DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-20 are pending and presented for examination.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The representative claim 1 recites:
A battery diagnosing apparatus, comprising:
a data obtaining unit configured to obtain a first profile representing a capacity-voltage relationship of a battery cell, the battery cell comprising an active material with a multi-phase characteristic; and
a processor configured to generate a plurality of comparison profiles based on a plurality of electrode profiles included in an electrode profile map, wherein the processor is configured to:
select, as a second profile, one comparison profile from the plurality of comparison profiles by comparing each of the plurality of comparison profiles with the first profile; and
determine at least one diagnostic factor representing a degradation state of the battery cell based on the second profile.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
Under 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 claims are considered to be in a statutory category (process).
Under 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 limitation that fall into/recite abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject Matter Eligibility Guidance, it falls into the grouping of subject matter that, when recited as such in a claim limitation, covers mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations) and/or mental processes – concepts performed in the human mind including an observation, evaluation, judgement, and/or opinion.
Next, under Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application. In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
This judicial exception is not integrated into a practical application because the additional limitations in the claim are only: a data obtaining unit configured to obtain a first profile representing a capacity-voltage relationship of a battery cell, the battery cell comprising an active material with a multi-phase characteristic; and a processor. The limitations “a data obtaining unit configured to obtain a first profile representing a capacity-voltage relationship of a battery cell, the battery cell comprising an active material with a multi-phase characteristic” are recited at a high level of generality (i.e., gathering or collecting data) such that they amount no more than mere instructions to apply the exception using a generic computer components.
The limitations “a processor” is recited at a high level of generality (i.e., as a computer structures performing a generic computer function of processing) such that it amounts no more than mere instructions to apply the exception using a generic computer component.
Finally, under Step 2B, we consider whether the additional elements are sufficient to amount to significantly more than the abstract idea.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as noted above, the additional elements are recited at a high level of generality (i.e., as gathering data using a generic computer/computing component). Further, the additional elements are conventional in the art, as evidenced by the art of record (see, Lim et al. US 10884065 (hereinafter, Lim), (Fig. 1), and Stefanopoulouet al. US 20210359347 (hereinafter, Stefanopoulou), ([0026]). Therefore, claim 1 is directed to an abstract idea without significantly more.
The claim is not patent eligible.
Dependent claims 2-15, add further details of the identified abstract idea. The claims are not patent eligible.
Dependent claims 16-18, the claims are rejected with the same rationale as in claim 1.
Independent claims 19-20, the claims are rejected with the same rationale as in claim 1.
5. Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claim is drawn to a " computer readable medium. " Thus, applying the broadest reasonable interpretation in light of the specification and taking into account the meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art (MPEP 2111), the claim as a whole does not recite any hardware and does not fall into any of the 4 categories of invention (process, machine, manufacture, or composition of matter).
The Examiner suggests that the Applicant add the limitation “non-transitory computer readable medium” to the claim(s) in order to properly render the claim in statutory form in view of their broadest reasonable interpretation in light of the originally filed specification.
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
7. Claims 1-3, 5, 6, 11, 13-20 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 3, 4, 5, 9, 11, 13, and 14 of Patent No. 12584972. Although the conflicting claims are not identical, they are not patentably distinct from each other because, it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element of step whose function is not needed would be obvious to one of ordinary skill in the art. For instance most of claim limitations of claims 1, 2, 3, 5, 6, 11, and 13-20, of the instant application can be found in claim 1, 3, 4, 5, 9, 11, 13, and 14 of the patent.
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.
8. Claims 1-18 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) Claim 1 limitation use the term “data obtaining unit” that are 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 “data obtaining unit” or the generic placeholder are 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 “data obtaining unit” or the generic placeholder are not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the term “data obtaining unit” 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 term “data obtaining unit” 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 term “data obtaining unit” is 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 term “data obtaining unit” is 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.
Examiner’s Notes
9. Claims 1-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, and double patent rejection, set forth in this Office action.
10. The following is a statement of reasons for the indication of allowable subject matter: The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lim et al. (US 10884065) discloses an apparatus for testing electrochemical performance of a battery cell in a nondestructive manner. The apparatus includes a memory configured to store first profile data, second profile data, a first positive electrode upper limit, a first positive electrode lower limit, a first negative electrode upper limit, and a first negative electrode lower limit that are determined in advance through a preliminary experiment with respect to each of a plurality of reference cells. The controller is configured to test performance of the test cell in a nondestructive manner based on data regarding the reference cells and data measured by the sensing unit stored in the memory. Stefanopoulou et al. (US 20210359347 ) discloses an electrical device including a battery cell, a voltage sensor operatively coupled to the battery cell in order to measure a voltage level of the battery cell, a current sensor operatively coupled to the battery cell in order to measure an amount of current drawn from or supplied to the battery cell, and a battery management system (BMS). The controller is configured to execute a program stored in the BMS to calculate a state of health of the individual battery electrodes comprising a battery cell using a first differential voltage point, a second differential voltage point, and a characteristic curve of a fresh battery electrode of a fresh battery cell. Ishihara et al. (JP 2017-133870 A) discloses an abnormal deterioration detection device and an abnormal deterioration detection method for a lithium ion secondary battery that can appropriately detect abnormal deterioration of a lithium ion secondary battery. The prior art of record does not teach or make obvious the claim invention in claims 1,19, and 20 “generate a plurality of comparison profiles based on a plurality of electrode profiles included in an electrode profile map, wherein the processor is configured to: select, as a second profile, one comparison profile from the plurality of comparison profiles by comparing each of the plurality of comparison profiles with the first profile” in combination with the rest of the claim limitations as claimed and defined by the Applicant.
Conclusion
11. Examiner has cited particular columns and line numbers, and/or paragraphs, and/or pages in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to EYOB HAGOS whose telephone number is (571)272-3508. The examiner can normally be reached on 8:30-5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Shelby Turner can be reached on 571-272-6334. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eyob Hagos/
Primary Examiner, Art Unit 2857
Prosecution Insights