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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to because:
In Fig. 2, the reference numerals D1b does not line up with the associated arrow.
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.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of a mental process without significantly more. The claim(s) recite(s) the following “configured to” language “acquire performance data regarding performance of the plurality of hydrogen production devices and tentative operation plan data regarding a tentative operation plan tentatively prepared for the operation plan”, “acquire performance prediction data by predicting the performance of the plurality of hydrogen production devices during the planning target period based on the performance data and tentative operation plan data acquired by the acquisition unit”, and “acquire the operation plan by correcting the tentative operation plan based on the performance prediction data acquired by the prediction of the prediction unit” which amounts to generic data acquisition to each general unit without more This judicial exception is not integrated into a practical application because each unit merely to the ability to acquire data. The decisions based on the data in the claim are nothing more than generic mental processes of acquiring the data and performing judgement based on the date ad described by MPEP 2106.04(a)(2) Section III A “In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions.”. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims attempt to integrate these the acquisition of the date and judgement of the date onto generic “units” and nothing more. The instant specification recites each unit is an arithmetic unit, i.e. computer and storage – see instant specification [0021]. The claims do not integrate this language into specific programming or the like to enable a unit to perform the functions as claimed. In other words, each “unit” merely acquires data. Each step, acquiring, predicting, and correcting are mental processes each can be performed by a human mind when provided data, analyzing the date, and correcting for a desired output. A simplistic example would be acquiring whether a hydrogen system is “on”, determining if it should be “on” or “off” based on the needs of a practitioner, and then turning it off if hydrogen is no longer needed to be produced. Thus, each acquisition performed by each unit does not amount to significantly more as required by MPEP 2106.
Claim Interpretation – 35 U.S.C. 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are indicated below with the generic placeholder underlined, transition word bolded, and function italicized
In claim 1:
an acquisition unit configured to acquire performance data regarding performance of the plurality of hydrogen production devices and tentative operation plan data regarding a tentative operation plan tentatively prepared for the operation plan
a prediction unit configured to acquire performance prediction data by predicting the performance of the plurality of hydrogen production devices during the planning target period based on the performance data and tentative operation plan data acquired by the acquisition unit
a planning unit configured to acquire the operation plan by correcting the tentative operation plan based on the performance prediction data acquired by the prediction of the prediction unit
In claim 4:
a renewable energy power generator for generating and outputting power from renewable energy
In claim 6:
a control unit configured to control the operation of the hydrogen system based on the acquired operation plan prepared by the planning unit
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b)
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.
Claim 1 recites the following limitations which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
“an acquisition unit”
“a prediction unit”
“a planning unit”
However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
Applicant’s specification at [0021] state the planning device includes “arithmetic units (computers) and storage and the arithmetic unit is configured to function as each part using programs stored by the storage”. Thus, the claim language is deemed to invoke computer implemented means-plus-function limitation in accordance with MPEP 2181 II B, as portion of which is cited below:
“To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999); Rain Computing, Inc. v. Samsung Electronics America Co., 989 F.3d 1002, 1007-8, 2021 USPQ2d 284 (Fed. Cir. 2021).”
“The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241. ("Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’" (quoting WMS Gaming, 184 F.3d at 1349, 51 USPQ2d at 1391.)) An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or "in any other manner that provides sufficient structure." Finisar, 523 F.3d at 1340, 86 USPQ2d at 1623; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385, 100 USPQ2d 1690, 1697 (Fed. Cir. 2011); In re Aoyama, 656 F.3d at 1306, 99 USPQ2d at 1945”
Thus, the instant specification amount to a general purpose computer implemented function without an explanation of appropriate programming to accomplish the tasks.
As to the acquisition unit at [0023] of the as filed specification, the mere listing of possible types of data is not sufficient to establish the structure associated with the means plus function. [0024] discloses using a demand prediction model created by learning past demand, but does not disclose any discernable method or structure associated with the model outside of generic computer implemented means plus function.
As to the prediction unit disclosed at [0026]-[0029], the instant specification discloses what the data does or how it is uses, but fails to disclose associated structure with the function as claimed outside of a generic implemented computer means plus function. The disclosure describes generic process relationship, i.e. operation time and efficiency, without describing the associated structure in determining processing the function as claimed.
As to the planning unit disclosed at [0032]-[0036], the instant specification discloses using the same prediction model as the prediction unit and further making corrections without disclosure of the structure associated with making the correction. The instant specification discloses use of a mixed-integer linear programming problem but fails to disclose the specific types of relationships between all the possible the combinations of planning. The specification does not relate this to any particular structure or specific special purpose computer.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagino (US 2020/0226482 A1) .
As to claim 1, Nagino discloses a hydrogen system operation planning device, which prepares an operation plan for operating a plurality of hydrogen production devices during a planning target period in a hydrogen system including the plurality of hydrogen production devices that produce hydrogen by being supplied with power (Title “planning apparatus…hydrogen production method…” Fig. 1 and Fig. 2), the hydrogen system operation planning device comprising:
an acquisition unit configured to acquire performance data regarding performance of the plurality of hydrogen production devices and tentative operation plan data regarding a tentative operation plan tentatively prepared for the operation plan (Fig. 1 #10 “obtaining unit” [0018] “The obtaining unit 10 obtains parameters, learning data, and the like used for learning. The obtaining unit 10 obtains, for example, learning data including an ideal operating plan of the electrolytic apparatus 1000 in a predetermined target period in the future and values of factors available before the target period. The target period is a predetermined period in the future. The target period may be a period including the first period. The obtaining unit 10 may obtain, as a first factor, a parameter related to the electricity rate available before the target period. In addition, the obtaining unit 10 may obtain, as a second factor, a parameter related to the electrolytic apparatus 1000 available before the target period.” Emphasis added to identify operation plan and performance data);
a prediction unit configured to acquire performance prediction data by predicting the performance of the plurality of hydrogen production devices during the planning target period based on the performance data and tentative operation plan data acquired by the acquisition unit (#40 with specific #130 and 220 [0027] [0030] “The second factor includes at least one of operating data of the electrolytic apparatus 1000…” and [0039] “The second model update unit 220 updates the operating plan generation model by learning.” = tentative operation plan), and
a planning unit configured to acquire the operation plan by correcting the tentative operation plan based on the performance prediction data acquired by the prediction of the prediction unit (#50 [0043] “The operating plan generation unit 50 generates an operating plan of the electrolytic apparatus 1000 in the first period in the future based on the transition of the future electricity rate predicted by the electricity rate prediction unit 130. The operating plan generation unit 50 has a first operating plan generation unit 230.” = the operation plan…based on performance prediction data…”).
As to claim 2, Nagino further discloses wherein the prediction unit acquires the performance prediction data by predicting a deterioration state in which the plurality of hydrogen production devices deteriorate during the planning target period. ([0074] via considering the operating state due to maintenance)
As to claim 3, Nagino further discloses the tentative operation plan data are data regarding the tentative operation plan prepared based on a prediction result of a hydrogen demand amount during the planning target period.([0067] “supply plan”).
As to claim 4, Nagino further discloses wherein
the hydrogen system includes
a renewable energy power generator for generating and outputting power from renewable energy ([0005] “…weather and wind power.” [0028]) ,
the plurality of hydrogen production devices are configured to produce hydrogen using the power output from the renewable energy power generator ([0024] “plurality of electrolyte apparatus..”), and
the tentative operation plan data are data regarding the tentative operation plan that is prepared based on a prediction result of the power output by the renewable energy power generator during the planning target period ([0028] “power supply amount…”).
As to claim 5, Nagino further discloses the tentative operation plan data are data regarding the tentative operation plan that is prepared in response to demand response. ([0052] via fluctuations in the storage amount and supply plan, [0128]).
As to claim 6, Nagino further discloses the acquired operation plan prepared by the planning unit. (Fig. 1 #60 [0137] “Thereby, the control unit 60 can control electrolytic apparatus 1000 according to the operating plan”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 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, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LOUIS J RUFO/Primary Examiner, Art Unit 1795
Prosecution Insights