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 Claims
The reply filed on 03/16/2026 is acknowledged. Claims 3 and 9 were previously canceled. Claims 1-2, 4-8, and 10-12 are pending and being presented for examination.
Response to Arguments
Applicant's arguments filed 03/16/2026 have been fully considered, but they are not persuasive.
In response to Applicant’s remark that the term “module(s)” is a long accepted and understood term in the software and computer-based arts, the requirement for a computer-implemented 35 U.S.C. 112(f) claim limitation is that the specification must disclose an algorithm for performing the claimed specific computer function. In other words, the “structure” for performing the claimed function(s) is the special purpose computer programed to perform the disclosed algorithm see MPEP 2181(II)(B). Merely stating that a module is a known term in the computer arts does not provide any evidence that the instant specification discloses an algorithm for performing the claimed function.
In response to Applicant’s remark citing MPEP 2173.01, this section enables applicants to be their own lexicographers, but does not shield the claims from being required to meet the statutory standards of 35 U.S.C. 112(a) and (b), amongst others, or from being interpreted to invoke 35 U.S.C. 112(f). Furthermore, within the same MPEP section 2173.01(II), it states – “examiners should determine whether each limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph or not. If the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the claim limitation must "be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. 112(f) and pre-AIA 35 U.S.C. 112, sixth paragraph; see also In re Donaldson Co., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1849 (Fed. Cir. 1994) (en banc) ("[W]e hold that paragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.").”
In response to the Applicant’s remarks that the disclosure also includes numerous schematic diagrams and flow charts illustrating the network environment and data flow, generically referring to all of the figures in the submitted drawings does not provide sufficient evidence that the instant specification discloses an algorithm for performing each of the claimed functions. One of ordinary skill in the art would not be able to reasonably conclude from any of the figures what the required steps are for performing each of the claimed computer functions.
In response to Applicant’s remarks regarding the 35 U.S.C. 112(a) rejection, when a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under section 112(a). See MPEP 2163.03(VI). Applicant’s remarks regarding the 35 U.S.C. 112(a) rejection have not sufficiently pointed out the algorithm for performing the claimed specific computer functions. 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 (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." See Finisar. It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See Vasudevan Software, Inc. The remarks generically refer to all of the submitted figures and accompany text without specifically pointing out which figure(s) and/or text(s) serves as the algorithm for each of the claimed functions. The disclosed schematic diagrams do not constitute an algorithm because they do not sufficiently disclose how the claimed specific computer functions are performed. Schematic diagrams are not “a finite sequence of steps for solving a logical or mathematical problem or performing a task.”
In response to Applicant’s remarks regarding the 35 U.S.C. 103 rejection, Applicant’s remarks are broad in nature and have not sufficiently provided evidence as to why Abbott’s (Abbott et al. U.S. 2020/0175504) teachings do not read upon the claimed invention. Abbott discloses a module 104, which may be an ANSI certified physical monitoring device connected to any standard AMI meter, i.e. carbon credit tracker module comprising a physical monitoring device connected to an Advanced Metering Infrastructure (AMI) meter, and the module monitors and stores the measurements of the amount of the flow of electricity measured on a utility feed or interconnect line 106, i.e. an amount of energy incoming from a power grid. Prior art Ashley (Ashley et al. U.S. 2020/0148072) was used to teach “recording an amount of energy savings from energy savings equipment, environmental attributes, and other attributes of the amount of energy savings.” However, Applicant’s remarks failed to address why Ashley’s teachings do not read upon the claimed invention and/or why the combination of Abbott in view of Ashley would be improper. Therefore, claims 1-2, 4-8, and 10-12 stand rejected under 35 U.S.C. 103 over Abbott et al. U.S. 2020/0175504, in view of Szczepanik et al. U.S. 2022/0198304, and further in view of Ashley et al. U.S. 2020/0148072.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-8, and 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-8, and 10-12 of copending Application No. 18/099,284 in view of Szczepanik et al. U.S. 2022/0198304.
Instant Application 18/416,181
Copending Application 18/099,284
Claim 1. A computer-implemented distributed ledger technology ("DLT") system based at least in part upon energy savings, the system comprising:
instructions to cause at least one server device and related data processing and
storage apparatus to operate over a peer-to-peer network to provide a system
comprising:
a carbon credit tracker module, comprising a physical monitoring device connected to an Advanced Metering Infrastructure (AMI) meter, that records a transaction comprising an amount of energy incoming from a power grid and an amount of energy savings from energy savings equipment, environmental attributes, and other attributes of the amount of energy savings;
wherein the transaction includes identifying data and the carbon tracker module sends such data to a DLT network after verification and validation utilizing Artificial Intelligence (AI) and/or Machine Learning (ML); and
wherein the DL T network comprises a plurality of nodes that execute a software verification algorithm that includes a cryptographic hash value based at least in part upon transaction identifying data;
a predictive analytics module to compare the energy incoming against the amount of energy savings expected from the energy savings equipment, utilizing AI and ML algorithms applied to third party data for verification and validation of the energy generation or savings;
a timer module to monitor the carbon tracker module through a defined term; and
a pricing module for generating a value for carbon credits or offsets through the defined term.
Claim 1. A computer-implemented distributed ledger technology ("DLT") module system based at least in part upon electricity usage, the module system comprising:
instructions to cause at least one server device and related data processing and storage apparatus to operate over a peer-to-peer network to provide a system comprising:
an electricity tracker module comprising a physical monitoring device connected
via a collar to an Advanced Metering Infrastructure (AMI) meter that records a transaction comprising an amount of electricity incoming from a power grid and an amount of energy savings from energy savings equipment, along with environmental and other attributes of such energy;
wherein the transaction includes identifying data and the electricity tracker module
functions as a node on a DLT network that executes a software verification algorithm that includes a cryptographic hash value based at least in part upon transaction identifying data;
a predictive analytics module to compare incoming electricity against the amount of energy savings from the energy savings equipment and calculate a total savings;
a timer module to monitor the electricity tracker module through a defined term;
and
an invoice module for generating an invoice for the calculated total savings through the
defined term.
Claim 2
Claim 2
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7. A computer-implemented method of operating a distributed ledger technology
("DLT") token exchange system based at least in part upon energy usage, the method
comprising:
executing instructions to cause at least one server device and related data processing and storage apparatus to operate over a peer-to-peer network to provide a method comprising:
recording, with a carbon tracker module, comprising a physical monitoring device connected to an Advanced Metering Infrastructure (AMI) meter, a transaction comprising an amount of energy incoming from a power grid and an amount of energy savings from energy savings equipment, environmental attributes, and other attributes of the amount of energy savings;
wherein the transaction includes identifying data and the carbon tracker module sends such data to a DLT network after verification and validation utilizing Artificial Intelligence (AI) and/or Machine Learning (ML); and
wherein the DLT network comprises a plurality of nodes that execute a software verification algorithm that includes a cryptographic hash value based at least in part upon transaction identifying data;
comparing, with a predictive analytics module, the energy incoming against the amount of energy savings from the energy savings equipment;
timing, with a timer module, to monitor the carbon tracker module through a defined term; and
generating an invoice, with an invoice module, for energy saved through the defined term.
Claim 7. A computer-implemented method of operating a distributed ledger technology ("DLT") token exchange system based at least in part upon electricity usage, the method comprising:
executing instructions to cause at least one server device and related data processing
and storage apparatus to operate over a peer-to-peer network to provide a method
comprising:
recording, with an electricity tracker module comprising a physical monitoring device connected via a collar to an Advanced Metering Infrastructure (AMI) meter, a
transaction comprising an amount of energy usage from a power grid and an amount of energy savings from energy savings equipment, along with environmental and other attributes of such energy;
wherein the transaction includes identifying data and the electricity tracker module
functions as a node on a DLT network
that executes a software verification algorithm that includes a cryptographic hash value based at least in part upon transaction identifying data;
comparing, with a predictive analytics module, the amount of energy usage
against the amount of energy savings from the energy savings equipment and calculating a total savings;
monitoring, with a timer module, the electricity tracker module
through a defined term; and
generating an invoice, with an invoice module, for the calculated total savings through the defined term.
Claim 8
Claim 8
Claim 10
Claim 10
Claim 11
Claim 11
Claim 12
Claim 12
Although the claims at issue are not identical, they are not patentably distinct from each other because they recite similar distinguishing features as highlighted above. Regarding terms that are not exactly the same, one of ordinary skill in the art would recognize that energy and electricity are analogous terms. Carbon tracker module and electricity tracker module, albeit having different labels, are functionally the same as highlighted above. The copending application requires the electricity tracker module as a node on a DLT network, whereas the instant application does not, therefore, the instant application is broader in scope than the copending application. Furthermore, regarding claim 1 of the instant specification, it requires generating a value for the carbon credits or offsets. The instant specification has disclosed that the carbon credits or offsets will be based on the energy saved. Claim 1 of the copending application requires calculating a total savings and generating an invoice for the calculated total savings. Since the carbon credits/offsets are based on the energy saved in claim 1 of the instant application, claim 1 of the copending application would reasonably read upon claim 1 of the instant application because the value and invoice generated are the same. Furthermore, since claim 1 of the copending application requires calculating the total savings and claim 1 of the instant application does not, claim 1 of the instant application is broader in scope than the copending application.
Claims 5 and 11 of the instant application recite “a cloud network” and claims 5 and 11 of the copending application recite “the DLT network.” [0046-0047] of the instant application suggests that the cloud is the same as the DLT, e.g. “data is communicated to the cloud 218 by the tracker 208” and “DLT 218 in the cloud-based environment.” Therefore, although the terms may differ between the instant application and the copending application, the instant specification suggests that the differing terms between the applications are similar, if not the same, to one another.
Claim 7 of the instant application recites “timing…to monitor” while claim 7 of the copending application recites “monitoring to monitor.” Although “timing” and “monitoring” are not the same terminology, the positively claimed action “to monitor” of both claims suggest that the claimed method step is indeed the same.
Claims 1 and 7 of the copending application 18/099,284 disclose all of the limitations of claims 1 and 7 of the instant application, except for “the carbon tracker module sends such data to a DLT network after verification and validating utilizing Artificial Intelligence (AI) and/or Machine Learning (ML)” and “utilizing AI and ML algorithms applied to third party data for verification and validation of the energy generation or savings.”
Szczepanik et al. U.S. 2022/0198304 discloses in [0054] – “At block 220…processes the input data from the ledger entry using a trained ML model (i.e. utilizing Machine Learning (ML))…Processing the input data yields one or more results associated with the input data, such as one or more pass-fail results associated with an underlying transaction (i.e. verification and validating),” thereby disclosing using ML algorithm to verify and validate data. Szczepanik et al. also disclose in [0055] – “At block 230…adds ledger entries to a distributed ledger,” thereby disclosing sending the verified and validated data to a distributed ledger, or DLT.
Furthermore, Szczepanik et al. disclose in [0063] – “trains/generates a new model (i.e. ML algorithm) version having a revised data structure using the appended training corpus data set (i.e. third party data),” [0021] – “trained ML model is applied to the input data (i.e. verification and validation of the energy generation or savings, which is analogous to a dataset),” thereby disclosing utilizing AI and ML algorithms applied to third party data for verification and validation of the energy generation or savings.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1 and 7 of copending application 18/099,284 with the teachings of verifying and validating data using an ML model, and sending the data to a distributed ledger after processing input data in Szczepanik et al. The combination teaches verifying and validating any input data (i.e. identifying data, energy savings) using a trained ML model prior to committing them onto a distributed ledger. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself – that is, verifying and validating identifying and savings data using machine learning and sending such data to a distributed ledger network. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
This is a provisional nonstatutory double patenting rejection.
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 limitations are: a predictive analytics module, a timer module, a pricing module in claim 1, an invoice module in claim 6, a predictive analytics module, a timer module, and an invoice module in claim 7.
Examiner notes that although claim 6 recites “an invoice module…comprising a smart contract,” the term “comprising” is an open-ended transitional phrase See MPEP 2111.03, therefore, it does not preclude the inclusion of hardware, i.e. the invoice module is not necessarily defined exclusively as a smart contract. Furthermore, a smart contract is known in the art to be written lines of code. However, since the “smart contract” is generically recited, this does not constitute an algorithm and therefore does not qualify as sufficient structure, material, or acts for performing the claimed function.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 these limitations 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 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 limitations recite sufficient structure to perform the claimed function so as to avoid 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
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 1-2, 4-8, and 10-12 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 limitations “a predictive analytics module,” “a timer module,” “a pricing module,” and “an invoice module” in claims 1 and 6-7 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function(s) and to clearly link the structure, material, or acts to the function(s). More specifically, the disclosure is devoid of any structure that performs the functions in the claim. Therefore, claims 1 and 6-7 are indefinite and are 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.
Claims 2 and 4-6 depend from claim 1. They fail to cure the deficiencies presented above. Therefore, they are also rejected for at least based on their dependency from their rejected base claim.
Claims 8 and 10-12 depend from claim 7. They fail to cure the deficiencies presented above. Therefore, they are also rejected for at least based on their dependency from their rejected base claim.
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.
Claims 1-2, 4-8, and 10-12 are 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.
As described above, the disclosure does not provide adequate structure to perform the claimed functions in claim 1: compare the energy incoming against the amount of energy savings expected from the energy savings equipment, monitor the carbon tracker module through a defined term, generating a value for carbon credits or offsets through the defined term, in claim 6: generating an invoice, and in claim 7: comparing the energy incoming against the amount of energy savings expected from the energy savings equipment, timing to monitor the carbon tracker module through a defined term, generating an invoice for energy saved through the defined term. The specification does not demonstrate that applicant has made an invention that achieves the claimed function(s) because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
Claims 2 and 4-6 are dependent from claim 1. They fail to cure the deficiencies presented above. Therefore, they are also rejected for at least based on their dependency from their rejected base claim.
Claims 8 and 10-12 depend from claim 7. They fail to cure the deficiencies presented above. Therefore, they are also rejected for at least based on their dependency from their rejected base claim.
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 1-2, 4-8, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Abbott et al. U.S. 2020/0175504 (herein referred to as “Abbott”), in view of Szczepanik et al. U.S. 2022/0198304 (herein referred to as “Szczepanik”), and further in view of Ashley et al. U.S. 2020/0148072 (herein referred to as “Ashley”).
Re Claims 1 and 7, Abbott discloses a computer-implemented method of operating a distributed ledger technology ("DLT") token exchange system based at least in part upon energy usage [0016], the method comprising:
executing instructions to cause at least one server device and related data processing and storage apparatus to operate over a peer-to-peer network [0007] to provide a method comprising:
recording, with a carbon tracker module, comprising a physical monitoring device connected to an Advanced Metering Infrastructure (AMI) meter, a transaction comprising an amount of energy incoming from a power grid [0029] – “Electric energy generated by the electrical generators 102 is measured by a module 104, embodiments of which may be an ANSI certified physical monitoring device connected to any standard AMI meter”;
wherein the transaction includes identifying data [0016] and the carbon tracker module sends such data to a DLT network ([0030] – “the module 104 receive calibration information from an associated electricity meter…The transaction is shared (i.e. sent) on the system’s distributed ledger network 112”); and
wherein the DLT network comprises a plurality of nodes that execute a software verification algorithm that includes a cryptographic hash value based at least in part upon transaction identifying data [0016].
However, Abbott does not expressly disclose
the carbon tracker module sends such data to a DLT network (taught by Abbott, see above) after verification and validation utilizing Artificial Intelligence (AI) and/or Machine Learning (ML); and
utilizing AI and ML algorithms applied to third party data for verification and validation of the energy savings (in claim 1 only);
Szczepanik discloses using machine learning (ML) model to process input data. Specifically, Szczepanik discloses
the carbon tracker module sends such data to a DLT network – taught by Abbott, see above after verification and validation utilizing Artificial Intelligence (AI) and/or Machine Learning (ML) ([0054] – “At block 220…processes the input data from the ledger entry using a trained ML model (i.e. utilizing Machine Learning (ML))…Processing the input data yields one or more results associated with the input data, such as one or more pass-fail results associated with an underlying transaction (i.e. verification and validating), [0055] – “At block 230…adds ledger entries to a distributed ledger,” i.e. Szczepanik also discloses sending data after processing the input data); and
utilizing AI and ML algorithms applied to third party data for verification and validation of the energy generation or savings ([0063] – “trains/generates a new model (i.e. ML algorithm) version having a revised data structure using the appended training corpus data set,” i.e. third party data, [0021] – “trained ML model is applied to the input data,” i.e. verification and validation of the energy generation or savings, which is analogous to a dataset).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Abbott’s DLT token exchange system with the teachings of verifying and validating data using an ML model, and sending the data to a distributed ledger after processing input data in Szczepanik. The combination teaches verifying and validating any input data (i.e. identifying data, energy savings) using a trained ML model prior to committing them onto a distributed ledger. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself – that is, verifying and validating identifying and savings data using machine learning and sending such data to a distributed ledger network. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
However, Abbott in view of Szczepanik do not explicitly teach
recording an amount of energy savings from energy savings equipment, environmental attributes, and other attributes of the amount of energy savings;
comparing, with a predictive analytics module, the energy incoming against the amount of energy savings from the energy savings equipment,
timing, with a timer module, to monitor the carbon tracker module through a defined term; and
generating an invoice, with an invoice module, for energy saved through the defined term.
Ashley discloses a system and method for tracking energy credits using blockchain. Specifically, Ashley discloses
recording an amount of energy savings from energy savings equipment, environmental attributes, and other attributes of the amount of energy savings (Fig. 1, [0019] – “track credits from generation,” i.e. an amount of energy savings, [0023] – “(clean energy/energy-efficient/low-carbon equipment) assets may be inspected…whose asset verification will be tied to all future data submissions associated with the assets,” i.e. environmental and other attributes of the amount of energy savings);
comparing, with a predictive analytics module, the energy incoming against the amount of energy savings from the energy savings equipment [0036] – “the use of grid electricity versus solar electricity is differentiated”;
timing, with a timer module, to monitor the carbon tracker module through a defined term ([0031] – “smart meter interval data is fed into a cloud database,” [0024] – “In the cases of energy generation or reduced energy use, near-real time energy data (i.e. 15- or 30-minute intervals) can be uploaded,” thereby suggesting predetermined time intervals dictate when the energy data is uploaded, “timing…to monitor” is interpreted to be analogous to “monitoring”); and
generating an invoice, with an invoice module, for energy saved through the defined term ([0026] – “digital representations of credits (i.e. an invoice) are autonomously or manually generated and added to the digital wallet of the asset owner once specified conditions are met (i.e., 1 metric ton of CO2-equivalent has been avoided, etc.),” a specified condition is analogous to the defined term. An invoice is interpreted to encompass any form of data detailing how many credits the asset owner generated).
Claim 1 recites “a pricing module for generating a value for carbon credits or offsets through the defined term.” [0026] of Ashley also reads upon such limitation as apparent above.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Abbott in view of Szczepanik’s DLT token exchange system with the teachings of energy credit accounting and management using blockchain in Ashley. The combination teaches modules or light nodes that facilitate the tracking of energy credits generated by an asset owner over a period of time. One would be motivated to make this combination to incentivize investments in clean energy, while also providing transparency, security, and simple reconciliation and auditability for reductions in the associated time and cost directed to managing energy-related credits Ashley, [0008], [0029].
Re Claims 2 and 8, Abbott in view of Szczepanik and Ashley teach the DLT system and method of claims 1 and 7, and Abbott in view of Szczepanik and Ashley further teach wherein the cryptographic hash value is additionally based upon at least one prior verified transaction Abbott, [0023].
Re Claims 4 and 10, Abbott in view of Szczepanik and Ashley teach the DLT system and method of claims 1 and claim 7 and Abbott in view of Szczepanik and Ashley further teach wherein the physical monitoring device comprises an American National Standards Institute (ANSI) certified physical monitoring device Abbott, [0029] – “module 104…may be an ANSI certified physical monitoring device connected to any standard AMI meter.”
Re Claims 5 and 11, Abbott in view of Szczepanik and Ashley teach the DLT system and method of claims 1 and claim 7 and Abbott in view of Szczepanik and Ashley further teach wherein the carbon tracker module communicates with a cloud network through a cellular network connection Abbott, [0029] – “module 104 can use public or other cellular communications…to communicate to the nodes of the system distributed ledger 112.”
Re Claims 6 and 12, Abbott in view of Szczepanik and Ashley teach the DLT system and method of claims 1 and claim 7 and Abbott in view of Szczepanik and Ashley further teach the invoice module for generating an invoice comprises a smart contract (Abbott, [0030] – “smart contracts within and across DLT network 112 are used…the code and the agreements (i.e. smart contract) contained therein exist within/across the DLT network”).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/CHRISTINE DANG/Examiner, Art Unit 3698
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