DETAILED ACTION
Examiner Note
1. This case has been inherited from the previous examiner.
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 and 4-11 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 1 recites the limitation "the electrical consumption", “the electrical current consumed,” in preamble, the limitation “the measurement that are measured with signatures stored,” in Claim 4, the limitation “the battery”, in Claim 11, the limitation “the consumption of the battery-powered smart meter,” the implementation”, “the at least one first functionality.” There is insufficient antecedent basis for these limitations in the claims.
Claim 6 recites “low-consumption” but the limitation “low” is a subjective term and therefore indefinite.
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.
6. Claims 1, 4, 5, 6(part) and 7-11 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 being integrated into a practical application and do not include additional elements that amount to significantly more than the judicial exception.
Utilizing the two step process adopted by the Supreme Court (Alice Corp vs CLS Bank Int'l, US Supreme Court, 110 USPQ2d 1976 (2014) and the recent 101 guideline, Federal Register Vol. 84, No., Jan 2019)), determination of the subject matter eligibility under the 35 USC 101 is as follows: Specifically, the Step 1 requires claim belongs to one of the four statutory categories (process, machine, manufacture, or composition of matter). If Step 1 is satisfied, then in the first part of Step 2A (Prong one), identification of any judicial recognized exceptions in the claim is made. If any limitation in the claim is identified as judicial recognized exception, then proceeding to the second part of Step 2A (Prong two), determination is made whether the identified judicial exception is being integrated into practical application. If the identified judicial exception is not integrated into a practical application, then in Step 2B, the claim is further evaluated to see if the additional elements, individually and in combination, provide “inventive concept” that would amount to significantly more than the judicial exception. If the element and combination of elements do not amount to significantly more than the judicial recognized exception itself, then the claim is ineligible under the 35 USC 101.
Looking at the claims, the claims satisfy the first part of the test 1A, namely the claims are directed to one of the four statutory class, apparatus and method. In Step 2A Prong one, we next identify any judicial exceptions in the claims. In Claim 1 (as a representative example), we recognize that the limitations “identification of at least one functionality implemented by the battery-powered smart meter by comparison of data relating to the measurement that are measured with signatures stored in a signature database, each signature of the signature databased being representative of the consumption of the battery-powered smart meter during the implementation of the ast least one functionality by the battery-powered smart meter in a nominal operating mode of the battery-powered smart meter whose consumption each signature represents is the same battery-powered smart meter, monitoring over time of a functionality or a sequence of functionalities thus identified and a detection of a drift relative to a nominal operation, and identification of at least one functionality among the monitored functionality or sequence of functionalities implemented by the battery-powered smart meter responsible for the drift,” are abstract idea, as they recite steps that involve mental process. Similar rejections are made for other independent and dependent claims. With the identification of abstract ideas, we proceed to Step 2A, Prong two, where with additional elements and taken as a whole, we evaluate whether the identified abstract idea is being integrated into a practical application.
In Step 2A, Prong two, the claims additionally recite “battery-powered smart meter, processor, and “detection of electrical overconsumption and/or electrical underconsumption by the battery-powered smart meter,” are recitation of general purpose computer and insignificant data collection activity, recited at high level of generality. The claims also recite “generating, in response to detection of the drift, corrective actions, the corrective action comprising stopping the identified at least one functionality among the monitored functionality or sequence of functionalities implemented by the battery-powered smart,” but said limitation is merely applying the abstract idea in broad manner with generic functionalities, without particular end use. The claims do not improve any machines and do not improve other technology. At most, the claims are an improvement in the abstract idea of supervising electrical consumption. However, improved or new abstract ideas are still an abstract idea and not eligible. In short, the claims do not provide sufficient evidence to show that they are more than a drafting effort to monopolize the abstract idea. As such, the abstract idea is not integrated into a practical application. Consequently, with the identified abstract idea not being integrated into a practical application, we proceed to Step 2B and evaluate whether the additional elements provide “inventive concept” that would amount to significantly more than the abstract idea.
In Step 2B, the claims additionally recite “battery-powered smart meter, processor, and “detection of electrical overconsumption and/or electrical underconsumption by the battery-powered smart meter,” are recitation of general purpose computer and insignificant data collection activity, recited at high level of generality. The claims also recite “generating, in response to detection of the drift, corrective actions, the corrective action comprising stopping the identified at least one functionality among the monitored functionality or sequence of functionalities implemented by the battery-powered smart,” but said limitation is merely applying the abstract idea in broad manner with generic functionalities, without particular end use (see Univ of Utah Research Found. vs Ambry Genetics Corp, F774 F.3d 755, 113 USPQ2d 1241 (2014), Id., at 1245) and Gottschalk vs Benson, 409 US 63, 175 USPQ 673 (1972), Id., at 674). As such, the claims do not provide additional elements that would amount to significantly more than the abstract idea.
In Summary, the claims recite abstract idea without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101. Note: the limitation “operations performed by a microcontroller” in dependent claim 6 remains rejected, since operations is a generic limitation. Other limitations in claim 6 are not rejected under 101.
Response to Arguments
Applicant's arguments filed 07/10/2026 have been fully considered but they are not persuasive.
The Section 101 provides that anyone who “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. The Supreme Court has repeatedly emphasized that patent protection should not extend to claims that monopolize “the basic tools of scientific and technological work.” Gottschalk vs Benson, 409 US 63, 67, 93 S. Ct. 253, 34 L. Edd. 2d 273 [175 USPQ 673] (1972)). Accordingly, laws of nature, natural phenomena, and abstract ideas are not patent-eligible subject matter. Alice, 134 S. Ct. at 2354.
The 101 subject matter eligibility analysis begins with the claimed language (see Synopsis vs Mentor Graphics, 120 USPQ2d 1473 839 F.3d 1138 (Fed. Cir. 2016), Id., at 1481 “The 101 inquiry must focus on the language of the Asserted Claims themselves.”), followed by identifying the focus or underlying invention (see Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 [103 USPQ2d 1425] (Fed. Cir. 2012), Id., at 1431-1432, “Subsequently, however, we explained in CyberSource Corp. v. Retail Decisions, Inc. that we look not just to the type of claim but also “to the underlying invention for patent-eligibility purposes.” 654 F.3d 1366, 1374 [99 USPQ2d 1690] (Fed. Cir. 2011). Looking at the claims in the instant application, we recognize the focus of the claim is “supervising the electrical consumption of a battery-powered smart meter,” an abstract idea.
Here, note that the Supreme Court has emphatically rejected the idea that claims become patent eligible simply because they disclose a specific solution to a particular problem (Supreme Court, Alice Corp v CLS Bank Int’l, 110 USPQ 2d 1976 at 1985; DDR Holding, 773 F.3d at 1265)). In other words, even if the claims had recited specific abstract ideas for “supervising the electrical consumption of a battery-powered smart meter,” would not have made the claims eligible under 35 USC 101.
Additionally, note that the novelty of the abstract idea itself, also does not help in overcoming the 101 rejection (see Flook, In Gottschalk vs Benson, Id., at 195, “we held that the discovery of a novel and useful mathematical formula may not be patented,” Indeed, the novelty of the mathematical algorithm is not a determining factor at all.”). This means that any novelty or non-conventionality in the abstract idea of “supervising the electrical consumption of a battery-powered smart meter,” will not be a determining factor. New abstract idea is still an abstract idea (see Synopsis, 839 F.3d 1138, 120 USPQ2d, 1473 (2016), Id., at 1483, “a claim for a new abstract idea is still an abstract idea. The search for a 101 inventive concept is thus distinct from demonstrating 102 novelty.”).
Having said that, the subject matter eligibility analysis continues with the examination of the additional elements with respect to the practical application and significantly more criteria. Looking at the claimed invention, the claims additionally recite
various limitations as discussed above,” but said limitations are merely directed to insignificant data collection activity, recited at high level of generality, and general-purpose computer for implementing the abstract idea, that are well-understood, routine and conventional. The claims also recite “generating, in response to detection of the drift, corrective actions, the corrective action comprising stopping the identified at least one functionality among the monitored functionality or sequence of functionalities implemented by the battery-powered smart,” but said limitation is merely applying the abstract idea in broad manner with generic functionalities, without particular end use (see Univ of Utah Research Found. vs Ambry Genetics Corp, F774 F.3d 755, 113 USPQ2d 1241 (2014), Id., at 1245) and Gottschalk vs Benson, 409 US 63, 175 USPQ 673 (1972), Id., at 674). Furthermore, nothing in the claims, understood in light of the original disclosure, requires anything other than off-the-shelf, conventional meter and general-purpose computer for collecting data, analyzing and obtaining the desired information (unlike Thales 85- F.3d 1343, 121 USPQ2d 1898 (2017), Id., at 1898 where the inertial sensors are used in non-conventional manner for measuring position and orientation).
Furthermore, the claims do not improve the functioning of any machines. The claims in the instant application with the smart meter and processor, the focus of the claims is not on such an improvement in said machines as tools (as in Enfish), or focused on a specific asserted improvement in “supervising the electrical consumption of a battery-powered smart meter,” in non-abstract way (or improvement in computer animation in non-abstract way, without animators able to do to same, as in McRo), but on certain independently abstract ideas that use those sensors and processing device, etc as tools. Furthermore, the claims also do not improve any technology. At most, the claim is an improvement in the abstract idea of “supervising the electrical consumption of a battery-powered smart meter.” However, improved or new abstract ideas are still an abstract idea.
Finally, limiting the claims to the particular technological environment of smart meter, without the abstract idea being integrated into a practical application or without the additional elements amounting to significantly more than the abstract idea, is insufficient to transform them into patent-eligible applications of the abstract ideas (Flook established that limiting an abstract idea to one field of use or adding token post-solution components did not make the concept patentable” Bilski v. Kappos, 95 USPQ2d 1001, 1010 (U.S. 2010).
For the reasons given above, the abstract idea is not integrated into a practical application and the additional elements do not amount significantly more than the abstract idea.
In Summary, the claims recite the abstract idea of “supervising the electrical consumption of a battery-powered smart meter,” without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Schamber et al., US-PGPUB 2019/0346506
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/HYUN D PARK/ Primary Examiner, Art Unit 2857
