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 .
Claims 1-8 are pending in the application.
Priority
The present application claims foreign priority benefits from JP2021-206772 filed on 12/21/2021. The priority documents were electronically retrieved on 06/07/2024. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. The present application is also a 371 of PCT/JP2022/043358 filed on 11/24/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/14/2024, 07/10/2024 and 02/27/2026 is considered and attached.
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.
The following table lists the occurrences that use means/placeholders and corresponding structure and associated algorithm (Figures and paragraphs refer to PGPub US 20240297358 A1).
Claim no.
112(f) elements
Corresponding structure
Associated algorithm
1
an electrode degradation judgment unit that performs …
FIG. 7 #750; FIG. 8 processor #803; para. [0118], [0124]
FIG. 2-4, 9-10; para.[0049]-[0051], [0138]-[0142],
2
a regeneration processing content decision unit that … evaluates … and decides …
FIG. 7 #750; FIG. 8 processor #803; para. [0118], [0124]
FIG. 9 S908; FIG. 11; para. [0144]-[0149]
6
a degradation mode judgment unit that judges …
FIG. 7 #750; FIG. 8 processor #803; para. [0118], [0124]
FIG. 9 S903-S905; para. [0124]-[0126], [0131]-[0132]
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-4 and 7 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
Claim 1 recites “an electrode degradation judgment unit that performs …”, which is a single means. Claims 3-4 and 7, dependent upon claim 1, do not further recite other means to form a combination of elements, and therefore are rejected. Claims 2 and 5-6, however, further recite other elements, such as “a regeneration processing content decision unit that … evaluates” and “a degradation mode judgment unit that judges …”, and therefore are eligible.
A single means claim, i.e., where a means recitation does not appear in combination with another recited element of means, is subject to an enablement rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) (A single means claim which covered every conceivable means for achieving the stated purpose was held nonenabling for the scope of the claim because the specification disclosed at most only those means known to the inventor.). When claims depend on a recited property, a fact situation comparable to Hyatt is possible, where the claim covers every conceivable structure (means) for achieving the stated property (result) while the specification discloses at most only those known to the inventor. See MPEP §2164.08(a).
Claim Rejections - 35 USC § 103
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 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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over MORITA et al. (US 20210081875 A1, hereafter MORITA), in view of TAKEUCHI et al. (US 20200266494 A1, hereafter TAKEUCHI).
As per claim 8, MORITA teaches a reuse support method (Abstract; FIG. 7) comprising:
performing, by a computer, an electrode degradation judgment to judge, based on one or a plurality of kinds of first data which are input not a degradation degree of the 102 receives the specification data from the specification data acquisition unit 101 and, based on the specification data, sets a range of a degradation state that is allowable (hereinafter referred to as “allowable range”) as a member of the battery product to be remanufactured”; para. [0037] “Specifically, the database searching unit 104 searches for the identifier of a secondary battery associated with diagnostic data indicating a diagnostic result that falls within the allowable range set by the allowable range setting unit 102”; Here “diagnostic data” is considered as “first data”. FIG. 7 S406 “remanufacturing” is interpreted as “regeneration”); and
if a result of the electrode degradation judgment is true, evaluating, by the computer, each of one or a plurality of evaluation items of the 104 searches the battery database managed by the battery database management server 300 for battery data of a secondary battery whose degradation state falls within the allowable range set in step S402 (step S404). If battery data of secondary batteries the number of which is not less than the required number determined in step S403 is found by the search in step S404 (Yes in step S405), the process proceeds to step S406”; Here the searched secondary batteries is considered “one or plurality of evaluation items”. The “required number” of batteries is considered the second data.)
MORITA does not teach the first data is regarding a ceramic electrode that is an electrode for which a crystal-oriented ceramic plate is used, and which is removed from a lithium-ion secondary battery having the ceramic electrode, and the second data is regarding the removed ceramic electrode.
TAKEUCHI in an analogous art teaches a secondary battery which comprises a positive electrode plate composed of an inorganic material containing a positive electrode active material in an oxide form, a negative electrode plate composed of an inorganic material containing a negative electrode active material in an oxide form and an inorganic solid electrolyte (Abstract; FIG. 1). TAKEUCHI further teaches each of the positive electrode plate and the negative electrode plate comprises a ceramic electrode which a crystal-oriented ceramic plate is used (para. [0028] “… the positive electrode plate 12 and the negative electrode plate 16, which are composed of ceramic material, can have an increased thickness as needed, resulting in large capacity and high energy density”; para. [0030] (see below picture)
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Furthermore, TAKEUCHI teaches characteristic data distribution associated with such a crystal-oriented ceramic plate. For example, FIG. 3 shows a cross-sectional electron backscatter diffraction (EBSD) image perpendicular to a main face of the oriented positive electrode plate. FIG. 4 is an area-based histogram illustrating the distribution of orientation angles of primary grains 11 in the EBSD image of FIG. 3. From FIG. 4, the averaged value of the orientation angles, i.e., the mean orientation angle of primary grains 11 composed of lithium complex oxide is preferably in the range of 0° to 30° (para. [0034], [0037]) and such an angle range can reduce the deterioration of battery in operating at high temperature, and provides various advantages (para. [0034]). Note the distribution of orientation angles of primary grains is obtained via the cross-sectional EBSD image. Therefore the positive electrode has to be removed from a lithium-ion secondary battery having the ceramic electrode.
It would be obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teaching of MORITA to incorporate the teaching of TAKEUCHI to include data regarding a ceramic electrode that is an electrode for which a crystal-oriented ceramic plate is used, and which is removed from a lithium-ion secondary battery having the ceramic electrode. Doing so would provide a secondary battery that can achieve large battery capacity and superior cycle capacity retention in rapid charge/discharge cycles as recognized by TAKEUCHI (para. [0009]).
Allowable Subject Matter
Claims 1, 3-4 and 7 would be allowable should the 112(a) rejection presented above is overcome. Claims 2 and 5-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is Examiner’s statement of identification of allowable subject matter.
Per claim 1, as analyzed above in 112(f) section, limitation associated with “an electrode degradation judgment unit that performs an electrode degradation judgement” is interpreted as invoking 112(f) claim interpretation. The corresponding structure disclosed in the specification is a “processor” as showed in FIG. 8 (#803) and described in para. [0118] and [0124]. Claiming a means for performing a specific computer-implemented function and disclosing only a general-purpose computer as its structure amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. See MPEP 2181(II)(B). The corresponding algorithm disclosed in the specification is (PGPub): FIG. 2-4, FIG. 9-10, para.[0049]-[0051] and [0138]-[0142].
The closest prior art includes MORITA et al. (US 20210081875 A1, hereafter MORITA) and TAKEUCHI et al. (US 20200266494 A1, hereafter TAKEUCHI) as applied above to method claim 8 under broadest reasonable interpretation. Either MORITA, or TAKEUCHI, or in combination, fails to teach the limitations recited in claim 1 as interpreted under 35 U.S.C. 112(f).
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XUEMEI G CHEN whose telephone number is (571)270-3480. The examiner can normally be reached Monday-Friday 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John M Villecco can be reached on (571) 272-7319. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/XUEMEI G CHEN/Primary Examiner, Art Unit 2661