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 1-16 are currently pending.
Claim Objections
Applicant is advised that should claims 1-3 be found allowable, claims 8-10 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 12 is objected to because it depends from itself. It is treated below as if it depends from claim 11.
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 5-7 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 5 recites "an appliance selected from a list comprising a dishwasher, a laundry machine, and an ice maker." Claim 6 recites "the first fingerprint is associated with a water loss event selected from a list comprising a small water leak, a broken water line, and a leaking toilet." Claim 7 recites "the first water device being a fixture selected from a list comprising a sink faucet, a bath faucet, a shower head, a toilet, an exterior faucet, a sprinkler, and an irrigation valve." This is an improper alternative limitation format. The term "comprising" leaves the group that follows open-ended, making the complete scope of the claim vague and indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. Proper Markush groups use closed-ended language such as "is" or "consists of." Ex parte Dotter, 12 USPQ 382 (Bd. App. 1931); MPEP § 2173.05(h).
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 1-16 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 1-16, 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:
detecting field fluctuations; and
comparing the detected field fluctuations with stored fingerprints, each fingerprint comprising information associated with a respective water event; and
determining the occurrence of at least one water event based on the comparing step,
wherein each water event is associated with at least one of a water consumption event or a water loss event.
These limitations taken together qualify as a certain method of organizing human activities because they recite collecting, analyzing, and outputting information for monitoring the water usage habits of people (i.e., in the terminology of the 2019 Revised Guidance, fundamental economic practices; commercial interactions (including business relations); managing personal behavior. Additionally, it recites processes that can be performed mentally (e.g., a person observing field fluctuations and past water event fingerprints, evaluating/comparing them, and arriving at a judgment on a water consumption event or a water loss event). Finally, it also recites mathematical relationships in the form of analyzing and comparing water usage events (see published Specification ¶¶ 0096-109 showing how these are performed numerically, as well as Figs. 4-5 & 9).
It shares similarities with other abstract ideas held to be non-statutory by the courts (see Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)—process of gathering and analyzing information of a specified content (real-time power grid metrics) then displaying the results, similar because at another level of abstraction the claims could be characterized as a process of gathering and analyzing information of a specified content (real-time water system usage) then displaying the results; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)—obtaining and comparing intangible data (detecting fraud in a credit card transaction between a consumer and a merchant over the Internet could be performed by a human), similar because at another level of abstraction the claims could be characterized as obtaining and comparing intangible data (detecting water usage events that could be performed by a human); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018)—collection and mathematical analysis of financial data, similar because at another level of abstraction the claims could be characterized as collection and mathematical analysis of water usage data).
These cases describe significantly similar aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
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 only additional element in the independent claims is a flow meter that measures a real-time water flow rate through the first water system. However, this merely sets forth a field-of-use for the invention. Moreover, the element is merely performing a pre-solution a data gathering activity (See MPEP 2106.05(g)).
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 only set forth additional elements pertaining to a field of use for the invention and extra-solution data gathering activities). Moreover, the additional elements recited are known and conventional (flow meter that measures a real-time water flow rate through the first water system—see published Specification ¶¶ 0047-49 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). See also Sterling, et al., U.S. Pat. Pub. No. 2017/0335550 (U.S. Pat. Pub. Citation 2 of the IDS filed 6/7/2024) ("The majority of water meters used in commercial and residential applications contain nutating or rotating disks with attached magnets to drive the register. When water flows such a meter, the water causes the disks to nutate or rotate. The nutation or rotation of the disks with attached magnets cause a change in the magnetic field in the water meter which is detected by the magnetometer in the present invention.") (¶ 0018, emphasis added).
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 in a chosen field of use (i.e., analyzing abstract data from a water meter).
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). Claim 4 recites a magnetic field generated by a nutating disk. However, this merely further describes the components of the flow meter and is insufficient to integrate the abstract idea into a practical application for the same reasons as the flow meter in the independent claims. Claims 5 and 7 recite various water consuming appliances/fixtures, however these are only used for pre-solution data gathering in conjunction with the abstract idea (i.e., collecting water usage information of the appliances/fixtures to be later analyzed). See MPEP 2106.05(g). Claim 12 recites a light positioned within view of a person in a shower. This element is recited at a high level of generality and is only used for extra-solution data outputting (i.e., an insignificant application). See MPEP 2106.05(g). The only function of the light is to present the result of the abstract analysis to a person (i.e., that a threshold amount of water has been reached). Claim 13 recites a generic mobile device with an application. This is nothing more than generally linking the abstract idea to a particular technological environment with instructions to "apply it" there. When viewed in combination, none of these elements serve to integrate the abstract idea into a practical application.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. Although they add the elements identified in 2A above, these do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application. Moreover, the Specification also indicates this is the routine use of known components for the same reasons presented with respect to the elements in the independent claims above (i.e., by describing them at a high level of generality absent and significant technical specifics; see ¶ 0018—magnetic field generated by a nutating disk; ¶ 0046—various water consuming appliances/fixtures; ¶ 0091—light positioned within view of a person in a shower; ¶ 0111—generic mobile device with an application). Accordingly, they are not directed to significantly more than the exception itself, 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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Picardi, et al., U.S. Pat. Pub. No. 2019/0025150 (Reference A of the attached PTO-892) in view of Sterling, et al., U.S. Pat. Pub. No. 2017/0335550 (U.S. Pat. Pub. Citation 2 of the IDS filed 6/7/2024).
As per claim 1, Picardi teaches a method for monitoring water usage associated with a first water system, the method comprising:
detecting measurements emanating from a flow meter as the flow meter measures a real-time water flow rate through the first water system (¶ 0030); and
comparing the detected measurements with stored fingerprints, each fingerprint comprising information associated with a respective water event (¶¶ 0056-58); and
determining the occurrence of at least one water event based on the comparing step (¶ 0062),
wherein each water event is associated with at least one of a water consumption event or a water loss event (¶ 0064).
Picardi does not explicitly teach the measurements are field fluctuations; which is taught by Sterling (¶ 0018). It would have been prima facie obvious to incorporate this element because it is merely a substitution of the field fluctuation measurements in Sterling for the sensor measurements used to determine water flow rates in Picardi (e.g., thermal displacement—see ¶¶ 0032-33). Both types of measurements are shown in the art of water usage monitoring as usable for determining how much water is being consumed at a property. The only difference is the specific sensor and type of measurement itself. Based upon the level of skill displayed in the references, this substitution could be performed by routine engineering producing predictable results.
As per claim 2, Picardi in view of Sterling teaches claim 1 as above. Picardi further teaches a first fingerprint of the plurality of fingerprints is associated with a single water event and a second fingerprint of the plurality of fingerprints is a composite fingerprint that is associated with a composite water event, the composite water event being an aggregate of two or more water events (¶¶ 0056-58).
As per claim 3, Picardi in view of Sterling teaches claim 2 as above. Picardi further teaches determining sequential and simultaneous water events associated with one or more composite fingerprints (¶¶ 0057-58, 62, 93).
As per claim 4, Picardi in view of Sterling teaches claim 3 as above. Sterling further teaches flow meter comprises a nutating disk, and wherein the field is a magnetic field generated by the nutating disk (¶ 0018), which would have been obvious to incorporate for the same reasons as the elements in claim 1 above. Moreover, this is merely a combination of old elements in the art of water usage monitoring. 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 5, Picardi in view of Sterling teaches claim 3 as above. Picardi further teaches the first fingerprint is associated with a first water device, the first water device being an appliance selected from a list comprising a dishwasher, a laundry machine, and an ice maker, and wherein the second fingerprint is associated with the first water device and a second water device, the second water device being independent from the first water device (¶¶ 0057-58, 93).
As per claim 6, Picardi in view of Sterling teaches claim 3 as above. Picardi further teaches the first fingerprint is associated with a water loss event selected from a list comprising a small water leak, a broken water line, and a leaking toilet (¶¶ 0050, 64), and wherein the second fingerprint is associated with a water loss event and a water consumption event (¶¶ 0062, 64).
As per claim 7, Picardi in view of Sterling teaches claim 3 as above. Picardi further teaches the first fingerprint is associated with a first water device, the first water device being a fixture selected from a list comprising a sink faucet, a bath faucet, a shower head, a toilet, an exterior faucet, a sprinkler, and an irrigation valve, and wherein the second fingerprint is associated with the first water device and a second water device, the second water device being independent from the first water device (¶¶ 0057-58, 93).
As per claims 8-10, Picardi in view of Sterling teaches claims 1-3 (see citations and obviousness rationale above).
As per claim 11, Picardi in view of Sterling teaches claim 9 as above. Picardi further teaches providing an indication to a user when water consumption for a specific water event has exceeded an allowable threshold value for the specific event (¶¶ 0080-82).
Claims 12-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Picardi, et al. in view of Spencer, et al. as applied to claim 11 above, further in view of O'Keeffe, et al., U.S. Pat. No. 9,429,453 (U.S. Pat. Citation 1 of the IDS filed 6/7/2024).
As per claim 12, Picardi in view of Sterling teaches claim 11 as above. The references do not explicitly teach the water event is a shower, wherein the allowable threshold value is a predetermined volume of water, and wherein the indication includes a light positioned within view of a person in the shower; which is taught by O'Keeffe (col. 8, line 64—col. 9, line 13). It would have been prima facie obvious to incorporate this element for the same reason it is useful in O'Keeffe—namely, to suggest to a person that they end their water usage. Moreover, this is merely a combination of old elements in the art of water usage monitoring. 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 13, Picardi in view of Sterling and O'Keeffe teaches claim 12 as above. Picardi further teaches providing the indication comprises sending information to an application on a mobile device (¶ 0082).
As per claim 14, Picardi in view of Sterling teaches claim 11 as above. The references do not explicitly teach determining and reporting a return on investment associated with fixing a mal-adjusted fixture; which is taught by O'Keeffe (col. 1, lines 37-45). It would have been prima facie obvious to incorporate this element for the same reason it is useful in O'Keeffe—namely, to promote upgrades to inefficient appliances. Moreover, this is merely a combination of old elements in the art of water usage monitoring. 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 16, Picardi in view of Sterling teaches claim 11 as above. The references do not explicitly teach providing a fixture-by-fixture report of water usage associated with the first water system over a first period of time; which is taught by O'Keeffe (col. 12, lines 52-61). It would have been prima facie obvious to incorporate this element for the same reason it is useful in O'Keeffe—namely, to give managers keen insights on how to improve their water conservation. Moreover, this is merely a combination of old elements in the art of water usage monitoring. 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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Picardi, et al. in view of Spencer, et al. as applied to claim 11 above, further in view of Javey, et al., U.S. Pat. Pub. No. 2014/0245208 (U.S. Pat. Pub. Citation 1 of the IDS filed 6/7/2024).
As per claim 15, Picardi in view of Sterling teaches claim 11 as above. The references do not explicitly teach comparing water usage of the first water system with water usage associated with a plurality of additional water systems; which is taught by Javey (¶ 0211). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Javey—namely, so that operators of different water systems can compete in their conservation efforts. Moreover, this is merely a combination of old elements in the art of water usage monitoring. 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.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1-12 of U.S. Patent No. 11,821,766. Although the claims at issue are not identical, they are not patentably distinct from each other because all the elements of the application claims are to be found in the reference patent (as the application claims fully encompass the reference patent claims). Although the reference patent claims are directed to systems and the instant claims are directed to methods, it would have been obvious to perform the methods that are instead laid out functionally in the patent claims (but otherwise with the same limitations). The only other difference between the application claims and the reference patent claims lies in the fact that the reference patent claims include more elements and are thus more specific. Thus the invention of claims 1-12 of the reference patent is in effect a "species" of the "generic" invention of the application claims 1-16. A generic invention is "anticipated” by the "species." In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
A complete reply to this Office Action must contain a substantive response (by way of amendment to overcome the provisional rejection, specific arguments explaining why the provisional rejection was made in error, or by filing a Terminal Disclaimer). See MPEP 804(I)(B)(1). The rejection will not be held in abeyance and incomplete replies will be treated as not fully responsive under MPEP 714.03.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Dugger, et al., U.S. Pat. Pub. No. 2013/0080081 (Reference B of the attached PTO-892) relates to monitoring water consumption.
Casella, et al., U.S. Pat. Pub. No. 2006/0245467 (Reference C of the attached PTO-892) relates to monitoring water consumption.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628