DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
This action is in reply to the remarks/arguments filed for Application 18/168,245 filed on 7 May 2026.
Claims 9-12 have been added.
Claims 1-12 are currently pending and have been examined.
Response to Arguments
A. Claim Rejections - 35 USC § 101:
Claims 1-12 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
1. Applicant argues that the claims have not been considered as a whole.
Examiner respectfully disagrees. Applicant's argument is not persuasive, at least because the Examiner set forth various specific limitations that recite the abstract idea. The claim as a whole merely describes how to generally apply the abstract idea/concept identified. The claim recites the additional elements: ““information processing apparatus”, “smart grid” – using a computer device to perform the additional element. However, the computer device is recited at a high-level of generality and is merely invoked as a tool (intermediary) to perform the steps recited such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Simply implementing the abstract idea on a computer is not a practical application of the abstract idea. Moreover, nothing in the steps involve an improvement to the conventional functioning of a computer or to any other technology, applying or using a judicial exception with, or, use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing aside from merely using a computer as a tool to perform an abstract idea while also generally linking the use of the judicial exception to a particular technological environment or field of use. As such, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is therefore directed to an abstract idea.
2. Applicant further argues that the claims recite a specific technical solution.
Examiner respectfully disagrees. The improvements touted by Applicant, at best, reflect an improvement to a process that is the abstract idea itself, not an improvement in the way computer components carry out their basic functions. This is not sufficient for patent eligibility Applicant’s argument is therefore unpersuasive.
3. Applicant further argues that the claims provide an improvement to smart grid technology.
Examiner respectfully disagrees. The Federal Circuit has explained that there is a fundamental
difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other. See Enfish, 822 F.3d at 1335-36. To be "directed to a patent-eligible improvement to computer functionality," the claim "must be directed to an improvement to the functionality of the computer or network platform itself." Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) ( citing Enfish, 822 F.3d at 1336-39). Here, Applicant presents no persuasive argument or reasoning to support its position that the
additional elements recited introduce an improvement in the functioning of a computer. Instead, the
additional elements merely reflect the implementation of the abstract idea in a particular technological environment. Applicant’s argument is therefore unpersuasive.
4. Applicant further argues that the claims are analogous to eligible claims in DDR Holdings and BASCOM.
Examiner respectfully disagrees as the rejected claims do not adhere to the same fact pattern seen in DDR Holdings and BASCOM.
In the decision regarding DDR Holdings, the patent at issue provided an Internet-based solution to solve a problem unique to the Internet that (1) did not foreclose other ways of solving the problem, and (2) recited a specific series of steps that resulted in a departure from the routine and conventional sequence of events after the click of a hyperlink advertisement. Id. at 1256–57, 1259. The patent claims here do not address problems unique to the Internet, so DDR has no applicability.
In the decision regarding Bascom, while the court agreed that the additional elements were generic computer, network, and Internet components that did not amount to significantly more when considered individually, when combined, an inventive concept was found in the non-conventional and non-generic arrangement of the additional elements, i.e., the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user (note that the term “inventive concept” is often used by the courts to describe additional element(s) that amount to significantly more than a judicial exception).
The elements of the instant process, when taken alone, each execute in a manner routinely and conventionally expected of these elements. The elements of the instant process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. There are no improvements to another technology or technical field, no improvements to the functioning of the computer itself, transformation or reduction of a particular article to a different state or thing or any other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as a result of performing the claimed method. Applicant’ argument is therefore unpersuasive.
5. Applicant further argues that the claims are tied to a particular machine (Smart Grid).
Examiner respectfully disagrees. Applicant’s argument is unpersuasive because it conflates organizing human activity performed using a particular machine (e.g., “computer”) with a technological solution. Many organizing human activity processes may be implemented in a particular technological environment, but the involvement of technology does not make them technological improvements. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014) (cautioning that "not all claims purporting to address Internet-centric challenges are eligible for patent"); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (holding that the addition of novel or non-routine components did not turn the abstract idea of using advertising as an exchange or currency into something concrete); MPEP § 2106.04(a)(2)(II).
6. Applicant further argues that the new dependent claims recite additional technical improvements.
Examiner respectfully disagrees. Applicant’s arguments for dependent claims 9-12 are not persuasive for the same reasons set forth with respect to the independent claims. Claims 9-12 merely recites the use of an existing information processing apparatus (“computer”) to carry out the functions according to predetermined rules and/or instructions attributed to the claims – e.g., control charging and discharging of electricity storage devices connected to the smart grid, increase electrical storage capacity according to an amount of electric energy outputted, control usage of capacity allocated to a user, discharge electric power, and not any particular inventive technology that is an improvement and/or improved for carrying or performing those functions.
The rejection is therefore maintained.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claim 1 is directed towards facilitating a commercial interaction (e.g., comparing and matching buyers and sellers dealing with power supply) in order to support a trading transaction. Claim 1 is directed to the abstract idea of using rules and/or instructions to facilitate a transaction in an automatic manner comprising the steps of merely receiving (“acquiring an electric power profile”), transmitting (“providing the electric power profile”, “making an application …”, “sending … a profile”), and processing (“approving … the application made”, “supplying”) data/information associated with the transaction, which is grouped under the certain methods of organizing human activity – fundamental economic principles, practices or concepts; sales activity; following set of instructions; commercial interactions (business relations); managing personal behavior of relationships or interactions between people (including social activities, teachings, following rules or instructions) grouping, in prong one of step 2A.
Claim 1 recites: “a process of recording profiles of the plurality of users;
a process of acquiring an electric power profile of electric power that is suppliable by one of the users who have the power that can be supplied;
a process of providing the electric power profile and supply conditions for supplying power to another user, wherein the supply conditions include information that can identify the industry or business content of the user who wishes to receive the power supply;
a process of making an application, to the one of the users having the suppliable electric power, to receive supply of the electric power, the application made by the other user;
a process of sending the profile of the user who applied in the application process, including information that can identify the industry or business content of the user who applied, to the user
a process of automatically approving, without necessitating any user operation by the user who received the application, the application made by the user who applied if the user who applied satisfies a predetermined supply condition based on the profile of the user who applied; and
a process of supplying, in response to the process of automatically approving, the electric power of the user who received the application to the user who applied.”
Linking and matching a seller or supplier with a buyer or purchaser of a good or service is an existing commercial practice and/or concept that is well known. Based on the underlined elements above, abstract ideas and/or concepts are identified. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A, the additional elements of the claim such as a “information processing apparatus”, “smart grid”, represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally apply the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) implement the acts of using rules and/or instructions to facilitate a transaction in an automatic manner comprising the steps of merely receiving (“acquiring an electric power profile”), transmitting (“providing the electric power profile”, “making an application …”, “sending … a profile”), and processing (“approving … the application made”, “supplying”) data/information associated with the purchase transaction.
When analyzed under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of using rules and/or instructions to facilitate a transaction in an automatic manner comprising the steps of merely receiving (“acquiring an electric power profile”), transmitting (“providing the electric power profile”, “making an application …”, “sending … a profile”), and processing (“approving … the application made”, “supplying”) data/information associated with the transaction using computer technology. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Hence, claim 1 is not patent eligible.
In the instant case, claim 6 is directed towards facilitating a commercial interaction (e.g., comparing and matching buyers and sellers dealing with power supply) in order to support a trading transaction. Claim 6 is directed to the abstract idea of using rules and/or instructions to facilitate a transaction in an automatic manner comprising the steps of merely receiving (“acquiring an electric power demand profile”), transmitting (“providing the electric power profile”, “making an application …”, “sending … a profile”), and processing (“approving … the application made”, “supplying”) data/information associated with the transaction, which is grouped under the certain methods of organizing human activity – fundamental economic principles, practices or concepts; sales activity; following set of instructions; commercial interactions (business relations); managing personal behavior of relationships or interactions between people (including social activities, teachings, following rules or instructions) grouping, in prong one of step 2A.
Claim 6 recites: “record profiles of the plurality of users;
acquire an electric power demand profile of electric power that is suppliable by one of the users who have the power that can be supplied;
provide the electric power profile and supply conditions for supplying power to another user, wherein the supply conditions include information that can identify the industry or business content of the user who wishes to receive the power supply;
transmit an application for supplying electric power to meet the electric power demand to the user having suppliable power, the application made by the other user;
send the profile of the user who applied, including information that can identify the industry or business content of the user who applied, to the user having suppliable power;
automatically approve without any user operation, the application made by the user who applied, if the electric power profile of the user who applied satisfies a predetermined supply condition based on the electric power profile of the user who applied and send a notification of the result of the automatic approving to the user who applied; and
supply, in response to the approval, the electric power of the user having suppliable power to the user who applied.”
Linking and matching a seller or supplier with a buyer or purchaser of a good or service is an existing commercial practice and/or concept that is well known. Based on the underlined elements above, abstract ideas and/or concepts are identified. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A, the additional elements of the claim such as a “information processing apparatus”, “smart grid”, represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally apply the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) implement the acts of using rules and/or instructions to facilitate a transaction in an automatic manner comprising the steps of merely receiving (“acquiring an electric power profile”), transmitting (“providing the electric power profile”, “making an application …”, “sending … a profile”), and processing (“approving … the application made”, “supplying”) data/information associated with the transaction.
When analyzed under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of using rules and/or instructions to facilitate a transaction in an automatic manner comprising the steps of merely receiving (“acquiring an electric power profile”), transmitting (“providing the electric power profile”, “making an application …”, “sending … a profile”), and processing (“approving … the application made”, “supplying”) data/information associated with the transaction using computer computer-related technology and/or devices that merely perform as designed to function. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Hence, claim 6 is not patent eligible.
Dependent claims 2-5 and 7-12 add further details and contain limitations that narrow the scope of the invention. However, these details do not result in significantly more than the abstract idea itself. As explained in the December 16, 2014 Interim Eligibility Guidance from the USPTO (in reference to the BuySAFE, Inc. v. Google, Inc. decision), further narrowing the details of an abstract idea does not change the § 101 analysis since a more narrow abstract idea does not make it any less abstract.
Viewed individually and in combination, these additional elements do not provide meaningful limitations to transform the abstract idea such that the claims amount to significantly more than the abstraction itself.
Accordingly, the present pending claims are not patent eligible and are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kozakura et al. (US 2020/0175615 A1) discloses an electric power trade apparatus and method. In Kozakura An electric power trade apparatus includes a memory and a processor. The processor is configured to perform determining whether it is possible to make a purchase concerning a purchase amount indicated in purchase requests received from respective purchasers of electric power having
received a power-saving request, on the basis of the purchase amount and a sellable amount indicated in sale requests received from respective sellers of electric power, upon receiving the purchase requests, transmitting information for enabling any given one of the purchasers to make a reply to the power-saving request upon determining that purchase concerning a corresponding one of the purchase requests is possible, and allocating, to the sale requests, respective sale amounts a sum of which is equal to the purchase amount, on the basis of the purchase amount and the sellable amount after the information is transmitted.
Claims 1-12 are rejected.
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Clifford Madamba whose telephone number is 571-270-1239. The examiner can normally be reached on Mon-Thu 7:30-5:00 EST Alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon, can be reached at 571-272-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLIFFORD B MADAMBA/Primary Examiner, Art Unit 3692
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