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 .
Information Disclosure Statement
The references listed in the Information Disclosure Statement filed on 08/20/2024 have been considered by the examiner (see attached PTO-1449 forms).
Double Patenting
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,085,623 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because a later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites a secondary battery diagnosing apparatus, comprising: a memory configured to store a positive electrode reference profile and a negative electrode reference profile; and a processor configured to: generate a charge and discharge measurement profile based on measured voltages of a target battery measured by a voltage sensor during a charge or discharge process; determine whether a difference exists between the charge and discharge measurement profile, and a simulation profile based on the positive electrode reference profile and the negative electrode reference profile; generate a positive electrode adjustment profile and a negative electrode adjustment profile by adjusting the difference between the charge and discharge measurement profile and the simulation profile to within a predetermined level; and diagnose the target battery based on at least one of the positive electrode adjustment profile and the negative electrode adjustment profile…
Claim 12 recites a secondary battery diagnosing method by a diagnosing apparatus, comprising: measuring a voltage of a target battery during a charge process or a discharge process; generating a charge and discharge measurement profile based on the measured voltage; determining whether a difference exists between the charge and discharge measurement profile, and a simulation profile based on the positive electrode reference profile and the negative electrode reference profile; generating a positive electrode adjustment profile and a negative electrode adjustment profile by adjusting the difference between the charge and discharge measurement profile, and the simulation profile to within a predetermined level; and diagnosing the target battery based on at least one of the positive electrode adjustment profile and the negative electrode adjustment profile…
and thus grouped as Mental Processes - concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
These judicial exceptions are not integrated into a practical application because the additional elements, the data gathering step, (claim 1) “a memory configured to store a positive electrode reference profile and a negative electrode reference profile; and a processor configured to: generate a charge and discharge measurement profile based on measured voltages of a target battery measured by a voltage sensor during a charge or discharge process” (claim 12) “measuring a voltage of a target battery during a charge process or a discharge process; generating a charge and discharge measurement profile based on the measured voltage” are mere data gathering that do not add a meaningful limitation to the method as they are insignificant extra-solution activity. Furthermore, the additional elements (claims 1 and 12) the “diagnosing apparatus and processor” are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions amount to no more than using a computer as a tool to perform an abstract idea. All of which are considered not indicative of integration into a practical application (see MPEP 2106.04(d)).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are considered extra-solution activity of pre-solution and post-solution activity which fall under insignificant extra solution activity and deemed insufficient to qualify as “significantly more” - see MPEP 2106.05(g). The additional elements of the processor and diagnosing apparatus are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea and deemed insufficient to qualify as “significantly more” see MPEP 2106.05(f).
Dependent claims 2-11 and 13-20 when analyzed as a whole are patent ineligible under 35 U.S.C. §101 because the dependent claims fail to establish that the claims are not directed to an abstract idea as they are directed mathematical concepts and/or mental processes and do not add significantly more to the abstract idea.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 and the double patenting rejection(s), set forth in this Office action.
The following is an examiner’s statement of reasons for allowance:
Claim 1 is objected to over the cited prior art because none of the cited prior art teaches or suggests, in combination with the other claimed limitations, determine whether a difference exists between the charge and discharge measurement profile, and a simulation profile based on the positive electrode reference profile and the negative electrode reference profile; generate a positive electrode adjustment profile and a negative electrode adjustment profile by adjusting the difference between the charge and discharge measurement profile and the simulation profile to within a predetermined level.
Claim 12 is objected to over the cited prior art because none of the cited prior art teaches or suggests, in combination with the other claimed limitations, determining whether a difference exists between the charge and discharge measurement profile, and a simulation profile based on the positive electrode reference profile and the negative electrode reference profile; generating a positive electrode adjustment profile and a negative electrode adjustment profile by adjusting the difference between the charge and discharge measurement profile, and the simulation profile to within a predetermined level.
Relevant Prior Art / Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Liaw et al. (US Patent Application Publication 2022/0214399 A1) discloses a method of qualifying rechargeable battery cells into classifications.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICKY GO whose telephone number is (571)270-3340. The examiner can normally be reached on Monday through Friday from 9:00 a.m. to 5:30 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arleen M. Vazquez can be reached on (571) 272-2619. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICKY GO/Primary Examiner, Art Unit 2857
