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 .
Status of the Claims
Claims 1-14 were previously pending. Claims 1 and 11 were amended and new claims 15-19 were added in the reply filed September 4, 2024. Claims 1-19 are currently pending.
Response to Arguments
Applicant's arguments filed with respect to the rejection made under § 101 have been fully considered but they are not persuasive. Applicant again argues the PTAB decision in Ex Parte Smith (Remarks, 10), but it remains unclear how it has a similar fact pattern or why it controls the analysis more so than Federal Circuit precedent which establishes that "[i]dentifying, analyzing, and presenting certain data to a user is not an improvement specific to computing." International Business Machines Corp. v. Zillow Group, Inc., Fed. Cir. No. 2021-2350, Oct. 17, 2022, pg. 8.
"Accordingly, newly-amended independent claim 1 of the present application now requires that only one of a macro influence and a micro influence is generated, communicated between devices, and displayed." Remarks, 12 (emphasis in original). As above, presenting particular information tailored to a user is not an improvement to technology. "We have also held that improving a user's experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality. For example, in Trading Techs. I, we held patent ineligible claims directed to a computer-based method for facilitating the placement of a trader's order. Trading Techs. Int'l, Inc. v. IBG LLC, 921 F.3d 1084, 1092-93 (Fed. Cir. 2019) (Trading Techs. I). Although the claimed display purportedly 'assist[ed] traders in processing information more quickly,' we held that this purported improvement in user experience did not 'improve the functioning of the computer, make it operate more efficiently, or solve any technological problem. Id.; see also Trading Techs. Int'l, Inc. v. IBG LLC, 921 F.3d 1378, 1381, 1384-85 (Fed. Cir. 2019) (Trading Techs. II) (holding that claims 'focused on providing information to traders in a way that helps them process information more quickly' did not constitute a patent-eligible improvement to computer functionality)." Customedia Technologies v. Dish Network, 951 F.3d 1359, 1365 (Fed. Cir. 2020).
Although Applicant argues that the claimed invention "enables reduction of the information processing amount and also reducing network congestion" (Remarks, 13) there is no support for this on the record. Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). "The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology." MPEP 2106.04(d)(1).
Finally, Applicant argues that "the use of the claimed features provides specific technological improvements over conventional information processing methods and systems for generating and outputting content related to a CO2 reduction effect." Remarks, 14. Nowhere does Applicant establish that generating and outputting content related to a CO2 reduction effect is a computer-specific capability rather than an abstract idea. A process that starts with data, applies an algorithm to the data, and then ends with a new form of data is abstract. Recognicorp, LLC v. Nintendo Co, Ltd., 855 F.3d 1322 (Fed. Cir. 2017). Accordingly, the rejection is maintained.
Applicant's arguments filed with respect to the rejection made under § 103 have been fully considered but are not persuasive. Applicant argues that Kamel does not disclose displaying only one of a macro or micro influence (Remarks, 17). However, this is taught by Amram as set forth in the rejections and the response to arguments of the prior action. With respect to the importance being based on actual CO2 reductions affect (Remarks, 17) this is taught by Kamel. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Moreover, Amram discloses that the recommendation service also incorporates "historical utility consumption profile" of the user (¶ 0077). Accordingly, the rejections are maintained.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the description lacks antecedent basis for the claim term "prohibited."
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 17 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 17 recites "wherein in the generating, when the behavioral characteristic of the user gives more importance to the private benefit, the content is prohibited from including information that indicates a climate change mitigation effect." While the disclosure supports selectively or preferentially displaying certain information, it does not specifically support or describe any mechanism for prohibiting certain information from being presented to the user. "Any negative limitation or exclusionary proviso must have basis in the original disclosure." MPEP 2173.05(i).
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 18-19 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.
Claim 18 recites "the behavioral characteristic is expressed in one of three or more levels that include: a level that indicates the private benefit is given more importance; a level that indicates the social benefit is given more importance; and a level that indicates both the social benefit and the private benefit are given importance, in the analyzing, a level of the behavioral characteristic of the user is determined to be one of the three or more levels, based on the CO2 reduction effect of the user, and in the generating, the content generated differs depending on the level determined." Claims 19 recites "the behavioral characteristic is expressed in one of three or more levels that include: a level that indicates the private benefit is given more importance; a level that indicates the social benefit is given more importance; and a level that indicates both the social benefit and the private benefit are given importance, and a level of the behavioral characteristic indicates a current behavioral characteristic level of the user relative to a past behavioral characteristic level of the user."
These limitations appear to be in conflict with the requirements of claim 1 from which it depends, which requires that "the analysis result includes a result of determining which one of the private benefit or the social benefit is given more importance by the user." Due to this apparent conflict, the public is not properly apprised as to what would constitute infringement of these claims.
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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-19, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., an abstract idea) without significantly more.
MPEP 2106 Step 2A – Prong 1:
The claims recite an abstract idea reflected in the representative functions of the independent claims—including:
obtaining history information about a use history of a home electric appliance by a user;
calculating a CO2 reduction effect of the user based on the history information obtained;
analyzing a behavioral characteristic of the user based on the history information obtained, the behavioral characteristic being a characteristic related to at least one of a private benefit or a social benefit;
generating content related to the CO2 reduction effect, based on an analysis result of the behavioral characteristic; and
outputting the content generated, wherein
in the analyzing, which one of the private benefit or the social benefit is given more importance by the user is determined based on the CO2 reduction effect,
the analysis result includes a result of determining which one of the private benefit or the social benefit is given more importance by the user,
in the generating, as the content that is generated depending on the result of determining which one of the private benefit or the social benefit is given more importance by the user,
content for presenting only a macro influence out of the macro influence and a micro influence is generated when the behavioral characteristic of the user gives more importance to the social benefit, and
content for presenting only the micro influence out of the macro influence and the micro influence is generated when the behavioral characteristic of the user gives more importance to the private benefit, and
the content outputted in the outputting effectively encourages the user to reduce CO2 emissions by presenting the user with content corresponding to the result of determining which one of the private benefit or the social benefit is given more importance by the user by controlling to make a display corresponding to the result of determining which one of the private benefit or the social benefit is given more importance by the user.
These limitations taken together qualify as a method of organizing human activities because they recite collecting, analyzing, and outputting information regarding the energy consumption behavioral habits of people and the benefits that accrue from them (both financial and social in nature) (i.e., in the terminology of the 2019 Revised Guidance, commercial interactions (including sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities and following rules or instructions)). Additionally, the claims recite certain mental processes (e.g., a person observing user appliance consumption history and carbon reduction effect, evaluating it, and arriving at a judgment on a content of the reduction effect). Moreover, the user benefit history and carbon reduction effect analysis recited encompasses mathematical calculations that result in numerical results (see, e.g., the results of the analysis in Figs. 4 & 9).
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The elements merely serve to provide a general link to a technological environment (e.g., computers and the Internet) in which to carry out the judicial exception (generic display device in claims 1 & 12, communication between an information processing device performing the method and a terminal device in claims 1 & 12, information processing device with what appear to be software modules and communication between the outputter and a terminal device in claim 11, non-transitory computer-readable recording medium having recorded thereon a computer program for causing a computer to execute the information processing method in claim 12—all recited at a high level of generality).
Although they have and execute instructions to perform the abstract idea itself (e.g., modules, program code, etc. to automate the abstract idea), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." Aside from such instructions to implement the abstract idea, they are solely used for generic computer operations (e.g., receiving, storing, retrieving, transmitting data), employing the computer as a tool. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.") (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,1256 (Fed. Cir. 2014)) (emphasis added).
The claims only manipulate abstract data elements into another form. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools to improve the functioning of the abstract idea identified above. Looking at the additional limitations and abstract idea as an ordered combination and as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Rather than any meaningful limits, their collective functions merely provide generic computer implementation of the abstract idea identified in Prong One. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2 (i.e., they amount to nothing more than a general link to a particular technological environment and instructions to apply it there). Moreover, the additional elements recited are known and conventional computing elements (generic display device in claims 1 & 12, communication between an information processing device performing the method and a terminal device in claims 1 & 12, information processing device with what appear to be software modules and communication between the outputter and a terminal device in claim 11, non-transitory computer-readable recording medium having recorded thereon a computer program for causing a computer to execute the information processing method in claim 12—see published Specification ¶¶ 0058-60, 63, 122 describing these at a high level of generality and in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy the statutory disclosure requirements).
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these basic computer functions).
"The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent Claims Step 2A:
The limitations of the dependent claims but for those addressed below merely set forth further refinements of the abstract idea without changing the analysis already presented (i.e., they merely narrow the abstract idea without adding any new additional elements beyond it). Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement a narrowed abstract idea. They do not add any additional elements not already analyzed and the abstract idea has the same ineligible relationship when viewed in combination as the independent claims do. Accordingly, they are not directed to significantly more than the exception itself for the same reasons as the independent claims, and are not eligible subject matter under § 101.
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 1-4 and 7-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kamel, et al., U.S. Pat. Pub. No. 2013/0134962 (Reference A of the PTO-892 part of paper no. 20240826) in view of Amram, et al., U.S. Pat. Pub. No. 2011/0282808 (Reference A of the PTO-892 part of paper no. 20250424).
As per claim 1, Kamel teaches an information processing method comprising:
obtaining history information about a use history of a home electric appliance by a user (¶ 0040; see also ¶ 0030—residence, ¶ 0011—appliances);
calculating a CO2 reduction effect of the user based on the history information obtained (¶¶ 0081-82);
analyzing a behavioral characteristic of the user based on the history information obtained, the behavioral characteristic being a characteristic related to at least one of a private benefit or a social benefit (¶¶ 0081-82);
generating content related to the CO2 reduction effect, based on an analysis result of the behavioral characteristic (Fig. 8);
outputting, via communication between an information processing device performing the method and a terminal device, the content generated (Fig. 8; ¶¶ 0039, 47), and
the content outputted in the outputting effectively encourages the user to reduce CO2 emissions by presenting the user with content by controlling a display device to make a display (Fig. 8; ¶ 0039).
Kamel does not explicitly teach in the analyzing, which one of the private benefit or the social benefit is given more importance by the user is determined based on the CO2 reduction effect, the analysis result includes a result of determining which one of the private benefit or the social benefit is given more importance by the user, in the generating, as the content that is generated depending on the result of determining which one of the private benefit or the social benefit is given more importance by the user; content for presenting only a macro influence out of the macro influence and a micro influence is generated when the behavioral characteristic of the user gives more importance to the social benefit, and content for presenting only the micro influence out of the macro influence and the micro influence is generated when the behavioral characteristic of the user gives more importance to the private benefit, and that the content presented is corresponding to the result of determining which one of the private benefit or the social benefit is given more importance by the user, and that the display is also corresponding to the result of determining which one of the private benefit or the social benefit is given more importance by the user. However, this is taught by Amram (¶¶ 0061, 76-77, 82, 84). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Amram—namely, to tailor the presentation of data so that it better corresponds to the motivations of the user (¶ 0082). Moreover, this is merely a combination of old elements in the art of presenting emissions data to users. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 2, Kamel in view of Amram teaches claim 1 as above. Kamel further teaches calculating a macro influence indicating an influence when the CO2 reduction effect calculated is extended to a predetermined area in which a plurality of persons exist (¶¶ 0075, 82), and a micro influence indicating an influence on the user based on the CO2 reduction effect (¶ 0082), wherein the content generated in the generating is content for presenting at least one of the macro influence or the micro influence (Fig. 8).
As per claim 3, Kamel in view of Amram teaches claim 2 as above. Kamel further teaches the behavioral characteristic is a characteristic related to which of the private benefit and the social benefit is given importance (¶¶ 0071-74—examiner is interpreting the user subscribing to the service and opting in to the data being reported as it being "given importance"), and the content generated in the generating is: content emphasizing the macro influence out of the macro influence and the micro influence when the behavioral characteristic of the user gives importance to the social benefit ((¶¶ 0081-82; Fig. 8—carbon reductions); and content emphasizing the micro influence out of the macro influence and the micro influence when the behavioral characteristic of the user gives importance to the private benefit ((¶¶ 0081-82; Fig. 8—energy savings).
As per claim 4, Kamel in view of Amram teaches claim 2 as above. Kamel further teaches the predetermined area is a predetermined geographical region (¶¶ 0030, 116).
As per claim 7, Kamel in view of Amram teaches claim 2 as above. Kamel further teaches the macro influence includes a result of determination of whether a target set in the predetermined area for mitigating climate change is achievable (¶¶ 0076, 87, 126).
As per claim 8, Kamel in view of Amram teaches claim 2 as above. Kamel further teaches the micro influence includes an amount of a monetary gain received by the user (¶ 0115; Fig. 8—energy savings).
As per claim 9, Kamel in view of Amram teaches claim 1 as above. Kamel further teaches the CO2 reduction effect includes a CO2 reduction amount, and in the analyzing, the behavioral characteristic is analyzed based on the CO2 reduction amount calculated (¶ 0115; Fig. 8—carbon reductions).
As per claim 10, Kamel in view of Amram teaches claim 1 as above. Kamel further teaches the analyzing includes calculating a score of the CO2 reduction effect based on the history information obtained, and analyzing the behavioral characteristic based on the score calculated (¶¶ 0049, 118; Fig. 8).
As per claim 11, Kamel in view of Amram teaches an information processing device comprising: modules performing the steps of analogous claim 1 (¶ 0048, see also citations above).
As per claim 12, Kamel in view of Amram teaches a non-transitory computer-readable recording medium having recorded thereon a computer program for causing a computer to execute the information processing method according to claim 1 (¶¶ 0048-49, see also citations above).
As per claim 13, Kamel in view of Amram teaches claim 1 as above. Kamel further teaches in the analyzing a score of the CO2 reduction effect is calculated for each action of the user to reduce CO2 emissions, based on the history information obtained, and the behavioral characteristic is analyzed based on the score calculated for each action of the user (¶¶ 0049, 75, 118; Fig. 8).
As per claim 14, Kamel in view of Amram teaches claim 1 as above. Kamel further teaches in the analyzing, a level of the behavioral characteristic is determined to be one of three or more levels, and the content generated in the generating is different depending on the level of the behavioral characteristic determined (¶¶ 0090, 95-96).
As per claim 15, Kamel in view of Amram teaches claim 1 as above. Amram further teaches in the analyzing, which one of the private benefit or the social benefit is given more importance by the user is determined based on: whether an integrated value of a CO2 reduction amount is at least a predetermined value; or whether a CO2 reduction amount for a specific action is at least a predetermined value (¶¶ 0067-70—benchmarks); which would have been obvious to incorporate for the same reasons as the elements in claim 1 above.
As per claim 16, Kamel in view of Amram teaches claim 1 as above. This claim presents two conditional limitations that are also set forth as alternative limitations: wherein in the analyzing, when an integrated value of a CO2 reduction amount is at least a predetermined value or when a CO2 reduction amount for a specific action is at least a predetermined value, the user is determined to give more importance to the social benefit, and when the integrated value of the CO2 reduction amount is less than the predetermined value or when the CO2 reduction amount for the specific action is less than the predetermined value, the user is determined to give more importance to the private benefit. As the already cited art teaches the invention absent these conditional limitations, it is also sufficient to render this claim obvious due to its scope including the possibility that these values are not met.
As per claim 17, Kamel in view of Amram teaches claim 1 as above. Amram further teaches in the generating, when the behavioral characteristic of the user gives more importance to the private benefit, the content is prohibited from including information that indicates a climate change mitigation effect (¶¶ 0061, 76-77, 82, 84); which would have been obvious to incorporate for the same reasons as the elements in claim 1 above. Moreover, it would have been obvious to remove any other content regarding the climate change mitigation effect if it were not desired. See Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) (omission of an element and its function is obvious if the function of the element is not desired or required).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kamel, et al. in view of Amram, et al. as applied to claim 2 above, further in view of Dembo, et al., U.S. Pat. Pub. No. 2013/0246133 (Reference B of the PTO-892 part of paper no. 20240826).
As per claim 5, Kamel in view of Amram teaches claim 2 as above. Kamel does not explicitly teach the predetermined area is a predetermined country; which is taught by Dembo (¶ 0114; see also Fig. 2—72a CANADA). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Dembo—namely, to view carbon mitigation activities at a different level of granularity (see ¶ 0116). Moreover, this is merely a combination of old elements in the art of monitoring carbon mitigation activities (see Abst.). In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 6, Kamel in view of Amram teaches claim 2 as above. Kamel does not explicitly teach the predetermined area is the earth; which is taught by Dembo (¶ 0114; see also Fig. 2—72a WORLD) and would have been obvious to incorporate for the same reasons as in claim 5 above.
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 DANIEL VETTER whose telephone number is (571)270-1366. The examiner can normally be reached M-F 9:00-6:00.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628