DETAILED ACTION
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.
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 limitations are: limitations that use “unit” in claims.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 limitations recite sufficient structure to perform the claimed function so as to avoid 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 limitations “unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
6. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without being integrated into a practical application and do not include additional elements that amount to significantly more than the judicial exception.
Utilizing the two step process adopted by the Supreme Court (Alice Corp vs CLS Bank Int'l, US Supreme Court, 110 USPQ2d 1976 (2014) and the recent 101 guideline, Federal Register Vol. 84, No., Jan 2019)), determination of the subject matter eligibility under the 35 USC 101 is as follows: Specifically, the Step 1 requires claim belongs to one of the four statutory categories (process, machine, manufacture, or composition of matter). If Step 1 is satisfied, then in the first part of Step 2A (Prong one), identification of any judicial recognized exceptions in the claim is made. If any limitation in the claim is identified as judicial recognized exception, then proceeding to the second part of Step 2A (Prong two), determination is made whether the identified judicial exception is being integrated into practical application. If the identified judicial exception is not integrated into a practical application, then in Step 2B, the claim is further evaluated to see if the additional elements, individually and in combination, provide “inventive concept” that would amount to significantly more than the judicial exception. If the element and combination of elements do not amount to significantly more than the judicial recognized exception itself, then the claim is ineligible under the 35 USC 101.
Looking at the claims, the claims satisfy the first part of the test 1A, namely the claims are directed to one of the four statutory class, apparatus and method. In Step 2A Prong one, we next identify any judicial exceptions in the claims. In Claim 1 (as a representative example), we recognize that the limitations “comparing a capacity turnover value from a beginning to an end of life with a capacity turnover
value during operation, calculate the capacity turnover value during operation,
wherein the capacity turnover value calculation unit calculates the capacity turnover value during operation using at least one of: an upper-limit-state-of-charge-based correction coefficient calculated based on an upper limit state of charge (SOC) calculated by an upper limit SOC calculation unit configured to calculate the upper limit SOC, which is an SOC having a largest value when the lead-acid battery is charged, or
an upper-limit-voltage-based correction coefficient calculated based on an upper
limit voltage calculated by an upper limit voltage calculation unit configured to calculate the upper limit voltage, which is a highest voltage when the lead-acid battery is charged,” are abstract idea, as they recite that involve mental process. Similar rejections are made for other independent and dependent claims. With the identification of abstract ideas, we proceed to Step 2A, Prong two, where with additional elements and taken as a whole, we evaluate whether the identified abstract idea is being integrated into a practical application.
In Step 2A, Prong two, the claims additionally recite various “unit,” but said limitation is merely a generic devices that are insignificant. The claims do not improve any devices and do not improve other technology. At most, the claims are an improvement in the abstract idea of calculating the capacity turnover value. However, improved or new abstract idea is still an abstract idea and not eligible. In short, the claims do not provide sufficient evidence to show that they are more than a drafting effort to monopolize the abstract idea. As such, the abstract idea is not integrated into a practical application. Consequently, with the identified abstract idea not being integrated into a practical application, we proceed to Step 2B and evaluate whether the additional elements provide “inventive concept” that would amount to significantly more than the abstract idea.
In Step 2B, the claims additionally recite various “unit,” but said limitation is merely a generic devices that are insignificant that are also well-understood, routine and conventional. As such, the claims do not provide additional elements that would amount to significantly more than the abstract idea
In Summary, the claims recite abstract idea without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101.
Claim Rejections - 35 USC § 102
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.
(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.
Claims 1-5 and 7-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawai et al., US Pat No. 5,650,812 (hereinafter Kawai)
Regarding Claims 1 and 7. Kawai discloses lead-acid battery system (Col. 9, lines 3-9), configured to estimate a remaining life of a lead-acid battery by comparing a capacity turnover value from a beginning to an end of life with a capacity turnover value during operation (Abstract), the lead-acid battery system comprising:
a capacity turnover value calculation unit configured to calculate the capacity turnover value during operation, wherein the capacity turnover value calculation unit calculates the capacity turnover value during operation using at least one of: an upper-limit-state-of-charge-based correction coefficient calculated based on an upper limit state of charge (SOC) calculated by an upper limit SOC calculation unit configured to calculate the upper limit SOC, which is an SOC having a largest value when the lead-acid battery is charged, or an upper-limit-voltage-based correction coefficient calculated based on an upper limit voltage calculated by an upper limit voltage calculation unit configured to calculate the upper limit voltage, which is a highest voltage when the lead-acid battery is charged (Col. 1, lines 53-67, Col. 2, lines 1-40, obtaining coefficient based on a ratio of total discharge capacity to nominal capacity and correction thereafter; Fig. 2, in particular, and Col. 3, lines 65 to Col. 8, line 62, providing full description; Figs. 1-15).
Regarding Claims 2 and 8. Kawai discloses the upper limit SOC calculation unit calculates, as the upper limit SOC, an SOC at a start of a discharge of the lead-acid battery, and the capacity turnover value calculation unit calculates the upper-limit-state-of-charge-based correction coefficient based on the upper limit SOC calculated by the upper limit SOC calculation unit (Fig. 2, Col. 4, lines 36 to Col. 8, line 62)
Regarding Claims 3 and 9. Kawai discloses wherein the upper limit SOC calculation unit calculates, as the upper limit SOC, an SOC at an end of a next charge after an end of a discharge of the lead-acid battery, and the capacity turnover value calculation unit calculates the upper-limit-state-of-charge-based correction coefficient based on the upper limit SOC calculated by the upper limit SOC calculation unit (Fig. 2, Col. 4, lines 36 to Col. 8, line 62)
Regarding Claims 4 and 10. Kawai discloses the upper limit voltage calculation unit calculates, as the upper limit voltage, a peak voltage at an end of a charge immediately before a discharge of the lead-acid battery to be subjected to calculation of the capacity turnover value during operation, and the capacity turnover value calculation unit calculates the upper-limit-voltage-based correction coefficient based on the upper limit voltage calculated by the upper limit voltage calculation unit (Fig. 2, Col. 4, lines 36 to Col. 8, line 62)
Regarding Claims 5 and 11. Kawai discloses the upper limit voltage calculation unit calculates, as the upper limit voltage, a peak voltage at an end of a next charge after an end of a discharge of the lead-acid battery, and the capacity turnover value calculation unit calculates the upper-limit-voltage-based correction coefficient based on the upper limit voltage calculated by the upper limit voltage calculation unit (Fig. 2, Col. 4, lines 36 to Col. 8, line 62)
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.
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 6 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kawai et al., US Pat No. 5,650,812 in view of Lev, US-PGPUB 2016/0028071 (hereinafter Lev)
Regarding Claims 6 and 12-20. Kawai does not explicitly disclose the lead-acid battery is a bipolar lead-acid battery.
Leve discloses a bipolar lead-acid battery (Paragraphs [0003])
At the time of the invention filed, it would have been obvious to a person of ordinary skill in the art to use the teaching of Lev in Kawai and determine the remaining life of the bipolar lead-acid battery, since said battery is another known type of battery.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Briggs, US Pat No. 5,325,041
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/HYUN D PARK/Primary Examiner, Art Unit 2857
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