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 19/076,824 was filed on March 11, 2025 and claims priority to Japanese Patent Application No. 2024-104202 filed on June 27, 2024.
Status of the Claims
Claims 1 and 3-6 are currently pending. Claims 1 and 4 were amended in the reply filed May 11, 2026. Claim 2 was cancelled and claims 5 and 6 were added.
Response to Arguments
112(b):
Applicant has cancelled claim 2 rendering the rejection made under 35 U.S.C. § 112(b) to that claim moot. Applicant's amendments overcome the standalone rejection to claim 4. However, Applicant's amendments do not overcome the rejection made to claim 1 (including claims 3 and 4 by virtue of dependency) and it is maintained.
101:
Applicant's arguments filed with respect to the rejection made under 35 U.S.C. § 101 have been fully considered but they are not persuasive. Applicant first argues that the claims are not directed to an abstract idea. Specifically, that “dynamically alter[ing] the acceptable physical shape of a battery to be obtained by the first user, if the battery that the first user needs is not obtainable within a predetermined period” is a “technical process performed by a control unit” and not certain methods of organizing human activity (Remarks p. 4-5). Applicant also argues that the features of the claims are not mental processes because they require a computer (Remarks p. 5). Examiner respectfully disagrees. The control unit is an additional element analyzed under Step 2A, Prong 2 (see MPEP 2106.04 (II)(A)). It does not negate the recitation of an abstract idea. Examiner notes that “dynamically alter the acceptable physical shape of a battery” is merely changing which battery is matched with a user (i.e., allowing a smaller battery to be used), which is part of the abstract idea of matching batteries between users. Examiner also notes that claims can recite a mental process even if they are claimed as being performed on a computer (see MPEP 2106.04(a)(2)(III)(C)). As stated in the 101 rejection below, the control unit is a generic computer component described at a high-level of detail. As such, the claims still recite a mental process despite the use of the control unit.
Applicant further argues that the claims integrate the abstract idea into a practical application. Specifically, that the claimed invention provides an improvement to technology by addressing the issue of collecting batteries before they lose quality where “the first user can quickly obtain a battery that matches the first user’s needs” and “the size of the battery to be obtained can be dynamically set smaller in order to obtain the battery even more quickly” (Remarks p. 6). Examiner respectfully disagrees. the improvements listed by Applicant are only improvements to the abstract idea of matching batteries between users. An improvement in the abstract idea itself is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology (see also MPEP 2106.05(a)(II)).
Accordingly, the rejection is maintained.
103:
Applicant's arguments filed with respect to the rejections made under 35 U.S.C. § 103 have been fully considered but are moot in view of the new grounds of rejection.
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 and 3-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites, “acquiring second information regarding the battery that is in use by a second user, and that includes information relating to at least the shape of the battery” (emphasis added). Claim 1 previously recites, “acquiring first information that relates to a battery that is needed by a first user who performs secondary usage of the battery” (emphasis added). As such, it appears that the battery needed by the first user is the same battery as the battery being used by the second user. However, claim 1 further recites, “wherein, when the battery that the first user needs is not obtainable within a predetermined period, the control unit transmits the notification regarding provision of the battery to the terminal of the second user, in accordance with the first information and the second information whereby the shape of the battery is smaller than the shape of the battery that the first user needs, and as the predetermined period becomes shorter, a size of the battery to be collected becomes smaller” (emphasis added). This limitation makes it appear that there are multiple batteries since a battery cannot have a shape smaller than itself. Under the broadest reasonable interpretation, claim 1 is interpreted to mean that there are two batteries (one in use by the second user and one that is needed by a first user) and that subsequent mentions of “the battery” can refer to either battery. Appropriate correction is required. Examiner notes that referring to the batteries as a first battery and a second battery (or a similar distinction) would help clarify the claim.
Claims 3-6 also contain references to “the battery” without any additional identification or modifier and are unclear for the same reasons as above. They are interpreted similarly and appropriate correction is also required with respect to these claims.
Claims 3-6 are also rejected by virtue of dependency on claim 1.
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 and 3-6 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, acquiring first information that relates to a battery that is needed by a first user who performs secondary usage of the battery, and that includes information relating to at least a shape of the battery,
acquiring second information regarding the battery that is in use by a second user, and that includes information relating to at least the shape of the battery, and
transmitting, to the second user, a notification regarding provision of the battery, in accordance with the first information and the second information, the battery having a shape that matches the shape that the first user needs,
wherein, when the battery that the first user needs is not obtainable within a predetermined period, transmits the notification regarding provision of the battery to the second user, in accordance with the first information and the second information whereby the shape of the battery is smaller than the shape of the battery that the first user needs, and as the predetermined period becomes shorter, a size of the battery to be collected becomes smaller.
The limitations above are processes that under broadest reasonable interpretation cover “certain methods of organizing human activity” (including sales activities or behaviors, or business relations). Specifically, matching batteries between users so that batteries can be reused is establishing business relationships and performing sales activities as well as managing personal behavior or relationships or interactions between people (see MPEP 2106.04(a)(2)(II)).
Additionally, the limitations include 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 acquire battery shape information and match a battery to a user based on shape can all be practically performed in the human mind, or by a human using pen and paper (see MPEP 2106.04(a)(2)(III).
MPEP 2106 Step 2A- Prong 2:
The judicial exceptions are not integrated into a practical application. Claim 1 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.
Independent claim 1 recites the following additional elements to perform the above recited steps: an information processing device, comprising a control unit, and a terminal of a second user. 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. Examiner notes that a “control unit” is interpreted per paragraph [0027] of Applicant’s specification, which describes the control unit 31 as “a hardware processor such as a CPU”.
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 claim 1 does 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. 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 3, 4, and 6, recite additional details that merely narrow the previously recited abstract idea limitations without reciting any additional elements. They are therefore, ineligible for the reasons as discussed above with respect to independent claim 1. The additional elements in claim 5 are discussed below.
MPEP 2106 Step 2A- Prong 2:
Dependent claim 5, recites additional details that merely narrow the previously recited abstract idea. Claim 5 also recite the additional element of wherein the shape of the battery is one from among a cell, a stack, or a pack. This additional element is recited at a 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., using batteries) (see MPEP 2106.05(h)).
MPEP 2106 Step 2B:
With respect to claim 5, as discussed above with respect to Step 2A Prong Two, the additional element amounts to no more than: generally linking the use of a judicial exception to a particular technological environment or field of use, and is not a practical application of the abstract idea. The same analysis applies here in Step 2B, i.e., (i) generally linking the use of a judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)), does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B.
Therefore, the additional elements of, wherein the shape of the battery is one from among a cell, a stack, or a pack, does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea. Thus, claim 5 is also ineligible.
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, 3, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication No. 2022/0405719 to Shoji (Shoji) in view of U.S. Patent Publication No. 2022/0404428 to Kato et al. (Kato) in further view of NPL “10 cool tech hacks: Make a AAA battery work as an AA, whisper to Alexa, text with one hand” to Saltzman (Saltzman).
As to claim 1, Shoji teaches an information processing device, comprising a control unit that is configured to execute (“… The purchase applicant device control unit 110 is composed of a processor such as a central processing unit (CPU), memory, an input/output (I/O) device, and the like …” [0057-0061])
acquiring first information that relates to a battery that is needed by a first user who performs secondary usage of the battery, and that includes information relating to (“… The purchase request information reception unit 111 receives, from the purchase applicant B who wants to purchase a used secondary battery, purchase request information for the used secondary battery including an intended use of the used secondary battery and position information of a delivery site, and stores the purchase request information in a server storage unit 530 …” and “Upon the start of the processes, first, the purchase request information reception unit 111 in the purchase applicant device 10 receives, from the purchase applicant B who wants to purchase a used secondary battery, purchase request information for the used secondary battery including an intended use of the used secondary battery and position information of a delivery site, and transmits the purchase request information to the server 50 (S10 in FIG. 3A) …” [0061-0063 and 0095-0097]),
acquiring second information regarding the battery that is in use by a of second user, and that includes information relating to [information] (“… The trade-in request information reception unit 311 receives, from the trade-in applicant S who wants to trade in a vehicle M, trade-in request information including information indicating the degradation state of a secondary battery RB mounted on the vehicle M …” and “After this, in response to operation by the trade-in applicant S who wants to trade in the vehicle M using the trade-in applicant device 30, the trade-in request information reception unit 311 receives, from the trade-in applicant S, trade-in request information including information indicating the degradation state (SOH) of the secondary battery RB mounted on the vehicle M, and transmits the trade-in request information to the server 50 (S30 in FIG. 3A)” [0069-0070 and 0098]),
and transmitting, to a terminal of a second user a notification regarding provision of the battery, in accordance with the first information and the second information, the battery having [information] (“… The extraction unit 511 then extracts purchase request information including an intended use corresponding to a degradation state that matches the degradation state included in the trade-in request information …” and “The trade-in price determination unit 517 then transmits information indicating a trade-in facility with the highest trade-in price and the trade-in price in the trade-in facility, to the trade-in applicant device 30” and “… The reservation information reception unit 113 displays the extracted purchase request information and the corresponding trade-in request information by the purchase applicant device output unit 170.” [0100-0104 and 0115 and 0121-0124]);
wherein, when the battery that the first user needs is not obtainable within a predetermined period, the control unit transmits the notification regarding provision of the battery to the terminal of the second user, in accordance with the first information and the second information (“… The purchase request information reception unit 111 may further receive information designating a transportation method of the used secondary battery to the delivery site and/or a desired delivery time of the used secondary battery, and store the received information in the server storage unit 530” and “The required degradation state determination unit 523 determines a degradation state required at the time of trade-in of the secondary battery RB to be traded in, based on the intended use of the used secondary battery and the information designating the desired delivery time included in the trade-in request information” and “The extraction unit 511 in the server 50 then receives the trade-in request information (S40 in FIG. 3A), and extracts purchase request information including an intended use of a used secondary battery that matches the degradation state included in the received trade-in request information (S50 in FIG. 3A)” [0062-0063 and 0084 and 0100-0104] Examiner notes that the “desired delivery time” taught by Shoji is a “predetermined period”).
While Shoji teaches information relating to the battery, Shoji does not teach that the information is of a shape of the battery. However, Kato teaches, information of a shape of the battery (“In S102, the processing unit 11 (acquisition unit 11a) acquires battery information from the charge control device 20 (user). The battery information may include information regarding a model/shape of the battery B, information regarding a location of the battery B (charge control device 20), information regarding an initial full charge capacity of the battery B, and the like in addition to the timing information received in S101 …” [0031-0032]). 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 information of a shape of the battery of Kato for the information relating to a battery of Shoji. 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 Kato that doing so would help a user purchase and use a battery with security [0160].
Shoji in view of Kato does not teach, whereby the shape of the battery is smaller than the shape of the battery that the first user needs, and as the predetermined period becomes shorter, a size of the battery to be collected becomes smaller. However, Saltzman teaches, whereby the shape of the battery is smaller than the shape of the battery that the first user needs, and as the predetermined period becomes shorter, a size of the battery to be collected becomes smaller (“Your wireless mouse has died and you’re on deadline. Or you kid’s toy stopped working and they’re not happy. If you’re out of AA batteries, did you know you can use a smaller AAA battery by folding up a small bit of tin foil and inserting it on one of the ends?” [p. 2]).
It would have been obvious to one having ordinary skill in the art at the effective filling date of the invention to include, whereby the shape of the battery is smaller than the shape of the battery that the first user needs, and as the predetermined period becomes shorter, a size of the battery to be collected becomes smaller, as taught by Saltzman with the battery information processing device of Shoji in view of Kato. One having ordinary skill in the art would be motivated to do so for the benefit of finding a quick solution to replace a battery.
As to claim 3, Shoji in view of Kato teaches all of the limitations of claim 1 as discussed above. Shoji further teaches, wherein the control unit includes, in the notification, information regarding a price regarding provision of the battery (“The trade-in price determination unit 517 then transmits information indicating a trade-in facility with the highest trade-in price and the trade-in price in the trade-in facility, to the trade-in applicant device 30” and “FIG. 6 is a conceptual diagram illustrating information output by the trade-in applicant device 30. A displayed map MA includes a display IBP including information indicating the trade-in facility with the highest trade-in price and the trade-in price in the trade-in facility …” [0115 and 0119-0120]).
As to claim 6, Shoji in view of Kato teaches all of the limitations of claim 1 as discussed above. Shoji further teaches, wherein the control unit transmits the notification regarding the provision of the battery to the terminal of the second user, when materials and types of the battery installed are the same as those desired by the first user (“In the used secondary battery reuse system according to the present invention, the trade-in facility information output unit outputs the trade-in price in each trade-in facility and the information indicating the position of each trade-in facility to the trade-in applicant …” and “The trade-in facility information output unit 313 in the trade-in applicant device 30 then receives the information indicating the trade-in facility with the highest trade-in price, displays the information by the trade-in applicant device output unit 370 (S100 in FIG. 3A), and ends the series of processes …” [0015-0021 and 0118-0120).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication No. 2022/0405719 to Shoji (Shoji) in view of U.S. Patent Publication No. 2022/0404428 to Kato et al. (Kato) in further view of NPL “10 cool tech hacks: Make a AAA battery work as an AA, whisper to Alexa, text with one hand” to Saltzman (Saltzman), as applied to claim 1 above, and in further view of U.S. Patent Publication No. 2016/0162849 to Matsuyama et al. (Matsuyama).
As to claim 4, Shoji in view of Kato in view of Saltzman teaches all of the limitations of claim 1 as discussed above. Shoji in view of Kato in view of Saltzman does not teach, wherein the control unit is configured to further execute acquiring information regarding a life expectancy of a vehicle that is used by the second user and in which the battery is installed, and transmitting the notification to the terminal of the second user, the vehicle of the second user having a value of the life expectancy within a predetermined period. However, Matsuyama teaches, wherein the control unit is configured to further execute acquiring information regarding a life expectancy of a vehicle that is used by the second user and in which the battery is installed, and transmitting the notification to the terminal of the second user, the vehicle of the second user having a value of the life expectancy within a predetermined period (“… Then, in step S106, the on-board battery management server 200 notifies a user of the target vehicle 20 of the expired use time information of the target vehicle 20 predicted through the above-described process …” [0025-0029] Examiner notes that, per paragraph [0015] of Applicant’s specification, “information on the life expectancy of the vehicle” includes “information on the service life expectancy of the battery”).
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 control unit is configured to further execute acquiring information regarding a life expectancy of a vehicle that is used by the second user and in which the battery is installed, and transmitting the notification to the terminal of the second user, the vehicle of the second user having a value of the life expectancy within a predetermined period, as taught by Matsuyama with the battery information processing device of Shoji in view of Kato in view of Saltzman. Motivation to do so comes from the teachings of Matsuyama that doing so would provide a battery secondary use management system capable of shortening a stock storage period when secondarily using the used battery [0005].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication No. 2022/0405719 to Shoji (Shoji) in view of U.S. Patent Publication No. 2022/0404428 to Kato et al. (Kato) in further view of NPL “10 cool tech hacks: Make a AAA battery work as an AA, whisper to Alexa, text with one hand” to Saltzman (Saltzman), as applied to claim 1 above, and in further view of U.S. Patent Publication No. 2022/0216705 to Fogelberg et al. (Fogelberg).
As to claim 5, Shoji in view of Kato in view of Saltzman teaches all of the limitations of claim 1 as discussed above. Shoji does not teach, wherein the shape of the battery is one from among a cell, a stack, or a pack. However, Kato teaches, wherein the shape of the battery is one from among a cell, a stack, or a pack (“… The reusable battery incorporates a plurality of cells including a lithium (Li) ion battery as a battery cell 265 …” [0087-0088]).
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 shape of the battery is one from among a cell, a stack, or a pack, as taught by Kato with the battery information processing device of Shoji. Motivation to do so comes from the teachings of Kato that doing so would help a user purchase and use a battery with security [0160].
While Kato teaches detecting a state of deterioration for a battery with cells (see e.g., 0028, 0088], Shoji in view of Kato in view of Saltzman does not teach, and the control unit detects a state of deterioration for each cell, stack, or pack. However, Fogelberg teaches, and the control unit detects a state of deterioration for each cell, stack, or pack (“… The control unit is configured to continuously monitor a state of health of each cell 10 and perform a countermeasure in case of a voltage signal loss …” [0036-0039]).
It would have been obvious to one having ordinary skill in the art at the effective filling date of the invention to include, and the control unit detects a state of deterioration for each cell, stack, or pack, as taught by Fogelberg with the battery information processing device of Shoji in view of Kato in view of Saltzman. Motivation to do so to do so comes from the teachings of Fogelberg that doing so would avoid risky situations and optimize a performance of the battery system [0004].
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/S.S.W./Examiner, Art Unit 3628
/RUPANGINI SINGH/Primary Examiner, Art Unit 3628
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