DETAILED ACTION
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). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 3/6/2026, 12/23/2024, 1/3/2025 and 2/11/2025 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner.
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.
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.
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 monitoring unit, in claim 1
- evaluation device, in claim 1
- diagnosis unit, in claim 1
- detection unit, in claims 1 and 8
- value calculation unit, in claim 2
- intended use proposal unit, in claim 3
- reuse determination unit, in claim 4
- information output unit, in claim 6
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:
- battery monitoring unit: It’s interpreted to correspond to an ASIC circuit having an algorithm that executes at least part of the monitoring, or its equivalents (see for example, paragraph 0081 in PGPub 2025/0130287 A1 corresponding to the application)
- evaluation device: There doesn’t appear to be description of any structure (or its equivalents) in the Specification to perform the recited function. Please see rejection under 35 USC 112(b) below.
- diagnosis unit: There doesn’t appear to be description of any structure (or its equivalents) in the Specification to perform the recited function. Although paragraph 0081 describes the monitoring IC includes an ASIC circuit having an algorithm, where the diagnosis unit is pars of the monitoring IC, the Specification doesn’t describe what he diagnosis unit is, its corresponding structure or its equivalents. Please see rejection under 35 USC 112(b) below.
- detection unit: There doesn’t appear to be description of any structure (or its equivalents) in the Specification to perform the recited function. Although paragraph 0061 describes the detection unit as “a device that detects lithium precipitation in the lithium-ion battery”, the Specification doesn’t describe what the detections unit is, its corresponding structure or its equivalents. Please see rejection under 35 USC 112(b) below.
- value calculation unit: There doesn’t appear to be description of any structure (or its equivalents) in the Specification to perform the recited function. Throughout the Specification, the value calculation unit is described in terms of its function, but it doesn’t clearly describe what the unit is, its corresponding structure or its equivalents. Please see rejection under 35 USC 112(b) below.
- intended use proposal unit: There doesn’t appear to be description of any structure (or its equivalents) in the Specification to perform the recited function. Throughout the Specification, the intended use proposal unit is described in terms of its function, but it doesn’t clearly describe what the unit is, its corresponding structure or its equivalents. Please see rejection under 35 USC 112(b) below.
- reuse determination unit: There doesn’t appear to be description of any structure (or its equivalents) in the Specification to perform the recited function. Throughout the Specification, the reuse determination unit is described in terms of its function, but it doesn’t clearly describe what the unit is, its corresponding structure or its equivalents. Please see rejection under 35 USC 112(b) below.
- information output unit: There doesn’t appear to be description of any structure (or its equivalents) in the Specification to perform the recited function. Throughout the Specification, the information output unit is described in terms of its function, but it doesn’t clearly describe what the unit is, its corresponding structure or its equivalents. Please see rejection under 35 USC 112(b) below.
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 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 1-8 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.
Regarding claims 1, 2, 3, 4, 6 and 8, the claims recite units that are not clearly defined in the Specification as to particularly point out and distinctly claim the subject matter which the inventor or joint inventors regard as the invention.
For example, claim 1 recites “an evaluation device”, “an evaluation device”, “a diagnosis unit” and “a detection unit”. The Specification fails to provide a clear description of the structure/components that correspond to the unit/devices (see claim interpretation under 35 USC 112(f) above). As explained in MPEP Section 2181: To satisfy the definiteness requirement under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function. A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the written description fails to link or associate the disclosed structure, material, or acts to the claimed function, or if there is no disclosure (or insufficient disclosure) of structure, material, or acts for performing the claimed function.
It is noted that, although not explicitly mentioned, the examiner believes the recited “units” refer to computer-implemented modules (software) stored and executed by a computer processor in order to perform the functions. The applicant is reminded that, for a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b). Moreover, the examiner notes that in cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit has consistently required that the structure be more than simply a general purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function.
Moreover, since it’s not clear whether the claims are directed to a system comprising tangible units/circuits or a collection of software modules run by a processor, it’s not possible to ascertain the metes and bounds of the claims and protection sought after.
Similarly, claims 3, 4 and 6 recite “a value calculation unit”, “an intended use proposal unit”, “a reuse determination unit” and “an information output unit”. Specification fails to provide a clear description of the structure/components that correspond to the unit/devices (see claim interpretation under 35 USC 112(f) above).
Claims 2-7 are also rejected as they inherit the deficiencies noted in claim 1 above.
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 1-8 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, claims 1-8 include recitations (i.e. “an evaluation device”, “an evaluation device”, “a diagnosis unit”, “a detection unit”, “a value calculation unit”, “an intended use proposal unit”, “a reuse determination unit” and “an information output unit”) interpreted under 35 USC 112(f). As explained in MPEP Section 2181, a means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure, material or act that performs the entire claimed function also lacks adequate written description and may not be sufficiently enabled to support the full scope of the claim. The principal function of claims is to provide notice of the boundaries of the right to exclude by defining the limits of the invention, and means-plus-function claims rely on the disclosure to define those limits. Accordingly, an inadequate disclosure may give rise to both an indefiniteness rejection for a means-plus-function limitation and a failure to satisfy the written description and enablement requirements of section 112(a) or pre-AIA section 112, first paragraph.
Furthermore, assuming for the sake of examination that the recitations are meant to describe software stored within a computer processing unit, the examiner notes that when a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under section 112(a). See also MPEP Section 2163.03, subsection VI. Please see the rejection of claims 1-8 under 35 USC 112(b) above.
Claims 2-7 are also rejected as they inherit the deficiencies noted in claim 1 above.
Conclusion
The closest prior art available fails to disclose all elements recited in claims 1 and 8. Specifically:
- The US Patent Application Publication PGPub 2013/0057291 by Taka(Takahashi hereafter). Takahashi teaches a system/method for analyzing batteries, detecting degradation attributed to wear and degradation attributed to deposition of lithium (see paragraph 0015, last 7 lines). Takahashi describes a battery pack wherein before replacing an aging cell within the pack, the cell is tested by measuring open circuit voltage to trace a capacity vs open circuit voltage ratio (paragraph 0018). The system evaluates lithium deposition using a measurement of full charge capacity, internal resistance, and a parameter directed to lithium deposition to generate value information of the battery pack (paragraph 0081 and 0103).
Takahashi however, is silent about a step of diagnosing appropriateness of a detection unit that detects the lithium precipitation amount, based on comparison between the battery state estimated from the lithium precipitation and the battery state estimated from a parameter other than the lithium precipitation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard Isla whose telephone number is (571)272-5056. The examiner can normally be reached Monday-Friday 9a - 5:30p.
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, Huy Phan can be reached at 571 272-7924. 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.
/RICHARD ISLA/ Primary Patent Examiner, Art Unit 2858 June 17, 2026
Prosecution Insights