DENSO CORPORATION

Patent Trials and Appeals Board

Aug 26, 2021

2020004211 (P.T.A.B. Aug. 26, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/513,417 10/14/2014 Youhei MORIMOTO RYM-2018-3463 1245
23117 7590 08/26/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
YANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
08/26/2021 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUHEI MORIMOTO,
NORIAKI IKEMOTO, TSUYOSHI OKAMOTO,
and YUUTAROU ITOU
Appeal 2020-004211
Application 14/513,417
Technology Center 1700
Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
GEORGE C. BEST, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
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DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 6–8, 16, and 20–23. See Appeal
Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to a battery warming-up system.
Spec. 1, ll. 8–9. Claim 1, reproduced below, is illustrative of the claimed
subject matter (Appeal Br., Claims Appendix 29–30):
1. A battery warming-up system comprising:
a main battery mounted to a vehicle to supply an electric
power to drive the vehicle, the main battery warmed by a heat
generation of an inner resistance of the main battery according to
an input and output of the electric power;
an electric heating portion configured to heat a
compartment of the vehicle by using the electric power supplied
from the main battery; and
a control device programmed to control a temperature of
the main battery by executing a battery output-increasing control
to control the electric power, that is greater than a heating
required output that is required by the electric heating portion,

1 This Decision includes citations to the following documents: Specification
filed October 14, 2014 (“Spec.”); Non-Final Office Action mailed August
23, 2019 (“Non-Final Act.”); Appeal Brief filed November 19, 2019
(“Appeal Br.”); and Examiner’s Answer mailed March 10, 2020 (“Ans.”).
No reply brief in response to the Examiner’s Answer was filed.
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as DENSO
CORPORATION. Appeal Br. 3.
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and is supplied from the main battery to the electric heating
portion, the control device being further programmed to perform:
a battery temperature acquisition that acquires the
temperature of the main battery by receiving a signal from a
battery temperature sensor,
a compartment temperature acquisition that acquires a
temperature of the compartment by receiving a signal from a
compartment temperature sensor,
a battery residual acquisition that acquires a battery
residual of the main battery by receiving a signal from a battery
residual sensor,
an increasing quantity computation that computes a
heating output-increasing quantity that is added to the heating
required output, based on the temperature of the main battery, the
temperature of the compartment, and the battery residual of the
main battery, by receiving the temperature of the main battery
from the battery temperature acquisition, the temperature of the
compartment from the compartment temperature acquisition and
the battery residual of the main battery from the battery residual
acquisition,
and a command value computation that computes a value
by adding the heating output-increasing quantity to the heating
required output as an electric heating command value by
receiving the heating output-increasing quantity from the
increasing quantity computation, and
the control device being programmed to cause the main
battery to output the electric power based on the electric heating
command value.
Claims 20 and 22 are also independent and recite battery warming-up
systems similar to claim 1. Id. at 31–34.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Yagura US 2013/0076124 A1 Mar. 28, 2013
Kusumi US 2014/0097676 A1 Apr. 10, 2014

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REJECTIONS3
1. Claims 1, 6–8, and 16–22 are rejected under 35 U.S.C. § 101 as
directed to a controller without significantly more. Non-Final
Act. 3.
2. Claim 1, 6–8, and 16–22 are rejected under 35 U.S.C. § 112(a)
or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to
comply with the written description requirement. Non-Final
Act. 4.
3. Claim 1, 6–8, and 16–22 are rejected under 35 U.S.C. § 112(a)
or 35 U.S.C. § 112 (pre-AIA), first paragraph, as lacking
enablement. Non-Final Act. 4–5.
4. Claims 1, 6–8, and 16–22 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

3 The Office Action Summary of the Non-Final Action does not include
claims 17–19, although those claims are rejected. Non-Final Act. 1 (Boxes
5, 7), 6–12. Nor does the Non-Final Action include claims 17–19 in the
rejections under 35 U.S.C. §§ 101 and 112 (Rejections 1–4). See Non-Final
Act. 3–6. It is unclear why claims 17–19, which depend from claim 1, were
not in the Office Action Summary or included in the rejections under 35
U.S.C. §§ 101 and 112. We observe that Appellant attempted to cancel
claims 17–19 in an Amendment filed December 26, 2018 (after Final
Action), but that amendment was not entered by the Examiner in an
Advisory Action entered January 24, 2019. Previous iterations of rejections
under 35 U.S.C. §§ 101 and 112 have included claims 17–19. See Final
Office Action entered August 28, 2017, 2–3 (35 U.S.C. § 101 rejection) and
Non-Final Office Action entered April 2, 2018, 3 (35 U.S.C. § 112 (b) or
(pre-AIA) 2nd paragraph). Thus, we view the omission of claims 17–19 as
being an inadvertent error on the part of the Examiner, and have included
them in Rejections 1–4.
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claim the subject matter which the applicant regards as the
invention. Non-Final Act. 6.
5. Claims 1, 6–8, and 16–22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kusumi. Non-Final Act. 6–10.
6. Claims 1, 6–8, and 16–22 are rejected under 35 U.S.C. § 103(a)
as being obviated by Yagura. Non-Final Act. 10–12.
OPINION
Claim Interpretation
Because many of the issues associated with the rejections on appeal
depend on claim interpretation, we begin by interpreting claim 1.
Initially, we observe that claim 1 requires the battery to be warmed by
heat generation of an inner resistance of the main battery, which occurs
through an input and output of electric power. Importantly, claim 1
expressly recites that a control device is “programmed to control a
temperature of a main battery by executing a battery output-increasing
control to control the electric power” that is “greater than a heating output
that is required by the electric heating portion, and is supplied from the main
battery to the electric heating portion” (emphases added). Claim 1 recites
an increasing quantity computation and a command value computation that
add a heat output-increasing quantity to the heating required output required
by the electric heating portion.
Thus, claim 1 requires that the increase in electric power required to
warm the battery is specifically supplied to the electric heating portion by
virtue of the controller executing the specific battery output-increasing
control recited in claim 1. See Typhoon Touch Techs, Inc. v. Dell, Inc., 659
F.3d 1376, 1380–81 (Fed. Cir. 2011) (upholding the district court’s holding
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that a claim reciting “a memory for storing at least one data collection
application configured to determine contents and formats of said inquiries
displayed on said screen” required the memory to perform the recited
function, rather than simply having a capability of carrying out such
function should further modification or programming be made); see also In
re Noll, 545 F.2d 141, 148 (CCPA 1976) (holding that a “programmed
machine is structurally different from a machine without that program”); see
also In re Bernhart, 417 F.2d 1395, 1399–1400 (CCPA 1969) (“[I]f a
machine is programmed in a certain new and unobvious way, it is physically
different from the machine without that program; its memory elements are
differently arranged. The fact that these physical changes are invisible to the
eye should not tempt us to conclude that the machine has not been
changed.”).
The Examiner expressly stated:
[Appellant’s] increasing quantity computation and command
value computation are interpreted to be met by the allocation of
power from a battery to a part of the system separate from the
AC heater of the cabin; the resulting heat generation from natural
effect within the battery is inherent. “[E]lectric heating
command value” is nothing more than the allocation of power to
an AC heater and additional features of the system.
Ans. 9. The Examiner further interpreted this language as “intended use and
functional language.” Ans. 10. Thus, the Examiner’s interpretation of the
claim is not consistent with the express language of claim 1 as discussed
above.
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Rejection 1
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, 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’l, 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. Alice, 573 U.S. 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. Kappos, 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 activity, 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (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
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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 187; 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 turn 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.
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In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.4
The Manual of Patent Examining Procedure (“MPEP”) now
incorporates this revised guidance and subsequent updates at § 2106 (9th ed.
Rev. 10.2019, rev. June 2020).5
Under MPEP § 2106, 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 activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (“Step 2A, Prong Two”).6
MPEP § 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical

4 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 2019 Revised Guidance, 84 Fed. Reg. at 51; see also
October 2019 Update at 1.
5 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
6 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” MPEP § 2106.04(d)(II).
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application,7 do we then look, under Step 2B, to whether the
claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional activity” in the
field; 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.8
MPEP § 2106.05(d).
DISCUSSION
The Examiner’s Rejection
In rejecting claim 1, the Examiner determined “the claimed invention
is directed to a controller without significantly more.” Non-Final Act. 3.
The Examiner determined “[t]his judicial exception is not integrated into a
practical application because the temperature of the main battery is not
controlled in a manner that would be separate and distinct from a generic
controller.” Id. In the Answer, the Examiner determined the control device
in claim 1 is programmed to perform an increasing quantity computation and
a command value computation, which involve mathematical concepts and,

7 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is
“not directed to an abstract idea under step one of the Alice analysis, we do
not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
8 This corresponds to Alice part two where it is determined whether the
claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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as a result, recite an abstract idea. Ans. 4. The Examiner determined the
judicial exception in not integrated into a practical application, because in
reciting that after the command value computed, the control device is
programmed to cause the main battery to output the electric power based on
this value, the step generally links the judicial exception to a particular
environment or field of use. Id. The Examiner determined that claim 1 is
not directed to an improvement in computer-related technology, because
claim 1 does not recite the alleged features Appellant argues are the
improvement. Id. The Examiner further determined the claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception. Id.
Appellant’s Arguments
Appellant argues the Examiner’s position with respect to the
controller does not identify an abstract idea. Appeal Br. 12. Appellant
argues that even if claim 1 recites a judicial exception, the claims represent
an advancement in computer technology. Id. at 13. Appellant contends
claim 1 indicates meaningful limitations beyond calculations and data
gathering, and provides a technical solution to a technical problem. Id. at
14. In particular, Appellant argues claim 1 executes battery output-
increasing control to start warming-up the main battery at an early stage to
reduce power loss due to a decrease of the main battery’s internal resistance
and ensure the vehicle’s driving power. Id. Appellant contends the present
application is rooted in computer technology to overcome these problems.
Id. at 14–15. Appellant contends also that claim 1 not only performs a
calculation, but performs a control based on the results of the calculation.
Id. at 15.
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ANALYSIS
We focus on independent claim 1, and address independent claims 20
and 22 to the extent necessary below.
Claim 1
For the reasons discussed below, we are persuaded the Examiner erred
in determining the claimed subject matter to be patent-ineligible as directed
to a judicial exception without reciting significantly more.
Initially, we find under Step 1 of the Guidance, that claim 1 is directed
to a “battery warming-up system” (a machine) including “a main battery
mounted to a vehicle” and “an electric heating portion.” Accordingly, claim
1 falls within one of the four statutory categories of invention. Therefore,
we turn next to Step 2A(1) of the Revised Guidance.
The Judicial Exception
Under Step 2A(1) we find that claim 1 recites a judicial exception in
the form of a mathematical concept. Specifically, claim 1 recites “an
increasing quantity computation that computes a heat output-increasing
quantity that is added to the heat required output” and “a command value
computation that computes a value by adding the heat output-increasing
quantity to the heating required output as an electric heating command
value,” both of which require mathematical calculations. As the October
2019 Update makes clear, “mathematical concepts” are not limited to
formulas or equations, and specifically include “mathematical calculations.”
October 2019 Update 3–4, see also App’x 1, 21 (Ex. 45).
Thus, we agree with the Examiner that claim 1 recites a mathematical
concept. See Ans. 4. However, the mere fact that the claim recites a
mathematical concept does not automatically render the claim patent
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ineligible. As a result, we now turn to Step 2A(2) of the Revised Guidance
to determine whether the claims integrate the judicial exception into a
practical application.
Integration into a Practical Application
In Step 2A(2) of the Revised Guidance, we evaluate whether there are
additional elements recited in the claim that integrate the mathematical
concept into a practical application.
In this case, claim 1 recites battery temperature, compartment
temperature, and battery residual acquisitions from each of the respective
sensors, which are used to compute the “heating output-increasing quantity,”
and ultimately an “electric heating command value.” Claim 1 also recites
that the control device is “programmed to cause the main battery to output
the electric power based on the electric heating command value.” Although
each of the “acquisitions” and “output” of electric power analyzed
individually may be viewed as mere pre- or post-solution activity, claim 1 as
a whole is directed to a particular improvement in the ability of the system to
warm the main battery.
In particular, as argued by Appellant, the system provides a specific
improvement over prior art systems for warming batteries that are limited in
situations where the engine cannot be stopped or the engine cannot be
restricted. Appeal Br. 14–15 (citing Spec. 1, l. 21– 2, l. 10). As Appellant
further argues, the Specification describes other advantages to the system,
such as the ability to dispense with a regeneration limit, which avoids a
decrease in regeneration power due to the regeneration limit. Appeal Br. 15,
citing Spec. 13, l. 31 – 14, l. 8. In this regard, as the October 2019 Update
makes clear, the claim does not have to recite the improvement described in
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the specification. October 29 Update 12. Thus, the system in claim 1
improves a technology or technical field. 2019 Revised Guidance 55.
For these reasons, claim 1 integrates the judicial exception into a
practical application. Therefore, we determine claim 1 is eligible, because it
is not directed to the judicial exception. As a result, we reverse the
Examiner’s rejection of claim 1.
Claims 20 and 22
Claims 20 and 22 are also independent, and similar to claim 1, recite
battery warming-up systems. Appeal Br. 31–34, Claims App. Claims 20
and 22 recite similar limitations as discussed above for claim 1.
Thus, for similar reasons as discussed above with respect to claim 1,
we determine claims 20 and 22 recite patent-eligible subject matter, because
they are not directed to the judicial exception. As a result, we reverse the
Examiner’s rejection of claims 20 and 22.
Rejection 2
Appellant does not present separate arguments with respect to the
claims subject to this rejection. See Appeal Br. 16–19. We select claim 1 as
representative for disposition of this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv)(2019).
The Examiner’s Rejection
In rejecting claim 1 as lacking written description, the Examiner
found there is insufficient written description to produce a controller that
operates in the manner recited in the claims, such that one would not know
how to utilize the input data to control the temperature of the main battery.
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Non-Final Act. 4. The Examiner found that there is no nexus between the
main battery and the compartment of the vehicle. Id. The Examiner found
that Appellant has not disclosed the important steps necessary in order to
control the device in order to regulate the temperature of the main battery.
Id. In the Answer, the Examiner found that without an algorithm that
establishes clear situations and specific relationships, the Specification lacks
written description. Ans. 5–6.
Appellant’s Arguments
Appellant argues that the Specification discloses that the control
device controls the temperature of the main battery and provides specific
steps for the warming up system. Appeal Br. 16–18, citing Spec. p. 2, ll. 8–
15, p. 11, ll. 1–8, 16–27, p. 12, ll. 7–11; Figs. 4, 5A, 6B.
Discussion
To satisfy the written description requirement under 35 U.S.C.
§ 112(a), the specification must sufficiently describe an invention
understandable to a person of ordinary skill in the art and “show that the
inventor actually invented the invention claimed.” Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In other
words, a patent applicant must “convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention. The invention is, for purposes of the ‘written description’
inquiry, whatever is now claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563–64 (Fed. Cir. 1991). “Such description need not recite the
claimed invention in haec verba but must do more than merely disclose that
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which would render the claimed invention obvious.” ICU Med., Inc. v.
Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009).
We agree with the Examiner that the claims lack sufficient written
description support to demonstrate Appellant was in possession of the
subject matter as claimed. In particular, we agree with the Examiner that the
Specification does not sufficiently describe the algorithm needed to compute
the “heat output-increasing quantity” recited in claim 1. The portions of the
Specification cited by Appellant make reference to general relationships
between the battery temperature, compartment temperature, and power
residual (SOC) and the heat output-increasing quantity (Qin), but do not
provide adequate description as to how the specific heat-output increasing
quantity is to be obtained. Spec. p. 2, ll. 8–15, p. 11, ll. 1–8, 16–27, p. 12, ll.
1–11, Figs. 4, 5A – 5C, 6A – 6D.
Indeed, the Specification describes only that “the control device 600
computes the heat output-increasing quantity by a map previously stored in
the control device 600.” Spec. 11, ll. 26–27. The Specification provides
insufficient detail as to how such a map is generated9 such that one of
ordinary skill in the art would not have understood Appellant to be in
possession of the necessary algorithms to provide the heat output-increasing
quantity recited in claim 1. Thus the “heat output-increasing quantity”
recited in claim 1 lacks sufficient written description support in the
Specification. See also MPEP § 2161.01(I).

9 In a discussing a “second embodiment,” the Specification refers to Figures
5A – 5C as a map that may be used to compute an “increasing quantity.”
Spec. 15, ll. 9–10.
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Rejection 3
Appellant does not present separate arguments with respect to the
claims subject to this rejection. See Appeal Br. 3–7. We select claim 1 as
representative for disposition of this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv)(2019).
The Examiner’s Rejection
In rejecting claim 1 as being enabling for a main battery and
compartment having a controller, does not reasonably provide enablement
for the specific temperature control as claimed, the Examiner found the
claim generically states the temperature of the battery is controlled. Non-
Final Act. 4–5. In addressing the level of skill in the art, the Examiner stated
expressly “One having ordinary skill given the proper inputs and desired
outputs would be capable of producing a working algorithm.” Id. at 5.
However, the Examiner stated that if complex relationships that “are
imperative to the success of the control,” those relationships should be
recited. Id. The Examiners stated “[t]he scope of the instant claims has not
established what inputs leads to desired outputs.” Id. The Examiner
determined there were no specific working examples and that there would be
an undue burden, because one of ordinary skill in the art “would have to
invent the entire scientific subject matter to arrive at applicant’s claim.” Id.
Appellant’s Arguments
Appellant relies on the same arguments as presented for enablement
as discussed above with respect to written description support. Appeal
Br. 16–18.
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Discussion
“To satisfy the enablement requirement of § 112, ¶ 1, a patent
application must adequately disclose the claimed invention so as to enable a
person skilled in the art to practice the invention at the time the application
was filed without undue experimentation.” In re Swartz, 232 F.3d 862, 863
(Fed. Cir. 2000) (citation omitted). To determine whether the necessary
experimentation is undue, we look at factors including “(1) the quantity of
experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the nature
of the invention, (5) the state of the prior art, (6) the relative skill of those in
the art, (7) the predictability or unpredictability of the art, and (8) the breadth
of the claims.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). See also
MPEP § 2161.01(III).
We are in substantial agreement with the Examiner’s position. As
discussed above, the Specification provides only general relationships
between the battery temperature, compartment temperature, and power
residual and the heat output-increasing quantity, but does not provide
adequate direction or guidance as to how the specific heat-output increasing
quantity would be obtained. Spec. p. 2, ll. 8–15, p. 11, ll. 1–8, 16–27, p. 12,
ll. 1–11, Figs. 4, 5A – 5C, 6A – 6D. The sole disclosure in the Specification
with respect to producing the heat output-increasing quantity is “the control
device 600 computes the heat output-increasing quantity by a map
previously stored in the control device 600.” Spec. 11, ll. 26–27. The
example as depicted in Figures 6A–6D does not provide any particular
guidance as to the specific heat-output increasing quantity used or how it
was obtained. Spec. 12, l. 20–14, l. 8. Accordingly, the Specification lacks
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sufficient guidance and examples to enable a person skilled in the art to
practice the invention at the time the application was filed without undue
experimentation.
As a result, we affirm the Examiner’s rejection of the claims as
lacking enablement.
Rejection 4
Appellant does not present separate arguments with respect to the
claims subject to this rejection. See Appeal Br. 19–21. We select claim 1 as
representative for disposition of this rejection. 37 C.F.R. § 41.37(c)(1)(iv)
(2019).
The Examiner’s Rejection
In rejecting claim 1 as being indefinite, the Examiner determined the
operation of the control device to lead to a temperature control is indefinite.
Non-Final Act. 6. The Examiner further explained that the “scope of the
controller of the instant claim is unclear.” Ans. 7.
Appellant’s Arguments
Appellant argues that the Examiner has not explained why the claims
fail to particularly point out and distinctly claim the subject matter that
Appellant regards as the invention. Appeal Br. 19–20. Appellant contends
also the Examiner has not identified a specific claim limitation that is
alleged to be indefinite. Id. at 20–21.
Discussion
We are not persuaded by Appellant’s arguments. During
examination, “[a] claim is indefinite when it contains words or phrases
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whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed.
Cir. 2014 (per curiam) (citing Manual of Patent Examining Procedure
§ 2173.05). The test for compliance for 35 U.S.C. § 112, second paragraph,
is whether the claims set out and circumscribe a particular area with a
reasonable degree of precision and particularity when read in light of the
application disclosure as they would be interpreted by one of ordinary skill
in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
In this case, we agree with the Examiner that the control device
recited in claim 1 is unclear. The control unit is recited to be programmed to
perform an increasing quantity computation that a computes a heat output-
increasing quantity. Although claim 1 recites that this computation is based
on the main battery’s temperature, the compartment’s temperature, and the
battery residual of the main battery, claim 1 does not set out and
circumscribe a particular area with a reasonable degree of certainty, because
the metes and bounds of the heat output-increasing quantity are unclear.
That is, as discussed above, the Specification provides insufficient detail as
to how the computation is carried out, and as such claim 1 is unclear.10

10 Neither the Examiner nor Appellant addresses whether the recitation of a
“control device” implicates an interpretation of the claim under 35 U.S.C.
§ 112(f) or 112 (pre-AIA) 6th paragraph. See Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc); Aristocrat Techs.
Australia Pty Ltd. v. Multimedia Games, Inc., 266 F. App’x 942, 945-46
(Fed. Cir. 2008) (construing “control means” as a means-plus-function
limitation); Ergo Licensing, LLCv. CareFusion303, Inc., 673 F.3d 1361,
1363-64 (Fed. Cir. 2012) (“The recitation of ‘control device’ provides no
more structure than the term ‘control means’ itself, rather it merely replaces
the word ‘means’ with the generic term ‘device. ’”); Fiber, LLC v. Ciena
Corp., 792 F. App’x 789, 2019 WL 6216149 (Fed. Cir. 2019) (unpublished)
(construing the term “control” as a means-plus-function limitation). In such
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Accordingly, we affirm the Examiner’s decision to reject the claims as
indefinite.
Rejection 5
We limit our discussion to claim 1, which is sufficient for disposition
of this rejection.
The Examiner’s Rejection
In rejecting claim 1 as unpatentable over Kusumi, the Examiner
found, inter alia, Kusumi discloses a charging control unit having a power
storage device and a system including a main battery, air conditioner, and
controller. Non-Final Act. 7. The Examiner found Kusumi discloses a
temperature sensor to monitor a “state value” of a power storage device, a
battery residual in the form of the state of charge (SOC), and that the
compartment would necessarily include a temperature sensor in order to
determine the operating condition for the air-conditioning to work. Id.
The Examiner found the recitation of “inner resistance” in claim 1 is a
natural phenomenon which occurs by operating the battery. Id. The
Examiner stated claim 1 does not positively recite how the controller
programming factors in the temperature of the battery and there is no recited
computed expected loss of power due to increased inner resistance, such that
the claims recite no more than a natural phenomenon. Id. The Examiner
stated the recited electric heating portion is the same as the air conditioning

situations, an algorithm is required in the Specification to provide sufficient
structure for the claim limitation unless the function can be performed by
any general purpose computer with no special programming. Eon Corp. IP
Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015).
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unit disclosed in Kusumi, which is configured to adjust the environment of
the cabin. Id. Thus, the Examiner determined that addition of such a feature
and how it works to adjust the temperature relative to external temperature is
well established. Id. The Examiner found the recitation of “increasing
quantity computation” is “nothing more than the total demand required of
the battery.” Id. at 8. The Examiner found that the Kusumi’s controller
monitors the health of the battery and allocates power accordingly such that
the controller is capable of operating the AC for the cabin and to provide
heating for the battery. Id. The Examiner determined nothing new is
presented by the claims that would not have been obvious to one of ordinary
skill in the art. Id.
Appellant’s Arguments
Appellant argues, inter alia, that Kusumi does not disclose all of the
features of claim 1, including elements corresponding to battery temperature
acquisition, compartment temperature acquisition, battery residual
acquisition, the increased quantity computation, and the command value
computation recited in claim 1. Appeal Br. 23. Appellant contends Kusumi
disclose only a system operating to control the temperature of an engine and
air conditioning. Id. Appellant argues Kusumi does not disclose the
increasing quantity computation as recited in claim 1. Id. Appellant
contends that the Examiner does not address the claimed command value
computation, which is not taught by Kusumi. Id. at 23–24. Appellant
contends Kusumi does not disclose supplying from the main battery to the
electric heating portion more power than is required by the electric heating
portion. Id. at 24. Last, Appellant contends the Examiner’s position that the
programmed configuration of the control device is merely intended use is
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erroneous, because the “programmed to” language in claim 1 recites a
specific structural configuration. Appeal Br. 24–25.
Issue
Did the Examiner err in determining that a “control device
programmed . . . to control the electric power, that is greater than a heating
required output that is required by the electric heating portion, and is
supplied from the main battery to the electric heating portion” as recited in
claim 1 would have been obvious over Kusumi?
Discussion
We are persuaded by Appellant’s arguments. The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). See also
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 407(2007) (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”) In order to establish a
prima facie case of obviousness, the Examiner must show that each
limitation of the claim is described or suggested by the prior art or would
have been obvious based on the knowledge of those of ordinary skill in the
art. See, e.g., In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
To establish a prima facie case of obviousness, the Examiner was
required to explain how each limitation in claim 1 is disclosed in, or would
have been obvious in view of, Kusumi, notwithstanding the deficiencies of
the disclosure in Appellant’s Specification as discussed above. Although the
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Examiner stated that the controller in Kusumi “monitors the health of the
battery and allocates power accordingly” and the “control system is capable
of operating the AC for the cabin, the heating for the battery, lights, drive
power, etc.,” the Examiner does not identify or provide sufficient rationale
to indicate that Kusumi discloses any power beyond the required portion of
the electric heating portion in Kusumi is supplied from the main battery to
the electric heating portion in Kusumi. Non-Final 8. Rather, the Examiner
relied on the interpretation of claim 1 discussed above, finding that Kusumi
discloses additional power is provided to “separate features of the system”
and not the electric heating portion, indicating the language in claim 1 is
merely “intended use and functional language.” Ans. 10.
Accordingly, although Kusumi discloses a method for controlling an
electrically powered vehicle including a monitoring unit that detects a “state
value” of power storage device, such as a lithium ion battery, which
provides electric power to the motor and an auxiliary load (air conditioner)
via a controller (Kusumi ¶¶ 1, 14, 37–39, 48–53, 58), the Examiner does not
sufficiently identify where Kusumi discloses or renders obvious the above-
discussed controller as recited in claim 1.
As a result, we reverse the Examiner’s rejection of claim 1 and the
claims dependent therefrom. Because independent claims 20 and 22 contain
similar language to the language of claim 1 discussed above, we also reverse
the Examiner’s rejection of claims 20–22.
Rejection 6
In rejecting the claims as unpatentable over Yagura, the Examiner’s
rejection is similar to the rejection based on Kusumi for the express claim
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limitations discussed above. Non-Final Act. 10–12. Appellant’s arguments
are similar to those discussed above for Kusumi. Appeal Br. 23–25.
For similar reasons as discussed above with respect to Yagura, we
reverse the Examiner’s decision to reject claims 1, 6–8, and 16–22 as
obvious over Yagura.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6–8, 16–
22
101 Eligibility 1, 6–8, 16–
22
1, 6–8, 16–
22
112(a) Written
Description
1, 6–8, 16–
22

1, 6–8, 16–
22
112(a) Enablement 1, 6–8, 16–
22

1, 6–8, 16–
22
112(b) Indefiniteness 1, 6–8, 16–
22

1, 6–8, 16–
22
103(a) Kusumi 1, 6–8, 16–
22
1, 6–8, 16–
22
103(a) Yagura 1, 6–8, 16–
22
Overall
Outcome
1, 6–8, 16–
22

RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED