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 .
Acknowledgements
The reply filed on 11/26/2025 is acknowledged. Claims 1 and 7 have been amended. Claims 3 and 9 were previously canceled. Claims 1-2, 4-8, and 10-12 are pending and being presented for examination.
Response to Arguments
Applicant’s arguments, see pgs. 5-6, filed 11/26/2025, with respect to the 35 U.S.C. 112(a) have been fully considered and are persuasive. The 35 U.S.C. 112(a) of claims 1-2, 4-8, and 10-12 has been withdrawn. As such, “the amount of electricity incoming” shall be interpreted to be “incoming electricity usage.” Furthermore, with respect to the 35 U.S.C. 112(a) rejection directed to “a predictive analytics module to…calculate a total savings,” the Applicant has failed to address the rejection. However, even though the specification discloses “The DLT 218 is utilized to calculate the actual energy savings versus the predicted energy usage…,” the specification also discloses “AI and machine learning algorithms 220 can then be applied to analyze the data 216 stored in the DLT 218 providing predictive analytics to the client…” in [0050]. [0049] also discloses “The different calculated between the actual energy usage and the predicted energy usage is then also [be] verified and validated.” As such, it appears the specification suggests that any analysis of the collected data, e.g. calculate a total savings, is performed by the predictive analytics module 220, wherein the predictive analytics module 220 obtains such data stored in the DLT 218. Therefore, there is at least implicit disclosure for the predictive analytics module to calculate a total savings.
Applicant’s amendments to claim 1 have rendered the 35 U.S.C. 112(b) rejection to claims 1-2 and 4-6, set forth in Non-Final Rejection 08/26/2025, moot. Therefore, the 35 U.S.C. 112(b) of claims 1-2 and 4-6 has been withdrawn.
Applicant's arguments on pgs. 7-9, filed 11/26/2025, with respect to the 35 U.S.C. 103 rejection of claims 1-2, 4-8, and 10-12, set forth in the Non-Final Rejection 08/26/2025, have been fully considered but they are not persuasive.
Applicant’s remarks state –
“Applicant respectfully submits that the above-noted explanation of motivation to combine uses improper hindsight in order to modify Abbott three different ways with three different and conclusory reasons and is improper…. Further, the improper hindsight of modifying the references "in incentivize investments in clean energy" and "incentivize consumers to invest in energy-efficient equipment" is particularly apparent in view of Applicant's own specification… Thus, the very issues disclosed by Applicant are used to provide the alleged motivation to modify the Abbott reference three different ways. This is impermissible hindsight.”
In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The Examiner has cited the motivation to combine, gathered from the current prior art of record, on the bottom of pgs. 19-21 in the Non-Final Rejection 08/26/2025. Such knowledge from the prior art is considered “knowledge within the level of ordinary skill at the time the claimed invention was made.” The Applicant has failed to address why the cited motivations from the prior art are improper and therefore cannot be persuasive. Claims 1-2, 4-8, and 10-12 stand rejected under 35 U.S.C. 103.
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 1-2, 4-8, and 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-8, and 10-12 of copending Application No. 18/416,181 in view of Hanson “Meter Collars for Distributed Generation,” in view of Abbott et al. U.S. 2020/0175504 (herein referred to as “Abbott”), and further in view of Crawford et al. U.S. 2016/0004798 (herein as “Crawford”).
Instant Application 18/099,284
Copending Application 18/416,181
Claim 1. A computer-implemented distributed ledger technology ("DLT") module system based at least in part upon electricity usage, the module system comprising:
instructions to cause at least one server device and related data processing and storage apparatus to operate over a peer-to-peer network to provide a system comprising:
an electricity tracker module comprising a physical monitoring device connected
via a collar to an Advanced Metering Infrastructure (AMI) meter that records a transaction comprising an amount of electricity incoming from a power grid and an amount of energy savings from energy savings equipment, along with environmental and other attributes of such energy;
wherein the transaction includes identifying data and the electricity tracker module functions as a node on a DLT network that executes a software verification algorithm that includes a cryptographic hash value based at least in part upon transaction identifying data;
a predictive analytics module to compare incoming electricity against the amount of energy savings from the energy savings equipment and calculate a total savings;
a timer module to monitor the electricity tracker module through a defined term;
and
an invoice module for generating an invoice for the calculated total savings through the
defined term.
Claim 1. A computer-implemented distributed ledger technology ("DLT") system based at least in part upon energy savings, the system comprising:
instructions to cause at least one server device and related data processing and
storage apparatus to operate over a peer-to-peer network to provide a system comprising:
a carbon credit tracker module, comprising a physical monitoring device connected to an Advanced Metering Infrastructure (AMI) meter, that records a transaction comprising an amount of energy incoming from a power grid and an amount of energy savings from energy savings equipment, environmental attributes, and other attributes of the amount of energy savings;
wherein the transaction includes identifying data and the carbon tracker module sends such data to a DLT network after verification and validation utilizing Artificial Intelligence (AI) and/or Machine Learning (ML); and
wherein the DL T network comprises a plurality of nodes that execute a software verification algorithm that includes a cryptographic hash value based at least in part upon transaction identifying data;
a predictive analytics module to compare the energy incoming against the amount of energy savings expected from the energy savings equipment, utilizing AI and ML algorithms applied to third party data for verification and validation of the energy generation or savings;
a timer module to monitor the carbon tracker module through a defined term; and a pricing module for generating a value for carbon credits or offsets through the defined term.
Claim 2
Claim 2
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7. A computer-implemented method of operating a distributed ledger technology ("DLT") token exchange system based at least in part upon electricity usage, the method comprising:
executing instructions to cause at least one server device and related data processing and storage apparatus to operate over a peer-to-peer network to provide a method comprising:
recording, with an electricity tracker module comprising a physical monitoring device connected via a collar to an Advanced Metering Infrastructure (AMI) meter, a transaction comprising an amount of energy usage from a power grid and an amount of energy savings from energy savings equipment, along with environmental and other attributes of such energy;
wherein the transaction includes identifying data and the electricity tracker module functions as a node on a DLT network that executes a software verification algorithm that includes a cryptographic hash value based at least in part upon transaction identifying data;
comparing, with a predictive analytics module, the amount of energy usage
against the amount of energy savings from the energy savings equipment and calculating a total savings;
monitoring, with a timer module, the electricity tracker module through a defined term; and
generating an invoice, with an invoice module, for the calculated total savings through the defined term.
Claim 7. A computer-implemented method of operating a distributed ledger technology
("DLT") token exchange system based at least in part upon energy usage, the method comprising:
executing instructions to cause at least one server device and related data processing and storage apparatus to operate over a peer-to-peer network to provide a method comprising:
recording, with a carbon tracker module, comprising a physical monitoring device connected to an Advanced Metering Infrastructure (AMI) meter, a transaction comprising an amount of energy incoming from a power grid and an amount of energy savings from energy savings equipment, environmental attributes, and other attributes of the amount of energy savings;
wherein the transaction includes identifying data and the carbon tracker module sends such data to a DLT network after verification and validation utilizing Artificial Intelligence (AI) and/or Machine Learning (ML); and
wherein the DLT network comprises a plurality of nodes that execute a software verification algorithm that includes a cryptographic hash value based at least in part upon transaction identifying data;
comparing, with a predictive analytics module, the energy incoming against the amount of energy savings from the energy savings equipment;
timing, with a timer module, to monitor the carbon tracker module through a defined term; and
generating an invoice, with an invoice module, for energy saved through the defined term.
Claim 8
Claim 8
Claim 10
Claim 10
Claim 11
Claim 11
Claim 12
Claim 12
Although the claims at issue are not identical, they are not patentably distinct from each other because they recite similar distinguishing features as highlighted above. Regarding terms that are not exactly the same, one of ordinary skill in the art would recognize that energy and electricity are analogous terms. Carbon tracker module and electricity tracker module, albeit having different labels, are functionally the same, as highlighted above.
Claims 5 and 11 of the instant application recite “the DLT network” and claims 5 and 11 of the copending application recite “a cloud network.” [0051] of the instant application suggests that DLT and cloud are synonymous, e.g. “each tracker 208 is a node that feeds generation and energy related data 216 through a cellular or other connection to the DLT 218 stored in the cloud.” Therefore, although the terms may differ between the instant application and the copending application, the instant specification suggests that the differing terms between the applications are similar, if not the same, to one another.
Claim 7 of the instant application recites “monitoring” while claim 7 of the copending application recites “timing…to monitor.” Although “monitoring” and “timing” are not the same terminology, the positively claimed action of “to monitor” in the copending application would reasonably read upon the “monitoring” step of the instant application.
Claims 1 and 7 of the copending application 18/416,181 disclose all of the limitations of claims 1 and 7 of the instant application, respectively, except for “a physical monitoring device connected via a collar,” “the electricity tracker module functions as a node on a DLT network,” “calculating a total savings,” and “generating an invoice for the calculated total savings.”
Hanson discloses
a physical monitoring device connected via a collar pg. 2 – What Is A Meter Collar? – “A meter collar is a device that is inserted between the residential utility electrical meter and the meter socket,” Fig. 2 illustrates a meter collar that connects the residential utility electrical meter, i.e. physical monitoring device, to the meter socket.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1 and 7 of copending application 18/416,181 with the teachings of a collar in Hanson to arrive at the instant claims. One would be motivated to make this combination because a meter collar creates a new interface between the meter and socket, and creates space to install other devices for the utility’s benefit Hanson, pg. 2, What Is A Meter Collar?.
Abbott discloses
the electricity tracker module functions as a node on a DLT network [0035] – “module 104 itself may also be used as a node on the DLT network 112.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1 and 7 of copending application 18/416,181 with the teachings of a module functioning as a node on the DLT network in Abbott to arrive at the instant claims. Modifying the carbon tracker module to function as a node on the DLT network would yield predictable results since the carbon tracker module would function the same as a node on the DLT network as it does individually.
Crawford discloses
calculating a total savings Fig. 7, [0061]-[0067] – the cost savings 440 is computed based on comparing various data that includes amount of energy required to cool or heat (e.g. CDD/HDD), i.e. amount of electricity incoming, and data of the new equipment (e.g. SEER), including energy savings, i.e. amount of energy savings;
generating an invoice for the calculated total savings [0060] – “The resultant cost savings is then incorporated into the terms of the energy savings warranty (i.e. invoice),” [0054] – “the warranted energy savings 160 provides that, as evaluated on an annual basis for three years after the installation of the new equipment (i.e. the defined term).”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1 and 7 of copending application 18/416,181 with the teachings of calculating and generating an invoice for total cost savings in Crawford to arrive at the instant claims. One would be motivated to make this combination to incentivize consumers to invest in energy-efficient equipment Crawford, [0006]-[0007].
This is a provisional nonstatutory double patenting rejection.
Claim Interpretation
The instant specification discloses in [0018] – “Each module represents a light node on the system.” Therefore, the “predictive analytics module,” “timer module,” and “invoice module” in claims 1 and 7 are “light nodes” since the claims do not further limit these particular modules to anything other than what is defined in the instant specification. A “light node” is known in blockchain technology to be software. It is software that can be run on hardware, but a “light node” itself is software (see https://www.ledger.com/academy/glossary/light-node, “Light nodes are simply pieces of software…”). Therefore, after further consideration, the claims do not invoke 35 U.S.C. 112(f) since the aforementioned modules are interpreted to be software components only.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-2, 4-8, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Abbott et al. U.S. 2020/0175504 (herein referred to as “Abbott”) in view of Hanson “Meter Collars for Distributed Generation,” in view of Ashley et al. U.S. 2020/0148072 (herein referred to as “Ashley”), and further in view of Crawford et al. U.S. 2016/0004798 (herein as “Crawford”).
Re Claims 1 and 7, Abbott discloses a computer-implemented method of operating a distributed ledger technology ("DLT") token exchange system based at least in part upon electricity usage [0016], the method comprising:
executing instructions to cause at least one server device and related data processing and storage apparatus to operate over a peer-to-peer network [0007] to provide a method comprising:
recording, with an electricity tracker module comprising a physical monitoring device connected […] to an Advanced Metering Infrastructure (AMI) meter, a transaction comprising an amount of electricity incoming (energy usage in claim 7) from a power grid […] [0029] – “Electrical energy generated by the electrical generators 102 is measured by a module 104 (i.e. electricity tracker module) embodiments of which may be an ANSI certified physical monitoring device connected to any standard AMI meter which monitors and stores the measurements of the amount of the flow of electricity measured on a utility feed or interconnect line 106 by such standard AMI meter,” the amount of flow of electricity/electrical energy generated is analogous to energy usage;
wherein the transaction includes identifying data [0016] and the electricity tracker module functions as a node on a DLT network [0035] – “module 104 itself may also be used as a node on the DLT network 112” that executes a software verification algorithm that includes a cryptographic hash value based at least in part upon transaction identifying data [0016].
a predictive analytics module, a timer module, and an invoice module [0010] – “system architecture encompasses light nodes…(or “module”) is responsible for collecting time-stamped data (e.g., kWh produced or consumed, and geolocation data) from a meter and working with other light nodes to validate the data,” [0014] – “Each module represents a light node on the system. There are multiple modules that interact with each other and confirm the validity of the transactions on the system by validating the time stamps between nodes.”
However, Abbott does not expressly disclose
a physical monitoring device connected via a collar.
Hanson discloses meter collars for distributed generation. Specifically, Hanson discloses
a physical monitoring device connected via a collar pg. 2 – What Is A Meter Collar? – “A meter collar is a device that is inserted between the residential utility electrical meter and the meter socket,” Fig. 2 illustrates a meter collar that connects the residential utility electrical meter, i.e. physical monitoring device, to the meter socket.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Abbott’s DLT token exchange system with the teachings of a collar in Hanson. The combination teaches a physical monitoring device that is connected via a collar to the AMI meter. One would be motivated to make this combination because a meter collar creates a new interface between the meter and socket, and creates space to install other devices for the utility’s benefit Hanson, pg. 2, What Is A Meter Collar?.
However, Abbott in view of Hanson do not explicitly teach
recording an amount of energy savings from energy savings equipment, along with environmental and other attributes of such energy;
monitoring the electricity tracker module through a defined term.
Ashley discloses a system and method for tracking energy credits using blockchain. Specifically, Ashley discloses
recording an amount of energy savings from energy savings equipment, along with environmental and other attributes of such energy Fig. 1, [0019], [0023] – tracking credits from generation in a blockchain, and clean energy/energy-efficient assets are inspected and verified, and their verification will be tied to all future data submissions associated with the assets;
monitoring the electricity tracker module through a defined term [0031] – “smart meter interval data is fed into a cloud database,” [0024] – predetermined time intervals dictate when the energy data is uploaded.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Abbott in view of Hanson’s DLT token exchange system with the teachings of energy credit accounting and management using blockchain in Ashley. The combination teaches modules or light nodes that facilitate in tracking energy credits generated by an asset owner over a period of time. One would be motivated to make this combination to incentivize investments in clean energy, while also providing transparency, security, and simple reconciliation and auditability for reductions in the associated time and cost directed to managing energy-related credits Ashley [0008], [0029].
However, Abbot in view of Hanston and Ashley do not explicitly teach
comparing the amount of electricity incoming against the amount of energy savings from the energy savings equipment and calculating a total savings;
generating an invoice for the calculated total savings through the defined term.
Crawford discloses determining the performance of an environmental system using a predictive model. Specifically, Crawford discloses
comparing the amount of electricity incoming against the amount of energy savings from the energy savings equipment and calculating a total savings Fig. 7, [0061]-[0067] – the cost savings 440 is computed based on comparing various data that includes amount of energy required to cool or heat (e.g. CDD/HDD), i.e. amount of electricity incoming, and data of the new equipment (e.g. SEER), including energy savings, i.e. amount of energy savings;
generating an invoice for the calculated total savings through the defined term [0060] – “The resultant cost savings is then incorporated into the terms of the energy savings warranty (i.e. invoice),” [0054] – “the warranted energy savings 160 provides that, as evaluated on an annual basis for three years after the installation of the new equipment (i.e. the defined term).”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Abbott in view of Hanson and Ashley’s DLT token exchange system with the teachings of comparing, calculating, and generating an invoice for total cost savings in Crawford to arrive at the claimed invention. One would be motivated to make this combination to incentivize consumers to invest in energy-efficient equipment Crawford, [0006]-[0007].
Re Claims 2 and 8, Abbott in view of Hanson, Ashley, and Crawford teach the DLT system and method of claims 1 and 7, and Abbott in view of Hanson, Ashley, and Crawford further teach wherein the cryptographic hash value is additionally based upon at least one prior verified transaction Abbott, [0023].
Re Claims 4 and 10, Abbott in view of Hanson, Ashley, and Crawford teach the DLT system and method of claims 1 and claim 7, and Abbott in view of Hanson, Ashley, and Crawford further teach wherein the physical monitoring device comprises an American National Standards Institute (ANSI) certified physical monitoring device Abbott [0029] – “module may be an ANSI certified physical monitoring device.”
Re Claims 5 and 11, Abbott in view of Hanson, Ashley, and Crawford teach the DLT system and method of claims 1 and claim 7, and Abbott in view of Hanson, Ashley, and Crawford further teach wherein the electricity tracker module communicates with the DLT network through a cellular network connection Abbott [0029] – “Embodiments of module 104 can use public or other cellular communications 108.”
Re Claims 6 and 12, Abbott in view of Hanson, Ashley, and Crawford teach the DLT system and method of claims 1 and claim 7, and Abbott in view of Hanson, Ashley, and Crawford further teach wherein the invoice module for generating an invoice comprises a smart contract Abbott [0030] – smart contracts are used within/across the DLT network.
Conclusion
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.
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/C.D./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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