DETAILED ACTION
This FINAL office action is in response to Applicant’s amendment filed September 8, 2026. Applicant’s September 8th amendment amended claims 12, 15, 18, 20; canceled claims 1-11, 13, 14; and added new claims 21-23. Claims 12 and 15-23 are pending. Claims 12 and 23 are the independent claims.
The instant application is a continuation of application no. 18003747, now abandoned.
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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 18003747, filed on December 29, 2022.
Response to Amendment
The Objection to the Title in the previous office action is withdrawn in response to Applicant's amendment to the Title.
The 35 U.S.C. 101 rejection of claims 12 and 15-20 in the previous office action is maintained.
The 35 U.S.C 103 rejection of claims 1, 2, 6, 7, 12 13 and 17 in the previous office action is withdraw in response to Applicant's amendments to the claims.
Response to Arguments
Applicant’s arguments, see Pages 14, 15, filed September 8, 2026, with respect to Borger et al. have been fully considered and are persuasive. The 35 U.S.C 103 rejection of claims 1, 2, 6, 7, 12 13 and 17 has been withdrawn.
Applicant's arguments filed September 8, 2026 have been fully considered but they are not persuasive. Specifically, Applicant argues that the claims are patent eligible under 35 U.S.C. 101 as the claims integrate the abstract idea into a practical application - (e.g. electrically connect a cell, place the cells into a case ... OR extracting raw materials from the battery; Remarks: Pages 11-13); the claims are similar to Diehr ("controls" physical actions performed on the battery; Specification: Paragraphs 106, 107, 152; Remarks: Pages 12, 13); and the claims cannot be performed in the human mind/mentally (e.g. cannot extract cells, reassemble those shells or recover raw materials (Remarks: Last Paragraph, Page 13).
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims are not directed to an abstract idea/cannot be performed mentally, the examiner respectfully disagrees.
The claims are directed to the well-known economic practice of battery reuse and/or raw material recovery ((Specification: Paragraph 17 – “…reuse grade may include each of a used car reuse grade, an ESS (energy Storage System) grade and a resource recover grade”; Paragraph 106 – “…the battery reassembly company may disassemble a battery mounted to an electric vehicle and reassemble it into a battery that can be used in an ESS.”; Paragraph 152 “…..the resource recovery company may recover raw materials (e.g., Li, Co, Mn, Ni, etc.) included in the battery through the recycling process for the battery.” wherein battery (EV) reuse or materials recovery is a fundamental economic practice that falls into the abstract idea subcategories of sales activities and/or commercial interactions.
While the claims may represent an improvement to the fundamental economic process of recovering raw materials from graded EV batteries OR reassembling batteries from graded EV battery components/elements (e.g. cells)), the claims in no way either claimed or disclosed integrage the abstract idea into a practical application. The claims do not provide a technical solution to a technical problem. The claims do not improve any of the underlying technology or another technical field.
Initially it is noted that neither independent claims 12 or 23, both method claims, positively recite in the body of the claims who or what entity performs any of the recited method steps – as such the claims clearly read on a human or a human with pen and paper is readily capable of performing the method steps. Further as discussed in at least Specification Paragraphs 106 and 152, several of the steps are clearly performed by human entities (e.g. battery reassembly company, resource recovery company). As claims only recite one or more databases (for storing/receiving data – conventional use of databases) and transmitting a request to a device (mere data output) and the claims fail to recite who or what entity performs the method steps it is not possible for the claims to provide a technical solution to a technical problem inherent in computers or computer networks, or improve a technical field (i.e. integrate the abstract idea into a practical application – see discussion below). The recited database is merely a generic, well-known, conventional and routine means/mechanism for storing data, which could include the use of a handwritten spreadsheet or table.
More specifically, the claims are directed to a mental process practically capable of being performed in the human mind via observation, evaluation, judgement and opinion.
Representative claim 1: The step of receiving battery characteristics data may be performed in the human mind using observation of data. This step is also directed to insignificant pre-solution activity (data gathering). The step of calculating a state-of-health of the battery may be performed in the human mind using evaluation and judgement. This step is also directed to a mathematical operation/concept. The step of storing the SOH battery in or more databases may be performed in the human mind or via pen and paper via observation. The step of determining a reuse grade corresponding to an SOH value may be performed in the human mind via judgement. The step of querying the one or more database using a requested battery identification code may be performed by the human mind or via pen and paper via observation and evaluation (e.g. simply lookup on a spreadsheet or table). This step is also directed to insignificant pre-solution activity (data gathering). The step of transmitting the reuse grade to a device may be performed in the human mind or via pen and paper via observation (e.g. person writes down or calls someone with the reuse grade information). This step is also directed to insignificant post-solution activity (data output). The step of extracting a plurality of cells and reassembling the cells into a reuse battery…electronically connecting…placing cells…applying a battery identification) OR extracting one or more raw materials from the battery are directed to an insignificant application of the abstract idea – extra solution activity. See at least MPEP 2106.05(g) - Insignificant application: i. Cutting hair after first determining the hair style, In re Brown, 645 Fed. App'x 1014, 1016-1017 (Fed. Cir. 2016) or as described in MPEP § 2106.05(f), additional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception. See, e.g., Versata Development Group v. SAP America, 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015) (explaining that in order for a machine to add significantly more, it must “play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly”).
Further recycling, reassembling, remanufacturing, reconditioning and/or raw material recovery from batteries are well-known, conventional and routine and readily performed by a human or a company (see Specification Paragraphs 106, 152).
Other than the recitation of a one or more databases, device nothing in the claimed steps precludes the step from practically being performed in the mind. The claims do not recite additional elements that are sufficient to amount to significantly more than the abstract idea. The limitations directed to a one or more databases, device are each recited at a high level of generality and amount to no more than mere instructions to apply the exception. See MPEP 2106.05(f). Further the mere nominal recitation of a generic database or generic device does not take the claim limitation out of the mental processes grouping. The claims use “conventional or generic technology in a nascent but well-known environment” to implement the abstract idea of “visualizing flow direction is a distribution network” (Claim 20, preamble). In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). The recited technology (processor, memories, etc.), are used as a “conduit for the abstract idea,” not to provide a technological solution to a specific technological problem. Id.; see also id. at 611–13 (holding claims reciting the use of a cellular telephone and a network server to classify an image and store the image based on its classification to be abstract because the patent did “not describe a new telephone, a new server, or a new physical combination of the two” and did not address “how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data”).
Nothing in Applicant’s disclosures suggests that the Applicant intended to accomplish any of the steps recited in the claims through anything other than well understood technology used in a routine and conventional manner. Therefore, the claims lack an inventive concept. See also, e.g., Elec. Power Grp., 830 F.3d at 1355 (holding claims lacked inventive concept where “[n]othing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information”); Content Extraction, 776 F.3d at 1348 (holding claims lacked an inventive concept where the claims recited the use of “existing scanning and processing technology”).
Reevaluating the steps of receiving battery characteristic data, storing the battery characteristic data, querying one or more databases and transmitting the request reuse grade are considered insignificant extra solution activity, these limitations are mere data gathering and output recited at a high level of generality and amount to nothing more than receiving data over a network of display data via display device which are both well-understood, routine and conventional activities. The limitations remain insignificant extra solution activity even upon reconsideration. Even when considered in combination the additional elements represent mere instructions to apply an exception and insignificant extra solution activity which cannot provide an inventive concept.
For the reasons outlined above, the claims recite a method of organizing human activity, i.e., an abstract idea, and that the additional element recited in the claim beyond the abstract idea (e.g. one or more databases, device) is no more than generic technological components used as a tool to perform the recited abstract idea. As such, it does not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 (“[Wholly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, the claims are directed to an abstract idea without significantly more and are not patent eligible under 35 U.S.C. 101.
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims integrate the abstract idea into a practical application, the examiner respectfully disagrees.
and based on that reuse grade battery cells are extracted and reassembled OR one or more raw materials are extracted, wherein battery (EV) reuse or materials recovery is a fundamental economic practice that falls into the abstract idea subcategories of sales activities and/or commercial interactions.
As discussed above the claims are directed to a well-known economic practice of battery recycling/raw materials recovery and/or a mental process capable of being performed in the human mind of via pen and paper. While the claims may represent an improvement to the well-known business process of battery recycling, battery remanufacturing and/or raw materials recovery, the claims do not integrate the abstract idea into a practical application (e.g. provide a technical solution to a technical problem, improve a technical field).
Under the see MPEP § 2106.05, the claims are evaluated to determine if additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure ("MPEP") §§ 2106.05(a)-(c), (e)- (h)). A claim that integrates a judicial exception into a practical application applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
For example, limitations that are indicative of "integration into a practical application" include:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP § 2106.05(a);
Applying the judicial exception with, or by use of, a particular machine - see MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP § 2106.05(c); and
Applying or using 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 - see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a practical application" include:
Adding the words "apply it" (or an equivalent) with the judicial exception, or merely include instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP § 2106.05(±);
Adding insignificant extra-solution activity to the judicial exception- see MPEP § 2106.05(g); and
Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h).
In view of the MPEP § 2106.05, one must consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. The identified additional non-abstract elements recited in the independent claims are the generic one or more databases, device. These generic computer hardware merely performs generic computer functions of receiving or storing and represent a purely conventional implementation of applicant’s battery reassembly or raw materials recovery in the general field of recylcy/remanufacturing and do not represent significantly more than the abstract idea. See at least MPEP § 2106.05(a) ("Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field").
These recited additional elements are merely generic computer components. The claims do present any other issues as set forth in the MPEP § 2106.05 regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. It is noted that independent claims fail to recite who or what entity performs the method steps – accordingly the claims read on the method step being performed in the human mind or via pen and paper. Should Applicant amend the claims to recite a computer performing the method steps, the amended claims would merely use instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea.
The claims do not recite improvements to the functioning of a computer or any other technology field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, the claims to do apply the abstract idea with a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (e.g. data remains data even after processing; MPEP 2106.05(c)), the claims no not apply or use the abstract idea in some other meaningful way beyond generally linking the user of the abstract idea to a particular technological environment (i.e. a generic computer) such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea (MPEP 2106.05(e)). The recited generic computing elements are no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)-(c) and (e)- (h)), the claims do not integrate the judicial exception into a practical application.
There is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other — a distinction that the Federal Circuit applied in Enfish, in rejecting a § 101 challenge at the first stage of the Mayo/Alice framework because the claims at issue focused on a specific type of data structure, i.e., a self-referential table, designed to improve the way a computer stores and retrieves data in memory, and not merely on asserted advances in uses to which existing computer capabilities could be put. See Enfish, 822 F.3d at 1335-36. Here the claims simply use a computer as a tool and nothing more.
For the reasons outlined above, that the claims recite a method of organizing human activity, i.e., an abstract idea, and that the additional element recited in the claim beyond the abstract idea (i.e., one or more databases, device) is no more than a generic computer component used as a tool to perform the recited abstract idea. As such, it does not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 (“[Wholly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, the claims are directed to an abstract idea.
Step Two of the Mayo/Alice Framework (Step 2B)
Having determined under step one of the Mayo/Alice framework that the claims are directed to an abstract idea, we next consider under Step 2B of the Guidance, the second step of the Mayo/Alice framework, whether the claims include additional elements or a combination of elements that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. See MPEP § 2106.05.
Under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72-73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself’ (emphasis added) (citation omitted)).
Here the only additional element recited in the claims beyond the abstract idea is a one or more databases, device” i.e., generic computer component. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). Applicant has not identified any additional elements recited in the claim that, individually or in combination, provides significantly more than the abstract idea.
With regards to Applicant’s argument that the method steps/claimed invention "controls" physical actions performed on the battery, the examiner respectfully disagrees. The claims do not positively recite who or what entity performs the method steps, in particular the claims fail to recite who or what performs the method steps of “(1) extracting a plurality of cells from the battery and reassembling the plurality of cells into a reuse battery when the requested reuse grade corresponds to the used car reuse grade or the ESS reuse grade by: (a) electrically connecting a cell of the plurality of cells to a unit cell; (b) placing the cell of the plurality of cells into a case; and (c) applying a battery identification code for the reuse battery to the case or storing the battery identification code for the reuse battery; OR (2) extracting one or more raw materials from the battery when the requested reuse grade corresponds to the resource recovery grade.” At best these steps, as disclosed and not claimed, are likely performed by a company (human organization) outside the scope of the claims see at least Speciation Paragraphs 106 and 152 (battery reassembly company, resource recovery company). Nowhere in Applicant’s disclosure is there any discussion or disclosure at any level of detail of controlling machine, computer, device, specialized hardware (e.g. robot) or the like to perform the reassembly or recovery method steps.
With regards to Applicant’s argument that the claims transform the EV battery into a different state or thing, the examiner disagrees. While the claims recite method steps reassemblying a battery, using existing cells, OR extracting materials the battery remains a battery (in the case of reassembly) and the raw materials remain raw materials from the batteries. Neither the battery nor the raw materials actually change what they are or how the function. See discussion regarding Applicant’s comparison to Diehr below.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims are similar to Diamond v. Diehr, the examiner respectfully disagrees.
The Diamond v. Diehr decision wherein the claims are directed to controlling a rubber molding process with a computer to precisely shape uncured material under heat and pressure and then cure the synthetic rubber in the mold to obtain a product that retains its shape. Key to subject matter eligibility of this decision is that the claims are directed to automatically, via a computer, operating the rubber mold based on repetitive and constant calculations by the computer to ensure the mold is automatically opened at the appropriate time. The claim was found to recite significantly more than an abstract idea (i.e. calculating mold time) and resulted in the transformation of rubber into a different statue or thing (i.e. cured rubber).
The claims of the instant application do not pass either of these tests, as the claimed invention does not actually control any equipment of any kind nor the claims transform anything into a different state or thing (battery, battery cells, battery raw materials – remain as is – unchanged - unmodified).
As for argued Specification Paragraph 106, this paragraph discloses that a battery reassembly company may disassemble the battery to extract the cells and then reassemble the batter into a battery. This paragraph fails to disclose specialized equipment, machines, hardware or the like for disassembling or reassembling the battery. This paragraph merely discloses a wished for result/outcome – i.e. that another company (human organization) may disassemble/reassemble a battery. This paragraph fails to provide any specific details, flows, workflows, tools, equipment or the like for how to actually disassemble/reassemble the battery. This paragraph fails to disclose any means or mechanism for the argued control of the disassembly/reassembly of the battery.
With regards to argued Specification Paragraph 107, this paragraph discloses that electrical connections may be made between cells. This paragraph merely discloses a wished-for result/outcome. This paragraph fails to provide any specific details, flows, workflows, tools, equipment or the like for how electrical connections are actually performed. This paragraph fails to disclose any means or mechanism for the argued control of the electrical connections.
With regards to argued Specification Paragraph 152, this paragraph discloses that an ESS company (human organization, external to the claimed invention) may delivery batteries to a resource recover company (human organization) that may recover raw materials from the battery through an undisclosed battery recycling process. This paragraph merely discloses a wished-for result/outcome. This paragraph fails to provide any specific details, flows, workflows, tools, equipment or the like for how raw materials are actually recovered. This paragraph fails to disclose any means or mechanism for the argued control of raw material recovery.
At best the newly claimed method steps directed to disassembly/reassembly of the battery or raw material recovery are directed to an insignificant application of the abstract idea. as described in MPEP § 2106.05(f), additional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception. See, e.g., Versata Development Group v. SAP America, 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015) (explaining that in order for a machine to add significantly more, it must “play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly”).
(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 Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
TLI Communications provides an example of a claim invoking computers and other machinery merely as a tool to perform an existing process. The court stated that the claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner. 823 F.3d at 612, 118 USPQ2d at 1747. The court then turned to the additional elements of performing these functions using a telephone unit and a server and noted that these elements were being used in their ordinary capacity (i.e., the telephone unit is used to make calls and operate as a digital camera including compressing images and transmitting those images, and the server simply receives data, extracts classification information from the received data, and stores the digital images based on the extracted information). 823 F.3d at 612-13, 118 USPQ2d at 1747-48. In other words, the claims invoked the telephone unit and server merely as tools to execute the abstract idea. Thus, the court found that the additional elements did not add significantly more to the abstract idea because they were simply applying the abstract idea on a telephone network without any recitation of details of how to carry out the abstract idea.
Other examples where the courts have found the additional elements to be mere instructions to apply an exception, because they do no more than merely invoke computers or machinery as a tool to perform an existing process include: vi. A method of assigning hair designs to balance head shape with a final step of using a tool (scissors) to cut the hair, In re Brown, 645 Fed. App'x 1014, 1017 (Fed. Cir. 2016)
Accordingly, the claims are not similar to Diehr and are therefore not patent eligible under 35 U.S.C. 101.
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 12 and 15-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Regarding independent Claims 12 and 23, the claims are directed to the abstract idea of battery (EV) reuse or materials recovery. This is a process (i.e. a series of steps) which (Statutory Category – Yes –process).
The claims recite a judicial exception, a method for organizing human activity, battery (EV) reuse or materials recovery (Judicial Exception – Yes – organizing human activity). Specifically, the claims are directed to determining the reuse grade of a battery for an electric vehicle (Specification: Paragraph 17 – “…reuse grade may include each of a used car reuse grade, an ESS (energy Storage System) grade and a resource recover grade”, and based on that reuse grade battery cells are extracted and reassembled OR one or more raw materials are extracted, wherein battery (EV) reuse or materials recovery is a fundamental economic practice that falls into the abstract idea subcategories of sales activities and/or commercial interactions. See 2106.04(a). Further all of the steps of “receive”, “store”, “calculate”, “store”, “determine” “query”, “transmit”, “extracting”, “electrically connecting”, “placing”, “applying”, and “extracting” recite functions of the battery (EV) reuse or materials recovery are also directed to an abstract idea that falls into the abstract idea subcategories of sales activities and/or commercial interactions. The step of calculate a state-of-health of the battery is also directed to an abstract idea because it is a mathematical concept. The intended purpose of independent claims 12 and 23 appears reassembly (remanufacture) or extract raw materials from a EV battery based on a determined reuse grade (type/category of reuse) for an EV battery based a calculated state-of-health metric.
Accordingly, the claims recite an abstract idea – fundamental economic practice, specifically in the abstract idea subcategories of sales activities and/or commercial interactions. The exceptions are generic computer elements: one or more databases, device. See 2106.04(a).
Accordingly, the claims recite an abstract idea under Step 2A, Prong One, we proceed to Step 2A, Prong Two. Considering whether the additional elements set forth in the claim integrate the abstract idea into a practical application (See 2106.04(a)), the previously identified non-abstract elements directed to generic computing components include: one or more databases, device. These generic computing components are merely used to receive/access, process or display data as described extensively in Applicant’s specification (Specification: Figure 1, Element 10). Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. Moreover, when viewed as a whole with such additional elements considered as an ordered combination, the claim modified by adding a generic computer would be nothing more than a purely conventional computerized implementation of applicant's battery (EV) reuse or materials recovery in the general field of remanufacturing or recyclying and would not provide significantly more than the judicial exception itself. Note McRo, Inc. v. Bandai Namco Games America Inc. (837 F.3d 1299 (Fed. Cir. 2016)), guides: "[t]he abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished."' 837 F.3d at 1312 (quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). The claims are not directed to a particular machine nor do they recite a particular transformation (MPEP § 2106.05(b)).
Additionally, the claims do not recite any specific claim limitations that would provide a meaningful limitation beyond generally linking the use of the judicial exception to a particular technological environment. Nor do the claims present any other issues as set forth in the MPEP 2106.04(a) regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. Rather, the claims merely use instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea. Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)-(c) and (e)- (h)), claims 12 and 15-23 do not integrate the judicial exception into a practical application.
Regarding the use of the generic (known, conventional) recited one or more databases, device," the Supreme Court has held "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 573 U.S. 208, 223. Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. The claims as a whole do not recite more than what was well-known, routine and conventional in the field (see MPEP § 2106.05(d)). In light of the foregoing and under the MPEP 2106.04(a), that each of the claims, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application and does not include an inventive concept.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
Additionally, the claims recite a judicial exception, a mental processes, which can be performed in the human mind or via pen and paper (Judicial Exception – Yes – mental process).
The claimed steps of calculating a state of health of the battery, determining a reuse grade, extracting a plurality of cells, electrically connecting a cell, placing the cells into a case, applying a battery identification code OR extracting one or more raw materials all describe the abstract idea. These limitations as drafted are directed to a process that under its reasonable interpretation covers performance of the steps in the mind but for the recitation of the generic computer components. Other than the recitation of one or more databases, device nothing in the claimed steps precludes the step from practically being performed in the mind. The claims do not recite additional elements that are sufficient to amount to significantly more than the abstract idea because the steps receive battery characteristic data and query one or more databases are directed to insignificant pre-solution activity (i.e. data gathering). The step of transmit the requested reuse grade is directed to insignificant post-solution activity (i.e. data output). The mere nominal recitation of a generic processor/computer does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process. (Judicial Exception recited – Yes – mental process).
The claims do not integrate the abstract idea into a practical application. The generic one or more databases, device are each recited at a high level of generality merely performs generic computer functions of retrieving, processing or displaying data. The generic processor/computer merely applies the abstract idea using generic computer components. The elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not recite improvements to the functioning of a computer or any other technology field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, the claims to do apply the abstract idea with a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (e.g. data remains data even after processing; MPEP 2106.05(c)), the claims no not apply or use the abstract idea in some other meaningful way beyond generally linking the user of the abstract idea to a particular technological environment (i.e. a generic computer) such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea (MPEP 2106.05(e)). The recited generic computing elements are no more than mere instructions to apply the exception using a generic computer component.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. (Integrated into a Practical Application – No).
As discussed above the additional elements in the claims amount to no more than a mere instruction to apply the abstract idea using generic computing components, wherein mere instructions to apply an judicial exception using generic computer components cannot integrate a judicial exception into a practical application or provide an inventive concept. For the receive, query and transmit steps that were considered extra-solution activity, this has been re-evaluated and determined to be well-understood, routine, conventional activity in the field. Applicant’s specification does not provide any indication that the computer/processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions (MPEP 2106.05(d)(II)) indicate that mere collection or receipt of data is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). For these reasons, there is no inventive concept. The claim is ineligible (Provide Inventive Concept – No).
The claims are ineligible under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Regarding dependent claims 15-22, the claims are directed to the abstract idea of battery (EV) reuse or materials recovery and merely further limit the abstract idea claimed in independent claims 12 and 23.
Claim 15 further limits the abstract idea by receiving a reuse approval message, transmitting reuse battery information, receiving battery warehouse certification message, storing battery identification code (a more detailed abstract idea remains an abstract idea). Claim 16 further limits the abstract idea by limiting the reuse company management system is an energy storage or resource recovery management system (a more detailed abstract idea remains an abstract idea). Claims 17, and 19 further limit the abstract idea to storing state of health history, comparing a reuse grade with a previous reuse grade and transmitting the reuse grade (a more detailed abstract idea remains an abstract idea). Claims 18 furthers limit the abstract idea by receiving battery characteristics, storing battery characteristics, calculating a state of health, storing the state of health, determining a reuse grade, querying one or more databases, and transmitting a second requested reuse grade (a more detailed abstract idea remains an abstract idea). Claim 20 further limit the abstract idea by receiving a battery residual value request, querying one or more databased, determining a battery residual value and transmitting a battery residual value (a more detailed abstract idea remains an abstract idea). Claim 21 further limits the abstract idea by limiting the used car reuse grade to a cell having a SOH of at least 80% (a more detailed abstract idea remains an abstract idea). Claim 22 further limits the abstract idea by limiting the ESS reuse grade to a cell having a SOH between 80% and 60% (a more detailed abstract idea remains an abstract idea).
None of the limitations considered as an ordered combination provide eligibility because taken as a whole the claims simply instruct the practitioner to apply the abstract idea to a generic computer.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
Allowable Subject Matter
The claims are allowed over the prior art.
The closest prior art Borger et al. fail to teach or suggest either singularly or in combination platform service method for integrated battery management, comprising: receiving battery characteristic data of a battery of an electric vehicle; storing the battery characteristic data in one or more databases with a corresponding battery identification code; calculating a state-of-health (SOH) of the battery based on the battery characteristic data; storing the SOH of the battery in one of the one or more databases with the corresponding battery identification code; determining a reuse grade corresponding to an SOH value based on predefined reuse grade information, wherein the predefined reuse grade information includes a plurality of SOH regions, each SOH region associated with a reuse grade value of a plurality of reuse grade values, and the plurality of reuse grade values include a used car reuse grade, an Energy Storage System (ESS) reuse grade, and a resource recovery grade; and in response to a reuse grade calculation request; querying one of the one or more databases using a requested battery identification code to determine a requested reuse grade; and transmitting the requested reuse grade to a device; and based on the requested reuse grade: (1) extracting a plurality of cells from the battery and reassembling the plurality of cells into a reuse battery when the requested reuse grade corresponds to the used car reuse grade or the ESS reuse grade by: (a) electrically connecting a cell of the plurality of cells to a unit cell; (b) placing the cell of the plurality of cells into a case; and (c) applying a battery identification code for the reuse battery to the case or storing the battery identification code for the reuse battery; or (2) extracting one or more raw materials from the battery when the requested reuse grade corresponds to the resource recovery grade as recited in independent Claims 12 and 23.
The claims are not in condition for allowance as the claims remain rejected under 35 U.S.C. 101.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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SCOTT L. JARRETT
Primary Examiner
Art Unit 3625
/SCOTT L JARRETT/Primary Examiner, Art Unit 3625
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