DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claim 5 is pending.
Drawings
Figures 2-14 remain objected to because the features shown in these drawings are not legible. It appears that applicant continues to rely on informal screenshots and digital photos, as opposed to formal drawings. As noted in MPEP 608.01, “Legibility includes ability to be photocopied and scanned so that suitable reprints can be made and paper can be electronically reproduced by use of digital imaging and optical character recognition. This requires a high contrast, with black lines and a white background.”
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Examiner has reproduced a portion of applicant’s re-submitted Fig. 14 here, to highlight the difficulty in identifying features shown in the drawings:
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
(Examiner notes that applicant’s most recently filed response contained replacement Figures 1-12, despite indicating in the response that replacement Figures 1-14 were included.)
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 5 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Step 1 (The Statutory Categories): Is the claim to a process, machine, manufacture or composition of matter? MPEP 2106.03.
Per Step 1, claim 5 is to a system (i.e., a machine). Thus, the claim is directed to a statutory category of invention. However, the claim is rejected under 35 U.S.C. 101 because it is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application or are significantly more.
The analysis proceeds to Step 2A Prong One.
Step 2A Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon? MPEP 2106.04.
The abstract idea of claims 5 is:
receive an identifier associated with an object;
obtain data indicating one or more characteristics of the object;
determine, based on the data indicating one or more characteristics of the object, a metric representing a quantity of emissions associated with manufacturing the object;
identify an application programming interface capable of processing a request to allocate an amount for an offset product;
use the metric to determine an offset amount to offset the quantity of emissions;
determine a periodic data transfer amount for the offset product that is based on the offset amount;
output the periodic data transfer amount; and
allocate the offset amount.
The abstract idea steps recited above are those which could be performed mentally, including with pen and paper. In this case, an administrator could perform the italicized steps above, including the evaluation, i.e., determination, as part of their carbon emissions offset program. This is supported by the specification on pages 1 and 2. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the Mental Processes – Concepts Performed in the Human Mind grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Additionally and alternatively, the claim covers a rules-based offset allocation process that occurs between two parties. This is supported by the specification on pages 1 and 2. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitations of social activities, teaching, following rules or instructions, then it falls within the Certain Methods of Organizing Human Activity – Managing Personal Behavior Relationships, Interactions Between People grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Additionally and alternatively, the claim covers a business the business relations pertaining to two parties engaging in an offset allocation process. This is supported by the specification on pages 1 and 2. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions, then it falls within the Certain Methods of Organizing Human Activity – Commercial or Legal Interactions grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application? MPEP 2106.04.
In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. The additional elements include:
Claim 5: computer; communications module; processor coupled to the communications module; memory coupled to the processor and storing instructions; input interface; use the application programming interface.
These additional elements are wholly generic in nature and merely being used in their ordinary capacity for the tasks of the abstract idea. The combination of elements is nothing more than a generic computing system, which is described by applicant on page 7 of the specification. This generic recitation of computing elements being used in an “apply it” manner does not integrate the abstract idea into practical application. See MPEP 2106.05(f).
Therefore, per Step 2A Prong Two, the additional elements, alone and in combination, do not integrate the judicial exception into a practical application. The claim is directed to an abstract idea.
(Examiner notes that identify an application programming interface capable of processing a request to allocate an amount for an offset product simply describes the selection of an appropriate application programming interface and is considered part of the abstract idea.)
Step 2B (The Inventive Concept): Does the claim recite additional elements that amount to significantly more than the judicial exception? MPEP 2106.05.
Step 2B involves evaluating the additional elements to determine whether they amount to significantly more than the judicial exception itself.
The examination process involves carrying over identification of the additional element(s) in the claim from Step 2A Prong Two and carrying over conclusions from Step 2A Prong Two pertaining to MPEP 2106.05(f).
The additional elements and their analysis are therefore carried over: applicant has merely recited elements that facilitates the tasks of the abstract idea, as described in MPEP 2106.05(f).
Further, the combination of these elements is nothing more than a generic computing system. When the claim elements above are considered, alone and in combination, they do not amount to significantly more.
Therefore, per Step 2B, the additional elements, alone and in combination, are not significantly more. The claims are not patent eligible.
Accordingly, claim is rejected under 35 USC § 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Jabbar et al. (US 20210151202) in view of Davis (US 20160034910).
Claim 5
Regarding claim 5, Jabbar teaches: a computer system {In general, another innovative aspect of the subject matter described in the specification includes methods for software application plug-ins that interface with one or several embodiments of the system, i.e., a computer system. These methods enable the automated offsetting of particular CO2 emission behaviors of consumers that relate to domains such as, but not limited to, (i) building automation, (ii) transport and mobility, (iii) air travel, (iv) retail, and (v) banking and payment services. Para. [0011].} comprising:
a communications module {On the consumption and purchasing side of the system (the demand side), several embodiments of the methods representing the present invention will include interfaces, i.e., communication module(s), with the DLT or Blockchain through data integration, transfer, or APIs in the area of building automation (114), flight (116), mobility including automotive and ships (118), as well as payment and banking (120). Para. [0025].};
a processor coupled to the communications module {A processor configured to execute computational algorithms transforming the data received through the network interface, i.e., communications module, into a quantifiable CO2 emission reduction output associated with said data. See claim 2 of Jabbar.}; and
receive, via the communications module and an input interface, an identifier associated with an object {More specifically, payment data, i.e., identifier(s) associated with a transaction or object, is fetched from point of sales systems (700) or from an open banking platform (702), i.e., via the communications module and an input interface, that is either run by the bank itself, or by fintech companies offering this service to customers. Para. [0031].};
obtain, by the processor, data indicating one or more characteristics of the object {Here the data is combined with a carbon intensity value (706) expressed in grams of CO2 emitted by product/service purchase category, i.e., one or more characteristics. Para. [0031].};
determine, by the processor, based on the data indicating one or more characteristics of the object, a metric representing a quantity of emissions associated with manufacturing the object {Collectively, this data makes up a time sequence of purchase orders denominated in grams, i.e., a determined metric, of CO2e to be offset automatically through the micro carbon offsets generated by renewable energy installations in developing countries as generally described in paragraph [0023]. Para. [0031].};
use the application programming interface and the metric to determine an offset amount to offset the quantity of emissions {See para. [0025].};
determine, by the processor, a periodic data transfer amount for the offset product that is based on the offset amount {FIG. 7 illustrates an embodiment of a method for capturing CO2 emissions data from purchases of products and services. The CO2 emissions value, generated in intervals linked to specific payments, is used for creating purchase orders to be executed and settled on the DLT/Blockchain that is at the core of the method for automatically offsetting carbon emissions in real-time… Collectively, this data makes up a time sequence, i.e. periodic data transfers, of purchase orders denominated in grams of CO2e to be offset automatically through the micro carbon offsets generated by renewable energy installations in developing countries as generally described in paragraph [0023]. The transactions taking place will thus be settled through triggers (714), and stored on the DLT/Blockchain (716). Para. [0031].};
output, via the communications module, the periodic data transfer amount {See para. [0031].}; and
use the application programming interface to allocate the offset amount {See para. [0025].}.
While Jabbar appears to disclose a processor coupled to the communications module, an additional reference is provided for the purposes of compact prosecution.
Jabbar also doesn’t explicitly disclose: a memory coupled to the processor and storing instructions that, when executed by the processor, cause the processor to;
determine, by the processor and from the memory;
identify, by the processor, an application programming interface capable of processing a request to allocate an amount for an offset product.
However, Davis, in a similar field of endeavor directed to performing data processing to identify an entity to offset carbon credits, teaches:
a processor coupled to the communications module {Each computing device 600 includes at least one processor circuit, for example, having a processor 603 and a memory 606, both of which are coupled to a local interface 609, i.e., the communications module. Para. [0073].};
a memory coupled to the processor and storing instructions that, when executed by the processor, cause the processor to {See para. [0073]};
determine, by the processor and from the memory {See para. [0073], [0074};
identify, by the processor, an application programming interface capable of processing a request to allocate an amount for an offset product {According to various embodiments, the first purchase is communicated to an application programming interface (API) of the fuel merchant 212 to carry out the first purchase, wherein the second purchase is communicated to the API, i.e., application programming interface, of a third-party merchant 209 capable of providing carbon credits to carry out the second purchase. Para. [0050].}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Jabbar to include the features of Davis. Given that Jabbar is directed to offsetting of CO2 emissions, one of ordinary skill in the art would have motivated to include the features of Davis, in order to further facilitate offsetting carbon emissions at any stage of a product’s lifecycle, including the manufacture, distribution, and/or intended use of a product {Para. [0019] of Davis}.
Response to Arguments
Applicant’s remarks filed 10/10/25 have been fully considered but are not persuasive.
Applicant offers: “In light of the amendments to claim 5 and the cancellation of claim 6, Applicant respectfully requests withdrawal of the rejection under 35 U.S.C. G 101. In particular, Applicant contends that the amendments to claim 5 include a limitations regarding a practical application that amounts to significantly more than the judicial exception.”
Examiner disagrees, for the reasons set forth above. In particular, examiner maintains that an abstract idea is recited, where the additional elements are simply being used to facilitate the tasks of said abstract idea. This does not integrate into practical application and/or add significantly more. See MPEP 2106.05(f).
Applicant continues: “In light of the amendment to claim 5 and the cancellation of claim 6, Applicant respectfully requests withdrawal of the rejection under 35 U.S.C. § 102. In particular, Applicant contends that the amendments to claim 5 are patentably distinct from the cited prior art.”
Examiner disagrees, for the reasons set forth above. In particular, the combination of Jabbar and Davis teach and/or suggest all of the claimed features.
Examiner notes that Figures 2-14 remain objected to because the features shown in these drawings are not legible.
In summary, examiner has responded to all of applicant’s arguments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20220108395, which teaches: A system and method may determine the carbon emissions risk to an institution through its lending and investment activities to a plurality of counterparties by, for example, determining carbon emissions data for a number of counterparties and, for each counterparty, determining the carbon emissions risk to the institution. A system and method may determine the proportion of total capital of a counterparty that is being financed by a bank, and multiply this by a carbon emissions measure for the counterparty. Embodiments may be applied to determine optimal investment strategies for managing an institution's exposures to carbon risk over time. Such measures may be altered or projected using scenarios describing future emissions data.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN SAMUEL WASAFF whose telephone number is (571)270-5091. The examiner can normally be reached Monday through Friday 8:00 am to 6:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SARAH MONFELDT can be reached at (571) 270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOHN SAMUEL WASAFF
Primary Examiner
Art Unit 3629
/JOHN S. WASAFF/Primary Examiner, Art Unit 3629