DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/14/2024 is being considered by the examiner.
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.
The determination of whether a claim recites patent ineligible subject matter is a 2 step inquiry.
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture, or composition of matter), see MPEP 2106.03, 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: see MPEP 2106.04
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon? see MPEP 2106.04(II)(A)(1)
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? see MPEP 2106.04(II)(A)(2)
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? see MPEP 2106.05
Claims 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 5 reproduced below with the abstract idea bolded and additional elements underlined, will be used as the representative claim.
A hybrid vehicle, comprising:
an internal combustion engine [simply limiting the use of the abstract idea to a particular technological environment];
a first motor connected to the internal combustion engine [simply limiting the use of the abstract idea to a particular technological environment];
a detection unit configured to operate the internal combustion engine and detect a power-generation index indicating power being generated by the first motor [pre-solution activity (data gathering) using generic sensors]; and
a vehicle state detection unit configured to detect a state of the internal combustion engine based on the current power-generation index [mental process/step].
101 Analysis – Step 1: Statutory category - Yes
The claims recite a machine. Therefore, the claims fall within one of the four statutory categories. MPEP 2016.03
101 Analysis – Step 2A, Prong I evaluation: Judicial Exception - Yes (mental process)
In Step 2A, Prong one of the 2019 Patent Eligibility Guidance (PEG), a claim is to be analyzed to determine whether it recites subject matter that falls within one of the following groups of abstract ideas: a) mathematical concepts, b) mental processes, and/or c) certain methods of organizing human activity.
The Office submits that the foregoing bolded limitation(s) constitutes judicial exceptions in terms of “mental processes” because under its broadest reasonable interpretation, the limitations can be “performed in the human mind, or by a human using a pen and paper”. See MPEP 2106.04(a)(2)(III)
The claim recites the limitation of “a vehicle state detection unit configured to detect a state of the internal combustion engine based on the current power-generation index”. This limitation, as drafted, is a simple process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of “an internal combustion engine; a first motor connected to the internal combustion engine; a detection unit configured to operate the internal combustion engine and detect a power-generation index indicating power being generated by the first motor”. That is, other than reciting “an internal combustion engine; a first motor connected to the internal combustion engine; a detection unit configured to operate the internal combustion engine and detect a power-generation index indicating power being generated by the first motor” nothing in the claim elements precludes the step from practically being performed in the mind. For example, but for the “an internal combustion engine; a first motor connected to the internal combustion engine; a detection unit configured to operate the internal combustion engine and detect a power-generation index indicating power being generated by the first motor” language, the claim encompasses a person looking at the power generation index and forming a simple judgement about the state of the internal combustion engine. The mere nominal recitation “an internal combustion engine; a first motor connected to the internal combustion engine; a detection unit configured to operate the internal combustion engine and detect a power-generation index indicating power being generated by the first motor” does not take the claim limitations out of the mental process grouping. Thus, the claim recites a mental process.
101 Analysis – Step 2A, Prong II evaluation: Practical Application - No
In Step 2A, Prong two of the 2019 PEG, a claim is to be evaluated whether, as a whole, it integrates the recited judicial exception into a practical application. As noted in MPEP 2106.04(d), it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application 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. The courts have indicated that additional elements such as: merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
The Office submits that the foregoing underlined limitation(s) recite additional elements that do not integrate the recited judicial exception into a practical application. For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application.
The claim recites additional elements or steps of “an internal combustion engine; a first motor connected to the internal combustion engine; a detection unit configured to operate the internal combustion engine and detect a power-generation index indicating power being generated by the first motor”. The “internal combustion engine” and “motor” are recited at a high level of generality and merely describes how to generally “apply” the otherwise mental judgements to a vehicle. Additionally the “detection unit” is recited at a high level of generality (i.e. as a general means of gathering vehicle data for use in the evaluating step), and amount to mere data gathering, which is a form of insignificant extra-solution activity.
Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B evaluation: Inventive concept - No
In Step 2B of the 2019 PEG, a claim is to be evaluated as to whether the claim, as a whole, amounts to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05.
As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a generic computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Under the 2019 PEG, a conclusion that an additional element is insignificant extra solution activity in Step 2A should be re-evaluated in Step 2B. Here, the “an internal combustion engine; a first motor connected to the internal combustion engine; a detection unit configured to operate the internal combustion engine and detect a power-generation index indicating power being generated by the first motor” were considered to be insignificant extra-solution activity in Step 2A, and thus they are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. Neither the claims or the specification indicate that the “internal combustion engine”, “motor”, or “detection unit” are anything other than a well‐understood, routine, and conventional components. MPEP 2106.05(d)(II), and the cases cited therein, including Intellectual Ventures I, LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016), TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016), and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Further, the Federal Circuit in Trading Techs. Int’l v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), and Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017), for example, indicated that the mere displaying of data is a well understood, routine, and conventional function. Accordingly, a conclusion that the collecting step is well-understood, routine, conventional activity is supported under Berkheimer.
Independent claims 1 and 11 have similar and are rejected for the same reasons above. Dependent claims 2-4, and 6-10 do not recite any further limitations that cause the claims to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Therefore, dependent claims 2-4, and 6-10 are not patent eligible under the same rationale as provided for in the rejection of independent claims 1, 5, and 11.
Therefore, claims 1-11are ineligible under 35 USC §101.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “a detection unit” in claim 1; “a vehicle state detection unit” in claim 1; “a control unit” in claim 7; and “a control unit” in claim 9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Applicant is advised that should claim 2 be found allowable, claim 6 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
It appears claim 6 should depend from claim 5 and not claim 1
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2001065402 (Yamada et al.)
With respect to claims 1, 5, and 11
Yamada discloses: A hybrid vehicle (see at least abstract and pg. 2 “a control device for a hybrid vehicle”), comprising:
an internal combustion engine (see at least Fig 1; #10; and pg.3-4);
a first motor connected to the internal combustion engine (Fig 1; #11; and pg.3-4);
a detection unit (see at least Fig 1; #21-23; and pg.4) configured to operate the internal combustion engine (see at least Fig 1; #21-23; and pg.4; “The control system of the present system includes an engine ECU 21 for controlling the engine…”) and detect a power-generation index indicating power being generated by the first motor (see at least Fig 1; #21-23; and pg.4; “the motor ECU 22 is provided with the engine 1 Vibration suppression control…” The Examiner notes that the 1 appears to be a typo and should be 10. ); and
a vehicle state detection unit configured to detect a state of the internal combustion engine based on the current power-generation index (see at least Fig 3; S206-209; and pg. 6-7’ ; “in steps 207 and 208, misfire detection based on the torque correction amount TM is performed. Specifically, in step 207, the torque correction amount TM1 (current value) is compared with a predetermined value K2, and if TM1> K2, It is determined that a misfire has occurred”).
With respect to claims 2 and 6
Yamada discloses:
wherein a defect in the internal combustion engine is detected based on a progression over time of the power-generation index and a progression over time of a reference power-generation index (see at least Fig 2 and 3; S207-210; and pg.6-7; “It is determined that a misfire has occurred, and the process proceeds to step 209. In step 208, TM1-TM3 (current value-previous value) is compared with a predetermined value K3, and if TM1-TM3> K3, It is determined that a misfire has occurred” and “ it is determined whether or not there is a cylinder whose number of misfires is 5 or more. Then, if there is a cylinder whose number of misfires is 5 or more”)
With respect to claim 3
Yamada discloses: wherein information on an abnormal cylinder in the internal combustion engine is detected based on a progression over time of the power-generation index and a progression over time of a crank angle of the internal combustion engine (see at least Fig 2 and 3; S207-210; and pg.6-7; “It is determined that a misfire has occurred, and the process proceeds to step 209. In step 208, TM1-TM3 (current value-previous value) is compared with a predetermined value K3, and if TM1-TM3> K3, It is determined that a misfire has occurred” and “Step 208 is to correct the torque between cylinders 360 ° CA apart. This is equivalent to comparing the amounts. In this case, the crank angle sensor 31 is 360 ° for one round. 360 ° to detect rotation speed using CA pulsar”)
With respect to claim 4
Yamada discloses:.
wherein the power-generation index contains information on at least one of a voltage value, a current value, a power value, or a torque (see at least Fig 2 and 3; S207-210; TM(1-3) and K(1-3); and pg.6-7.)
With respect to claim 9
Yamada discloses:
a control unit configured to perform a notification process or to restrict an operation of the internal combustion engine based on the current power-generation index and the reference power-generation index (see at least Fig 4; S212-214; and pg. 7-8).
With respect to claim 10
Yamada discloses:
wherein the control unit detects information on an abnormal cylinder based on a waveform of the current power-generation index and a waveform of a crank angle of the internal combustion engine (see at least Fig 2 and 3; S207-210; and pg.6-7; The Examiner notes that the torques correction amount and angle detection would be considered waveforms because they are being continuously detected.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2022/0145820 (Hotta et al.) JP 4967671, and CN 113074045 (Chen et al.) Discusses a method of detecting a misfire of a hybrid vehicle.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F WHALEN whose telephone number is (571)270-7747. The examiner can normally be reached M-F 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Nolan can be reached at (571) 270-7016. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL F. WHALEN
Examiner
Art Unit 3661
/M.F.W./Examiner, Art Unit 3661
/PETER D NOLAN/Supervisory Patent Examiner, Art Unit 3661