
Appropriate correction is required.
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 1–9 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.
Claims 1–4 and 6–9 recite limitations regarding an energy storage system and a method of using the energy storage system. See Claim Interpretation below. A "system" may be defined as a set of connected things or parts forming a complex whole or a set of principles or procedures according to which something is done. Emphases added. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph. IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990).
Claim 5 is directly dependent from claim 2, is indirectly dependent from claim 1, and includes all the limitations of claims 1 and 2. Therefore, claim 5 is also 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 8 recites the limitation "the corresponding memory" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Interpretation
Claims 1–4 and 6–9 recite limitations that are directed to a manner of operating disclosed energy storage system. It is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP §§ 2114 and 2115. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states "[e]xpressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim."
Claim 1 recites the limitations "that outputs measurement data and a failure flag of a battery rack," "that receives the measurement data and the failure flag from the rack BMS, subjects the measurement data to communication conversion, and outputs the measurement data," and "that receives the measurement data from the communication conversion device, wherein the communication conversion device stores the measurement data according to activation of the failure flag," which are directed to a manner of operating disclosed energy storage system.
Claim 2 recites the limitations "receives measurement data of a controller area network (CAN) frame format from the rack BMS, converts the measurement data into measurement data of a transmission control protocol (TCP) packet format, and then transmits the converted measurement data to the server," which are directed to a manner of operating disclosed energy storage system.
Claim 3 recites the limitations "transmits a reception confirmation signal to the rack BMS" and "the rack BMS activates the failure flag and transmits the failure flag to the communication conversion device," which are directed to a manner of operating disclosed energy storage system.
Claim 4 recites the limitations "transmits a reception confirmation signal to the communication conversion device" and "the communication conversion device activates the failure flag," which are directed to a manner of operating disclosed energy storage system.
Claim 6 recites the limitations "increments an index value whenever the failure flag is activated and sequentially stores the measurement data in the plurality of memories," which are directed to a manner of operating disclosed energy storage system.
Claim 7 recites the limitations "resets the index value and sequentially overwrites the measurement data into the plurality of memories if the failure flag is activated even after all measurement data is stored in the plurality of memories," which are directed to a manner of operating disclosed energy storage system.
Claim 8 recites the limitation "reads the measurement data stored in the communication conversion device," which are directed to a manner of operating disclosed energy storage system.
Claim 9 recites the limitation "reads the measurement data stored in the corresponding memory by inputting an index value and a read command to the communication conversion device," which are directed to a manner of operating disclosed energy storage system.
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.
(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, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takayama et al. (JP 2020-078183 A, hereinafter Takayama).
Regarding claim 1, Takayama discloses an energy storage system (FIG. 6, [0040]) comprising:
a rack battery management system (BMS) (38) that outputs measurement data and a failure flag of a battery rack (26) including a plurality of battery cells (FIG. 1, [0013]);
a communication conversion device (40) that receives the measurement data and the failure flag from the rack BMS (38), subjects the measurement data to communication conversion, and outputs the measurement data (FIG. 7, [0041]); and
a server (90) that receives the measurement data from the communication conversion device (40, [0041]),
wherein the communication conversion device (40) stores the measurement data according to activation of the failure flag (FIG. 2, [0025]).
Regarding claim 8, Takayama discloses all the claim limitations as set forth above and further discloses a system, further comprising:
an external controller (91) that reads the measurement data stored in the communication conversion device (40, [0041]).
Regarding claim 9, Takayama discloses all the claim limitations as set forth above and further discloses a system:
wherein the external controller (91) reads the measurement data stored in the corresponding memory (43) by inputting an index value and a read command to the communication conversion device (40, [0044]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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.
Claims 2 and 5–7 are rejected under 35 U.S.C. 103 as being unpatentable over Takayama (JP 2020-078183 A) as applied to claim 1 above, and further in view of Kim et al. (KR 2021-0047444 A, hereinafter Kim).
Regarding claim 2, Takayama discloses all the claim limitations as set forth above, but does not explicitly disclose a system:
wherein the communication conversion device receives measurement data of a controller area network (CAN) frame format from the rack BMS, converts the measurement data into measurement data of a transmission control protocol (TCP) packet format, and then transmits the converted measurement data to the server.
Kim discloses an energy storage system comprising a communication conversion device (740) receives measurement data of a controller area network (CAN) frame format (710, [0064]) from a rack BMS (200, [0022]), converts the measurement data into measurement data of a transmission control protocol (TCP) packet format (740, [0068]), and then transmits the converted measurement data to the server (730, [0072]) to increase the rate of data transmission (see TCP/IP, [0068]). Takayama and Kim are analogous because they are directed to energy storage systems. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to make the communication conversion device of Takayama with the controller area network frame format and transmission control protocol packet format of Kim in order to increase the rate of data transmission.
Regarding claim 5, modified Takayama discloses all the claim limitations as set forth above and further discloses a system:
wherein the communication conversion device (40) includes a plurality of memories (42, 43) for storing the measurement data (FIG. 5, [0017]).
Regarding claim 6, modified Takayama discloses all the claim limitations as set forth above and further discloses a system:
wherein the communication conversion device (40) increments an index value whenever the failure flag is activated and sequentially stores the measurement data in the plurality of memories (FIG. 5, [0036]).
Regarding claim 7, modified Takayama discloses all the claim limitations as set forth above and further discloses a system:
wherein the communication conversion device (40) resets the index value and sequentially overwrites the measurement data into the plurality of memories if the failure flag is activated even after all measurement data is stored in the plurality of memories (FIG. 5, [0036]).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Takayama (JP 2020-078183 A) in view of Kim (KR 2021-0047444 A) as applied to claim 2 above, and further in view of Hofer et al. (EP 3680955 A1, hereinafter Hofer).
Regarding claims 3 and 4, modified Takayama discloses all the claim limitations as set forth above, but does not explicitly disclose a system:
wherein the server transmits a reception confirmation signal to the rack BMS if the measurement data is received, and
the rack BMS activates the failure flag and transmits the failure flag to the communication conversion device if the rack BMS does not receive the reception confirmation signal; and
wherein the server transmits a reception confirmation signal to the communication conversion device if the measurement data is received, and
the communication conversion device activates the failure flag if the communication conversion device does not receive the reception confirmation signal.
Hofer discloses an energy storage system comprising a server (31) transmits a reception confirmation signal to a rack BMS (21) if the measurement data is received (FIG. 1, [0022]) and the rack BMS (21) activates the failure flag and transmits the failure flag to a communication conversion device (30) if the rack BMS (21) does not receive the reception confirmation signal (FIG. 1, [0022]); and wherein the server (31) transmits a reception confirmation signal to the communication conversion device (21) if the measurement data is received (FIG. 1, [0022]), and the communication conversion device (21) activates the failure flag if the communication conversion device (21) does not receive the reception confirmation signal (FIG. 1, [0022]) to improve the reliability of the energy storage system (FIG. 1, [0034]). Takayama and Hofer are analogous because they are directed to energy storage systems. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to make the energy storage system with the reception confirmation signals of Hofer in order to improve the reliability of the energy storage system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kinomura (US 2019/0322185 A1) discloses an energy storage system (10, [0035]) comprising a rack battery management system (BMS) (160) that outputs measurement data and a failure flag of a battery rack (110) including a plurality of battery cells (FIG. 1, [0040]); a communication conversion device (210) that receives the measurement data and the failure flag from the rack BMS (160), subjects the measurement data to communication conversion, and outputs the measurement data (FIG. 3, [0041]); and a server (230) that receives the measurement data from the communication conversion device (210, [0062]), wherein the communication conversion device (210) stores the measurement data according to activation of the failure flag (FIG. 3, [0086]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean P Cullen, Ph.D. whose telephone number is (571)270-1251. The examiner can normally be reached Monday to Thursday 6:00 am to 4:00 pm CT, Friday 6:00 am to 12:00 pm CT.
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, Basia A Ridley can be reached at (571)272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Sean P Cullen, Ph.D./Primary Examiner, Art Unit 1725
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