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 .
The following is a Final Office action in response to communications received on June 10, 2026. Claims 1-19 are pending and addressed below.
Response to Arguments
Applicant’s amendments are sufficient to overcome the 35 U.S.C. 112(b) rejections set forth in the previous Office Action except for one rejection in claim 8. This rejection is maintained and repeated herein below.
Applicant’s arguments regarding the 35 U.S.C. 103 rejections set forth in the previous Office Action have been fully considered but are not persuasive. Applicant argues (pp. 8-9 of Remarks):
However, even if, arguendo, the teachings of Stouffer and Sudan are combined, the combination fails to arrive at the combination of features including "a security means configured to block or stop an operation of the ESS in another domain separate from a network switch," "wherein the network switch is configured to control at least one of the two or more monitoring levels of the monitoring means," as recited in amended claim 1. That is, the "another domain" in which the "security means" claim 1 operates is separate and, therefore, different from the ones controlled by the "network switch."
Examiner respectfully disagrees. Initially, Applicant’s argument rests on a specific interpretation of the claim language that is not explicitly recited. Applicant argues that “the ‘another domain’ in which the ‘security means’ claim 1 operates is separate and, therefore, different from the ones controlled by the ‘network switch.’” This is simply not stated in the claim. The claim merely requires the security means to block or stop operation in a domain separate from the network switch itself, not separate from every domain the network switch controls. There is no requirement in the claim for the security means to be in any particular domain, let alone a separate domain from either the monitoring means or the network switch. Secondly, even if Applicant’s interpretation was correct (which Examiner does not concede), the combination of Stouffer and Sudan do disclose the newly added limitations. Stouffer teaches multiple different security domains (section 5.1). Stouffer also teaches the control network on n separate devices (section 5.4). Stouffer further teaches a network switch controlling a domain containing a monitoring level (section 5.14 and 6.2.1.3) while blocking communication or shutting down of operation occurs in a different domain than the network switch (sections 5.1, 5.3, 5.4, 5.13, 6.2.8 and CP-2). Applicant’s arguments are not persuasive.
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. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are 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. Limitations “monitoring means” and “security means” in claims 1 and 10 are considered to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 10 is objected to because of the following informalities: Claim 10 recites in the preamble an “energy storage system (ESS) security management system:” where it appears the term “comprising” was mistakenly deleted. It is suggested the preamble be amended to “energy storage system (ESS) security management system comprising:” for clarity.
Appropriate correction is required.
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 8 is 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. Claim 8 recites the limitations “the collected information”. There is insufficient antecedent basis for this limitation.
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(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stouffer et al. (“Guide to Industrial Control Systems (ICS) Security” and hereinafter referred to as Stouffer) in view of Sudan et al. (U.S. Pub. No. 2014/0354234 and hereinafter referred to as Sudan).
As to claim 1, Stouffer discloses a security management system having:
a monitoring means configured to observe a state (sections 5.16, 5.17 and SI-4, Stouffer teaches monitoring industrial control systems); and
a security means configured to block or stop an operation of the system in another domain separate from a network switch in response to unauthorized access to or an abnormal state of the system (sections 5.1, 5.3, 5.4, 5.13, 6.2.8 and CP-2, Stouffer teaches stopping operation of an ICS by for example, blocking communication or shutting down, in response to either abnormal conditions or attacks involving unauthorized access. Stouffer teaches this may occur in separate domains involving network switches/gateways),
wherein the network switch is configured to control the monitoring means (sections 5.1, 5.3, 5.4, 5.13, 5.14, 5.16, 5.17, 6.2.1.3, 6.2.8 and CP-2, Stouffer teaches the network switches controlling devices.).
Stouffer does not specifically disclose an energy storage system (ESS); wherein the monitoring means comprises two or more monitoring levels having different monitoring ranges; and wherein the network switch is configured to control at least one of the two or more monitoring levels of the monitoring means (emphasis added) as claimed. However, Sudan does disclose
an energy storage system (ESS) (paragraphs [0007] and [0086], Sudan teaches an energy storage system that shuts down in response to abnormal operation);
wherein the monitoring means comprises two or more monitoring levels having different monitoring ranges; and wherein the network switch is configured to control at least one of the two or more monitoring levels of the monitoring means (paragraphs [0020], [0030], [0036], [0047] and Fig. 1, Sudan teaches a battery management system (BMS) and a control, protection and power management unit (CPPM) connected to each other and used for control and command of the power system. The BMS and CPPM monitor different aspects/ranges.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Stouffer with the teachings of Sudan for using an energy storage system (ESS) because Stouffer already discloses a system (ICS) and it is a simple substitution to replace the system of Stouffer with the ESS of Sudan to yield the predictable results of protecting an ESS.
As to claim 2, the combination of teachings between Stouffer and Sudan disclose the ESS security management system of claim 1, wherein the monitoring levels are being connected to each other via a network communication line, the monitoring levels having functions of transmitting and receiving signals or giving or enforcing commands (paragraphs [0020], [0030], [0036], [0047] and Fig. 1, Sudan teaches a battery management system (BMS) and a control, protection and power management unit (CPPM) connected to each other and used for control and command of the power system. The BMS and CPPM monitor different aspects/ranges.).
Examiner supplies the same rationale for the combination of the references as in claim 1 above.
Allowable Subject Matter
Claims 10-19 are allowed.
Claims 3-7 and 9 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.
Claim 8 would be allowable if rewritten to overcome the rejection(s) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 3 recites, inter alia, “level 1 comprising a module battery management system (BMS) directly connected to a plurality of battery cells; level 2 comprising a pack BMS connected to one or more module BMSs of level 1; level 3 comprising a system BMS connected to one or more pack BMSs of level 2 and comprising a power management system (PMS) configured to control one or more of heating and cooling, load, and grid; and level 4 comprising one or more of level 3 and comprising an energy management system (EMS) configured to control one or more of an ESS and a power system in various region”. The prior art was not found to disclose the particular combination of limitations cited. Therefore, claim 3 is considered to recite allowable subject matter over the prior art. Dependent claims 4-9 are considered to recite allowable subject matter over the prior art based on their dependency.
Claim 10, inter alia, “a dual domain switch control system connected to the network communication line, the dual domain switch control system being configured to selectively block unauthorized access to or abnormal operation of at least one of the first battery management system and the second battery management system”. The prior art was not found to disclose the particular combination of limitations cited. Therefore, claim 10 is considered to recite allowable subject matter over the prior art. Dependent claims 11-19 are considered to recite allowable subject matter over the prior art based on their dependency.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THADDEUS J PLECHA whose telephone number is (571)270-7506. The examiner can normally be reached M-F 8-4:30.
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/THADDEUS J PLECHA/Examiner, Art Unit 2438
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