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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/06/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested (based on para 0006):
'Power Path Degradation Determination Device'.
Claim Objections
Claims 3 objected to because of the following informalities:
Claim 3 in line 3 recites the limitation "the first element and the second ". Elements seem to have unique numbers (i.e. “first element” is one distinctive element and “second element” is a different distinctive element), therefore “second element” should be singular.
Claim 3 in lines 2-3 recites the limitation "at least one of a relay and a fuse". The phrase “at least one of” indicates that the following elements are to be selected in the alternative, and as such the following elements are typically separated by ‘or’ not ‘and’.
Appropriate correction is required.
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.
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 limitation(s) is/are:
1) Claim 1 lines 11-12: “a potential detection unit configured to detect a first potential at one end of the element and a second potential at an opposite end of the element”.
2) Claim 1 lines 13-14: “a control unit configured to determine whether the element is in a degraded state, based on a potential difference between the first potential and the second potential”.
3) Claim 2 lines 5-6: “the degradation determination device further comprises a temperature detection unit configured to detect a temperature of each of the first element and the second element, based on a potential difference between the first potential and the second potential”.
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.
Three-Prong test for:
1) Claim 1 lines 11-12: “a potential detection unit configured to detect a first potential at one end of the element and a second potential at an opposite end of the element”.
Prong (A) (As above)
Yes;
“potential detection unit” is a nonce with no specific structural meaning.
Prong (B) (As above)
Yes;
“configured to” is a linking word or phrase connecting the nonce to functional language.
Prong (C) (As above)
Yes;
It is unclear how to “detect a first potential at one end of the element and a second potential at an opposite end of the element”
Conclusion:
The limitation of:
“potential detection unit” for claim 1 and its dependents is interpreted under 35 U.S.C. §112(f).
Note: the initially filed specifications (01/06/2025) were searched for an interpretation of “potential detection unit”. There not sufficient support for an interpretation based on the specification.
The “Control Unit” at least is described as generic computing elements, therefore it is assumed that “… Unit” refers to generic computing elements.
For the purposes of examination, “potential detection unit” is interpreted as generic computing elements.
Three-Prong test for:
2) Claim 1 lines 13-14: “a control unit configured to determine whether the element is in a degraded state, based on a potential difference between the first potential and the second potential”.
Prong (A) (As above)
Yes;
“control unit” is a nonce with no specific structural meaning.
Prong (B) (As above)
Yes;
“configured to” is a linking word or phrase connecting the nonce to functional language.
Prong (C) (As above)
Yes;
It is unclear how to “determine whether the element is in a degraded state, based on a potential difference between the first potential and the second potential”
Conclusion:
The limitation of:
“control unit” for claim 1 and its dependents is interpreted under 35 U.S.C. §112(f).
Note: the initially filed specifications (01/06/2025) were searched for an interpretation of “control unit”.
Support for an interpretation was found in para 0033:
“The control unit 15 is, for example, constituted as a microcomputer, and is equipped with a CPU, a ROM, a RAM, and a storage unit 15D constituted by a non- volatile memory or the like.”
For the purposes of examination, “control unit” is interpreted as generic computing elements.
Three-Prong test for:
3) Claim 2 lines 5-6: “the degradation determination device further comprises a temperature detection unit configured to detect a temperature of each of the first element and the second element, based on a potential difference between the first potential and the second potential”.
Prong (A) (As above)
Yes;
“temperature detection unit” is a nonce with no specific structural meaning.
Prong (B) (As above)
Yes;
“configured to” is a linking word or phrase connecting the nonce to functional language.
Prong (C) (As above)
Yes;
It is unclear how to “detect a temperature of each of the first element and the second element, based on a potential difference between the first potential and the second potential”
Conclusion:
The limitation of:
“temperature detection unit” for claim 2 and its dependents is interpreted under 35 U.S.C. §112(f).
Note: the initially filed specifications (01/06/2025) were searched for an interpretation of “temperature detection unit”.
The “Control Unit” at least is described as generic computing elements, therefore it is assumed that “… Unit” refers to generic computing elements.
For the purposes of examination, “temperature detection unit” is interpreted as generic computing elements which receive temperature information.
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 1-5 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.
Regarding “Failure to particularly point out & distinctly claim [indefinite]”:
Claim 1 in line 9 recites the limitation "the element being provided on the negative electrode-side power line,". This limitation seems to indicate that the element is connected to only one potential (i.e., no potential difference applied). For a circuit element to get power (or to control a current) it must have at least one lead connected to a low potential and another lead connected to a high potential. For the purposes of examination, It is assumed that the circuit elements are in a circuit/loop with one lead connected to a high potential and the other connected to a low potential.
Claim 1 in lines 17-18 recites the limitation "after determining that a state in which a magnitude of a current value of the power path". It is not clear whether “current” is an adjective meaning ‘at the moment’ or is a noun indicating the ‘time rate of change of electric charge’. For the purposes of examination, it is assumed to be ‘time rate of change of electric charge’.
Claim 1 in lines 17-18 recites the limitation "after determining that a state in which a magnitude of a current value of the power path". There is no disclosure of an element capable of measuring currents (only a potential detection unit). For the purposes of examination, it is assumed that there is an amp meter connected in series with the element.
Claim 1 in lines 17-20 recites the limitation "after determining that a state in which a magnitude of a current value of the power path is within an range greater than or equal to a current threshold value and less than an upper limit current threshold value has continued for a predetermined period of time.". The claim claims “continued for a predetermined period of time”, but it is not clear how this predetermined period of time was determined. One of ordinary skill in the art would need to know how this determining is done in order to implement the invention. For the purposes of examination, it is assumed that however long the predetermined period is determined to be (or how it was determined), the circuit is in or has returned to a steady state over the testing period.
Claim 2 in line 2 recites the limitation "wherein the element is a first element". It is not clear what is intended to be implied by it being a ‘first element’; what more does this imply about the element which was not already implied by it being an element.
Claim 2 in lines 3-4 recites the limitation "a second element different from the first element is provided on the positive electrode-side power line". It is unclear how an element in a circuit could be on a positive electrode-side power line since elements such as relays fuses or switches connect the positive and negative electrodes.
Regarding “Claim Limitation Interpreted under 112(f) or pre-AIA 112, 6th Para, but Disclosure of Structure, Material, or Acts for Performing Function Recited in a Claim Lacking Insufficient or Not Clearly Linked”:
Claim limitation:
1) “a potential detection unit configured to detect a first potential at one end of the element and a second potential at an opposite end of the element”
3) “the degradation determination device further comprises a temperature detection unit configured to detect a temperature of each of the first element and the second element, based on a potential difference between the first potential and the second potential”
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.
for 1) & for 3), there is not sufficient disclosure as to what the "potential detection unit" and the "temperature detection unit" (respectively) are.
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.
Regarding ‘rejected for inheriting the rejected limitation(s) of a parent claim without rectifying the issue(s) for which the parent claim was rejected’:
Claims 2-5 in line 1 recites the limitation "The degradation determination device according to claim 1[2][3]".
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 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
regarding 1) & 3) is not clear what these "units" are; they could be generic computing elements which operate on potential and temperature date (respectively) or they could be a voltmeter and a thermocouple (respectively), or etc..
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.
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Flow diagrams form MPEP 2106(III) & 2106.04(II)(A), respectively.
Claims 1-5 rejected under 35 U.S.C. 101 because:
Claim 1:
Step
Analysis
Step 1:
Is the claim to a process, machine, manufacture, or composition of matter?
Yes;
The claim is directed towards a device which is a machine and therefore within one of the four statutory categories.
Revised Step 2A - Prong One:
Does the claim recite an abstract idea, Law of Nature, or Natural Phenomenon?
Yes;
The claim recites:
“and a control unit configured to determine whether the element is in a degraded state, based on a potential difference between the first potential and the second potential,”
“the control unit determining whether the element is in a degraded state, based on the potential difference between the first potential and the second potential, after determining that a state in which a magnitude of a current value of the power path is within a range greater than or equal to a current threshold value and less than an upper limit current threshold value has continued for a predetermined period of time.”
Explanation:
Rule:
See MPEP 2106.04(a)(2): “The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.”
See MPEP 2106.04(a)(2)(III)(C): “In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.”
Analysis:
Limitations directed towards determining or calculating values (i.e., numerical values) which are limitations directed towards mathematical concepts or mental processes.
Conclusion:
The claim recites limitations directed towards the abstract idea grouping of “mathematical concepts”.
Revised Step 2A - Prong Two:
Does the claim recite additional elements that integrate the judicial exception into a practical application?
No;
The claim recites the additional elements of:
“A degradation determination device”, “an element”, “power path”, “power supply unit”, “a load”, “a positive electrode-side power line”, “a negative electrode-side power line”, “a potential detection unit”, “a control unit”,
The claim recites the additional limitations of:
“the power path having: a positive electrode-side power line connected to a positive electrode-side terminal of the power supply unit;”
“and a negative electrode-side power line connected to a negative electrode-side terminal of the power supply unit,”
“the element being provided on the negative electrode-side power line, the degradation determination device comprising:”
“a potential detection unit configured to detect a first potential at one end of the element and a second potential at an opposite end of the element;”
Explanation:
Rule:
See MPEP 2106.05(f): “(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.”
See MPEP 2106.05(g): “Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more in Step 2B is whether the additional elements add more than insignificant extra-solution activity to the judicial exception. The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process,”
See MPEP 2106.05(h): “For claim limitations that generally link the use of the judicial exception to a particular technological environment or field of use, examiners should explain in an eligibility rejection why they do not meaningfully limit the claim. For example, an examiner could explain that employing generic computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more,”
Analysis:
These additional elements are not significantly more than:
1) field of use limitations directed towards at least either CPC symbol G01R 31/327: “.Testing of circuit interrupters, switches or circuit-breakers” or generic computing elements.
2) generic extra solution activity necessarily implied by the judicial exception(s) of making determinations based on potential differences and currents.
Additionally, the additional limitations do not transform any of the field of use elements into significantly more than field of use elements.
Conclusion:
The additional elements do not amount to significantly more than the judicial exception(s).
Step 2B:
Does the claim recite additional elements that amount to significantly more than the judicial exception?
No;
Explanation:
The additional elements as recited in step 2A Prong Two (above) are necessarily implied by the judicial exception(s). determinations based on potentials and currents require elements to measure those potentials and currents; but the instant application does not disclose such elements beyond the generic elements necessarily required.
Conclusion:
Therefore, “Claim is not eligible subject matter under 35 USC 101”
Claim 2:
Step
Analysis
Step 1:
Is the claim to a process, machine, manufacture, or composition of matter?
Yes;
The claim is directed towards a device which is a machine and therefore within one of the four statutory categories.
Revised Step 2A - Prong One:
Does the claim recite an abstract idea, Law of Nature, or Natural Phenomenon?
Yes;
The claim recites:
The judicial exception(s) as inherited from claim 1.
Claim 2 additionally recites:
“and the control unit determines whether the second element is in a degraded state, based on the potential difference and a temperature value detected by the temperature detection unit.”
Explanation:
This limitation is further directed towards the judicial exception abstract idea grouping of either mental processes or mathematical concepts. A ‘control unit making determinations based on values’ is not significantly more than mathematical or mental processes done on generic computing elements.
Revised Step 2A - Prong Two:
Does the claim recite additional elements that integrate the judicial exception into a practical application?
No;
Claim 2 recites the additional elements of:
“a second element”, “a temperature detection unit”
Claim 2 recites the additional limitations of:
“wherein the element is a first element,”
“a second element different from the first element is provided on the positive electrode-side power line,”
“the degradation determination device further comprises a temperature detection unit configured to detect a temperature of each of the first element and the second element,”
Explanation:
A ‘temperature detection unit’ at this level of generality is not significantly more than the judicial exception at least because the judicial exception of ‘determinations based on temperature’ necessarily requires a ‘temperature detection unit’.
Step 2B:
Does the claim recite additional elements that amount to significantly more than the judicial exception?
No;
Explanation:
The additional elements as recited in step 2A Prong Two (above) are necessarily implied by the judicial exception(s). determinations based on temperatures require elements to measure those temperatures; but the instant application does not disclose such elements beyond the generic elements necessarily required.
Conclusion:
Therefore, “Claim is not eligible subject matter under 35 USC 101”
Claim 3:
Step
Analysis
Step 1:
Is the claim to a process, machine, manufacture, or composition of matter?
Yes;
The claim is directed towards a device which is a machine and therefore within one of the four statutory categories.
Revised Step 2A - Prong One:
Does the claim recite an abstract idea, Law of Nature, or Natural Phenomenon?
Yes;
The claim recites:
The judicial exception(s) as inherited from claim 2 and thereby from claim 1.
Revised Step 2A - Prong Two:
Does the claim recite additional elements that integrate the judicial exception into a practical application?
No;
Claim 3 recites the additional elements of:
“a relay”, “a fuse”.
Claim 3 recites the additional limitations of:
“wherein the first element and the second elements are each element is at least one of a relay and a fuse.”
Explanation:
This limitation/elements are not significantly more than either stating ‘apply it’ or ‘field of use’ limitations corresponding to at least CPC symbol G01R 31/327: “.Testing of circuit interrupters, switches or circuit-breakers”
Step 2B:
Does the claim recite additional elements that amount to significantly more than the judicial exception?
No;
Explanation:
Rule:
See MPEP 2106.05(d)(I)(2): “A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity. Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed. Cir. 2018).”
Analysis:
US 20200276908 A1 “Electric Vehicle Charging Apparatus” (Lim) see Fig. 4-250: “Relay Control Unit” & Fig. 6-500: “fuse”.
US 20170036621 A1 “Fuse-protected Vehicle Electrical System For Controlling Operation Electrical Subsystem, Has Fuse Module Including Housing, Relay Controller, Relay, Fuse Blades And Fusible Link Connected To Wireless Control Module To Receive Control Signal” (Tieman) see Title.
Conclusion:
Therefore, the claim does not recite elements which are significantly more than the judicial exception(s) at least because ‘fuse’ and ‘relay’ are well known and conventional in the art.
Conclusion:
Therefore, “Claim is not eligible subject matter under 35 USC 101”
Claim 4:
Step
Analysis
Step 1:
Is the claim to a process, machine, manufacture, or composition of matter?
Yes;
The claim is directed towards a device which is a machine and therefore within one of the four statutory categories.
Revised Step 2A - Prong One:
Does the claim recite an abstract idea, Law of Nature, or Natural Phenomenon?
Yes;
The claim recites:
The judicial exception(s) as inherited from claim 3 and thereby from claim 2 and thereby from claim 1.
Revised Step 2A - Prong Two:
Does the claim recite additional elements that integrate the judicial exception into a practical application?
No;
Claim 4 recites the additional elements of:
“a precharge circuit”.
Claim 4 recites the additional limitations of:
“wherein the first element and the second element are each a relay, and a precharge circuit is connected to the power path so as to be in parallel with the first element”
Explanation:
This limitation/elements are not significantly more than either stating ‘apply it’ or ‘field of use’ limitations corresponding to at least CPC symbol G01R 31/327: “.Testing of circuit interrupters, switches or circuit-breakers”
Step 2B:
Does the claim recite additional elements that amount to significantly more than the judicial exception?
No;
Explanation:
Rule:
See MPEP 2106.05(d)(I)(2): “A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity. Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed. Cir. 2018).”
Analysis:
US 20230303018 A1 “Main Switch For Electrical System Of Motor Vehicle E.g. Tractor, Has Main Switch Main Body Comprising First Main Current Path, In Which First Switch Is Introduced, Second Main Current Path And Control Unit, And Discharge Circuit Routed Against One Of Main Current Paths” (Bischof) see Abstract: “the first switch is actuated as a function of a deviation of electric currents detected by two current sensors through the control unit, and the first switch is bridged by a pre-charging circuit.”
US 11146098 B2 “Precharge Control Apparatus” (Saito) see Fig. 2: “precharge control”
Conclusion:
Therefore, the claim does not recite elements which are significantly more than the judicial exception(s) at least because ‘’precharge circuit’ is well known and conventional in the art.
Conclusion:
Therefore, “Claim is not eligible subject matter under 35 USC 101”
Claim 5:
Step
Analysis
Step 1:
Is the claim to a process, machine, manufacture, or composition of matter?
Yes;
The claim is directed towards a device which is a machine and therefore within one of the four statutory categories.
Revised Step 2A - Prong One:
Does the claim recite an abstract idea, Law of Nature, or Natural Phenomenon?
Yes;
The claim recites:
The judicial exception(s) as inherited from claim 1.
Revised Step 2A - Prong Two:
Does the claim recite additional elements that integrate the judicial exception into a practical application?
No;
Claim 5 recites no additional elements.
Claim 5 recites the additional limitations of:
“wherein the control unit performs anomaly response processing when it is determined that the element is in a degraded state”
Explanation:
This limitation is further directed towards judicial exception abstract idea groupings of either mental processes or mathematical concepts.
Step 2B:
Does the claim recite additional elements that amount to significantly more than the judicial exception?
No;
The claim recites no additional elements.
Conclusion:
Therefore, “Claim is not eligible subject matter under 35 USC 101”
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 & 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 9910092 B2 (Park) in view of US 11146098 B2 (Saito).
Regarding claim 1, Park teaches a degradation determination device for determining whether an element (Fig. 2-300: “switch”, column 6 lines 59-63: “Here, the predetermined resistance value may be a threshold value of a turn-on resistance value R.sub.s of the switch 300 controlled through the controller 150 to be described below, in order to detect the deterioration of the switch 300”, element/(“switch”)) provided on a power path (Fig. 1 & 2, Fig. 2 shows a circuit/path which includes a battery for powering a vehicle such as in Fig. 1), which is a path for transmitting power from a power supply unit to a load, is in a degraded state (Title: “Switch Deterioration Detection Device And Method”, degraded/(“deterioration”)), the power path having: a positive electrode-side power line connected to a positive electrode-side terminal of the power supply unit (inherent to electric circuits powered by a battery, a battery must have both terminals connected to provide power and one of those terminals is the positive electrode); and a negative electrode-side power line connected to a negative electrode-side terminal of the power supply unit, the element being provided on the negative electrode-side power line (inherent to electric circuits powered by a battery, a battery must have both terminals connected to provide power and one of those terminals is the negative electrode), and the degradation determination device comprising: a potential detection unit configured to detect a first potential at one end of the element and a second potential at an opposite end of the element (Fig. 4-S401: “Input Voltages of Both Ends of Switch …”, “one end … opposite end”/(“both ends”)); and a control unit (Fig. 1-30: “electronic control unit”) configured to determine whether the element is in a degraded state, based on a potential difference between the first potential and the second potential (Fig. 4-S403: “Compare Magnitudes between First and Second Output Voltages by Comparator”, potential difference/(“voltages”)), and the control unit determining whether the element is in a degraded state, based on the potential difference between the first potential and the second potential, after determining that a state in which a magnitude of a current value of the power path is within a range greater than or equal to a current threshold value and less than an upper limit current threshold value (column 9 lines 31-34: “the controller 150 may determine that the switch 300 deteriorates when the turn-on resistance value R.sub.s of the switch 300 is more than the threshold value.”, R=V/I for some I a threshold on V is equivalent to a threshold on R)
Park does not as explicitly teach has continued for a predetermined period of time.
Saito teaches has continued for a predetermined period of time (Fig. 2-S210: “1st Determine Time Elapse After Precharge Start?”, period of time/(“Time Elapse”), analysis begins after the circuit reaches a steady state).
It would have been obvious to one of ordinary skill in the relevant art before the effective filing date of the claimed invention to have modified the device taught by Park with the teachings of Saito. One would have added to the “Switch Deterioration Detection Device And Method” of Park the “Precharge Control Apparatus” of Saito. The motivation would have been that the precharge control would help to prevent deterioration of contacts in the switch (see Saito Column 1 lines 36-41: “The precharge of the capacitor is intended to suppress the inrush current that flows when the main contactor is closed, so as to protect the main contactor. Thus the threshold voltage is set to be the withstand voltage of the main contactor or a voltage less than the withstand voltage.”).
Regarding claim 5, Park in view of Saito teaches the degradation determination device according to claim 1,
Saito further teaches wherein the control unit performs anomaly response processing when it is determined that the element is in a degraded state (Fig. 1-36: “Notify”, column 3 lines 34-39: “the notification unit 36, which is for notifying the passenger when an abnormality is detected in the precharge control process described later, includes an alarm sound generating unit (i.e., an alarm) that generates an alarm sound, a display that displays abnormal contents, and the like.”, anomaly response is to notify).
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 9910092 B2 (Park) in view of US 11146098 B2 (Saito) in further view of US 8803486 B2(Norimatsu).
Regarding claim 2, Park in view of Saito teaches the degradation determination device according to claim 1,
Saito further teaches wherein the element is a first element (if there are multiple elements then one of them is a first element), a second element different from the first element is provided on the positive electrode-side power line (Fig. 1-32: “an ignition switch (hereinafter referred to as IG-SW)” & Fig. 1-34: “a starter switch (hereinafter referred to as ST-SW)”, multiple circuit elements),
Neither Park nor Saito teach the degradation determination device further comprises a temperature detection unit configured to detect a temperature of each of the first element and the second element, and the control unit determines whether the second element is in a degraded state, based on the potential difference and a temperature value detected by the temperature detection unit.
Norimatsu teaches the degradation determination device further comprises a temperature detection unit configured to detect a temperature of each of the first element and the second element (Fig. 1-18: “a temperature detection unit”,), and the control unit determines whether the second element is in a degraded state, based on the potential difference and a temperature value detected by the temperature detection unit (column 8 lines 52-55: “it becomes possible to charge up the capacitor 10 to a state in which it can be used over a short time period, while maintaining suppression of temperature elevation of the secondary battery 1 and prevention of any deterioration thereof,”).
It would have been obvious to one of ordinary skill in the relevant art before the effective filing date of the claimed invention to have modified the device taught by Park in view of Saito with the teachings of Norimatsu. One would have added to the “Switch Deterioration Detection Device And Method” with “Precharge Control Apparatus” of Park the in view of Saito the “Power Supply Device” with “monitoring the temperature of the semiconductor switching element” of Norimatsu. The motivation would have been that the monitoring of the temperature would allow for charging in a short time while suppressing battery degradation (see Norimatsu column 4 lines 3-6: “According to the present invention, along with suppressing the battery deterioration and reducing the size of the power supply device, the capacitor can be charged up to be a usable state in a short time.”)
Regarding claim 3, Park in view of Saito in further view of Norimatsu teaches the degradation determination device according to claim 2,
Saito further teaches wherein the first element and the second elements are each element is at least one of a relay and a fuse (column 7 lines 21-25: “A kind of switch 300 is also not particularly limited, but the switch 200 may be an on/off switch for controlling charging and discharging of the battery 200, a fled effect transistor (FET) switch, or a relay switch for protecting the battery”, switches may be relays).
Regarding claim 4, Park in view of Saito in further view of Norimatsu teaches the degradation determination device according to claim 3,
Saito further teaches the degradation determination device according to wherein the first element and the second element are each a relay (taught by claim 3), and a precharge circuit is connected to the power path so as to be in parallel with the first element (Fig. 2-S130: “Request Precharge”, column 3 lines 7-10: “The SMR-P 28 is for precharging the capacitor 16 by supplying a charging current to the capacitor 16 by forming a power supply path via the resistor 26 at the time of starting the power supply system.”).
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1 & 5 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 of co-pending Application No. 18/992,465 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1(instant application):
Instant application 18/881,518
Claim 1
Co-pending application 18/992,465
Claim 1
Explanation as to why co-pending application teaches the instant application’s limitation.
“the degradation determination device comprising: a potential detection unit configured to detect a first potential at one end of the element and a second potential at an opposite end of the element; a control unit configured to determine whether the element is in a degraded state, based on a potential difference between the first potential and the second potential,”
“the cutoff device comprises a control unit configured to execute degradation determination processing in which a resistance value and a resistance threshold of the switch are compared,”
Instant application teaches the reference, and vice versa:
The instant application uses potential difference to determine degradation. The reference application uses resistance to determine degradation. Resistance and potential difference are related by ΔV=IΔR (well known to one of ordinary skill in the art). Then for some current I, ΔV & ΔR are proportional and are representative of the same degradation information.
“the power path having: a positive electrode-side power line connected to a positive electrode-side terminal of the power supply unit; and a negative electrode-side power line connected to a negative electrode-side terminal of the power supply unit,”
“the resistance value is based on a potential difference between two sides of the switch when the switch is in an ON state and current flows through the power path, and on the current flowing through the power path”
Instant application teaches the reference, and vice versa:
The switch must be in an ‘on’ state in order for current to flow through it and both methods require knowing the potential across the device. Both applications are requiring that a potential difference be applied across the circuit element.
“the control unit determining whether the element is in a degraded state, based on the potential difference between the first potential and the second potential, after determining that a state in which a magnitude of a current value of the power path is within a range greater than or equal to a current threshold value and less than an upper limit current threshold value has continued for a predetermined time.”
“the control unit calculates the resistance value and executes the degradation determination processing when a state in which a magnitude of the current flowing through the power path is within a range greater than or equal to a current threshold and smaller than an upper limit current threshold has continued for a predetermined time, and determines that the switch is in a degraded state when the resistance value is greater than or equal to the current threshold, and notifies an external entity of the degraded state.”
Instant application teaches the reference, and vice versa:
Both claims are directed towards determining degradation by comparing thresholds over a “predetermined time”.
Claim 2(instant application):
The co-pending application’s claims make no reference to temperature measurements. Therefore the co-pending reference application’s claims do not teach claim 2 of the instant application.
Claim 3(instant application):
Claim 3 inherits the limitations of claim 2 and therefore (since the co-pending application does not teach claim 2) the co-pending application does not teach claim 3.
Claim 4(instant application):
Claim 4 inherits the limitations of claim 3 and therefore (since the co-pending application does not teach claim 2) the co-pending application does not teach claim 4.
Claim 5(instant application):
Instant application 18/881,518
Claim 5
Co-pending application 18/992,465
Claim 1
Explanation as to why co-pending application teaches the instant application’s limitation
“Wherein the control unit performs anomaly response processing when it is determined that the element is in a degraded state.”
“and determines that the switch is in a degraded state when the resistance value is greater than or equal to the current threshold, and notifies an external entity of the degraded state.”
The co-pending limitation’s ‘notifying an external entity’ necessarily implies the instant application’s ‘anomaly response’.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 10288665 B2 "Vehicle Having A Diagnostic System For An Electrical Fuse" (Smith) is relevant to the Applicant's disclosure, see Fig. 1 & Fig. 3.
US 20140288772 A1 "Vehicle Fault Determination Device" (Makabe) is relevant to the Applicant's disclosure, see Fig. 3 & Fig. 4A.
US 11500028 B2 "Detection Device" (Morimoto) is relevant to the Applicant's disclosure, see Fig. 1.
US 10782350 B2 "Apparatus And Method For Diagnosing Failure Of Switch Element" (Huh) is relevant to the Applicant's disclosure, see Fig. 1 & Fig. 4.
US 10680429 B2 "Battery Protection Circuit And Battery Pack Including Same" (Kim) is relevant to the Applicant's disclosure, see Fig. 1 & Fig. 3.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARTIN WALTER BRAUNLICH whose telephone number is (571)272-3178. The examiner can normally be reached Monday-Friday 7:30 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Huy Phan can be reached at (571) 272-7924. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARTIN WALTER BRAUNLICH/ Examiner, Art Unit 2858
/HUY Q PHAN/ Supervisory Patent Examiner, Art Unit 2858
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