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 .
DETAILED ACTION
1. Claims 1-20 have been presented for examination based on the amendment filed on 12/02/2025.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
2. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,947,880. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘880 Patent include all the limitations of this Application as well as additional limitations.
3. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,902,159. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘159 Patent include all the limitations of this Application as well as additional limitations.
4. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,769,318. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘318 Patent include all the limitations of this Application as well as additional limitations.
USC 101 argument answer
Applicant, in the argument submits that the specification provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement in the functioning of a computer or an improvement in another technology or technical field. Although applicant submits several paragraphs from the specification to back up this assertion, examiner would like to emphasize that the claim language is devoid of the concept presented in these paragraphs. In this regard, examiner would like to point out that the claims and only the claims define the metes and bounds of the invention. It is noted that Applicant seeks to read limitations from the specification into the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Note that "limitations appearing in the specification will not be read into the claims, and ... interpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper." Intervet Am., v. Kee-Vet Labs., 887 F.2d 1050, 1053, 12 USPQ2d 1474 1476 (fed. Cir. 1989).
Additionally, as mentioned in the current office action, the added limitations of the claim such as “store the energy information” and “an energy production estimate based on the stored energy information” are very broad in scope, cosmetic in nature without any details of how these acts are to be performed and can be categorized as ‘insignificant extra soliton activity” and /or a process step that covers mental processes including an observation, evaluation, judgment or opinion that could be performed in the human mind or with the aid of pencil and paper and mathematical concept including mathematical calculations, mathematical relationship etc..
Therefore, considering the above rebuttal, the USC 101 rejection is maintained in the current office action.
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.
5. 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.
Step 2A Prong One:
Independent claims 1, 8, and 15 recite the limitations:
receive a selection and/or deselection of one or more solar panels less than all of the plurality of solar panels in the predetermined solar panel layout, and
determine a design for an installation location based on the selection and/or deselection of the one or more solar panels less than all of the plurality of solar panels in the predetermined solar panel layout and the energy information.
an energy production estimate based on the stored energy information.
is a process step that covers mental processes including an observation, evaluation, judgment or opinion that could be performed in the human mind or with the aid of pencil and paper and mathematical concept including mathematical calculations, mathematical relationship and/or mathematical equations/formulae. Other than reciting “a computing device”, “a computing device including circuitry”, “a server configured to be coupled to the computing device via a network”, “a processor” and “a non-transitory computer-readable storage medium that stores instructions that, when executed by a computer” in the claims nothing in the claim elements precludes the steps from practically being performed in the mind and/or a mathematical entity. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or mathematical calculation but for the recitation of generic computer components, then it falls within the “mental processes” and “mathematical concept” groupings of abstract ideas. As such claims 1, 8, and 15 recite an abstract idea.
Step 2A Prong Two:
This judicial exception is not integrated into a practical application. The claims recite the additional element of “a computing device”, “a computing device including circuitry”, “a server configured to be coupled to the computing device via a network”, “a processor” and “a non-transitory computer-readable storage medium that stores instructions that, when executed by a computer” to perform the claimed steps at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. This additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The additional elements of transmitting a request for energy information, storing a predetermined solar panel layout and receiving the energy information from the server and store the energy information are data gathering/data storing steps and an insignificant extra-solution activity. As such this additional element also does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B:
Finally, the pre-processing step of transmitting, storing and receiving measured values is categorized as insignificant extra solution activity under 2106.05(g). Claims 1, 8 and 15 only recite ““a computing device”, “a computing device including circuitry”, “a server configured to be coupled to the computing device via a network”, “a processor” and “a non-transitory computer-readable storage medium that stores instructions that, when executed by a computer” to perform the claimed steps and therefore only recite a general purpose computer rather than a specific machine under MPEP 2106.05(b), and are directed to mere instructions to apply the exception under MPEP 2106.05(f), and do not result in anything significantly more than the judicial exception. The additional elements have been considered both individually and as an ordered combination in the significantly more consideration. The inclusion of the computer or memory and controller to perform the selecting and generating steps amount to nor more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Claims 1, 8, and 15 are not patent eligible.
The dependent claims include the same abstract ideas recited in the independent claims, and merely incorporate additional details that narrow the abstract ideas and fail to add significantly more to the claims.
Dependent claims 2, 9 and 16 are directed to sending, receiving and storing energy information, which are all data gathering steps and is insignificant extra-solution activity. Determining number of solar arrays and number of types of solar panels in the predetermined solar panel layout is a mental process including an observation, evaluation, judgment or opinion and/or involve mathematical calculation and fall into the “mental process’’ and “mathematical concept” categories of the abstract idea.
Dependent claims 3, 10 and 17 recite additional step of wherein the number of the requests is limited to the number of the solar panel arrays in the predetermined solar panel layout multiplied by the number of the one or more types of solar panels in the predetermined solar panel layout- which further narrows the abstract idea identified in the independent claim, which is directed to “mathematical concepts.”
Dependent claims 4, 11 and 18 recite additional steps of displaying energy offset information and storing completed design, which are all data display/storing steps and is insignificant extra-solution activity. Selection/ deselection of solar panel and determining if the if the design for the installation location is complete is a mental process including an observation, evaluation, judgment or opinion and/or involve mathematical calculation and fall into the “mental process’’ and “mathematical concept” categories of the abstract idea.
Dependent claims 5 and 12 recite additional steps of recite additional steps wherein the design is a subset of one or more solar panels and one or more solar panel arrays within the predetermined solar panel layout which is a mental process including an observation, evaluation, judgment or opinion and/or involve mathematical calculation and fall into the “mental process’’ and “mathematical concept” categories of the abstract idea.
Dependent claims 6, 13 and 19 recite additional steps wherein the energy production is calculated based on an average solar panel energy production for one solar panel belonging to a solar panel array multiplied by a number of selected solar panels in the solar panel array-which involve mathematical calculation and fall into “mathematical concept” categories of the abstract idea.
Dependent claims 7, 14 and 20 recite a formulae expressing total energy production to number of selected solar panels in an array and average solar panel energy production for that array-which fall into “mathematical concept” categories of the abstract idea.
USC 103 argument answer
As best understood by Examiner, the summary of applicant’s argument is: the combination of Hinners, Pryor, and Gregg fails to teach, disclose, or even suggest "a computing device including circuitry configured to: transmit a request for energy information for one or more solar panels to a server configured to be coupled to the computing device via a network"; "store a predetermined solar panel layout, the predetermined solar panel layout including a plurality of solar panels and being fixed"; "receive the energy information from the server"; "store the energy information"; and "without making additional requests to the server: receive a selection and/or deselection of one or more solar panels less than all of the plurality of solar panels in the predetermined solar panel layout, and determine a design for an installation location based on the selection and/or deselection of the one or more solar panels less than all of the plurality of solar panels in the predetermined solar panel layout and an energy production estimate based on the stored energy information."
Examiner respectfully disagrees. The limitations above are taught by a combination of Hinners, Pryor, and Gregg (see rejection below) where the combination obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), where it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
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 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 of this title, 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.
6. Claims 1-20 are rejected under 35 U.S.C. 103 as being obvious over Hinners et al. hereafter Hinners (Pub. No.: US 2016/0004796 A1), in view of Adam PRYOR hereafter Pryor (Pub. No.: US 2015/0066442 A1), further in view of Gregg et al. hereafter Gregg (Pub. No.: US 2014/0025343 A1).
Regarding Claim 1, Hinners disclose a system for determining solar panel placement (Hinners; abstract, Figure 3, [0052]), comprising:
a computing device including circuitry configured to (Hinners: Figure 1 item 122):
transmit a request for energy information for one or more solar panels to a server configured to be coupled to the computing device via a network (Hinners: [0017]: selection of a particular type of solar module; [0046], [0058]: evaluating the performance of each tile of tile grid; [0016]: Computing device 102 may also read data from or write data to database 116 across network 180 via communication paths 140 and 160);
without making additional requests to the server:
receive a selection and/or deselection of one or more solar panels less than all of the plurality of solar panels in the predetermined solar panel layout (Hinners: Figures 3-6, [0069]: estimates the performance of the solar module based on one or more of (i) the location and/or orientation of target surface 302; [0075]: By implementing the techniques described above in conjunction with FIGS. 3-6, configuration engine 100 may generate one or more candidate configurations for the solar power system; Figure 7 –Item 712: selection of candidate configuration, Figure 7-item 716: Discard (i.e. deselect) current configuration; Also see [0054], [0064], [0083] and [0085]), and
determine a design for an installation location based on the selection and/or deselection of the one or more solar panels less than all of the plurality of solar panels in the predetermined solar panel layout and an energy production estimate(Hinners: Figures 3-6, [0069]: estimates the performance of the solar module based on one or more of (i) the location and/or orientation of target surface 302; [0075]: By implementing the techniques described above in conjunction with FIGS. 3-6, configuration engine 100 may generate one or more candidate configurations for the solar power system; Figure 7 –Item 712: selection of candidate configuration, Figure 7-item 716: Discard (i.e. deselect) current configuration; Also see [0054], [0064], [0083] and [0085]).
Hinners do not explicitly discloses receiving and storing energy production information.
Pryor discloses receiving and storing energy production information (Pryor: Figure 5, [0102]-System size (Annual kWh)-Note the various system size ranges e.g. small range 501, medium range 502, and a large range 503; Also note the various solar energy system design constraint sets ( e.g., templates, buildable system configurations, etc.) stored in the predefined data based on cost ( e.g., monthly payments or upfront cost), size ( e.g., annual kWh), and value ( e.g., dollars per kWh); [0103]: size (e.g., kW factory standard test conditions (STC));
Hinners and Pryor are analogous art because they are from the same field of endeavor. They both relate to Solar Power System.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above Solar Power System, as taught by Hinners, and incorporating the use of energy production information in the system, as taught by Pryor.
One of ordinary skill in the art would have been motivated to do this modification in order to identify the potential of installation sites to house components of solar energy systems as well as the potential to generate energy ( or save energy) by such systems, as suggested by Pryor (Pryor: [0003]).
Hinners do not explicitly disclose:
store a predetermined solar panel layout, the predetermined solar panel layout including a plurality of solar panels and being fixed.
Gregg disclose:
store a predetermined solar panel layout, the predetermined solar panel layout including a plurality of solar panels and being fixed (Gregg: [0024]: client workstations 141 and 142 may be used by specially trained in-house designers to perform a solar panel layout for customers based on information received from the customers or on-site personnel in the field via mobile devices 151-153; [0040], [0041]: After the user/designer interacts with the user interface provided in step 204 to select a solar panel layout, the server 101 may receive the user selected layout in step 205),
Hinners and Gregg are analogous art because they are from the same field of endeavor. Both of them relate to Solar Power System.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above Solar Power System, as taught by Hinners, and incorporating the use dynamic display interface in the system, as taught by Gregg.
One of ordinary skill in the art would have been motivated to do this modification in order to provide plurality of user options for designing one or more solar panel layouts at the location based on the retrieved information corresponding to the location, as suggested by Gregg (Gregg: abstract).
Regarding Claims 8 and 15, the claims recite the same substantive limitations as Claim 1 and are rejected using the same teachings.
Regarding Claim 2, the combinations of Hinners, Pryor and Gregg further disclose the system of claim 1, wherein the circuitry of the computing device is further configured to:
send a plurality of the request for the energy information for one or more types of solar panels for each solar panel array in the predetermined solar panel layout, a number of the requests being based on a number of the solar panel arrays in the predetermined solar panel layout and a number of the one or more types of solar panels in the predetermined solar panel layout (Hinners: [0017]: selection of a particular type of solar module; [0046], [0058]: evaluating the performance of each tile of tile grid; [0016]: Computing device 102 may also read data from or write data to database 116 across network 180 via communication paths 140 and 160; Gregg: [0024], [0040[, [0041], [0058], [0060]: selected panel information ( e.g., number, types, size, and configuration of panels, etc.)),
receive the energy information for each of the requests for the energy information (Pryor: Figure 7A, 7B, [0107]-[0112]),
and
locally store the energy information for each of the one or more types of solar panels for each of the solar panel arrays (Pryor: Figure 7A, 7B, [0107]-[0112]).
Regarding Claims 9 and 16, the claims recite the same substantive limitations as Claim 2 and are rejected using the same teachings.
Regarding Claim 3, the combinations of Hinners, Pryor and Gregg further disclose the system of claim 2, wherein the number of the requests is limited to the number of the solar panel arrays in the predetermined solar panel layout multiplied by the number of the one or more types of solar panels in the predetermined solar panel layout (Pryor: [0088]: [0090]: average monthly coefficients, [0110]: average shading for the whole cell; Also see [0117]; Examiner’s remark(ER): This is a conventional calculation approach for estimating energy production of a solar array similar to the one shown in PVWatts Version 5 Manual Aron P. Dobos September 4, 2014).
Regarding Claims 10 and 17, the claims recite the same substantive limitations as Claim 3 and are rejected using the same teachings.
Regarding Claim 4, the combinations of Hinners, Pryor and Gregg further disclose the system of claim 1, wherein the circuitry of the computing device is further configured to:
dynamically display energy production and energy offset in real time based the selection and/or deselection of the one or more solar panels less than all of the plurality of solar panels in the predetermined solar panel layout (Gregg: Figure 4, [0050]: The available solar panel menu 450 and any other menus displayed on the user interface 400 of the solar panel layout software and installation tool may also be dynamic, in that they may be updated automatically by the server 101 in response to user selections or interactions with other menus or components within the user interface 400; Also see [0061]),
determine if the design for the installation location is complete (Hinners: Figure 7-item 722, [0086]-[0088]), and
store the completed design for the installation location when the design for the installation location is complete (Hinners: Figure 1, [0015], [0091]).
Regarding Claims 11 and 18, the claims recite the same substantive limitations as Claim 4 and are rejected using the same teachings.
Regarding Claim 5, the combinations of Hinners, Pryor and Gregg further disclose the system of claim 1, wherein the design is a subset of one or more solar panels and one or more solar panel arrays within the predetermined solar panel layout (Hines: [0043], [0046], [0047], [0074]; Gregg: [0051], [0052]).
Regarding Claim 12, the claim recites the same substantive limitations as Claim 5 and is rejected using the same teachings.
Regarding Claim 6, the combinations of Hinners, Pryor and Gregg further disclose the system of claim 4, wherein the energy production is calculated based on an average solar panel energy production for one solar panel belonging to a solar panel array multiplied by a number of selected solar panels in the solar panel array (Pryor: [0088]: [0090]: average monthly coefficients, [0110]: average shading for the whole cell; Also see [0117]; Examiner’s remark(ER): This is a conventional calculation approach for estimating energy production of a solar array similar to the one shown in PVWatts Version 5 Manual Aron P. Dobos September 4, 2014).
Regarding Claims 13 and 19, the claims recite the same substantive limitations as Claim 6 and are rejected using the same teachings.
Regarding Claim 7, the combinations of Hinners, Pryor and Gregg further disclose the system of claim 6, wherein the energy production is based on a sum of energy production for each solar panel array:
SlAl + S2A2 + ... + SnAn = ETotal where Sis equal to the number of selected solar panels in an array, A is equal to the average solar panel energy production for that array, and ETotal is equal to the energy production of all the selected solar panels (Pryor: [0088]: [0090]: average monthly coefficients, [0110]: average shading for the whole cell; Also see [0117]; Examiner’s remark(ER): This is a conventional calculation approach for estimating energy production of a solar array similar to the one shown in PVWatts Version 5 Manual Aron P. Dobos September 4, 2014)..
Regarding Claims 14 and 20, the claims recite the same substantive limitations as Claim 7 and are rejected using the same teachings.
Examination Considerations
7. Examiner has cited particular columns and line numbers (or paragraphs) in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific imitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the Applicant in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. The entire reference is considered to provide disclosure relating to the claimed invention.
8. The claims and only the claims form the metes and bounds of the invention. "Office personnel are to give the claims their broadest reasonable interpretation in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 105455, 44USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Limitations appearing in the specification but not recited in the claim are not read into the claim. In re Prater, 415 F.2d, 1393, 1404-05, 162 USPQ 541, 550-551 (CCPA 1969)" (MPEP p 2100-8, c 2, I 45-48; p 2100-9, c 1, I 1-4). The Examiner has full latitude to interpret each claim in the broadest reasonable sense. Examiner will reference prior art using terminology familiar to one of ordinary skill in the art. Such an approach is broad in concept and can be either explicit or implicit in meaning.
9. Examiner's Notes are provided with the cited references to prior art to assist the applicant to better understand the nature of the prior art, application of such prior art and, as appropriate, to further indicate other prior art that maybe applied in other office actions. Such comments are entirely consistent with the intent and spirit of compact prosecution. However, and unless otherwise stated, the Examiner's Notes are not prior art but a link to prior art that one of ordinary skill in the art would find inherently appropriate.
Conclusion
10. Claims 1-20 are rejected.
11. 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 extension fee 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.
Correspondence Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IFTEKHAR A KHAN whose telephone number is (571)272-5699. The examiner can normally be reached on M-F from 9:00AM-6:00PM (CST). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emerson Puente can be reached on (571)272-3652. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IFTEKHAR A KHAN/Primary Examiner, Art Unit 2187