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 .
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 1-4, 6, 11-13, and 15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8-10, 15, and 16 of U.S. Patent No. 11728767 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4, 6, 11-13, and 15 are anticipated by claims 1, 7, 8-10, 15, and 16 of the ‘767 patent as follows:
Claim 1 is anticipated by claims 1 and 8 of the ‘767 patent.
Claim 2 is anticipated by claims 1 and 8 of the ‘767 patent.
Claim 3 is anticipated by claims 1 and 8 of the ‘767 patent.
Claim 4 is anticipated by claims 1, 8 and 9 of the ‘767 patent.
Claim 6 is anticipated by claims 1 and 8 of the ‘767 patent.
Claim 11 is anticipated by claims 10 and 17 of the ‘767 patent.
Claim 12 is anticipated by claims 10 and 17 of the ‘767 patent.
Claim 13 is anticipated by claims 10, 17 and 18 of the ‘767 patent.
Claim 15 is anticipated by claims 10 and 17 of the ‘767 patent.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Specifically, representative Claim 1 recites:
A method comprising:
determining, by a computing device, respective positions for individual solar panels included in a plurality of solar panels located within a geographical region;
determining, by the computing device based on the respective positions and meteorological data for the geographical region, respective predicted solar power generation levels for the individual solar panels;
determining, by the computing device based on the respective predicted solar power generation levels for the individual solar panels, a solar power generation estimate for the geographical region; and
determining, by the computing device based on the solar power generation estimate for the geographical region and one or more properties of an electricity distribution infrastructure for the geographical region, one or more infrastructure modifications for the electricity distribution infrastructure.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
Under the Step 1 of the eligibility analysis, we determine whether the claims are to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter. The above claim is considered to be in a statutory category (process).
Under the Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the highlighted portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitations that fall into/recite an abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject matter Eligibility Guidance, it falls into the grouping of subject matter when recited as such in a claim limitation, that covers mental processes – concepts performed in the human mind including an observation, evaluation, judgement, and/or opinion.
For example, steps of “determining respective positions for individual solar panels included in a plurality of solar panels located within a geographical region (determination based on observation);
determining based on the respective positions and meteorological data for the geographical region, respective predicted solar power generation levels for the individual solar panels (determination based on previous determination and data);
determining based on the respective predicted solar power generation levels for the individual solar panels, a solar power generation estimate for the geographical region (determination based on data); and
determining based on the solar power generation estimate for the geographical region and one or more properties of an electricity distribution infrastructure for the geographical region, one or more infrastructure modifications for the electricity distribution infrastructure (determination based on previous determination)” are treated by the Examiner as belonging to mental process grouping.
Similar limitations comprise the abstract ideas of Claims 11 and 17.
Next, under the Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application.
In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
The above claims comprise the following additional elements:
Claim 1: a computing device;
Claim 11: One or more non-transitory computer-readable media, one or more processors;
Claim 17: one or more processors, and one or more memories.
The additional elements of one or more non-transitory computer-readable media or a memories (generic memories) and computing device or a processor (generic processors) are generally recited and are not qualified as particular machines.
In conclusion, the above additional elements, considered individually and in combination with the other claim elements do not reflect an improvement to other technology or technical field, and, therefore, do not integrate the judicial exception into a practical application. Therefore, the claims are directed to a judicial exception and require further analysis under the Step 2B.
However, the above claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B analysis).
The claims, therefore, are not patent eligible.
With regards to the dependent claims, claims 2-10, 12-16, and 17-20 provide additional features/steps which are part of an expanded algorithm, so these limitations should be considered part of an expanded abstract idea of the independent claims.
The Examiner notes that there are currently no prior art rejections for claims 1-20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Davidson et al. (US 20150269664 A1), hereinafter "Davidson", in view of Padarian ("Weekend project: Detecting solar panels from satellite imagery", Towards Data Science, Oct 18, 2018) is still considered by the Examiner to be the closest prior art of record.
Regarding Claim 1, Davidson teaches method comprising:
determining, by a computing device, respective positions for (Davidson [0037] The roof direction, roof angle, roof area, shading and/or location of the home a Isa may be used to calculate the potential wattage output at the home.);
determining, by the computing device based on the respective positions and meteorological data for the geographical region, respective predicted solar power generation levels for the (Davidson [0047] In step 310, a computing device (e.g., the utility management system 100) can obtain insolation data for a corresponding geographic location, in which the insolation data relates to a total amount of solar radiation energy received on a surface area of a candidate solar panel array during a specified time period in the corresponding geographic location. Also see Fig. 2A); and
determining, by the computing device based on the respective predicted solar power generation levels for the (Davidson [0034] This type of insolation data may be determined based on satellite images or other sources. Once the insolation is determined, the insolation data may be stored in a database (or a data structure) for later retrieval and processing and [0035] A computing device can determine the a mount of energy (e.g., kWh/day) that could potentially be generated from solar panels of a candidate solar panel array using insolation data for a corresponding geographic region. Also see Fig. 2B).
Davidson is not relied upon to explicitly teach determining, by the computing device based on the solar power generation estimate for the geographical region and one or more properties of an electricity distribution infrastructure for the geographical region, one or more infrastructure modifications for the electricity distribution infrastructure.
Matan teaches determining, by the computing device based on the solar power generation estimate for the geographical region and one or more properties of an electricity distribution infrastructure for the geographical region, one or more infrastructure modifications for the electricity distribution infrastructure (Matan [0085] a grid network of system 300 can be modularly adjusted in size. Seeing that each neighborhood 340, 360, . . . , in the grid network can independently operate, neighborhoods, consumers, and/or other segments or groupings of the network, can be added and/or removed from the grid network dynamically. Other neighborhoods could similarly be added, via a higher level PCC and control node, and/or by coupling neighborhood control nodes.).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the instant application, to modify the combination of Davidson in view of Padarian and Matan (as stated above) further in view of Matan to incorporate determining, by the computing device based on the solar power generation estimate for the geographical region and one or more properties of an electricity distribution infrastructure for the geographical region, one or more infrastructure modifications for the electricity distribution infrastructure, because modifications ensure efficiency and allows the excess power of one neighborhood’s local energy store (Matan Fig. 3 344) can be connected through a control node (Matan Fig. 3 326) for use when another neighborhood’s local energy store (Matan Fig. 3. 364) does not satisfy demand.
Davidson, as best understood by the Examiner, when considered alone and in combination with other prior art of record, does not fairly teach or suggest being capable of performing the method on individual solar panels included in a plurality of solar panels within a geographical region.
Claims 11 and 17 are analogous to claim 1, therefore are not rejected under prior art for similar reasoning.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAN T BRYANT whose telephone number is (571)272-4194. The examiner can normally be reached Monday-Thursday and Alternate Fridays 7:00-4:30.
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/CHRISTIAN T BRYANT/Examiner, Art Unit 2863
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