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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
The claims are directed at methods and apparatus and therefore are directed at one of the four statutory categories
Step 2A prong 1
Prong 1 requires the Examiner to determine whether the claims recite an abstract idea that fall under one of the following four categories: a) mathematical concept, b) certain methods of organizing human activity, c) mental process, or d) other abstract ideas such as an idea of itself.
The claim limitations in the abstract idea have been highlighted in bold below; the remaining limitations are "additional elements."
Specifically representative Claim 1 recites:
A method of measuring an internal resistance of a battery by using a battery-internal-resistance-measuring apparatus, the method comprising:
obtaining an initial internal resistance of the battery electrically connected to the battery-internal-resistance-measuring apparatus (does not add significantly more because this represents extrasolution activity, see prong 2, 2B below in which this limitation is discussed),
fitting an equivalent circuit model comprising resistance elements, which correspond to an internal resistance component of the battery and a resistance component of the battery-internal-resistance-measuring apparatus, and an inductance element, which correspond to an inductance component of the battery-internal-resistance-measuring apparatus, based on the initial internal resistance (abstract; mathematical concepts, and/or mathematical calculations, i.e. mathematical fitting/modeling; does not add significantly more because this represents extrasolution activity); and
deriving an internal resistance value of the battery based on a fitting result of the equivalent circuit model (abstract; mathematical concepts, and/or mathematical calculations; does not add significantly more because this represents extrasolution activity; note, that the abstract limitations of this claim may also be performed through mental processes, or judgements by a user, as no tangible structural elements, such as a processing circuitry have been explicitly claimed).
Step 2A prong 2
Under prong 2 Examiner is to determine whether the additional elements integrate the abstract idea into a practical application. In order to do this Examiner must identify whether there are additional elements and evaluate whether those additional elements individually and in combination integrate the abstract idea into a practical application.
In this case, there are no additional elements aside from describing the gathered data. The only elements of claims 1-6 are directed towards gathering and manipulation of data and/or mental processes and no result is discussed. Without a result there can be no practical application of the algorithm of claim 1-6. Note that the limitation: “obtaining an initial internal resistance of the battery electrically connected to the battery-internal-resistance-measuring apparatus” (claim 1, lns.3-4), may be additional in that it is data gathering, but it is not integration into any application as it is claimed in a manner that is simply reading a file.
The highlighted portion of the claim constitutes an abstract idea because it is analogous to other ideas identified as abstract in court decisions.
Courts have determined that elements including sensors, processors and memory do not cause a Claim having an abstract idea to be directed at more than the abstract idea. For example. Courts have declined to find significantly more than an abstract idea in claims involving receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321,120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto.
LLC, 823 F.3d 607, 610,118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359,1363,115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355,112 USPQ2d 1093,1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245,1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Also, Courts have declined to find significantly more than an abstract idea in claims involving performing repetitive calculations, Flook, 437 U.S. at 594,198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266,1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.").
Furthermore, as stated above, the act of repair and maintenance is wholly unrelated to the abstract idea/algorithm. In Diehr, the abstract algorithm was tied into a practical application because the rubber that was manufactured had characteristics (the degree of cure) that was determined by the algorithm. In this case, the algorithm has no effect on the repair, aside from merely flagging the need for repair, much more analogous to the alarm limit in Flook.
Step 2B
In step 2B Examiner must determine whether the additional elements are well-understood, routine, and conventional. Examiner must do this consistent with the Berkheimer Memo.
The Berkheimer Memo describes "an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in the MPEP’s noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
As mentioned above, there are no additional elements in claims 1-6 aside from the recitation of the algorithm, performative mental processes, and the data gathered and manipulated.
As such, there are no additional elements to be considered individually and in combination with the other claim elements, and therefore cannot make the claim as a whole significantly more than the abstract idea itself. Rather than being a particular limited application of the abstract idea which serves to improve a specific method or device, the claim would tend to monopolize the abstract idea itself in practice.
Stated simply, nothing in claim 1 forms a nexus between the method steps of the claim and a method measuring an internal resistance of a battery through the use of an apparatus. Claims 2-6 do not include any limitations to cause the claims to be directed at more than the abstract idea. Claims 2-6 are subsequently rejected as these claims depend from Claim 1, and are also abstract in nature with no extrasolution activity, in similar fashion to the reasoning provided above in Claim 1.
See MPEP 2106.04(B) which has distilled some concepts that the courts have deemed ineligible. Each limitation above, where noted, is analogous to subject matter deemed an abstract idea in previous court decisions as mental processes that can be performed in the human mind (MPEP 2104.04(B)(iii).
The claims at issue can be summarized, where noted, as concepts that can be performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions (see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011); Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972); Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965). Notably, in Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1147-49, 120 USPQ2d 1473, 1480-81 (Fed. Cir. 2016), the court disagreed, because it interpreted the claims as encompassing nothing other than pure mental steps (and thus falling within an abstract idea grouping) because the claims did not include any limitations requiring computer implementation. The court held that the claims were directed to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Mental processes can be performed by humans with the assistance of physical aids such as pens or paper.
See MPEP 2106.04(B) which has distilled some concepts that the courts have deemed ineligible. Each limitation above is analogous to subject matter deemed an abstract idea in previous court decisions as collecting, displaying, and manipulating data (MPEP 2104.04(B)(i) and collecting information, analyzing it, and displaying certain results of the collection and analysis (MPEP 2104.04(B)(ii).
The claims at issue can be summarized, where noted as merely mathematical concepts and calculations, as collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group v. Alstrom, 2015-1778). Both cases are highly relevant and also very recent. Information as such is an intangible. See Microsoft Corp. v. AT & TCorp., 550 U.S. 437,451 n.12 (2007); Bayer AG v. Housey Pharm., Inc., 340F.3d 1367, 1372 (Fed. Cir. 2003). See also the seminal case of Parker v. Flook, 437 U.S. 584, where the Supreme Court found that mere post-solution activity (such as the natural output of a mathematical algorithm) does not make the ineligible eligible. The CAFC has treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. See, e.g., Internet Patents, 790 F.3d at 1349;... In a similar vein, the Court has treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category. See, e.g., TLI Commc'ns, 823 F.3dat 613;. . . And the Court has recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis. See, e.g., Content Extraction, 776F.3dat 1347.
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 5 and 11 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. The term “about” in claims 5 and 11 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Note that the specification does not does not define the term in concrete language address the term “about” in [0033], but does not define the term “about” in concrete language (see spec [0033]):
““About” or “approximately,” as used herein, is inclusive of the stated value and means within an acceptable range of deviation for the particular value as determined by one of ordinary skill in the art, considering the measurement in question and the error associated with measurement of the particular quantity (i.e., the limitations of the measurement system). For example, “about” may mean within one or more standard deviations, or within ± 30%, 20%, 10%, 5% of the stated value. Further, the use of “may” when describing embodiments of the present disclosure refers to “one or more embodiments of the present disclosure.”
As stated in the specification, the term “may” qualifies that term “about” as only possibly being within a stated range, and thus the term is not conclusively defined to be within a certain range. Therefore, the metes and bounds of the use of the term in claims 5 and 11 cannot be definitively ascertained. For the purposes of further examination the term “about” will be interpreted as rendering unnecessary any range requirement which it qualifies.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kodama et al. USPG Pub. No.: US 2019/0331737.
Regarding Claim 7, Kodama teaches a battery-internal-resistance-measuring apparatus for measuring an internal resistance of a battery electrically connected thereto, the apparatus comprising:
a resistance component (see resistive components of figure 8 used in determining the equivalent circuit model; see [0093]-[0094]);
an inductance component (see inductive component L of the battery of figure 8 used in determining the equivalent circuit model);
a memory configured to store an equivalent circuit model comprising resistance elements corresponding to an internal resistance component of the battery and the resistance component (see [0074], which discusses a memory that is used to provide data to a fitting processor for an AC impedance plot internal to the battery, which would necessitate the storage of claimed components), and
an inductance element (figure 8, L) corresponding to the inductance component; and
a processor configured to obtain an initial internal resistance value of the battery, configured to fit the equivalent circuit model based on the initial internal resistance value to generate a fitting result, and configured to derive an internal resistance value of the battery based on the fitting result (see [0020]-[0022], [0060], and [0070]-[0071] teaching the determination of a characteristic based on fitting a curve based on modeling an equivalent circuit, and that the characteristic is internal resistance of the battery stated in [0060]).
Regarding Claim 1, the device as recited in claim 7 is specific to this method and thus it must perform the method. The method is intrinsic to the apparatus because the recited method steps will be performed during normal operation of the apparatus. Therefore, Claim 1 is also rejected.
Regarding Claims 2 and 8, Kodama teaches the method as claimed in claim 1 and the battery-internal-resistance-measuring apparatus as claimed in claim 7, wherein the equivalent circuit model comprises one of the resistance elements corresponding to the resistance component in parallel to the inductance element corresponding to the inductance component (see figure 8).
Regarding Claims 3 and 9, Kodama teaches the method as claimed in claim 2 and the battery-internal-resistance-measuring apparatus as claimed in claim 8, wherein the equivalent circuit model comprises another one of the resistance elements corresponding to the internal resistance component in series with the inductance element (see figure 8 in which Rsol is in series with the inductor in the ECM).
Regarding Claims 4 and 10, Kodama teaches the method as claimed in claim 1 and the battery-internal-resistance-measuring apparatus as claimed in claim 7, wherein the processor is further configured to calculate the internal resistance value for a frequency range (see [0007]-[0008] and [0067]-[0070], which details the determination of internal resistance, referred to as a characteristic, for a frequency range).
Regarding Claims 5 and 11, Kodama teaches the method as claimed in claim 4 and the battery-internal-resistance-measuring apparatus as claimed in claim 10, wherein the frequency range is about 100 Hz to about 10 kHz (see [0086] in which the frequency range of 100mHz to 1 kHz overlaps the range; also note that the word “about” the requirement of a frequency range unnecessary as discussed in the rejection under 112(b) above).
Regarding Claims 6, Kodama teaches the method as claimed in claim 1, wherein the method is executed by a computer program stored on a recording medium by using a computing device (see [0074]-[0076] and [0084] which discusses a processor that executes the method).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A HARRISON whose telephone number is (571)272-3573. The examiner can normally be reached Monday-Friday 9:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHANIE BLOSS can be reached at (571) 272-3555. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A HARRISON/Examiner, Art Unit 2852