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 .
DETAILED ACTION
Response to Amendment
The following is a FINAL Office action in reply to the Amendments and Arguments received on May 22, 2026.
Status of Claims
Claims 1, 11, 15, 17 and 18 have been amended.
Claims 4, 9, 10, 16 and 19 have been cancelled.
Claims 1-3, 5-8, 11-15 and 17-18 are currently pending and have been examined.
Claim Interpretation
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 limitation(s) is/are:
“an IO module,” “an operating-parameter storing module,”, “an energy-consumption factor analyzing module,” “a new-device-parameter importing module,” “a simulating module” in claims 1, 4, 5, 7, 8, 9, and 10
“a cost importing module,” “an investment data storing module,” “a benefit analyzing module” in claim 2
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. Support for these module can be found on pages 6 and 7 of the instant application.
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 § 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 1-3, 5-8, 11-15, 17-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 11-15, 17-18 are drawn to methods while claim(s) 1-3, 5-8, is/are drawn to an apparatus. As such, claims 1-3, 5-8, 11-15, 17-18 are drawn to one of the statutory categories of invention (Step 1: YES).
Step 2A - Prong One:
Claim 11 (representative of independent claim(s) 1) recites the following steps:
An estimating method for continuously operating in an environment based on multiple operating parameters to generate an energy-consumption and carbon-emission result, receiving the multiple operating parameters and corresponding values of each of the operating parameters, storing the corresponding values of the operating parameters according to a time series, and the estimating method comprising:
b) importing the multiple operating parameters;
c) selecting a part of the operating parameters that are relevant to the energy- consumption and carbon-emission result within a specific historical time-period from the multiple operating parameters to be multiple energy-consumption factors;
compute a correlation index between the multiple operating parameters and the energy-consumption and carbon-emission result using at least one of a correlation coefficient analysis, a variance inflation factor, or a collinearity diagnosis, and select the multiple energy-consumption factors from the multiple operating parameters based on the correlation index,
establish an energy-consumption computing model based on corresponding values of the multiple energy-consumption factors with the specific historical time-period and a power-consumed amount of the energy-consumption device within the specific historical time-period by using a linear regression analysis, or a multivariable regression analysis;
d) obtaining multiple performance coefficients,;
e) respectively performing a simulation and calculating an energy-consumption simulated result as if each were operated in the environment within the specific historical time-period in accordance with the multiple performance coefficients and the multiple energy- consumption factors; and
f) performing a replacement-benefit estimating procedure for each of the new devices based on the energy-consumption and carbon-emission result of the energy- consumption device within the specific historical time-period and each energy- consumption simulated result of each of the new devices.
These steps, under its broadest reasonable interpretation, encompass a human manually (e.g., in their mind, or using paper and pen) an estimating method for energy-saving and emission-reduction of an energy-consumption methods, which may estimate the benefit of energy-saving and emission-reduction after replacing current existing energy-consumption devices with new methods (i.e., one or more concepts performed in the human mind, such as one or more observations, evaluations, judgments, opinions), but for the recitation of generic computer components. If one or more claim limitations, under their broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components, then it falls within the "mental processes" subject matter grouping of abstract ideas.
Alternatively, computing a correlation index and establishing an energy-consumption computing model, under its broadest reasonable interpretation, encompass mathematical relationships and/or mathematical formulas or equations. These limitations therefore fall within the “mathematical concepts” subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 11 recites an abstract idea (Step 2A - Prong One: YES).
Independent claim 1 is determined to recite an abstract idea under the same analysis.
Step 2A - Prong Two:
This judicial exception is not integrated into a practical application. The claim(s) recite the additional elements/limitations of:
energy-saving and emission-reduction of energy- 34 consumption device, incorporated with an estimating system at least comprising an energy-consumption device, a server, and a database, the energy-consumption device
the server
energy-consumption device
the database
selecting the energy-consumption device;
multiple new devices
wherein the multiple new devices and the energy-consumption device are devices of same type
wherein the energy-consumption factor analyzing module
a neural modeling procedure,
The requirement to execute the claimed steps/functions listed above is equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. This/these limitation(s) do/does not impose any meaningful limits on producing the abstract idea and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
As discussed above in “Step 2A - Prong 2”, the recited additional element(s) of ”wherein the energy-consumption simulated result of each of the new device is calculated using the energy-consumption computing model” serves merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not qualify as “significantly more5' (see MPEP 2106.05(g, h)).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claim(s) is/are directed to an abstract idea (Step 2A -Prong Two: NO).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above in "Step 2A - Prong 2", the requirement to execute the claimed steps/functions listed above is equivalent to adding the words "apply it" on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as "significantly more" (see MPEP 2106.05 (f)).
As discussed above in “Step 2A - Prong 2”, the recited additional element(s) of ”wherein the energy-consumption simulated result of each of the new device is calculated using the energy-consumption computing model” serves merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not qualify as “significantly more5' (see MPEP 2106.05(g, h)).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claim(s) amount to significantly more than the abstract idea identified above (Step 2B: NO).
Regarding Dependent Claims:
Dependent claims 15 and 17 fail to include any additional elements and are further part of the abstract idea as identified by the Examiner.
Dependent claims 1-3, 5-8, 12-14 and 18 include additional limitations that are part of the abstract idea except for:
a cost importing module
an investment data storing module
a benefit analyzing module
new devices
energy-consumption factor analyzing module
energy-consumption device
by the server
factor analyzing module
an energy-consumption computing model
simulating module
The additional elements of the dependent claims are equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
Prior Art
Examiner conducted a thorough search of the body of available prior art (see attached documents regards PTO-892 Notice of Reference Cited and PE2E Search History). Notably, Examiner discovered several patent literature documents that taught aspects of the invention, but no single disclosure taught “every element required by the claims under its broadest reasonable interpretation” [MPEP § 2131] to make a 35 USC § 102 rejection. Further, Examiner considered the individual elements of the recited claims taught across the prior art cited below, but did not find it obvious to combine such disclosures [MPEP § 2142] to make a 35 USC § 103 rejection. In particular, Botich et al., U.S. Publication No. 2009/0281677 discloses in paragraph [0013], “determining energy usage of the first energy consuming device used for producing the first product, transmitting first data representing the energy usage of the first energy consuming device are producing the first product to a first server and further manufacturing the first product with a second energy consuming device” but is silent with respect to “select a part of the operating parameters that are relevant to the energy-consumption and carbon-emission result within a specific historical time-period from the multiple operating parameters based on the corresponding values to be multiple energy-consumption factors;” as required by the independent claim. Additionally, Winter (2011/0166959) teaches collecting information from a plurality of devices and producing information indicating what the new output would be if the energy consuming device was replaced but is silent with respect to “perform a simulation and calculate an energy-consumption simulated result of each of the new devices”
Response to Arguments
Applicant's arguments with respect to the rejection under 35 USC 101 have been fully considered but they are not persuasive.
Applicant Argues: The independent claims 1 and 11 of the present application have already limited an energy-consumption device, an 10 module, and a server comprising multiple modules. In the claimed invention, these components are utilized to adopt specific algorithms to achieve specific technical benefits as provided, therefore, these components should be regarded as specific hardware, rather than mere generic computers.
Examiner respectfully disagrees. The claimed subject matter at best is using a general purpose computer as a tool, but fails to provide any improvement to said computer. The Examiner respectfully notes that the needed "improvement" in terms of patent eligibility is not one resulting from programming a generic processor to perform a different (or even improved) function, but rather a specific and actual improvement to the machine itself is needed. Based on these findings of fact, the Examiner contends the claims are indeed directed towards an abstract idea and Applicant's arguments to the contrary are considered to be non-persuasive.
The Examiner notes that the claimed subject matter could clearly be performed by a human user via a manual and/or mental process, or with pen and paper, and performing said operations on a general-purpose computer at best ties the abstract idea(s) to an online environment. And while implementing the claimed subject matter on a computer may speed up the process, these gains in speed are at best from the capabilities of a general-purpose computer, rather than the patented method itself. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed Cir. 2012).
Applicant Argues: The above description clearly shows that the energy-consumption factor analyzing module of the claimed invention executes specific algorithm(s) to establish the energy-consumption computing model, this operation definitely cannot be down in human's brain through using a paper and a pen, let alone being down within a reasonable time period. Therefore, the energy-consumption factor analyzing module and the function being performed by the energy-consumption factor analyzing module should not be regarded as mental process.
Examiner respectfully disagrees. Please see the above response.
Applicant Argues: The applicant submits that, through the aforementioned algorithms being executed, the technical issue that existing methods cannot accurately predict the energy consumption of new energy-consuming devices in specific environments can be addressed by the claimed invention, thereby achieving a specific technical benefic (namely, accurately estimating energy-saving benefits).
Applicant’s alleged improvement is not directed to an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem. A showing that a claim is directed to any improvement does not automatically mean a claim is patent eligible (e.g., an improved business function or an improved idea itself is not patent eligible). In this case, performing an estimating procedure is an abstract idea, and an “improved” way of executing that is, if anything, an improvement to the idea itself.
Applicant Argues: The applicant submits that the amended claims of the present application have now limited the modules to execute specific algorithm(s), thereby the server becomes a specific hardware rather than a generic com put er, and the specific algorithm ( s) cannot be performed in human's brain through using a paper and a pen within a reasonable time period.
Examiner respectfully disagrees. The relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea (i.e. mathematical relationships or equation and an idea of itself) on a generic computer. They do not.
Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. All of the recited computer functions (e.g. importing data, selecting data, computing a correlation index, establishing the broadly cited model) are well-understood, routine, conventional activities previously known to the industry. In short, each step does no more than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of petitioner's method add nothing that is not already present when the steps reconsidered separately. Viewed as a whole, petitioner's method claims simply recite the concept of gathering data, analyzing the data, simulating and calculating and making prediction about the replacement benefit.
The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. That is not enough to transform an abstract idea into a patent-eligible invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RASHIDA R SHORTER whose telephone number is (571)272-9345. The examiner can normally be reached Monday- Friday from 9am- 530pm. 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, Jessica Lemieux can be reached at (571) 270-3445. 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.
/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626
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