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 Objections
Claims 19-20, 23-25, 27-28, 30-31, 33, and 36 are objected to because of the following informalities:
Claim 24, the phrase “determine a power consumption required for a future operation of the home network” is grammatically awkward. Suggested language is “determine a required amount of power consumption for a future operation of the home network.”
Claim 28 needs a comma after “claim 25”;
Claim 31, the phrase “the power interval corresponding to the existing power grid” is awkward. Examiner suggests deleting “corresponding to the existing power grid”;
Claim 36, the phrase “the EMS storing renewable energy produced by one of a solar power plant and a wind power plant, the solar plant and the wind power plant outside the home network” is grammatically awkward;
Claims 23, 30 and 36, the phrases “which the communication unit receives from the electronic device”, “received from the electronic device” and “received through the electronic device” are seemingly used interchangeably. The Applicant is advised to use terminology consistently throughout the claims;
Claims 20, 27 and 33, the location based subject matter of “location”, “point” and “distance for a location” are seemingly used interchangeably. The Applicant is advised to use terminology consistently throughout the claims; and
Claims 19, 23, 25, 30 and 31, the terms “a plurality of electronic devices” and “an electronic device” are used interchangeably. The Applicant is advised to use terminology consistently throughout the claims.
Appropriate corrections are recommended.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 25 and 27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 25, the phrase “in response to the measured amount of power being a predetermined relation to the predetermined power interval” in unclear and grammatically awkward. Therefore, it is unclear what specific relationship between the measured amount of power and the predetermined power interval is required.
With respect to claim 27, the phrase “user input point of the smart meter” is unclear. Therefore, it is unclear what the term “point” is actually referring to in the context of the claim.
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 19-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,740,602. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims merely define obvious, patentably indistinct variations of the claimed invention claimed in claim 1-18 of U.S. Patent No. 11,740,602, such that the pending claims are anticipated by, or at least would have been considered obvious over, those patented claims.
A side-by-side claim comparison chart for the pending claims (left column) versus the patented claims (right column) is provided below for the readers convenience:
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333
645
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391
371
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94
637
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64
374
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58
624
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34
374
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87
628
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61
374
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107
628
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82
369
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93
649
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68
370
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618
616
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69
366
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491
362
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90
638
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65
370
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63
617
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48
367
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36
621
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33
635
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36
371
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90
621
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66
369
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119
630
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82
372
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381
609
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312
380
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81
372
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92
634
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66
373
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92
613
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68
370
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88
618
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50
372
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88
618
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37
376
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48
374
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170
628
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154
370
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Examiner Notes
Applicant is advised that, if the above mentioned claim objections are corrected, the issues under 112(b) for claims 25 and 27 are properly addressed, and an appropriate Terminal Disclaimer is filed to overcome the nonstatutory double patenting rejection, favorable consideration will be given to the claims, this being based on the independent claims, as best understood, reciting a smart meter home network in which power use in compared to a set power interval, or range, tied to a power rate system, and the smart meter then requesting renewable energy from an EMS and/or renewable energy source for delivery into the home network, in combination with the other claimed features and or limitations as claimed. The prior art of record fails to teach or adequately suggest a combination of references that teach or suggest this particular combination of features as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD D HARTMAN JR whose telephone number is (571)272-3684. The examiner can normally be reached M-F 8:30 - 4:30 EST.
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, Mohammad Ali can be reached at (571) 272-4105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RONALD D HARTMAN JR/Primary Patent Examiner, Art Unit 2119 April 20, 2026
/RDH/
Prosecution Insights