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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 13, 2026 has been entered.
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.
Claim 1, 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 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.
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.
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.
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.
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.
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 batter 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 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.
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.
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.
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 batter 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).
Dependent claims 2-7 depend from claim 1 and do not cure the deficiencies above.
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;
determining whether the battery is an authorized product or not based on information about availability of obtaining the identification information from the battery by the vehicle;
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 an 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)
to a data communication module through controller area network communication
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, US9305323 Communication system for detecting law enforcement violations in a vehicular environment [hereinafter Alazraki] discloses, “ The system (200) provides an automated response through devices (220) by gathering additional data pertaining to the offending vehicle to detect for additional violations of the law, even across state lines” but is silent with respect to violation being battery conformity.
Response to Arguments
Applicant's arguments with respect to the rejection under 35 USC 101 have been fully considered but they are not persuasive.
Applicant Argues: Applicant respectfully submits that these features cannot be practically performed by the human mind and/or 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: Applicant submits that the features of amended independent claim 1 are analogous to claim 1 of Example 40 in the 2019 Revised Patent Subject Matter Eligibility Guidance (the "2019 PEG" )… amended independent claim 1 of the instant application recites that the third processor determines whether the battery is an authorized product or not based on information about availability of obtainint the identification information from the battery by the vehicle" .
Examiner respectfully disagrees. First the specification does not support a determination that the battery is authorized or not. The specification supports whether the battery conforms with laws and regulations. Additionally, the claims are not at all Like Example 40 Claim 1 because. In the instant application, once the determination of conformity is made the claims are merely directed to notifying the user that the battery is not in compliance. The instant claims are analogous to MPEP 2106.05(a) II iii Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48. The claims of the instant application gather information about the battery and the location of the vehicle, analyze the information to determine if the battery conforms to local laws and regulations and displays the result to the user. The courts have indicated that as an example of what is not sufficient to show an improvement to technology. The rejection is maintained.
Applicant's arguments with respect to the rejection under 35 USC 103 have been fully considered. Applicant’s amended claims have several 112 issues regarding new matter and subject matter not supported in the specification. These issues cause a burden in search and mapping the claims. Examiner reserves the right to apply art once the issues have been resolved.
Conclusion
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.
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/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626