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 .
Specification
The amendments to the Specification, submitted on March 24, 2026, are acceptable and are entered.
Election/Restrictions
Newly submitted claims 13 – 15 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Inventions I (original claims 1 – 5) and II (newly submitted claims 13 – 15) are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have a materially different design. The inventions are also mutually exclusive because the product of Invention I comprises ‘a battery swap processing unit configured to execute the battery swap process’ which is not required by the process of Invention II. Likewise, the process of Invention II comprises ‘a processor configured to determine whether it is possible to exchange the first battery or the part of the first battery with a second battery or a part of the second battery based on at least one of the captured image, detected values of the plurality of pressure-sensors, and the provided height position of the inspection jig; and the processor is further configured to determine that it is possible to exchange the first battery or the part of the first battery with the second battery or the part of the second battery (i) based on a position and a size of a foreign matter and a frozen portion based on the image acquired by the camera, (ii) in a case where an angle with respect to a horizontal direction of the first battery or the part of the first battery is equal to or less than a first threshold value, the angle being calculated based on detected values of each of the plurality of pressure-sensors, or (iii) in a case where the height position of the inspection jig is equal to or greater than a second threshold,’ which is not required by the product of Invention I. Examiner notes that the Specification clearly and expressly teaches that the ‘processor’ of Invention II is a separate and independent element from the ‘battery swap processing unit’ of Invention I (paragraphs 24 and 69).
Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 13 – 15 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Interpretation
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 limitation(s) is/are:
“battery exchange device” recited in claim 1
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.
Examiner notes that the limitation “battery exchange device” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“device”).
(B) The generic placeholder is modified by functional language (“configured to execute a battery exchange process for exchanging a first battery or a part of the first battery mounted on an electrified vehicle with a second battery or a part of the second battery”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 4 and 6 – 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “wherein the processor is configured to determine that it is possible to exchange the first battery or the part of the first battery with the second battery or the part of the second battery (i) based on ...” in the fourth paragraph of the body of the claim. Examiner notes that the claim previously recites “a processor configured to determine whether it is possible to exchange the first battery or the part of the first battery with the second battery or the part of the second battery ...” Therefore, it is unclear as to whether Applicant intends the limitation to refer to, and further define, the step of ‘determining’ previously set forth in the claim, or whether Applicant intends to set forth a second step of ‘determining’ which is separate and independent from the ‘determining’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation so as to refer to, and further define, the step of ‘determining’ previously set forth in the claim.
As explained above, the claim limitation “battery exchange device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Examiner first notes that there is insufficient antecedent basis for the term “battery exchange device.” However, Examiner recognizes that the Specification provides antecedent basis for a “battery swap processing unit” which is configured to perform the claimed function of ‘exchanging a first battery mounted on an electrified vehicle with a second battery’ (paragraph 26). However, the Specification fails to further teach sufficient structure for one skilled in the art to perform the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1 – 4 and 6 – 12 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.
As explained above, the limitation “battery exchange device” invokes interpretation under 35 U.S.C. 112(f). As further explained above, the Specification fails to teach sufficient structure for one skilled in the art to perform the claimed function. Therefore, the limitation is not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention.
Examiner further notes that the Specification does not provide antecedent basis for either the ‘battery exchange device’ or the ‘battery swap processing unit’ being configured to ‘exchange part of a first battery with part of a second battery,’ as recited by the limitation.
Claim 1 further recites the limitation of “a processor configured to determine whether it is possible to exchange the first battery or the part of the first battery with the second battery or the part of the second battery before the battery exchange process is executed” in the second paragraph of the body of the claim. Examiner has been unable to find support for the limitation in the Specification. Examiner notes that the Specification provides antecedent basis for a “processor” (paragraphs 24 – 25), as well as a step for ‘determining whether it is possible to exchange a first battery with a second battery’ (paragraph 48). However, while the Specification teaches the step of ‘determining’ being performed by the ‘battery swap apparatus,’ the Specification does not teach this step of ‘determining’ being specifically performed by the ‘processor.’ For example, examiner notes that this step of ‘determining’ could be performed by an operator.
Examiner further notes that the Specification does not provide antecedent basis for ‘determining whether it is possible to exchange part of a first battery with part of a second battery,’ as recited by the limitation.
Claim 1 further recites the limitation of “wherein the processor is configured to determine whether it is possible to exchange the first battery or the part of the first battery with a second battery or a part of the second battery based on at least one of the captured image, detected values of the plurality of pressure-sensors, and the provided height position of the inspection jig; and the processor is further configured to determine that it is possible to exchange the first battery or the part of the first battery with the second battery or the part of the second battery (i) based on a position and a size of a foreign matter and a frozen portion based on the image acquired by the camera, (ii) in a case where an angle with respect to a horizontal direction of the first battery or the part of the first battery is equal to or less than a first threshold value, the angle being calculated based on detected values of each of the plurality of pressure-sensors, or (iii) in a case where the height position of the inspection jig is equal to or greater than a second threshold” in the fourth paragraph of the body of the claim. Examiner has been unable to find support for the limitation in the claim. Examiner recognizes that the Specification teaches the ‘processor’ be configured to control the camera to acquire an image of the vehicle, determine an angle of the first battery, and control a height position of the inspection jig (paragraphs 41 – 48), the Specification does not teach the ‘processor’ using this information to ‘determine whether it is possible to exchange the first battery with a second battery.’ For example, this step of ‘determining’ could be performed either by an operator.
Examiner further notes that the Specification does not provide antecedent basis for ‘determining whether it is possible to exchange part of a first battery with part of a second battery,’ as recited by the limitation.
Claim 3 recites the limitation “wherein the processor is further configured to determine whether a quantity of the foreign matter estimated based on the image acquired by the camera is larger than a third threshold.” Examiner has been unable to find support for the limitation in the Specification. While the Specification teaches the ‘processor’ being configured to operate the ‘camera’ so as to acquire the ‘image’ (paragraph 37), the Specification does not teach the ‘processor’ performing the step of ‘determining whether a quantity of foreign matter on the image is larger than a third threshold’ recited by the limitation. For example, this step of ‘determining’ could be performed by an operator.
Claim 3 further recites the limitation “the processor is further configured to cause the water spray device to spray water to ... the part of the first battery ...” Examiner has been unable to find support for the limitation in the Specification.
Claim 4 recites the limitation “wherein the processor is further configured to determine whether it is possible to exchange the first battery or the part of the first battery of another electrified vehicle with the second battery or the part of the second battery ...” Examiner has been unable to find support for the ‘processor’ being configured to perform this step of ‘determining.’
Examiner further notes that the Specification does not provide antecedent basis for ‘determining whether it is possible to exchange part of a first battery of another electrified vehicle with part of a second battery,’ as recited by the limitation.
Claims 6 and 7 each recite the limitation “wherein the processor is further configured to determine whether a quantity of the frozen portion estimated based on the image acquired by the camera is larger than a fourth threshold.” Examiner has been unable to find support for the limitations in the Specification. While the Specification teaches the ‘processor’ being configured to operate the ‘camera’ so as to acquire the ‘image’ (paragraph 37), the Specification does not teach the ‘processor’ performing the step of ‘determining whether a quantity of frozen portion on the image is larger than a fourth threshold’ recited by the limitations. For example, this step of ‘determining’ could be performed by an operator.
Response to Arguments
Applicant's arguments filed March 24, 2026 have been fully considered but they are not persuasive.
Applicant argues, on page 11, that support for claims 6 – 7 and the amendments to claims 1 – 4 are supported by the Specification. Examiner disagrees and refers to the above rejections based upon 35 U.S.C. 112(a).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
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