Ex Parte Wang et al

Patent Trials and Appeals Board

May 10, 2019

14330458 - (D) (P.T.A.B. May. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/330,458 07/14/2014
28866 7590 05/14/2019
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
Xu Wang
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
83448073 3543
EXAMINER
NGON,RICKY
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
05/14/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MST@mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XU WANG, XIAOGUANG CHANG, and
CHUANHE 1
Appeal2018-006161
Application 14/330,458
Technology Center 2800
Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and
LILAN REN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-3, 5-9, and 18 under 35 U.S.C. § 101, as
claiming ineligible subject matter. 2 See Examiner's Final Office Action,
dated November 2, 2017 ("Final Act."); Examiner's Answer, dated April 6,
2018 ("Ans."). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRMED-IN-PART and enter a new ground of rejection.
1 The Appellant/ Applicant in this case is the real party in interest Ford
Global Technologies LLC. See Appellant's Appeal Brief 1, filed December
5, 2017 ("App. Br.").
2 The Examiner has expressly stated that the claims distinguish over the
closest prior art of record. Final Act. 6-7.
Appeal2018-006161
Application 14/330,458
Appellant's claimed invention is directed to a method of estimating a
battery state of charge (SOC) in an electric vehicle comprising determining
the battery cell voltage relaxation time, employing temperature and cell
usage history; and a Battery Energy Control Module (BECM) comprising a
battery relaxed time lookup table (LUT) wherein the BECM monitors power
up and power down events and estimates battery capacity in accordance with
a state of charge. (Claims 1 and 6). Independent claims 1 and 6 are
exemplary of the subject matter on appeal and are reproduced below:
1. A method of estimating battery state of charge (SOC) in an electric
vehicle, comprising:
measuring a battery temperature;
measuring battery currents between a first and second time;
calculating a mean current based the measured battery currents
between the first and second time;
determining an estimated battery relaxation time based on the
mean current and temperature; and
measuring battery open circuit voltage after the relaxation time for
calculating the SOC.
6. A Battery Energy Control Module (BECM) comprising:
a relax time look up table (LUT) of battery relaxation time based
on predetermined root mean square (RMS) current and
temperature,
wherein the LUT provides a set of relaxation time values
corresponding to RMS current and temperature,
wherein the BECM monitors power up and power down events and
estimates battery capacity in accordance with a state of charge
(SOC) estimation based on an open circuit voltage (OCV), the
BECM being further configured to generate an output based on the
estimated battery capacity at power up if an elapsed time is greater
than the relaxation time provided in the relax time LUT for a
measured RMS current and measured temperature.
App. Br. Claim App'x.
2
Appeal2018-006161
Application 14/330,458
Independent claims 1 and 18 are directed to a method of estimating
battery state of charge in an electric vehicle. Independent claim 6 is directed
to a BECM comprising a relax time look up table (LUT) of battery
relaxation time.
The following rejections are presented for our review:
I. Claims 1-3, 5-9, and 18 are rejected under 35 U.S.C. §101 because
the claimed invention is directed to nonstatutory subject matter.
II. Claims 1-3 and 5-9 are rejected under 35 U.S.C. §I03(a) as
unpatentable over Tsuchiya (US 8,274,291 Bl, issued Sep. 25, 2002) in
view of Connolly (US 2011/0048823 Al, published Mar. 3, 2011).
The complete statement of the rejections on Appeal appear in the
Final Action. (Final Act. 2-8).
II. DISCUSSION
Claims 6-9
For the reasons set forth below, we are unable to ascertain the metes
and bounds of the claimed subject matter, we procedurally reverse the
rejection of claims 6-9 under 35 U.S.C. § 101 and 35 U.S.C. § I03(a), and
enter a new ground of rejection of claims 6-9 under 35 U.S.C. § 112(b).
Independent claim 6 dependent claims 7-9 are rejected under
35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor or a joint
inventor regards as the invention.
3
Appeal2018-006161
Application 14/330,458
Our evaluation of a claims begin with understanding the meaning of
the claims. Our reviewing court has instructed that "[i]t is the applicants'
burden to precisely define the invention, not the PTO's. See 35 U.S.C. § 112
,r 2 . . . . [T]his section puts the burden of precise claim drafting squarely on
the applicant." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
We seek to construe the term claim language "wherein the BECM
monitors power up and power down events and estimates battery capacity in
accordance with a state of charge (SOC) estimation based on an open circuit
voltage (OCV), the BECM being further configured to generate an output
based on the estimated battery capacity at power up if an elapsed time is
greater than the relaxation time provided in the relax time L UT for a
measured RMS current and measured temperature." (App. Br. 10). The
Specification teaches
In a Battery Energy Control Module (BECM), cell SOC-OCV curves
can be saved as a look up table (LUT) of temperature, SOC, and cell
voltage. For example, within typical PHEV battery SOC operation
range ( e.g. PHEV 100% SOC to 10% SOC), about 3m V cell voltage
corresponds to 1 % SOC. The preferred criterion for sufficient cell
voltage relaxation is when cell voltage relaxes to within 3m V of its
steady state value.
(Spec. 4).
We determine independent claim 6 invokes 35 U.S.C. § 112([).
Where, as here, the limitations at issue do not recite the word "means," there
is a rebuttable presumption that§ 112([) does not apply. See Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1348--49 (Fed. Cir. 2015) (en bane).
This presumption can be overcome if "the claim terms fails to 'recite[]
sufficiently definite structure' or else recites 'function without reciting
sufficient structure for performing that function."' Id. at 1348 (alteration in
4
Appeal2018-006161
Application 14/330,458
original) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir.
2000)). The relevant question is "not merely the presence or absence of the
word 'means' but whether the words of the claim are understood by persons
of ordinary skill in the art to have a sufficiently definite meaning as the
name for structure." Id. Although the claims at issue do not recite the words
"means for," the claims do invoke § 112(±). For example, claim 6 recites the
BECM monitors (1) power up and power down events; (2) estimates battery
capacity in accordance with a state of charge (SOC) estimation based on an
open circuit voltage (OCV), and (3) generate an output based on the
estimated battery capacity at power up utilizing a look up table (LUT). The
claim describes the functions the "BECM" performs without reciting any
structure for doing so. The Specification fails to provide written description
of the structures that perform these claimed functions. The original
Specification simply either repeat the claim language or describe generic
computers or devices.
Further, the Specification fails to provide sufficient corresponding
structure and thus claims 6-9 are indefinite. As the Federal Circuit has
explained:
[I]f one employs means-plus-function language in a claim, one
must set forth in the specification an adequate disclosure
showing what is meant by that language. If an applicant fails to
set forth an adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly claim the invention
as required by the second paragraph of section 112.
In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en bane); see
also Aristocrat Techs. Australia Pty Ltd. v. Int'! Game Tech., 521 F.3d 1328,
1333 (Fed. Cir. 2008).
5
Appeal2018-006161
Application 14/330,458
When a claim invokes§ 112(±), the associated written description must
disclose adequate corresponding structure to perform the claimed function.
See Williamson, 792 F .3 d at 13 51. If the written description fails to do so,
the claims are indefinite. See id. at 1351-52. For a computer-implemented
means-plus-function clahn limitation invoking 35 U.S.C.
§ l 12(f), the coffesponding structure for performing a specijzcfi.mction must
be more than simply a general purpose computer or microprocessor. See In
re Kar:: lnteractf-ve Call Processing Patent Litigation, 639 F.3d 130\ 1316
(Fed. CiL 2011} A computer-implemented means-plus-function term is
limited to the corresponding structure disclosed in the specification and
equivalents thereof, and the corresponding structure is the algorithm. See
Aristocrat Techs. Australia Pty Ltd v. Int 'l ()ame Tech., 521 F.3d 1328,
1333 (Fed. Cir. 2008).
During prosecution, a claim is examined for compliance with 3 5
U.S.C. § 112(b) by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (quoting MPEP § 2173.02). A claim should be rejected as
indefinite when it is amenable to two or more plausible claim constructions.
Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008); In re Packard,
751 F.3d 1307, 1324 (Fed. Cir. 2014) ("There are good reasons why
unnecessary incoherence and ambiguity in claim constructions should be
disapproved"). Here, the limitation "wherein the BECM monitors power up
and power down events and estimates battery capacity in accordance with a
state of charge estimation based on an open circuit voltage, the BECM being
further configured to generate an output based on the estimated battery
capacity at power up if an elapsed time is greater than the relaxation time
6
Appeal2018-006161
Application 14/330,458
provided in the relax time LUT for a measured RMS and temperature" does
not meet the threshold requirements of clarity and precision. Accordingly,
we enter a new ground of rejection under 35 U.S.C. § 112(b).
For the foregoing reasons, the scope of the claimed invention cannot
be determined.
Accordingly, on this record, claims 6-9 are indefinite for the reasons
given above. 3
Having determined that the subject matter claims 6-9 is indefinite, we
are unable to determine the propriety of the under 35 U.S.C. § 101 and
35 U.S.C. § 103(a). The review of these rejections would require
considerable speculation as to the scope of the claims. Such speculation
would not be appropriate. See In re Steele, 305 F.2d 859, 862 (CCPA 1962).
We, therefore, procedurally reverse the rejections of claims 6-9 under
35 U.S.C. § 101 and 35 U.S.C. § 103(a). We emphasize that this is a
technical reversal of the under 35 U.S.C. § 101 and 35 U.S.C. § 103(a), and
not a reversal based upon the merits of the rejections.
REJECTION UNDER§ 101
The Examiner rejects claims 1-3, 5, and 18 under 35 U.S.C. § 101 as
being directed to a judicial exception, namely an abstract idea of data
processing information, organizing information, and comparison analysis,
without significantly more. (Final Act. 2).
3 The pending claims 7-9 fail to remedy the deficiency of independent
claim 6.
7
Appeal2018-006161
Application 14/330,458
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activities, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
8
Appeal2018-006161
Application 14/330,458
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to
transform that abstract idea into a patent-eligible invention." Id.
9
Appeal2018-006161
Application 14/330,458
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019, Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
We have considered the Examiner's findings and the Appellant's
arguments and are not persuaded the Examiner erred in rejection the claims
under 35 U.S.C. § 101.
Under the guidance, in the first step (1) of our analysis, we consider
whether the Examiner erred in determining that the claims recite a judicial
exception. The Examiner finds claims 1-3, 5, and 18 are
10
Appeal2018-006161
Application 14/330,458
directed to a series of steps for calculating a mean current based on
the measured battery currents between the first and second time,
determining an estimated battery relaxation time (claim 1), ... and
calculating a mean current based on the measured battery currents
between the first and second time, determining an estimated battery
relaxation time (claim 18) which all fall under data processing
information, organizing information, and comparison analysis.
(Final. Act. 2-3 citing Diehr, 450 U.S. at 188 (1981), In re Grams, 888 F.2d
835 (Fed. Cir. 1989), Digitech Image Tech., LLC v. Electronics for Imaging,
Inc. (758 F.3d 1344) (Fed. Cir. 2014), and Electric Power Group, LLC v.
Alstom, S.A., 830 F.3d 1350, 1351-52 (Fed. Cir. 2016)).
Appellant contends claims 1-3, 5, and 18 are directed to a method
which is within the statutory categories of invention. (App. Br. 3).
Appellant contends the claimed method is not judicially recognized abstract
ideas, such as a mathematical formula, a fundamental economic concept, or
a method of organizing human activities. (App. Br. 4). Appellant
specifically states:
The claimed method is not abstract because it does not broadly
encompass all methods for estimating battery state of charge. Instead,
the method covers a particular way of determining an adequate wait
time (i.e., relaxation time) needed in order to be able to rely on a State
of Charge (SOC) value that can be obtained when the vehicle powers-
up. The presence of a lookup table or a programmable controller do
not detract from the well-defined and structured definition of the
invention.
(App. Br. 4).
We agree with the Examiner that the claims recite an abstract idea,
specifically the claimed invention is directed to mental processes. Claims 1
and 18 recite various measuring steps, determining steps, and calculating
steps. Under their broadest reasonable interpretation, these steps, as drafted,
11
Appeal2018-006161
Application 14/330,458
are processes that cover performance of the limitations in the mind but for
the recitation of generic computing device. That is, other than the devices
required for the various measuring steps, nothing in the claims precludes the
determining steps, and calculating steps from practically being performed in
the human mind. For example, the claims encompass the user manually
"calculating a mean current based the measured battery currents between the
first and second time;" "determining an estimated battery relaxation time
based on the mean current and temperature"; and "calculating the SOC.";
( claims 1 and 18). The devices required for measuring the temperature and
current do not take the claim limitations out of the mental processes
grouping. Under the Guidance, claims 1 and 18 are best described as being
directed to mental processes given that they do not explicitly recite a
mathematical concept.
Thus, claims 1 and 18 recite a mental process. Therefore, we agree
with the Examiner's overall determination that claims 1 and 18 are directed
to an abstract idea. Ans. 3--4.
We understand that the Examiner evaluated independent claims 1 and
18 as broadly encompassing the abstract idea of a mathematical concept in
view of the calculating a mean current based the measured battery currents.
However, under the Guidance, claims 1 and 18 are best described as being
directed to mental processes given that they do not explicitly recite a
mathematical concept.
We next tum to the second step (2) of determining whether additional
elements that integrate the judicial exception into a practical application.
The additional elements of claims 1 and 18, namely the steps of
measuring battery temperature, current and open circuit voltage -and
12
Appeal2018-006161
Application 14/330,458
recording the estimated battery relaxation time of claim 18- are not
directed to using a judicial exception in some meaningful way beyond
linking the exception to a particular technological environment such that the
claim as a whole is more than a drafting effort to monopolize the judicial
exception.
Appellant argues the estimating battery state of charge in claims 1 and
18 is not merely directed to the abstract idea of estimating SOC because they
involve "a sequence of concrete ordered steps wherein certain timed
measurements are used in a calculation that determines a relaxation time,
and then after that time passes then performing another measurement to
obtain the SOC." (Reply Br. 1-2). Appellant argues that the method covers
a particular way of determining an adequate wait time (i.e., relaxation time)
needed in order to be able to rely on a State of Charge (SOC) value that can
be obtained when the vehicle powers-up." (App. Br. 4).
In order to show that the invention is an improvement in estimating a
battery State of Charge (SOC), the disclosure must provide sufficient details
such that one of ordinary skill in the art would recognize the claimed
invention as providing an improvement. Compare McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--16 (Fed. Cir. 2016) (the
specification explained how the particular rules recited in the claim enabled
the automation of specific animation tasks), with Affinity Labs of Tex. v.
DirecTV, LLC, 838 F.3d 1253, 1264---65 (Fed. Cir. 2016) (the specification
failed to provide details regarding the manner in which the invention
accomplished the alleged improvement); see MPEP § 2016.05(a).
The Specification lacks any description or evidence as to how the
battery State of Charge (SOC) determination is improved, or even
13
Appeal2018-006161
Application 14/330,458
necessarily controlled, based on the battery power estimation. Rather, the
Specification describes estimating a battery cell voltage relaxation time,
employing temperature and cell usage history to achieve increased accuracy
only in a general non-specific way. (Spec. 10, 11. 17-22). The Specification
lacks sufficient detail for the criteria required to determine the appropriate
relationship between relaxed time, battery temperature and battery usage for
determining the improved SOC as argued by Appellant.
Having found the claims to be directed to the identified abstract idea,
we tum to the issue of whether a claim element or combination of elements
is well-understood, routine, and conventional to a skilled artisan in the
relevant field is a question of fact. Appellants' inventive concept is directed
to obtaining the SOC through the claimed data gathering, analysis, and
reporting steps. The monitoring a battery comprising the measuring the
battery temperature, current and voltage is a conventional activity. (See
Tsuchiya). We, thus, find nothing in the claims which goes beyond the
abstract idea to transform the claim into eligible subject matter. Therefore,
the additional elements recited in independent claims 1 and 18 do not
provide "significantly more" than the recited judicial exception.
Appellant does not present separate arguments for claims 2, 3, and 5
all ultimately dependent from claim 1. See generally App. Br. These claims
do not add any limitations that would take them out of the mental processes
grouping or add additional elements that integrate the mental process into a
practical application or provide an inventive concept for the reasons given
above.
14
Appeal2018-006161
Application 14/330,458
REJECTION UNDER§ 103(a)
The Examiner rejects claims 1-3 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Tsuchiya in view of Connolly.
The Examiner found Tsuchiya discloses a method of estimating
battery state of charge (SOC) in an electric vehicle comprising measuring a
battery temperature, measuring battery currents between a first and second
time calculating an current based the measured battery currents and
determining an estimated battery relaxation time based on the current and
temperature and measuring battery open circuit voltage after the relaxation
time for calculating the SOC. (Final Act. 4; Tsuchiya, col 8, 11. 64---67, col
10, 11. 14---67). The Examiner found Tsuchiya does not disclose calculating a
mean current wherein the mean current is a root mean square (RMS) current.
The Examiner found Connolly teaches a hybrid electric vehicle
battery thermal management system for calculating a root mean square
current flowing through a battery. (Final Act. 5; Connolly ,r,r 13, 16). The
Examiner concluded:
It would have been obvious to one of ordinary skilled in the art before
the effective filing date of the claimed invention to modify the
teachings of Tsuchiya to further include calculating a mean current
based on the measured current between the first and second time as
taught by Connolly because as Connolly shows, incorporating the
calculated root mean square current, average power of the battery and
the thermal energy associated with the current flow (para [0016]-
[0021]) one can obtain an more accurate representation of the battery
condition while taking into consideration the thermal effects on the
battery; thereby improving battery longevity (para [0004]-[0005]).
(Final Act. 5).
15
Appeal2018-006161
Application 14/330,458
Appellant argues nothing in Tsuchiya discloses or suggests any
dependency of the relaxation time on current, and Tsuchiya nowhere
discloses the mean or any other average of the battery current. (App. Br. 5-
6). Appellant also argues Connelly discloses an RMS current determination,
but fails to suggest any use in connection with determining a battery
relaxation time. (App. Br. 6).
Appellant's arguments are not persuasive of reversible error. We
agree with the Examiner's responses to Appellant's arguments. (Ans. 5-7).
Tsuchiya teaches relaxation time is determined based on the current and
temperature. Connelly discloses RMS current determinations are known by
persons of ordinary skill in the art. A person of ordinary skill in the art
would have sufficient skill to recognize the battery charge status varies
based on the frequency of the operating cycle. (Conley ,r 4). A person of
ordinary skill in the art would have recognized the need for stabilization of
the battery for determining the state of charge. Appellant has not directed us
to evidence that the claimed method incorporating relaxation time
determinations exhibits unexpected results.
For the foregoing reasons and those presented by the Examiner we
sustain the rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a) over the
combination of Tsuchiya and Connolly.
IV. CONCLUSION
On the record before us and for the reasons discussed above, we:
sustain the rejection of claims 1-3 and 5 under 35 U.S.C. § 101 for
claiming ineligible subject matter;
sustain the rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a);
16
Appeal2018-006161
Application 14/330,458
procedurally reverse the rejection of claims 6-9 under 35 U.S.C. § 101 and
35 U.S.C. § 103(a); and
enter a new ground of rejection of claims 6-9 under 35 U.S.C.
§ 112(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
17
Appeal2018-006161
Application 14/330,458
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
NEW GROUND OF REJECTION (37 C.F.R. § 4I.50(b))
18