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 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:
-a communication unit, a power storage, a control unit in claim 1-10.
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.
Claim 1 is 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 1 recites, “a control unit external management device via the communication unit.” The relationship between the control unit, external management device, and communication unit is unclear.
Claim 1 recites, “define a lower limit of a capacity as a minimum capacity required to enable the control unit, in response to interruption of power supply from the external power-supply device to the power storage, to communicate with the external management device…” It is unclear whether “define a lower limit of a capacity…” is done “in response to interruption of power supply…” or “communicate with the external management device…” is done “in response to interruption of power supply…”
Furthermore, it would be beneficial to use semicolons at the end of limitations to delineate the end of a limitation.
Claims 2-10 are also rejected because they incorporate the deficiencies of the rejected base claim 1.
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.
MPEP § 2106 sets out a framework of analysis (the “Alice/Mayo Framework”) to determine whether a claimed invention is directed to subject matter that is foreclosed under 35 U.S.C. § 101. A summary of that framework is provided below:
Step 1 - Is the claim to a process, machine, manufacture, or composition of matter?
Step 2A, Prong 1 - If so, is the claim directed to a judicial exception (a law of nature, a natural phenomenon/product of nature, or an abstract idea)?
Step 2A, Prong 2 – If so, does the claim recite additional elements that integrate the judicial exception into a practical application?
Step 2B – If not, does the claim recite additional elements that amount to significantly more than the judicial exception?
Under this framework,
Claim(s) 1 and 9-10
is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process without significantly more.
Step 1
The recited limitations are directed to a process, machine, manufacture, or composition of matter. Here, a machine is/are recited.
Step 2A, Prong 1
The claim(s) recite(s):
A communication adapter, comprising:
a power storage configured to receive power supply from an external power- supply device and store power;
a communication unit configured to receive power supply from the power storage, and configured to perform data communication with an external management device; and
a control unit external management device via the communication unit,
wherein the control unit is configured to:
define a lower limit of a capacity as a minimum capacity required to enable the control unit, in response to interruption of power supply from the external power-supply device to the power storage, to communicate with the external management device, the has a lower limit being varied depending on whether the power storage is receiving power from the external power-supply device that is variable,
set the lower limit to a first capacity value while the power storage is receiving the power supply from the external power-supply device, and
set the lower limit to being interrupted is a second capacity value lower than the first capacity value in a case of the power supply to the power storage from the external power-supply device being interrupted.
In other words, each of the cited claims substantially recite defining and setting limits. The claims thus recite the judicial exception(s): a mental process.
Step 2A, Prong 2
The claims, each considered as a whole, do not integrate the judicial exception into a practical application. The claims recite the following additional elements, emphasized below:
A communication adapter, comprising:
a power storage configured to receive power supply from an external power- supply device and store power;
a communication unit configured to receive power supply from the power storage, and configured to perform data communication with an external management device; and
a control unit external management device via the communication unit,
wherein the control unit is configured to:
define a lower limit of a capacity as a minimum capacity required to enable the control unit, in response to interruption of power supply from the external power-supply device to the power storage, to communicate with the external management device, the has a lower limit being varied depending on whether the power storage is receiving power from the external power-supply device that is variable,
set the lower limit to a first capacity value while the power storage is receiving the power supply from the external power-supply device, and
set the lower limit to being interrupted is a second capacity value lower than the first capacity value in a case of the power supply to the power storage from the external power-supply device being interrupted.
The additional highlighted claim elements amount to:
Merely including instructions to implement an abstract idea on a computer: The communication adapter and included components (power storage, communication unit, external management device) are recited so generically that they represent no more than mere instructions to apply the judicial exception on a computer. See MPEP § 2106.05(f).
Accordingly, the claims, each considered as a whole, do not integrate the judicial exception into a practical application.
Step 2B
The claim(s) does/do not include additional elements (or the combination of the additional elements) that are sufficient to amount to significantly more than the judicial exception. As discussed in Step 2A, Prong 2 above the highlighted extra elements recite:
Merely including instructions to implement an abstract idea on a computer: The communication adapter and included components (power storage, communication unit, external management device) are recited so generically that they represent no more than mere instructions to apply the judicial exception on a computer. See MPEP § 2106.05(f).
Moreover, the following limitations: “a power storage configured to receive power supply from an external power- supply device and store power;
a communication unit configured to receive power supply from the power storage, and configured to perform data communication with an external management device; and
a communication unit configured to receive power supply from the power storage, and configured to perform data communication with an external management device” are well understood, routine, and conventional. The claimed elements are recited at a high level of abstraction and merely describe conventional device components operating in their ordinary manner. A power storage that receives and stores power, and a communication unit that receives power and communicates with an external device, are standard features commonly found in electronic devices. The claim does not identify any unconventional arrangement, algorithm, circuitry, or interaction among the components that would indicate more than routine application of known technology. Furthermore, as shown in the previous office action, Kwak demonstrated that the limitations are common in the prior art:
Kwak et al teaches a communication adapter [fig. 1], comprising:
a power storage [auxiliary battery 307¹, fig. 3], configured to receive power supply from an
external power supply device [charger² [0090]] and store power;
a communication unit [RF unit" [0042, 0043]] configured to receive power supply from the
power storage, and configured to perform data communication with an external management device
[external electronic device [0094]] ["The auxiliary battery 307 may supply power to the electronic device" [0049]].
Accordingly, the additional elements are well-understood, routine, and conventional and do not integrate any alleged abstract idea into a practical application or amount to significantly more.
Regarding claim 9, the additional elements simply define the values as voltage and don’t amount to significantly more than the abstract idea.
Regarding claim 10, the outdoor unit of an air conditioner is recited at a high level of generality and does not amount to significantly more than the abstract idea.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 Jaweed A Abbaszadeh whose telephone number is (571)270-1640. The examiner can normally be reached Monday-Friday 9 a.m.-5 p.m..
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/JAWEED A ABBASZADEH/Supervisory Patent Examiner, Art Unit 2176
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