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 .
In response to the restriction requirement, Applicant elected claims 1-3, 11-15 for further examination. As a result, claims 4-10, 16-25 are withdrawn from further prosecution.
Applicant’s Election with traverse is acknowledged. The traversal is on the ground that the searches would be co-extensive and would not unduly burden the examiner. This is not found persuasive because burden is not only based upon searches being co-extensive. Examination and analysis for determination of patentability creates burden.
Claim Objections
Claim 1 is objected to because of the following informalities: “the API gateway” (lines 8-9) should be corrected as “the API gateway server”. “The user” (line 9) should be corrected as a user.
Claim 11 is objected to because of the following informalities: “the API gateway” (line 12) should be corrected as “the API gateway server”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 11-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 16 of copending Application No. 17/950155 (Amendment dated 6/13/2025). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending applications simply teach all claimed limitations of the claims in the current application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding to claims 1, 11:
Claim 1 (or 10) of the copending application teaches a system configured to generate extensible carbon objects comprising input and a memory including non-transitory program memory for storing at least instructions and a processor that is operative to execute instructions that enable actions (Claim 1: lines 1-4), the system comprising:
an application programming interface (API) gateway server between a logical layer and a representational layer, the API gateway server being configured with an extensible Carbon Reporting Markup Language (CarML) configured to interface software with the logical layer, the comprising a core set of common data schema and message types including interface objects for extensible carbon objects, and third party external systems, the API gateway configured to allow the user to generate an extensible carbon object representing a carbon instrument (Claim1: lines 8-14).
Regarding to claims 2-3, 12-15: further comprising a Life Cycle Inventory (LCI) library database configured to store an environmental embodied CO2e record for a cradle to gate life cycle of an item or process, based on the process inputs and outputs of a Reference Unit and a Defined Unit, wherein the system comprises a public ledger configured to record an extensible carbon object to the LCI (claim 1, lines 15-22. Claim 16 teaches the public ledger).
Claims 1-3 and 11-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 9 of copending Application No. 17/950157 (Amendment dated 8/14/2025). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending applications simply teach all claimed limitations of the claims in the current application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding to claims 1, 11:
Claim 1 (or 9) of the copending application teaches a system configured to generate extensible carbon objects comprising input and a memory including non-transitory program memory for storing at least instructions and a processor that is operative to execute instructions that enable actions (Claim 1: lines 1-4), the system comprising:
an application programming interface (API) gateway server between a logical layer and a representational layer, the API gateway server being configured with an extensible Carbon Reporting Markup Language (CarML) configured to interface software with the logical layer, the comprising a core set of common data schema and message types including interface objects for extensible carbon objects, and third party external systems, the API gateway configured to allow the user to generate an extensible carbon object representing a carbon instrument (Claim1: lines 8-15).
Regarding to claims 2-3, 12-15: further comprising a Life Cycle Inventory (LCI) library database configured to store an environmental embodied CO2e record for a cradle to gate life cycle of an item or process, based on the process inputs and outputs of a Reference Unit and a Defined Unit, wherein the system comprises a public ledger configured to record an extensible carbon object to the LCI (claim 8).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 11 are rejected under 35 U.S.C. 101 because:
The claims, in general, are simply directed to a method/system having a server configured with a software that is programmed to generate an extension carbon report via an interface without any specific and without including additional elements that are sufficient to amount to significantly more than the judicial exception (Abstract idea). The claims even though further define the comprising of a core set of common data schema and message types, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. As a result, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application; the claims thus are not patent eligible.
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.
Claim(s) 1 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Drummond (US 2004/0249732) in view of Sperling et al. (US 2009/0292617).
Drummond discloses a system configured to generate extensible carbon objects comprising input and a memory including non-transitory program memory (FIG. 2, element 226) for storing at least instructions and a processor (FIG. 2, element 220) that is operative to execute instructions that enable actions, the system comprising:
an application programming interface (API) gateway server (FIG. 2, element 110) between a logical layer and a representational layer, the API gateway server being configured with a software program for extensible carbon objects (paragraph [0048]: A server program for controlling the processor to transact the purchase and sale of the emission reduction benefits and retirement guarantees), and third party external systems (FIG. 2, elements 102, 208),
the API gateway configured to allow the user to generate an extensible carbon object representing a carbon instrument (paragraph [0052]: Buyers at workstations 102 may participate in the electronic carbon trading by interacting with the carbon management).
Drummond however does not teach wherein the software program is configured with an extensible Carbon Reporting Markup Language (CarML) configured to interface software with the logical layer, the CarML comprising a core set of common data schema and message types including interface objects.
Sperling et al. discloses a method/system for calculating an estimated cost to offset a calculated carbon emissions of a web server configured with an extensible Carbon Reporting Markup Language comprising a core set of common data schema and message types including interface objects (FIG. 4, element 410: XML (eXtensible Markup Language)).
Therefore, it would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify Drummond’s server to be configured with eXtensible Markup Language to provide XML web service to obtain the carbon offset information as taught by Sperling et al. (paragraph [0043]).
Claim(s) 2-3, 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Drummond (US 2004/0249732) in view of Sperling et al. (US 2009/0292617), and further in view of Oliver Gomila (US 2022/0114562).
Drummond, as modified, discloses the claim invention as discussed above, except further comprising a Life Cycle Inventory (LCI) library database configured to store an environmental embodied CO2e record for a cradle to gate life cycle of an item or process, based on the process inputs and outputs of a Reference Unit and a Defined Unit, wherein the system comprises a public ledger configured to record an extensible carbon object to the LCI, and wherein the system is configured to generate an embodied CO2e record for the cradle to gate life cycle of a product or service, based on the process inputs and outputs of one or more Reference Units and one or more Defined Units, from the LCI.
Oliver Gomila discloses a system for conversion of transaction of carbon units comprising a Life Cycle Inventory (LCI) library database configured to store an environmental embodied CO2e record for a cradle to gate life cycle of an item or process (paragraphs [0048]-[0049]: The product life cycle (cradle to gate, cradle to consumer, cradle to grave) database).
Therefore, it would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify Drummond’s system, as modified, to comprise the cradle to gate cycle database to store carbon emission quantity of all phases of a product/service to gain the accuracy of the carbon emission calculation/estimation as taught by Oliver Gomila (paragraphs [0048]-[0049]).
CONTACT INFORMATION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAM S NGUYEN whose telephone number is (571)272-2151.
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, DOUGLAS RODRIGUEZ, can be reached on 571-431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAM S NGUYEN/ Primary Examiner, Art Unit 2853