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 .
Priority
Application 19/034,634 was filed on January 23, 2025 and claims priority to Japanese Patent Application No. 2024-1033 82 filed on June 26, 2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 23, 2025 was filed before the mailing date of this non-final action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
112(f):
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.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is 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 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 sufficient structure, material, or acts to entirely perform the recited 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. The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6: “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for.” See MPEP 2181.
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: “a control unit” coupled with functional language, in claims 1 and 4.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1 and 4 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: at applicants published specification paragraphs: [0024] “The control unit 101 can be realized by a processor in the battery 100”; [0027] “The control unit 301 can be realized by a processor in the information server 300”; and [0032] “The control unit 401 has a function to perform arithmetic processing for controlling the management server 400”. Examiner notes that it appears that the “control unit 401” in the “management server 400” performs the determining function of claims 1 and 4. While there is no explicit structure for the “control unit 401” disclosed in Applicant’s specification, it would have been clear to those skilled in the art that the structure is a computer processor (similar to “control unit 101” and “control unit 301”). See MPEP 2181(II)(A) - “The disclosure of the structure (or material or acts) may be implicit or inherent in the specification if it would have been clear to those skilled in the art what structure (or material or acts) corresponds to the means- (or step-) plus-function claim limitation. See id. at 1380, 53 USPQ2d at 1229; In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997)”.
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.
Interpretation Note:
The claims recite an “information processing device” (claim 1), a “battery device” (claim 4), and an “information processing system including an information management device and a battery management device” (claim 5). However, the specification primarily describes the invention in terms of a “battery 100”, “information server 300”, and “management server 400”, each of which contain a separate “control unit” (see e.g., Fig. 2 and Fig. 5). Based on functionality, the claimed devices are interpreted as follows:
“information processing device” corresponds to “management server 400”
“battery device” corresponds to the “battery 100”
“information management device” corresponds to the “information server 300”
“battery management device” corresponds to “management server 400”
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 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
Independent Claims
MPEP 2106 Step 2A- Prong 1:
Independent claim 1 recites, determining whether registration information for tracking a location of a battery mounted on a vehicle is registered,
and when the registration information is registered, permits removal of the battery from the vehicle.
Independent claim 4 recites, determine whether registration information for tracking a location of the battery device is registered,
and when the registration information is registered, output an unlock permission.
Independent claim 5 recites, receive registration of registration information for tracking a location of a battery mounted on a vehicle;
and determine whether the registration information is registered,
and when the registration information is registered, permits removal of the battery from the vehicle.
The limitations above are processes that under broadest reasonable interpretation cover mental processes (including an observation, evaluation, judgment, or opinion) because they can be performed in the human mind, or by a human using pen and paper. Specifically, claims to determine whether a battery is registered and permitting removal of the battery can all be practically performed in the human mind, or by a human using pen and paper.
MPEP 2106 Step 2A- Prong 2:
The judicial exceptions are not integrated into a practical application. Claims 1, 4, and 5 as a whole amount to: merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, or “apply it”; or generally linking the use of the judicial exception to a particular technological environment or field of use; or adds insignificant extra-solution activity to the judicial exception.
Independent claims 1, 4, and 5 recite the following additional elements to perform the above recited steps: an information processing device (claim 1), a control unit (claims 1 and 4), a predetermined management device (claims 1 and 4), a battery device (claim 4), an information processing system (claim 5), an information management device (claim 5), and a battery management device (claim 5). These additional elements are generic computer components performing generic computer functions at a high level of generality, and are recited at a high level of generality. As such, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component.
Furthermore, claims 1, 4, and 5 recite the additional elements of a battery mounted on a vehicle (claims 1 and 5) and a lock mechanism between the battery device and the vehicle (claim 4). These additional elements are described at high level of generality such that, when viewed as a whole, the additional element does no more than generally link the use of the judicial exception to a particular technological environment or field of use (i.e., managing and tracking vehicle batteries).
Additionally, the limitations of “outputting data that permits removal of the battery from the vehicle” (claims 1 and 5) and “output an unlock permission signal” (claim 4) amount to an insignificant application, which is a form of insignificant extra-solution activity (e.g. pre-solution activity) (2106.05(g)).
Individually and as a whole, these additional elements do not integrate the judicial exceptions into a practical application because the claims do not: improve the functioning of the computer itself or any other technology or technical field; apply the judicial exception with, or by use of, a particular machine; effect a transformation or reduction of a particular article to a different state or thing; add meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment to transform the judicial exception into patent-eligible subject matter; amount to more than a recitation of the words "apply it" (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer.
MPEP 2106 Step 2B:
Independent claims 1, 4, and 5 do not include additional elements that are sufficient to amount to significantly more (also known as an “inventive concept”) than the judicial exception. As discussed above, the additional elements are generic computer components performing generic computer functions at a high level of generality and/or generally link the use of the judicial exception to a particular technological environment or field of use. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
With respect to the extra-solution activity of “outputting data that permits removal of the battery from the vehicle” and “output an unlock permission signal”, the outputting of data and the unlock permission signal are recited at a high-level of generality and appear to be generic computer functions (i.e., transmitting data over a network) that are well-understood, routine and conventional activities previously known in the industry (See MPEP 2106.05(d)(II)). Examiner notes that paragraph [0016, 0020, 0026, 0041, 0046-0048] of Applicant’s specification, as well as Figs. 5 and 6, generically disclose the output data and unlock permission signal at a high-level of generality demonstrating the well-understood, routine, conventional nature of the outputs. However, Examiner also notes that having the battery directly controlling the lock mechanism to release the battery lock (as opposed to merely outputting data or a “permission signal”) would potentially provide a practical application by using the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim (see MPEP 2106.05(b)).
Alone or in combination, the additional elements do not contribute significantly more than the judicial exception and as a result, the claims are ineligible.
Dependent Claims
Dependent claims 2 and 3, recite additional details that merely narrow the previously recited abstract idea limitations, without adding any additional elements for analysis. Thus, claims 2 and 3 are also ineligible for the reasons stated above with respect to independent claims 1, 4, and 5.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication No. 2014/0006295 to Zeiler et al. (Zeiler) in view of U.S. Patent Publication No. 2022/0101247 to Kamijima (Kamijima) and in further view of U.S. Patent Publication No. 2021/0316633 to Kalligeros et al. (Kalligeros).
As to claim 1, Zeiler teaches an information processing device comprising a control unit (“In one embodiment, the product 105 includes a motor 118, a controller 120, a power supply module 125, a battery pack 126, and a user interface 130 …” [0015])
configured to execute determining whether registration information for tracking a location of a battery (“… The chain-of-custody memory has stored thereon a serial number that uniquely identifies the power tool, first owner information indicating a previous owner of the power tool, and second owner information indicating a current owner of the power tool …” and “… At any point after manufacture, the reader 115 can be used to read the chain-of-custody memory 147, including the serial number, current owner information, and past owner information …” [0002-0004 and 0022-0026] Examiner notes that per paragraphs [0028-0030] of Applicant’s specification, “registration information for tracking a location of a battery” includes previous (i.e., former) owner information)
Zeiler does not teach, and when the registration information is registered, outputting data that permits removal of the battery from the vehicle. However, Kamijima teaches and when the registration information is registered, outputting data that permits removal of the battery (“… If the user 12 has registered for the battery replacement service, the reception management server 231 instructs the inventory warehouse management server 250 to deliver the new battery 112 and collect the used battery 112 …” [0029]).
It would have been obvious to one having ordinary skill in the art at the effective filling date of the invention to include, and when the registration information is registered, outputting data that permits removal of the battery
While Zeiler in view of Kamijima teaches registration information for tracking a location of a battery and permitting removal of the battery, Karbowski does not teach that the battery is mounted on a vehicle. However, Kalligeros teaches that the battery is mounted on a vehicle (“An example of a battery sharing system 100 for micro mobility e-vehicles (e.g. e-scooters or e-bikes) is shown in FIG. 1 …” and “… The mobile app shows users the charge status and location of batteries in space …” and “… There is a user profile module 1412 that includes records for users registered with the service 140 (e.g. name, email, password) …” [0069 and 0107 and 0132]). Since each individual element and its function are shown in the art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself—that is in the substitution of the battery mounted to a vehicle of Kalligeros for the battery of Zeiler in view of Kamijima. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious. Motivation to do so comes from the teachings of Kalligeros that doing so would facilitate a battery swap while keeping track of who removed the battery [0092].
As to claim 2, Zeiler in view of Kamijima and in further view of Kalligeros teaches all of the limitations of claim 1 as discussed above. Zeiler in view of Kamijima does not teach, wherein the outputting the data that permits the removal includes outputting an unlock permission signal for a lock mechanism between the battery and the vehicle. However, Kalligeros teaches, wherein the outputting the data that permits the removal includes outputting an unlock permission signal for a lock mechanism between the battery and the vehicle (“… The app gives the authenticated user the option to release the battery for a battery swap. In an embodiment, the app, which is connected over the air to the vehicle, pings a signal to the vehicle to release the battery, which in turns pings a signal to the battery to unlock …” and “… At step 409, the cage having received the authorization, releases/unlocks the battery by activating the relevant servo motors to release the locking mechanism for the battery …” [0092 and 0171]).
It would have been obvious to one having ordinary skill in the art at the effective filling date of the invention to include, wherein the outputting the data that permits the removal includes outputting an unlock permission signal for a lock mechanism between the battery and the vehicle, as taught by Kalligeros with the battery registration system of Zeiler in view of Kamijima. Motivation to do so comes from the teachings of Kalligeros that doing so would facilitate a battery swap while keeping track of who removed the battery [0092].
As to claim 3, Zeiler in view of Kamijima and in further view of Kalligeros teaches all of the limitations of claim 1 as discussed above. Zeiler further teaches, wherein the registration information is information indicating at least one of the following: an owner of the battery, a business operator who removes the battery, and a transferee of the battery after the removal (“… Chain-of-custody memory 147, for example, can include product serial number, current owner, past owner(s), owning dates, type of owner, store number, owner contact information, etc.” and “… At any point after manufacture, the reader 115 can be used to read the chain-of-custody memory 147, including the serial number, current owner information, and past owner information …” [0016 and 0022-0026]).
As to claim 4, Zeiler teaches the battery device comprising a control unit configured to determine whether registration information for tracking a location of the battery device is registered in a predetermined management device (“… The chain-of-custody memory has stored thereon a serial number that uniquely identifies the power tool, first owner information indicating a previous owner of the power tool, and second owner information indicating a current owner of the power tool …” and “… At any point after manufacture, the reader 115 can be used to read the chain-of-custody memory 147, including the serial number, current owner information, and past owner information …” [0002-0004 and 0022-0026]) .
Zeiler does not teach, and when the registration information is registered, output an unlock permission signal to a lock mechanism between the battery device and the vehicle. However, However, Kamijima teaches and when the registration information is registered, output an unlock permission signal (“… If the user 12 has registered for the battery replacement service, the reception management server 231 instructs the inventory warehouse management server 250 to deliver the new battery 112 and collect the used battery 112 …” [0029]).
It would have been obvious to one having ordinary skill in the art at the effective filling date of the invention to include, and when the registration information is registered, output an unlock permission signal from the teachings of Kamijima that doing so would enable component replacement at lower cost with less labor of a user [0008].
Zeiler in view of Kamijima does not teach, a battery device mounted on a vehicle; output an unlock permission signal to a lock mechanism between the battery device and the vehicle. However, Kalligeros teaches, A battery device mounted on a vehicle (“The host device 1411-3 may be a Pushpod 1411-6 or cage (adaptor/holster/e-vehicle) 1411-7 that belongs to the system …” and “Having received the instruction via the screen, the user then moves their e-vehicle, including cage 111-1, to the location of the Pushpod 120-1 (step 404) …” [0163 and 0170-0171] Examiner notes that cage 111 is a “battery device” mounted to a vehicle. See also Kalligeros Fig. 1 showing cages 111-1 and 111-2 mounted on e-vehicles);
output an unlock permission signal to a lock mechanism between the battery device and the vehicle (“… The app gives the authenticated user the option to release the battery for a battery swap. In an embodiment, the app, which is connected over the air to the vehicle, pings a signal to the vehicle to release the battery, which in turns pings a signal to the battery to unlock …” and “… There is a user profile module 1412 that includes records for users registered with the service 140 (e.g. name, email, password) …” and “… At step 409, the cage having received the authorization, releases/unlocks the battery by activating the relevant servo motors to release the locking mechanism for the battery …” [0092 and 0132 and 0171]).
It would have been obvious to one having ordinary skill in the art at the effective filling date of the invention to include, a battery device mounted on a vehicle; output an unlock permission signal to a lock mechanism between the battery device and the vehicle, as taught by Kalligeros with the battery registration system of Zeiler in view of Kamijima. Motivation to do so comes from the teachings of Kalligeros that doing so would facilitate a battery swap while keeping track of who removed the battery [0092].
As to claim 5, Zeiler teaches an information processing system including an information management device and a battery management device, wherein (“In one embodiment, the product 105 includes a motor 118, a controller 120, a power supply module 125, a battery pack 126, and a user interface 130 …” [0015]):
the information management device is configured to receive registration of registration information for tracking a location of a battery (“… The chain-of-custody memory has stored thereon a serial number that uniquely identifies the power tool, first owner information indicating a previous owner of the power tool, and second owner information indicating a current owner of the power tool …” and “… The writer 110 communicates, for example, the serial number, owner1 information, and/or other information related to the product 105. The information is then stored in the chain-of-custody memory 147 …” [0002-0004 and 0022-0026]);
the battery management device is configured to determine whether the registration information is registered in the information management device (“… The chain-of-custody memory has stored thereon a serial number that uniquely identifies the power tool, first owner information indicating a previous owner of the power tool, and second owner information indicating a current owner of the power tool …” and “… At any point after manufacture, the reader 115 can be used to read the chain-of-custody memory 147, including the serial number, current owner information, and past owner information …” [0002-0004 and 0022-0026]),
Zeiler does not teach, and when the registration information is registered, outputting data that permits removal of the battery from the vehicle. However, Kamijima teaches and when the registration information is registered, outputting data that permits removal of the battery (“… If the user 12 has registered for the battery replacement service, the reception management server 231 instructs the inventory warehouse management server 250 to deliver the new battery 112 and collect the used battery 112 …” [0029]).
It would have been obvious to one having ordinary skill in the art at the effective filling date of the invention to include, and when the registration information is registered, outputting data that permits removal of the battery
While Zeiler in view of Kamijima teaches registration information for tracking a location of a battery and permitting removal of the battery, Karbowski does not teach that the battery is mounted on a vehicle. However, Kalligeros teaches that the battery is mounted on a vehicle (“An example of a battery sharing system 100 for micro mobility e-vehicles (e.g. e-scooters or e-bikes) is shown in FIG. 1 …” and “… The mobile app shows users the charge status and location of batteries in space …” and “… There is a user profile module 1412 that includes records for users registered with the service 140 (e.g. name, email, password) …” [0069 and 0107 and 0132]). Since each individual element and its function are shown in the art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself—that is in the substitution of the battery mounted to a vehicle of Kalligeros for the battery of Zeiler in view of Kamijima. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious. Motivation to do so comes from the teachings of Kalligeros that doing so would facilitate a battery swap while keeping track of who removed the battery [0092].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Patent Publication No. 2022/0292441 to Morita et al. (Morita) teaches, an information system for storage batteries according to an embodiment accepts registration of information about a manufactured storage battery from a first terminal and registration of a use history of a storage battery from a second terminal.
U.S. Patent Publication No. 2021/0248535 to Ikui (Ikui) teaches, a power storage device management system includes a storage device configured to store power storage devices that are removably mounted on an electric power device using electric power and a server device communicatively connected to the storage device.
U.S. Patent Publication No. 2018/0034068 to Perry et al (Perry) teaches, battery recycling method used to recycle used batteries from one or more cell sites includes uniquely identifying and marking the used batteries at the one or more cell sites.
U.S. Patent Publication No. 2023/0385848 to Pratt et al. (Pratt) teaches, a method, apparatus, and system for validated identification of a device used in commerce, regulatory or research environments, preferably a battery management system that ensures the authenticity of batteries provided.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE S WALLICK whose telephone number is (703)756-1081. The examiner can normally be reached M-F 10am-6pm.
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, Shannon Campbell can be reached at (571) 272-5587. 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.
/S.S.W./Examiner, Art Unit 3628
/RUPANGINI SINGH/Primary Examiner, Art Unit 3628