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
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 1-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-26 are directed to a system, method, or product which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent method Claim 1 as the claim that represents the claimed invention for analysis and is similar to independent system Claim 14. Claim 1 recites the limitations of determining a unit price for each of said financial contracts, the unit price being based at least on a market price for a contract-defined quantity of the produced- energy product in a predetermined market; establishing, on a computer system, a plurality of said financial contracts; receiving, on the computer system, an order to purchase one or more of said financial contracts; and performing, by the computer system, one or more market-linked activities associated with the contract-defined quantity of the produced-energy product when one of said financial contracts is purchased.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. Trading financial contracts related to produced-energy product recites a fundamental economic practice. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The computer system in Claim 1 is just applying generic computer components to the recited abstract limitations. The pricing module, trading module, and procurement module in Claim 14 appears to be just software. Claim 14 is also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
This judicial exception is not integrated into a practical application. In particular, the claims only recite computer system in Claim 1 and a pricing module, trading module, and procurement module in Claim 14. The computer hardware is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore claims 1 and 14 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Applicant’s specification pg. 4, lines 5-10 and 22-26 about implementation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus claims 1 and 14 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2-13 and 15-26 further define the abstract idea that is present in their respective independent claims 1 and 14 and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. Claims 2-5 and 15-18 further define the market-linked activity; Claims 6-12 and 19- 25 further define the storage of the produced-energy; Claims 13 and 26 further define the produced energy. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the claims 2-13 and 15-26 are directed to an abstract idea. Thus, the claims 1-26 are not patent-eligible.
With respect to claims 14-26, data structures not claimed as embodied in computer-readable media are descriptive material per se and are not statutory because they are not capable of causing functional change in the computer. See, e.g., Warmerdam, 33 F.3d at 1361, 31 USPQ2d at 1760. Such claimed data structures do not define any structural and functional interrelationships between the data structure and other claimed aspects of the invention which permit the data structure’s functionality to be realized. In the instant claims, the claims are drawn to a system, yet there is no structure actually defining what the system encompasses, and therefore the claims are considered to be non-statutory.
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 14-26 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.
The preamble of claim 14 sets forth a system claim. However, it is unclear how the system of claim 14 functions when the "system" is only recited in its broadest sense. Specifically there is no specific structure set forth delineating exactly what accomplishes the steps of the claim. It is unclear if applicant is seeking to claim every possible system that could perform the steps of claim 14, or if applicant is seeking to claim a specific system. Appropriate correction is required.
Claims 15-26 are rejected by virtue of their dependency.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7-12 and 20-25 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 7-12 are directed towards the storage and converting of the produced-energy product, however, this fails to limit the scope of a, “method for trading financial contracts related to a produced-energy product” as the storage of the energy product and the conversion of the energy-product does not change the function of the underlying contract. Claims 20-25 recited the similar system claims however fail to set forth any structure for storage or preforming of said system. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. PGPub No. 2010/0332373 (Crabtree et al. ‘373).
Re Claim 1: Crabtree et al. ‘373 disclose a computer-implemented method for trading financial contracts related to a produced-energy product, the method comprising: determining a unit price for each of said financial contracts, the unit price being based at least on a market price for a contract-defined quantity of the produced- energy product in a predetermined market (Figure 20; paragraphs [0165, 0176]); establishing, on a computer system, a plurality of said financial contracts; receiving, on the computer system, an order to purchase one or more of said financial contracts (Figure 20; paragraphs [0165, 0176]); and performing, by the computer system, one or more market-linked activities associated with the contract-defined quantity of the produced-energy product when one of said financial contracts is purchased (Figure 20; paragraphs [0165, 0176]).
Re Claim 2: Crabtree et al. ‘373 discloses the method substantially as claimed, in supra, including that the market-linked activity comprises establishing a right for the holder of one of the financial contracts to purchase the contract-defined quantity of the produced-energy product at a predefined future date at a defined price (Figure 20, paragraphs [0165, 0176]).
Re Claim 3: Crabtree et al. ‘373 discloses the method substantially as claimed, in supra, including that the market-linked activity comprises designating a stored contract-defined quantity of the produced-energy product as being exclusively associated with the financial contract (paragraphs [0075, 0153, 0165, 0184]).
Re Claim 4: Crabtree et al. ‘373 discloses the method substantially as claimed, in supra, including that the market-linked activity further comprises acquiring the designated contract-defined quantity (paragraphs [0075, 0153, 0165, 0184]).
Re Claim 5: Crabtree et al. ‘373 discloses the method substantially as claimed, in supra, including that the market-linked activity further comprises producing the designated contract-defined quantity (paragraphs [0075, 0153, 0165, 0184]).
Re Claim 6: Crabtree et al. ‘373 discloses the method substantially as claimed, in supra, including that the contract- defined quantity is acquired and stored no later than when the financial contract is established (paragraphs [0075, 0153, 0165, 0184]).
Re Claim 7: Crabtree et al. ‘373 discloses the method substantially as claimed, in supra, including that the produced- energy product is stored in a system configured to facilitate providing energy to an economic agent and/or a distribution network of the predetermined market (paragraphs [0075, 0153, 0165, 0184]).
Re Claim 8: Crabtree et al. ‘373 discloses the method substantially as claimed, in supra, including that storage of the produced-energy product comprises converting at least a portion of it to chemical energy (paragraph [0096]).
Re Claim 9: Crabtree et al. ‘373 discloses the method substantially as claimed, in supra, with the exception of explicitly including that storage of the produced-energy product comprises converting at least a portion of it to mechanical potential energy. It is noted that although Crabtree et al. ‘373 shows “renewable or low-carbon sources”, Crabtree et al. ‘373 is considered to be able to function as an “converting at least a portion of it to mechanical potential energy” as called for in the instant claims. Further, the recitations “converting at least a portion of it to mechanical potential energy” in lines 2-3 of claim 9, are functional recitations. While Crabtree et al. ‘373 does not explicitly show the apparatus in these configurations, a reference needs only be capable of being in these configurations in order to “read on” the claim language. In this case, the renewable or low-carbon sources could include converting at least a portion of it to mechanical potential energy for increased versatility of the energy options offered (paragraphs [0012, 0078, 0143, 0171]).
Re Claim 10: Crabtree et al. ‘373 discloses the method substantially as claimed, in supra, with the exception of explicitly including that the mechanical potential energy comprises gravitational energy. It is noted that although Crabtree et al. ‘373 shows “renewable or low-carbon sources”, Crabtree et al. ‘373 is considered to be able to function as an “the mechanical potential energy comprises gravitational energy” as called for in the instant claims. Further, the recitations “the mechanical potential energy comprises gravitational energy” in lines 2-3 of claim 10, are functional recitations. While Crabtree et al. ‘373 does not explicitly show the apparatus in these configurations, a reference needs only be capable of being in these configurations in order to “read on” the claim language. In this case, the renewable or low-carbon sources could include the mechanical potential energy comprises gravitational energy for increased versatility of the energy options offered (paragraphs [0012, 0078, 0143, 0171]).
Re Claim 11: Crabtree et al. ‘373 discloses the method substantially as claimed, in supra, with the exception of explicitly including that the mechanical potential energy is stored in a compressed fluid. It is noted that although Crabtree et al. ‘373 shows “renewable or low-carbon sources”, Crabtree et al. ‘373 is considered to be able to function as an “the mechanical potential energy is stored in a compressed fluid” as called for in the instant claims. Further, the recitations “the mechanical potential energy is stored in a compressed fluid” in lines 2-3 of claim 11, are functional recitations. While Crabtree et al. ‘373 does not explicitly show the apparatus in these configurations, a reference needs only be capable of being in these configurations in order to “read on” the claim language. In this case, the renewable or low-carbon sources could include the mechanical potential energy is stored in a compressed fluid for increased versatility of the energy options offered (paragraphs [0012, 0078, 0143, 0171]).
Re Claim 12: Crabtree et al. ‘373 discloses the method substantially as claimed, in supra, with the exception of explicitly including that storage of the produced-energy product comprises converting at least a portion of it to thermal energy. It is noted that although Crabtree et al. ‘373 shows “renewable or low-carbon sources”, Crabtree et al. ‘373 is considered to be able to function as an “converting at least a portion of it to thermal energy” as called for in the instant claims. Further, the recitations “converting at least a portion of it to thermal energy” in lines 2-3 of claim 12, are functional recitations. While Crabtree et al. ‘373 does not explicitly show the apparatus in these configurations, a reference needs only be capable of being in these configurations in order to “read on” the claim language. In this case, the renewable or low-carbon sources could include converting at least a portion of it to thermal energy for increased versatility of the energy options offered (paragraphs [0012, 0078, 0143, 0171]).
Re Claim 13: Crabtree et al. ‘373 discloses the method substantially as claimed, in supra, including the produced- energy product is electricity (paragraph [0075]).
Re Claims 14-26: System claims 14-26 are substantially similar to previously rejected method claims 1-13, respectively, and are therefore considered to be rejected here using the same art and rationale.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDSAY M MAGUIRE whose telephone number is (571)272-6039. The examiner can normally be reached Monday to Friday 8:30 to 5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached on (571) 270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Lindsay Maguire
4/4/25
/LINDSAY M MAGUIRE/Primary Examiner, Art Unit 3619