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
This Office Action is in response to the communication filed on 09/30/2025.
Claim 1 has been amended.
New claims 18-20 have been added.
5. Claims 1-20 are currently pending and are considered below.
Double Patenting
6. 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.
6. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,948,210. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined application claims are either anticipated by, or would have been obvious over, the reference claims..
Claim Rejections - 35 USC § 101
7. 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.
8. 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.
9. Claims 1, 18 and 20 (a method) recite retrieving, from a database communicatively coupled to a server, a data record including at least a portion of utility data of a customer of the community distributed energy system; determining, at the server, historic energy usage data of the customer based on the retrieved data record; determining, at the server, an allocation of energy to be provided to the customer based on the determined historic energy usage data and based on an energy allocation of a plurality of customers subscribed to the community distributed energy system; storing, at a storage device communicatively coupled to the server, the determined allocation of energy; and providing, to an electrical grid that includes a utility configured to provide electricity to the customer, electricity generated by the solar energy system, wherein the customer is assigned a portion of the electricity generated by the solar energy system according to the determined allocation of energy to the customer. These recited limitations fall within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas as it relate to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising; marketing; or sales activities or behaviors; business relations). Accordingly, the claims recites an abstract idea.
10. This judicial exception is not integrated into a practical application because the additional elements are memory, processor, servers and databases. The servers are recited at a high level of generality (i.e., as a generic processor performing a generic computer function of processing data) such that it amounts to no more than mere instructions to apply the exception using a generic computer component-MPEP 2106.05(f). The combination of these additional elements offers nothing more than generally linking the use of the judicial exception to a particular technological environment of field of use- see MPEP 2106.05(h) because the claimed machine are not particular, and the claim as a whole monopolizes the abstract idea on any server and databases.
11. The claims do not include additional elements that are efficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of memory, processor, servers and databases amounts to no more than mere instructions to apply the exception using a generic computer component, and the combination of these elements amounts to nothing more than generally linking the use of the judicial exception to a particular technological environment or field. Mere instructions to apply an exception using a generic computer component, and generally linking the use of the judicial exception to a particular technological environment or field cannot provide an inventive concept. The claims are not patent eligible.
12. As for dependent claims 2-17 and 19, these claims recite limitations that further define the same abstract idea noted in claim 1. Therefore, they are considered patent ineligible for the reason given above.
13. Claims 1-20 are therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Response to Arguments
14. Applicant's arguments filed on 09/30/2025 with respect to the rejection of claims 1-20 have been fully considered but they are not persuasive.
15. Applicant argued that “…The Office Action rejects claims 1-17 under 35 U.S.C. § 101 as allegedly reciting nothing more than extracted idea. Applicant respectfully disagrees. Notwithstanding, the claims are amended herein to advance prosecution. Claim 1, as amended herein, does not recite any abstract idea. To the extent any abstract idea is recited, the claim integrates the abstract idea into a practical application…” Remarks pages 8-10
16. The examiner notes that claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. Representative claim 1, recites a method, which is a statutory class, the method, comprising: retrieving, from a database communicatively coupled to a server, a data record including at least a portion of utility data of a customer of the community distributed energy system; determining, at the server, historic energy usage data of the customer based on the retrieved data record; determining, at the server, an allocation of energy to be provided to the customer based on the determined historic energy usage data and based on an energy allocation of a plurality of customers subscribed to the community distributed energy system; storing, at a storage device communicatively coupled to the server, the determined allocation of energy; and providing, to an electrical grid that includes a utility configured to provide electricity to the customer, electricity generated by the solar energy system, wherein the customer is assigned a
portion of the electricity generated by the solar energy system according to the determined allocation of energy to the customer. The steps of retrieving, from a database communicatively coupled to a server, a data record including at least a portion of utility data of a customer of the community distributed energy system; determining, at the server, historic energy usage data of the customer based on the retrieved data record; determining, at the server, an allocation of energy to be provided to the customer based on the determined historic energy usage data and based on an energy allocation of a plurality of customers subscribed to the community distributed energy system; storing, at a storage device communicatively coupled to the server, the determined allocation of energy; and providing, to an electrical grid that includes a utility configured to provide electricity to the customer, electricity generated by the solar energy system, wherein the customer is assigned a portion of the electricity generated by the solar energy system according to the determined allocation of energy to the customer, as drafted, is a process that, under its broadest reasonable interpretation, covers a method of organizing human activity. Given the broadest reasonable interpretation, the claim recites a method for providing electricity to the customers. The above identified method steps recite commercial interactions such as sales activities and/or tailored personalized marketing relating to providing data associated with the person. If a claim limitation, under its broadest reasonable interpretation, covers commercial interaction such as tailored personalized marketing, then it falls within the “certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of memory, processor, servers and databases. The servers are recited at a high-level of generality (i.e., as a generic processor performing a generic computer functions of retrieving a data record; determining, historic energy usage data of the customer; determining, an allocation of energy to be provided to the customer; storing the determined allocation of energy; and providing electricity generated by the solar energy system) such that they amount to no more than mere instructions to apply the exception using generic computer components. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. Thus, considered as an ordered combination, the additional elements add nothing that is not already present when the steps are considered separately. That is the processor and the servers, performing commercial interactions including: retrieving a data record; determining, historic energy usage data of the customer; determining, an allocation of energy to be provided to the customer; storing the determined allocation of energy; and providing electricity generated by the solar energy system, amount to mere instructions to apply the steps to a computer comprising of a processor. Thus, claims 18 and 20 are not eligible. The rejection of claims 1-20 under 35 U.S.C. 101 has been maintained.
Conclusion
17. The claims are not rejected under 35 U.S.C. 102/103(a) for the same reasons set forth in the parent application 18110113 (now Patent No. 11,948,210), see Non-Final Office Action mailed 9/14/2024.
18. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
19. Carrel et al. (U.S. Patent No. 8,489,245) talks about demand response to reduce energy consumption by individual consumers is provided by aggregating individual consumers, and providing feedback to such consumers regarding their energy consumption relative to other energy consumers in a group. The resulting feedback may result in reduced energy consumption by the individual consumer (see at least the Abstract).
20. Golden et al. (U.S Pub. No. 2008/0167756) talks about managing power consumption and storage in a power grid. Measurements are received from a plurality of geographically distributed energy management controllers. Each energy management controllers has energy storage units with stored energy. The measurements comprise the energy production and storage capacity of the energy management controllers and their associated energy storage units. The measurements are processed, e.g., aggregated, and displayed on a graphical user interface. Commands are transmitted to a first subset of the energy management controllers to command the units to discharge their stored energy into a power grid through an inverter. Commands are transmitted to a second subset of the plurality of energy management controllers to store energy in each unit's energy storage unit (see at least the Abstract).
21. 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.
22. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARILYN G MACASIANO whose telephone number is (571)270-5205. The examiner can normally be reached Monday-Friday 12:00-9:00 pm.
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/MARILYN G MACASIANO/Primary Examiner, Art Unit 3622 01/10/2026