GS Yuasa International Ltd.

Patent Trials and Appeals Board

Sep 17, 2020

2019002408 (P.T.A.B. Sep. 17, 2020)

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.
13/897,115 05/17/2013 Kenichi Sejima G230031NHANUS 8179
21254 7590 09/17/2020
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
PARK, HYUN D
ART UNIT PAPER NUMBER
2865
MAIL DATE DELIVERY MODE
09/17/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENICHI SEJIMA
____________

Appeal 2019-002408
Application 13/897,115
Technology Center 2800
____________
Before GEORGE C. BEST, ELIZABETH M. ROESEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–11, 13–20, 23, and 24 of
Application 13/897,115. Non-Final Act. (March 22, 2018). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies GS Yuasa International Ltd. as the real
party in interest. Appeal Br. 1.
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I. BACKGROUND
The ’115 Application describes a technology for estimating the
internal condition of an electric storage device. Spec. ¶ 2. In particular, the
Specification describes apparatus and methods that estimate the electric
storage device’s open circuit voltage. Id.
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 23 and 24 are rejected under 35 U.S.C. § 112, ¶ 1 as
failing to comply with the written description requirement.
Non-Final Act. 4.
2. Claims 1–3, 5–11, 13–20, 23, and 24 are rejected under 35
U.S.C. § 101 because the claims are directed to patent ineligible
subject matter. Non-Final Act. 6.
III. DISCUSSION
A. Rejection of claims 23 and 24 as not complying with the written
description requirement
1. Claim 23
The Examiner rejected claim 23 as failing to comply with the written
description requirement of § 112, ¶ 1. Non-Final Act. 4–5.
We reproduce claim 23 from the Claims Appendix of the Appeal
Brief:
23. An open circuit voltage estimation device for estimating
an open circuit voltage of an electric storage device, the open
circuit voltage estimation device comprising:
a voltage measurement portion configured to measure terminal
voltages of the electric storage device; and
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a controller configured to:
control the voltage measurement portion to measure the
terminal voltages of the electric storage device after a
charge or a discharge of the electric storage device is
complete;
store the terminal voltages in association with an elapsed
time since a charge or a discharge completion time at
which the charge or the discharge of the electric storage
device is complete;
in a single curve that demonstrates variations in the
terminal voltages of the electric storage device after the
charge or the discharge of the electric storage device is
complete, detect a peak at which a gradient of the
terminal voltages is largest;
use the elapsed time from when the charge or the
discharge of the electric storage device is complete to
when the terminal voltages reach the peak as a
predetermined elapsed time; and
estimate the open circuit voltage by using an approximate
equation of an approximate line of the terminal voltages,
the approximate line being at the predetermined elapsed
time and being based on the largest gradient in the
measured terminal voltages at the predetermined elapsed
time,
wherein the controller is further configured to control the
voltage measurement portion to terminate the measurement of
terminal voltages from when the terminal voltages reach the
peak to when the terminal voltages converge.
Appeal Br. 23–24 (emphasis added).
According to the Examiner, the limitations set forth in the “wherein”
clause are not supported by the ’115 Application’s original disclosure. Non-
Final Act. 5 (citing Spec. ¶ 25). The Examiner argues that the Specification
cannot provide written description support for the limitation at issue because
it is not possible to use the occurrence of a peak to terminate measurement
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of terminal voltages from when the terminal voltages reach the peak. Answer
3–7. According to the Examiner, it is literally impossible to describe such a
process because the controller cannot determine the occurrence of a peak
unless it measures voltages after the peak occurs.2 Id. at 5–7. The Examiner
argues that each of the passages pointed to by Appellant—paragraphs 25, 50,
63, 67, and 80 of the Specification (Appeal Br. 8)—describes stopping
measurement of the terminal voltages after passage of a predetermined
reference time. Id. at 3–5.
We agree with the Examiner for the reasons set forth in the Answer.
Accordingly, we affirm the rejection of claim 23 as lacking written
description support.
2. Claim 24
The Examiner rejected claim 24 as failing to comply with the written
description requirement of § 112, ¶ 1. Non-Final Act. 5–6. We reproduce
claim 24 from the Claims Appendix of the Appeal Brief, emphasizing the
limitations at issue.
24. The open circuit voltage estimation device according to
claim 1, wherein, based on the estimated state of charge, the
electric storage device is charged by a charger or discharged
to a device.
Appeal Br. 24 (emphasis added).
According to the Examiner, the limitations italicized above are not
supported by the ’115 Application’s original disclosure. Non-Final Act. 5.
The Examiner, therefore, contends that these limitations constitute new
matter. Id. at 5–6.

2 If prosecution of the ’115 Application continues, the Examiner should
consider whether claim 23 should also be rejected for lack of enablement.
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Appellant argues that Figure 1 and paragraph 38 of the Specification
support the limitation at issue. In relevant part, paragraph 38 reads:
As illustrated in FIG. 1, the battery system 10 includes an
assembled battery 12 and a battery management system
(hereinafter referred to as the BMS) 20. The assembled battery
12 includes a plurality of cells 14 connected in series. Each cell
14 is a rechargeable secondary battery . . . . The assembled
battery 12 is connected to charger/load 18 via connection
terminals 16. . . . The BMS 20 controls charge and discharge of
the assembled battery 12. The BMS 20 estimates the open
circuit voltage Y and a state of charge (an example of an
internal condition, hereinafter referred to as the SOC) of each
cell 14. Each cell l4 is an example of an electric storage device.
The BMS 20 is an example of an open circuit voltage
estimation system and an example of a condition estimation
system.
Spec. ¶ 38 (emphasis added).
The Examiner responds that “the original disclosure does not disclose
anything about charging or discharging to a device based on the estimated
state of charge.” Answer 7. The Examiner finds that the Specification does
not describe the BMS as controlling the charge or discharge of the battery
through a device in response to the battery’s state of charge. Id. at 7–8.
Appellant contends that the Examiner has not responded to
Appellant’s arguments and has not demonstrated why the Specification does
not provide support for the features of claim 24. Reply Br. 2. According to
Appellant,
the specification of the present Application clearly provides
support for and an adequate written description for the claimed
feature, sufficient enough and described in a way to allow one
of ordinary skill in the art at the time of the invention to know
that Appellant had possession of the claimed invention.
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Id. at 3.
Appellant’s argument is insufficient. The written description
requirement is satisfied if the specification and figures show that the
inventor was “in possession” of the claimed invention at the time of filing.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). “One
shows that one is ‘in possession’ of the invention by describing the
invention, with all its claims limitations, not that which makes it obvious.”
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). A
description which makes the claimed invention obvious is not sufficient. Id.
In this case, we agree with the Examiner that the ’115 Application’s
Specification does not describe controlling battery to either charge or
discharge based on the battery’s estimated state of charge. Even if a person
of ordinary skill in the art would have found it obvious to do so after reading
the Specification, that does not satisfy the written description requirement.
For the reasons set forth above, we affirm the rejection of claim 24 as
failing to comply with the written description requirement.
B. Rejection of claims 1–3, 5–11, 13–20, 23, and 24 as directed to
patent ineligible subject matter
The Examiner rejected the ’115 Application’s claims as directed to
patent-ineligible subject matter, namely, abstract ideas. Non-Final Act. 6.
The Examiner further found that the claims do not include additional
elements that amount to significantly more than the abstract idea. Id. at 8. In
summary, the Examiner determined that “the claims simply do not go
beyond collection and analysis of data without significantly more. As such,
taken as a whole, the claims are not eligible under . . . 35 USC [§] 101.” Id.
at 10.
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Appellant argues that the rejection of claims 1, 9, and 23 as directed to
abstract ideas should be reversed. Appeal Br. 10–17. In particular, Appellant
argues that the Examiner misinterpreted the Supreme Court’s decision in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). See Appeal Br. 10–11.
Appellant also argues that the claims in question recites significantly more
than an abstract idea and, thus, are patent eligible. Id. at 11–17.
Because Appellant argues for reversal of all of the claims pending in
the ’115 Application as a group, we shall limit our discussion to the
independent claims—claims 1, 9, and 23. Each dependent claim will stand
or fall with its parent independent claim.
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.
However, the U.S. 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, 573 U.S. at 216.
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part 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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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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
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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
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 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. (citation omitted)
(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
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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. (alterations in original) (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.
2. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51; see
also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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

3 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”) (available at https://go.usa.gov/xGKtk).
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, 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” 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
3. Claim 1
We reproduce claim 1 from the Claims Appendix of the Appeal Brief.
1. An open circuit voltage estimation device for estimating
an open circuit voltage of an electric storage device, the open
circuit voltage estimation device comprising:
a voltage measurement portion configured to measure terminal
voltages of the electric storage device; and
a controller configured to:

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance—Section III(A)(2), 2019
Revised Guidance, 84 Fed. Reg. at 54–55.
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control the voltage measurement portion to measure the
terminal voltages of the electric storage device after a
charge or a discharge of the electric storage device is
complete;
store the terminal voltages in association with an elapsed
time since a charge or a discharge completion time at
which the charge or the discharge of the electric storage
device is complete;
in a single curve that demonstrates variations in the
terminal voltages of the electric storage device after the
charge or the discharge of the electric storage device is
complete, detect a peak at which a gradient of the
terminal voltages is largest;
use the elapsed time from when the charge or the
discharge of the electric storage device is complete to
when the terminal voltages reach the peak as a
predetermined elapsed time; and
estimate the open circuit voltage by using an approximate
equation of an approximate line of the terminal voltages,
the approximate line being at the predetermined elapsed
time and being based on the largest gradient and the
measured terminal voltages at the predetermined elapsed
time,
wherein the estimate of the open circuit voltage is used to
estimate a state of charge of the electric storage device.
Appeal Br. 19.
a) Step 1
The preamble of claim 1 states that it is directed to “[a]n open circuit
voltage estimation device.” As such, it is directed to a machine, which is one
of the statutory categories of patentable subject matter.
b) Step 2A, Prong 1
In this step, we look to see whether the claim recites any of the
judicial exceptions to patentable subject matter such as an abstract idea.
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Guidance, 84 Fed. Reg. at 52. The case law has identified three types of
abstract ideas that constitute judicial exceptions to patentable subject matter:
(1) mathematical concepts or equations,
(2) methods of organizing human activity, including:
a. fundamental economic principles or practices;
b. commercial or legal interactions such as agreements in
the form of contracts marketing or sales activities or
behaviors, and business relations; and
c. managing personal behavior or relationships or
interactions between people such as social activities,
teaching, and following rules or instructions
and
(3) mental processes.
Id.
The Examiner found that claim 1 recites a judicial exception.
We agree with the Examiner.
Claim 1 recites, inter alia, a controller configured to perform the steps
of “measur[ing] the terminal voltages of the electric storage device after a
charge or discharge of the electric storage device is complete,” “stor[ing] the
terminal voltages in association with an elapsed time,” “detect[ing] a peak at
which a gradient of the terminal voltages is largest” in a curve demonstrating
variations in the terminal voltages as a function of time, “us[ing] the elapsed
time . . . as a predetermined elapsed time,” and “estimat[ing] the open circuit
voltage by using an approximate equation of an approximate line of the
terminal voltages.” In short, the controller is configured to carry out a series
of steps.
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The steps recited in claim 1 comprise a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular inventive technology for performing those functions.
Claim 1, therefore, recites an abstract idea. Elec. Power Grp. LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
The Examiner, however, did not specifically identify which of the
three groupings of abstract ideas encompasses claim 1. The Federal Circuit
has explained that “merely selecting information, by content or source, for
collection, analysis, and display does nothing significant to differentiate a
process from ordinary mental processes.” Id. at 1355; see also October 2019
Update: Subject Matter Eligibility at 7 (explaining that the claims in Electric
Power Group are examples of claims that recite mental processes because
the “data analysis steps are recited at a high level of generality such that they
could practically be performed in the human mind.”).
c) Step 2A, Prong 2
Because claim 1 recites an abstract idea, we next inquire whether the
claim recites additional elements that integrate the judicial exception into a
practical application. 2019 Revised Guidance, 84 Fed. Reg. at 51. When the
claim recites a judicial exception and fails to integrate that exception into a
practical application, the claim is “directed to” the judicial exception. Id.
A claim may integrate the judicial exception into a practical
application when, for example, it reflects an improvement to technology or a
technical field. 2019 Revised Guidance, 84 Fed. Reg. at 55 n.25 (citing
MPEP § 2106.05(a)). For instance, in McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2018), the Federal Circuit
found that claims limited to rules with specific characteristics allow for the
improvement realized by the invention and solve a particular technical
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problem. See also DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014) (holding claims patent eligible because they were
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.”); Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1304 (Fed. Cir. 2016)
(“Although some of the components and functions may appear generic,
several limitations are individually unconventional . . . and the overall
ordered combination of all of the limitations was unconventional. It
produced the advantage over the prior art by solving the technological
problem at stake.”).
On the other hand, a claim does not integrate the abstract idea into a
practical application when it merely adds insignificant extra-solution activity
or generally links the judicial exception’s use to a particular technological
environment or field. 2019 Revised Guidance, 84 Fed. Reg. at 55 n.32
(citing MPEP § 2106.05(h)). For example, the Federal Circuit has
determined that claims reciting systems and methods for performing real
time performance monitoring of an electric power grid by collecting data for
multiple data sources, analyzing the data, and displaying the results were
directed to patent ineligible subject matter. Elec. Power Grp., 830 F.3d at
1356. In particular, the Federal Circuit stated that “merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas.” Id. at 1355. The Federal Circuit has observed
that “ineligible claims generally lack steps or limitations specific to [a]
solution of a problem, or improvement in the functioning of technology.”
Trading Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x 1001, 1005 (Fed. Cir.
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2017). The Supreme Court has stated that “limiting an abstract idea to one
field of use or adding token postsolution components [does] not make the
concept patentable.” Bilski v. Kappos, 561 U.S. 593, 612 (2010).
In this case, claim 1 includes limitations that tie the abstract idea to
the solution of a particular technical problem—the early estimation of the
open circuit voltage of an electric storage device, which can be used as a
proxy for the internal condition of the electric storage device. Spec. ¶¶ 4–6,
9 (describing technical problem). In particular, claim 1 is directed to a
device that performs a specific function—“estimating an open circuit voltage
of an electric storage device.” The claimed device does so by collecting
specific data—the terminal voltages as a function of time—and analyzes that
data in a particular way to estimate the open circuit voltage.
In this way, claim 1 is similar to the claims at issue in McRO. As the
Federal Circuit found in McRO, claim 1 recites specific rules that enable the
improvement realized by the invention and solve a specific technical
problem. We, therefore, conclude that claim 1 recites additional elements
that integrate the judicial exception into a practical application. Thus, claim
1 is not directed to an abstract idea.
Because we find that claim 1 is not directed to an abstract idea, we
need not proceed to determine whether it provides an inventive concept.
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining
that an administrative agency may render a decision based on a single
dispositive issue); see also 2019 Revised Guidance, 84 Fed. Reg. at 54.
We do not sustain the rejection of independent claim 1. For the same
reasons, we also do not sustain the rejection of dependent claims 2, 3, 5–8,
16–20, and 24, which are rejected under the same rationale.
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4. Claim 9
Claim 9 is reproduced below from the Claims Appendix of the Appeal
Brief:
9. A method of estimating an internal condition of an
electric storage device, the method comprising:
measuring terminal voltages of the electric storage device after
a charge or a discharge of the electric storage device is
complete;
storing the terminal voltages in association with and elapsed
time since a charge or a discharge completion time at which the
charge or the discharge of the electric storage device is
complete;
in a single curve that demonstrates variations in the terminal
voltages of the electric storage device after the charge or the
discharge of the electric storage device is complete, detecting a
peak at which a gradient of the terminal voltages is largest;
using the elapsed time from when the charge or the discharge of
the electric storage device is complete to when the terminal
voltages reach the peak as a predetermined elapsed time;
estimating the open circuit voltage by using an approximate
equation of an approximate line of the terminal voltages, the
approximate line being at the predetermined elapsed time and
being based on the largest gradient and the measured terminal
voltage at the predetermined elapsed the time; and
estimating a state of charge of the electric storage device by
using the estimating of the open circuit voltage.
Appeal Br. 21–22.
a) Step 1
Claim 9’s preamble states that it is directed toward a method and the
body of the claim recites a series of steps to be performed. Claim 9,
therefore, recites a method, which is one of the statutory categories of
patent-eligible subject matter.
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b) Step 2A, Prong 1
The Examiner found that claim 9 recites a judicial exception.
We agree with the Examiner.
Claim 9 recites the steps of “measuring [the] terminal voltages of the
electric storage device after a charge or a discharge of the electric storage
device is complete,” “storing the terminal voltages in association with an
elapsed time,” “detecting a peak at which a gradient of the terminal voltages
is largest” in a curve demonstrating variations in the terminal voltages as a
function of time, “using the elapsed time . . . as a predetermined elapsed
time,” and “estimating the open circuit voltage by using an approximate
equation of an approximate line of the terminal voltages.”
The steps comprise a process of gathering and analyzing information
of a specified content, then displaying the results. They do not recite any
particular inventive technology for performing those functions. Claim 9,
therefore, recites an abstract idea. See Elec. Power Grp., 830 F.3d at 1354.
The Examiner, however, did not specifically identify which of the
three groupings of abstract ideas encompasses claim 9. For the reasons we
have discussed in connection with claim 1, we determine that the claims at
issue recite mental processes.
c) Step 2A, Prong 2
Because claim 9 recites an abstract idea, we next inquire whether the
claim recites additional elements that integrate the judicial exception into a
practical application. 2019 Revised Guidance, 84 Fed. Reg. at 51. When the
claim recites a judicial exception and fails to integrate that exception into a
practical application, the claim is “directed to” the judicial exception. Id.
A claim may integrate the judicial exception into a practical
application when, for example, it reflects an improvement to technology or a
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technical field. 2019 Revised Guidance, 84 Fed. Reg. at 55 n.25 (citing
MPEP § 2106.05(a)).
In this case, claim 9 includes limitations that tie the abstract idea to
the solution of a particular technical problem—the early estimation of the
open circuit voltage of an electric storage device, which can be used as a
proxy for the internal condition of the electric storage device. Spec. ¶¶ 4–6,
9 (describing technical problem). In particular, claim 9 is directed to a
method that performs a specific function—estimating an open circuit voltage
of an electric storage device. The claimed device does so by collecting
specific data—the terminal voltages as a function of time—and analyzes that
data in a particular way to estimate the open circuit voltage.
In this way, claim 9 is similar to the claims at issue in McRO. As the
Federal Circuit found in McRO, claim 9 recites specific rules that enable the
improvement realized by the invention and solve a specific technical
problem. We, therefore, conclude that claim 9 recites additional elements
that integrate the judicial exception into a practical application. Thus, claim
9 is not directed to an abstract idea.
Because we find that claim 9 is not directed to an abstract idea, we
need not proceed to determine whether it provides an inventive concept.
Beloit Corp., 742 F.2d at 1423.
We do not sustain the rejection of independent claim 9. For the same
reasons, we also do not sustain the rejection of dependent claims 10, 11, and
13–15, which are rejected under the same rationale.
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5. Claim 23
a) Step 1
The preamble of claim 23 states that it is directed to “[a]n open circuit
voltage estimation device.” As such, it is directed to a machine, which is one
of the statutory categories of patentable subject matter.
b) Step 2A, Prong 1
The Examiner found that claim 23 recites a judicial exception.
We agree with the Examiner.
Claim 23 requires a controller configured to “measure the terminal
voltages of the electric storage device after a charge or a discharge of the
electric storage device is complete,” “store the terminal voltages in
association with an elapsed time,” “detect a peak at which a gradient of the
terminal voltages is largest” in a curve demonstrating variations in the
terminal voltages as a function of time, “use the elapsed time . . . as a
predetermined elapsed time,” and “estimate the open circuit voltage by using
an approximate equation of an approximate line of the terminal voltages.” In
other words, the controller is configured to perform a series of steps.
These steps comprise a process of gathering and analyzing
information of a specified content, then displaying the results. They do not
recite any particular inventive technology for performing those functions.
Claim 23, therefore, recites an abstract idea. See Elec. Power Grp., 830 F.3d
at 1354.
The Examiner, however, did not specifically identify which of the
three groupings of abstract ideas encompasses claim 23. For the reasons we
have discussed in connection with claim 1, we determine that the claims at
issue recite mental processes.
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c) Step 2A, Prong 2
Because claim 23 recites an abstract idea, we next inquire whether the
claim recites additional elements that integrate the judicial exception into a
practical application. 2019 Revised Guidance, 84 Fed. Reg. at 51. When the
claim recites a judicial exception and fails to integrate that exception into a
practical application, the claim is “directed to” the judicial exception. Id.
A claim may integrate the judicial exception into a practical
application when, for example, it reflects an improvement to technology or a
technical field. 2019 Revised Guidance, 84 Fed. Reg. at 55 n.25 (citing
MPEP § 2106.05(a)).
The controller recited in claim 23 is essentially the same as the
controller recited in claim 1. Because the steps are essentially the same, the
analysis of whether claim 23 recites additional elements sufficient to
integrate the abstract ideas into a practical application is the same as what
we have discussed for claim 1. Thus, we determine that claim 23, like claim
1, is not directed to an abstract idea.
Because we find that claim 23 is not directed to an abstract idea, we
need not proceed to determine whether it provides an inventive concept.
Beloit Corp., 742 F.2d at 1423.
For the reasons set forth above, we do not sustain the rejection of
claim 23 as directed to patent-ineligible subject matter.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Basis Affirmed Reversed
23, 24 112, first paragraph Written Description 23, 24
1–3, 5–11, 13–20,
23, 24 101 Eligibility
1–3, 5–11,
13–20, 23, 24
Appeal 2019-002408
Application 13/897,115
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Claims Rejected 35 U.S.C. §  Basis Affirmed Reversed
Overall Outcome 23, 24 1–3, 5–11,13–20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART