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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/12/2026 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-18, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-28, and 20 of copending Application No. 19/017,333 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the instant Applicant falls within the scope of 19/017,333 (claim version 02/26/2026) (Hereinafter “333”),
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1: see claim 1.
Claim 3: claim 3.
Claim 4: claim 4.
Claim 5: claim 5.
Claim 6: claim 6.
Claim 7: claim 7.
Claim 8: claim 8.
Claim 9: Claim 9.
Claim 10: claim 10.
Claim 11: claim 11.
Claim 12: claim 12.
Claim 15: claim 15.
Claim 16: claim 16. Claim 17: claim 17.
Claim 18: claim 18.
Claim 20: claim 20.
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 1-13, 15-18, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 18 recites a battery managing method which is directed to one of the enumerated statutory categories, namely a process.
Step 2A, Prong 1: the claim recites the steps of “a profile acquisition step of acquiring a first profiled for each profile…a target value calculation step of calculating a target ratio…a profile generation step of generating a distribution profile indicating a correspondence relationship between a plurality of calculated target values and the number of each of the plurality of target values; a condition determination step of determining whether the distribution profile satisfies a predetermined condition; and a state diagnosis step of diagnosing a state of the battery pack according to a determination step” which falls within both mental processes and mathematical calculations. The recited steps may be carried out as a mental process if the algorithm is simple enough, and as a mathematical process if the algorithm is more complicated. The claimed invention thus recites an abstract idea. The method claim 18 recites mathematical concepts and/or mental process that may be carried out in the human mind or with aid of pencil and paper in simple situations, or by a computer for more complicated situations. The claim does not recite a particular equation or algorithm for “generating a distribution profile, determining whether the distribution profile satisfies a predetermined condition, for calculating a target ratio from each of the plurality of first profiles and calculating each target value as a diagnostic factor based on a plurality of calculated target ratios”, but this just means that the abstract idea is being recited broadly enough to monopolize all possible equations or algorithms that might be used (Please also see MPEP 2106.04(a)(2)(III)(A), (B),(C), and (D).
The recited method claim recites steps which are recited at such a high level of generality that they cannot be considered to indicate a particular machine. The claim is therefore directed to the abstract idea.
The added limitations in independent claims which was recited in cancelled claims 14 and 19 (claim 1 is representing claim) “operating a function for resolving a degradation imbalance or outputs an alarm, when the state of the battery pack is diagnosed as a degradation imbalance state” in which the outputs represent extra solution activity because it is a mere nomial or tangential addition to the claim. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014). This limitation represents extra-solution activity because it is a mere nominal or tangential addition to the claim. See MPEP 2106.05(g), discussing limitations that the Federal Circuit has considered to be insignificant extra-solution activity, for instance the step of printing a menu that was generated through an abstract process in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016) and the mere generic presentation of collected and analyzed data in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
The term outputs is generic which would not integrate the claim into a particular practical application. Further, outputting is at best the equivalent of merely adding the words “apply it” to the judicial exception. Mere instructions to apply an exception cannot provide an inventive concept.
Further “function for resolving a degradation imbalance” in light of the Specification at Par. 23 (Applicant’s PGPUB) “may be configured as a pack balancing function” which does not apply the abstract idea with, or by use of, any particular machine (other than a diagnosis unit), nor does the claim affect a real-world transformation or reduction of a particular article to a different state or thing.
Per MPEP 2106.05(a), after consulted that the Specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology. An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem to a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.
“After the examiner has consulted the specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316, 120 USPQ2d 1353, 1359 (Fed. Cir. 2016) (patent owner argued that the claimed email filtering system improved technology by shrinking the protection gap and mooting the volume problem, but the court disagreed because the claims themselves did not have any limitations that addressed these issues). That is, the claim must include the components or steps of the invention that provide the improvement described in the specification. However, the claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel"). The full scope of the claim under the BRI should be considered to determine if the claim reflects an improvement in technology (e.g., the improvement described in the specification). In making this determination, it is critical that examiners look at the claim "as a whole," in other words, the claim should be evaluated "as an ordered combination, without ignoring the requirements of the individual steps." When performing this evaluation, examiners should be "careful to avoid oversimplifying the claims" by looking at them generally and failing to account for the specific requirements of the claims. McRO, 837 F.3d at 1313, 120 USPQ2d at 1100
The amended claims 1, 18, and 20 do not include the components or steps of the invention that provide the improvement described in the specification. The full scope of the claims under the BRI when considered as a whole does not reflect an improvement in technology (e.g., the improvement described in the specification. Instead, the claim recites a conclusory manner, i.e. “diagnosing a state of the battery pack as… according to a determination result”.
Further, the claims do not include the components or steps of the invention that provide the improvement described in the specification.
Amended claim 1 (representing claim. Claims 18 and 20 are analogous) calls for “a profile acquisition unit configured to acquire …and operating a function…” which when viewed as a whole and evaluated "as an ordered combination” does not provide the improvement in details described the specification (for instance, such as how the diagnosis unit determine that the distribution profile satisfies the predetermined condition; details of the calculation of a plurality of target ratios, and details of the diagnose of the state of the battery pack according to the determination result, details of how the distribution profile is generated for the plurality of target values: see Applicant’s Specification, Pars. 60-124 for instance).
In response to Applicant’s argument at Page 13, last full Paragraph -Page 14, line 3 “according to the Office Action, the claim does not reflect nor recite “determine the calculated positive electrode loss ratio as the target value and the distribution of such target values for battery in the battery pack allow for assessment of unbalanced degradation”. It is respectfully submitted that such determination by independent claims. For example, claim 2 specifies “each target ratio of the plurality…claim 2 is more specific embodiments that allows for assessment of a balanced or imbalanced degradation state in a battery pack based on a positive electrode profiles”, independent claims do not suggest such limitations in order to be viewed as a whole or in ordered combination with other limitations as disclosed in the Specification to provide an improvement as required by MPEP 2106.05(a).
In response to Applicant’s argument at Page 14, last full Paragraph-Page 15, line 2 “According to the Office Action, “the (diagnosed) state…..the use is consistent with the improvement discussed in the Specification. See claim 1 (“diagnosed a state of battery pack as in a degradation balance state or a degradation imbalance state according to the determination result”)…Office Action at 9, the recited limitation “diagnose….as in degradation balance state or a degradation imbalance state according to the determination result” does not provide an improvement as the step when viewed alone is simply an insignificant extra solution and when viewed as a combination or in ordered combination does not provide an improvement as required by MPEP 2106.05(a) and as specified in the specification as the independent claims do not the components or steps of the invention that provide the improvement described in the specification. However, the claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel"” as required in MPEP 2106.05(a).
In other words, the amended claims must “include the components or steps of the invention that provide the improvement described in the specification. However, the claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel"” as required in MPEP 2106.05(a).
Therefore, it is not sufficient to show an improvement to a technology or technical field.
The limitations “determine a determination result indicating whether the distribution profile satisfies a predetermined condition” and “diagnose a state of the battery pack as in a degradataion….according to the determination result” when viewed alone or in combination with other limitations are not applied with, nor use of a particular machine (MPEP 2106.05(b)) (in the instant case by a “diagnosis unit” which is a field of use or a tool). Merely reciting the words “apply it” (or an equivalents, e.g. “diagnosing”) with the judicial exception, or merely including instructions to implement an abstract idea on a diagnosis unit, or merely using a diagnosis unit as a tool to perform the abstract idea (MPEP 2106.04(4)(I)).
Further, the claims do not recite in details defining what “reference profile” and “distribution profile” are.
The amended limitation recites the determination result is connected to the remaining diagnosing step; however, the “(diagnosed) state of the battery” is in significant as its use is unlimited.
At Step 2A, Prong 2, the abstract idea is not integrated into a practical application. There is no particular machine recited. Further, the step of “diagnosing a state of the battery pack …” is data gathering and insignificant. The “(diagnosed) state” is just data and the use is unlimited.
Claim 18 does not recite applying the abstract idea with, or by use of, any particular machine (other than a diagnosis unit as in claim 1), nor does the claim affect a real-world transformation or reduction of a particular article to a different state or thing. The claim amounts to diagnosing a state of the battery according to a determination result. Therefore, the claimed invention does not appear to be limited to the use of the mathematical technique for a particular practical application, but instead the claim appears to monopolize the mathematical technique itself, in any practical application where it might conceivably be used. The claim is therefore considered to be directed to an abstract idea.
At Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, for reasons that are analogous to the discussion of additional elements at Prong 2.
Claims 1, 16, 17, 20 recite an apparatus, battery pack, a vehicle, and a non-transitory readable storage medium which do not offer a meaningful limitation beyond generally linking the apparatus to a particular technological environment, that is, implementation via units. In other words, the system claims are no different from the method claim 18 in substance; the method claim recites the abstract idea while the apparatus claim and medium claim recites generic components configured to implement the same abstract idea. The claims do not amount to significantly more than the underlying abstract idea.
Dependent claims 2-13 recite limitations which are merely data and an insignificant extra solution and would not cause the claim as a whole to integrate the recited abstract idea into a particular application.
Dependent claim 15 add a limitation that do not include additional elements that do not integrate the judicial exception into a practical application.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-13, 15-28 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. (USPAP. 20240044995) (hereinafter “Bae”) and Kudo et al. (USPAP. 20240369640) (hereinafter “Kudo”).
Regarding claims 1, 18, and 20, Bae discloses a battery managing apparatus comprising:
a profile acquisition unit (110) configured to acquire a plurality of first profiles (Par. 39), each first profile of the plurality of first profiles relating voltage and capacity of a battery for each of a plurality of batteries included in a battery pack (battery pack 10) (Pars. 39 and 40);
and a diagnosis unit (120, Par. 47) configured to calculate a plurality of target values (capacity, Fig. 3) (voltage, Fig. 3),
generate a distribution profile for the plurality of target values (see profile generating unit 110), determine a determination result indicating whether the distribution profile satisfies a predetermined condition (by comparing the differential values, Par. 47), and diagnose a state of the battery pack as in degradation balance state or a degradation imbalance state according to the determination result (Pars. 47 and 48: the control unit 120 may compare the magnitudes of the differential value of the criterion peak and the differential value of the target peak, and diagnose the state of the battery as an unusable state or a usable state according to the comparison result. Here, the unusable state may mean a state in which the state of the battery is an EOL state, and thus the battery cannot be used. The usable state may mean a state in which the state of the battery is a BOL or MOL state, and thus the battery can be used. A battery in the EOL state is a battery that has undergone a considerable amount of degradation, and may mean a battery having an SOH of 70% or less. The battery in the EOL state is in a state in which positive electrode capacity and/or usable lithium is lost, and in some cases, lithium plating (Li-plating) from which metallic lithium is deposited may occur on the surface of the negative electrode. Therefore, if the battery in the EOL state is continuously used, unexpected accidents such as explosion and/or fire may occur due to an internal short circuit);
and operate a function for resolving the degradation imbalance state or output an alarm, when the state of the battery pack is diagnosed as the degradation imbalance state (Kudo: Pars. 2 and 82 display and alarm for imbalance state).
However, Bae does not explicitly disclose “calculate a target ratio from each of the plurality of first profiles and a reference profile” and that “each target value based on a target ratio of the plurality of target ratios”. Kudo teaches “calculate a target ratio from each of the plurality of first profiles and a reference profile” (Kudo: Par. 101, Fig. 3).
It would have been obvious to one of ordinary skilled in the art at the time of filling the Application to modify 's invention using 's invention to arrive at the claimed invention specified in claim 1, 18, and 20 for predicting a lifespan of the rechargeable battery (Kudo: Abstract).
Regarding claim 2, Bae and Kudo disclose everything as applied above. In addition, Bae discloses wherein each first profile of the plurality of first profiles is a positive electrode profile, and each target ratio of the plurality of target ratios is a positive electrode change ratio corresponding to a first profile as a change ratio of the plurality of first profiles and compared to a preset reference positive electrode profile (Bae: Pars. 47, 48, 54-58).
Regarding claim 3, Bae and Kudo disclose everything as applied above. In addition, Bae discloses wherein the diagnosis unit is configured to diagnose the state of the battery pack as degradation imbalance state, when the distribution profile does not satisfy the predetermined condition (unstable state at Par. 47 based on the comparison between differential values at Par. 47).
Regarding claim 4, Bae and Kudo disclose everything as applied. In addition, Bae discloses wherein the diagnosis unit is configured to compare a feature value of the distribution profile with a preset threshold value, and diagnose the state of the battery pack based on a comparison result, when the distribution profile satisfies the predetermined condition (Pars. 47 and 48: diagnose as usable state based on comparison result).
Regarding claim 5, Bae and Kudo discloses everything as applied above. In addition, Bae discloses wherein the diagnosis unit is configured to: diagnose the state of the battery pack as a degradation imbalance state, when the feature value exceeds the preset threshold value, and diagnose the state of the battery pack as a degradation balance state, when the feature value is less than or equal to the preset threshold value (Pars. 47, 48, and 73: differential voltage of target peak is greater than differential voltage of criterion peak; the unstable state is imbalanced because it is an unstable state. Bae discloses differential voltage of target peak is less than or equal to differential voltage of criterion peak; the unstable is balance because it does not cause an unstable state such as explosives).
Regarding claim 6, Bae and Kudo disclose everything as applied above. In addition, Bae discloses wherein the diagnosis unit is configured to set the reset threshold value based on a degradation degree of the battery pack and a preset reference feature value (Pars. 12, 52, and 67).
Regarding claim 7, Bae and Kudo disclose everything as applied above. In addition, Bae discloses wherein the diagnosis unit is configured to calculate a first value and a second value based on the plurality of target values, and determine whether the distribution profile satisfies the predetermined condition based on a ratio between the first value and the second value (Par. 47: differential value of target, comparing differential values, represent ratio, to see if a predetermined condition is satisfied to determine the state of battery).
Regarding claim 8, Bae and Kudo disclose everything as applied above. In addition, Bae discloses wherein the diagnosis unit is configured to determine a minimum value (Par. 72: minimum/smaller value of differential value of target PV1), a maximum value (max/larger value of differential value of target PV1, Par. 72), and a reference value among the plurality of target values (Par. 72: differential value of criterion PV2), calculate a different between the minimum value and the reference value as the first value and calculate a difference between the reference value and the maximum value as the second value (Par. 73: required for calculation of difference between PV2 and PV1).
Regarding claim 10, Bae and Kudo disclose everything as applied above. In addition, Bae discloses wherein the diagnosis unit is configured to compare the ratio with a preset critical ratio range and determine whether the distribution profile satisfies the predetermined condition, based on a comparison result (Pars. 47: comparing differential values representing comparing ratios).
Regarding claim 11, Bae and Kudo disclose everything as applied above. In addition, Bae discloses wherein the diagnosis unit is configured to: determine that the distribution profile satisfies the predetermined condition when the ratio falls within the preset critical ratio range (Par. 47: the differential values of the target satisfy the condition for an unusable state based on the comparison), and determine that the distribution profile does not satisfy the predetermined condition when the ratio does not fall within the preset critical ratio range (Par. 47: differential values of the target satisfy the condition for an unusable state based on the comparison).
Regarding claim 12, Bae and Kudo disclose everything as applied above. In addition, Kudo teaches wherein the diagnosis unit is configured to determine the plurality of target ratios as the plurality of target (Abstract).
Regarding claim 15, Bae and Kudo disclose everything as applied above. In addition, Bae discloses the function for resolving the degradation imbalance is a pack balancing function (block charging and discharging so unusable battery is not used to prevent unexpected accidents at Par. 76).
Examiner notes regarding claim 14, Bae and Kudo disclose everything as applied above. In addition, Bae discloses wherein the diagnosis unit operates a function for resolving a degradation imbalance or outputs an alarm, when the state of the battery pack is diagnosed as a degradation imbalance state (see rejection of claim 15 as discloses “the function for resolving the degradation imbalance is a pack balancing function”: block charging and discharging so unusable battery is not used to prevent unexpected accidents at Par. 76).
Regarding claim 16, Bae discloses a battery pack (10) including the battery management apparatus (100) according to claim 1 (claim 1’s explanation is herein incorporated by reference).
Regarding claim 17, Bae discloses a vehicle including the battery managing apparatus (Par. 93, lines 5-7) according to claim 1 (claim 1’s explanation is herein incorporated by reference).
Regarding claim 19, Bae and Kudo disclose everything as applied above. In addition, Kudo teaches wherein the diagnosis unit operates a function for resolving a degradation imbalance or outputs an alarm, when the state of the battery pack is diagnosed as a degradation imbalance state (Kudo: Pars. 2 and 82 display and alarm for imbalance state).
Examiner notes regarding claim 19, Bae and Kudo disclose everything as applied above. In addition, Bae discloses wherein the diagnosis unit operates a function for resolving a degradation imbalance or outputs an alarm, when the state of the battery pack is diagnosed as a degradation imbalance state (see rejection of claim 15 as discloses “the function for resolving the degradation imbalance is a pack balancing function”: block charging and discharging so unusable battery is not used to prevent unexpected accidents at Par. 76).
Conclusion
Claim 13 is patentably distinguishable over the prior art of record.
Regarding claim 13, the closest prior art of record either alone or in combination fails to anticipate or render obvious the combination wherein “wherein the diagnosis unit is configured to calculate a plurality of positive electrode loss rates, each positive electrode loss rate of the plurality of positive electrode loss rates based on a ratio between a preset reference ratio and a target ratio of the plurality of target ratios, and determine the plurality of positive electrode loss rate as the plurality of the target values” in combination with other limitations in the claims as defined by Applicants.
Response to Arguments
1-35 USC 101:
Applicant’s arguments, filed on 03/12/2026 have been fully considered but they are not persuasive.
Applicants added limitations such as “reference profile”, “as in degradation balance state or a degradation imbalance state” and adding dependent claim 4, “operate a function for resolving…or output an alarm, when the state of the battery is diagnosed as the degradation imbalance state” and Applicants argues at Pages 11-16 that the added limitation of claim 14 to all independent claims overcome previous 35 USC 101 rejection because the claims include a practical application of either “operating a function for resolving a degradation imbalance, or outputting an alarm, in response to a diagnosis of the battery pack. Performinig such operations and/or outputting the alarm is a practical application of the battery diagnosis because it can, for example, allow for countermeausres to be taking to counteract degradation of the battery pack (see Par. 29 of US 20250327874 corresponding to the instant application (hereinafter referred to as the “874 Publication”).
Examiner respectfully disagrees.
The recited limitation “operating a function for resolving a degradation imbalance or outputs an alarm, when the state of the battery pack is diagnosed as a degradation imbalance state” in which the outputs represent extra solution activity because it is a mere nomial or tangential addition to the claim. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014). This limitation represents extra-solution activity because it is a mere nominal or tangential addition to the claim. See MPEP 2106.05(g), discussing limitations that the Federal Circuit has considered to be insignificant extra-solution activity, for instance the step of printing a menu that was generated through an abstract process in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016) and the mere generic presentation of collected and analyzed data in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
The term outputs is generic which would not integrate the claim into a particular practical application. Further, outputting is at best the equivalent of merely adding the words “apply it” to the judicial exception. Mere instructions to apply an exception cannot provide an inventive concept.
Further “function for resolving a degradation imbalance” in light of the Specification at Par. 23 (Applicant’s PGPUB) “may be configured as a pack balancing function” which does not apply the abstract idea with, or by use of, any particular machine (other than a diagnosis unit), nor does the claim affect a real-world transformation or reduction of a particular article to a different state or thing.
-Further,
Per MPEP 2106.05(a), after consulted that the Specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology. An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem to a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.
“After the examiner has consulted the specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316, 120 USPQ2d 1353, 1359 (Fed. Cir. 2016) (patent owner argued that the claimed email filtering system improved technology by shrinking the protection gap and mooting the volume problem, but the court disagreed because the claims themselves did not have any limitations that addressed these issues). That is, the claim must include the components or steps of the invention that provide the improvement described in the specification. However, the claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel"). The full scope of the claim under the BRI should be considered to determine if the claim reflects an improvement in technology (e.g., the improvement described in the specification). In making this determination, it is critical that examiners look at the claim "as a whole," in other words, the claim should be evaluated "as an ordered combination, without ignoring the requirements of the individual steps." When performing this evaluation, examiners should be "careful to avoid oversimplifying the claims" by looking at them generally and failing to account for the specific requirements of the claims. McRO, 837 F.3d at 1313, 120 USPQ2d at 1100
The amended claims 1, 18, and 20 do not include the components or steps of the invention that provide the improvement described in the specification. The full scope of the claims under the BRI when considered as a whole does not reflect an improvement in technology (e.g., the improvement described in the specification. Instead, the claim recites a conclusory manner, i.e. “diagnosing a state of the battery pack according to a determination result”.
Further, the claims do not include the components or steps of the invention that provide the improvement described in the specification.
Amended claim 1 (representing claim. Claims 18 and 20 are analogous) calls for “a profile acquisition unit configured to acquire a plurality of first profiles, each first profile of the plurality of first profiles relating voltage and capacity of a battery of a plurality of batteries included in a battery pack; and a diagnosis unit configured to calculate a plurality of target ratios, each target ratio corresponding to a first profiles, calculate a plurality of target values, each target value based on a target ratio of the plurality of target ratios, generate a distribution profile for the plurality of target values, determine a determination result indicating whether the distribution profile satisfies a predetermined condition, and diagnose a state of the battery pack according to the determination result” which when viewed as a whole and evaluated "as an ordered combination” does not provide the improvement Applicant’s Remarks cited above and improvement in details described the specification (for instance, such as how the diagnosis unit determine that the distribution profile satisfies the predetermined condition; details of the calculation of a plurality of target ratios, and details of the diagnose of the state of the battery pack according to the determination result, details of how the distribution profile is generated for the plurality of target values: see Applicant’s Specification, Pars. 60-124 for instance).
In other words, the amended claims must “include the components or steps of the invention that provide the improvement described in the specification. However, the claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel"” as required in MPEP 2106.05(a).
In response to Applicant’s argument at Page 13, last full Paragraph -Page 14, line 3 “according to the Office Action, the claim does not reflect nor recite “determine the calculated positive electrode loss ratio as the target value and the distribution of such target values for battery in the battery pack allow for assessment of unbalanced degradation”. It is respectfully submitted that such determination by independent claims. For example, claim 2 specifies “each target ratio of the plurality…claim 2 is more specific embodiments that allows for assessment of a balanced or imbalanced degradation state in a battery pack based on a positive electrode profiles”, independent claims do not suggest such limitations in order to be viewed as a whole or in ordered combination with other limitations as disclosed in the Specification to provide an improvement as required by MPEP 2106.05(a).
In response to Applicant’s argument at Page 14, last full Paragraph-Page 15, line 2 “According to the Office Action, “the (diagnosed) state…..the use is consistent with the improvement discussed in the Specification. See claim 1 (“diagnosed a state of battery pack as in a degradation balance state or a degradation imbalance state according to the determination result”)…Office Action at 9, the recited limitation “diagnose….as in degradation balance state or a degradation imbalance state according to the determination result” does not provide an improvement as the step when viewed alone is simply an insignificant extra solution and when viewed as a combination or in ordered combination does not provide an improvement as required by MPEP 2106.05(a) and as specified in the specification as the independent claims do not the components or steps of the invention that provide the improvement described in the specification. However, the claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel"” as required in MPEP 2106.05(a).
2-35 USC 103 Rejection: Applicant's arguments filed on 03/12/2026 have been fully considered but they are not persuasive.
Applicants argue at Pages 17-21 that neither reference Bae or Kudo is able to detect degradation in particular battery, neither reference discloses diagnosing a battery pack as in a degradation balance state or a degradation imbalance state. As explained in Applicant’s Specification, degradation imbalance in a battery pack is a problem that may cause a reduction in capacity of the battery pack that is generally tied to the lowest capacity amongst the batteries…Applicant’s Specification (Pars. 50 and 51) …the distribution profile shown in Fig. 3 of the present application is based on statistical data obtained by normalizing target values respectively extract from a plurality of batteries included in a battery pack and distributing to normalized data. In contrast, data set (profile distribution) shown in Fig. 3 of Bae is based on electrochemical characteristics, and reflects of change in voltage and capacity occurring inside a battery”.
Examiner respectfully disagrees.
MPEP 2111.01(II) states that “Although understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitation that are not part of the claim.”
Amended claim 1 recites “determining a determination result indicating whether the distribution profile satisfies a predetermination”; however, the limitation does not recite that “the distribution profile shown in Fig. 3 of the present application is based on statistical data obtained by normalizing target values respectively extract from a plurality of batteries included in a battery pack and distributing to normalized data.”
Bae meets the claimed limitation “determining a determination result indicating whether the distribution profile satisfies a predetermination” (as Applicants admit that in the argument cited above. See Bae Par. 47: the control unit 120 may compare the magnitudes of the differential value of the criterion peak and the differential value of the target peak, and diagnose the state of the battery as an unusable state or a usable state according to the comparison result. Here, the unusable state may mean a state in which the state of the battery is an EOL state, and thus the battery cannot be used. The usable state may mean a state in which the state of the battery is a BOL or MOL state, and thus the battery can be used.)
Regarding amended limitation (underlined) “diagnose a state of the battery pack as in a degradation balance state or a degradation imbalance state according to the determination result” in which the limitation “determination result” is recited in limitation “determining a determination result indicating whether the distribution profile satisfies a predetermination”, which is met by Bae’s 47 and 48: the control unit 120 may compare the magnitudes of the differential value of the criterion peak and the differential value of the target peak, and diagnose the state of the battery as an unusable state or a usable state according to the comparison result. Here, the unusable state may mean a state in which the state of the battery is an EOL state, and thus the battery cannot be used. The usable state may mean a state in which the state of the battery is a BOL or MOL state, and thus the battery can be used. A battery in the EOL state is a battery that has undergone a considerable amount of degradation, and may mean a battery having an SOH of 70% or less. The battery in the EOL state is in a state in which positive electrode capacity and/or usable lithium is lost, and in some cases, lithium plating (Li-plating) from which metallic lithium is deposited may occur on the surface of the negative electrode. Therefore, if the battery in the EOL state is continuously used, unexpected accidents such as explosion and/or fire may occur due to an internal short circuit.)
Please Examiner’s detailed rejections above.
Conclusion
Claims 1-20 are patentably distinguishable over the prior art of record.
Regarding claim 1, the closest prior art of record either alone or in combination fails to anticipate or render obvious the combination wherein “” in combination with other limitations in the claims as defined by Applicants.
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/PHUONG HUYNH/Primary Examiner, Art Unit 2857 March 25, 2026