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 final action is in response to applicant’s amended filing of 04/20/2026.
Claims 1 and 5-17 are currently pending and have been examined. Applicant has amended claims 1 and 5; cancelled claims 2-4; and added new claims 6-17.
Response to Arguments
Applicant's arguments with respect to claims 1-5 rejected under 35 USC § 101 have been fully considered but they are not persuasive.
Applicant argues that the amendments to claims 1 and 5 introduce limitations that overcome the subject matter eligibility rejection by going beyond the cited mental process and integrating any alleged judicial exception into a practical application because “transmitting instruction information for instructing collection of the plurality of batteries, …to an external terminal.” The Examiner respectfully disagrees and analyzes the claims in the rejection below.
To summarize the rejection as it pertains to Applicant’s arguments, the amendments do not place the application in a better state for subject matter eligibility. “Calculating a storage period of each of the plurality of batteries…”, “determining that a priority collection of a first battery is higher,…”, and “…determining that the priority of collection of one of the plurality of the first batteries…is higher,” are all actions/steps that can be performed by a human mind, and are therefore attributed to the cited mental process. This makes the “acquiring first information and second information” action/step merely pre-solution activity to the “calculating” and “determining” actions/steps that predicates the mental process being performed. Subsequently, the “transmitting instruction information” action/step does not integrate the mental process into a practical application because it is merely returning and communicating the result of the “calculating” and “determining” actions/steps, without initiating any significant action because it is merely outputting a data response of the corresponding control unit (claim 1) and/or computer (claim 5), which has been held to be insignificant activity because the control unit and/or computer is merely being used as a tool to perform an existing process, i.e. communicating the result. See MPEP 2106.05(f); Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit).
Applicant’s arguments with respect to claims 1-5 rejected under 35 USC § 102(a)(1) and 103 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 5-8, 10-14, and 16-17 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:
“…
calculating a storage period of each of the plurality of batteries based on the first information;
determining that a priority of collection of a first battery is higher, the first battery being a battery of the plurality of batteries attached to a vehicle with a history of accident or a battery of the plurality of batteries having a high level of damage;
in a case where a plurality of the first batteries are stored, determine that the priority of collection of one of the plurality of the first batteries having a longer storage period out of the plurality of the first batteries is higher;
…”
The “calculating” and “determining” steps underlined are actions that can be performed in the human mind. Particularly, a person can calculate a storage period for each of a plurality of batteries based on available damage information and determine the priority for collecting from the plurality of batteries according to the 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 damage information of stored batteries and establish a priority for collecting them based on that damage information based on their calculated storage period. 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 limitations:
“…
acquiring first information and second information of each of a plurality of batteries, the first information indicating a storage start date and time at which storage of each of the plurality of batteries removed from vehicles has started, the second information indicating the presence or absence of a history of accident of a vehicle to which a corresponding one of the plurality of batteries is attached, or the second information indicating a level of damage to the corresponding one of the plurality of batteries;
…
and transmitting instruction information for instructing collection of the plurality of batteries, based on the determined priorities of collection of the plurality of batteries to an external terminal.”
The “acquiring” step is recited at a high level of generality (i.e., as a general means of data gathering), and amounts to mere insignificant pre-solution activity.
The “transmitting” steps 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 insignificant post-solution activity.
Therefore, this additional limitations do 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 6-8, 10-14, and 16-17 further limit the abstract idea without integrating the abstract idea into practical application or adding significantly more. For example, claims 6-8 and 12-14 recite additional determining steps based on additional considerations from additional information regarding the damage and storage 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.
The Examiner notes that claims 9 and 15 further elaborate the consequences of transmitting the instruction information by causing a collection vehicle to autonomously travel to a place where the plurality of batteries are stored, and would integrate the judicial exception into a practical application if incorporated into the independent claims.
As such, claims 1, 5-8, 10-14, and 16-17 are rejected under 35 USC 101 as being drawn to an abstract idea without significantly more, and thus are ineligible.
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 1, 5, 8-11, and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 20250042661 A1) in view of Jie et al. (CN 114300765 A) and Goto et al. (US 20220229120 A1).
Regarding claims 1 and 5, Lee discloses an information processing device comprising a control unit (see at least claim 1; see at least abstract and ¶ [0053]) configured to execute an information processing method that is performed by a computer (see at least claim 5; see at least abstract and ¶ [0053]) comprising:
and transmitting instruction information for instructing collection of the plurality of batteries, based on the determined priorities of collection of the plurality of batteries to an external terminal (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).
While Lee discloses 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), it does not disclose acquiring second information of each of a plurality of batteries, the second information indicating the presence or absence of a history of accident of a vehicle to which a corresponding one of the plurality of batteries is attached, or the second information indicating a level of damage to the corresponding one of the plurality of batteries;
determining that a priority of collection of a first battery is higher, the first battery being a battery of the plurality of batteries attached to a vehicle with a history of accident or a battery of the plurality of batteries having a high level of damage;
and in a case where a plurality of the first batteries are stored, determine that the priority of collection of one of the plurality of the first batteries having a longer storage period out of the plurality of the first batteries is higher.
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.
The combination of Lee and Jie does not explicitly disclose acquiring first information of each of a plurality of batteries, the first information indicating a storage start date and time at which storage of each of the plurality of batteries removed from vehicles has started;
and calculating a storage period of each of the plurality of batteries based on the first information.
However, Goto suggests acquiring first information of each of a plurality of batteries, the first information indicating a storage start date and time at which storage of each of the plurality of batteries removed from vehicles has started (see at least ¶ [0038-0040], [0050], and [0079-0080] disclosing a management system server for used secondary battery modules from vehicles that collects and stores diagnostic dates and times to rank and sort them, where the oldest batteries are collected within a certain rank to be disposed first);
and calculating a storage period of each of the plurality of batteries based on the first information (see at least ¶ [0038-0040], [0050], and [0079-0080] disclosing a management system server for used secondary battery modules from vehicles that collects and stores diagnostic dates and times to rank and sort them, where the oldest batteries are collected within a certain rank to be disposed first).
While Goto is directed toward diagnostic date and times instead of storage date and times, it does suggest storing and using date and time information as an organizational, processing, and procedural parameter for managing the storage of batteries. 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 date and time information of Goto into the combination of Lee and Jie with a reasonable expectation of success because all inventions are directed toward monitoring vehicle batteries and their current performance and handling. This would help organize the batteries with an additional layer of emphasis for older batteries to be process first.
Regarding claims 8 and 14, Lee does not explicitly disclose determining that the priority of collection of the first battery mounted on a vehicle with a history of accident and with a level of damage equal to or higher than a first predetermined value is highest;
and determining that the priority of collection of the first battery mounted on a vehicle with a history of accident and with a level of damage less than the first predetermined value and equal to or higher than a second predetermined value is second highest.
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. Furthermore, one of ordinary skill would consequently find the battery that possesses the greatest potential to be processed with the highest priority, and process batteries in sequentially decreasing 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 claims 9 and 15, Lee suggests the external terminal is a collection vehicle that collects the plurality of batteries (see at least ¶ [0081-0086] and [0102] disclosing a robot system embodied as an autonomous forklift that retrieves batteries from storage and transports them according to communicated processing information);
and the instruction information causes the collection vehicle to autonomously travel to a place where the plurality of batteries are stored in accordance with the determined priorities of collection (see at least ¶ [0081-0086] and [0102] disclosing a robot system embodied as an autonomous forklift that retrieves batteries from storage and transports them according to communicated processing information).
Regarding claims 10 and 16, while Lee suggests receiving the information from a dealer terminal used by a dealer that stores the plurality of batteries removed from vehicles (see at least ¶ [0118-0121] disclosing obtaining battery information from battery supplier’s servers), Lee does not explicitly disclose the second information is generated by the dealer inputting information on the presence or absence of a history of accident of a vehicle to which a corresponding one of the plurality of batteries is attached to the dealer terminal.
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 claims 11 and 17, Lee does not explicitly disclose the second information includes information about a water level when a vehicle to which a corresponding one of the plurality of batteries is attached is submerged in water;
and the control unit determines that a higher water level indicates a higher level of damage to the corresponding one of the plurality of batteries.
However, Jie discloses a method of assessing battery pack damage levels due to wading into water, and assessing damage to the battery as a result of corrosion due to seal failure and humidity (see at least page 1 of the machine translation, starting with “Background technique: During the use of the vehicle,…; and page 5 of the machine translation, starting with “In practical applications,…”).
While Jie does not disclose associating a priority to the battery according to its damage as a result of water corrosion, Jie acknowledges how water damage contributes to potential damage to vehicle batteries and the corresponding severity of corrosion 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 water-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
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 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
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