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 .
Response to Amendment
The following is a FINAL Office action in reply to the Amendments and Arguments received on June 15, 2026.
Status of Claims
Claims 1, 8 and 9 have been amended.
Claims 1-9 are currently pending and have been examined.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8 and 9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 8 states that the determination unit determines whether the battery is an authorized product or not. Support is found for the determination unit to assess conformity with the battery laws and regulations of the area, not authorization. Examiner interprets conformity to be whether or not the battery is legally permitted, authorization deals with permissions granted by an authority and allows for the battery to permitted with certain rules despite the law (for example if the car is registered in a different state, it could be allowed in the current state for a certain number of days). Page 11 teaches that the battery information server certifies unauthorized products.
Claim 9 states that the determination unit determines whether the battery is an authorized product or not. Support is found for the determination unit to assess conformity with the battery laws and regulations of the area, not authorization. Examiner interprets conformity to be whether or not the battery is legally permitted, authorization deals with permissions granted by an authority and allows for the battery to permitted with certain rules despite the law (for example if the car is registered in a different state, it could be allowed in the current state for a certain number of days).
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claim 9 is drawn to methods while claim(s) 1-8 is/are drawn to an apparatus. As such, claims 1-9 are drawn to one of the statutory categories of invention (Step 1: YES).
Step 2A - Prong One:
Claim 9 (representative of independent claim(s) 1 and 8) recites the following steps:
obtaining, position information of the vehicle;
obtaining, identification information of a battery from the battery;
sending the position information and the identification information
obtaining the position information and battery information based on information on the battery corresponding to the identification information;
when an area corresponding to the position information is changed, obtaining position change information indicating the area is changed;
performing determination process to determine whether the vehicle can obtain the identification information from the battery or not when obtaining the position change information, and not performing the determination process when not obtaining the position change information;
determining, whether the battery is an authorized product or not based on the identification information upon determination in the determination process that the vehicle can obtain the identification information from the battery;
upon determination that the battery is not the authorized product, determining, based on information on battery laws and regulations set in advance for each area and the battery information, whether the battery is in conformity with the battery laws and regulations in the area corresponding to the position information
based on whether a ratio of recyclable material corresponding to the obtained battery information is equal to or larger than a predetermined minimum value;
transmitting a result of determination in the determining to at least one of the vehicle owned by a user of the vehicle when the battery is determined as not being in conformity with the battery laws and regulations.
Alternatively, these steps, under its broadest reasonable interpretation, encompass a human manually (e.g., in their mind, or using paper and pen) notifying a user regarding conformity of battery laws and regulations (i.e., one or more concepts performed in the human mind, such as one or more observations, evaluations, judgments, opinions), but for the recitation of generic computer components. If one or more claim limitations, under their broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components, then it falls within the "mental processes" subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 9 recites an abstract idea (Step 2A - Prong One: YES).
Independent claim(s) 1 and 8 are determined to recite an abstract idea under the same analysis.
Step 2A - Prong Two:
This judicial exception is not integrated into a practical application. The claim(s) recite the additional elements/limitations of:
a terminal (Claim 1, 8 and 9)
A controller comprising: a communication unit communicating with a vehicle; a first processor including an information obtaining unit; a second processor that controls the communication unit; and a third processor, (Claim 1)
obtained from the battery to the data communication module through controller area network communication
comprises a global positioning system obtaining position information of the vehicle, a data communication module communicating with the communication unit, and a battery (Claim 1 and 8)
information obtaining unit (Claim 1)
the third processor (Claim 1 and 8)
the communication unit (Claim 1 and 8)
An external server comprising: a communication unit communicating with a vehicle; an information obtaining unit; and a determination unit, wherein: the vehicle: comprises a global positioning system obtaining position information of the vehicle, a data communication module communicating with the communication unit, and a battery; (Claim 8)
an information obtaining unit (Claim 1, 8, 9)
a determination unit (Claim 8, 9)
by a vehicle, (Claim 1 and 9)
the position information and the identification information to an external server via a data communication module through controller area network communication (Claim 1, 8, 9)
The requirement to execute the claimed steps/functions listed above is equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. This/these limitation(s) do/does not impose any meaningful limits on producing the abstract idea and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claim(s) is/are directed to an abstract idea (Step 2A -Prong Two: NO).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above in "Step 2A - Prong 2", the requirement to execute the claimed steps/functions listed above is equivalent to adding the words "apply it" on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as "significantly more" (see MPEP 2106.05 (f)).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claim(s) amount to significantly more than the abstract idea identified above (Step 2B: NO).
Regarding Dependent Claims:
Dependent claims 2-7 include additional limitations that are part of the abstract idea except for:
the vehicle
a system
controller
a storage
the communication unit
the terminal
the third processor
The additional elements of the dependent claims are equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
Prior Art
Examiner conducted a thorough search of the body of available prior art (see attached documents regards PTO-892 Notice of Reference Cited and PE2E Search History). Notably, Examiner discovered several patent literature documents that taught aspects of the invention, but none taught each and every aspect required by the claims due to the numerous new matter issues, as well as amendments not supported by the specification. Further, Examiner considered the individual elements of the recited claims taught across the prior art cited below, but did not find it obvious to combine such disclosures [MPEP § 2142] to make a 35 USC § 103 rejection. In particular, US20200158029 LOCALE SPECIFIC VEHICLE REGULATION COMPLIANCE [hereinafter Fletcher] discloses, “ By using vehicle location data and network-accessible geo-fence data which identifies the boundaries for the regulation applicability, a vehicle can automatically implement instructions that put the vehicle in compliance with local environmental or safety regulations.” but is silent with respect to the violation being battery conformity.
Response to Arguments
Applicant's arguments with respect to the rejection under 35 USC 112 have been fully considered. Examiner has the following response:
REJECTION WITHDRAWN: Claim 1 also states that the vehicle obtains identification information of the battery, however on page 4 of the specification it is taught that the external server obtains battery information not the vehicle.
REJECTION OVERCOME BY AMENDMENT: Claim 1 also states that the vehicle sends position information to the data communication module, however page 9 of the specification states that the external server obtains position information, not the data communication module.
REJECTION WITHDRAWN: Claim 1 states that the third processor determines whether the battery is authorized, however the specification at page 11 states that the battery information server determines this information.
REJECTION WITHDRAWN: Claim 8 states that the determination unit determines the ratio of recyclable materials, however the specification at page 11 states that the battery information server obtains this information.
REJECTION OVERCOME BY AMENDMENT: Claim 8 also states that the vehicle sends position information to the data communication module, however page 9 of the specification states that the external server obtains position information, not the data communication module.
REJECTION WITHDRAWN: Claim 9 states that the position information is obtained by the vehicle, however the specification teaches that the position information is obtained by the information obtaining unit.
REJECTION OVERCOME BY AMENDMENT: Claim 9 also states that the vehicle sends position information to the data communication module, however page 9 of the specification states that the external server obtains position information, not the data communication module.
REJECTION WITHDRAWN: Claim 9 also states that the vehicle obtains identification information of the battery, however on page 4 of the specification it is taught that the external server obtains battery information not the vehicle.
Regarding the following, the rejections have been maintained.
Claim 8 further states that the determination unit determines whether the battery is an authorized product or not. Support is found for the determination unit to assess conformity with the battery laws and regulations of the area, not authorization. Examiner interprets conformity to be whether or not the battery is legally permitted, authorization allows for the battery to permitted with certain rules despite the law (for example if the car is registered in a different state, it could be allowed in the current state for a certain number of days). Page 11 teaches that the battery information server certifies unauthorized products.
Claim 9 further states that the determination unit determines whether the battery is an authorized product or not. Support is found for the determination unit to assess conformity with the battery laws and regulations of the area, not authorization. Examiner interprets conformity to be whether or not the battery is legally permitted, authorization allows for the battery to permitted with certain rules despite the law (for example if the car is registered in a different state, it could be allowed in the current state for a certain number of days).
EXAMINER NOTE: Applicant can overcome this rejection by amending to state “determining, by a determination unit, whether the battery is in conformity…”
Applicant's arguments with respect to the rejection under 35 USC 101 have been fully considered but they are not persuasive.
Applicant Argues: The Examiner takes the position that the claims are directed to mental processes. Applicant respectfully submits that these features are integrated into a practical application.
Examiner respectfully disagrees and maintains the previous rejection. Furthermore, the Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility).
The claimed subject matter at best is using a general purpose computer as a tool, but fails to provide any improvement to said computer. The Examiner respectfully notes that the needed "improvement" in terms of patent eligibility is not one resulting from programming a generic processor to perform a different (or even improved) function, but rather a specific and actual improvement to the machine itself is needed. Based on these findings of fact, the Examiner contends the claims are indeed directed towards an abstract idea and Applicant's arguments to the contrary are considered to be non-persuasive.
Applicant Argues: The determination process can be performed only when the area is changed. Therefore, the proper use of the battery based on the battery laws and regulations can be prompted while reducing the processing loads imposed on the controller, compared to when the determination process is performed even though the area is not changed… This leads to the technical improvement of the
performance and efficiency of the system and the controller.
Applicant’s alleged improvement is not directed to an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem. A showing that a claim is directed to any improvement does not automatically mean a claim is patent eligible (e.g., an improved business function or an improved idea itself is not patent eligible). In this case, the claims represent a mere automation of a manual process, and the execution of the determining process based on a trigger (location change) is a part of the abstract idea and considered to be an observation and therefore does not represent a technical improvement. The rejection is maintained.
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 RASHIDA R SHORTER whose telephone number is (571)272-9345. The examiner can normally be reached Monday- Friday from 9am- 530pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at (571) 270-3445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626
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