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 .
Status of Claims
This first non-final action is in response to applicant’s original filing of 10/08/2024.
Claims 1-5 are currently pending and have been examined.
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 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In January, 2019 (updated October 2019), the USPTO released new examination guidelines setting forth a two-step inquiry for determining whether a claim is directed to non-statutory subject matter. According to the guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Using the two-step inquiry, it is clear that claims 1 and 5 are directed toward non-statutory subject matter, as shown below:
STEP 1: Do the claims fall within one of the statutory categories? Yes. Claims 1 and 5 are directed to corresponding information processing device and information processing method systems for determining the damage-information-based priorities of collecting batteries
STEP 2A (PRONG 1): Are the claims directed to a law of nature, a natural phenomenon or an abstract idea? Yes, the claims are directed to an abstract idea.
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion).
The information processing device and of claim 1 and information processing method of claim 5 are directed toward a mental process and, therefore, an abstract idea. It consists of:
“…
determining priorities of collection of a plurality of stored batteries by referring to information related to damage to the batteries;
…”
The “determining” step underlined is an action that can be performed in the human mind. Particularly, a person can determine the priority for collecting batteries according to damage information of the batteries. The Examiner notes that under MPEP 2106.04(a)(2)(III), the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961,1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). As such, a person in an organizational role may review information of stored batteries and establish a priority for collecting them based on that information. The mere nominal recitation that the determination is executed by an information processing device and/or computer does not take the limitation out of the mental process grouping.
STEP 2A (PRONG 2): Do the claims recite additional elements that integrate the judicial exception into a practical application? No, the claims do not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Claim 1 and 5 further recite the limitation:
“…and outputting instruction information for instructing collection of the batteries, based on the determined priorities of collection of the batteries.”
The “outputting” step is recited at a high level of generality (i.e., as a general means of issuing a command based on the determination), and amounts to mere post-solution activity.
Therefore, this additional limitation does not integrate the recited judicial exception into a practical application and the claims are directed to the judicial exception.
STEP 2B: Do the claims recite additional elements that amount to significantly more than the judicial exception? No, the claims do not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Claims 1 and 5 recite the aforementioned steps/actions being performed by an information processing device comprising a control unit and an information processing method that is performed by a computer. This device, control unit, and/or computer are used to merely automate the determining and outputting steps/actions that are well-understood, routine, and conventional (i.e. WURC) activities that devices, control units, and/or computers are well known to be able to perform. Therefore, these limitations do not amount to significantly more than the judicial exception.
Thus, since claims 1 and 5 are: (a) directed toward an abstract idea, (b) do not recite additional elements that integrate the judicial exception into a practical application, and (c) do not recite additional elements that amount to significantly more than the judicial exception, it is clear that claims 1 and 5 are directed towards non-statutory subject matter.
Dependent claims 2-4 further limit the abstract idea without integrating the abstract idea into practical application or adding significantly more. For example, claims 2-4 recite additional determining steps based on further defining the information regarding the damage of the batteries – this only further directs the invention toward the judicial exception without integrating it into a practical application or amounting to significantly more than the judicial exception.
As such, claims 1-5 are rejected under 35 USC 101 as being drawn to an abstract idea without significantly more, and thus are ineligible.
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (US 20250042661 A1).
Regarding claims 1 and 5, Lee discloses an information processing device comprising a control unit configured to perform an information processing method that is performed by a computer (see at least abstract and ¶ [0053]), the information processing method comprising:
determining priorities of collection of a plurality of stored batteries by referring to information related to damage to the batteries (see at least ¶ [0110] and [0134-0136] disclosing prioritizing the processing for storing batteries according to detected damage of the batteries),
and outputting instruction information for instructing collection of the batteries, based on the determined priorities of collection of the batteries (see at least ¶ [0106], [0110], [0134-0136], [0143], and [0147] disclosing prioritizing the processing for storing batteries according to detected damage of the batteries, and providing control signals to store and take out batteries according to the priority order).
Regarding claim 4, Lee discloses determining the priorities includes determining the priorities based further on lengths of storage periods of the batteries (see at least ¶ [0147] and [0185] disclosing priority order for taking out a battery includes battery information on operating parameters like charging time).
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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al., as applied to claim 1 above, and in view of Jie et al. (CN 114300765 A).
Regarding claim 2, Lee discloses the battery is a vehicle battery mounted on a vehicle (see at least ¶ [0262] disclosing the battery is mounted to an electric vehicle).
Lee does not explicitly disclose the information related to damage to the batteries includes information as to whether each of the vehicles on which a corresponding one of the batteries is mounted has a history of accident,
and determining the priorities includes determining that, of the batteries, the battery mounted on the vehicle with a history of accident has a higher priority.
However, Jie discloses a method of assessing battery pack damage levels following a collision, correlating the acceleration the vehicle was at when the collision occurred and attributing it to a probability that the battery pack experienced a seal failure, detects a rate change in humidity, and correlates a danger level of the battery pack accordingly (see at least pages 6-7 of the machine translation, starting with “Referring to FIG. 2 , a flowchart of steps…”).
While Jie does not disclose associating a priority to the battery according to its damage as a result of the collision, Jie acknowledges how accidents contribute to potential damage to vehicle batteries and the corresponding severity of the accident correlates to a greater damage to the battery pack and a corresponding greater danger. One of ordinary skill in the art would recognize that a greater danger level reasonably correlates with a correspondingly greater danger to the battery pack, surrounding vehicle components, and human operators and/or handlers, and thus warrants greater priority. Therefore it would be obvious to one of ordinary skill in the art before the effective filing date of the present invention to incorporate the accident-based damage level considerations of Jie into the battery damage determination method of Lee with a reasonable expectation of success because both inventions are directed toward monitoring the damage of vehicle batteries and their consequential effect on battery performance and handling. This would help inform battery handlers in assessing the damage of batteries and thereby help them concentrate on batteries that are assessed to be higher risk and more hazardous, thereby reducing hazards caused by failing to address dangerous batteries.
Regarding claim 3, Lee suggests the information related to damage of the batteries includes information related to levels of the damage to the batteries (see at least ¶ [0110], [0134-0136], and [0214] disclosing prioritizing the processing for storing batteries according to detected damage of the batteries and how the damage level may affect physical connections to ports).
Le does not explicitly disclose determining the priorities includes determining that, of the batteries, the battery with a higher level of damage has a higher priority.
However, Jie discloses a method of assessing battery pack damage levels following a collision, correlating the acceleration the vehicle was at when the collision occurred and attributing it to a probability that the battery pack experienced a seal failure, detects a rate change in humidity, and correlates a danger level of the battery pack accordingly (see at least pages 6-7 of the machine translation, starting with “Referring to FIG. 2 , a flowchart of steps…”).
While Jie does not disclose associating a priority to the battery according to its damage as a result of the collision, Jie acknowledges how accidents contribute to potential damage to vehicle batteries and the corresponding severity of the accident correlates to a greater damage to the battery pack and a corresponding greater danger. One of ordinary skill in the art would recognize that a greater danger level reasonably correlates with a correspondingly greater danger to the battery pack, surrounding vehicle components, and human operators and/or handlers, and thus warrants greater priority. Therefore it would be obvious to one of ordinary skill in the art before the effective filing date of the present invention to incorporate the accident-based damage level considerations of Jie into the battery damage determination method of Lee with a reasonable expectation of success because both inventions are directed toward monitoring the damage of vehicle batteries and their consequential effect on battery performance and handling. This would help inform battery handlers in assessing the damage of batteries and thereby help them concentrate on batteries that are assessed to be higher risk and more hazardous, thereby reducing hazards caused by failing to address dangerous batteries.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARED C BEAN whose telephone number is (571)272-5255. The examiner can normally be reached 7:30AM - 5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Navid Z Mehdizadeh can be reached at (571) 272-7691. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.C.B./Examiner, Art Unit 3669
/NAVID Z. MEHDIZADEH/Supervisory Patent Examiner, Art Unit 3669